Inis Tine Uisce Teoranta

Trademark Trial and Appeal Board

Feb 14, 2020

79228188 (T.T.A.B. Feb. 14, 2020)

This Opinion Is Not a
Precedent of the TTAB

Mailed: February 14, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Inis Tine Uisce Teoranta
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Serial No. 79228188
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Ursula B. Day of the Law Firm of Ursula B. Day, for Inis Tine Uisce Teoranta.

Ryan Cianci, Trademark Examining Attorney, Law Office 116, Christine Cooper,
Managing Attorney.
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Before Thurmon, Deputy Chief Administrative Trademark Judge, Wolfson and
Coggins, Administrative Trademark Judges.

Opinion by Thurmon, Deputy Chief Administrative Trademark Judge:
Applicant, Inis Tine Uisce Teoranta, seeks registration of the mark GRACE
O’MALLEY (standard characters) for “Alcoholic beverages, other than liqueurs,
cream liqueurs and beers, namely all types of whiskey, gin, vodka, rum,” in
International Class 33.1 The Examining Attorney refused registration under

1 Application Serial No. 79228188, based on Applicant’s January 16, 2018, request for
extension of protection under Section 66(a) of the Trademark Act, 15 U.S.C. § 1141f.
Citations to the prosecution file refer to the USPTO’s Trademark Status & Document
Retrieval (“TSDR”) system and identify documents by title and date. Specific citations are to
the page number in the downloadable .pdf version of the TSDR records. References to the
briefs and other materials in the appeal record refer to the Board’s TTABVUE docket system.
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Trademark Act Section 2(d), 15 U.S.C. § 1052(d), (likelihood of confusion) based on
the registered mark O’MALLEYS (standard characters) for “Cream liqueurs,” in
International Class 33.2 The sole issue before the Board in this appeal is whether
there is a likelihood of confusion between the Class 33 goods in the Application and
those in the cited Registration. The appeal has been fully briefed. We affirm the
refusal to register.
I. The Record and the Prosecution History
The Examining Attorney submitted evidence with the first Office Action showing
that O’Malley is an Irish surname.3 Applicant does not dispute this fact, and argues
its mark refers to an historical figure, though no evidence was properly submitted to
support that specific argument.4 When the Examining Attorney made the Section
2(d) refusal final, he submitted additional evidence relating to use and handling of

2 Registration Number 3522904, registered on the Supplemental Register on October 21,
2008, based on an application filed April 28, 2008. The Registration was renewed on
September 4, 2018.
3 Office Action dated April 27, 2018 at 16-21.
4 Applicant first made this argument in response to the first Office Action. Response to Office
Action dated November 5, 2018 at 6 (“an historic figure being the eponymous Irish women
[sic], whose story is widely known”). Applicant made a similar point in its brief and submitted
an Internet excerpt about “Grace O’Malley – Famous Female Pirate.” 4 TTABVUE 13-14.
The Examining Attorney objected to this submission as improper because the record must be
complete before an appeal is filed. 6 TTABVUE 5-6. We sustain the objection and cannot
consider Applicant’s evidence, which should have been submitted during prosecution or with
the Request for Reconsideration, not with the appeal brief. 37 C.F.R. §2.142(d); TBMP
§§1203.02(e), 1207.01; TMEP §710.01(c).
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cream liqueurs,5 the goods identified in the cited Registration.6 Applicant submitted
a listing of a “number of highly similar or nearly identical co-existing trademark
registrations all within class 33.”7 No further evidence is of record.
The initial refusal under Section 2(d) extended to Applicant’s class 30, 32 and 33
goods, and were based on three cited registrations.8 Over the course of prosecution,
the refusal was limited to the single Registration identified above and to only the
class 33 goods, which were amended to read as noted above. The class 32 goods (beer)
are not subject to this appeal and Applicant deleted the class 30 goods.
II. Applicable Law
We base our determination of likelihood of confusion under Trademark Act Section
2(d), 15 U.S.C. § 1052(d), on an analysis of all of the probative facts in evidence that

