Never Forget Brands, LLC

Trademark Trial and Appeal Board

Sep 25, 2020

88426148 (T.T.A.B. Sep. 25, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 25, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Never Forget Brands, LLC
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Serial No. 88426148
_____

David K. Friedland of Friedland Vining PA,
for Never Forget Brands, LLC.
Kathleen Lorenzo, Trademark Examining Attorney, Law Office 109,
Michael Kazazian, Managing Attorney.
_____

Before Greenbaum, Pologeorgis, and Dunn,
Administrative Trademark Judges.

Opinion by Dunn, Administrative Trademark Judge:
Never Forget Brands, LLC (“Applicant”) seeks registration on the Principal
Register of the mark HOUSE DIVIDED (in standard characters) for “beer” in
International Class 32 and “liquor; wine” in International Class 33.1
The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as applied

1 Application Serial No. 88426148 was filed May 11, 2019 under Section 1(b) of the Trademark
Act, based on an alleged bona fide intent to use the mark in commerce.
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to the goods identified in the application, so resembles the registered mark HOUSE
DIVIDED (in standard characters) for “bar services; restaurant services; sports grill
services” in International Class 43,2 on the Principal Register as to be likely to cause
confusion, to cause mistake, or to deceive.
After the Examining Attorney made the refusal final, Applicant appealed to this
Board. The appeal is fully briefed. We affirm the refusal to register. 3
I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on likelihood of
confusion. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973). See also In re Majestic Distilling Co., 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 or
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976). We must consider each DuPont factor for which there is
evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160,
1162-63 (Fed. Cir. 2019).

2 Registration No. 5525924 issued July 24, 2018.
3 The TTABVUE and Trademark Status & Document Retrieval (“TSDR”) citations refer to
the docket and electronic file database for the involved application. All citations to the TSDR
database are to the downloadable .PDF version of the documents.
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A. Similarity or Dissimilarity of the Marks
The first DuPont factor requires consideration of "[t]he similarity or dissimilarity
of the marks in their entireties as to appearance, sound, connotation and commercial
impression." DuPont, 177 USPQ at 567. See also Palm Bay Imps. Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691
(Fed. Cir. 2005). Applicant's standard character mark HOUSE DIVIDED and
Registrant's standard character mark HOUSE DIVIDED are identical, and so this
DuPont factor strongly favors finding a likelihood of confusion.
B. Similarity or Dissimilarity of the Goods and Services
We must determine whether the degree of relatedness of the goods and services
rises to such a level that consumers would mistakenly believe the respective goods
and services emanate from the same source. In considering the second DuPont factor,
we especially note that where identical marks are involved, as is the case here, the
degree of similarity between the goods and services that is required to support a
finding of likelihood of confusion declines. In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1689 (Fed. Cir. 1993) (“even when the goods or services are not
competitive or intrinsically related, the use of identical marks can lead to the
assumption that there is a common source”). With identical marks it is only necessary
that there be a “viable relationship between the goods [or services]” to support a
finding of likelihood of confusion. In re Thor Tech Inc., 90 USPQ2d 1634, 1636 (TTAB
2009) (“it is sufficient that the goods are related in some manner, or that the
circumstances surrounding their marketing are such, that they would be encountered
Serial No. 88426148
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by the same persons in situations that would give rise, because of the marks, to a
mistaken belief that they originate from the same source or that there is an
association or connection between the sources of the goods.”). There is no per se rule
that certain goods and services are related. Lloyd's Food Products, Inc. v. Eli's, Inc.,
987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993).4
We make our determination regarding the similarities between Applicant’s goods
and the registered services based on how they are identified in the application and
registration. Octocom Sys. Inc. v. Hous. Comput. Servs., Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990); Canadian Imperial Bank v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Moreover, registration must be
refused in a particular class if Applicant’s mark for any of its identified goods in that
class is likely to cause confusion with the Registrant’s mark for any of its identified
services. See SquirtCo v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 938-39 (Fed.
Cir. 1983) (holding that a single good from among several may sustain a finding of
likelihood of confusion); Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335,
209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion must be found if there is
likely to be confusion with respect to any item that comes within the identification of
goods or services in the application or registration).

