Outback Steakhouse of Florida, Inc. and OS Asset, Inc.v.Waterworldwide Pty Ltd.

Trademark Trial and Appeal Board

Jan 7, 2009

No. 91161384 (T.T.A.B. Jan. 7, 2009)

Mailed: January 7, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Outback Steakhouse of Florida, Inc. and OS Asset, Inc.
v.
Waterworldwide Pty Ltd.
_____

Opposition No. 91161384
to application Serial No. 76433576
filed on July 8, 2002
_____

James A. Dimitrijevs, Esq. of Baker & Hostetler LLP for
Outback Steakhouse of Florida, Inc. and OS Asset, Inc.

Lisa N. Kaufman, Esq. for Waterworldwide Pty Ltd.
______

Before Bucher, Grendel and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Waterworldwide Pty Ltd. has
applied to register the mark
appearing to the right on the
Principal Register for “bottled
drinking water” in International
Class 32.1 The words AUSTRALIAN
OUTBACK have been disclaimed.

1 Serial No. 76433576, filed July 8, 2002, alleging a bona fide
intention to use the mark in commerce under Trademark Act Section
1(b), 15 U.S.C. § 1051(b).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91161384
2
Opposers, Outback Steakhouse of Florida, Inc. and OS
Asset, Inc., have opposed registration of applicant’s mark
on the ground that, as applied to applicant’s goods, the
mark so resembles opposers’ previously used and registered
marks OUTBACK and OUTBACK STEAKHOUSE (and design), as well
as other marks containing the term OUTBACK,2 for “beer” and
other goods and services, as “to confuse, mislead, and
deceive members of the public into believing applicant’s
goods have been produced, sold, sponsored, approved, or
licensed by [opposers].”3
Applicant denied the salient allegations in the notice
of opposition and filed a counterclaim to cancel two of
opposers’ pleaded registrations. As grounds for the
counterclaim, applicant alleged that opposers’ marks,
OUTBACK and OUTBACK STEAKHOUSE (and design), subjects of
Registrations Nos. 2742171 and 2742172, respectively, are
“deceptive under Section 2(a)” because “Outback is a
geographically descriptive term for [certain] areas of
Australia...Australia is well known for beers...[and]
opposer’s OUTBACK beer does not originate in Australia.”
Applicant alternatively pleaded that the marks are

2 In all, opposers pleaded ownership of twenty-five different
registrations.
3 Opposers also pleaded a dilution ground for opposition, but
expressly withdrew this ground in their brief.

Opposition No. 91161384
3
geographically descriptive in the event that opposers’ beer
“does originate in Australia.”4
Opposers denied the essential allegations in the
counterclaim.
Opposers filed a trial brief; applicant did not.
Record/ Evidentiary Matters
The evidence of record consists of the pleadings, the
files of the opposed application and the registrations
subject to the counterclaim (Registrations Nos. 2742171 and
2742172). In addition, opposers submitted, under notice of
reliance, status and title copies for two of their pleaded
registrations (Registrations Nos. 2742171 and 2020110);
applicant’s responses to Interrogatories Nos. 10, 12-13, 19,
21, and 23; applicant’s responses to admission requests Nos.
18 and 20; and printouts of articles obtained from the
LexisNexis database.
In view of the above and of particular importance to
this case, we note that only three of the twenty-five
registered marks pleaded by opposers in the notice of

4 Applicant attached, as exhibits to its answer and counterclaim,
a copy of a definition of “the outback” and copies of opposers’
website. These exhibits are not evidence and do not form part of
the record. Rule 2.122(c); see also TBMP § 317 (2d ed. rev.
2004). Nonetheless, as noted later, the Board may take judicial
notice of dictionary definitions.
Opposition No. 91161384
4
opposition have been properly introduced into evidence or
are otherwise of record.5 These registrations are:
1. Registration No. 2742171 for the mark OUTBACK for
“beer” in International Class 32;6
2. Registration No. 2742172
for the mark appearing to the
right on the Principal
Register for “beer” in
International Class 32;7 and

3. Registration No. 2020110 for the mark OUTBACK for
“baked goods; namely, bread, biscuits and rolls” in
International Class 30.8
Counterclaim
We turn first to applicant's counterclaim for
cancellation of opposers’ Registrations Nos. 2742171 and
2742172. As noted above, the counterclaim essentially is

