Majestic Distilling Co., Inc.

Trademark Trial and Appeal Board

Nov 29, 2001

No. 74622781 (T.T.A.B. Nov. 29, 2001)

11/29/01 Paper No. 22
pns

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Majestic Distilling Company, Inc.
________

Serial No. 74/622,781
_______

William G. Pecau of Pennie & Edmonds LLP for Majestic
Distilling Company, Inc.

Rodney Dickinson, Trademark Examining Attorney, Law Office
112 (Janice O’Lear, Managing Attorney).
_______

Before Simms, Hanak and Bottorff, Administrative Trademark
Judges.

Opinion by Simms, Administrative Trademark Judge:

Majestic Distilling Company, Inc. (applicant), a
Maryland corporation, has appealed from the final refusal
of the Trademark Examining Attorney to register the mark
RED BULL for tequila.1 The Examining Attorney has refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d), on the basis of the following
registrations:

1 Application Serial No. 74/622,781, filed January 18, 1995,
claiming use in commerce since November 1, 1984.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
74/622,781
2
Reg. No. 1,541,794, issued May 30, 1989 (Sections 8 & 15
filed), of the mark RED BULL (stylized) for malt liquor

Reg. No. 1,935,272, issued November 14, 1995 (Sections 8 &
15 filed), of the mark RED BULL for malt liquor

Reg. No. 2,046,277, issued March 18, 1997, of the mark
RED BULL REPRESENTIN’ THE REAL for brewed malt liquor

Reg. No. 2,046,278, issued March 18, 1997, of the mark
RED BULL REPRESENTIN’ for brewed malt liquor

All of these registered marks are owned by The Stroh
Brewery Company. The Examining Attorney argues that, in
view of the identity or substantial similarity of the
registered marks and applicant’s mark, and the close
relationship of applicant’s tequila to registrant’s malt
liquor, confusion is likely. Applicant and the Examining
Attorney have submitted briefs but no oral hearing was
requested.2
We affirm.
With respect to the marks, it is the Examining
Attorney’s position that each of the registered marks is
either identical or very similar to applicant’s mark RED
BULL, and that the marks create the same or similar
commercial impressions. With respect to the goods, the
Examining Attorney argues that the evidence of record

2 In view of the circumstances set forth in applicant’s motion
for leave to accept its reply brief, applicant’s reply brief is
accepted as timely.
74/622,781
3
establishes that tequila and malt liquor or beer may be
produced by the same entities, are marketed in the same
channels of trade, are purchased by the same consumers and
are consumed together in mixed drinks. The Examining
Attorney maintains that mixtures of tequila and malt liquor
or beer are popular. Accordingly, the Examining Attorney
argues that beer and tequila are closely associated by the
purchasing public and that consumers seeing the same mark
on these alcoholic beverages are likely to believe that
they emanate from the same source.
While the Examining Attorney has submitted numerous
third-party registrations of marks for various alcoholic
beverages, all but two of those registrations appear to be
based upon Section 44 of the Act, and are not therefore
use-based registrations evidencing use of those registered
marks in this country. See In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1786 (TTAB 1993). Concerning the two
use-based registrations, one covers the stylized mark “MB”
for beer and for liqueurs, brandies, spirits and wines
(Reg. No. 1,815,068, issued January 4, 1994), and the other
covers the mark CHOEGINSENG for beer, ale and porter, as
well as for wines, liqueurs and spirits made from rice
(Reg. No. 1,853,949, issued September 13, 1994).
74/622,781
4
With respect to the evidence relating to the use of
beer and tequila together, the following excerpts from the
NEXIS stories submitted by the Examining Attorney are
noteworthy:
“It’s no secret that many beer drinkers enjoy the
taste of lime with beer and tequila is often consumed
with beer,” says Anheuser-Busch New Products Director
Colleen Beckemeyer. “With Tequiza we have a unique
product that combines those three great tastes all in
one package.”
A lager laced with blue agave nectar, natural
lime and imported tequila flavorings, Tequiza was
reportedly a smash when test marketed in select cities
in Texas, New Mexico, Florida, New York and California
in 1997.
The brew was pitched to the rest of us via
nonstop TV and radio spots, and full-…