4 Conversely, there is no per se rule that certain goods and services are not related. While we
have considered the unpublished Board decisions finding no likelihood of confusion provided
by Applicant for whatever guidance they offer, none involve the same facts present here, and
do not warrant general discussion.
Serial No. 88426148
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Applicant identifies its goods as “beer, liquor, wine.” We take judicial notice that
“liquor” is defined as “a usually distilled rather than fermented alcoholic beverage;”
that “beer” is defined as “a carbonated, fermented alcoholic beverage that is usually
made from malted cereal grain (especially barley), is flavored with hops, and typically
contains less than a 5% alcohol content;” that “wine” is defined as “the alcoholic
usually fermented juice of a plant product (such as a fruit) used as a beverage;” and
that “alcohol” is defined as “ethanol especially when considered as the intoxicating
agent in fermented and distilled liquors” and “drink (such as whiskey or beer)
containing ethanol.”5 Based on these definitions, Applicant’s goods comprise alcoholic
drinks, including all distilled alcoholic beverages and excluding only those fermented
alcoholic drinks which cannot be defined as either beer or wine.
The cited registration identifies “bar services; restaurant services; sports grill
services.” We find, based on the semicolon separating the bar services from the
restaurant services in the registration, that the registered “bar services” are a
separate category of services from the restaurant or sports grill services, and an
independent basis for the Section 2(d) refusal. In re Midwest Gaming & Entm’t LLC,
106 USPQ2d 1163, 1166 (TTAB 2013) (“Under standard examination practice, a
semicolon is used to separate distinct categories of goods or services.”). While
Applicant and the Examining Attorney presented arguments and evidence on

5 All definitions were accessed from the online dictionary www.merriam-webster.com on
September 23, 2020. The Board may take judicial notice of dictionary definitions, including
online dictionaries that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227,
1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016).
Serial No. 88426148
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whether Applicant’s goods are related to the bar and restaurant services recited in
the registration, we focus on the identified “bar services.” We grant the Examining
Attorney’s request in the brief, to which Applicant made no objection in the reply
brief, that we take judicial notice of the attached definition showing that a “bar” is “a
room or establishment where alcoholic drinks and sometimes food are served.”6
Where appropriate, a finding on relatedness may be made on the identifications
themselves, without further evidence presented by the parties. Hewlett-Packard Co.
v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002). Based
on the identification of goods in the application and the recitation of services in the
registration, we find Applicant’s beer, liquor and wine and Registrant’s bar services
to be inherently related, in that a bar serves alcoholic drinks, such as beer, liquor and
wine.7 See In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1064 (Fed. Cir.
2003) (“If the registrant's mark had been for a brewpub [and Applicant’s mark for
beer] ... the goods and services associated with the two marks would clearly be related
and the case for a likelihood of confusion therefore much stronger.). See also In re
Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988)
(“applicant's ‘general merchandise store services’ would include the sale of furniture

6 6 TTABVUE 10, 13-14.
7 In view of this finding of the inherent relationship between beer, liquor, wine, and bars,
there is no need to support the relatedness of the goods and services with a showing of
“something more.” Cf. In re Coors Brewing Co., 68 USPQ2d at 1345-1346 (When the
relatedness of the goods and services is not evident, well known, or generally recognized,
‘something more’ than the mere fact that the goods and services are used together must be
shown to indicate that consumers would understand such services and goods to emanate from
the same source.).
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and the evidence introduced by the applicant in voluminous quantity makes it clear-
-though its arguments attempt to play down the fact--that it does in fact sell
furniture. What else it sells is irrelevant; there is overlap.”); In re Accelerate s.a.l.,
101 USPQ2d 2047, 2050 (TTAB 2012) (“applicant's broadly worded ‘providing food
and drink’ could encompass a coffee house … [so that] applicant's services, as recited,
are sufficiently related to [Registrant’s] coffee").
In addition to the generally recognized relationship between bar services and beer,
liquor, and wine, the record includes evidence of the growth of bar services where
alcoholic beverages are distilled or fermented on the premises, and evidence of third-
party use of the same mark on the alcoholic beverages listed in Applicant’s
application and bar services such as those listed in the cited registration. With respect
to growth of bar services where alcoholic beverages are distilled or fermented on the
premises, the record includes the following excerpts from online magazine and
newspaper articles:
While craft breweries in Columbus have flourished by the dozens, following a
national trend, a surge in small distilleries of whiskey and other spirits has
only happened in the last few years because of legislative changes that relaxed
craft-distilling restrictions in the state.

***
Nearly 60 craft distilleries, mostly clustered in the Columbus area, now
operate in Ohio, up from a handful a decade ago. To draw more customers and
to grow their brands, many of these micro distilleries have added tasting
rooms, bottle shops and restaurants that experiment with food and spirit
pairings.

