Tin Roof Brewing Company, LLC

Trademark Trial and Appeal Board

Aug 24, 2017

No. 86598327 (T.T.A.B. Aug. 24, 2017)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Hearing Date: July 11, 2017 Mailed: August 24, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Tin Roof Brewing Company, LLC
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Serial Nos. 86598212, 86598327 and 86606663
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Stephen T. Perkins of Taylor Wellons Politz & Duhe APLC,
for Tin Roof Brewing Company, LLC.
Meghan Reinhart, Trademark Examining Attorney, Law Office 108,
Andrew Lawrence, Managing Attorney.
_____

Before Quinn, Lykos and Pologeorgis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
Tin Roof Brewing Company, LLC (“Applicant”) seeks registration on the Principal
Register of the following three marks:
(1) TIN ROOF BREWING CO. (in standard characters; BREWING CO.
disclaimed) for “beer, ale, lager, stout and porter, pale beer; wheat beer”
in International Class 32;1

1 Application Serial No. 86598212, filed on April 15, 2015, based on an allegation of use in
commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming October 20,
2009 as the date of first use and June 1, 2010 as the date of first use in commerce.
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(2) (BREWING CO. disclaimed) for “caps; shirts” in
International Class 25 and “beer, ale, lager, stout and porter, pale beer;
wheat beer” in International Class 32;2 and
(3) TIN ROOF BREWING CO. (in standard characters; BREWING CO.
disclaimed) for “Beer glasses; Beer jugs; Beer mugs; Bottles, sold empty;
Glass mugs; Growlers; Insulating sleeve holder for bottles; Insulating
sleeve holders for beverage cans; Mugs; Portable beverage coolers;
Portable coolers” in International Class 21.3
The Examining Attorney has refused registration of all three of Applicant’s marks
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that each
of Applicant’s marks so resembles the registered mark THE TIN ROOF (in standard
characters) for “Bar and restaurant services; Serving food and drinks; Tavern
services” in International Class 434 as to be likely to cause confusion. The Examining
Attorney also refused registration of Applicant’s marks shown in Application Serial

2 Application Serial No. 86598327, filed on April 15, 2015, based on an allegation of use in
commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming October 20,
2009 as the date of first use and June 1, 2010 as the date of first use in commerce for the
goods identified in International Class 32 and October 20, 2009 as both the date of first use
and the date of first use in commerce for the goods identified in International Class 25.
3 Application Serial No. 86606663, filed on April 22, 2015, based on an allegation of use in
commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming October 20,
2009 as both the date of first use and the date of first use in commerce.
4 Registration No. 4103434, registered on February 28, 2012.
Serial Nos. 86598212, 86598327 and 86606663
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Nos. 86598212 (TIN ROOF BREWING CO.) and 86598327 ( ) under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that both of these
marks so resemble the registered mark TIN ROOF (in standard characters) for
“wine”5 as to be likely to cause confusion. The two cited registrations are owned by
different registrants.
When the refusals were made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the requests for
reconsideration, the appeals were resumed, and an oral hearing was held on July 11,
2017. We affirm the refusals, in part, and reverse, in part.
Appeals Consolidated
These appeals involve common questions of law and fact and the records are
substantially similar. Accordingly, we consolidate and decide each appeal in this
single decision.6 See In re Binion, 93 USPQ2d 1531, 1533 (TTAB 2009); TBMP § 1214
(June 2017).
I. Applicable Law
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567

