Brookeville Brewing LLCv.IE Beer Farm

Trademark Trial and Appeal Board

Jul 21, 2021

92072691 (T.T.A.B. Jul. 21, 2021)

This Opinion is Not a
Precedent of the TTAB

Mailed: July 21, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Brookeville Brewing LLC

v.

IE Beer Farm
_____

Cancellation No. 92072691
_____

Kevin J. McNeely of Browdy and Neimark, PLLC,
Eugene M. Pak of Wendel Rosen LLP
for Brookeville Brewing LLC.

Stephen L. Anderson of Anderson & Associates
for IE Beer Farm.
_____

Before Wolfson, Goodman and Hudis,
Administrative Trademark Judges.

Opinion by Hudis, Administrative Trademark Judge:
IE Beer Farm (“Respondent”) is the owner of record of a registration on the
Principal Register for the standard character mark BEERFARM for “beer” in
International Class 32.1

1 Registration No. 5763990 (the “’990 Registration”) was issued on May 28, 2019 from an
underlying application filed on January 4, 2017. While the mark is shown as one word
(“BEERFARM”) in the USPTO’s TESS and TSDR databases, the registration certificate for
Cancellation No. 92072691
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I. The Parties’ Pleadings
A. Petition for Cancellation
In its Petition for Cancellation,2 Brookeville Brewing LLC (“Petitioner”) seeks
cancellation of Respondent’s BEERFARM registration on the following grounds:
 Count I: Respondent’s mark, as applied to the goods identified in the
Application, so resembles Petitioner’s prior common law BROOKEVILLE
BEERFARM mark, used in connection with beer, ale and porter, and taproom
services featuring craft beer and beer brewed on premises, as to be likely to
cause confusion, mistake, or to deceive – Trademark Act Section 2(d), 15 U.S.C.
§ 1052(d).
 Count II: Respondent committed fraud on the U.S. Patent and Trademark
Office (“USPTO”) by making the following materially false representations
when submitting its Statement of Use during the prosecution of its underlying
BEERFARM application:
o The mark is in use in commerce on or in connection with all of the
goods/services.
o The mark was first used in commerce at least as early as October 1,
2018, and is now in use in such commerce.
o [Respondent] is submitting one specimen for the class showing the mark
as used in commerce on or in connection with any item in the class,
consisting of a(n) digital image of product packaging currently used in
commerce.
– Trademark Act Section 14(3), 15 U.S.C. § 1064(3).
 Count III: Respondent’s underlying BEERFARM application, and therefore
its resulting registration, is void ab initio because the mark was not in use in
commerce at the time Respondent filed its Statement of Use – Trademark Act
Section 1(a), 15 U.S.C. § 1051(a).
 Count IV: Respondent’s underlying BEERFARM application, and therefore
its resulting registration, is void ab initio because the mark was not in lawful

the mark is shown as two words (“BEER FARM”). According to the file history of the
underlying application, the registration certificate should have been issued showing the mark
as one word (“BEERFARM”).
2 1 TTABVUE. References to the pleadings, the evidence of record and the parties’ briefs refer
to the Board’s TTABVUE docket system. Coming before the designation TTABVUE is the
docket entry number; and coming after this designation are the page and paragraph
references, if applicable.
Cancellation No. 92072691
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use in commerce at the time Respondent filed its Statement of Use –
Trademark Act Sections 1(a) and 45, 15 U.S.C. §§ 1051(a) and 1127.
Petitioner attached a number of exhibits to its Petition for Cancellation. We have
considered only those exhibits that were properly made of record during Petitioner’s
testimony period.3 Respondent’s California on-premises alcohol beverage sales
license (Petition Exh. D) was properly made of record (Petitioner’s Twelfth Notice of
Reliance). Petitioner’s Application Serial No. 87498502 (the “’502 Application”) to
register the BROOKEVILLE BEER FARM mark (Petition Exhs. G-H) was properly
made of record (Petitioner’s Sixth Notice of Reliance). It was unnecessary for
Petitioner to attach the USPTO’s records for Respondent’s ’990 Registration (and its
underlying Application Serial No. 87288408 (the “’408 Application”)) for Respondent’s
BEERFARM mark to its pleading (Petition Exhs. A-C and F), as the registration file
is automatically of record.4 We do not consider the results of Petitioner’s TTB Public
COLA Registry Certification/Exemption of Label/Bottle Approvals Search of Records
with the words “Farm” or “BeerFarm” on the label (Petition Exh. E), because it was
not properly made of record.