The rise in craft distilleries is the result of successful lobbying in 2016 by a
group of local distillers to change a state law, which evoked the Prohibition era
by limiting the ways spirits could be produced and sold. Their efforts began in
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2012 and led to a loosening of restrictions on distilleries' ability to serve
directly to customers.

That new flexibility, more aligned with practices in craft breweries, prompted
the co-founders of Watershed Distillery to open the chic, full-service
restaurant, Watershed Kitchen & Bar, in late 2016, just a few months after
the state law was changed.

***
Before the state law was changed, Watershed could only serve four quarter-
ounce samples without ice or mixers, not ideal for a brand trying to show off
its product; nor could it operate a tasting room or restaurant, unlike brew pubs
or wineries, which were not subject to distilling restrictions.
The New Hangout in Columbus? Distilleries, Gill, NEW YORK TIMES,
September 20, 20198

Call them gastro-distilleries, still-bars or distillery pubs, there’s a new concept
emerging in the on-premise cocktail arena. These are hybrid operations
combining a fully functional distillery with a bar and restaurant service.
As Laws Loosen Distillery Bar Restaurant Hybrids Emerge, AMERICAN
CRAFT SPIRITS ASSOCIATION, https://americancraftspirits.org, July 23, 20189

The Brewers Association reports that the number of breweries in the U.S.
just crossed the 5,000 mark. To be precise, there were a total of 5,005 breweries
in America at the end of November, a new record high.
The number of breweries has been growing rapidly in the U.S. for years. In
the 1980s, when mass-market companies thoroughly dominated the scene,
there were fewer than 100 brewing operations in business. As America’s tastes
turned to craft beer, though, the brewing scene expanded dramatically. There
were roughly 1,500 breweries in 2008, and 3,500 by early 2015. Almost exactly
one year ago today, America’s brewery count topped 4,131-what had previously
been the all-time high set back in 1873, long before Prohibition and decades of
consolidation that transformed the industry.
America Now has a Record-High 5,000 Breweries and Counting, Tuttle,
MONEY, December 9, 201610

The American Craft Spirits Association (ASCA), the International Wine
and Spirits Research (IWSR), and Park Street got to together for a year-long

8 January 10, 2020 Office Action, TSDR 10-13.
9 Id. at TSDR 18.
10 September 9, 2019 Response, TSDR 16-17.
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project to quantify the number, size, and impact of craft spirits producers in
the U.S., something they called the Craft Spirits Data Project.
Craft Spirits Data Project Defined
For the purposes of the Project, U.S. craft spirits were defined as distilled
spirits that are produced in the U.S. by licensed producers that have not
removed more than 750,000 proof gallons (or 394,317 9L cases) from bond,
market themselves as craft, are not controlled by a large supplier, and have no
proven violation of the ACSA Code of Ethics.
Craft Spirits Data Project Findings
The U.S. craft spirits industry is growing rapidly. As of August 2016, there
were 1,315 craft distillers active in the U.S. The U.S. craft spirits market
reached 4.9 million cases and $2.4 billion in retail sales in 2015, growing at a
compound annual growth rate (CAGR) of 27.4 percent in volume and 27.9
percent in value between 2010 and 2015. The market share of U.S. craft spirits
reached 2.2 percent in volume and 3.0 percent in value in 2015, up from 0.8
percent and 1.1 percent in 2010, respectively.

***
There is the potential for craft spirits to achieve market share parity with
craft beer, the research says. Many surveyed retailers and wholesalers see the
potential for craft spirits to perform in line or better than craft beer over time.
With craft beer market share currently at 11 percent in the U.S., the craft
spirits market is expected to continue to grow rapidly.
What is the growth potential of craft spirits in the U.S.? Crowell, CRAFT
BREWING BUSINESS, October 20, 2016.11
With respect to usage in the industry, the record includes several examples of bars
located at wineries, distilleries, and breweries that use the same mark to advertise
the bar services on the premises (whether as part of a taproom, tasting room, or
restaurant) and to label the alcoholic beverages available to drink there or to buy and
take away:
Mark

Bar Services Alcoholic Drinks
Motor City Brewing
Works12
taproom, restaurant beers, wine

11 Id. at TSDR 13-14.
12 January10, 2020 Office Action, TSDR 23-26.
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Mark

