The Brooklyn Brewery Corporationv.Brooklyn Brew Shop, LLC

Trademark Trial and Appeal Board

Aug 10, 2020

91223982 (T.T.A.B. Aug. 10, 2020)

THIS OPINION IS A
PRECEDENT OF THE TTAB

Mailed: August 10, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____
The Brooklyn Brewery Corporation
v.
Brooklyn Brew Shop, LLC
________

Opposition No. 912239821
Cancellation No. 92062838
_______
John J. Dabney of McDermott Will & Emery LLP
for The Brooklyn Brewery Corporation.

Charles Hoffmann of Hoffmann Marshall Strong LLP
for Brooklyn Brew Shop, LLC.
_______
Before Kuhlke, Shaw and Heasley,
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:
Brooklyn Brew Shop, LLC (“Defendant”) owns a registration on the Principal
Register for the mark BROOKLYN BREW SHOP, in standard characters
(BROOKLYN BREW disclaimed), for goods identified as a “Beer making kit” in

1 Opposition No. 91223982 was consolidated with Cancellation No. 92062838 by Board order
dated March 2, 2016. See 9 TTABVUE in Opposition No. 91223982. All TTABVUE citations
in this decision reference the docket in the parent case, i.e., Opposition No. 91223982.
Opposition No. 91223982 and Cancellation No. 92062838
2
International Class 32,2 and seeks registration of the stylized mark
(BREWSHOP disclaimed) for goods identified as:
Sanitizing preparations for household use, in International
Class 5;
Beverage glassware; Coasters, not of paper and other than
table linen, in International Class 21; and
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; 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; Porter;
Processed hops for use in making beer; Root beer, in
International Class 32.3

2 Registration No. 4034439, issued October 4, 2011 from an application filed on February 18,
2011, Section 8 affidavit filed and accepted.
3 Application Serial No. 86280776, filed May 14, 2014 under Trademark Act Section 1(a), 15
U.S.C. § 1051(a); alleging a date of first use of the mark anywhere on the goods in class 5 as
of July 12, 2012 and a date of first use in commerce as of September 27, 2012; alleging a date
of first use of the mark anywhere and in commerce on the goods in class 21 as of November
6, 2011; and alleging a date of first use of the mark anywhere and in commerce on the goods
in class 32 as of March 25, 2009. Defendant seeks registration under Section 2(f) of the
Trademark Act, 15 U.S.C. § 1052(f), as to the entire mark.
The description of the mark states: “The mark consists of the word ‘Brooklyn’ appearing
above the words ‘BrewShop’. ‘Brooklyn’ is in a smaller type and nests within the space
between the first two capitalized letters of ‘Brew’ (‘B’) and ‘Shop’ (‘S’).” Color is not claimed
as a feature of the mark.
Opposition No. 91223982 and Cancellation No. 92062838
3
In its petition for cancellation and notice of opposition, The Brooklyn Brewery
Corporation (“Plaintiff”) alleges prior use and registration of the marks BROOKLYN
BREWERY, in standard characters, and , for goods including:
Beer mugs; Coffee cups; Cups; Cups and mugs;
Dinnerware, namely, cups and glasses; Drinking cups;
Drinking glasses; Glass mugs; Goblets; Mugs; Pilsner
drinking glasses; plastic cups, in International Class 21;4
Brewed malt-based alcoholic beverage in the nature of a
beer, in International Class 32.5
Plaintiff further alleges prior use and registration of the mark BROOKLYN, in
standard characters, for “Beer” in International Class 32.6 Plaintiff also alleges prior
common law rights in the marks BROOKLYN BREWERY for beer and beverage
glassware and BROOKLYN for beer (collectively referred to as “Plaintiff’s Brooklyn
Brewery marks”).

4 Registration No. 5094732, issued December 6, 2016 from an application filed on April 7,
2016, with a claim of acquired distinctiveness under Trademark Act Section 2(f). Registration
No. 5164268, issued March 21, 2017 from an application filed on April 7, 2016, with a claim
of acquired distinctiveness in part as to BROOKLYN under Trademark Act Section 2(f).
BREWERY is disclaimed in both registrations.
5 Registration No. 3186503, issued December 19, 2006 from an application filed on
December 21, 2005, with a claim of acquired distinctiveness under Trademark Act Section
2(f); renewed. Registration No. 3186499, issued December 19, 2006 from an application filed
on December 21, 2005 with a claim of acquired distinctiveness under Trademark Act Section
2(f); renewed. BREWERY is disclaimed in both registrations.
6 Registration No. 5216092, issued June 6, 2017 with a claim of acquired distinctiveness
under Trademark Act Section 2(f).
Opposition No. 91223982 and Cancellation No. 92062838
4
Plaintiff alleges:
(1) Defendant’s marks are likely to cause confusion with Plaintiff’s Brooklyn
Brewery marks under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d);7
(2) Defendant’s BROOKLYN BREW SHOP mark in Reg. No. 4034439 is merely
descriptive under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), and
lacked acquired distinctiveness at the time of registration;8 and
(3) Defendant’s mark in Application Ser. No. 86280776 is
primarily geographically descriptive of its goods under Section 2(e)(2) of the
Trademark Act, 15 U.S.C. § 1052(e)(2), and lacks acquired distinctiveness.9
In its answers, Defendant denies the salient allegations and asserts the
affirmative defenses of laches, acquiescence, and equitable estoppel.10 Defendant
timely moved to amend the ’776 application to delete all wording in class 32 except
for “beer making kit.”11 Defendant’s amendment to the identification of goods,
opposed by Plaintiff and deferred until final decision, is discussed in more detail
below.12 Defendant also argues that Plaintiff’s claim that Defendant’s mark is
primarily geographically descriptive under Section 2(e)(2) was not properly pleaded.

7 30 TTABVUE 103–10.
8 Id. at 107–10.
9 Plaintiff’s Br., p. 4, 103 TTABVUE 5.
10 40 and 47 TTABVUE.
11 14 TTABVUE 2–4.
12 16 TTABVUE 3.
Opposition No. 91223982 and Cancellation No. 92062838
5
I. The Record
The parties filed a joint stipulation regarding the admission of evidence.13 The
stipulation provides that documents produced through discovery may be offered into
evidence via notice of reliance without witness testimony and will be deemed
authentic business records. Moreover, documents submitted in support of or in
opposition to Plaintiff’s earlier-filed motion for summary judgment shall be deemed
admitted into the record. Testimony and related exhibits may be admitted via sworn
declaration, and discovery depositions with related exhibits may be introduced via a
notice of reliance. The Board, on March 28, 2019, approved the stipulation.14
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the files of the involved registration and application. In addition,
the parties submitted the following evidence.
A. Plaintiff:
1. Declaration of Eric Ottaway, Plaintiff’s CEO, with exhibits, including
status and title copies of Plaintiff’s registrations.15

13 59 TTABVUE. The parties have designated much of their testimony as confidential, in
some cases, improperly so. In its final decision, the Board must be able to discuss the evidence
of record, unless there is an overriding need for confidentiality, so that the parties and a
reviewing court will know the basis of the Board’s decisions. Swiss Watch Int’l Inc. v. Fed’n
of the Swiss Watch Indus., 101 USPQ2d 1731, 1736 n.12 (TTAB 2012). Pursuant to
Trademark Rule 2.116(g), 37 C.F.R. § 2.116(g), we exercise our discretion to “treat as not
confidential that material which cannot reasonably be considered confidential,
notwithstanding a designation as such by a party.”
14 85 TTABVUE.
15 60–63 TTABVUE.
Opposition No. 91223982 and Cancellation No. 92062838
6
2. Declaration of Glenn Severance, Plaintiff’s Point of Sale Manager, with
exhibits.16
3. Declaration of Daniel D’Ippolito, Plaintiff’s former Communications
Coordinator.17
4. Declaration of Alyson Deppa, Plaintiff’s Assistant Controller.18
5. Declaration of Joseph Thompson, Plaintiff’s employee.19
6. Declaration of Jonathan Reyes, Plaintiff’s employee, with exhibits.20
7. Declaration of Sarah Blumenthal, Plaintiff’s Operations Coordinator.21
8. Declaration of Robin Ottaway, Plaintiff’s President.22
9. Notice of Reliance on third-party registrations printed from the USPTO’s
TESS database.23
10. Notice of Reliance on the summary judgment record, including excerpts
from Plaintiff’s website, dictionary definitions, Defendant’s advertising
expenses and sales revenues, and testimony from Defendant.24
11. Notice of Reliance on Defendant’s confidential financial records.25

16 64–65 TTABVUE.
17 66 TTABVUE.
18 67 TTABVUE.
19 68 TTABVUE.
20 69 TTABVUE.
21 70 TTABVUE.
22 102 TTABVUE.
23 71 TTABVUE.
24 50–51, 54, and 72 TTABVUE.
25 77–78 TTABVUE.
Opposition No. 91223982 and Cancellation No. 92062838
7
12. Notice of Reliance on internet materials, including excerpts from
Defendant’s website.26
13. Notice of Reliance on Defendant’s produced documents, responses to
requests for admission, and responses to interrogatories.27
14. Notice of Reliance on internet documents and website excerpts relating to
home brewing beer.28
15. Notice of Reliance on discovery depositions and associated exhibits of
Defendant’s co-owners, Stephen Valand and Erica Shea.29
B. Defendant:
1. Declarations of Stephen Valand, with exhibits.30
2. Notice of Reliance on deposition of Eric Ottaway, with exhibits.31
3. Notice of Reliance on Plaintiff’s answers to interrogatories and responses to
requests for admission.32
4. Notice of Reliance on Plaintiff’s produced documents including Plaintiff’s
trademark Application Serial Nos. 86818336 and 86968215, e-mail chains

26 74 TTABVUE.
27 75–76, and 80 TTABVUE.
28 81–82 TTABVUE.
29 83–84 TTABVUE.
30 86–90 TTABVUE.
31 92–93 TTABVUE.
32 94 TTABVUE.
Opposition No. 91223982 and Cancellation No. 92062838
8
produced by Plaintiff, web pages from Plaintiff’s website, and alleged
admissions from Plaintiff’s motion for leave to amend the complaint.33
5. Notice of Reliance on internet documents, including dictionary definitions,
message board postings, and websites from Brooklyn-based companies.34
6. Notice of Reliance on excerpt from deposition of Erica Shea.35
II. Preliminary Matters
A. Plaintiff’s primarily geographically descriptive claim
In addition to its Trademark Act Section 2(d) and 2(e)(1) claims, Plaintiff, in its
main brief, also argues that Defendant’s stylized BROOKLYN BREW SHOP mark in
the ’776 application is primarily geographically descriptive under Trademark Act
Section 2(e)(2). Defendant objects, pointing out that Plaintiff failed to plead this
ground in the amended notice of opposition, and therefore the Board cannot consider
it.36
A plaintiff may not rely on an unpleaded claim in its brief, and to pursue an
unpleaded claim, a plaintiff’s pleading must be amended under Fed. R. Civ. P. 15(b)
to assert the claim, or the claim must have been tried by express or implied consent.
Fed. R. Civ. P. 15(b); see, e.g., Hornby v. TJX Cos. Inc., 87 USPQ2d 1411, 1415 (TTAB
2008). Plaintiff was advised by the Board prior to trial that it had not pleaded a claim

33 30, and 95–96 TTABVUE.
34 97 TTABVUE.
35 98–99 TTABVUE.
36 Defendant’s Br., p. 46, 106 TTABVUE 47.
Opposition No. 91223982 and Cancellation No. 92062838
9
that Defendant’s marks are primarily geographically descriptive.37 Plaintiff was
specifically advised by the Board’s October 2, 2018 order that “[a]bsent a motion to
amend the pleadings, both the cancellation and opposition proceedings will go
forward without the primarily geographically descriptive claim.”38 Plaintiff never
moved to amend the pleadings to add such a claim.
We also do not find that the claim has been tried by express or implied consent.
Because Defendant specifically objected to consideration of this claim, there has been
no express consent. Implied consent can only be found where the non-offering party
(1) raised no objection to the introduction of evidence on the issue, and (2) was fair ly
apprised that the evidence was being offered in support of the issue. Citigroup Inc. v.
Capital City Bank Grp., Inc., 94 USPQ2d 1645, 1656 (TTAB 2010) (“Citigroup I”)
(quoting TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”)
§ 501.03(b)), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011) (“Citigroup II”).
“The question of whether an issue was tried by consent is basically one of fairness.
The non-moving party must be aware that the issue is being tried, and therefore there
should be no doubt on this matter.” Morgan Creek Prods. Inc. v. Foria Int’l Inc., 91
USPQ2d 1134, 1139 (TTAB 2009). We do not find Plaintiff’s testimony and evidence
at trial to have included any clear indication to Defendant that a primarily geographic
descriptiveness claim was being tried. Although the geographic significance of
Brooklyn was raised, Plaintiff’s Section 2(e)(1) claim also relies in part on this