5 Registration No. 3590048, registered on March 17, 2009. Section 8 and 15 Affidavits
accepted and acknowledged on May 3, 2014.
6 Unless otherwise specified, all TTABVUE and Trademark Status and Document Retrieval
(“TSDR”) citations reference the docket and electronic file database for Application Serial No.
86598212. All citations to the TSDR database are to the PDF version of the documents.
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(CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). We have considered each du Pont factor that is relevant and
all evidence and arguments of record. See M2 Software, Inc. v. M2 Commc’ns, Inc.,
450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA
Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each
factor for which we have evidence, we focus our analysis on those factors we find to
be relevant.”). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the goods and services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d)
goes to the cumulative effect of differences in the essential characteristics of the goods
and differences in the marks.”).
A. The similarity or dissimilarity of the marks.
We first address the du Pont likelihood of confusion factor focusing on “the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005) (quoting du Pont, 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.
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Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(quotation omitted).
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, our analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d
1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”). On the other hand, there 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 a consideration of the
marks in their entireties. In re Nat’l Data, 224 USPQ at 751.
Applicant’s marks are TIN ROOF BREWING CO., in standard characters, and
. The cited marks are TIN ROOF (in standard characters) and THE TIN
ROOF (also in standard characters). Here, we find that the dominant portion of
Applicant’s marks is the arbitrary wording TIN ROOF. While one of Applicant’s
involved marks comprises both words and a design element, “the verbal portion of the
mark is the one most likely to indicate the origin of the goods to which it is affixed.”
Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGaA v. New Millennium
Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1134 (Fed. Cir. 2015) (citing CBS
Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983)). Greater weight
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is often given to the wording because it is the wording that purchasers would use to
refer to or request the goods or services. See, e.g., In re Viterra, Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1911 (Fed. Cir. 2012). Moreover, with regard to Applicant’s mark
that includes a design element, we note that the wording TIN ROOF appears on a
geometric background, the shape of which resembles a roof, thereby reinforcing the
significance of the wording in the mark. We also find the wording BREWING CO. in
Applicant’s marks is less significant given the fact that the wording is descriptive
and/or generic of Applicant’s identified goods, and has been appropriately disclaimed
by Applicant. See, e.g., 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 the
dominant portion of the mark THE DELTA CAFE).
The dominant portion of Applicant’s marks is identical to the cited mark TIN
ROOF and virtually identical to the cited mark THE TIN ROOF in appearance,
sound, connotation and commercial impression. The inclusion of the term “THE” in
the cited mark THE TIN ROOF is not significant. When comparing similar marks,
the Board has found that inclusion of the term “the” at the beginning of one of the
marks, as is the case here, will generally not affect or otherwise diminish the overall
similarity between the marks. In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB
2009) (finding WAVE and THE WAVE “virtually identical” marks; “[t]he addition of
the word ‘The’ at the beginning of the registered mark does not have any trademark
significance.”); In re Narwood Prods. Inc., 223 USPQ 1034, 1034 (TTAB 1984) (finding
THE MUSIC MAKERS and MUSIC-MAKERS “virtually identical” marks; the
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inclusion of the definite article “the” is “insignificant in determining likelihood of
confusion”).
For completeness we also note here that, although we will consider all evidence of
record, we will not consider it for any impermissible purpose. Applicant argues that
certain Internet evidence it has submitted demonstrates that the owner of the cited
mark TIN ROOF for “wine” almost always uses the mark as TIN ROOF CELLARS
and not TIN ROOF alone, and that the Board should take this real world use into
consideration when considering the similarities of the marks at issue.7 Applicant’s
argument based on how the cited mark is used in the marketplace is unavailing. For
purposes of our Section 2(d) analysis, we are constrained to make our determination
based on the cited mark, as registered, and not on its manner of use based on extrinsic
evidence. Moreover, the manner in which the registered mark is used could be
changed at any time; only the word mark itself (here TIN ROOF) is registered. See
Kimberly Clark Corp. v. H. Douglas Enterprises, Ltd., 774 F.2d 1144, 227 USPQ 541,
543 (Fed. Cir. 1985); see also Vornado, Inc. v. Breur Electric Mfg. Co., 390 F.2d 724,
156 USPQ 340, 342 (CCPA 1968) (“… the display of a mark in a particular style is of
no material significance since the display may be changed at any time as may be
dictated by the fancy of the applicant or the owner of the mark.”).
Quite simply, the dominant portion of Applicant’s marks is identical or virtually
identical to the cited marks in appearance, sound, connotation and commercial
impression. While we have not overlooked the design element in one of Applicant’s

7 Applicant’s Appeal Brief, p. 10, 7 TTABVUE 14.
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involved marks or Applicant's disclaimer of the wording BREWING CO. because it is
a descriptive and/or generic term, we nonetheless conclude that Applicant's marks
and the cited marks, when considered in their entireties, are substantially similar
due to the shared identical wording TIN ROOF.
Thus, the first du Pont factor favors a finding of likelihood of confusion.
B. Strength/Weakness of Cited Mark THE TIN ROOF for “Bar and
restaurant services; Serving food and drinks; Tavern services.”

Applicant argues that the wording TIN ROOF is weak for restaurant and bar
services and, therefore, the cited mark THE TIN ROOF for such services should be
afforded a limited scope of protection.8 In support of its argument, Applicant has
submitted third-party websites showing uses of the wording TIN ROOF as a source
indicator for restaurants and bars:9
TIN ROOF GRILL in Sandy, Utah;
TIN ROOF CAFÉ in New Orleans, Louisiana;
TIN ROOF BISTRO in Manhattan Beach, California;
TIN ROOF CANTINA in Atlanta, Georgia;
HOT TIN ROOF RESTAURANT in Key West, Florida;
THE TIN ROOF CAFÉ in Sevierville, Tennessee;
THE TIN ROOF CAFÉ in Sanford, Michigan;
THE TIN ROOF RESTAURANT in Spanish Fort, Alabama;
THE TIN ROOF BAKERY & CAFÉ in Chico, California;
TIN ROOF TAVERN in Urbana, Illinois;
TIN ROOF TAVERN in Manchester, New Hampshire;
TIN ROOF TAVERN in Leland, Illinois; and
HOT TIN ROOF “JUKE JOINT” in Hillsborough, North Carolina.

8 Applicant’s Appeal Brief, pp. 1, 3, and 7, 4 TTABVUE 5, 7 and 11.
9 See Applicant’s February 1, 2016, Response to Office Action, Exhibits 5-17, TSDR pp. 25-
59.
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In further support of its contention that the phrase TIN ROOF is weak, Applicant
also submitted (1) copies of certificates of incorporation issued by the State of
Louisiana for companies that conduct business under the trade name TIN ROOF,10
(2) copies of two third-party registrations owned by the same registrant, both for the
mark HOT TIN ROOF, one for “live musical performances” and the other for
“clothing, namely, t-shirts and tank tops,”11 and (3) a copy of a third-party
registration owned by a different registrant for FLORESVILLE TIN ROOF SUNDAE
for “ice cream.”12
The Federal Circuit has stated that evidence of the extensive registration and use
of a term by others can be “powerful” evidence of weakness. See Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797
F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS
Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). Moreover,
under the sixth du Pont factor, the Board must consider evidence of “[t]he number
and nature of similar marks in use on similar goods [or services].” In re E.I. du Pont
de Nemours & Co., 177 USPQ at 567. The type of strength (or its inverse, weakness)
addressed by the sixth du Pont factor is sometimes referred to as market or
commercial strength. This is the degree of association in the mind of the consumer of
the mark with the source of the goods or services based on the exclusivity (and