5 It is noted that opposers attached soft copies of several of
their pleaded registrations to the notice of opposition. Such a
submission, by itself, is insufficient for purposes of being
received in evidence. See TBMP § 704.03(b)(1) (2d ed. rev. 2004)
and authorities cited therein.
6 Issued on July 29, 2003, owned by Outback Steakhouse of
Florida, LLC. (by way of conversion to a limited liability
company – recorded with USPTO on June 6, 2007 at Reel/Frame nos.
3568/0905).
7 Issued on July 29, 2003, owned by Outback Steakhouse of
Florida, LLC. (by way of conversion to a limited liability
company – recorded with USPTO on June 6, 2007 at Reel/Frame nos.
3568/0905).
8 Issued on December 3, 1996, renewed, and currently owned by OS
Asset Inc. (by way of an assignment from Outback Steakhouse of
Florida, Inc., recorded with USPTO on December 28, 1999 at
Reel/Frame nos. 2009/0330).

Opposition No. 91161384
5
based on claims that the registered marks are deceptive or,
in the alternative, geographically descriptive. However,
applicant did not present any evidence at trial in support
of the allegations. We therefore find that applicant has
failed to establish any grounds for cancellation.
Accordingly, applicant's counterclaim for cancellation is
denied.
Opposers’ Standing and Priority
Because three of opposers’ pleaded registrations,
summarized above, are properly of record, opposers have
established their standing to oppose registration of
applicant’s mark and their priority is not in issue. See
King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108 (CCPA 1974).
Likelihood of Confusion
Our likelihood of confusion determination under
Trademark Act Section 2(d) is based on an analysis of all of
the probative facts in evidence that are relevant to the
factors set forth in In re E. I. du Pont de Nemours and Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities between
the marks and the similarities between the goods and/or
Opposition No. 91161384
6
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Before addressing the two aforementioned du Pont
factors, we look first to another factor which involves the
fame of opposers’ pleaded marks. While fame has not been
pleaded, opposers argue that their marks containing the term
OUTBACK are strong in that they are inherently distinctive
and that said marks are “commercially strong and famous.”
Brief, p. 7. The record supports opposers’ former argument,
i.e., we may make a finding that opposers’ marks, OUTBACK
and OUTBACK STEAKHOUSE (with design), are strong to the
extent that we must presume that they are inherently
distinctive in view of the registrations of record on the
Principal Register. As to opposers’ latter contention,
i.e., that their marks are commercially strong and have
“extensive recognition and renown” (brief, p. 9), opposers
rely exclusively on purported facts and anecdotal evidence
gleaned from the news articles submitted via their notice of
reliance. Opposers urge the Board to weigh the “fame” of
their prior marks in their favor.
It has long been held that we cannot consider any
printed publications submitted in this manner for proof of
the facts asserted in the printed publications, as opposers
urge us to do here. See Logicon, Inc. v. Logisticon, Inc.,
205 USPQ 767, 768 n.6 (TTAB 1980); see also, generally, TBMP
Opposition No. 91161384
7
§ 704.08 (2d ed. 2003). Rather, these articles are hearsay
and merely serve as evidence that the content appeared and
that the public was exposed to that content. Id.
In view thereof and on the record before us, we cannot
find that the strength of opposers’ registered marks of
record reach the level of playing “a ‘dominant’ role in the
process of balancing the du Pont factors.” Recot Inc. v.
Benton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir.
2000). See also, Palm Bay Imports, Inc. v. Veuve Clicquot,
396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005); In re
Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059 (Fed. Cir.
2003); and Bose Corp. v. QSC Audio Products, Inc., 293 F.3d
1367, 63 USPQ2d 1303 (Fed. Cir. 2002).
With the above in mind, we begin our analysis of the
marks. Under this du Pont factor, we look to the similarity
or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.
The obvious similarity visually and aurally between the
parties’ marks is that applicant’s mark incorporates
opposers’ registered mark, OUTBACK, into its mark. This
similarity is somewhat more pronounced as the term, OUTBACK,
in applicant’s mark appears in a larger font, prominently in
the middle of the mark with the term RAIN. And, as opposers
pointed out, there is a line of cases holding that the
addition of other matter, such as a house mark, primary mark
Opposition No. 91161384
8
or other material, to one of two otherwise similar marks, is
not sufficient to distinguish the marks as a whole. See,
generally, First International Services Corp. v. Chuckles
Inc., 5 USPQ2d 1628 (TTAB 1988) and cases cited therein.
Nonetheless, this is not a steadfast rule and exceptions
have been made when the additional matter was found
sufficient to distinguish the marks under circumstances
where the marks in their entireties convey significantly
different meanings or commercial impressions or the
incorporated matter has been so merged with the other matter
that it “loses its separate identity.” See, e.g., Castle &
Cooke, Inc. v. Oulevay, S. A., 370 F.2d 359, 152 USPQ 115
(CCPA 1967) (FARENDOLE not confusingly similar to DOLE for
related food products because DOLE is so merged into
FARANDOLE that it loses its individual identity therein);
Lever Brothers Company v. The Barcolene Company, 463 F.2d
1107, 174 USPQ 392 (CCPA 1972) (mark ALL CLEAR! not
confusingly similar to ALL); and Colgate-Palmolive Co. v.
Carter-Wallace, Inc., 432 F.2d 1400, 167 USPQ 529 (CCPA
1970) (no likelihood of confusion found between marks PEAK
for dentifrice and PEAK PERIOD for personal deodorant).
We find here that the additional matter in applicant’s
mark creates a slightly different overall commercial
impression from that created by opposers’ OUTBACK mark (the
different commercial impressions is even more so with regard
Opposition No. 91161384
9
to opposers’ OUTBACK STEAKHOUSE and design mark).
Specifically, when considered in the context of the
identified goods, applicant’s mark strongly suggests that
its bottled water derives from the rainfall of the rural
areas of Australia known as “the outback.”9 The tropical
tree branches design in applicant’s mark reinforces this
suggestion of a natural, unpolluted source for the water.
Although opposers’ registered mark, OUTBACK, may also
conjure the rural region of Australia known as “the
outback,” it does not share the same connotation as
applicant’s mark because it is not being used in connection
with bottled water and does not contain the additional term,
RAIN. In other words, consumers will not perceive opposers’
mark OUTBACK as suggesting a natural source for their beer
or baked goods.
In our comparisons of the marks, we are also cognizant
of the fact that the phrase AUSTRALIAN OUTBACK has been
disclaimed by applicant, presumably because it is
geographically descriptive of applicant’s bottled water.
Generally, such descriptive terms are accorded less weight.
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751