3 Trademark Rule 2.122(c), 37 C.F.R. § 2.122(c) (“Except as provided in … [Trademark Rule
2.122(d)(1), 37 C.F.R. § 2.122(d)(1), concerning, for example, a petitioner’s pleaded
registrations] an exhibit attached to a pleading is not evidence on behalf of the party to whose
pleading the exhibit is attached, and must be identified and introduced in evidence as an
exhibit during the period for the taking of testimony.”).
4 Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122((b)(1).
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B. Respondent’s Answer
Respondent denied the salient allegations of the Petition for Cancellation in its
Answer,5 except it admitted (among others) the following allegations:6
7. On information and belief, … [Respondent], IE BEER FARM, is a
California corporation with a current address listed as 3605 Market
Street, Unit 4, Riverside, California 92501. …
8. On January 4, 2017, … [Respondent] filed an intent-to-use US
trademark application serial number 87288408 for BEERFARM for beer
and silkscreen printing in international classes 32 and 40, respectively
(the ’408 Application).
…
15. On May 28, 2019, the ’408 Application matured into U.S. Trademark
Registration No. 5763990 (the Beerfarm Mark).
…
17. Petitioner filed US trademark application 87498502 for
BROOKEVILLE BEER FARM on June 20, 2017, for beer, ale and porter
and taproom services featuring craft beer, beer brewed on premises in
international classes 32 and 43, respectively (“’502 Application”). …
18. On October 17, 2019, Petitioner’s ’502 Application was refused
registration by the USPTO Examining Attorney based on asserted
likelihood of confusion with the Beerfarm Mark under Section 2(d) of the
Trademark Act.
…
20. The examiner of the ’502 Application issued a rejection based on
likelihood of confusion between Petitioner’s ’502 Application for
Brookeville Beer Farm and … [Respondent’s] Registration for
BEERFARM. …
Respondent’s Answer asserts the following defenses:
1) The Petition for Cancellation fails to state a claim upon which relief can be
granted.