10 See Applicant’s August 23, 2016, Request for Reconsideration, Exhibit 3, TSDR pp. 28-53.
11 Id., Exhibit 1, TSDR pp. 10-11 and 20-21.
12 Id., Exhibit 1, TSDR p. 22.
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sometimes renown) of the mark in the relevant market. See 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 (distinctiveness) and its marketplace
strength (secondary meaning).”); Couch/Braunsdorf Affinity, Inc. v. 12 Interactive,
LLC, 110 USPQ2d 1458, 1476 (TTAB 2014); Tea Board of India v. Republic of Tea
Inc., 80 USPQ2d 1881 (TTAB 2006).
In evaluating the strength or, in this instance, the weakness of the wording TIN
ROOF when used in association with restaurant, bar and tavern services, the Board
initially notes that the State of Louisiana certificates of incorporation submitted by
Applicant have little, if any, probative value in determining whether the phrase TIN
ROOF is weak since the certificates of incorporation do not identify the goods or
services offered by these incorporated entities.13 Moreover, the third-party
registrations for the marks HOT TIN ROOF and FLORESVILLE TIN ROOF
SUNDAE do not identify goods and services related to the goods and services at issue
and, therefore, have no bearing on the determination of the strength of the cited THE
TIN ROOF mark. See Kay Chems., Inc. v. Kelite Chems. Corp., 464 F.2d 1040, 1042,
175 USPQ 99, 101 (CCPA 1972); In re Thor Tech, Inc., 90 USPQ2d 1634, 1639 (TTAB
2009) (third-party registrations found to be of limited value because goods identified
in the registrations appeared to be in fields which were far removed from the involved
products).

13 The Board further notes that of the thirteen business filings submitted by Applicant, five
are for “inactive” companies, five are for companies “not in good standing for failure to file an
annual report” and one does not include either the word TIN or ROOF.
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Notwithstanding the foregoing, we find that the evidence demonstrating
nationwide co-existence of third-party marketplace uses for the phrase TIN ROOF
used in association with restaurant, bar, and tavern services shows that the phrase
TIN ROOF as a source indicator for such services is weak. See Rocket Trademarks
Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1072 (TTAB 2011) (Internet printouts “on
their face, show that the public may have been exposed to those internet websites and
therefore may be aware of the advertisements contained therein”). Because the
evidence shows that consumers have been exposed to numerous TIN ROOF marks
used in association with restaurant, bar and tavern services, we find that the minute
differences between Applicant’s marks and the cited THE TIN ROOF mark are
sufficient to distinguish them. See Palm Bay Imports Inc., 73 USPQ2d at 1694 (“[t]he
purpose of [an applicant] introducing third-party uses is to show that customers have
become so conditioned by a plethora of such similar marks that customers have been
educated to distinguish between different such marks on the bases of minute
distinctions.”) Accordingly, the sixth du Pont factor concerning the commercial
strength (or in this case, the weakness of the wording TIN ROOF) favors Applicant
and supports a finding that confusion is unlikely with regard to the cited registration
for the mark TIN ROOF for “Bar and restaurant services; Serving food and drinks;
Tavern services.”14

14 We note that neither Applicant, nor the Examining Attorney, submitted evidence or
argument regarding the strength of the cited mark TIN ROOF for “wine.” Therefore, we find
that the mark TIN ROOF for “wine” is conceptually strong not only because it is an arbitrary
term in relation to “wine” but because we must presume that it is inherently distinctive in
view of the cited registration of record.
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C. Relatedness of the Goods and Services.

The next step in our analysis is a comparison of the goods identified in Applicant's
applications vis-à-vis the goods and services identified in the cited registrations, the
second du Pont factor. See Stone Lion Capital Partner, LP v. Lion Capital LLP, 746
F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston
Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); see also
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004
(Fed. Cir. 2002). It is settled that it is not necessary that the respective goods and
services be identical or even competitive in order to find that they are related for
purposes of our likelihood of confusion analysis. The respective goods and services
need only be “related in some manner and/or if the circumstances surrounding their
marketing [be] such that they could give rise to the mistaken belief that goods [and
services] emanate from the same source.” Coach Servs., 101 USPQ2d at 1722 (quoting
7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); see also In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984);
In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). Evidence of relatedness
may include news articles and/or evidence from computer databases showing that the
relevant goods and services are used together or used by the same purchasers;
advertisements showing that the relevant goods and services are advertised together
or offered by the same manufacturer or dealer; and/or copies of prior use-based
registrations of the same mark for both Applicant's goods and the goods and services
listed in the cited registrations. In re Davia, 110 USPQ2d 1810, 1817 (TTAB 2014)
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(finding pepper sauce and agave related where evidence showed both were used for
the same purpose in the same recipes and thus consumers were likely to purchase
the products at the same time and in the same stores). The issue is not whether
purchasers would confuse the goods and services, but rather whether there is a
likelihood of confusion as to the source of these goods and services. L’Oreal S.A. v.
Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830, 832
(TTAB 1984).
The Examining Attorney made of record numerous live third-party, use-based
registrations identifying Applicant’s goods listed in its involved three applications
and the goods and services identified in the cited registrations. Although such
registrations are not evidence that the marks shown therein are in use or that the
public is familiar with them, they nonetheless have some probative value to the
extent that they serve to suggest that the goods and services listed therein are of a
kind which may emanate from a single source under a single mark. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); and In re Mucky Duck Mustard
Co. Inc., 6 USPQ2d 1467 (TTAB 1988).
Additionally, the Examining Attorney submitted Internet evidence purportedly
showing third parties offering for sale the types of goods and services identified in
Applicant’s involved applications and the cited registrations under the same mark.
By way of illustration, we note the following:

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Beer and Wine
Third Party Registrations15
KIGEN (Reg. No. 4380436) is registered on the Principal Register for “beer” in
International Class 32 and “alcoholic beverages, namely, wine” in
International Class 33.