9 We take notice that “outback” is defined as “isolated rural
country especially of Australia.” Merriam-Webster's Collegiate
Dictionary, Eleventh Edition. The Board may take judicial notice
of dictionary definitions. University of Notre Dame du Lac v. J.
C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).

Opposition No. 91161384
10
(Fed. Cir. 1985) (“That a particular feature is descriptive
[or otherwise lacking in distinctiveness]. . . with respect
to the involved goods or services is one commonly accepted
rationale for giving less weight to a portion of a mark …”).
Thus, the term OUTBACK, as used in applicant’s mark, may be
perceived by consumers as merely identifying the source of
origin of the goods.
As to opposers’ OUTBACK STEAKHOUSE (and design) mark
vis-à-vis applicant’s mark, there are further noticeable
differences visually, aurally and in their commercial
impressions. Specifically, opposers’ mark contains a
kangaroo with a knapsack on a stick over the shoulder.
Moreover, we note that the term STEAKHOUSE is not disclaimed
in the registration and cannot be ignored. Thus, in
addition to the different commercial impressions created
thereby, we find overall that applicant’s mark is not
similar to opposers’ OUTBACK STEAKHOUSE (and design) mark.
Accordingly, we weigh this du Pont factor, with respect to
this mark, in favor of applicant.
However, as to opposers’ OUTBACK mark, we find that the
similarity between it and applicant’s mark slightly
outweighs the differences. Although we found that
applicant’s mark, as a whole, takes on a slightly different
connotation, this difference does not rise to the level of
those cases where we found that the common element had “lost
Opposition No. 91161384
11
its separate identity.” Castle & Cooke, Inc., 152 USPQ at
115. Moreover, while we acknowledge that the term OUTBACK
is descriptive with respect to applicant’s goods, we cannot
ignore the fact that applicant’s mark incorporates opposers’
OUTBACK mark, a presumptively strong one, in its entirety.
Accordingly, with respect to opposers’ OUTBACK mark, we
weigh this du Pont factor in favor of opposers, albeit
slightly.
We next consider the relatedness of the parties’ goods.
Here, we must make our findings based on the goods as they
are recited in the application and registrations. See
Octocom Systems Inc. v. Houston Computers Services Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re
Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992); In re Elbaum, 211
USPQ 639 (TTAB 1981). Again, the goods identified in
opposers’ registrations of record are beer and baked goods,
namely, bread, biscuits and rolls; and applicant has
identified bottled drinking water as goods in its
application.
In determining the relatedness of the goods, we would
be remiss if we did not point out that there is absolutely
no evidence in the record on this subject. Opposers, who
bear the burden of demonstrating a likelihood of confusion,
instead rely heavily on previous Board decisions finding a
likelihood of confusion between either restaurant services
Opposition No. 91161384
12
and beverages or alcoholic beverages and non-alcoholic
beverages. Such reliance is misplaced. First, restaurant
services are not at issue in this case. Second, it is well-
settled that each case must be decided on its own set of
facts of record. See, e.g., Colgate-Palmolive Company, 167
USPQ at 530-531 [“We are familiar with, and have considered,
the array of decided cases cited and relied on by the
parties. Except as the decided cases enunciate principles
of trademark jurisprudence, they provide but meager
assistance in the disposition of varied cases as they
arise”]. Suffice to say, we expect that the records in the
cases cited by counsel contained at least some evidence to
help establish the relatedness of the involved goods and/or
services.
Despite the lack of evidence, we are able to take
notice that both beer and bottled drinking water are
beverages which may be sold in the same retail stores to the