5 Answer, 4 TTABVUE.
6 Petition for Cancellation, 1 TTABVUE 4-7, ¶¶ 7-9, 12, 15, 17, 18, 20; Answer, 4 TTABVUE
3-7, ¶¶ 7-9, 12, 15, 17, 18, 20.
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2) Petitioner cannot be injured by the registration of the BEER FARM mark
because Respondent is the owner of a valid registration for this mark.
3) Petitioner has unclean hands, by using Petitioner’s mark to confuse, deceive
and divert Respondent’s consumers.
4) Petitioner’s likelihood of confusion claims alleged in the Petition for
Cancellation are insufficient and legally invalid.
5) On information and belief, Petitioner engaged in fraud by making false
statements to the USPTO in connection with Application Serial No. 87498502
for the mark BROOKEVILLE BEER.
“Failure to state a claim is not a true affirmative defense because it relates to an
assertion of the insufficiency of the pleading of … [Petitioner’s] claim rather than a
statement of a defense to a properly pleaded claim.” John W. Carson Found. v.
Toilets.com, Inc., 94 USPQ2d 1942, 1949 (TTAB 2010). Since Respondent did not
pursue its first “defense” of failure to state a claim by way of a motion or in its trial
brief, we do not consider it further. Harry Winston, Inc. v. Bruce Winston Gem Corp.,
111 U.S.P.Q.2d 1419, 1422 (TTAB 2014).
In its second and fourth defenses, Respondent challenges Petitioner’s likelihood of
confusion claim because “Petitioner cannot be injured by … registration,” and because
the claim is “insufficient and legally invalid.” These are not affirmative defenses or
counterclaims, but instead are amplifications of the denials in Respondent’s Answer.
For this reason, they are allowed to stand, see Order of Sons of Italy in Am. v. Profumi
Fratelli Nostra AG, 36 USPQ2d 1221, 1223 (TTAB 1995) (amplification of
applicant’s denial of opposer’s claims not stricken), but we do not treat them as
standalone defenses as such.
However, Respondent did not pursue its second, third or fifth defenses in its Trial
Brief. Accordingly, we deem them all forfeited or waived. Peterson v. Awshucks SC,
Cancellation No. 92072691
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LLC, 2020 USPQ2d 11526, at *1 n.3 (TTAB 2020) (various affirmative defenses
deemed waived because no evidence or argument presented at trial); Moke Am. LLC
v. Moke USA, LLC, 2020 USPQ2d 10400, at *1 n.5 (TTAB 2020) (affirmative defenses
deemed waived because applicant did not discuss them in its trial brief). See also, In
re Google Tech. Holdings LLC, 980 F.3d 858, 2020 USPQ2d 11465, *3 (Fed. Cir. 2020)
(“Whereas forfeiture is the failure to make the timely assertion of a right, waiver is
the intentional relinquishment or abandonment of a known right.”).
II. The Evidentiary Record
The record consists of the pleadings and, by operation of Trademark Rule
2.122(b)(1), 37 C.F.R. § 2.122(b)(1), as previously mentioned, the file of Respondent’s
involved BEERFARM registration. In addition, Petitioner introduced the following
evidence:
 Petitioner’s First Notice of Reliance (“Pet NOR1”) on Petitioner’s taproom
customer sales receipts from August 2016 (5 TTABVUE).
 Petitioner’s Second Notice of Reliance (“Pet NOR2”) on Petitioner’s wholesale
sales receipts from March - December 2016 (6 TTABVUE).
 Petitioner’s Third Notice of Reliance (“Pet NOR3”) on Petitioner’s Class 8
(State of Maryland) farm-based brewery licenses obtained from December 2015
- May 2019 (7 TTABVUE).
 Petitioner’s Fourth Notice of Reliance (“Pet NOR4”) on images of Petitioner’s
growlers (beer jugs) and kegs (8 TTABVUE).
 Petitioner’s Fifth Notice of Reliance (“Pet NOR5”) on Petitioner’s Certificate of
Label Approvals (“COLAs”) from applications submitted to the U.S.
Department of the Treasury Alcohol and Tobacco Tax and Trade Bureau
(“TTB”) for approval of labels used on canned and bottled beer (2019) (9
TTABVUE).
 Petitioner’s Sixth Notice of Reliance (“Pet NOR6”) on the file histories from:
o Petitioner’s ’744 Application to register the mark BROOKEVILLE BEER
FARM for goods in Class 32.
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o Petitioner’s ’502 Application to register the mark BROOKEVILLE BEER
FARM) for services in Class 43.
o Petitioner’s Registration No. 6128656 (the “’656 Registration”) for the mark
THE BROOKEVILLE BEER FARM and Design.
o Petitioner’s Application Serial No. 87498488 (the “’488 Application) to
register the mark BEER FARM for goods in Class 32.
(10 TTABVUE). As noted below, we do not consider either the ’656 Registration
or the ’488 Application as the basis for Petitioner’s Trademark Act Section 2(d)
claim, as neither property was mentioned in the Petition for Cancellation. That
is, we do not admit them as registrations upon which Petitioner may rely to
support its claims. However, we consider these trademark properties as official
records for whatever probative value they may have.
 Petitioner’s Seventh Notice of Reliance (“Pet NOR7”) on Internet advertising
material regarding events held at Petitioner’s location (2016) (11 TTABVUE).
 Petitioner’s Eighth Notice of Reliance (“Pet NOR8”) on social media entries
posted on Petitioner’s Facebook page (2014-2017) (12 TTABVUE).
 Petitioner’s Ninth Notice of Reliance (“Pet NOR9”) on construction photos
posted on Petitioner’s Facebook page (2014-2017) (13 TTABVUE).
 Petitioner’s Tenth Notice of Reliance (“Pet NOR10”) on:
o Respondent’s Responses to Requests for Admissions 16–18 and 20–21.
o Respondent’s documents provided in response to Petitioner’s Requests for
Production:
 Respondent’s California Department of Alcoholic Beverage Control
(“California ABC”) License (Jul 2018 - Jun 2019).
 Respondent’s California ABC License (Jul 2018 - Jun 2020).
 Social Media entries on BEERFARM Facebook page (2017-2018).
(14 TTABVUE).
 Petitioner’s Eleventh Notice of Reliance (“Pet NOR11”) on third party Twitter
posts (August 2018), a third-party website (October 13, 2020) a third-party
news article (July 14, 2017) and a third-party blog (August 25, 2018) regarding
the opening of Respondent’s establishment in Riverside, California (15
TTABVUE).
 Petitioner’s Twelfth Notice of Reliance (“Pet NOR12”) on public records from
the California ABC relating to Respondent (16 TTABVUE).
 Petitioner’s Thirteenth Notice of Reliance (“Pet NOR13”) on Petitioner’s
website (2015-16) and postings on its Twitter social media account (2016) (17
TTABVUE).
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 Petitioner’s Trial Declaration of John Philip Muth (“Muth Decl.”), with exhibits
(18 TTABVUE – without a Certificate of Service; 19 TTABVUE – with
Certificate of Service). Our citations below to Mr. Muth’s Declaration are from
the version filed at 18 TTABVUE.7
Respondent did not make any evidence of record on its behalf during its testimony
period.
III. Evidentiary Matters
Before proceeding to the merits of the Petition for Cancellation, we address certain
evidentiary issues, including the parties’ evidentiary objections.
A. Petitioner’s Trademark Properties
Petitioner pleads ownership of its ’502 Application to register the BROOKEVILLE
BEER FARM mark for Class 43 services (“taproom services featuring craft beer, beer
brewed on premises”), and alleges that the application was refused registration on
grounds of likelihood of confusion with Respondent’s registered BEERFARM mark.8
Petitioner also seeks to rely on its unpleaded ’744 Application to register the
BROOKEVILLE BEER FARM mark for Class 32 goods (beer, ale, and porter). This
application resulted from a request to divide the ’502 Application.9 This application