SWEET JESUS (Reg. No. 3994422) is registered on the Principal Register for
“beer” in International Class 32 and “wine” in International Class 33.

(Reg. No. 3875505) is registered on the Principal Register for
“beer, soft drinks” in International Class 32 and “wine, liquor, alcoholic
beverages, namely, hard cider” in International Class 33.

TIGHT ASS (Reg. No. 3962914) is registered on the Principal Register for
“beer” in International Class 32 and “distilled spirits; wine” in International
Class 33.

SCHILLINGBRIDGE (Reg. No. 3099373) is registered on the Principal
Register for “beer” in International Class 32 and “wine” in International Class
33.

SALTY DOG (Reg. No. 4136155) is registered on the Principal Register for
“beer, ale, lager, porter and stout” in International Class 32 and “wine” in
International Class 33.

(Reg. No. 3934483) is registered on the Principal Register for
“beer; sweet cider” in International Class 32 and “hard cider; Sangria; wine” in
International Class 33.

O’HARA’S (Reg. No. 4133934) is registered on the Principal Register for “beer”
in International Class 32 and “spirits and liqueurs; wine” in International
Class 33.

15 See July 31, 2015, Office Action, TSDR pp. 23-47.
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MARGARITAS WITH A MISSION (Reg. No. 4646106) is registered on the
Principal Register for “beer, beer based cocktails” in International Class 32 and
“distilled spirits and wine” in International Class 33.

CHARLEVILLE (Reg. No. 4694631) is registered on the Principal Register for
“beer” in International Class 32 and “wine” in International Class 33.

Internet Marketplace Evidence

The Examining Attorney also submitted Internet marketplace evidence
demonstrating that wineries and/or breweries or a combination thereof sell both wine
and beer.16 See the following:
Excerpts from 2 Witches Winery & Brewing Co. website showing that it offers both
wine and beer;

Excerpts from Schnelby Redland’s Winery and Brewery website showing that it
offers both wine and beer;

Excerpts from Nashoba Valley Winery website showing that it offers both wine
and beer; and

Excerpts from Bella Casa di Vino Winery and Microbrewery showing that it offers
both wine and beer;

Excerpts from Fenton Winery & Brewery showing that it offers both wine and
beer;

Excerpts from Motor City Brewing Works website demonstrating that it offers
both beer and wine;

Excerpts from Round Barn Winery – Distillery – Brewery offering both beer and
wine; and

Excerpts from Schilling Bridge Winery and Microbrewery offering both beer and
wine.

16 Id., TSDR pp. 15-20; see also February 23, 2016, Office Action, TSDR pp. 31-39.
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Beer and Restaurant, Bar and Tavern Services
Third Party Registrations17
ZAUBER (Reg. No. 4158245) is registered on the Principal Register for
“Beer, ale, Belgian ale, lager, stout, porter and wheat beer” in
International Class 32 and “restaurant and bar services” in
International Class 43;

(Reg. No. 4023613) is registered on the Principal Register
for “Malt beverages, namely, beer, ale, lager, pilsner, stout, porter and
other craft beers” in International Class 32; “micro-brewery services” in
International Class 40; and “restaurant, bar and catering services;
brewpub services” in International Class 43;

(Reg. No. 4033570) is registered on the Principal Register
for “Beer, ale, lager, stout and porter” in International Class 32;
“brewery services” in International Class 40; and “bar restaurant
services; brewpub services” in International Class 43;

(Reg. No. 4264179) is registered on the Principal Register for
“Beer, ale, lager, stout and porter; Brewed malt-based alcoholic beverage
in the nature of a beer” in International Class 32 and “bar services;
restaurant services” in International Class 43;

17 See July 31, 2015, Office Action, TSDR pp. 52-84.
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(Reg. No. 4291916) is registered on the Principal
Register for “Beer, ale, lager, stout, porter, shandy” in International
Class 32 and “bar services; restaurant services” in International Class
43;

BOTTLE LOGIC BREWING (Reg. No. 4565217) is registered on the
Principal Register for “Beer, namely, alcoholic beer, lager, ale, stout,
porter, draft, and micro-brew” in International Class 32 and “bar,
tasting room, and restaurant services” in International Class 43;

UNITED IN THE THIRST FOR KNOWLEDGE AND BEER (Reg. No.
4638181) is registered on the Principal Register for “Beer, namely,
alcoholic beer, lager, ale, stout, porter, draft and micro-brew” in
International Class 32 and “bar, tasting room, and restaurant services”
in International Class 43;

