Big Cedar, L.L.C.

Trademark Trial and Appeal Board

Oct 2, 2014

No. 85629900 (T.T.A.B. Oct. 2, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: October 2, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Big Cedar, L.L.C.
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Serial No. 85629900
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Richard L. Kirkpatrick of Pillsbury Winthrop Shaw Pittman LLP,
for Big Cedar, L.L.C.
Patty Evanko, Trademark Examining Attorney, Law Office 119,
Brett J. Golden, Managing Attorney.
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Before Quinn, Bergsman and Adlin,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Big Cedar, L.L.C. (“Applicant”) seeks registration on the Principal Register of
the mark MISSOURI MULE SHINE … IT WILL KICK YOUR ASS! (in standard
characters) for
Whiskey (in International Class 33).1
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. §1052(d), on the

1 Application Serial No. 85629900 was filed on May 18, 2012, based upon applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
Serial No. 85629900
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ground that Applicant’s mark so resembles the mark MISSOURI MOONSHINE
registered on the Supplemental Register for “liquor,” in International Class 33, as to
be likely to cause confusion.2 Registrant disclaimed the exclusive right to use the
word “Moonshine.”
After the Examining Attorney made the refusal final, Applicant appealed to this
Board. We reverse the refusal to register.
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the goods. 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 and nature of the goods, established likely-to-
continue channels of trade and classes of consumers.

The goods in the cited registration, liquor, encompass Applicant’s goods,
whiskey.3 Therefore, the goods are legally identical.

2 Registration No. 4215596, issued September 5, 2012.
3 “Whiskey” is defined as “alcoholic liquor distilled from grain.” Yahoo! Education
(education.yahoo.com) attached to the February 26, 2013 Office action.
Serial No. 85629900
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Because the goods identified in the application and the cited registration are
legally identical, we must presume that the channels of trade and classes of
purchasers are the same. See In re Yawata Iron & Steel Co., 403 F.2d 752, 159
USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels
of trade and classes of purchasers are considered to be the same); American
Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101
USPQ2d 1022, 1028 (TTAB 2011). See also In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding
channels of trade and classes of consumers, the Board was entitled to rely on this
legal presumption in determining likelihood of confusion).
B. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression.

