Latrobe Brewing Co. L.L.C.v.Prairie Rock Brewing Co.

Trademark Trial and Appeal Board

Jan 19, 1999

No. 91105401 (T.T.A.B. Jan. 19, 1999)

Paper No. 22
HANAK/md
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 1/19/99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Latrobe Brewing Company L.L.C.
v.
Prairie Rock Brewing Company
_____
Opposition No. 105,401
to application Serial No. 74/717,364
filed on August 18, 1995
_____
Paul Grandinetti of Cammarata & Grandinetti for Latrobe
Brewing Company L.L.C.
Douglas B. White for Prairie Rock Brewing Company.
______
Before Cissel, Hanak and Bucher, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Prairie Rock Brewing Company (applicant) seeks
registration of ROCK ‘N RED for, beer and ale. The
application was filed on August 18, 1995 with a claimed
first use date of June 1, 1995.
On March 5, 1997 Latrobe Brewing Company L.L.C.
(opposer) filed a notice of opposition alleging, among other
Opposition No. 105,401
2
things, that prior to June 1995, it used the following marks
for beer: ROLLING ROCK; ROCK; ROCK LIGHT; and ROCK BOCK.
Furthermore, opposer alleged that applicant’s mark ROCK ‘N
RED so resembles opposer’s marks so as to be likely to cause
confusion, mistake and deception.
Applicant filed an answer which denied the pertinent
allegations of the notice of opposition.
The record in this case includes the testimony
deposition with exhibits of Bradley A. Hittle (opposer’s
director of marketing). In addition, opposer properly made
of record certified status and title copies of its
registrations for the following marks (each depicted in
typed capital letters) for beer: (1) ROLLING ROCK,
Registration No. 1,215,134 (beer and ale); (2) ROCK,
Registration No. 1,941,428; (3) ROCK LIGHT, Registration No.
1,941,933; and (4) ROCK BOCK, Registration No. 2,024,207.
Applicant made of record no evidence.
Opposer filed brief. Applicant did not. Neither party
requested a hearing.
At the outset, we note that priority is not an issue in
this proceeding because opposer has properly made of record
its typed drawing registrations of ROLLING ROCK, ROCK, ROCK
LIGHT and RCOK BOCK. King Candy Co. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 118 (CCPA 1974).
Moreover, the record demonstrates that long prior to 1995,
Opposition No. 105,401
3
opposer has made continuous use of all four of its marks.
Indeed, opposer’s ROLLING ROCK mark has been used in
connection with beer since the 1930’s, and opposer’s ROCK
mark has been used by consumers as a shortened form of
ROLLING ROCK since at least the 1950’s.
Turning to the only real issue in this proceeding, we
note that in any likelihood of confusion analysis, two key
considerations are the similarities of the goods and the
similarities of the marks. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1978)
(“The fundamental inquiry mandated by Section 2(d) goes the
to the cumulative effect of differences in the essential
characteristics of the goods and differences in the
marks.”).
Considering first the goods, we note that the goods of
opposer’s typed drawing registration for ROLLING ROCK and
applicant’s application for ROCK ‘N RED are absolutely
identical –- namely, beer and ale. In addition, the goods
recited in opposer’s typed drawing registration for ROCK,
ROCK LIGHT and ROCK BOCK and applicant’s application for
ROOCK ‘N RED are in part identical –- namely, beer.
Turning to a consideration of the marks, we note at the
outset that “when marks would appear on virtually identical
goods or services, the degree of similarity [of the marks]
necessary to support a conclusion of likely confusion
Opposition No. 105,401
4
declines.” Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992). With this proposition in mind, we find that
applicant’s mark ROCK ‘N RED is confusingly similar to, at a
minimum, opposer’s marks ROCK, ROCK LIGHT and ROCK BOCK. As
applied to beer and ale, opposer’s mark ROCK is totally
arbitrary. Applicant has adopted opposer’s arbitrary mark
ROCK in its entirety and merely added thereto the connector
‘N and, as applied to beer and ale, the descriptive word
RED. With regard to this latter point, we have the
uncontradicted testimony of Mr. Hittle who stated that as
applied to beer and ale, or “red” not only describes the
color of the beer and ale, but it also describes their
“flavor characteristics.” (Hittle deposition pages 18-19).
Indeed, Mr. Hittle went on to note that opposer’s ROCK BOCK
beer is “reddish in color.” (Hittle deposition page 19).
It need hardly be said “that one may not appropriate
the entire mark of another and avoid a likelihood of
confusion by the addition thereto of descriptive or
otherwise subordinate matter.” Bellbrook Dairies v.
Hawthorn-Melody Farms Dairy, 253 F.2d 431, 432, 117 USPQ
213, 214 (CCPA 1958). We find that consumers familiar with
opposer’s ROCK, ROCK LIGHT and ROCK BOCK beers would, upon
encountering ROCK ‘N RED beer or ale would assume that said
beer or ale is red in color and/or possess certain flavor
Opposition No. 105,401
5
characteristics, and that it comes from the same source as
the other ROCK beers.
Moreover, it must be kept in mind that opposer’s four
registrations and applicant’s application all feature the
marks depicted in typed drawing form. This means that
opposer’s rights in its various ROCK marks and applicant’s
potential rights in its ROCK ‘N RED mark are “not limited to
the mark[s] depicted in any special form[s].” Phillip’s
Petroleum v. C.J. Webb, 442 F.2d 1376, 170 USPQ 35, 36 (CCPA
1971). Accordingly, in any likelihood of confusion
analysis, “the Board must consider all reasonable manners in
which [the marks] could be depicted, in particular, the
Board should give special consideration to the manners in
which applicant [and opposer have] actually depicted” their
marks. INB National Bank v. Metrohost Inc., 22 USPQ2d 1585,
1588 (TTAB 1992).
If applicant were to obtain a registration depicting
its mark ROCK ‘N RED in typed drawing form, then applicant
would obtain rights to a wide array of depictions of this
mark including, simply by way of example, featuring the word
ROCK in large lettering on one line and the ‘N RED portion
of the mark in smaller lettering on second line. Indeed, if
we look to the specimen of use which applicant submitted
with its application (reproduced below), it is noted that
the ROCK ‘N portion of applicant’s mark and the RED portion
Opposition No. 105,401
6
of applicant’s mark are indeed separated by a rather large
circle containing a design.
If applicant were to modify the above label somewhat so as
to move the ‘N portion of its mark to precede the RED
portion of its mark and were further to enlarge the ROCK
portion of its mark, then the result would be such that
applicant’s mark so extremely similar to opposer’s ROCK
marks that confusion would not merely be likely, but would
be almost inevitable. In this regard, it should be
remembered that because opposer’s registrations of ROCK
LIGHT and ROCK BOCK are in typed drawing form, opposer is
quite free to depict these marks with the ROCK portion in
large lettering on one line and the LIGHT and BOCK portions
in smaller lettering on a second line. Moreover, opposer’s
registration of ROCK per se in typed drawing form is not
restricted to any particular type of beer. Thus, opposer is
Opposition No. 105,401
7
free to depict its mark ROCK on one part of its label and to
depict various generic or descriptive terminology on another
part of the label. Indeed, in actual practice, opposer has
done precisely this, as is shown by opposer’s exhibits 2, 3
and 5 which are reproduced below.
Opposition No. 105,401
8
Decision: The opposition is sustained.
R. F. Cissel
E. W. Hanak
D. E. Bucher