Mendocino Brewing Company

Trademark Trial and Appeal Board

Jul 17, 2003

No. 76026048 (T.T.A.B. Jul. 17, 2003)

Paper No. 14
RFC
Mailed: 7/17/03
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Mendocino Brewing Company
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Serial No. 76/026,048
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Anthony P. Vecino of Coblenz, Patch, Duffy & Bass for
Mendocino Brewing Company.
Elizabeth A. Hughitt, Trademark Examining Attorney, Law
Office 111 (Kevin R. Peska, Acting Managing Attorney).
_______
Before Cissel, Seeherman and Bottorff, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
On April 12, 2000, applicant, a California
corporation, filed the above-identified application to
register the mark BLACKHAWK STOUT on the Principal Register
for “malt beverages, namely, beer, ale and stout,” in Class
32. Use of the mark in commerce in connection with these
products since 1983 was claimed. Applicant disclaimed the
exclusive right to use the word “STOUT” apart from the mark
a shown.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76/026,048
2
The Examining Attorney refused registration under
Section 2(d) of the Lanham Act, 15 U.S.C. Section 1052(d),
on the ground that applicant’s mark so resembles the mark
BLACKHAWK, which is registered1 for “restaurant and catering
services,” that confusion is likely. Submitted in support
of this refusal to register were copies of a dozen third-
party registrations wherein the lists of goods and services
include both restaurant services and beer, ale, stout,
porter and/or malt liquor. The Examining Attorney reasoned
that confusion is likely because the marks are very similar
and because beer is commercially related to restaurant
services.
Applicant responded to the refusal to register with
argument that confusion is not likely because its mark is
distinguishable from the cited registered mark, because
applicant’s goods are different from the services rendered
under the registered mark, and because the ways in which
applicant and the owner of the cited registration actually
use their marks and the trade dress in which their products
are presented make confusion unlikely. In support of this
argument, applicant submitted copies of pages retrieved
1 Reg. No. 918,209 issued on the Principal Register on August 10,
1971 to Roth, Inc.; affidavit under Section 8 of the Act
accepted; renewed twice.
Ser No. 76/026,048
3
from the registrant’s website. Additionally, applicant
argued that the state of Illinois, where registrant’s
restaurant is located, has stringent statutory regulations
governing the brewing of beer on the premises of a
restaurant (copies of the regulations were attached), so
that in Illinois, at least, expanding restaurant services
to include brewpub services is not an ordinary expansion of
the restaurant business.
The Examining Attorney was not persuaded by
applicant’s arguments, and in her second Office Action, she
made the refusal to register final. In further support of
the refusal, she made of record additional third-party
registrations wherein the listed goods and services include
both beer and restaurant services. In some of these
registrations, the restaurant services are further narrowed
to “microbrewery restaurant services” or “brewpub”
services. Additionally, excerpts from various publications
and a beer encyclopedia were submitted to show that a
brewpub is a type of restaurant which brews and serves its
own beer on the premises; that brewpubs are a growing trend
in the beer industry; and that many restaurants now serve
private-label beers. The Examining Attorney maintained her
position that applicant’s beer, ale and stout are
sufficiently related to the restaurant services identified
Ser No. 76/026,048
4
in the cited registration that the use of these two very
similar marks in connection with both would be understood
as an indication that these goods and services emanate from
a common source.
Applicant concurrently filed a request for
reconsideration and a Notice of Appeal. The Board
instituted the appeal, but suspended action on it and
remanded the application file to the Examining Attorney for
reconsideration in view of applicant’s request. She
reconsidered the refusal to register in light of
applicant’s arguments, issued a brief Office Action
maintaining the refusal to register and returned the
application to the Board for resumption of action on the
appeal. Both applicant and the Examining Attorney filed
appeal briefs, but applicant did not request an oral
hearing before the Board.