37 Denial of Plaintiff’s Motion for Summary Judgment, 55 TTABVUE.
38 Id. at 3 n.5, 55 TTABVUE 3.
Opposition No. 91223982 and Cancellation No. 92062838
10
geographic significance. Because we cannot say Defendant was on notice that
Plaintiff was asserting a geographic descriptiveness claim under Section 2(e)(2), we
find that it was not tried with Defendant’s implied consent.
In sum, Plaintiff did not specifically assert a Trademark Act Section 2(e)(2) claim
in its notice of opposition. Plaintiff, moreover, did not amend its pleadings to add the
claim after the Board advised Plaintiff that proceedings would go forward only on the
Section 2(d) and 2(e)(1) claims. Having been told by the Board that a Section 2(e)(2)
claim would not be considered absent an amendment to the pleadings, Plaintiff will
not now be heard to argue that a Section 2(e)(2) claim must be considered. To allow
Plaintiff to raise the Section 2(e)(2) claim now would constitute an undue surprise for
Defendant, particularly given the Board’s order clearly stating that proceedings
would go forward without the claim. Hilson Research Inc. v. Soc’y for Human Resource
Mgmt., 27 USPQ2d 1423, 1440 (TTAB 1993) (issue of abandonment argued in final
brief was neither pleaded nor tried). Accordingly, we have not considered the
unpleaded claim that Defendant’s mark is primarily geographically descriptive under
Section 2(e)(2).
B. Evidentiary objections
Plaintiff objects to Defendant’s exhibits 72 and 73 to the Declaration of Stephen
Valand, Defendant’s co-owner.39 The exhibits comprise two spreadsheets, maintained
by Defendant, detailing “press mentions” of Brooklyn Brew Shop products, of which

39 105 TTABVUE.
Opposition No. 91223982 and Cancellation No. 92062838
11
Defendant became aware since approximately 2012.40 The spreadsheets list the date,
type of press mention, outlet, topic, circulation, media impressions, and the link for
the mentions.
Plaintiff objects to the exhibits under Federal Rule 37(c)(1) on the grounds that
Defendant failed to produce these documents in discovery, even though the
documents allegedly were requested by Plaintiff’s document requests. Plaintiff also
objects to the exhibits under Federal Rule of Evidence 802 because the spreadsheets
contain inadmissible hearsay, including “the estimated number of print editions in
circulation” and the “estimated number of readers of a digital publication.”41
We decline to strike the exhibits inasmuch as Plaintiff does not explain which of
its document requests, if any, addressed the spreadsheets of press mentions. With
regard to the hearsay objection, we agree that the circulation and media impressions
statistics are hearsay, and we have not considered them. With regard to the
remainder of the information contained in the spreadsheets, we employ the standard
the Board has noted before:
[T]he Board is capable of weighing the relevance and
strength or weakness of the objected-to testimony and
evidence, including any inherent limitations. . . . [W]e find
no basis on which to strike any testimony or other evidence.
As necessary and appropriate, we will point out any
limitations in the evidence or otherwise note that the
evidence cannot be relied upon in the manner sought. We
have considered all of the testimony and evidence
introduced into the record. In doing so, we have kept in
mind the various objections raised by the parties and we

40 Valand Dec., ¶ 15, p. 6, 86 TTABVUE 8; 90 TTABVUE 1–61.
41 105 TTABVUE 2.
Opposition No. 91223982 and Cancellation No. 92062838
12
have accorded whatever probative value the subject
testimony and evidence merit.
Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1479 (TTAB
2017). In short, “we simply accord the evidence whatever probative value it deserves,
if any at all.” Hunt Control Sys. Inc. v. Koninklijke Philips Elec. N.V., 98 USPQ2d
1558, 1564 (TTAB 2011), rev’d in part on other grounds, No. 11-3684 (SRC) (CLW),
2017 WL 3719468 (D.N.J. Aug. 29, 2017).
C. Defendant’s motion to amend the identification of goods in the ’776
application
Defendant timely moved to amend to the ’776 application to delete all goods in
class 32 except for “Beer making kit.”42 The motion was filed without the consent of
Plaintiff, and Plaintiff filed its opposition to the proposed amendment.43 The Board
deferred consideration of the motion under Trademark Rule 2.133(a), 37 C.F.R.
§ 2.133(a), until final decision.44
Section 18 of the Trademark Act gives the Board the equitable power to, inter alia,
“restrict the goods or services identified in an application or registration.” 15 U.S.C.
§ 1068. Pursuant to Section 18 and in conjunction with a motion to amend, a
defendant may assert an affirmative defense by moving to restrict its own goods or
services in order to avoid any likelihood of confusion alleged by the plaintiff. Id.;
Trademark Rule 2.133, 37 C.F.R. § 2.133; TBMP § 514 (June 2019). See also
Embarcadero Tech. Inc. v. RStudio Inc., 105 USPQ2d 1825, 1841 (TTAB 2013)

42 14 TTABVUE 2–4.
43 15 TTABVUE.
44 16 TTABVUE 3.
Opposition No. 91223982 and Cancellation No. 92062838
13
(proposed amendments restricting the identification of goods to negate the likelihood
of confusion).
An acceptable amendment to the identification of goods or services may be
permitted, even where an opposer objects, if: 1) the proposed amendment serves to
limit the broader identification of goods or services; 2) applicant consents to the entry
of judgment with respect to the broader identification of goods or services present at
publication; 3) the specimens of record support the goods or services as amended; and
4) if the applicant wishes to avoid the possibility of a res judicata effect by the entry
of judgment on the original identification, the applicant must make a prima facie
showing that the proposed amendment serves to change the nature and character of
the goods or services or restrict their channels of trade and customers so as to
introduce a substantially different issue for trial. Johnson & Johnson v. Stryker
Corp., 109 USPQ2d 1077, 1078–79 (TTAB 2013); Drive Trademark Holdings LLC v.
Inofin, 83 USPQ2d 1433, 1435 (TTAB 2007). Because Defendant consents to entry of
judgment as to its broader recitation, the amendment serves to narrow the scope of
the identification, and the specimens of record support the goods as amended, we
grant Defendant’s motion to amend the identification of goods in class 32 to “Beer
making kit.” Additionally, we find that Defendant has shown that the amendment
limits the identification of goods to a beer making kit, thereby changing the nature
and character of the goods so as to avoid res judicata.
Opposition No. 91223982 and Cancellation No. 92062838
14
III. Standing and Priority
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1061–62 (Fed. Cir. 2014); Lipton Indus., Inc. v. Ralston Purina Co.,
670 F.2d 1024, 213 USPQ 185, 187–89 (CCPA 1982); see also, e.g., Bell’s Brewery, Inc.
v. Innovation Brewing, 125 USPQ2d 1340, 1344 (TTAB 2017). In order to meet the
standing requirement, a plaintiff need only show that it has a real interest, i.e., a
personal stake, in the outcome of the proceeding, and a reasonable basis for its belief
of damage. See Ritchie v. Simpson, 170 F.3d 1092, 1095, 50 USPQ2d 1023, 1025–26
(Fed. Cir. 1999); Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1727 (Fed. Cir. 2012). A belief in likely damage can be shown by
establishing a direct commercial interest. Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). Plaintiff’s standing in these consolidated
proceedings is established by its pleaded registrations, which the record shows to be
valid and subsisting, and owned by Plaintiff. Cunningham, 55 USPQ2d at 1844; Otter
Prods. LLC v. BaseOneLabs LLC, 105 USPQ2d 1252, 1254 (TTAB 2012).
Because Plaintiff’s pleaded BROOKLYN BREWERY registrations for “brewed
malt-based alcoholic beverage in the nature of a beer” in class 32 are of record,
priority is not an issue with respect to “beer.”45 Christian Broad. Network Inc. v. ABS-
CBN Int’l, 84 USPQ2d 1560, 1565 (TTAB 2007) (where both petitioner and

45 Second amended notice of opposition and petition for cancellation, 30 TTABVUE 103–10;
Ottaway Dec., ¶ 5, Exh. A-1, 60 TTABVUE 3 and 12–16.
Opposition No. 91223982 and Cancellation No. 92062838
15
respondent are owners of registrations, petitioner must prove priority of use; may
rely on filing date of application for registration). In addition, Plaintiff has
established priority via testimony of its CEO, Eric Ottaway, as to its pleaded
BROOKLYN BREWERY marks for beverage glassware in class 21.46
Plaintiff has established priority for the mark BROOKLYN for “beer,” inasmuch
as Plaintiff has established common law use of BROOKLYN for beer since as early
as “the late 1980’s,”47 which pre-dates any date upon which Defendant may rely with
respect to a “beer making kit.”
IV. Background48
Plaintiff is “among the oldest and largest craft brewers in the United States.”49
For more than thirty years, Plaintiff has sold a variety of beers under its BROOKLYN
BREWERY marks.50 These beers are sold nationwide in thousands of retail
establishments, including grocery stores, department stores, pharmacies,
convenience stores, and liquor stores.51 Plaintiff’s beer is sold to millions of
consumers, and sales of beer have risen considerably to “approximately 277,000

46 Second amended notice of opposition and petition for cancellation, 30 TTABVUE 103–10;
Ottaway Dec., ¶¶ 4, 5, and 12, Exhs. A-2 and A-13, 60 TTABVUE 2–3, 5, 17–21, and 89-138.
47 Plaintiff’s Br., p. 44, 103 TTABVUE 45; second amended notice of opposition and petition
for cancellation, 30 TTABVUE 103–10; Ottaway Dec., ¶¶ 5, 6, and 14, Exhs. A-3, A-4, and A-
7, 60 TTABVUE 3, 5, 22–35, 43–60, and 89-138.
48 This background narrative is based on evidence and admissions in the record and
constitute our findings on the facts discussed, unless otherwise qualified.
49 Ottaway Dec., ¶¶ 6 and 11, 60 TTABVUE 4.
50 Id. at ¶ 6, 60 TTABVUE 3.
51 Id. at ¶ 9, 60 TTABVUE 3.
Opposition No. 91223982 and Cancellation No. 92062838
16
barrels” in 2018.52 Sales revenues, although confidential, have grown significantly in
recent years, and are in the tens of millions of dollars annually.53
Defendant, Brooklyn Brew Shop, was founded in Brooklyn in 2009 “to create an
easy way for people with limited space, such as people living in small apartments,
typical of places like Brooklyn, to learn how to brew their own beer.”54 Defendant
initially sold its beer-making kits at local Brooklyn flea markets, but eventually it
sold the kits in retail establishments such as Bed Bath & Beyond, Whole Foods,
Macy’s, Urban Outfitters, and Nordstrom, as well as online.55
Plaintiff admitted that it “first became aware of [Defendant’s] use of ‘Brooklyn
Brew Shop’ as early as 2010.”56 The parties have communicated regularly since at
least as early as 2011. For example, in June 2011, several weeks before publication
for opposition of Defendant’s BROOKLYN BREW SHOP standard character mark for
beer-making kits, Plaintiff’s Communications Coordinator, Daniel D’Ippolito,
corresponded with Defendant via email regarding “calls from people who have
intended to contact Brooklyn Brew Shop, but instead have contacted Brooklyn
Brewery.”57 In the email, D’Ippolito discussed an article on craftbeer.com that mis-
attributed a Brooklyn Brew Shop product to Brooklyn Brewery:58

52 Id. at ¶ 10, 60 TTABVUE 3.
53 Id. ¶ 10, 65 TTABVUE 32(confidential version),
54 Valand Dec., ¶ 5, 86 TTABVUE 4.
55 Id. at ¶ 9, 86 TTABVUE 5.
56 Plaintiff’s responses to Defendant’s first set of interrogatories, No. 12, 94 TTABVUE 11.
57 Valand Dec., ¶ 104, 86 TTABVUE 37; Exh. H-3, 80 TTABVUE 39.
58 Id.
Opposition No. 91223982 and Cancellation No. 92062838
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Despite this harbinger of possible confusion as to “business names,” the parties
began to collaborate on projects related to beer making. Between 2011 and 2016,
Plaintiff publicly collaborated with Defendant on a number of projects, including co -
branded beer-making kits, books on beer making, and educational programs on beer
making. For example, in August of 2011, Plaintiff’s merchandising manager, Glenn
Opposition No. 91223982 and Cancellation No. 92062838
18
Severance, reached out to Defendant to collaborate on the first co-branded beer
making kit:59

Eventually, the parties jointly created two co-branded beer-making kits. The kits
were manufactured by Defendant, based on Plaintiff’s beer recipes, and prominently
featured both parties’ marks. The first co-branded kit, the “Steve Hindy Edition,” was

59 Exh. 157 to Valand Dec., 86 TTABVUE 21, 90 TTABVUE 120.
Opposition No. 91223982 and Cancellation No. 92062838
19
sold only on Plaintiff’s website and in its store between 2012 and 2014.60 The second
co-branded kit, the “Sorachi Ace,” was sold between 2015 and 201661 by Plaintiff, as
well as by Defendant through retailers such as Whole Foods and 1-800-baskets.com.62
Boxes for the kits, shown below, prominently display Defendant’s BROOKLYN
BREW SHOP mark and Plaintiff’s B BROOKLYN BREWERY mark or stylized B
mark.
63 64
A number of promotional events were held in conjunction with these co-branded
kits. For example, in September 2015, a “launch” event for the second beer making