7 The vast majority of exhibits filed with Mr. Muth’s Trial Declaration duplicate the
documents submitted with Petitioner’s Notices of Reliance. We discourage the wasteful
exercise of filing duplicate trial exhibits. Such a practice needlessly enlarges the proceeding
file, causes the Board unnecessary extra work, and delays the issuance of the Board’s opinion.
ITC Ent. Gp. Ltd. v. Nintendo of Am. Inc., 45 USPQ2d 2021, 2022-23 (TTAB 1998) (filing
duplicative submissions is a waste of time and resources, and is a burden on the Board). Once
filed, admissible material is made part of the record and may be referred to by either party.
Trademark Rule 2.122(a), 37 C.F.R. § 2.122(a).
8 Petition for Cancellation, 1 TTABVUE 4-5, ¶¶ 17-18, 20. As noted above, Respondent
admitted these allegations. Answer, 4 TTABVUE 5-7, ¶¶ 17-18, 20.
9 See Petitioner’s Brief, 20 TTABVUE 18, and Petitioner’s Sixth Notice of Reliance, 10
TTABVUE 5-218, File Histories for Petitioner’s ’502 and ’744 Applications.
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also was refused registration on grounds of likelihood of confusion with Respondent’s
registered BEERFARM mark. While Petitioner did not plead ownership of the ’744
Application in its Petition for Cancellation, we consider it for the purpose of Petitioner
establishing its entitlement to bring a statutory cause of action. This is because
Respondent was on full notice of the mark as applied to all the goods and services on
which Petitioner would rely – in that Petitioner pleaded ownership of the ’502
Application before it was divided into two applications. We therefore see no prejudice
to Respondent.
Petitioner also seeks to rely on its unpleaded ’488 Application to register the
BEER FARM mark for “beer, ale and porter” in Class 32, and its unpleaded ’656
Registration for the mark THE BROOKEVILLE BEER FARM & Design for “beer
jugs; growlers” Class 21; “beer, ale and lager” in Class 32; “entertainment services,
namely, beer and wine tastings; and entertainment services in the nature of live
musical performances” in Class 41; and “restaurant and bar services; taproom
services” in Class 43. The file histories of both the ’488 Application and the ’656
Registration were submitted under Notice of Reliance.10
At no time did Petitioner seek to amend its Petition for Cancellation. We therefore
do not consider these trademark properties as support for Petitioner’s claims (for
example, as support for Petitioner’s entitlement to a statutory cause of action).
See Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1424 n.14

10 See Petitioner’s Brief, 20 TTABVUE 18-19, and Pet. NOR6, 10 TTABVUE 219-348, File
Histories for Petitioner’s ’488 Application and ’656 Registration.
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(TTAB 2014) (opposer may not rely on applications or resulting registrations that
were unpleaded in the notice of opposition; no suggestion was made that the
pleadings should be amended pursuant to Fed. R. Civ. P. 15(b) to plead them). On the
other hand, we will consider the ’656 Registration and the ’488 Application as official
records under Trademark Rule 2.122(e), 37 C.F.R. § 2.122(e), for whatever probative
value they may have. Ricardo Media Inc. v. Inventive Software, LLC, 2019 USPQ2d
311355, *1 n.5 (TTAB 2019) (“[A]n unpleaded registration may be considered, like
third-party registrations, for whatever probative value it may have under the
[likelihood of confusion] … factors[.]”); Weider Pubs. LLC v. D&D Beauty Care
Co., 109 USPQ2d 1347, 1360 (TTAB 2014) (applications are of limited probative
value; they are only evidence that they were filed).
B. Petitioner’s Evidentiary Objection
Respondent imbedded within, and attached to the end of, its Trial Brief a number
of images of beer cans, cups, glasses and a menu bearing the BEERFARM mark that
Respondent did not make of record during its testimony period.11 Petitioner objects
that these images were not made part of the record and should be disregarded.12
Petitioner’s objection is sustained. Hole In 1 Drinks, Inc. v. Lajtay, 2020 USPQ2d
10020, at *2 (TTAB 2020) (exhibits attached to brief not considered); Syngenta Crop
Protection, Inc. v. Bio-Chek, LLC, 90 USPQ2d 1112, 1116 (TTAB 2009) (“Evidence
submitted outside of the trial periods — including that attached to briefs — is