The sole issue before the Board in this appeal is
whether confusion is likely between applicant’s mark,
BLACKHAWK STOUT, for malt beverages, namely beer, ale and
stout, and the mark BLACKHAWK, which is registered for
restaurant and catering services. Based on careful
consideration of the record, the arguments presented by
applicant and the Examining Attorney and the relevant legal
Ser No. 76/026,048
5
precedents, we hold that confusion is likely and that the
refusal to register is therefore well taken.
The predecessor to our primary reviewing court set
forth the factors to be considered in determining whether
confusion is likely in In re E.I. DuPont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). First, we must
look at the marks themselves for similarities in
appearance, sound, connotation and commercial impression.
Then, we must compare the goods and services to determine
if they are related or if the activities surrounding their
marketing are such that confusion as to source or origin is
likely. In this regard, we consider similarities in the
channels of trade and the people who purchase the goods and
services.
Contrary to applicant’s contention that these marks
create distinct commercial impressions, applicant’s mark is
very similar to the registered mark. Applicant’s argument
is based on consideration of its label specimen and copies
of pages from registrant’s website, but it is well settled
that in comparing the marks, we must consider only the
marks as depicted in the application drawing page and the
registration, respectively. Interstate Brands Corp. v.
McKee Foods Corp., 53 USPQ2d 1910 (TTAB 2002).
Ser No. 76/026,048
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On this record, we have no basis upon which we could
conclude that these marks create different commercial
impressions. It is well settled that under appropriate
circumstances, one feature or element of mark may be
recognized as playing a more significant role in creating
the commercial impression of a mark. Greater weight is
properly given to that dominant portion in determining
whether confusion is likely. In re National Data Corp.,
224 USPQ 749 (Fed. Cir. 1985). While the generic, and
hence disclaimed, portion of applicant’s mark, STOUT,
cannot be ignored, we can recognize that this word has no
source-identifying significance when it is combined with
BLACKHAWK and used in connection with stout. The mere
addition of a generic word is insufficient to overcome a
finding of likelihood of confusion under Section 2(d) of
the Act. In re Corning Glass Works, 229 USPQ 65 (TTAB
1985). In the case at hand, these two marks create
commercial impressions which are the same.
When the marks at issue resemble each other this much,
the relationship between the goods or services of the
applicant and the registrant does not have to be as close
in order to find confusion likely as would be the case if
the marks were less similar. Amcor, Inc. v. Amcor
Industries, Inc., 210 USPQ 70 (TTAB 1981). Moreover, even
Ser No. 76/026,048
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when the marks are not this close, the goods or services do
not have to the identical or even directly competitive in
order to find that confusion is likely. Rather, they need
only be related in some manner, or the conditions
surrounding their marketing be such that they could be
encountered by the same people under circumstances that
could give rise to the mistaken belief that the goods and
services come from one source. As noted by the Examining
Attorney, the proper comparison of the goods and services
must be based on the ways that they are identified in the
application and registration, respectively, and not on any
extrinsic evidence as to what the goods or services
actually offered in the marketplace are. Canadian Imperial
Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813 (Fed. Cir. 1987).
In the case at hand, the Examining Attorney made of
record thirty-two third-party registrations for goods and
services which include both beer and restaurant services; a
listing from The Encyclopedia of Beer and excerpts from
published articles which show that brewpubs are a type of
restaurant specializing in beer and that restaurants sell
private-label beers. This evidence clearly establishes
that restaurant services are related to beer in such a way
Ser No. 76/026,048
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that the use of similar marks in connection with both is
likely to cause confusion.
Applicant argues to the contrary, however, contending
that all these third-party registrations, the dictionary
listing and the excerpts from publications do not satisfy
the requirement for the Examining Attorney to prove that
the goods and services in question are related. Applicant
cites Lloyd’s Food Products, Inc. v. Eli’s, Inc., 987 F.2d
766, 25 USPQ2d 2027 (Fed. Cir. 1993), for the proposition
that in order to establish that confusion is likely, the
Examining Attorney must show “something more” than just
that similar marks are used for both food products and
restaurant services. Applicant argues that this record
does not show that the owner of the cited registration is
engaged in providing brewpub restaurant services or sells
private-label beer products, or, for that matter, that it
“places any significant commercial focus on beer.” (brief
p. 2).