60 Severance Dec., p. 2, 64 TTABVUE 3.
61 Id.
62 Valand Dec., 86 TTABVUE 31.
63 Exh. 173 to Valand Dec., 88 TTABVUE 366.
64 Exh. 192 to Valand Dec., 89 TTABVUE 45.
Opposition No. 91223982 and Cancellation No. 92062838
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kit was held at Plaintiff’s brewery, featuring promotional signage touting the parties’
collaboration and displaying both of the parties’ marks:65

The promotional placard states: “BREW SOME BEER Brooklyn Brew Shop and the
Brooklyn Brewery have partnered to make it possible (and easy) for brewers
worldwide to make their own batches of Brooklyn Sorachi Ace at home.” The placard
and kit prominently displays both parties’ marks.
The parties’ employees frequently appeared together at beer-related events,
including several at Plaintiff’s brewery.66 At some of these events, Defendant’s

65 Exh. 191 to Valand Dec., 89 TTABVUE 43.
66 Valand Dec., ¶¶ 68–73, 86 TTABVUE 25–26; Exhs. 181–87, 89 TTABVUE 1–39, 90
TTABVUE 157.
Opposition No. 91223982 and Cancellation No. 92062838
21
employees would provide or pour beer samples made from its kits.67 For example, the
announcement for a 2011 event, titled “HOW TO BREW!” and held at the Brooklyn
Brewery, identifies Erica Shea and Stephen Valand from the Brooklyn Brew Shop as
lecturers on beer making:68

The public collaboration between the parties on a variety of projects continued
until approximately May 2015, when Plaintiff alleges it learned about Defendant’s

67 Id.
68 Exh. 184 to Valand Dec., 89 TTABVUE 23–24.
Opposition No. 91223982 and Cancellation No. 92062838
22
registration and application.69 Plaintiff states that it then conducted an internal
inquiry to determine the scope of Defendant’s business and impact of Defendant’s
marks on Plaintiff’s rights. Plaintiff argues that it was only after conducting its
internal inquiry that it realized the scope of Defendant’s business and instances of
actual confusion. Plaintiff reached out to Defendant in July of 2015 to voice its
objections to Defendant’s use of its marks.70 Plaintiff filed its notice of opposition to
the ’776 application on September 23, 2015, and its petition for cancellation of the
’439 registration on December 10, 2015. The parties conducted settlement
negotiations between September 2015 and June 2016 but were unable to settle their
dispute amicably.71
Defendant filed the application for its standard character mark on February 18,
2011, before the parties’ collaborated on the beer-making kits. The mark was
published for opposition on July 19, 2011 and the registration issued on October 4,
2011. Thus, when Plaintiff filed the cancellation proceeding on December 10, 2015,
approximately four years and five months had passed since publication of Defendant’s
mark, and four years and two months had passed since registration. For four years
during this time—from July 2011, when Defendant’s mark was published, until July
2015, when Plaintiff first objected to Defendant’s use of the marks—Plaintiff actively
collaborated with Defendant on a number of products without objecting to

69 Ottaway Dec., ¶ 24, 60 TTABVUE 8.
70 Id. at ¶ 31, 60 TTABVUE 9.
71 Id. at ¶ 33, 60 TTABVUE 10.
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23
Defendant’s use of the BROOKLYN BREW SHOP marks. When confusion was
encountered among members of the public, Plaintiff simply advised Defendant in
2011 that such confusion “might be something to keep an eye on.”72 As late as May of
2015, Plaintiff’s CEO, Eric Ottaway, told Defendant “While we have no problem with
the beer making kit side, we do have a problem with the beer category.”73
V. Affirmative Defenses of Laches, Estoppel, and Acquiescence
By statute, the defenses of laches, estoppel, and acquiescence are available in
trademark proceedings. See 15 U.S.C. § 1069 (“In all inter partes proceedings
equitable principles of laches, estoppel, and acquiescence, where applicable may be
considered and applied.”). Nevertheless, even if proven, equitable defenses cannot
serve as a bar to opposition or cancellation based on likelihood of confusion when
confusion is inevitable. In that event, any injury to the defendant is outweighed by
the public’s interest in preventing confusion. See, e.g., Ultra-White Co. v. Johnson
Chem. Indus., Inc., 465 F.2d 891, 175 USPQ 166, 167 (CCPA 1972) (equitable
defenses not applicable when confusion is inevitable). Nor can equitable defenses bar
an opposition or cancellation alleging that a mark is merely descriptive. See Saint-
Gobain Abrasives Inc. v. Unova Indus. Automation Sys. Inc., 66 USPQ2d 1355, 1359
(TTAB 2003) (the public interest “cannot be waived by the inaction of any single
person or concern no matter how long the delay persists.”); see generally In re Abcor
Dev. Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (CCPA 1978) (“The major reasons

72 Exh. H-3 to Plaintiff’s notice of reliance, 80 TTABVUE 39.
73 Exh. 202 to Valand Dec. ¶ 89, 86 TTABVUE 32, 90 TTABVUE 179–80 (confidential).
Opposition No. 91223982 and Cancellation No. 92062838
24
for not protecting [descriptive] marks are: (1) to prevent the owner of a mark from
inhibiting competition in the sale of particular goods; and (2) to maintain freedom of
the public to use the language involved, thus avoiding the possibility of harassing
infringement suits by the registrant against others who use the mark when
advertising or describing their own products.”) (citation omitted).
A. Laches
The equitable principle of laches is available as an affirmative defense that may
be raised in answer to a cancellation proceeding based on likelihood of confusion. 15
U.S.C. § 1069; Trademark Rule 2.106(b)(2), 37 C.F.R. § 2.106(b)(2); see TBMP
§ 311.02(b) (June 2019). Generally, laches is not available as a defense in an
opposition proceeding because the clock for laches begins to run from the date the
application is published for opposition. Nat’l Cable Television Ass’n v. Am. Cinema
Editors, Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1432 (Fed. Cir. 1991). Laches may be
available, however, if the applicant owns a prior registration for substantially the
same mark and goods. See Aquion Partners Ltd. P’ship v. Envirogard Prods. Ltd., 43
USPQ2d 1371, 1373 (TTAB 1997) (“[A] laches defense in an opposition proceeding
may be based upon an opposer’s failure to object to an applicant’s earlier registration
of substantially the same mark for substantially the same goods.”).
Defendant’s prior registration of the standard character mark BROOKLYN
BREW SHOP for beer-making kits entitles it to use the wording in any font style,
including that in the ’776 application, for the same goods. Citigroup II, 98 USPQ2d
at 1259 (registration of standard character mark entitles use of any font style, size or
color); see also In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1187 (TTAB 2018)
Opposition No. 91223982 and Cancellation No. 92062838
25
(literal elements of standard character marks may be presented in any font style, size
or color). Laches thus is available as a defense in the opposition proceeding as to the
beer-making kits. Aquion Partners, 43 USPQ2d at 1373.74
The elements of a laches defense are: (1) unreasonable delay in assertion of one’s
rights against another; and (2) material prejudice to the latter attributable to the
delay. See Bridgestone/Firestone Research Inc. v. Auto. Club de l’Ouest de la France,
245 F.3d 1359, 58 USPQ2d 1460, 1463 (Fed. Cir. 2001) (“Mere delay in asserting a
trademark-related right does not necessarily result in changed conditions sufficient
to support the defense of laches. There must also have been some detriment due to
the delay.”).
We first consider the element of unreasonable delay in Plaintiff’s assertion of its
rights against Defendant’s registered mark. “In determining whether a party has too
long ‘slept on its rights’ it is necessary to show that the party knew or should have
known that it had a right of action, yet did not act to assert or protect its rights.”
Bridgestone/Firestone, 58 USPQ2d at 1462. “[L]aches begins to run no earlier than
the date the involved mark was published for opposition (if there was actual

74 Plaintiff argues that the marks in the ’439 registration and the ’776 application are not the
same because Defendant disclaimed BROOKLYN in the registration and claims acquired
distinctiveness as to BROOKLYN in the application. Plaintiff’s Reply Br., p. 21, 109
TTABVUE 22. This argument is unpersuasive. The ’439 registration is constructive notice of
a claim of ownership and evidence of an exclusive right to use the mark on the goods.
Trademark Act Sections 22 and 33, 15 U.S.C. §§ 1072 and 1115. Moreover, a disclaimer does
not remove the disclaimed matter from the mark. The mark must still be regarded as a whole,
including the disclaimed matter, in evaluating similarity to other marks. See In re Nat’l Data
Corp., 753 F.2d 1056, 1059, 224 USPQ 749, 751 (Fed. Cir. 1985); Specialty Brands, Inc. v.
Coffee Bean Distribs., Inc., 748 F.2d 669, 672, 223 USPQ 1281, 1282 (Fed. Cir. 1984).
Similarly, like a disclaimer, a Section 2(f) claim does not remove matter from the mark.
Opposition No. 91223982 and Cancellation No. 92062838
26
knowledge[of trademark use]), and no later than the issue date of the registration.”
Ava Ruha Corp. v. Mother’s Nutritional Center, Inc., 113 USPQ2d 1575, 1580 (TTAB
2015) (“If there is actual knowledge of a defendant and its mark prior to publication
for opposition, the date of publication is the operative date for laches.”); Christian
Broadcasting Network, 84 USPQ2d at 1572. Given that Plaintiff was aware of
Defendant’s use of its mark prior to publication of its registered mark for opposition,
laches began to run from the date of publication of Defendant’s mark in the
application underlying the registration, July 19, 2011.75 See Krause v. Krause Publ’ns
Inc., 76 USPQ2d 1904 (TTAB 2005). As noted above, because the marks in
Defendant’s registration and application are substantially the same, Defendant may
rely on the publication date for the registration for its laches defense in the
opposition. Plaintiff filed its notice of opposition approximately four years and two
months later, on September 23, 2015, and its petition for cancellation approximately
four years and five months later, on December 10, 2015.
Delays of as little as three and a half years have constituted laches when coupled
with sufficient prejudice to registrants. See Teledyne Techs., Inc. v. W. Skyways, Inc.,
78 USPQ2d 1203, 1211 (TTAB 2006) (finding that a delay of three years, eight months
supported a laches defense to a cancellation based on Section 2(d) likelihood of
confusion), aff’d, 208 F. App’x 886 (Fed. Cir. 2006); Ava Ruha, 113 USPQ2d at 1581
(finding a laches defense to cancellation supported by a delay of three years and two
months); TPI Holdings, Inc. v. TrailerTrader.com, LLC, 126 USPQ2d 1409, 1414

75 Plaintiff’s response to Defendant’s first set of interrogatories, No. 12, 94 TTABVUE 11.
Opposition No. 91223982 and Cancellation No. 92062838
27
(TTAB 2018) (four years and two months “within the realm of time found to be
sufficient for purposes of laches.”). We find Plaintiff’s delay of more than four years
between first publication of Defendant’s BROOKLYN BREW SHOP standard
character mark and the filing of the petition for cancellation supports a defense of
laches.
We further find Plaintiff’s delay to be unreasonable. Based on the record, there is
no doubt that Plaintiff had full knowledge of the nature of Defendant’s activities
between 2011 and 2015. As evidenced by the D’Ippolito email, Plaintiff knew before
first publication of Defendant’s mark that at least some confusion was regularly
occurring between the parties’ “business names,” yet Plaintiff took no action for more
than four years. Instead, Plaintiff openly collaborated with Defendant.
Plaintiff argues that its delay was justified because it “believed [Defendant] was
a small, local company,” and “did not know until May 2015 that [Defendant] c laimed
rights to the mark for beer and glassware (the goods [Plaintiff] has sold for 30 years)
and exclusive rights to BROOKLYN for these and other goods under Section 2(f).”76
This argument is unpersuasive. Plaintiff’s claim that its delay was justified
because it “did not know until May 2015 that Applicant had registered BROOKLYN
BREW SHOP thus claiming nationwide rights in that mark” is unavailing because
Federal registration provides constructive notice of a registrant’s mark. Trademark
Act Section 22, 15 U.S.C. § 1072 (“Registration of a mark on the principal register . . .
shall be constructive notice of the registrant’s claim of ownership thereof.”).

76 Plaintiff’s Rebuttal Br., p. 24, 109 TTABVUE 25.
Opposition No. 91223982 and Cancellation No. 92062838
28
Moreover, Plaintiff filed the petition for cancellation on December 10, 2015, more
than seven months after it allegedly discovered the registration and more than two
and one-half months after filing the notice of opposition. That is, Plaintiff continued
to delay enforcing its rights against the registration for another seven months after
discovering the registration.
Plaintiff additionally argues that Defendant’s “progressive encroachment justified
any delay.”77 Professor McCarthy explains that progressive encroachment may justify
delay in enforcing one’s rights under certain circumstances:
Under the doctrine of “progressive encroachment,” a
trademark owner is not forced by the rule of laches to sue
until the likelihood of confusion caused by the accused use
presents a significant danger to the mark. A relatively low
level infringement or use of a similar mark in a different
product or service line or in a different territory does not
necessarily trigger an obligation to immediately file suit.
But when the accused use moves closer or increases in
quantity, the doctrine of progressive encroachment
requires the trademark owner to remain alert and to
promptly challenge the new and significant acts of
infringement. Thus, there may be no obligation to sue until
the accused use progressively encroaches on the
trademark.
Jansen Enters. Inc. v. Rind, 85 USPQ2d 1104, 1116 (TTAB 2007) (quoting MCCARTHY
ON TRADEMARKS AND UNFAIR COMPETITION § 31:20 (4th ed. updated 2006)). Laches is
an equitable defense and we must balance the equities of the parties. As stated in
Ralston Purina Co. v. Midwest Cordage Co., 373 F.2d 1015, 153 USPQ 73, 77 (CCPA
1967), “Registrant’s [laches or acquiescence] defense is, after all, an equitable one.