11 Respondent’s Brief, 22 TTABVUE 8, 17-24.
12 Petitioner’s Reply Brief, 23 TTABVUE 4, 6.
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untimely, and will not be considered.”) (quoting Life Zone Inc. v. Middleman Group
Inc., 87 USPQ2d 1953, 1955 (TTAB 2008)).
C. Respondent’s Evidentiary Objections
Respondent objects to Petitioner’s introduction of, and reliance on, its ’656
Registration for the mark THE BROOKEVILLE BEER FARM and Design as being
“of no evidentiary value ….”13 As noted above, we do not consider Petitioner’s ’656
Registration as support for Petitioner’s claims, but will consider the ’656 Registration
as an official record for whatever probative value it may have.
Respondent further objects to Petitioner’s introduction of, and reliance on, Mr.
Muth’s Trial Declaration as being “in the plainly inadmissible form of a vague, self-
serving, hearsay statement” … “that on its face lacks any factual or legal foundation
and which … is plainly misleading.”14 Since we are capable of discerning admissible
and relevant trial testimony from non-admissible trial testimony, we overrule
Respondent’s objections to Mr. Muth’s Trial Declaration. Rather, we shall give the
Declaration the appropriate probative weight it deserves to the extent we find it
credible to rely on in reaching our decision. See Spiritline Cruises LLC v. Tour Mgmt.
Servs., Inc., 2020 USPQ2d 48324, at *4 (TTAB 2020) (the Board generally does not
strike testimony taken in accordance with the applicable rules on the basis of
substantive objections but considers its probative value at final hearing); M/S R.M.
Dhariwal (HUF) 100% EOU v. Zarda King Ltd., 2019 USPQ2d 149090, at *3 (TTAB

13 Respondent’s Brief, 22 TTABVUE 3-4.
14 Id. at 4.
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2019) (whether testimony is supported by other evidence can be considered in
determining its weight, but any lack of support does not render it inadmissible; Board
is capable of weighing the strength or weakness of objected-to testimony, including
any inherent limitations).
IV. The Parties
Petitioner is a Maryland limited liability company15 whose operations include a
beer brewery, a taproom, a restaurant and farming operations that produce hops,
honey and other ingredients that are used by Petitioner in the brewing of its various
beers.16 Petitioner obtained federal and Maryland state licenses to brew and sell beer
in December 2015.17 Petitioner’s business has been in operation under the
BROOKEVILLE BEER FARM mark – including its brewery, wholesale beer sales
and taproom – since mid-2016.18
Respondent is a California corporation19 that operates as an eating establishment
at the Riverside Food Lab communal food hall in Riverside, California – serving craft

15 Muth Decl., 18 TTABVUE 2, ¶ 1.
16 Id. at 3, ¶¶ 3, 5.
17 Id. at 4, 45-58, ¶¶ 8-9, Exhs. 3-4.
18 Id. at 3-5, 8, ¶¶ 7, 10, 11, 20.
19 Petition for Cancellation, 1 TTABVUE 7, ¶ 7; Answer, 4 TTABVUE 3, ¶ 7.
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beers produced by third-party craft breweries.20 Respondent is not itself a beer
brewer.21
V. Entitlement to a Statutory Cause of Action
Entitlement to a statutory cause of action is a threshold issue that must be proven
by the plaintiff in every inter partes case. Empresa Cubana Del Tabaco v. Gen. Cigar
Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014). To establish entitlement
to a statutory cause of action under Trademark Act Section 14, 15 U.S.C., § 1064, a
plaintiff must demonstrate “an interest falling within the zone of interests protected
by the statute and … proximate causation.” Corcamore, LLC v. SFM, LLC, 978 F.3d
1298, 2020 USPQ2d 11277, at *4 (Fed. Cir. 2020), cert. denied, ___ U.S. ___ (2021),
(citing Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118, 109
USPQ2d 2061, 2067-70 (2014)).22 Stated another way, a plaintiff is entitled to bring
a statutory cause of action by demonstrating a real interest in the proceeding and a
reasonable belief of damage. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM,
LLC, 965 F.3d 1370, 2020 USPQ2d 10837, at *3 (Fed. Cir. 2020); see also Empresa
Cubana, 111 USPQ2d at 1062.