We agree with the Examining Attorney, however, that
the “something more” required by the Court in the Lloyd’s
case has been provided in the case at hand. The third-
party use-based registrations, although not evidence of the
use of the marks shown therein or that the public is
familiar with them, nevertheless have probative value to
Ser No. 76/026,048
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the extent that they serve to suggest that the listed goods
and services are of the type which may emanate from a
single source. In re Albert Trostel & Sons Co., 29 USPQ2d
1783 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6
USPQ2d 1467 (TTAB 1988). The dictionary definition and the
excerpts from published articles demonstrate that the
ordinary consumers who purchase beer and stout have reason
to expect these products to be available in restaurants,
and that some restaurants offer private-label beers and/or
brew their own beer. This evidence plainly satisfies the
test established by the court for demonstrating that the
goods identified in the application are related to
restaurant services.
Applicant’s argument that because significant legal
barriers exist in Illinois which would make registrant
unlikely to expand its business to include brewpub services
is not well taken. As the Examining Attorney points out,
the scope of registrant’s services is properly determined
by reference to the recitation of services in the
registration, in this case “restaurant and catering
services.” We must interpret the term “restaurant
services” as including services rendered in all types of
restaurants, including the type known as brewpubs, wherein
beer and stout are made and sold. It would not be
Ser No. 76/026,048
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inconsistent with the recitation of services in the cited
registration for registrant to be providing brewpub
services, or for that matter, for the registrant to offer
private-label beers for sale. Whether it would be
difficult or easy for registrant to render brewpub services
in Illinois is immaterial to our inquiry.
Applicant contends that the Examining Attorney failed
to give proper weight to the fact that these two marks were
contemporaneously registered for almost seven years, until
applicant’s registration was canceled for failure to file
the required affidavit under Section 8 of the Act; that
these marks have been in contemporaneous use for over 18
years with no known instances of actual confusion; and that
the interest of the registrant would not be compromised by
reversing the refusal to register because if registrant
believed it would be damaged by the issuance of a
registration to applicant, the registrant could oppose
registration. None of these arguments is well taken.
As the Examining Attorney points out, she is not bound
by prior decisions of other Examining Attorneys, which may
have been based on different records. In re Perez, 21
USPQ2d 1075 (TTAB 1991). The evidence in this record
establishes that at this time, it is common for restaurants
to brew their own beer and to sell private-label beer.
Ser No. 76/026,048
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This may not have been the case ten years ago, when the
application which resulted in applicant’s prior
registration was examined. As noted by applicant (brief p.
2), “Each case must be decided on its own merits and the
differences are often subtle ones.” Industrial Nucleonics
Corp. v. Hinde, 475 F.2d 1197, 1199, 177 USPQ 386, 387
(CCPA 1973). Given the evidence in the case at hand that
clearly shows that beer and restaurant services are related
in today’s marketplace, the fact that the prior application
was approved does not warrant reversal of the refusal to
register in the instant case.
As to applicant’s argument that there is no evidence
that actual confusion has taken place, it is well settled
that such evidence is not necessary in order to resolve the
issue before us in this appeal, which is not whether
confusion has occurred, but rather whether confusion is
likely. Giant Food, Inc. v. Nation’s Foodservice, Inc.,
710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1993).
Applicant’s argument that the registrant would be
adequately protected if we were to reverse the refusal to
register and allow the mark to be published for opposition
is similarly not well taken. As the Examining Attorney
points out, such an approach would essentially shift the
burden of the Examining Attorney to the registrant. This
Ser No. 76/026,048
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argument was explicitly rejected by the court in In re
Dixie Restaurants, 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
In summary, the Examining Attorney has met his burden
of establishing that the use of these very similar marks in
connection with both restaurant services and beer is likely
to cause confusion within the meaning of Section 2(d) the
Lanham Act.
DECISION: The refusal to register is affirmed.