(Reg. No. 4653890) is registered on the Principal Register for
“Beer, namely, alcoholic beer, lager, ale, stout, porter, draft and micro-
brew” in International Class 32 and “bar, tasting room, and restaurant
services” in International Class 43;

SCOTTSDALE BEER COMPANY (Reg. No. 4701568) is registered on
the Supplemental Register for “Beer, ale, lager, stout and porter” in
International Class 32 and “restaurant and bar services” in
International Class 43;

(Reg. No. 4769985) is registered on the Principal Register
for “Beer; ale; lager; stout; porter; malt liquor” in International Class 32;
“beer making and brewing services” in International Class 40; and
“restaurant, bar, and catering services; brewpub services” in
International Class 43;

UNCLE BILLY’S (Reg. No. 4663353) is registered on the Principal
Register for “Beer” in International Class 32 and “Bar services;
restaurant services; tavern services; preparation of food and beverages;
Serial Nos. 86598212, 86598327 and 86606663
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taproom services; taproom services featuring beer brewed on premises;
catering services” in International Class 43.

The Examining Attorney submitted additional Internet evidence demonstrating
that brewpubs also serve beer.18 However, this evidence does not show that these
third-party brewpubs sell beer under the same mark associated with their brewpub
services. Accordingly, this Internet evidence has little probative value in
demonstrating that third parties provide brewpub services and beer under the same
mark.
Caps/Shirts and Wine

Third-Party Registrations19

SOUTH COAST WINERY (Reg. No. 2930266) is registered on the Principal
Register for “clothing, namely, shirts, T-shirts and caps” in International Class
25 and “wine, namely, white wine, red wine, Chablis and sparkling wine” in
International Class 33.

600 HOME RUN CLUB (Reg. No. 3596032) is registered on the Principal
Register for “apparel, namely, caps, baseball jerseys and T-shirts” in
International Class 25 and “wine” in International Class 33.

BRIAR ROSE WINERY (Reg. No. 3424469) is registered on the Principal
Register for “camp shirts; chef's hats; dress shirts; fur hats; golf shirts; hat
bands; hats; headgear, namely, hats, caps, knit shirts; night shirts; open-
necked shirts; piquet shirts; polo shirts; sedge hats; shirt fronts; shirts; shirts
for suits; short-sleeved or long-sleeved t-shirts; short-sleeved shirts; sleep
shirts; small hats; sport shirts; sports shirts; sports shirts with short sleeves;
sweat shirts; t-shirts; toboggan hats, pants and caps; wind shirts; woolly hats”
in International Class 25 and “aperitif wines; aperitifs with a wine base;
cooking wine; fruit wine; grape wine; kits for making wine; natural sparkling
wines; port wines; prepared wine cocktails; red wine; sparkling fruit wine;
sparkling grape wine; strawberry wine; sweet wines; table wines; tonic sweet
grape wine containing extracts from ginseng and conchona bark; white wine;

18 See February 23, 2016, Office Action.
19 See August 3, 2015, Office Action issued in Application Serial No. 86598327.
Serial Nos. 86598212, 86598327 and 86606663
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wine; wine coolers; wine punch; wine punches; wines” in International Class
33.

(Reg. No. 3993274) is registered on the Principal Register for
“Clothing, namely, shirts, sweatshirts, caps, boxer shorts, and aprons” in
International Class 25 and “wine” in International Class 33.

(Reg. No. 4748670) is registered on the Principal Register
for, among other things, “Clothing, namely, men's and women's shirts, t-shirts,
sweat shirts and pants, golf shirts, oxford shirts, caps and hats” in
International Class 25 and “wine” in International Class 33.

GREAT FRUIT - GREAT WINE = BOOS-ROCK (Reg. No. 4748683) is
registered on the Principal Register for “Clothing, namely, men's and women's
shirts, T-shirts, sweat shirts and pants, golf shirts, oxford shirts, caps and
hats” in International Class 25 and “wine” in International Class 33.

(Reg. No. 4714895) is registered on the Principal Register for
“Athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps,
athletic uniforms; athletic shirts; baseball caps and hats; body shirts; camp
shirts; chef's hats; fishing shirts; graphic t-shirts; hats; hooded sweat shirts;
moisture-wicking sports shirts; polo shirts; rugby shirts; shirts; shirts and
short-sleeved shirts; short-sleeved or long-sleeved t-shirts; short-sleeved
shirts; sport shirts; sports shirts; sun protective clothing, namely, caps, shirts;
sweat shirts; t-shirts; toboggan hats, pants and caps; wearable garments and
clothing, namely, shirts; women’s hats and hoods; woolly hats” in International
Class 25 and “aperitif wines; aperitifs with a wine base; cooking wine; dessert
wines; fortified wines; kits for making wine; natural sparkling wines; port
wines; prepared wine cocktails; sparkling wines; table wines; wine; wine-based
drinks; wines and fortified wines; wines and liqueurs” in International Class
33.

CARSON RIDGE (Reg. No. 4692343) is registered on the Principal Register for
“Hats; jackets; sports caps and hats; T-shirts” in International Class 25 and
“wine” in International Class 33.

Serial Nos. 86598212, 86598327 and 86606663
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Internet Evidence20

Excerpts from Oliver Winery & Vineyard website showing wine and T-shirts
offered for sale under the same mark.

Excerpts from Ridge Vineyard website showing wine and clothing items,
namely, caps and T-shirts, offered for sale under the same mark.