We now turn to 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. In re E. I. du Pont De Nemours & Co., 77
USPQ at 567. In a particular case, “finding of similarity as to any one factor (sight,
sound or meaning) alone ‘may be sufficient to support a holding that the marks are
confusingly similar.’” In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)
(citations omitted). See also In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB
1987). In comparing the marks, we are mindful that where, as here, the goods are
legally identical, the degree of similarity necessary to find likelihood of confusion
need not be as great as where there is a recognizable disparity between the goods.
Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713,
Serial No. 85629900
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1721 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind,
85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Products Inc. v.
Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).
Furthermore, “[t]he 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). See also San Fernando Electric Mfg. Co. v. JFD
Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons
Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem.,
972 F.2d 1353 (Fed. Cir. June 5, 1992). The proper focus is on the recollection of the
average customer, who retains a general rather than specific impression of the
marks. Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344
(TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Since the goods at issue are whiskey and liquor, the average customer is an
ordinary consumer who drinks alcohol.
“[A] mark registered on the Supplemental Register can be used as a basis for
refusing registration to another mark under § 2(d) of the Act.” In re The Clorox
Company, 578 F.2d 305, 198 USPQ 337, 340 (CCPA 1978). However, registration on
the Supplemental Register may be evidence that a mark is conceptually or
inherently weak. In this connection, the Board has stated the following:
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[R]egistration on the Supplemental Register may be
considered to establish prima facie that, at least at the
time of registration, the registered mark possessed a
merely descriptive significance. See: Ajax Hardware
Corporation v. Packaging Techniques, Inc., 182 USPQ 559
(DC Calif., 1974). This is significant because it is well
established that the scope of protection afforded a merely
descriptive or even a highly suggestive term is less than
that accorded an arbitrary or coined mark. That is, terms
falling within the former category have been generally
categorized as “weak” marks, and the scope of protection
extended to these marks has been limited to the
substantially identical notation and/or to the subsequent
use and registration thereof for substantially similar
goods. Thus, unlike in the case of an arbitrary or unique
designation, the addition of other matter to a highly
suggestive or descriptive designation, whether such
matter be equally suggestive or even descriptive, or
possibly nothing more than a variant of the term, may be
sufficient to distinguish between them so as to avoid
confusion in trade. See: Milwaukee Nut Company v.
Brewster Food Service, 125 USPQ 399 (CCPA, 1960); The
Murray Corporation of America v. Red Spot Paint and
Varnish Co., Inc., 126 USPQ 390 (CCPA, 1960); The
Fleetwood Company v. Hazel Bishop, Inc., 147 USPQ 344
(CA 7, 1965); Ferro Corporation v. Ronco Laboratories,
Inc., 148 USPQ 497 (CCPA, 1966); Ferro Corporation v.
Martin-Marietta Corporation, 164 USPQ 137 (CCPA,
1969); and Sure-Fit Products Company v. Saltzson
Drapery Company, 117 USPQ 295, 297 (CCPA, 1958). As
stated in the last cited case:
“It seems both logical and obvious to us that where
a party chooses a trademark which is inherently
weak, he will not enjoy the wide latitude of
protection afforded the owners of strong
trademarks. Where a party uses a weak mark, his
competitors may come closer to his mark than
would be the case with a strong mark without
violating his rights. The essence of all we have said
is that in the former case there is not the possibility
of confusion that exists in the latter case.”
In re Hunke & Jocheim, 185 USPQ at 189.
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Furthermore, we note that in a number of cases, the Board found that
consumers would be able to distinguish marks when one mark was a familiar term
(e.g., MOONSHINE) and the other mark was not a familiar term (e.g., MULE
SHINE); that is, “the familiar is readily distinguishable from the unfamiliar.”
Jacobs v. International Multifoods Corp., 668 F.2d 1234, 212 USPQ 641 (CCPA
1982) (BOSTON TEA PARTY for tea is not likely to cause confusion with BOSTON
SEA PARTY for restaurant services), quoting National Distillers and Chemical
Corp. v. William Grant & Sons, Inc., 505 F.2d 719, 721, 184 USPQ 34, 35 (CCPA
1974) ((DUET for prepared alcoholic cocktails is not likely to cause confusion with
DUVET for French brandy and liqueurs). See also In re General Electric Company,
304 F.2d 688, 134 USPQ 190 (CCPA 1962) (VULKENE for electrical wires and
cables not likely to cause confusion with VULCAN for electrical building wires);
Faberge, Inc. v. Dr. Babor GmbH & Co., 219 USPQ 848 (TTAB 1983) (BABOR and
BABE both for cosmetics are not likely to cause confusion). The logic behind the
decisions is clear. One recognizes instantly that which is familiar. Conversely, that
which is unfamiliar would be given closer scrutiny and in this way could be
distinguished from the familiar. Having so stated, we emphasize that a familiar
versus an unfamiliar mark is not enough in and of itself to dictate a common result
in every case.
We recognize that the dominant part of Applicant’s mark is the term MISSOURI
MULE SHINE and that it differs from the cited mark MISSOURI MOONSHINE by
the substitution of the word “Mule” for “Moon.” Also, we acknowledge that
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Applicant’s mark MISSOURI MULE SHINE may call to mind the mark in the cited
registration MISSOURI MOONSHINE, given that MULE SHINE would be
perceived as a play on MOONSHINE. However, the fact that one mark may bring to
mind another mark does not in and of itself establish source confusion.
The very fact of calling to mind may indicate that the
mind is distinguishing, rather than being confused by,
two marks. In [Lever Brothers Co. v. Producers Chemical
Service, 283 F.2d 879, 128 USPQ 7 (CCPA 1960)] we
unanimously found SHUX registrable over LUX for like
goods (off-the-shelf soap products) while fully conscious of
the fact that purchasers seeing or hearing SHUX would
almost certainly think of LUX—and at the same instant
realize the distinction.
In re P. Ferrero & C. S.PA., 479 F.2d 1395, 178 USPQ 167, 168 (CCPA 1973) (TIC
TAC for candy not likely to cause confusion with TIC TAC TOE for ice cream).
We find in this case that the marks MISSOURI MOONSHINE and MISSOURI
MULE SHINE … IT WILL KICK YOUR ASS! are sufficiently different to avoid a
likelihood of confusion, even for legally identical products. Given the descriptive
nature of the cited mark and the uncommon character of the term MULE SHINE in
Applicant’s mark, we find that the differences are sufficient to render Applicant’s
mark distinguishable from the mark in the cited registration and that consumers
will have no difficulty in distinguishing between the well-known, easily recognized
term MOONSHINE and applicant's unfamiliar MULE SHINE. See In re Hartz
Hotel Services Inc., 102 USPQ2d 1150, 1155 (TTAB 2012) (Board found that
consumers are able to distinguish between different GRAND HOTEL marks based
on small differences in the marks, in part, because of the highly suggestive nature
of GRAND HOTEL); In re Lar Mor International, Inc., 221 USPQ 180 (TTAB 1983)
Serial No. 85629900
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(TRES JOLIE and BIEN JOLIE for women’s clothing is not likely to cause
confusion); In re Texas Instruments Inc., 193 USPQ 678 (TTAB 1976) (COPPER
CLAD for composite metal wire material having an aluminum core clad with copper
for use in electrical conductors is not likely to cause confusion with COPPERCLAD
for copper coated carbon electrodes for use in electric arc cutting and gouging).
In any event, the differences are sufficient to warrant publishing applicant's
mark for opposition purposes in accordance with Section 12(a) of the statute.
Decision: The refusal to register Applicant’s mark is reversed.