Gannett News Service, April 13, 1999

* * * * * * * *

Still, chalk it up perhaps to the trademark
stubbornness of A-B’s controlling Busch family, but at
a time new products are out of favor at its U.S.
rivals, the St. Louis brewer has been on a new-brew
crusade. And though the jury is out on how
sustainable the brand will prove, A-B execs are
touting their tequila-and-lime-flavored Tequiza as a
sign that a newly liberated new-products team can
click with consumers. Yes, Big Bud can do new
products after all.
“It’s the most successful non-line-extension for
us as a company,” said director of new products
Colleen Beckemeyer. That distinction was held by Red
Wolf, a craft-style entry that absorbed tens of
millions in TV and other support from its 1994 launch,
but is no longer a meaningful shelf presence. By
contrast, Tequiza was launched on the cheap by A-B
standards and already has eclipsed No. 1 craft beer
Samuel Adams in volume, putting it well on the way to
1 million barrels.
74/622,781
5
…The idea came from chairman/CEO August Busch
III, who had noticed a surge of global interest in
Mexican beers and in tequila, Beckemeyer said. By
then, French brewer Fischer was offering a tequila
beer called Desperados, although not yet in the
States…
Busch III took his idea to his son, vp-marketing
August Busch IV, who had brewmasters experiment with
recipes that mixed beer with tequila and squeezed
limes. In six months, by June 1997, Tequiza was ready
for test. That’s warp speed for A-B…

Brandweek, February 14, 2000

* * * * * * * *

Anheuser-Busch will introduce a new version of
its tequila-flavored beer next month. Tequiza Extra
will have more tequila taste than the original
Tequiza. The Extra will also have more alcohol—-5.6
percent compared with 5 percent, and a few more
calories—-…
A statement from the brewery said, Tequiza Extra
offers a more pronounced tequila taste for those
consumers who desire a little extra in their beer.
The original Tequiza had its nationwide rollout a year
ago. The name is a combination of tequila and the
Spanish world for beer—-cerveza. Tequiza was believed
to be the first such product from a major brewer.
Anheuser-Busch said sales have topped its
expectations. It won’t release figures, but Steinman
estimated first-year production at 570,000 barrels.
That would be comparable to sales of A-B’s Red Wolf in
its first year…

St. Louis Post-Dispatch, February 8, 2000

* * * * * * * * *

Anheuser-Busch Inc. is crowing about the success
it’s had with Tequiza, its new Mexican-style beer with
lime and tequila. The beer is among the four best-
selling high-end beers in supermarkets, according to
Information Resources Inc. Tequiza, which has been
available nationally for just nine months, has already
surpassed in sales such better-established beers as
Samuel Adams, IRI said.
74/622,781
6

Also, the beer was ranked in Convenience Store
News, a trade publication, as the best new product for
1999 in the “beverage, beer/alcohol” category.
Tequiza’s ad campaign, with the theme “Give it a
shot,” won the “best beer advertising” award from
another trade mag, Market Watch.

St. Louis Post-Dispatch, October 30, 1999

* * * * * * * * *

No. 1 brewer Anheuser-Busch launched Tequiza, a
beer with a hint of tequila, nationally in February
and is testing Devon’s Original Shandy, a mix of beer
and lemonade. Seagram, the country’s No.2 alcoholic
beverage company, has introduced upmarket versions of
its VO and Chivas Regal; as well as lime-and
grapefruit-flavored gin; a white chocolate- and a
cappuccino-flavored Godiva liqueur, and coconut,
spiced and premium rums.
Not only do line extensions give a company more
offerings to attract experimenting consumers, but they
increase ever-important shelf presence–-necessary to
attract impulse shoppers at liquor stores.

Advertising Age, October 11, 1999

* * * * * * * *

Americans may have been washing down their tacos
and salsa with Dos Equis beer and tequila shots for
generations, but the Latino boom can be traced to a
specific date…