77 Plaintiff’s Rebuttal Br., p. 24, 109 TTABVUE 25.
Opposition No. 91223982 and Cancellation No. 92062838
29
We do not scan petitioner’s history for one fatal misstep. We sustain petitioner’s
rights in the absence of a showing that to do so would work injustice.”
We find that the goods in the ’776 application expand beyond Defendant’s original
beer-making kits. Defendant seeks registration of the stylized BROOKLYN BREW
SHOP mark for, inter alia, sanitizing preparations, glassware, coasters, and most
importantly, beer. We find, however, that the doctrine of progressive encroachment
does not justify Plaintiff’s delay in bringing the cancellation proceeding.
Certainly, Defendant’s ’776 application expanded the nature of its goods by
including additional goods, and sought registration under Section 2(f) as to
BROOKLYN, which was disclaimed in the prior registration. However, a defense of
progressive encroachment cannot excuse a delay in bringing a cancellation against a
prior registration where, as here, the Defendant’s goods remain within the scope of
the registration. “For purposes of an attack on a registration, there can be no
‘progressive encroachment’ where the alleged encroachment is within the scope of the
registration at issue.” Ava Ruha, 113 USPQ2d at 1583 (no progressive encroachment
by registrant who sold fresh produce from its specialty retail grocery stores
specializing in sales to pregnant women and new mothers where such sales were
within the scope of the registration for such specialty stores); see also ProFitness
Physical Therapy Center v. Pro-Fit Orthopedic & Sports Physical Therapy P.C., 314
F.3d 62, 65 USPQ2d 1195, 1199 (2d Cir. 2002) (actionable infringement for
Defendant’s use of a mark in a different manner limited to the extra-consensual use).
Opposition No. 91223982 and Cancellation No. 92062838
30
Here, the beer-making kits identified in Defendant’s registration and application
are the same as those Defendant has long sold and do not represent “new and
significant acts” of encroachment so as to excuse Plaintiff’s delay in bringing the
cancellation and opposition proceedings as to these goods. Jansen, 85 USPQ2d at
1116; see also MCCARTHY, § 31:20 (5th ed. March 2020).
Moreover, Plaintiff was long aware of the nationwide sales of Defendant’s beer-
making kits. Defendant’s use therefore cannot be considered a “low level” of
encroachment. Jansen, 85 USPQ2d at 1116. Rather, Plaintiff encouraged Defendant
to sell co-branded kits “at the big retail chains (Whole Foods, Wegmen’s, and
Costco).”78 Plaintiff knew that Defendant’s use of the BROOKLYN BREW SHOP
marks had caused instances of confusion as to the parties’ business names and
therefore might be “a significant danger to the mark.” Id. Nevertheless, as Plaintiff’s
CEO admitted, “Brooklyn Brewery never expressed any dissatisfaction or displeasure
to Brooklyn Brew Shop regarding Brooklyn Brew Shop’s use of the ‘Brooklyn Brew
Shop’ name before May of 2015.”79 In light of Plaintiff’s knowledge of instances of
confusion, Plaintiff’s “wait and see approach” was unreasonable.80
Defendant also suffered material prejudice because of Plaintiff’s delay. One type
of detriment is economic prejudice arising from investment in and development of a
trademark, as well as the continued commercial use and economic promotion of a

78 Exh. 188 to Valand Dec., 90 TTABVUE 159.
79 Ottaway dep., p. 127, 92 TTABVUE 130.
80 Plaintiff’s Rebuttal Br., p. 24, 109 TTABVUE 25.
Opposition No. 91223982 and Cancellation No. 92062838
31
mark over a prolonged period. Bridgestone/Firestone, 58 USPQ2d at 1463. Here,
Defendant continued to grow its business between 2011 and 2015. Defendant
increased its spending on advertising,81 had two books published promoting its beer
recipes,82 saw its marks promoted by a number of third-party sources,83 and increased
sales by three-hundred percent.84 Loss of Defendant’s rights in BROOKLYN BREW
SHOP for beer-making kits would result in severe economic prejudice and would be
a detriment to Defendant due to the delay.
Based on the evidence of record, we find Defendant has proven laches as to the
beer-making kits. Plaintiff unreasonably delayed in asserting its rights, and
Defendant would suffer detriment should its registration be cancelled or its
application for beer-making kits be denied.
B. Acquiescence and estoppel
We next consider Defendant’s affirmative defense of acquiescence , which
subsumes its arguments regarding equitable estoppel. Acquiescence is different from
laches and is appropriate in cases “where the trademark owner, by affirmative word
or deed, conveys its implied consent to another. That is, laches denotes a merely
passive consent, while acquiescence implies active consent.” MCCARTHY, § 31:41. As
stated by the Board:
Acquiescence is a type of estoppel that is based upon the
plaintiff’s conduct that expressly or by clear implication

81 Exh. 127 to Valand Dec., 86 TTABVUE 12, 90 TTABVUE 68–80.
82 Exhs. 74 and 75 to Valand Dec., 86 TTABVUE 9, 87 TTABVUE 42–51.
83 See, e.g., exhs. 11–60, 86 TTABVUE 77–289.
84 Exh. 152 to Valand Dec., 86 TTABVUE 38, 90 TTABVUE 85–108.
Opposition No. 91223982 and Cancellation No. 92062838
32
consents to, encourages, or furthers the activities of the
defendant, that is not objected to. . . . A plaintiff will not be
permitted to stop conduct that it fostered or tolerated,
where the result would be prejudicial to the defendant.
Christian Broadcasting Network, 84 USPQ2d at 1573 (TTAB 2007) (internal citations
omitted).
To establish the defense of acquiescence, Defendant must prove that Plaintiff’s
conduct amounted to “an assurance by the plaintiff to the defendant, either express
or implied that plaintiff will not assert his trademark rights against the defendant.”
CBS, Inc. v. Man’s Day Publ’g Co., 205 USPQ 470, 473-74 (TTAB 1980). Acquiescence
requires proof of three elements, namely that: (1) plaintiff actively represented that
it would not assert a right or a claim; (2) the delay between the active representation
and assertion of the right or claim was not excusable; and (3) the delay caused
defendant undue prejudice. See Coach House Rest. Inc. v. Coach and Six Rests., Inc.,
934 F.2d 1551, 19 USPQ2d 1401, 1409 (11th Cir. 1991) (acquiescence requires active
consent).
As with laches, in the context of a defense of acquiescence, consideration of any
period of delay is tied to a party’s application for registration of a mark rather than
to its use of the mark. Id., 19 USPQ2d at 1405 (“[T]he earliest point at which the
delay period began running was the time of registration.”); see also Nat’l Cable
Television, 19 USPQ2d at 1432 (period of delay for equitable defense “begins to run
from the time action could be taken against the acquisition by another of a set of
rights to which objection is later made.”). Because Defendant’s registration and
Opposition No. 91223982 and Cancellation No. 92062838
33
application cover a variety of goods, we address acquiescence as to these goods
separately.
i. Defendant’s beer-making kits in the ’439 registration and the
’776 application
As discussed above, Defendant’s application underlying the ’439 registration
published for opposition on July 19, 2011, and the mark registered on October 4, 2011.
Between 2011 and 2016, Plaintiff publically collaborated with Defendant on a
number of projects, including the co-branded beer-making kits, books on beer making,
and educational programs on beer making. Defendant’s BROOKLYN BREW SHOP
mark featured prominently in all of these activities. Accordingly, we find that during
the relevant period of delay—from July 19, 2011, until May of 2015, when Plaintiff
first voiced its concerns about Defendant’s marks—Plaintiff actively represented that
it would not assert a right or a claim against Defendant’s use of its BROOKLYN
BEER SHOP mark in connection with beer-making kits.
We likewise find that Plaintiff’s nearly four-year delay between the active
representation that it did not object to Defendant’s registered mark in connection
with beer-making kits and assertion of the right or claim underlying these
proceedings was not excusable. Plaintiff argues that its delay in bringing these
proceedings is justified because it believed Defendant to be a “small, local company.”85
This argument is belied, however, by the fact that Plaintiff knew that Defendant was
selling its kits through major national retailers such as Whole Foods and 1-800-

85 Plaintiff’s Rebuttal Br., p. 24, 109 TTABVUE 25.
Opposition No. 91223982 and Cancellation No. 92062838
34
baskets.com. Indeed, Plaintiff sought to sell the co-branded kits “at the big retail
chains (Whole Foods, Wegmen’s, Costco) who frequently inquire of us if we have plans
to do a homebrew collaboration with the Brew Shop so they can stock their shelves
with it.”86 Further, as discussed above, Plaintiff’s claim that its delay was justified
because it “did not know until May 2015 that Applicant had registered BROOKLYN
BREW SHOP thus claiming nationwide rights in that mark” is unavailing because
federal registration provides constructive notice of a registrant’s mark. Trademark
Act Section 22, 15 U.S.C. § 1072.
Finally, as discussed above, during the nearly four-year period of active
collaboration between the parties, Defendant continued to invest in and grow its beer
making kit business under the BROOKLYN BREW SHOP marks. We thus find that
Plaintiff’s delay in asserting its rights caused defendant undue prejudice.
Based on the foregoing, we find Plaintiff’s actions “constitute a classic example of
acquiescence” regarding Defendant’s use of the BROOKLYN BREW SHOP marks on
beer-making kits. Man’s Day Publishing, 205 USPQ at 475.
ii. Defendant’s other goods in the ’776 application
We find that Plaintiff has not acquiesced to Defendant’s use of its mark on the
other goods recited in the ’776 application, namely, sanitizing preparations,
glassware, and coasters. Plaintiff’s collaborative activities were limited to the beer-
making kits, not these other goods. Plaintiff cannot be said to have actively
represented that it would not assert a right or a claim against the other goods; there

86 Exh. 188 to Valand Dec., 90 TTABVUE 159.
Opposition No. 91223982 and Cancellation No. 92062838
35
was no delay in Plaintiff’s assertion of its rights in its mark for the goods; and
Defendant has suffered no undue prejudice. Instead, the other goods in the ’776
application exceed the scope of the Plaintiff’s acquiescence. See ProFitness Physical
Therapy, 65 USPQ2d 1199 (actionable infringement for Defendant’s use of a mark in
a different manner limited to the extra-consensual use); Operation Able of Greater
Boston, Inc. v. Nat’l Able Network, Inc., 646 F. Supp. 2d 166, 92 USPQ2d 1932, 1938
(D. Mass. 2009) (defendant’s “expansion into areas that more directly overlap with
the plaintiff’s services has, however, created confusion and plaintiff is not precluded
from asserting its rights now notwithstanding its prior acquiescence to some uses of
the marks. Accordingly, this Court concludes that the defenses of acquiescence or
laches do not foreclose a challenge to defendant’s expanded use of the marks.”).
C. Summary of findings on laches and acquiescence
We find that Defendant has established the defenses of laches and acquiescence
as to its beer-making kits in the ’439 registration and the ’776 application, thereby
increasing Plaintiff’s burden of proof as to these goods to a showing of inevitable
confusion. Ultra-White, 175 USPQ at 167. Because Defendant has not established
either defense as to the remaining goods in the ’776 application, Plaintiff’s burden as
to these goods remains the same, a showing of a likelihood of confusion by the
preponderance of the evidence. Cunningham, 55 USPQ2d at 1848.
VI. Likelihood of Confusion and Inevitable Confusion
We turn now to Plaintiff’s claim alleging likelihood of confusion and inevitable
confusion. Our determination under Trademark Act Section 2(d) is based on an
Opposition No. 91223982 and Cancellation No. 92062838
36
analysis of all the facts in evidence that are relevant to the factors bearing on
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). We keep in mind that the equitable defenses established in
this case cannot serve as bars against the petition for cancellation if confusion is
inevitable. Ultra-White, 175 USPQ at 167.
Accordingly, we determine whether confusion is inevitable as to the beer-making
kits, but only likely as to the other goods in the ’776 application. In determining the
issue of confusion, whether inevitable or likely, we consider all of the DuPont factors
that are relevant in this case and for which there is evidence of record. In re Guild
Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019) (Board
considers each DuPont relevant factor for which there is evidence and argument);
Turner v. Hops Grill & Bar, Inc., 52 USPQ2d 1310, 1313 (TTAB 1999) (“[T]o
determine whether confusion is inevitable, we must use the multifactor analysis
required by [DuPont]”). Varying weights may be assigned to each DuPont factor
depending on the evidence presented. Citigroup II, 98 USPQ2d at 1261; In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687-88 (Fed. Cir. 1993). The relevant DuPont
factors in this proceeding are discussed below.
Defendant’s marks are BROOKLYN BREW SHOP, in standard characters, for
beer-making kits, and for household sanitizing preparations,
beverage glassware, non-paper coasters, and beer-making kits. Plaintiff’s marks are
Opposition No. 91223982 and Cancellation No. 92062838
37
BROOKLYN BREWERY, in standard characters, and , for beer, glassware
and cups, as well as BROOKLYN for beer.
In our analysis, we focus on Plaintiff’s BROOKLYN BREWERY mark in standard
characters and its BROOKLYN mark, also in standard characters. We consider these
marks to be the most pertinent of Plaintiff’s pleaded registrations for our DuPont
analysis because they are in standard characters, and therefore must be considered
“regardless of font style, size, or color.” Citigroup II, 98 USPQ2d at 1259. See, e.g.,
Fiserv, Inc. v. Elec. Transaction Sys. Corp., 113 USPQ2d 1913, 1917 (TTAB 2015); In
re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
A. Similarity of the goods, channels of trade and classes of consumers
We begin with consideration of the parties’ respective goods, channels of trade and
classes of consumers, noting that they do not have to be identical or directly
competitive to support a finding that there is a likelihood of confusion. On-line
Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir.
2000). It is sufficient if the respective goods are related in some manner or that the
conditions surrounding their marketing are such that they would be encountered by
the same persons under circumstances that could, because of the similarity of the
marks used in connection therewith, give rise to the mistaken belief that they
emanate from or are associated with a single source. Coach Servs., Inc. v. Triumph
Learning LLC, 101 USPQ2d at 1722; In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785 (TTAB 1993).
Opposition No. 91223982 and Cancellation No. 92062838
38
i. Class 21
The parties’ goods are, in part, identical because both identify beverage glassware
in class 21. It is sufficient for finding likelihood of confusion that relatedness is
established for any item encompassed by the identification of goods in a particular
class in the application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981). Moreover, given that these goods are
identical, they are “presumed to travel in the same channels of trade to the same class
of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed.
Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268,
62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).
ii. Class 32
Regarding Defendant’s beer-making kits, in class 32, Plaintiff argues, “Beer and
beer-making kits are the types of goods that consumers expect to be sold by the same
company under the same mark.”87 In support, Plaintiff has introduced more than fifty
copies of use-based third-party registrations for marks for beer as well as beer-
making kits. The following examples are representative:88
 Reg. No. 5110894 for the mark BACK ALLEY PORTER;
 Reg. No. 5642753 for the mark BENEVOLENT OVERLORD;
 Reg. No. 4605122 for the mark BLACK GULL;
 Reg. No. 4682513 for the mark CAMINO BREWING COMPANY;
 Reg. No. 5342530 for the mark CITIZEN KELLY;