20 Respondent’s website, Muth Decl., 18 TTABVUE 217-221, Exh. 10; Food Lab website, Pet
NOR11, 15 TTABVUE 8-25; Blog post about the Food Lab food hall, and Respondent’s
business therein, on Beer Zombies website, Pet NOR11, 15 TTABVUE 31-37.
21 Article about the Food Lab food hall, and Respondent’s business therein, on Press
Enterprise website, Pet NOR11, 15 TTABVUE 26-30; Respondent’s Brief, 22 TTABVUE 6,
13-14.
22 Our decisions have previously analyzed the requirements of Trademark Act Sections 13
and 14, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” We now refer to this inquiry as
entitlement to a statutory cause of action. Despite the change in nomenclature, our prior
decisions and those of the Federal Circuit interpreting Trademark Act Sections 13 and 14
remain applicable.
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According to the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”),
there is “no meaningful, substantive difference between the analytical frameworks
expressed in Lexmark and Empresa Cubana.” Corcamore, 2020 USPQ2d 11277 at *4.
Thus, “a party that demonstrates a real interest in cancelling a trademark
under [Trademark Act Section 14, 15 U.S.C.] § 1064 has demonstrated an interest
falling within the zone of interests protected by [the Trademark Act] .… Similarly, a
party that demonstrates a reasonable belief of damage by the registration of a
trademark demonstrates proximate causation within the context of § 1064.”
Corcamore, 2020 USPQ2d 11277 at *7.
“A petitioner may demonstrate a real interest and reasonable belief of damage
where the petitioner has filed a trademark application that is refused registration
based on a likelihood of confusion with the mark subject to cancellation.” Australian
Therapeutic, 2020 USPQ2d 10837, at *4. Consistent with the allegations made in its
Petition for Cancellation, which Respondent admitted,23 Petitioner made of record
the application file histories for its ’502 and ’744 Applications to register the
BROOKEVILLE BEER FARM mark for “taproom services featuring craft beer, beer
brewed on premises” and “beer, ale and porter,” respectively, showing that the
applications were refused registration on the ground of likelihood of confusion with
Respondent’s registered BEERFARM mark.24 Petitioner therefore has adequately

23 Petition for Cancellation, 1 TTABVUE 6-7, ¶¶ 17-18, 20; Answer, 4 TTABVUE 5-7,
¶¶ 17-18, 20.
24 ‘502 and ‘744 Application file histories, Pet NOR6, 5-218.
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demonstrated its entitlement to bring and maintain its Trademark Act Section 2(d)
claim.
VI. Priority
“A party claiming prior use of a [mark similar to a] registered mark may petition
to cancel the registration on the basis of such prior use pursuant to [S]ection 14 of the
Lanham Act. 15 U.S.C. Section 1064.” West Florida Seafood, Inc. v. Jet Rests., Inc.,
31 F.3d 1122, 31 USPQ2d 1660, 1662 (Fed. Cir. 1994). However, “a presumption of
validity” attaches to Respondent’s involved registration, and Petitioner, the alleged
prior user, bears the burden of proving its claim of priority by a preponderance of the
evidence. Id.; Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d
1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989); Kohler Co. v. Baldwin Hardware Corp.,
82 USPQ2d 1100, 1105-06 (TTAB 2007).
“To establish priority, the petitioner must show proprietary rights in the mark
that produce a likelihood of confusion…. These proprietary rights may arise from a
prior registration, prior trademark or service mark use, prior use as a trade name,
prior use analogous to trademark or service mark use, or any other use sufficient to
establish proprietary rights.” Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156,
64 USPQ2d 1375, 1378 (Fed. Cir. 2002) [internal citation omitted]; Otto Roth & Co.
v. Universal Foods Corp., 640 F.2d 1317, 1320, 209 USPQ 40, 43 (CCPA 1981).
Because Respondent did not make of record any evidence establishing prior use of
its mark, the earliest date on which Respondent may rely for priority purposes is the
January 4, 2017 filing date of the underlying application that matured into its ’990
Registration. See, e.g. Brewski Beer Co. v. Brewski Bros. Inc., 47 USPQ2d 1281,
Cancellation No. 92072691
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1283-84 (TTAB 1998); Am. Standard Inc. v. AQM Corp., 208 USPQ 840, 842 (TTAB
1980).
Petitioner had constructed a working brewery producing sales of beer by the
spring of 2016.25 Petitioner started selling its beers to numerous wholesalers and
retailers throughout the State of Maryland as early as March 24, 2016.26 Petitioner’s
taproom located on its premises officially opened on July 28, 2016, at which time
Petitioner began making, and continues to make, direct beer sales to consumers. All
of Petitioner’s beer is brewed by Petitioner at its brewery. Petitioner serves its beer
at its taproom in branded glasses for consumption on the premises, or in branded
growler beer jugs that consumers can take for consumption off the premises.27
Petitioner therefore has made of record documented testimony establishing its
priority in the use of its BROOKEVILLE BEER FARM for beer sales prior to the
January 4, 2017 filing date of Respondent’s underlying BEERFARM trademark
application.

