Hassan R. Pinto

Trademark Trial and Appeal BoardMay 20, 2016

No. 86387196 (T.T.A.B. May. 20, 2016)

This Opinion is Not a Precedent of the TTAB Mailed: May 20, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Hassan R. Pinto _____ Serial No. 86387196 _____ Matthew H. Swyers of The Trademark Company, PLLC for Hassan R. Pinto. Peter Dang, Trademark Examining Attorney, Law Office 121, Michael W. Baird, Managing Attorney. _____ Before Wellington, Adlin and Goodman, Administrative Trademark Judges. Opinion by Adlin, Administrative Trademark Judge: Hassan R. Pinto (“Applicant”) seeks registration of the mark BLUE BLOOD RIVALRY, in standard characters, for: Alcohol-free beers; Beer; Beer making kit; Beer wort; Beer, ale and lager; Beer, ale and porter; Beer, ale, lager, stout and porter; Beer, ale, lager, stout, porter, shandy; Beer- based cocktails; Beer-based coolers; Beers; Black beer; Brewed malt-based alcoholic beverage in the nature of a beer; Coffee-flavored beer; De-alcoholised beer; Extracts of hops for making beer; Flavored beers; Ginger beer; Hop extracts for manufacturing beer; Imitation beer; Malt beer; Malt extracts for making beer; Malt liquor; Non-alcoholic beer; Non-alcoholic beer flavored beverages; Pale beer; Serial No. 86387196 2 Porter; Processed hops for use in making beer; Root beer; Wheat beer.1 The Examining Attorney refused registration under Section 2(d) of the Act, on the ground that Applicant’s mark so resembles the mark BLUE BLOOD BREWING COMPANY, in standard characters and with BREWING COMPANY disclaimed, for “beer, ale and lager,”2 that use of Applicant’s mark in connection with Applicant’s goods is likely to cause confusion or mistake or to deceive. After the refusal became final, Applicant appealed, requested and was granted a remand to address a refusal which is no longer at issue, and Applicant and the Examining Attorney filed briefs. Our determination under Section 2(d) is based on an analysis of all probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). 1 Application Serial No. 86387196, filed September 5, 2014 under Section 1(b) of the Trademark Act based on an intent to use the mark in commerce. 2 Registration No. 4600305, issued September 9, 2014. Serial No. 86387196 3 Turning first to the goods, channels of trade and classes of purchasers, they are identical, as Registrant and Applicant both offer “beer, ale and lager.” In fact, because the goods are identical, we must presume that the channels of trade and classes of purchasers for those goods are too. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same); American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011). Applicant’s argument that the relevant consumers are “sophisticated” and “careful” is irrelevant where neither Applicant’s nor Registrant’s identification of goods specify the types of purchasers therefor and there is no evidence to support Applicant’s contention. We must presume that Applicant’s and Registrants’ beer, ale and lager encompass inexpensive and expensive varieties of the identified goods, and that the goods are offered to all types of customers therefor. See e.g., Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162-63 (Fed. Cir. 2014) (“Stone Lion effectively asks this court to disregard the broad scope of services recited in its application, and to instead rely on the parties’ current investment practices … the Board properly considered all potential investors for the recited services, including ordinary Serial No. 86387196 4 consumers seeking to invest in services with no minimum investment requirement.”) (emphasis in original). The identical goods and their overlapping channels of trade and classes of purchasers not only weigh heavily in favor of a finding of likelihood of confusion, but also reduce the degree of similarity between the marks necessary to find a likelihood of confusion. In re Viterra, 101 USPQ2d at 1908; In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); In re Max Capital Group Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010). As for the marks,3 they are quite similar, as both share and begin with the identical term BLUE BLOOD. The first part of a mark is often its most prominent and dominant feature. Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”); see also, Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). That is certainly the case with the cited registration, because the disclaimed words BREWING COMPANY are descriptive if not generic for beer, and thus entitled to less weight in our analysis. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 3 Applicant made several arguments during prosecution which it has apparently decided not to pursue, explicitly stating in its brief that this appeal has a “very narrow scope … the first du Pont factor alone,” which “should be deemed dispositive of the whole analysis.” Applicant’s Appeal Brief at 6, 11. Serial No. 86387196 5 2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion.’”); In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) (BINION’S, not disclaimed word ROADHOUSE, is dominant element of BINION’S ROADHOUSE); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the mark’s commercial impression”). While Applicant’s mark also includes the term RIVALRY, that is not sufficient to distinguish the marks where they both begin with BLUE BLOOD and are used for beer. The marks look and sound quite similar and convey similar meanings.4 In fact, consumers who encounter Applicant’s mark and are familiar with Registrant’s mark would be likely to believe that Registrant, the Blue Blood Brewing Company, is offering a new beer called RIVALRY. This factor also weighs heavily in favor of a finding of likelihood of confusion. Because the goods, channels of trade and classes of purchasers are identical, and the marks are highly similar, confusion is likely. Decision: The refusal to register Applicant’s mark under Section 2(d) of the Act is affirmed. 4 Applicant’s argument that the marks convey different meanings, even though both share and begin with BLUE BLOOD and are used for identical goods is unsupported and illogical. To the extent that Applicant’s mark conveys to some consumers the storied college basketball rivalry between neighboring Duke University and the University of North Carolina, that is irrelevant where the application and registration are geographically unrestricted, the identifications of goods contain no limitations whatsoever and consumers would be likely to believe that the word RIVALRY in Applicant’s mark identifies a brand of Registrant’s beer.