87 Plaintiff’s Br., p. 42, 103 TTABVUE 43.
88 Plaintiff’s notice of Reliance, Exhs. D-1 to D-63, 71 TTABVUE 1–198.
Opposition No. 91223982 and Cancellation No. 92062838
39
 Reg. No. 5309422 for the mark DANCING MONK;
 Reg. No. 4665462 for the mark MALTY DOG BREWERY; and
 Reg. No. 4570226 for the mark SANTA BARBARA PALE ALE.
Although these third-party registrations are not evidence that the registered
marks are currently in use or that the public is familiar with them, they nonetheless
have some probative value to the extent they are based on use in commerce and serve
to suggest that beer and beer-making kits are of a kind that may emanate from a
single source under a single mark. See In re Davey Prods. Pty Ltd., 92 USPQ2d 1198,
1203 (TTAB 2009); In re Albert Trostel, 29 USPQ2d at 1785-86. Indeed, Defendant’s
’776 application sought to register the stylized BROOKLYN BREW SHOP mark for
both beer and beer-making kits, and, as noted above, the parties collaborated on co-
branded beer-making kits. And Defendant owns four registrations for other marks
covering both beer and beer-making kits.89
On the other hand, the record does not indicate whether any of these third-party
marks are in use or how common it is for one business to offer both beer and beer-
making kits. We agree with Defendant that beer and beer-making kits are not
interchangeable goods because “making beer from a kit takes weeks”90 and the kits
cannot be sold for immediate consumption of beer. But, as noted above, the goods do
not have to be identical or directly competitive to support a finding that there is a
likelihood of confusion. On-line Careline, 56 USPQ2d at 1475. These considerations

89 Id., Exhs. D-64-65, D-68, and D-70, 71 TTABVUE 199–204, 209–11, and 214–16.
90 Defendant’s Br., p. 34, 106 TTABVUE 35.
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are outweighed by Plaintiff’s evidence, and we find that beer-making kits are related
to beer.
Regarding the channels of trade for beer and beer-making kits, the record shows
that the respective goods are sold in some of the same stores, such as Whole Foods as
well as Total Wine and More.91 As discussed above, Defendant’s beer-making kits
were sold by Plaintiff in its brewery alongside its beer. Defendant nevertheless argues
that the majority of its beer-making kits are sold in different channels of trade such
as “department stores, kitchenware stores, gift shops, internet-based retailers, and
other food purveyors.”92 Defendant points out that when its “beer-making kits are
sold at food retailers, they are often sold in the cheese or whole-body section rather
than the beer and alcohol section.”93 These arguments are unpersuasive. The fact that
Defendant’s beer-making kits and Plaintiff’s beer may sometimes be sold in different
channels of trade does not outweigh the fact that at other times they are sold in the
same channels of trade. Accordingly, we find that beer and beer-making kits are
offered in similar trade channels.
Regarding the classes of consumers for beer and beer-making kits, the record
shows that the respective goods are sold to beer drinkers as well as to consumers
looking to buy gifts for beer drinkers.94 The population of beer drinkers willing to

91 Exh. E-6 to Plaintiff’s notice of reliance, 7735. TTABVUE 113; Ottaway Dec., ¶ 9, 60
TTABVUE 3.
92 Defendant’s Br., p. 34, 106 TTABVUE 35.
93 Id.
94 See, e.g., exhs. 11–60, 86 TTABVUE 77–289.
Opposition No. 91223982 and Cancellation No. 92062838
41
brew their own beer likely is small as compared to the overall population of beer
drinkers, but they are nevertheless part of the same larger beer-drinking group.
Accordingly, we find the classes of consumers for Defendant’s beer-making kits and
Plaintiff’s beer to be overlapping.
iii. Class 5
Regarding Defendant’s sanitizing preparations for household use in class 5, we
note that they are sold as part of the beer-making kits, and also to replenish kits after
they have been used.95 Plaintiff argues the sanitizing preparations are related to its
goods: “The only reason a customer would purchase one of Applicant’s sanitizing
preparations is so that he or she can use it to make beer in Applicant’s kit. [They] are
thus related to Opposer’s beer and beverage glassware for all the same reasons as
Applicant’s beer kits.”96
Defendant, for its part, argues that Plaintiff “provides only argument, and no
evidence, that sanitizing preparations . . . are related to the goods in its
registrations.”97 We agree the record does not establish that sanitizing preparations
for household use are related to beer for likelihood of confusion purposes. The mere
fact that sanitizing preparations are sold as a component of Defendant’s beer-making
kits does not establish that consumers would expect brewers such as Plaintiff to
supply sanitizing preparations.

95 Erica Shea Dep., p. 77, 84 TTABVUE 293.
96 Plaintiff’s Br., pp. 44–45, 103 TTABVUE 45–46.
97 Defendant’s Br., p. 32, 106 TTABVUE 33.
Opposition No. 91223982 and Cancellation No. 92062838
42
We note, for example, that none of Plaintiff’s more than fifty third-party
registrations, encompassing both beer and beer-making kits, include sanitizing
preparations. Nor do any of Defendant’s other four registrations for beer-making kits
include sanitizing preparations. This suggests sanitizing preparations are only
peripherally related to beer-making kits, much less beer. We also find the record does
not establish that Defendant’s sanitizing preparations for household use—
particularly when sold individually—are likely to travel in the same channels of trade
to the same classes of consumers as Plaintiff’s beer. Thus, consumers familiar with
Plaintiff’s goods are not likely to think that Defendant’s sanitizing preparations
emanate from or are associated with the same single source. Albert Trostel, 29
USPQ2d at 1785.
In sum, we find the parties’ goods are identical in part as to beverage glassware
in class 21, and related as to Plaintiff’s beer and Defendant’s beer-making kits in
class 32. Additionally, we find these goods are offered in some of the same channels
of trade, and are sold to the same classes of consumers. These DuPont factors favor a
finding of a likelihood of confusion as to these goods. However, we find the record does
not establish that Defendant’s sanitizing preparations for household use in class 5
are related to Plaintiff’s beer or glassware, or that they are offered in the same
channels of trade, or are sold to the same classes of consumers. These DuPont factors,
therefore, weigh against a finding of a likelihood as to these goods.
B. Strength of Plaintiff’s marks
We consider the strength of Plaintiff’s marks in order to evaluate the scope of
protection to which they are entitled. In determining strength of a mark, we consider
Opposition No. 91223982 and Cancellation No. 92062838
43
both inherent or conceptual strength, based on the nature of the mark itself, and fame
or commercial strength. Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110
USPQ2d 1458, 1476 (TTAB 2014); see also In re Chippendales USA Inc., 622 F.3d
1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both
by its conceptual strength . . . and its marketplace strength[.]”); MCCARTHY, § 11:80
(“The first enquiry focuses on the inherent potential of the term at the time of its first
use. The second evaluates the actual customer recognition value of the mark at the
time registration is sought or at the time the mark is asserted in litigation to prevent
another’s use.”). The commercial strength of a mark rests on the extent to which “a
significant portion of the relevant consuming public . . . recognizes the mark as a
source indicator.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857
F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (citing Palm Bay Imps., Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689,
1694 (Fed. Cir. 2005)). A very strong mark receives a wider latitude of legal protection
in the likelihood of confusion analysis. See Palm Bay, 73 USPQ2d at 1694 (strong
marks “enjoy wide latitude of legal protection” and are “more attractive as targets for
would-be copyists”).
Plaintiff does not address the conceptual strength of its marks. We find they are
inherently weak. The marks registered pursuant to a claim of acquired
distinctiveness under Section 2(f), 15 U.S.C. § 1052(f), an admission that the marks
are not inherently distinctive. See Cold War Museum, Inc. v. Cold War Air Museum,
Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009) (“Where an applicant
Opposition No. 91223982 and Cancellation No. 92062838
44
seeks registration on the basis of Section 2(f), the mark’s descriptiveness is a
nonissue; an applicant’s reliance on Section 2(f) during prosecution presumes that
the mark is descriptive.”); Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572,
6 USPQ2d 1001, 1005 (Fed. Cir. 1988) (“Where, as here, an applicant seeks a
registration based on acquired distinctiveness under Section 2(f), the statute accepts
a lack of inherent distinctiveness as an established fact.”).
As Plaintiff’s dictionary definition of Brooklyn98 and Defendant’s internet excerpts
from Brooklyn-named establishments suggest, “Brooklyn” is a well-known
geographic place. It is one of the five boroughs of New York City and its population
in 2017 was reported to be 2,648,771.99 And it is undisputed that Plaintiff is located
in Brooklyn. The presence of the generic term “brewery” does little to bolster the
inherent strength of Plaintiff’s primarily geographically descriptive BROOKLYN
BREWERY mark. See In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001)
(MINNESOTA CIGAR COMPANY primarily geographically descriptive of cigars).
Accordingly, we find that Plaintiff’s BROOKLYN BREWERY and BROOKLYN
marks are inherently weak.
Regarding commercial strength of its marks, Defendant argues that Plaintiff’s
marks are entitled to a narrow scope of protection because “[t]he word ‘Brooklyn’ is
so ubiquitous in commerce that it has limited significance in the overall commercial

98 Dictionary.com, 50 TTABVUE 85–86.
99 Https://en.wikipedia.org/wiki/Brooklyn, accessed May 8, 2018, 50 TTABVUE 58–84.
Opposition No. 91223982 and Cancellation No. 92062838
45
impression of the marks.”100 In support, Defendant introduced internet web pages
from six local Brooklyn-formative named establishments selling beer:101
 Brooklyn Beer & Soda, a craft beer and soda store;
 Brooklyn Brewhouse, a restaurant and bar serving draft and bottled beer;
 BRKLYN Beer Garden, a bar featuring draft beers;
 Brooklyn Bavarian Biergarten, a restaurant serving food and beer;
 Brooklyn Burgers & Beer, a restaurant serving food and craft beer; and
 Brooklyn Tap House, a restaurant serving food and craft beer.
To establish further the ubiquity of “Brooklyn” in business names, albeit by other
beverage businesses, Defendant introduced internet web page excerpts from eight
local Brooklyn-formative named establishments selling coffee or coffee beverages.102
 Brooklyn Bean Roastery;
 Brooklyn Coffeehouse;
 Brooklyn Diamond Coffee;
 Brooklyn Java;
 Brooklyn Roasting Company;
 Brooklyn Bagel & Coffee Company;
 Cup of Brooklyn; and
 Olde Brooklyn Coffee.