25 Muth Decl., 18 TTABVUE 3-4, ¶ 7.
26 Id. at 4, 59-139, ¶ 10, Exh. 5 (photos of beer kegs bearing BRROOKEVILLE BEER FARM
mark; invoices dated March-December 2016 also bearing mark); See also Pet. NOR2, 6
TTABVUE 4-79; Pet. NOR4, 8 TTABVUE 9-12 (same).
27 Muth Decl., 18 TTABVUE 5-6, 140-193, 205-216, ¶¶ 11-12, 14, Exh. 6 (retail sales invoices
dated throughout August 2016 bearing BROOKEVILLE BEER FARM mark), Exh. 7
(Wayback Machine pages from Petitioner’s website 2015-16, Exh. 9 (tweets posted on
Petitioner’s Twitter account announcing beer sales as of August 2016); See also Pet. NOR1,
5 TTABVUE 2-36 (invoices); Pet NOR4, 8 TTABVUE 4-8 (photos of growler beer jugs bearing
BROOKEVILLE BEER FARM mark); Pet NOR7, 11 TTABVUE 4-14 (photos of Petitioner’s
premises and signage/notices bearing BROOKEVILLE BEER FARM mark for events held at
Petitioner’s premises and mentioning beer sales, April-October 2016); Pet NOR8, 12
TTABVUE 4-104 (messages posted on Petitioner’s Facebook page by Petitioner, fans and
customers, noting the opening and continued operation of Petitioner’s premises for beer sales
July-December 2016).
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VII. Likelihood of Confusion
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), prohibits the registration of a
mark that
[c]onsists of or comprises a mark which so resembles a mark registered
in the Patent and Trademark Office, or a mark or trade name previously
used in the United States by another and not abandoned, as to be likely,
when used on or in connection with the goods of the applicant, to cause
confusion, or to cause mistake, or to deceive.
Our analysis is based on all of the probative evidence of record. In re E.I. DuPont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (noting the
elements, or factors, to be considered). In making our determination, we consider each
DuPont factor for which there is evidence and argument. See In re Guild Mortg. Co.,
912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). Varying weights may be
assigned to each DuPont factor depending on the evidence presented. See Citigroup
Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir.
2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993)
(“[T]he various evidentiary factors may play more or less weighty roles in any
particular determination”).
In applying the DuPont factors, we bear in mind the fundamental purposes
underlying Trademark Act Section 2(d), which are to prevent confusion as to source
and to protect trademark owners from damage caused by registration of confusingly
similar marks. Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 224 USPQ
327, 331 (1985); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161,
1163 (1995); DuPont, 177 USPQ at 566.
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In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods or services. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 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.”). These factors, and the other DuPont factors for which there is evidence and
argument, are discussed below.
For purposes of supporting Petitioner’s Trademark Act Section 2(d) claim, we
primarily consider Petitioner’s rights in its common law BROOKEVILLE BEER
FARM mark. We consider Petitioner’s rights in its BROOKEVILLE BEER FARM
and Design mark of the ’656 Registration simply as additional evidence regarding the
scope of Petitioner’s trademark rights. Although we considered Petitioner’s ’502 and
’744 Applications to register the BROOKEVILLE BEER FARM mark for purposes of
Petitioner’s entitlement to bring a statutory cause of action, we do not consider these
applications for purposes of evaluating likelihood of confusion. We also do not
consider Petitioner’s ’488 Application to register the BEER FARM mark for this
purpose.
A. Similarity or Dissimilarity of Goods,
Channels of Trade and Purchasers
The second, third and fourth DuPont factors are “[t]he similarity or dissimilarity
and nature of the goods … described in … [a] registration … [and] in connection with
which a prior mark is in use”; “[t]he similarity or dissimilarity of established,
likely-to-continue trade channels”; and “[t]he … buyers to whom sales are made ….”
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DuPont, 177 USPQ 567. As noted, Respondent’s goods are “beer” and Petitioner’s
goods include “beer.” Thus, the parties’ goods are identical in part. There are no
limitations upon Respondent’s goods recited in its registration. Where, as here, the
respective goods are identical, without restrictions as to nature, type, channels of
trade, or classes of purchasers, the identified goods are presumed to travel in the
same channels of trade to the same class of purchasers. In re Viterra, Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). Thus, these DuPont factors favor a
finding of likelihood of confusion.
B. The Similarity or Dissimilarity of the Marks
We now consider the similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression, See Palm Bay Imps.,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 369 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005), the first DuPont factor. 177 USPQ at 567. “Similarity in
any one of these elements may be sufficient to find the marks confusingly similar.” In
re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018), aff’d mem., 777 Fed.
Appx. 516 (Fed. Cir. 2019) (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB
2014)).
“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.” In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744,
1748 (Fed. Cir. 2017) (quoting Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d
1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (internal quotation marks omitted)).
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The focus is on the recollection of the average purchaser – here, a beer purchaser –
who normally retains a general rather than a specific impression of trademarks. In
re Assoc. of the U.S. Army, 85 USPQ2d 1264, 1268 (TTAB 2007).
In comparing the parties’ marks, we note that Petitioner uses its BROOKEVILLE
BEER FARM mark with, among other goods, beer, which is identical to the goods
recited in Respondent’s BEERFARM registration. Thus, the degree of similarity
between the marks required to support a finding of likelihood of confusion is less than
it would be if the goods were not identical. Bridgestone Ams. Tire Operations LLC v.
Federal Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); see also
Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992) (“When marks would appear on virtually identical goods
or services, the degree of similarity necessary to support a conclusion of likely
confusion declines.”).
We compare “the similarity or dissimilarity of the marks in their entireties ….”
Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1003
(Fed. Cir. 2002) (cleaned up) (citing DuPont, 177 USPQ at 567). “For rational
reasons, the comparison may give more or less weight to a particular feature of the
marks.” Id. (citing In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed.Cir.1985). Comparing the parties’ marks in this case, we give less weight to the
term BROOKEVILLE in Petitioner’s mark because of its geographical reference to
the location of Petitioner’s business; it is thus weak, Brooklyn Brewery Corp. v.
Brooklyn Brew Shop, LLC, 2020 USPQ2d 10914, at *17 (TTAB 2020) (Noting that
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“Brooklyn” is a well-known geographic place, and that the plaintiff is located in
Brooklyn, the Board found the plaintiff’s BROOKLYN BREWERY mark to be
primarily geographically descriptive and thus inherently weak), and therefore
insufficient to distinguish the parties’ marks. In re Aquitaine Wine USA, LLC, 126
USPQ2d 1181, 1185 (T.T.A.B. 2018) (“[T]he wording ‘Cité de Carcassonne’ [in the
applicant’s mark] is a geographically descriptive term …. Therefore, it is entitled to
less weight in the likelihood of confusion determination.”). In fact, Respondent’s mark
is subsumed by Petitioner’s mark, which increases the similarity between them. See,
e.g., China Healthways Inst. Inc. v. Xiaoming Wang, 491 F.3d 1337, 83 USPQ2d 1123,
1125 (Fed. Cir. 2007) (the mark CHI PLUS is similar to the mark CHI, both for
electric massagers).
Generally, the mere addition of a term to another’s mark does not obviate the
similarity between the compared marks, nor does it overcome a likelihood of
confusion under Section 2(d), where, as here, the marks otherwise are identical. See
Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105,
106 (CCPA 1975) (finding BENGAL and BENGAL LANCER and Design confusingly
similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding
TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9
USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS
confusingly similar). Moreover, to the extent that BROOKVILLE operates as a house
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mark, the presence of a house mark in one of two otherwise confusingly similar marks
will not serve to avoid a likelihood of confusion.28
In the present case, we find the parties’ marks are virtually identical except for
the additional geographically descriptive wording “BROOKEVILLE” in Petitioner’s
mark. “BEER FARM” in Petitioner’s mark is identical to Respondent’s BEERFARM
mark except for the space between the two words, which is inconsequential. See, e.g.,
Seaguard Cor. v. Seaward Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984) (“‘SEAGUARD’
and ‘SEA GUARD’ are, in contemplation of law, identical”).
The similarity between the BROOKEVILLE BEER FARM and BEERFARM
marks supports a finding that confusion is likely.
VIII. Summary
Having considered the evidentiary record, the parties’ arguments and applicable
authorities, as explained above, we grant the Petition for Cancellation on the ground
that Petitioner has priority and that Respondent’s BEERFARM mark is likely to be
confused with Petitioner’s BROOKEVILLE BEER FARM mark for in-part identical
goods. We need not reach Petitioner’s fraud, non-use in commerce, or unlawful use in