Caps/Shirts and Restaurant and Bar Services

Third-Party Registrations

The Examining Attorney did not submit any third-party registrations that
identify both clothing items such as caps and T-shirts and restaurant and bar
services.

Internet Evidence21

Excerpts from Lake Placid Pub and Brewery website showing caps and T-shirts
and pub services offered for sale under the same mark.

Excerpts from Laurelwood Brewing Co. website showing caps and T-shirts and
pub and restaurant services offered for sale under the same mark.

Beer Mugs/Glassware/Insulating Sleeves/Growlers and Restaurant, Bar and
Tavern Services

Third-Party Registrations22

MAMBO (Reg. No. 3709148) is registered on the Principal Register for, among
other things, “restaurant services” and “kitchen utensils, namely, beverage
holders for beverage cans and bottles:”

TOBY KEITH (Reg. 3014178) is registered on the Principal Register for, among
other things, “Houseware and glassware, namely glass beveragewear, in the
nature of beer steins and shot glasses, beer can insulators namely insulating
sleeve holders for beer” and “bar and restaurant services, namely, serving of
alcoholic beverages, non-alcoholic beverages and food;”

20 Id.
21 Id.
22 See July 31, 2015, Office Action issued in Application Serial No. 86606663, TSDR pp. 17-
22, 26-46.
Serial Nos. 86598212, 86598327 and 86606663
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ECLIPTIC (Reg. No. 4492316) is registered on the Principal Register for,
among other things, “Barware, namely, beer glasses, glassware, namely,
drinking glasses, beer and pint drinking glasses, and growlers” and
“restaurant, brewpub and bar services,”

GIGANTIC (Reg. No. 4501663) is registered on the Principal Register for,
among other things, “Barware, namely, beer glasses; and glassware, namely,
drinking glasses, beer and pint drinking glasses, and growlers” and “brewpub
and bar services,”

BACKSHORE (Reg. No. 4654287) is registered on the Principal Register for,
among other things, “Bottle openers, wax combs, beverage glassware, drinking
glasses, mugs and beer growlers sold empty” and “Bar, brew pub, and
restaurant services,”

Internet Evidence23

Excerpts from Lake Placid Pub and Brewery website beer pint glasses and pub
services offered for sale under the same mark.

Excerpts from Laurelwood Brewing Co. website showing growlers and beer
pint glasses and pub and restaurant services offered for sale under the same
mark.

We find the third-party registration evidence in this case is sufficient to
demonstrate the relatedness of Applicant’s various types of beer and “wine” identified
in cited Registration No. 3590048. See In re Sailerbrau Franz Sailer, 23 USPQ2d
1719 (TTAB 1992) (wine and beer found related goods based on third-party
registrations); see also Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d
1816, 1826-27 (TTAB 2015). Moreover, while we note that the Internet marketplace
evidence does not show that these third-party wineries or breweries sell their beers
and wine under the same mark, we nonetheless find that this evidence lends further
support to our conclusion that “beer” and “wine” are related goods because the

23 Id.
Serial Nos. 86598212, 86598327 and 86606663
- 22 -
websites show that consumers have been exposed to the concept that wineries also
sell beer or, alternatively, breweries also sell wine. The third-party registration
evidence and the website evidence together amply demonstrate the relatedness of
beer and wine, and show that consumers, if they encountered both goods sold under
confusingly similar marks, are likely to believe that they emanate from the same
source.24

24 Applicant submitted copies of two third-party registrations, one for the mark GAME DAY
for “beer” and another for the mark STARK WINE for “wine”, as well as copies of pending
applications already approved for publication by the Office for the mark GAMEDAY for
“wine; wines” and STARK BREWING COMPANY for, among other things, “beer,” to
purportedly demonstrate that the Office is willing to approve an application for registration
for wine despite the existence of an earlier registration of the same or similar mark for beer
and vice versa because the Office does not find that wine and beer are related goods. See
Applicant’s Brief, pp. 9-10, 9 TTABVUE 13-14. We find Applicant’s argument unavailing. The
nontrivial amount of countervailing third-party registrations submitted by the Examining
Attorney which identify both beer and wine as listed goods serves to suggest that wine and
beer are related goods since they are types of alcoholic beverages which may emanate from a
single source under a single mark. In any event, we are not bound by the apparent findings
or decisions made by Examining Attorneys in examining other applications. See In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (the Board must decide
each case on its own merits and assess each mark on the record of public perception submitted
with each application).