5 Regarding the proper “handling” of cream liqueurs, Applicant argues that cream liqueur
“has to be stored in a cool place.” 4 TTABVUE 7. The Examining Attorney submitted evidence
from LCBO.com indicating that refrigeration is not necessary. At https://hellolcbo.com,
attached to December 3, 2018 Office Action, TSDR 25.
6 Office Action dated December 3, 2018 at 7-30.
7 Request for Reconsideration, TSDR 2-3. We do not find this evidence persuasive. While the
list is of record, no copies of the listed registrations or their underlying file history have been
introduced into evidence. The list by itself does not include enough information to be
probative; because the status (live or dead) of the registrations is omitted, and as there is no
record of any possible consent agreements that may exist among the owners of any of the
marks, we cannot know whether any of the pairs of listed registrations are relevant.
Moreover, many of the marks forming a “pair” are not identical and contain distinguishing
features that could account for their co-existence. Cf. Nat’l Cable Television Ass’n, Inc. v. Am.
Cinema Editors, Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991) (“None of the
third party marks and uses of ACE made of record are nearly as closely related to the
activities of the parties as the virtually identical uses of the parties are to each other”); In re
Peace Love World Live, LLC, 127 USPQ2d 1400, 1405 n.17 (TTAB 2018) (finding list to be
without probative value); Nat’l Fidelity Life Ins. v. Nat’l Ins. Trust, 199 USPQ 691, 694 n.5
(TTAB 1978) (same).
8 Office Action dated April 27, 2018.
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are relevant to the factors enunciated in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”), cited in B&B Hardware, Inc.
v. Hargis Indus., Inc., 575 U.S. 138, 113 USPQ2d 2045, 2049 (2015); see also In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We
consider each du Pont factor for which there is evidence or argument. See, e.g., In re
Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019).
However, “each case must be decided on its own facts and the differences are often
subtle ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386, 387
(CCPA 1973).
Varying weights may be assigned to each du Pont 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”). Two key considerations in most cases
are the similarities between the marks and the similarities between the goods or
services. See In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed.
Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d
1375 (Fed. Cir. 2002) (“The likelihood of confusion analysis considers all du Pont
factors for which there is record evidence but ‘may focus ... on dispositive factors, such
as similarity of the marks and relatedness of the goods.’“)).
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The record contains evidence or argument regarding the following du Pont
factors:9
A. The similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.
B. The similarity or dissimilarity and nature of the goods or services as
described in an application or registration or in connection with which
a prior mark is in use.
C. The similarity or dissimilarity of established, likely-to-continue trade
channels.
D. The conditions under which and buyers to whom sales are made, i.e.
“impulse” vs. careful, sophisticated purchasing.
du Pont, 177 USPQ at 567.

A. Similarity of the Marks
We compare the marks in their entireties as to appearance, sound, connotation
and commercial impression. du Pont, 177 USPQ at 567. “Similarity in any one of
these elements may be sufficient to find the marks confusingly similar.” In re Davia,
110 USPQ2d 1810, 1812 (TTAB 2014); accord Krim-Ko Corp. v. Coca-Cola Bottling
Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity
in either form, spelling or sound alone is likely to cause confusion.”) (citation omitted).

9 Applicant also mentioned the fifth and sixth du Pont factors. As to the fifth factor (fame),
Applicant asked the Board to take judicial notice that the name Grace O’Malley is famous
and submitted, with its brief, what appears to be an Internet article. 4 TTABVUE 10. We
cannot consider that evidence, see supra n.4, but even if we did, it would show nothing about
the fame of Applicant’s mark.
As to the sixth factor (third party use), Applicant mentions that it has not found many
instances of Registrant’s mark in the market. 4 TTABVUE 11. That is not evidence either,
and if it was, it would show nothing about third party use of similar marks on similar goods.
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The test is not whether the marks can be distinguished when subjected to a side-
by-side comparison, but rather whether the marks are sufficiently similar in terms of
their overall commercial impression so that confusion as to the source of the goods or
services offered under the respective marks is likely to result. Cai v. Diamond Hong,
Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018); Midwestern Pet Foods,
Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed.
Cir. 2012). The focus is on the recollection of the average purchaser, who normally
retains a general rather than a specific impression of trademarks. See Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
The marks at issue here are similar in appearance, sound, connotation and
commercial impression. GRACE O’MALLEY looks and sounds like O’MALLEYS. The
word GRACE is not present in the registered mark and that mark is in plural form.
But the similarity is still strong, given the shared O’MALLEY portion of the
marks.Although we “must, of course, view the proposed mark as a whole,” In re
Positec Group Ltd., 108 USPQ2d 1161, 1162 (TTAB 2013), we find the common
O’Malley element in each mark creates overall similarity of the marks.
Applicant concedes that O’MALLEY is an Irish surname, but argues the addition
of the “s” at the end makes it a different family name.10 Perhaps some consumers
would understand O’Malley and O’Malleys as two different surnames, but we find it
equally likely that consumers will perceive the registered mark O’MALLEYS as
referring to a clan or group of persons with the last name O’Malley. In this sense,