28 See, e.g., In re Apparel Ventures, Inc., 229 USPQ 225, 227 (TTAB 1986) (SPARKS for shoes,
boots and slippers confusingly similar to SPARKS BY SASSAFRAS for women’s clothing
items); In re Riddle, 225 USPQ 630, 632 (TTAB 1985) (RICHARD PETTY’S ACCUTUNE and
Design for automotive service centers confusingly similar to ACCU-TUNE for automotive
testing equipment); Key West Fragrance & Cosmetic Factory, Inc. v. Mennen Co., 216 USPQ
168, 170 (TTAB 1982) (finding likelihood of confusion between SKIN SAVERS for face and
throat lotion and MENNEN SKIN SAVER for cosmetic and toilet preparations, namely, hand
and body lotion); In re Champion Int’l Corp., 196 USPQ 48, 49 (TTAB 1977) (HAMMERMILL
MICR CHECK-MATE for paper for writing, printing, duplicating and office use confusingly
similar to CHECK MATE for envelopes); and In re C. F. Hathaway Co., 190 USPQ 343,
345 (TTAB 1976) (HATHAWAY GOLF CLASSIC for men’s knitted sport shirts confusingly
similar to GOLF CLASSIC for men’s hats).
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commerce claims. See Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1478 (TTAB
2017) (the Board has “discretion to decide only those claims necessary to enter
judgment and dispose of the case”) (quoting Multisorb Tech., Inc. v. Pactive Corp., 109
USPQ2d 1170, 1171 (TTAB 2013)).
Decision:
The Petition to cancel Respondent’s BEERFARM registration, Registration No.
5763990, on the ground of Petitioner’s priority and likelihood of confusion under
Trademark Act Section 2(d), is granted.