In further support of its argument that beer and wine are unrelated goods, Applicant
submitted the results of an academic study which purportedly demonstrate that consumers
of craft beer are knowledgeable and discerning customers and are distinct from consumers of
mass-market beer. See February 1, 2016, Response to Office Action; TSDR pp. 91-122. This
evidence has little to no probative value in our determination herein since (1) Applicant’s
beer products are not restricted to craft beer but include any type of beer, see In re Bay State
Brewing Co., 117 USPQ2d 1958, 1960 n.4 (TTAB 2016), (2) the study does not evaluate
whether consumers of both beer and wine would be confused as to source if both the beer and
wine products are sold under an identical or similar mark, (3) the study does not concern
whether consumers would be confused as to source if craft beer is sold under an identical or
similar trademark as a mass-market beer, (4) the study was geographically limited to the
city of Chicago, Illinois and therefore has no relevance to consumer perception on a
nationwide basis, and (5) the study was conducted twenty years ago and may not reflect
today’s marketplace realities or consumer perceptions.
Serial Nos. 86598212, 86598327 and 86606663
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With regard to the established, likely-to-continue channels of trade for beer and
wine, we note that although not specifically discussed by Applicant or the Examining
attorney, it is common knowledge that beer and wine are general consumer goods
that are sold to adult members of the general public. It is also common knowledge
that these goods can be purchased in liquor stores and, in some cases, supermarkets
and other brick and mortar and online retail outlets. This du Pont factor favors a
finding of likelihood of confusion.
We similarly find that the third-party registration evidence and Internet
marketplace evidence in this case is sufficient to demonstrate that entities which sell
wine or provide restaurant and bar services under a particular mark also provide
collateral goods, such as shirts and caps, as well as growlers and other glassware,
under the same mark. Moreover, it is common knowledge that shirts, caps, growlers
and glassware and other logo-imprinted products are widely used as promotional
items for a diverse range of goods and services, including wine and restaurant and
bar services. See Turner Entertainment Co. v. Nelson, 38 USPQ2d 1942, 1945-46
(TTAB 1996) and cases cited therein. In view thereof, we find that Applicant’s
clothing items and glassware goods are sufficiently related to wine and restaurant
and bar services as collateral goods used in connection with the sale of wine and/or
rendering of restaurant and bar services, and that they are sold through the identical
or similar channels of trade as promotional items to the same classes of purchasers.
This du Pont factor therefore weighs in favor of finding that there is a likelihood
of confusion between (1) Applicant’s beer products and wine; (2) Applicant’s caps and
Serial Nos. 86598212, 86598327 and 86606663
- 24 -
shirts and wine and restaurant and bar services; and (3) Applicant’s growlers and
other glassware and restaurant and bar services.
With regard to our analysis as to whether Applicant’s beer products and
restaurant, bar and tavern services (as identified in cited Registration No. 4103434)
are related goods and services, we note that the Examining Attorney is required to
show “something more” than that similar marks are used for food products and for
restaurant services. In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063
(Fed. Cir. 2003) (quoting Jacobs v. Int’l Multifoods Corp., 668 F.2d 1234, 212 USPQ
641, 642 (CCPA 1982); see also In re Accelerate s.a.l., 101 USPQ2d 2047, 2050 (TTAB
2012); In re Giovanni Food Co., 97 USPQ2d 1990, 1992 (TTAB 2011).
In Coors Brewing, the Court of Appeals for the Federal Circuit explained why
more evidence than just showing restaurants sell beer is required to prove that those
goods and services are related:
It is not unusual for restaurants to be identified with
particular food or beverage items that are produced by the
same entity that provides the restaurant services or are
sold by the same entity under a private label. Thus, for
example, some restaurants sell their own private label ice
cream, while others sell their own private label coffee. But
that does not mean that any time a brand of ice cream or
coffee has a trademark that is similar to the registered
trademark of some restaurant, consumers are likely to
assume that the coffee or ice cream is associated with that
restaurant. The Jacobs case [Jacobs v. International
Multifoods Corp., 668 F.2d 1234, 212 USPQ 641 (CCPA
1982)] stands for the contrary proposition, and in light of
the very large number of restaurants in this country and
the great variety in the names associated with those
restaurants, the potential consequences of adopting such a
principle would be to limit dramatically the number of
Serial Nos. 86598212, 86598327 and 86606663
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marks that could be used by producers of foods and
beverages.
Coors Brewing, 68 USPQ2d at 1063. In other words, there is no per se rule that certain
goods and services are related. Lloyd’s Food Products, Inc. v. Eli’s, Inc., 987 F.2d 766,
25 USPQ2d 2027 (Fed. Cir. 1993) (no per se rule about confusion, where similar
marks are used in connection with restaurant services and food products).
The Federal Circuit recognizes that the diversity and expansion of businesses in
a modern economy is not, in and of itself, sufficient to support an inference that
purchasers are apt to believe that disparate products or services emanate from the
same source. See also In re American Olean Tile Co., 1 USPQ2d 1823, 1826 (TTAB
1986). Taking the Examining Attorney’s position to its logical extreme, not only would
a senior user of a mark for restaurant services have prior rights for that mark for
beer, but the senior user of a mark for restaurant services could have prior rights for
that mark for other food, beverages and condiments (e.g., wine or spirits, salsa or
mustard, and chips or desserts, etc.).
The Board has found the “something more” requirement to be met under the
following circumstances:
• Applicant’s mark made clear that its restaurant specialized in registrant’s type
of goods. See In re Golden Griddle Pancake House Ltd., 17 USPQ2d 1074 (TTAB 1990)
(GOLDEN GRIDDLE PANCAKE HOUSE for restaurant services confusingly similar
to GOLDEN GRIDDLE for table syrup); In re Azteca Restaurant Enterprises, Inc.,
50 USPQ2d 1209 (TTAB 1999) (AZTECA MEXICAN RESTAURANT for restaurant
services confusingly similar to AZTECA for Mexican food items);
Serial Nos. 86598212, 86598327 and 86606663
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• The record showed that registrant's wines were actually sold in applicant's
restaurant. See In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001) (“the record
in this case reveals that registrant's OPUS ONE wine is offered and served by
applicant at its OPUS ONE restaurant.”); and
• Registrant’s mark was found to be “a very unique, strong mark.” See In re Mucky
Duck Mustard Co. Inc., 6 USPQ2d 1467, 1469 (TTAB 1988) (“the Examining Attorney
has indicated that he has been unable to find, in the records of the Patent and
Trademark Office, any registration, other than the cited registration, for a mark
containing the expression ‘Mucky Duck,’” nor has applicant offered any evidence of
third-party use of marks containing the expression.).
We now turn to the likelihood of confusion analysis, keeping in mind whether the
record includes evidence sufficient to meet the “something more” requirement.
In the appeal before us, to show that the goods and services are related, the
Examining Attorney submitted copies of eleven live use-based, third-party
registrations that identify both beer and restaurant services. Seven out of the these
third party registrations, however, are not solely for restaurant and bar services (as
listed in the cited registration for the mark THE TIN ROOF) but also include
brewpub services and/or tasting room services. The Examining Attorney also
submitted excerpts from the third-party websites showing that restaurants may
serve beer. These websites, however, do not show the same mark serving as a source
indicator for both restaurant services and the beer served at the restaurant.
Moreover, most of these websites are for brewpubs and not for restaurants in general.
Serial Nos. 86598212, 86598327 and 86606663
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Based on the evidence of record, we find that the requirement to show “something
more” has not been met. In light of the large number of restaurants in the United
States, the facts that a single mark is sometimes used to identify restaurant services
and beer, that some restaurants are associated with breweries, and that restaurants
may sell beer are not sufficient to establish a relationship between restaurant
services in general and beer. See In re Giovanni Food Co., 97 USPQ2d at 1992
(JUMPIN’ JACKS for “barbeque sauce” is not likely to cause confusion with JUMPIN
JACK’S for “coffee-house services; and catering services” because the “something
more” requirement has not been met); compare In re Accelerate s.a.l., 101 USPQ2d at
2050-51 (COLUMIANO COFFEE HOUSE for “providing food and drink” is related to
COLUMBIAN for “coffee”).
This du Pont factor weighs against finding that there is a likelihood of confusion
between Applicant’s beer products and the restaurant, bar and tavern services
identified in the cited registration for the mark THE TIN ROOF.
D. Nature and Extent of Any Actual Confusion
Applicant points to the absence of evidence of actual confusion, the seventh du
Pont factor, as weighing in its favor.25 A showing of actual confusion would of course
be highly probative, if not conclusive, of a likelihood of confusion. The opposite is not
true, however. The lack of evidence of actual confusion carries little weight. J.C. Hall
Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965). The
issue before us is the likelihood of confusion, not actual confusion. Herbko Int’l Inc. v.