100 Defendant’s Br., p. 30, 106 TTABVUE 31.
101 Exhs. 205–10 to Valand Dec. ¶ 93, 86 TTABVUE 33, 89 TTABVUE 68–97.
102 Defendant’s notice of reliance, Exhs. 239–46, 97 TTABVUE 47–74.
Opposition No. 91223982 and Cancellation No. 92062838
46
Evidence of third-party use of similar marks for the same or similar goods is
relevant to a mark’s commercial strength or weakness. In re i.am.symbolic, LLC, 866
F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017). The six local Brooklyn-formative
named establishments’ use of the term “Brooklyn” in connection with beer sales have
significant probative value. But beyond showing that “Brooklyn” is commonly used
by businesses based in Brooklyn, the web pages from coffee retailers are not
particularly probative because the record does not show that the businesses brew or
sell beer or sell accessories such as glassware and coasters. Nevertheless, it is not
unexpected for Brooklyn-based businesses to use the term “Brooklyn” as part of their
business names in order to identify their location.
Plaintiff argues its “BROOKLYN BREWERY mark is commercially strong due to
Plaintiff’s long use of the mark and acclaim from both the craft beer industry and
from consumers.”103 Plaintiff has used the BROOKLYN BREWERY mark in
connection with beer for more than thirty years;104 it has annual revenues in the tens
of millions of dollars;105 and its beers have won a number of awards106 and received
extensive unsolicited media coverage.107 We agree that Plaintiff’s BROOKLYN
BREWERY mark has achieved a degree of commercial strength through long use,

103 Plaintiff’s Br., p. 49, 103 TTABVUE 50.
104 Ottaway Dec., ¶ 4, 60 TTABVUE 4.
105 Ottaway Dec., ¶ 10, 65 TTABVUE 32.
106 Ottaway Dec., ¶ 20, 60 TTABVUE 7; Exhs. A-35–A-36, 63 TTABVUE 71–87.
107 Ottaway Dec., ¶ 17, 60 TTABVUE 6; Exhs. A-13–A-34, 60 TTABVUE 89–280, 61–63
TTABVUE.
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47
advertising, sales, and public recognition, at least as to the goods covered by
Plaintiff’s registrations.
On the other hand, little of Plaintiff’s evidence regarding the strength of its marks
is directed to the use of BROOKLYN by itself. Instead, most of the news stories refer
primarily to BROOKLYN BREWERY while occasionally using the term
“BROOKLYN” as a shorthand term thereafter. If a mark, or an element of a mark, is
used extensively in commerce by a number of third parties, the commercial strength
of the mark can be undermined, as the consuming public may have become familiar
with a multiplicity of the same or similar marks, and can distinguish them based on
minor differences. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115
USPQ2d 1671, 1674 (Fed. Cir. 2015) (citation omitted); Jack Wolfskin Ausrustung
Fur Draussen GmbH & Co. v. Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d
1129, 1136 (Fed. Cir. 2015). “The weaker [a registrant’s] mark, the closer an
applicant’s mark can come without causing a likelihood of confusion and thereby
invading what amounts to its comparatively narrower range of protection.” Juice
Generation, 115 USPQ2d 1674. Given the geographic significance of “Brooklyn” and
the evidence of third-party use of the term in connection with the sale of beer and
other beverages, we do not find that Plaintiff has established that its BROOKLYN
mark is commercially strong for beer.
In sum, we find that Plaintiff’s BROOKLYN BREWERY and BROOKLYN marks
are conceptually weak. However, when used in connection with the subject goods,
BROOKLYN BREWERY and BROOKLYN have nevertheless achieved a degree of
Opposition No. 91223982 and Cancellation No. 92062838
48
commercial recognition. These findings offset one another. We therefore find
Plaintiff’s marks to be entitled neither to an enhanced nor a diminished scope of
protection. Palm Bay, 73 USPQ2d at 1694.
C. Similarity of the marks
Turning to the first DuPont factor, we compare the marks “in their entireties as
to appearance, sound, connotation and commercial impression.” Palm Bay, 73
USPQ2d at 1691 (quoting DuPont, 177 USPQ at 567). “The proper test is not a side-
by-side comparison of the marks, but instead ‘whether the marks are sufficiently
similar in terms of their commercial impression’ such that persons who encounter the
marks would be likely to assume a connection between the parties.” Coach Servs.,
Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721 (citation omitted). The
appropriate emphasis is on the recollection of the average purchaser, who normally
retains a general rather than a specific impression of trademarks or service marks.
Spoons Rests., Inc. v. Morrison, Inc., 23 USPQ2d 1735, 1741 (TTAB 1991) (citations
omitted), aff’d mem., 972 F.2d 1353 (table) (Fed. Cir. 1992). See Franklin Mint Corp.
v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981). Here, the
average purchasers include ordinary consumers seeking beer and beer accessories,
namely glassware and coasters.
Plaintiff’s marks are BROOKLYN BREWERY and BROOKLYN, both in standard
character form. Defendant’s marks are BROOKLYN BREW SHOP in standard
characters, and in stylized form. We find the marks are more similar
than not in appearance, sound, connotation and commercial impression.
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49
Regarding appearance, all of the marks begin with—or consist entirely of— the
geographic term BROOKLYN. Because Plaintiff’s marks are in standard characters,
they “could be used in any typeface, color, or size, including the same stylization
actually used . . . by the other party, or one that minimizes the differences or
emphasizes the similarities between the marks.” Anheuser–Busch, LLC v. Innvopak
Sys. Pty Ltd., 115 USPQ2d 1816, 1823 (TTAB 2015) (citing Citigroup II, 98 USPQ2d
at 1258-59). Regarding sound, Plaintiff’s BROOKLYN BREWERY mark and
Defendant’s BROOKLYN BREW SHOP marks both comprise the term BROOKLYN
followed by a BREW-formative term, giving these marks similar alliteration and
overall sound.
Regarding connotation and commercial impression, all of the marks suggest an
association with Brooklyn, a well-known geographic place. Moreover, BROOKLYN
BREWERY and BROOKLYN BREW SHOP have an additional connotative similarity
because they both connote beer.108
Further, we consider BROOKLYN to be the most dominant portion of the parties’
marks because BREWERY and BREW SHOP are at least descriptive, if not generic.
See Viterra, 101 USPQ2d at 1908 (the court may place more weight on a dominant
portion of a mark, for example if another feature of the mark is descriptive or generic
standing alone, however, the ultimate conclusion nonetheless must rest on
consideration of the marks in total); In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1533-34 (Fed. Cir. 1997) (“DELTA,” not the disclaimed generic term “CAFE,” is

108 50 TTABVUE 87–89.
Opposition No. 91223982 and Cancellation No. 92062838
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the dominant portion of the mark THE DELTA CAFE); In re Nat’l Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“[T]here is nothing improper in
stating that, for rational reasons, more or less weight has been given to a particular
feature of a mark, provided the ultimate conclusion rests on consideration of the
marks in their entireties.”).
For the foregoing reasons, we find that Plaintiff’s BROOKLYN and BROOKLYN
BREWERY marks and Defendant’s BROOKLYN BREW SHOP marks to be more
similar than dissimilar in overall appearance, sound, connotation, and commercial
impression.
D. Actual confusion
The seventh and eighth DuPont factors consider the nature and extent of any
actual confusion among consumers in light of the length of time and conditions under
which there has been contemporaneous use of the parties’ subject marks. DuPont,
177 USPQ at 567. Evidence of actual confusion, where it exists, would of course be
highly probative of a likelihood of confusion. See Edom Labs, Inc. v. Lichter, 102
USPQ2d 1546, 1553 (TTAB 2012) (“The existence of actual confusion is normally very
persuasive evidence of likelihood of confusion and undercuts any possible claim that
the marks are so dissimilar that there can be no likelihood of confusion.”). Properly
introducing instances of actual confusion into the record and persuading the trier of
fact as to the probative value of such evidence is Plaintiff’s burden. See Georgia-
Pacific Corp. v. Great Plains Bag Co., 614 F.2d 757, 204 USPQ 697, 701 (CCPA 1980)
(“Actual confusion is entitled to great weight but only if properly proven.”).
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51
Plaintiff argues “[t]he overwhelming amount of actual confusion evidence here is
dispositive of a ‘high’ likelihood of confusion and indeed, of inevitable confusion.”109
Plaintiff introduced evidence from a variety of sources purportedly establishing
extensive actual confusion. As Plaintiff argues, “the record evidence here shows many
dozens of instances of actual confusion, including testimonial evidence from the
parties, current and former employees, and documents produced by Applicant from
its own files.”110 We agree Plaintiff submitted a great deal of evidence purporting to
show many instances of actual confusion. But, as explained below, we do not think it
entitled to nearly the weight Plaintiff urges.
i. Admissions and emails from Defendant
In its response to Plaintiff’s interrogatories, Defendant admitted to the following
instances of third-party confusion:111
 March 14, 2011: Visual merchandiser Natalie Burke at a West Elm
Market location created signage alongside Defendant’s goods that read
Brooklyn Brewery. After informing Defendant, signage was corrected.
 June 28, 2011: Craftbeer.com credited a beer ice cream recipe to
Brooklyn Brewery that was written by Brooklyn Brew Shop. Author
Meghan Storey was informed of mistake and credit was corrected.
 January 16, 2014: Sam Hanlin applied for a job through Defendant’s
contact form on brooklynbrewshop.com and referred to Defendant as
“Brooklyn Brewery”
 May 6, 2014: Perri Gross notified Defendant through contact form on
brooklynbrewshop.com that he accidentally referred to Defendant as
Brooklyn Brewery in a job application

109 Plaintiff’s Br., p. 46, 103 TTABVUE 47.
110 Id.
111 Defendant’s response to Plaintiff’s first set of interrogatories, response to interrogatory
No. 14, Exh. G-14, 75 TTABVUE 77–78.
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52
 May 7, 2014: Customer named Jenna wrote to Defendant through the
contact form on brooklynbrewshop.com indicating she will be visiting
Brooklyn Brewery when visiting New York.
 May 31, 2014: Customer named Patrick asked through contact form on
brooklynbrewshop.com if Defendant was related to Brooklyn Brewery.
He was informed Defendant is not.
 December 14, 2014: Prospective customer named Adam Trosky
contacted Defendant through contact form on brooklynbrewshop.com
asking for a coupon for a Beer Making Kit. Note was addressed to
Brooklyn Brewery. He was informed Defendant is not affiliated and did
not offer coupons.
 December 24, 2014: Customer Margaret Bayne contacted Defendant
through contact form on brooklynbrewshop.com to request a
replacement part. She referred to Defendant as Brooklyn Brewery. It is
unknown which product she purchased.
 September 17, 2015: Customer named Kenny Espinal referred to
Brooklyn Brewery’s Summer Ale through contact form on
brooklynbrewshop.com.
 September 28, 2015: Craft Beer Cellar buyer (Chris Lazzery) declined to
carry co-branded product because Plaintiff does not distribute in that
state. Was informed Defendant is not affiliated.
 October 1, 2015: Fodor’s Sales Assistant (Katelyn Connor) asked if
Defendant would like to sell new Fodor’s publication in Brooklyn
Brewery gift shop.
 December 1, 2015: Customer Alan Cementina contacted Defendant
through contact form on brooklynbrewshop.com attempting to use a
coupon code intended for brooklynbrewery.com on Defendant’s website.
 January 7, 2016: Customer of Brooklyn Brewery asked through
Defendant’s contact form at brooklynbrewshop.com to process a return
for items possibly purchased at brooklynbrewery.com.
 February 25, 2016: Customer Michael Magnani referred to Defendant
as Brooklyn Brewery when she contacted Defendant through contact
form on brooklynbrewshop.com
 March 7, 2016: Customer Maikel van der List asked Defendant if
additional ingredients needed to be purchased at Brooklyn Brewery.
Opposition No. 91223982 and Cancellation No. 92062838
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In addition, Defendant identified four vendors that “referred to [Defendant] as
‘Brooklyn Brewery’ in internal emails” nine times between July 2011 and August
2015.112
Plaintiff introduced via a notice of reliance a number of emails produced by
Defendant during discovery. The emails summarized below are most relevant:
 An email chain dated September 2011 between one of Defendant’s
employees and a Whole Foods employee discussing selling beer making kits.
In one of the emails, Defendant’s employee states: “We are not Brooklyn
Brewery (even though we get a lot of their mail, and vice versa!), and do not
produce any alcohol ourselves. Our one-gallon beer making kits classify as
a food item . . . .”113
 An email chain dated March 2, 2012 between one of Defendant’s employees
and an employee of Country Malt. In response to receiving an invoice
intended for Brooklyn Brewery, Defendant’s employee states: “Sorry, but
this is an invoice for Brooklyn Brewery as opposed to Brooklyn Brew Shop.
You are not the first person to make this mistake, nor will you be the last,
but our order was for 66 lbs. of hallertau tradition [hops].”114
 An email chain dated April 2013 between Erica Shea, one of Defendant’s
principals, and a book publisher discussing titles for one of Defendant’s beer
brewing books. In response to one of the suggestions, Ms. Shea states “we
are already confused with Brooklyn Brewery entirely too much.”115
 An email chain dated May 2014 between Defendant and one of Defendant’s
customers who is seeking help after mistakenly using a Brooklyn Brewery
coupon code for an order being placed on Defendant’s website.116
 An email chain dated December 2013 between Erica Shea and an employee
of Elle.com regarding its online “gift guide” which listed Defendant as
Brooklyn Brewery. Ms. Shea states “Elle.com put us in their gift guide –