Sunday Times (London), July 18, 1999

* * * * * * * *

The Examining Attorney has also referred the Board to
a number of published decisions involving the issue of
likelihood of confusion with respect to various alcoholic
beverages. The Examining Attorney notes that the
74/622,781
7
unpublished decisions relied upon by applicant are not
citable as precedent. Finally, the Examining Attorney asks
us to resolve any doubt in favor of the prior registrant.
Applicant, on the other hand, argues that we should
consider the views of persons who sell RED BULL alcoholic
beverages, who believe that this mark can be used on
different kinds of alcoholic products including distilled
alcoholic beverages and malt liquors without likelihood of
confusion. In this regard, applicant refers to the file
history of one of the cited registrations owned by the
Stroh Brewing Company. Therein, applicant points to a
consent agreement entered into by Stroh with George
Willsher & Co., Ltd., a Scottish whisky distiller. In that
agreement, Willsher consented to Stroh’s use and
registration of the mark RED BULL for malt liquor while
Stroh consented to Willsher’s use and continued
registration of the mark for Scotch whisky. Applicant
argues that this agreement reflects the opinion of persons
“in the know” that confusion is not likely to arise in the
marketplace. Applicant argues that this agreement lends
support to its contention that the cited mark is not a
strong one and that applicant’s mark for tequila can co-
exist in the marketplace without confusion with the same
mark for malt liquor.
74/622,781
8
Applicant also argues that it is the prior user of the
mark (over the registrant) and that there have been no
instances of actual confusion in the marketplace for 15
years.
Applicant further contends that the absence of use of
the same mark by the same producer for both tequila and for
beer supports the position that tequila and beer are such
different products that consumers are not likely to believe
that these goods come from the same source merely because
they bear the same mark.
Applicant also points to the declaration of its
executive vice president, who states that there have been
no instances of confusion and that there is no likelihood
of confusion between applicant’s mark for tequila and the
same mark for malt liquor because of differences in the
products, channels of trade and the absence of any actual
confusion.
With respect to the prior consent agreement between
Stroh and Willsher, applicant has made of record the file
history of Registration No. 1,541,794, the file of one of
the cited marks. Stroh obtained its RED BULL registration
over a prior registration of RED BULL for Scotch whisky,
after the filing of the consent agreement in which those
companies agreed that there was no likelihood of confusion
74/622,781
9
as a result of use of this same mark for those goods. In
return, Stroh withdrew its petition to cancel that
registration. However, the Willsher registration covering
Scotch whisky was subsequently cancelled as the result of a
petition filed by this applicant on the ground of
abandonment. That registration, once cited by the
Examining Attorney against applicant in this case, was
eventually cancelled in 1997.
Applicant argues that there is also no likelihood of
confusion because of Stroh’s consent to the use and
registration of this same mark with respect to other
distilled spirits such as gin, vodka, brandy and wines.
More particularly, in 1996 Stroh entered into another
agreement with another company, Red Bull GmbH, a German
corporation, in connection with that entity’s attempt to
register the mark RED BULL for those goods. Applicant
refers to Exhibit C attached to its response of December
13, 1999, wherein one of those applications—-S.N.
74/641,395, filed February 28, 1995-—sought registration of
that mark for those goods. The other applications listed
in the agreement cover mineral and aerated waters and other
non-alcoholic beverages such as soft drinks, fruit juices
and fruit drinks. According to Office records, all of
these applications are still pending, the one for alcoholic
74/622,781
10
beverages having been opposed. In any event, applicant
argues that this agreement, as well as the Willsher
agreement, are probative of the fact that there is no
likelihood of confusion arising from the use of RED BULL
for malt liquor and RED BULL for applicant’s tequila.
Applicant maintains that these agreements are at least
probative of the weakness of the mark RED BULL.
With respect to the goods involved in this case,
applicant maintains that there is no per se rule of
relatedness when it comes to different alcoholic beverages.
It is applicant’s position that tequila and malt liquor
travel in different channels of trade, with tequila being
produced in Mexico and being sold in liquor stores, whereas
malt liquor, sold in cans, bottles or kegs, is sold in
supermarkets, grocery stores and in different sections of
liquor stores. Further, it is applicant’s position that
the existence of a product known as Tequiza, a tequila-
flavored beer, does not support the Examining Attorney’s
claim that tequila and beer are “commonly marketed
together.” Rather, it is applicant’s position that Tequiza
is a novelty product.
Determining whether there is a likelihood of confusion
requires application of the factors set forth in In re E.
I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ
74/622,781
11
563, 567 (CCPA 1973). In considering the evidence of
record on these factors, we must keep in mind that “[t]he
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.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
Upon careful consideration of this record and the
arguments of the attorneys, we agree with the Examining
Attorney that confusion is likely.
Considering first the marks, at least one of the
registered marks is identical to applicant’s mark. Another
mark shows the words RED BULL in stylized lettering.
Accordingly, this first du Pont factor weighs heavily
against applicant because the word marks are identical. In
re Martin’s Famous Pastry Shoppe Inc., 748 F.2d 1565, 223
USPQ 1289, 1290 (Fed. Cir. 1984).
Because the marks are identical, their contemporaneous
use can lead to the assumption that there is a common
source “even when [the] goods or services are not
competitive or intrinsically related.” In re Shell Oil
Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993).
There is certainly no per se rule that all alcoholic
beverages are related. United Rum Merchants Ltd. V.
74/622,781
12
Fregal, Inc., 216 USPQ 217 (TTAB 1982). Nor, however, is
there any rule that there is no likelihood of confusion
merely because the marks are applied to different alcoholic
products. Cf. In re JaKob Demmer KG, 219 USPQ 1199, 1201
(TTAB 1983). It is not necessary that the respective goods
be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is
sufficient that the goods be related in some manner or that
the circumstances surrounding their marketing be such that
they would be likely to be encountered by the same persons
in situations that would give rise, because of the marks
used thereon, to a mistaken belief that they originate from
or are in some way associated with the same producer or
that there is an association or connection between the
producers of the respective goods. See In re Melville
Corp., 18 USPQ2d 1386 (TTAB 1991).
We believe that tequila and beer have been shown to be
sufficiently related alcoholic products that, if marketed
under the identical mark, consumers are likely to believe
that they emanate from, or are sponsored or endorsed by,
the same entity. First, although somewhat limited, there
is third-party registration evidence tending to demonstrate
that distilled spirits and beer may come from the same
source. See In re Mucky Duck Mustard Co., 6 USPQ2d 1467,
74/622,781
13
1470 n.6 (TTAB 1988) (Although third-party registrations
“are not evidence that the marks shown therein are in use
on a commercial scale or that the public is familiar with
them, [they] may have some probative value to the extent
that they may serve to suggest that such goods or services
are the type which may emanate from a single source”). We
also note the evidence with respect to the Tequiza product
marketed by Anheuser-Busch. This evidence, as well as
other evidence that tequila and beer may be consumed
together, tends to demonstrate that consumers may associate
tequila with beer.
While each case must of course be decided on its own
facts, we do take notice of other cases presenting the
issue of likelihood of confusion involving various
alcoholic beverages. In a case involving the marks BRADOR
for malt liquor on the one hand and BRAS D’OR and design
for Cognac brandy on the other, the Board stated:
We also believe that applicant’s malt liquor
is sufficiently related to opposer’s Cognac brandy
that, when sold under similar marks in the same
channels of trade, such as bars, restaurants and
liquor stores, confusion is likely. While we have no
doubt that purchasers are not likely to consume
a malt liquor thinking that it is Cognac brandy, in
view of the similarities in the marks it is
reasonable to assume that purchasers may believe that
BRADOR malt liquor is another premium imported
alcoholic beverage sold by the same company which
sells the expensive BRAS D’OR Cognac brandy...
74/622,781
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Of course, while there are actual differences in
the specific channels of trade that the respective
products travel in, nevertheless they are sold in
some of the same places and, moreover, since there
are no restrictions with respect to channels of
trade in either applicant's application or
opposer's registrations, we must assume that the
respective products travel in all normal channels
of trade for those alcoholic beverages. See
Martini & Rossi Corp. v. Jose Marques Agostinho,
Filhos & Ca., 205 USPQ 722 (TTAB 1979) (wines v.
wines, vermouth and other alcoholic beverages);
Monarch Wine Co. v. Hood River Distillers, Inc.,
196 USPQ 855 (TTAB 1977) (Scotch whiskey, rum,
brandy and vodka v. wines and champagne); and In re
AGE Bodegas Unidas, S.A., 192 USPQ 326 (TTAB 1976)
(wines v. whiskey). A typical consumer of
alcoholic beverages may drink more than one type of
beverage and may shop for different alcoholic
beverages in the same liquor store. Moreover, a
person may serve more than one kind of alcoholic
beverage before or during a meal or at a party.