10 4 TTABVUE at 4.
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Applicant’s mark GRACE O’MALLEY might be one member of that clan or family.
That is, Grace O’Malley might be perceived by consumers as one of the O’Malleys.
Indeed, Applicant suggests as much when it argues that its mark refers to a specific
historical figure.11
The Examining Attorney argued that Applicant’s mark fully subsumes the
registered mark, a point Applicant vigorously disputes.12 Applicant is technically
correct that its mark does not contain a final “s” and, therefore, does not fully
incorporate the registered mark. But such details miss the point. What matters is
how consumers are likely to perceive these two marks. We find it likely that
consumers will see these marks as closely related, in a familial sense. Consumers
familiar with the registered mark O’MALLEYS may believe the mark GRACE
O’MALLEY represents a member of the O’Malley family identified by the registered
mark. Though this sort of similarity—that is, two marks that may be seen as referring
to a single family—may not be common, it is still a connection between the marks
that may lead consumers to believe goods sold under the marks come from the same
source. And that is the point of the analysis under this factor. San Fernando Elec.
Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA
1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991). The
marks have similar or related meanings because of the shared O’Malley surname.

11 4 TTABVUE 4-5.
12 6 TTABVUE 7; 4 TTABVUE 4.
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These facts also show that the marks create similar or related commercial
impressions.
B. Similarity of Goods, Trade Channels, and Buying Conditions
“The authority is legion that the question of registrability of an applicant’s mark
must be decided on the basis of the identification of goods set forth in the application
regardless of what the record may reveal as to the particular nature of an applicant’s
goods, the particular channels of trade or the class of purchasers to which the sales
of goods are directed.” Octocom Sys., Inc. v. Houston Comput. Servs. Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); see also Stone Lion Capital Partners, LP
v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Paula
Payne Prods. v. Johnson Publ’g Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973). We
group these three du Pont factors because of the shared focus on the identification of
the goods.13
The registered mark O’MALLEYS is used with “cream liqueurs,” and Applicant’s
mark is used with “alcoholic beverages, other than liqueurs, cream liqueurs and
beers, namely all types of whiskey, gin, vodka, rum,” all goods being in International
Class 33.14 Applicant amended its identification of goods to expressly exclude liqueurs

13 Our analysis here covers the second, third and fourth du Pont factors: “The similarity or
dissimilarity and nature of the goods or services as described in an application or registration
or in connection with which a prior mark is in use;” “The similarity or dissimilarity of
established, likely-to-continue trade channels;” and, “The conditions under which and buyers
to whom sales are made, i.e. ‘impulse’ vs. careful, sophisticated purchasing.” du Pont 177
USPQ at 567.
14 Applicant also seeks registration of the GRACE O’MALLEY mark for “beer” in
International class 32. As noted above, that portion of the application has not been refused
and is not at issue in this appeal.
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and cream liqueurs, and argues that this exclusion distinguishes the parties’ goods.15
Despite the limitation in Applicant’s identification of goods, its goods remain closely
related to those in the cited registration. The amended goods identified in the
Application do appear to be limited to higher alcohol content distilled spirits, which
the record shows are different from lower alcohol content liqueurs in general, and
cream liqueur, in particular. The record, however, also shows that these different
types of alcoholic beverages are often used and promoted together, as shown in the
following examples from the record.16