112 Id.
113 Plaintiff’s confidential notice of reliance, exh. H-5, 80 TTABVUE 47–54.
114 Id., exh. H-6, 80 TTABVUE 55–57.
115 Id., exh. H-9, 80 TTABVUE 63–65.
116 Id., exh. H-15, 80 TTABVUE 88–90.
Opposition No. 91223982 and Cancellation No. 92062838
54
but as Brooklyn Brewery – if you can talk to them on Monday about fixing
that that would be great . . .”117
 An email chain dated August 2015 between one of Defendant’s employees
and a supplier discussing boxes for beer making kits. In the subject line of
the email, the supplier has misidentified Defendant as Brooklyn
Brewery.118
 An email chain dated November 2015 between Defendant and one of its
customers who is seeking help after mistakenly attempting to use a
Brooklyn Brewery coupon code for an order being placed on Defendant’s
website.119
ii. Evidence from Plaintiff
Plaintiff also introduced testimony from several of its employees regarding
instances of purported actual confusion. The following testimony is the most relevant:
1. Declaration of Glenn Severance120
Severance, Plaintiff’s Point of Sale Manager, testified he had not heard of
Brooklyn Brew Shop until the summer of 2011 when he was asked to look into hiring
Brooklyn Brew Shop to make two beer-making kits.121 Severance stated that the first
co-branded beer-making kits were “only available on [Brooklyn Brewery’s] website
and in our store in Brooklyn. . . . The kits were simply listed on our website and in
our store as ‘Steve Hindy Edition beer making kits.’”122 Severance further testified as
follows regarding public confusion between the parties:123

117 Id., exh. H-18, 80 TTABVUE 96–97.
118 Id., exh. H-19, 80 TTABVUE 98–99.
119 Id., exh. H-21, 80 TTABVUE 106–09.
120 Public Version 64 TTABVUE; Confidential Version 65 TTABVUE.
121 Severance Dec., ¶ 4, 64 TTABVUE 2–3.
122 Id. at ¶ 5, 64 TTABVUE 3.
123 Id. at ¶¶ 7–9, 64 TTABVUE 2–3.
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55
7. The front desk personnel at Brooklyn Brewery have
forwarded calls and emails to me from people who think we
are Brooklyn Brew Shop. I have fielded approximately
several calls and read approximately 10 such emails.
8. Some callers complain that a beer kit is missing a
component or the instructions. Other callers ask how they
can order a specific beer kit or beer kit supplies like malt
and hops and some callers ask for help with an order for
beer kits that they placed with us.
9. I ask these callers what beer kit they have and they often
respond with Everyday IPA or a grapefruit-flavored beer. I
tell them that we do not make those products and that they
are made by Brooklyn Brew Shop which is an unrelated
company, and I refer them to brooklynbrewshop.com. If
callers ask about home-brewing supplies for beer kits, I
respond that we do not sell home brewing supplies and that
they are probably thinking of Brooklyn Brew Shop.
Sometimes callers respond that the Brooklyn Brewery and
Brooklyn Brew Shop sound the same to them and that we
must get calls like this all the time.
Exhibits to the Severance Declaration included eight email chains between
December 2012 and May 2017 in which customers and others asked Brooklyn
Brewery about problems with beer-making kits or their inability to buy beer making
supplies on Plaintiff’s website.124
2. Declaration of Daniel D’Ippolito125
D’Ippolito, Plaintiff’s former Communications Coordinator, testified that between
2010 and 2012 he “frequently read and responded to emails that were sent to
info@brooklynbrewery.com by customers about beer kits they insisted they had
purchased from us. Customers would complain about a missing or non-functioning

124 Exh. B-3 to Severance Dec., 65 TTABVUE 10–12.
125 66 TTABVUE.
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component and request that we provide a new component or new kit.”126 D’Ippolito
further testified that around 2011 or 2012 Plaintiff included a question and answer
about beer-making kits in its online “Frequently Asked Questions” (FAQ) web page.
The answer addressed questions about problems with beer-making kits and directed
customers to Brooklyn Brew Shop’s web page.127 The FAQ has since been removed.128
3. Declaration of Alyson Deppa129
Deppa, Plaintiff’s Assistant Controller, testified that between 2010 and 2013 she
“received at least 20 calls from people asking about a product that is used to brew
beer at home, such as malt or hops that they thought we sold. I would respond that
we did not sell home brewing supplies. The caller would typically respond that he or
she had seen the product advertised on our website.”130
4. Declaration of Joseph Thompson131
Thompson, Plaintiff’s employee, testified that between January 2014 and
February 2015 he received “an average of 3–4 telephone calls and 5–6 emails a month
from individuals who believed we were Brooklyn Brew Shop.”132

126 D’Ippolito Dec., ¶ 4, 66 TTABVUE 2.
127 Id. at ¶¶ 8–9, 66 TTABVUE 3.
128 Id. at ¶ 8, 66 TTABVUE 3.
129 67 TTABVUE.
130 Deppa Dec., ¶ 4, 67 TTABVUE 2.
131 68 TTABVUE.
132 Thompson Dec., ¶¶ 4–5, 68 TTABVUE 3.
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5. Declaration of Jonathan Reyes133
Reyes, Plaintiff’s employee, testified he has worked for Brooklyn Brewery since
approximately 2015. He answers telephone calls and reads emails received by the
brewery. Reyes states that he has “fielded dozens of calls from customers who think
that Brooklyn Brewery is Brooklyn Brew Shop.”134 Many of these calls involve
products that Plaintiff does not sell such as “Everyday IPA” and “Chestnut Brown
Ale” beer-making kits, and more recently, hard-cider making kits.135 Reyes also
authenticated several emails “from consumers who believe we were the manufacturer
of Brew Shop’s beer kits,”136 as well as several pieces of mail addressed to Defendant
that were misdelivered to Plaintiff.
6. Declaration of Sarah Blumenthal137
Blumenthal, Plaintiff’s Operations Coordinator, testified she has worked at
Brooklyn Brewery since mid-2016.138 Previously, she worked at Brooklyn Brew Shop
from June 2015 to May 2016 where she was an operations assistant.139 Blumenthal
testified that while working for Defendant, each month she “fielded numerous

133 69 TTABVUE.
134 Reyes Dec., ¶ 4, 69 TTABVUE 2.
135 Id. at ¶¶ 8 and 10, 69 TTABVUE 3–4.
136 Id. at ¶¶ 12 and 13, 69 TTABVUE 4–5.
137 70 TTABVUE.
138 Blumenthal Dec., ¶ 2, 70 TTABVUE 2.
139 Id. at ¶ 3, 70 TTABVUE 2.
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telephone calls from [shipping] brokers who expressed the belief that we were
Brooklyn Brewery or connected with Brooklyn Brewery.”140
7. Deposition of Eric Ottaway
Ottaway, Plaintiff’s CEO, admitted that he was “not aware of any instances of
confusion before the Hindy [co-branded] kits started to be sold[.]”141
iii. Analysis
We have carefully considered Plaintiff’s evidence regarding alleged instances of
actual confusion. We find it has significant shortcomings. The foremost problem is
that much of the alleged confusion occurred during the period when the parties were
actively promoting their co-branded beer-making kits. As discussed above, between
early 2012 and 2016, the parties sold two co-branded kits and participated in a
number of public events in order to promote sales of the kits. The first such kit,
enlarged below, shows both parties’ marks on the kit box, with Plaintiff’s
BROOKLYN BREWERY mark above Defendant’s BROOKLYN BREW SHOP mark .

140 Id. at ¶ 4, 70 TTABVUE 2–3.
141 Ottaway dep, p. 125, 92 TTABVUE 128.
Opposition No. 91223982 and Cancellation No. 92062838
59

All but three examples of purported actual confusion produced by Defendant in
response to Plaintiff’s interrogatories occurred during the period when the parties
were marketing co-branded kits.142 Many of the other statements regarding possible
confusion from Defendant’s employees occurred during this period as well.143
Most of the testimony from Plaintiff’s employees also occurred during the period
when the parties were marketing co-branded kits, including the period from early
2012 to 2014 when Plaintiff was selling the first co-branded kit on its website.144 For
example, Thompson, Reyes, and Blumenthal all testified to events after 2012, when

142 Defendant’s response to Plaintiff’s first set of interrogatories, response to interrogatory
No. 14, Exh. G-14, 75 TTABVUE 77–78.
143 See Plaintiff’s confidential notice of reliance, 80 TTABVUE.
144 Severance Dec., ¶ 4, 64 TTABVUE 2–3.
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60
the first co-branded kit went on sale. Similarly, the Severance Declaration included
eight email chains between December 2012 and May 2017 involving possible
consumer confusion about beer-making kits and supplies, but all of these emails
occurred after the co-branded kits went on sale.145 Deppa testified she received “at
least 20 calls” between 2010 and 2013 involving possible consumer confusion, but
didn’t clarify whether the calls occurred during the time that Plaintiff was selling the
first co-branded kit on its website.146 D’Ippolito testified that he “frequently read and
responded to” emails involving possible consumer confusion during the period from
2010 to 2103, and indicated that some of the emails were received before the co-
branded kits were produced, but this testimony is weakened because D’Ippolito didn’t
indicate how many emails were received or when they were received.147
Given the parties’ co-branding of beer-making kits and joint participation in
numerous marketing events, it is hardly surprising that consumers could have been
confused as to whether the parties were affiliated in some way. The parties were in
fact affiliated by virtue of marketing and selling the co-branded beer-making kits.
Even if sales of these co-branded kits were small, as Plaintiff alleges, we cannot
discount the possibility that confusion could have stemmed from the parties’ joint
sales and promotional efforts, beginning in early 2012 and continuing into mid-
2016.148 Further, consumers who may have been confused about different kits—those

145 Exh. B-3 to Severance Dec., 65 TTABVUE 10–12.
146 Deppa Dec., ¶ 4, 67 TTABVUE 2.
147 D’Ippolito Dec., ¶ 4, 66 TTABVUE 2.
148 Severance Dec., p. 2, 64 TTABVUE 3; Exh. B-1, 65 TTABVUE 2–7.
Opposition No. 91223982 and Cancellation No. 92062838
61
not co-branded by the parties—or other products may nevertheless have been
confused by earlier exposure to the co-branded kits or to joint marketing efforts. See
Sebastian Int’l, Inc. v. Longs Drug Stores Corp., 53 F.3d 1073, 34 USPQ2d 1720 (9th
Cir. 1995) (plaintiff that placed collective mark on its products was primarily
responsible for any confusion that resulted, and that confusion cannot be used to
support a charge of infringement against defendant); see also Sega Enters. Ltd. v.
Accolade, Inc., 977 F.2d 1510, 24 USPQ2d 1561, 1574 (9th Cir. 1992) (plaintiff, whose
software displays its trademark when others’ software used, is primarily responsible
for any resultant confusion). Moreover, even if some instances of alleged consumer
confusion did not stem directly from purchases of the co-branded kits, we cannot
discount the possibility that these consumers were nevertheless impacted in some
way by the marketing of the kits.
Simply put, although some customers may have been confused as to whether the
companies were affiliated, they cannot have been confused as to the source of the
goods because both parties were in fact the source of the goods. Accordingly, Plaintiff’s
evidence from 2012 and later does not establish actual confusion among consumers.
Regarding evidence of alleged actual confusion before 2012, we find much of the
evidence is infirm or inconclusive. Plaintiff’s CEO admitted he was not aware of any
confusion prior to an internal investigation of the issue in 2015.149 Additionally, many
of the instances of alleged confusion are not from consumers, distributors or retailers,
and thus are irrelevant. For example, misattribution in 2011 by Craftbeer.com of a

149 Ottaway Dec., ¶ 26, 60 TTABVUE 8.
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62
beer-flavored ice cream, to Plaintiff instead of Defendant, is not an example of
consumer confusion.150 Similarly, an email from an online adult education group
seeking to launch a beer making class, addressed to Defendant but referring to
Plaintiff, also is not an example of consumer confusion.151 See Caliber Auto.
Liquidators, Inc. v. Premier Chrysler, Jeep, Dodge, LLC, 605 F.3d 931, 94 USPQ2d
1866, 1870 (11th Cir. 2010) (“Short-lived confusion or confusion of individuals
casually acquainted with a business is worthy of little weight while confusion of
actual customers of a business is worthy of substantial weight.”) (citation omitted);
see also MCCARTHY, § 23:13 (“Obviously, the evidence of actual confusion is the
testimony of a ‘reasonably prudent purchaser’ who was in fact confused by
defendant's trademark.”). Regarding the remaining few emails of alleged consumer
confusion, given that Plaintiff sells its beer to millions of consumers and likely
receives a large volume of email, we find the number to be insufficient to establish
actual confusion.
As to the averments in the declarations of Plaintiff’s employees about telephone
calls from consumers, we note that none of the purportedly confused individuals—
Plaintiff’s customers, suppliers, or others—testified about their confusion. Rather,
there is only conclusory testimony from Plaintiff’s employees. Courts and leading
trademark treatises consistently note that relatively imprecise averments of
employees of parties in whose interest it is to prove confusion that the employees