Schieffelin & Co. v. Molson Companies Ltd., 9 USPQ2d 2069,
2073 (TTAB 1989). See also In re Leslie Hennessy, Jr., 226
USPQ 274, 276 (TTAB 1985)(wine vs. Cognac brandy); and
Fleischmann Distilling Corp. v. Maier Brewing Co., 314 F.2d
149, 136 USPQ 508, 514 (9th Cir. 1963), cert. denied, 374
U.S. 830, 137 USPQ 913 (1963)(BLACK & WHITE Scotch whisky
held confusingly similar to BLACK & WHITE beer, the Court,
quoting from another case, holding that beer and Scotch
whisky, being both within the alcoholic beverage industry,
are "so related as to fall within the mischief which equity
should prevent."). What that Court said, 136 USPQ at 513-
514, is noteworthy:
74/622,781
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Of course there may not be one in a hundred
buyers of this whisky who knows that it is made
by Buchanan or wholesaled by Fleischmann.
Probably all that such buyers know is that Black
& White Scotch whisky has satisfied them in the
past or that they have heard of it and the
average purchaser would no doubt select for the
use of his guests something with which he was
familiar and thus purchase Black & White whisky.
What are we to say about the same purchaser who
starts for home on a hot evening and decides to
take home beer for refreshment? He stops at
Ralphs and notes beer bearing the label "Black &
White" in that store's stock. We think it to be
plain that the likelihood of confusion and
mistake is present here and is established by the
record. Assuming that the trial court's finding
that it is "unlikely that there is, or will be
any confusion as to source in the mind of a
buyer" is a finding of fact and not a legal
conclusion, we hold that it is clearly erroneous.
It is our view, and we so hold, that the average
purchaser, as the courts have described him,
would be likely to believe, as he noted the Black
& White beer in Ralphs' stores, that the maker of
the beer had some connection with the concern
which had produced the well known Black & White
Scotch whisky. It is not material whether he
would think that the makers of the Scotch whisky
were actually brewing and bottling this beer, or
whether it was being produced under their
supervision or pursuant to some other arrangement
with them. He would probably not concern himself
about any such detail.