25 Applicant’s Appeal Brief, p. 6, 7 TTABVUE 10.
Serial Nos. 86598212, 86598327 and 86606663
- 28 -
Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002) (actual
confusion not required). Further, any suggestion that there has been no actual
confusion between the marks based on the coexistence of Applicant’s marks and the
cited registrations is entitled to little probative value in the context of an ex parte
appeal. In re Majestic Distilling Co., Inc., 65 USPQ2d at 1205; see also In re
Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984).
Therefore, this du Pont factor is neutral.

E. Balancing the Factors.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. Because we have
found that the marks at issue are similar and that Applicant’s beer products and
clothing items, namely, shirts and caps are related to “wine” identified in cited
Registration No. 3590048 and that they would move in the same or overlapping trade
channels and are offered to the same class of purchasers, we conclude that Applicant’s
marks, as used in connection with the goods identified in the Application Serial Nos.
86598212 and 86598327, so resemble the cited mark TIN ROOF as to be likely to
cause confusion or mistake, or to deceive under Section 2(d) of the Trademark Act.
Notwithstanding the foregoing, the evidentiary record (1) does not satisfy the
“something more” requirement as it pertains to the relatedness of beer and
restaurant and bar services, and (2) does sufficiently demonstrate that the wording
TIN ROOF is weak when used in association with restaurant and bar services. In
view thereof, we find that, although the marks at issue are similar and while
Serial Nos. 86598212, 86598327 and 86606663
- 29 -
Applicant’s clothing items and glassware goods may constitute collateral goods that
would be sold in the promotion of restaurant and bar services, Applicant’s marks
when used in connection with various types of beer, shirts and caps, and growlers and
other glassware do not create a likelihood of confusion with the cited mark THE TIN
ROOF for “Bar and restaurant services; Serving food and drinks; Tavern services.”
Decision:
Application Serial No. 86598212: The refusal to register Applicant’s involved mark
on the ground that the mark is confusingly similar with the cited registered mark
THE TIN ROOF for “Bar and restaurant services; Serving food and drinks; Tavern
services” is reversed. The refusal to register Applicant’s mark on the ground that the
mark is confusingly similar with the cited registered mark TIN ROOF for “wine” is
affirmed.
Application Serial No. 86598327: The refusal to register Applicant’s involved mark
on the ground that the mark is confusingly similar with the cited registered mark
THE TIN ROOF for “Bar and restaurant services; Serving food and drinks; Tavern
services” is reversed. The refusal to register Applicant’s mark on the ground that the
mark is confusingly similar with the cited registered mark TIN ROOF for “wine” is
affirmed.
Application Serial No. 86606663: The refusal to register Applicant’s involved mark
on the ground that the mark is confusingly similar with the cited registered mark
THE TIN ROOF for “Bar and restaurant services; Serving food and drinks; Tavern
Serial Nos. 86598212, 86598327 and 86606663
- 30 -
services” is reversed. Application Serial No. 86606663 will proceed to publication in
due course.