150 Defendant’s response to Plaintiff’s first set of interrogatories, response to interrogatory
No. 14, Exh. G-14, 75 TTABVUE 77–78.
151 Plaintiff’s Notice of Reliance Exh. H-7, 80 TTABVUE 58–60.
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63
have dealt with confused consumers is, without further corroboration, generally not
entitled to much weight. See, e.g., Vitek Sys., Inc. v. Abbott Labs., 675 F.2d 190, 216
USPQ 476, 479-80 (8th Cir. 1982) (factfinder could refuse to credit uncorroborated
testimony of interested persons about interacting with unspecified confused
consumers); see also Duluth News-Tribune v. Mesabi Publ’g Co., 84 F.3d 1093, 38
USPQ2d 1937, 1941 (8th Cir. 1996); A. Gilson Lalonde, 5 GILSON ON TRADEMARKS
§ 5.04[4][c] (“[W]here the evidence of actual contemporaneous confusion is filtered
through a plaintiff’s employees or where people affiliated with the plaintiff proclaim
their confusion, courts are rightly wary of the possibility of bias and view such
evidence with skepticism”); id. n.44 (collecting cases). We do not see any reason to
give those declarations more weight here. If there had been corroboration of some sort
of the mostly-generalized instances recounted by Plaintiff’s employees, we might have
given these averments more weight. But there was not. And, as noted above, many
instances of telephone calls with purported actual confusion occurred during the
period of co-branded beer-making kits.
Finally, several instances of purported confusion are inquiries as to whether the
companies are related.152 These do not demonstrate confusion; rather they
demonstrate that the individuals understand that the companies may be different
entities. See, e.g., Mini-Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1475
(TTAB 2016); Couch/Braunsdorf, 110 USPQ2d at 1479 (inquiry is not evidence of

152 See, e.g., Defendant’s response to Plaintiff’s first set of interrogatories, response to
interrogatory No. 14, Exh. G-14, 75 TTABVUE 77–78.
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64
confusion because the inquiry indicates that the prospective customer had a reason
to suspect that there were two different companies); Marshall Field & Co. v. Mrs.
Fields Cookies, 25 USPQ2d 1321, 1334 (TTAB 1992) (inquiries indicate that people
were aware that MARSHALL FIELD’S and MRS. FIELDS were different entities and
none of the persons were called as a witness and questioned about the reasons for
their inquiries); Toys “R” Us, Inc. v. Lamps “R” Us, 219 USPQ 340, 346 (TTAB 1983)
(“The fact that questions have been raised as to the possible relationship between
firms is not by itself evidence of actual confusion of their marks.”); Elec. Water
Conditioners, Inc. v. Turbomag Corp., 221 USPQ 162, 164 (TTAB 1984) (“That
questions have been raised as to the relationship between firms is not evidence of
actual confusion of their trademarks.”).
In sum, the evidence occurring during the co-branding period is not evidence of
actual confusion and the remaining examples are too infirm to constitute evidence
upon which we may accord sufficient probative value to make a finding of actual
confusion. In view thereof we find the seventh and eighth DuPont factors to be
neutral.153
E. Balancing the DuPont factors as to classes 5 and 21
We have considered all of the arguments and evidence of record, including any not
specifically discussed herein, and all relevant DuPont factors. Defendant’s
BROOKLYN BREW SHOP mark is similar in appearance, sound, connotation, and

153 Even if we were to find the record includes some examples that could be considered to be
instances of actual confusion, they are too few in number that we would still find these factors
to be neutral in the overall weighing of the relevant DuPont factors.
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65
commercial impression to Plaintiff’s BROOKLYN BREWERY and BROOKLYN
marks. Although the marks are not identical, marks must be considered in light of
the fallibility of memory. In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082,
1085 (Fed. Cir. 2014). While Plaintiff’s marks have some conceptual weakness, they
also have some commercial strength. The differences between the marks are minor
and could be overlooked or misremembered. Some of the goods, namely, beverage
glassware, are legally identical.
We find that as to the beverage glassware in class 21, the similarity of the marks,
despite some weakness in Plaintiff’s marks, and the legal identity of the goods, are
such that Defendant’s mark, as used in connection with beverage glassware, so
resemble Plaintiff’s marks as to be likely to cause confusion or to cause mistake or to
deceive. On the other hand, we find that the dissimilarity of the goods and channels
of trade for Defendant’s sanitizing preparations are so great that these factors
outweigh the similarity of the marks and do not support concluding that confusion is
likely.
F. Inevitable confusion as to class 32
Defendant has established the defenses of laches and acquiescence as to beer-
making kits in Class 32 in both its registration and application. Accordingly, for
Plaintiff to prevail, it must establish that confusion is inevitable.154 The standard for
finding confusion to be inevitable (versus only “likely”) is a higher one : “[T]he

154 Defendant’s consent to entry of judgment on the question of likelihood of confusion in the
’776 application with respect to the deleted goods in Class 32, which included beer making
ingredients, does not necessitate a finding that confusion is inevitable as to beer making kits.
Opposition No. 91223982 and Cancellation No. 92062838
66
standard of confusion required for a finding of inevitability of confusion is an
increment higher than that required for a finding of a likelihood of confusion.” Coach
House, 19 USPQ2d at 1409; see also Turner, 52 USPQ2d at 1313 n.5.
Generally, confusion has been found to be inevitable where the respective marks
and goods or services are identical or nearly so. See, e.g., Metro Traffic Control, Inc.
v. Shadow Network Inc., 104 F.3d 336, 41 USPQ2d 1369, 1373 (Fed. Cir. 1997)
(affirming Board finding that confusion was “so likely that it is virtually inevitable,
because the parties are using the identical mark for the identical services”) (internal
citation omitted); Ultra-White, 175 USPQ at 167 (confusion inevitable for nearly
identical BRIGHT WHITE and BRIGHTWHITE marks for laundry products). But see
Teledyne, 78 USPQ2d at 1212 (finding confusion likely but not inevitable where the
parties’ marks were identical but the goods, although commercially related, were
“hardly identical”).
We find the evidence of record does not establish that confusion is inevitable as to
Defendant’s beer-making kits. Plaintiff’s marks, BROOKLYN and BROOKLYN
BREWERY, and Defendant’s BROOKLYN BREW SHOP marks are not identical.
More importantly, the goods are not identical either inasmuch as Plaintiff’s goods do
not include beer-making kits. The goods may be commercially related but they are
“hardly identical.” Teledyne, 78 USPQ2d at 1212. We do not find the instances of
asserted actual confusion sufficient to establish that confusion is inevitable.
Moreover, the statement by Plaintiff’s CEO, Eric Ottaway, regarding the marks’
ability to co-exist is particularly relevant: “While we have no problem with the beer
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67
making kit side, we do have a problem with the beer category.”155 If Plaintiff’s CEO
has “no problem” with Defendant’s use of BROOKLYN BREW SHOP on beer-making
kits, confusion is not inevitable as to the kits.
G. Conclusion
Plaintiff’s likelihood of confusion claims as to beer-making kits in class 32 in the
’439 registration and the ’776 application, as amended, are dismissed. The likelihood
of confusion claim as to sanitizing preparations in class 5 of the ’776 application is
likewise dismissed. The likelihood of confusion claims as to the glassware and
coasters in class 21 in the ’776 application are sustained.
VII. Mere descriptiveness under Trademark Act Section 2(e)(1)
We next address Plaintiff’s claim that Defendant’s BROOKLYN BREW SHOP
mark in the ’439 registration is merely descriptive under Trademark Act Section
2(e)(1) of the Trademark Act. Defendant’s equitable defenses of laches and
acquiescence are not available against claims of descriptiveness. See Saint-Gobain,
66 USPQ2d at 1359. Plaintiff bears the burden of showing, by a preponderance of the
evidence, that the designation sought to be registered is merely descriptive. Goodyear
Tire & Rubber Co. v. Cont’l Gen. Tire Inc., 70 USPQ2d 1067, 1070 (TTAB 2003).
Section 2(e)(1) of the Trademark Act precludes registration of “a mark which,
(1) when used on or in connection with the goods of the applicant is merely descriptive
. . . of them.” 15 U.S.C. § 1052(e)(1). “A mark is merely descriptive if it immediately
conveys information concerning a feature, quality, or characteristic of the goods or

155 Exh. 202 to Valand Dec., 86 TTABVUE 32, 90 TTABVUE 179–80.
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68
services for which registration is sought.” Real Foods Pty Ltd. v. Frito-Lay N. Am.,
Inc., 906 F.3d 965, 128 USPQ2d 1370, 1373 (Fed. Cir. 2018) (quoting In re N.C.
Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017)). Descriptiveness of
a mark must be assessed “in relation to the goods for which registration is sought,
the context in which it is being used, and the possible significance that the term would
have to the average purchaser of the goods because of the manner of its use or
intended use.” In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)
(citing Abcor, 200 USPQ at 218). The descriptiveness analysis concentrates on the
recitation of goods set forth in the application. See In re Cordua Rests., Inc., 823 F.3d
594, 118 USPQ2d 1632, 1636 (Fed. Cir. 2016) (quoting Octocom Sys., Inc. v. Houston
Comput. Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
Evidence that a term is merely descriptive to the relevant purchasing public “may
be obtained from any competent source, such as dictionaries, newspapers, or
surveys.” Bayer, 82 USPQ2d at 1831; see In re Virtual Indep. Paralegals, LLC, 2019
USPQ2d 111512, at *2 (TTAB 2019) (“Evidence of the public’s understanding of a
term may be obtained from ‘any competent source, such as . . . dictionaries,
newspapers and other publications.’”) (quoting Princeton Vanguard, LLC v. Frito-Lay
N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827, 1830 (Fed. Cir. 2015)).
Plaintiff argues “BROOKLYN BREW SHOP is merely descriptive and/or
primarily geographically descriptive of the goods.”156 As addressed above, Plaintiff
did not plead that Defendant’s mark was primarily geographically descriptive and a

156 Plaintiff’s Br., p. 27, 103 TTABVUE 28.
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69
determination of this claim is not before the Board. Regarding the individual terms
in Defendant’s mark, Plaintiff argues “[t]he first word in Applicant’s mark is
BROOKLYN, a well-known geographic location”157 and Defendant is based in
Brooklyn. Continuing, Plaintiff argues “[t]he term BREW SHOP in Applicant’s mark
merely describes a type of business that sells brewing supplies such as brew kits.”158
Plaintiff observes that “Applicant voluntarily disclaimed BROOKLYN in the
application that matured into the ’439 registration, thus admitting it is primarily
geographically descriptive of the goods.”159
We agree the primary significance of the term “Brooklyn” is, without question,
geographic. And the term BREW SHOP describes a “place to buy brewing
supplies.”160 The addition of BREW SHOP to BROOKLYN, moreover, does not
obviate a determination that BROOKLYN BREW SHOP refers to a place to buy
brewing supplies in Brooklyn. See In re Cambridge Dig. Sys., 1 USPQ2d 1659, 1662
(TTAB 1986) (the addition of generic or highly descriptive terms to a geographic term
does not preclude a determination of geographical descriptiveness).
For these reasons, it seems likely Defendant’s marks would not be perceived by
the prospective customers seeking brewing supplies and accessories as describing a
“quality, feature, function, or characteristic” of the goods. Rather, we believe the
phrase BROOKLYN BREW SHOP primarily signifies a “brew shop” based in

157 Id. at 28, 103 TTABVUE 29.
158 Id. at 29, 103 TTABVUE 30.
159 Id. at 28, 103 TTABVUE 29.
160 Erica Shea Dep., p. 38, 51 TTABVUE 39.
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Brooklyn and that, with respect to the brewing supplies and accessories, a public
association of those goods with the geographic place named in Defendant’s mark (i.e.
Brooklyn) may be presumed. See In re BankAmerica Corp., 231 USPQ 873 (TTAB
1986) (phrase BANK OF AMERICA primarily geographically descriptive of
computerized financial data processing services but not merely descriptive of such
services).
All of Plaintiff’s arguments inform whether BROOKLYN BREW SHOP is
primarily geographically descriptive under Section 2(e)(2), not whether it is merely
descriptive under Section 2(e)(1). Showing that Brooklyn describes the geographic
origin of the goods or the location of Defendant’s “brew shop” is not sufficient to justify
a refusal of registration under Section 2(e)(1). Accordingly, Plaintiff’s claim under
Trademark Act Section 2(e)(1) for cancellation of the ’439 registration is denied. See
In re Joint-Stock Co. “Baik”, 80 USPQ2d 1305, 1311 (TTAB 2006) (“Showing that
BAIKALSKAYA describes the geographic origin of an ingredient of the goods is not
sufficient to make out a separate basis for refusal under Section 2(e)(1).”).
Since Plaintiff’s claim under Trademark Act Section 2(e)(1) fails, we need not
consider whether the mark lacked acquired distinctiveness at the time of registration.
Decision: The opposition to Application Serial No. 86280776 is sustained as to class
21, and registration is refused as to this class.
The opposition is dismissed as to class 5 and class 32, as amended, and the
application will proceed as to these classes only.
The petition for cancellation of Registration No. 4034439 is denied.