Similarly, beer and tequila are likely to be sold in
some of the same channels of trade (liquor stores, bars,
etc.) to the same class of purchasers. In this regard,
because these products are not expensive items, beer and
tequila may well be purchased on impulse without careful
74/622,781
16
consideration. This factor, too, weighs in favor of a
finding of likelihood of confusion.
Also, the fact that there has been no actual confusion
is not determinative. It is unnecessary to show actual
confusion to establish likelihood of confusion. Giant
Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565,
218 USPQ 390, 396 (Fed. Cir. 1983); and J & J Snack Foods
Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889,
1892 (Fed. Cir. 1991). Moreover, an ex parte proceeding
provides no opportunity for the registrant to show
instances of actual confusion.
In addition, the fact that the owner of the cited
registrations may have entered into an agreement with
another registrant (in 1988) in order to obtain a
registration does not necessarily reflect any current
belief by the cited registrant that there is no likelihood
of confusion with respect to malt liquor and a different
distilled liquor product. We cannot find fault with what
the Examining Attorney has stated, brief, 7-8;
A consent agreement is an agreement in
which a party, generally a prior registrant,
consents to the use and registration of a
specific mark by another party… Consent
agreements reflect the views of the parties
involved in such an agreement regarding the
likelihood of confusion in the marketplace
between the specific marks and goods of the
parties to the consent agreement… However, by
74/622,781
17
reaching an agreement with third parties to
avoid likelihood of confusion for specific
marks on specific goods, the registrant has
not consented to allow other confusingly
similar marks to coexist with its marks. In
short, the fact that the registrant has
reached an agreement with a third party to
avoid likelihood of confusion for similar
marks is not an admission or evidence that the
registrant’s marks and the applicant’s
confusingly similar mark can coexist. This is
particularly true here where the registrant’s
consents do not include tequila, the specific
goods on which the applicant is using its
confusingly similar mark.

We should also add that the consent agreement between Stroh
and Willsher specifically prohibited Stroh from using or
registering the marks BLACK BULL and THE MAGNIFICENT BULL
for brewed malt liquor, beer or ale (two marks used and
registered by Willsher for Scotch whisky). If the parties
had indeed believed that the differences in the products
and their channels of trade were sufficient to avoid
likelihood of confusion, then it is not understood why
Stroh was precluded from using and registering the same
marks (BLACK BULL and THE MAGNIFICENT BULL) for malt liquor
that Willsher was using for Scotch whisky. Finally, it
should be emphasized that here we do not have a situation
where registrant has consented to applicant’s use and
registration. Rather, applicant is merely arguing that,
because registrant had previously agreed with another that
confusion was not likely with respect to the mark for malt
74/622,781
18
liquor and a different distilled product, to settle a
cancellation proceeding and to permit registration to
registrant, we should find that confusion is not likely
here where a different alcoholic product is involved. Cf.
In re Opus One, Inc., ___ USPQ2d ___ (TTAB Sept. 25, 2001).
In conclusion, we believe that consumers, aware of
registrant’s RED BULL (and RED BULL with other designs and
wording) malt liquor who then encounter applicant’s RED
BULL tequila are likely to believe that these goods come
from, or are sponsored or licensed by, the same entity. If
we had any doubt about this matter, that doubt, in
accordance with precedent, should be resolved in favor of
the prior registrant. In re Hyper Shoppes (Ohio), Inc.,
837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusal of registration is affirmed.