Bar Services Alcoholic Drinks

Dogfish Head Craft
Brewery13
tasting room, alehouse,
restaurant

beer, distilled spirits
Midland Brewing
Company14

taproom, restaurant beer
ThirstyBear Organic
Brewery15
kitchen, bar beer, barley wine
Driftless Glen Distillery16

restaurant distilled spirits
Lula Restaurant-
Distillery17

bar, restaurant distilled spirits

Mason Dixon Distillery18

restaurant distilled spirits

Hitching Post19 bar, restaurant wine

Canterbury Hill Winery &
Restaurant20

restaurant wine
Gervasi Vineyard21

cocktail lounge wine, distilled spirits

We find that this evidence demonstrates that bars associated with distilleries,
wineries, and breweries may be identified by the same mark used on the alcoholic

13 Id. at TSDR 27-32.
14 Id. at TSDR 37-41.
15 Id. at TSDR 48-53.
16 Id. at TSDR 56-61.
17 Id. at TSDR 62-69.
18 Id. at TSDR 70-77.
19 Id. at TSDR 78-80.
20 Id. at TSDR 81-90.
21 Id. at TSDR 93-105.
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beverages served in the bar, and further supports our finding of the inherent
relationship between bar services and alcoholic beverages which supports a finding
of likelihood of confusion.
In its brief, Applicant supplies statistics from two different websites
(“statista.com” and “ibisworld.com”) stating that the number of bars, taverns and
nightclubs in the United States from 2003 to 2017 declined from about 71,000 to
about 62,000; that the number of restaurants in the United States in 2018 increased
from the previous year by 2% to reach about 660,000; and that there are about 25,000
bars and nightclubs in the United States.22 Citing these statistics, Applicant contends
“based on the sheer number of restaurants, bars and nightclubs in the United States,”
that the record evidence showing the relationship between its goods and the
registered services is “insufficient and unpersuasive,” and so the record fails to show
the “something more” required by the Coors court. 23
As stated, based on the inherent relationship between alcoholic drinks and bar
services serving alcoholic drinks, we disagree that “something more” is necessary. We
also disagree that some specific percentage (or “sheer number”) of bar services must
use the same mark with alcoholic beverages before there is support for a finding that
bar services and alcoholic beverages are related. The applicant in Coors made a
statistical case which the Federal Circuit accepted as showing that the overlap
between beer and restaurant services using the same mark was de minimis, and so

22 We take a dim view of evidence being supplied at the briefing stage, but because the
Examining Attorney did not object to the statistics, we will consider them.
23 4 TTABVUE 8-10.
Serial No. 88426148
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the Federal Circuit found that the refusal was not supported by substantial evidence
that consumers are likely to assume that the beer and restaurant services come from
the same source. In re Coors, 68 USPQ2d at 1346. Applicant’s statistics show that the
number of bars is about ten percent of the number of restaurants in the United States.
The evidence also shows that craft beer is 10 percent of beer sales, and that craft
distilling is rising fast and may match it as a percentage of distilled spirits. Even if
the Federal Circuit required a numerical analysis, which it did not, Applicant’s
citation to a raw number of providers of alcoholic beverages does not equate to the
same insignificant overlap between restaurant services and beer addressed by the
Coors court.
This record includes specific evidence that third-party wineries, breweries, and
distilleries use the same mark on the wine, beer, and liquor that they use on their
bar services. Applicant failed to demonstrate that this evidence is in any way
exceptional, or that most bars located on the premises of distilleries, wineries, or
breweries use a different mark than the one used on the liquor, wine or beer. In fact,
the record evidence of the relationship between alcoholic beverages and bars stands
unrebutted.
Based on the identical marks, the obvious relationship between bar services and
alcoholic beverages, the evidence of third-party use of the same mark to advertise a
place to drink alcoholic beverages and to place on the alcoholic beverages served
there, we find the record supports a finding that Applicant’s identified “beer, liquor;
Serial No. 88426148
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wine,” and Registrant’s identified “bar services” are related for the purposes of
likelihood of confusion.
C. Conclusion
The marks HOUSE DIVIDED are identical, and applied to inherently related
goods and services. Insofar as the DuPont factors discussed above weigh heavily in
favor of finding a likelihood of confusion, we conclude that confusion is likely to occur
between Applicant’s mark HOUSE DIVIDED for “beer” and “liquor; wine,” and
Registrant’s mark HOUSE DIVIDED for the identified services, which include “bar
services.”
Decision: The refusal to register Applicant’s mark HOUSE DIVIDED is affirmed
as to both classes of identified goods.