general consuming public. However, the Board has held that
“[t]here is and should be no per se rule that alcoholic and
non-alcoholic beverages are related products.” In re Jacob
Demmer KG, 219 USPQ 1199, 1201 (TTAB 1983). Moreover, while
we take notice that the respective goods are beverages, said
goods are at the same time very different inasmuch as beer
is an alcoholic beverage (sold in controlled circumstances
to those of legal age) and bottled water is more akin to
Opposition No. 91161384
13
soft drinks or health beverages. Again, we have no evidence
that these differing types of products would ever emanate
from a single source or that consumers would have such an
expectation that they could.
As to opposers’ baked goods, we find the differences
between these goods on one hand, and bottled water on the
other, are too great to find a likelihood of confusion in
the absence of any evidence to support such a conclusion.
Again, the record is void of any evidence for us to conclude
that these goods are even complementary.
Hence, we cannot determine from the registrations of
record, the application, and the evidentiary record before
us (or lack thereof) that the goods are related. This
factor therefore weighs against a finding of a likelihood of
confusion.
With regard to the channels of trade through which the
goods move in commerce, the identifications of goods in the
application and pleaded registrations of record are not
limited by trade channels. Thus, we must assume that the
goods are available in all the normal channels of trade to
all the usual purchasers for such goods. See Interstate
Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910 (TTAB
2000). As we have already acknowledged, there is the chance
that the goods of both parties will be found in the same
retail stores, e.g., a grocery store. However, our cases
Opposition No. 91161384
14
caution that little can be concluded merely from the fact
that two items can both be found in retail outlets such as a
grocery store or served in a restaurant. Hi-Country Foods
Corp. v. Hi Country Beef Jerky, 4 USPQ2d 1169, 1171-72 (TTAB
1987). Should we follow that reasoning, we would come to
the same conclusion in nearly every case involving food
items and/or beverages.
The only evidence of record as to the parties’
demonstrated or anticipated trade channels is contained in
applicant’s discovery responses. Specifically, applicant
stated that its goods are currently being sold in cafes
(Interrog. Response No. 10) and at supermarkets and duty-
free airport shops (Interrog. Response No. 22), all in
Australia. Applicant also admitted that it has not sold its
bottled water via an internet website, but “needs to do so”
(Admission Response No. 18). Opposers, on the other hand,
have not demonstrated that their goods move in the same
trade channels or that cafes or duty-free airport shops may
be considered normal trade channels for opposers’ goods.
Based on the above, we conclude that this factor is
neutral or, at most, only slightly favors opposers to the
extent that applicant’s bottle water and opposers’ beer may
be served in the same cafes or found in the same
supermarket.
Opposition No. 91161384
15
Upon balancing all of the relevant du Pont factors, we
conclude that there is no likelihood of confusion. We reach
this conclusion despite opposers’ slight advantage regarding
the similarity of their OUTBACK mark to applicant’s mark,
AUSTRALIAN OUTBACK RAIN and design, and acknowledging that
the identified goods may be sold in the same grocery stores.
Even allowing for the fact that both parties’ goods are
beverages, opposers have not demonstrated that applicant’s
bottled water is sufficiently related to opposers’ beer,
such that we can conclude that there is a likelihood of
confusion when the parties’ marks are used on said goods.
Decision: The opposition and counterclaim are both
dismissed, and a Notice of Allowance should issue to
applicant in due course.