15 4 TTABVUE 7-8.
16 Office Action dated December 3, 2018 at 7-29.
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The goods are not identical, but they are related in a complementary sense.
“Evidence of complementary use may be given more or less weight depending on the
nature of the goods, but this evidence may not be ignored. The extent to which
particular food products are deemed related will depend on the facts of each
individual case.” In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289, 1290 (Fed. Cir. 1984) (bread and cheese complementary products, often
used in combination); see also In re Davia, 110 USPQ2d at 1815 (finding agave
sweetener and pepper sauce complementary because they are functionally equivalent
condiments, used in the same recipes to add flavoring to similar foods); In re Sela
Products, LLC, 107 USPQ2d 1580, 1587 (TTAB 2013) (surge protectors, wall mounts
and brackets complementary goods because purchasers are likely to encounter both
during course of purchasing a television, audio or home theater system); Polo
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Fashions, Inc. v. La Loren, Inc., 224 USPQ 509, 511 (TTAB 1984) (finding bath
sponges and personal products such as bath oil and soap to be closely related because
they are complementary goods that are likely to be purchased and used together by
the same purchasers). The evidence of record shows that cream liqueurs and
traditional distilled spirits like whisky, gin, vodka and rum are complementary.
We note, however, that the evidence does not reveal that third parties sell cream
liqueurs and whisky, gin, vodka, or rum under a single brand. Indeed, the evidence
submitted by the Examining Attorney shows more than a dozen different marks used
with cream liqueur products. Examples include: EMMETS, BAILEYS, SHEELIN,
CARUVA HORCHATA, 1921 LA CREMA DE MEXICO, KERRYGOLD, LITTLE
KRUGY, AMARULA, WHIPSY WHIPPED, BUFFALO TRACE, DOLCE CILENTO
and others. There is no evidence of any of these marks being used on traditional
distilled spirits like whisky, gin, vodka or rum. Indeed, the mixed drink recipes of
record that identify a branded cream liqueur also identify a differently branded
distilled spirit.17
While this evidence tends to suggest that cream liqueur and distilled spirits are
not sold under the same brands, it is outweighed by the evidence, examples of which
are shown above, that the goods are complementary. While there is insufficient
evidence in the record to determine whether product-specific brands are more
common than house brands used across a line of products, the record is too thin on
this point to support any broad conclusions. Nonetheless, despite the suggestion that

17 Id. at 7-19.
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consumers of these goods may not expect the same brand to be used on a cream
liqueur and a traditional distilled spirit, we find that the complementary nature of
the goods increases the likelihood of confusion, given that cream liqueurs and distilled
spirits are likely to be purchased together and marketed in the same trade channels.
There is evidence that these goods are likely to use the same trade channels and
be purchased in similar conditions. There is evidence of marketing that presents both
cream liqueurs and traditional distilled spirits.18 Evidence also shows the goods
identified in the Application and Registration are sold at some of the same retail
stores, as the following examples show.19

18 Id. at 7.
19 Id. at 20-29.
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The evidence notes that these goods are often mixed and used at social gatherings or
consumed at restaurants and bars.20 Given the complementary nature of the goods,
it is hardly surprising that the trade channels and purchasing conditions are the
same.
Applicant argues that typical consumers of these goods are sophisticated and
careful purchasers.21 There is no evidence to support this argument. Under the
circumstances, we find the relevant consumer to be an adult of at least 21 years old
who buys or consumes alcoholic beverages. There is no evidence that all such
consumers are sophisticated or careful purchasers of these goods. Stone Lion Capital,
110 USPQ2d at 1163-64 (we must base our likelihood of confusion decision “on the
least sophisticated potential purchasers” at issue).
C. Conclusion
We have considered all du Pont factors for which there is evidence or argument
and find that confusion is likely. The marks are similar. The goods are
complementary, although the evidence creates some doubt as to the significance of
that fact in this case. The goods likely travel through the same trade channels and
are purchased under the same conditions by ordinary consumers. On balance, we find
the du Pont factors point toward a likelihood of confusion.

20 Id. at 14-18.
21 4 TTABVUE 9-10.
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Decision: The refusal to register based on Section 2(d) is affirmed. The
application will move forward on the Class 32 goods only.