87187265 (T.T.A.B. Aug. 26, 2020)

Redleg Rum Company Limited

Trademark Trial and Appeal BoardAug 26, 2020

87187265 (T.T.A.B. Aug. 26, 2020)

This Opinion is Not a Precedent of the TTAB Hearing: August 6, 2020 Mailed: August 26, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Redleg Rum Company Limited _____ Serial No. 87187265 _____ David M. Perry of Blank Rome LLP for Redleg Rum Company Limited. Nathan C. Ranns, Trademark Examining Attorney, Law Office 128 Travis Wheatley, Managing Attorney. _____ Before Wolfson, Lynch, and Hudis, Administrative Trademark Judges. Opinion by Wolfson, Administrative Trademark Judge: Redleg Rum Company Limited (Applicant) seeks registration on the Principal Register of the mark RED LEG and design, reproduced below, for “Rum; Spirits,” in International Class 33.1 1 Serial No. 87187265 was filed on August 31, 2018, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of its bona fide intent to use the mark in commerce and claiming priority derived from United Kingdom application number UK0000318798, filed September 27, 2016. Trademark Act Section 44(d), 15 U.S.C. § 1126(d). The description of the mark reads as follows: “The mark consists of the wording ‘RED LEG’ above the image of a stylized crab, against a background. The color brown is applied to the background and the crab shell, beige is applied to the wording ‘RED LEG’, gold is applied to the outline of the crab, and red is applied to the claws of the crab.” The colors brown, red, beige, and gold are claimed as a feature of the mark. Serial No. 87187265 - 2 - The Examining Attorney refused registration under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the ground that the mark, as applied to the goods identified in the application, so resembles the registered mark RED LEG BREWING COMPANY (in standard characters, “BREWING COMPANY” disclaimed) for, in pertinent part, “Beer, ale, lager, stout and porter; Beers” in International Class 32, as to be likely to cause confusion.2 When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. Applicant and the Examining Attorney filed briefs, and an oral hearing by video conference took place. We affirm the refusal to register. I. Likelihood of Confusion We base our determination under Section 2(d) on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) 2 Registration No. 4846441 issued on November 3, 2015. The complete list of goods includes goods in Classes 16, 21, 25 and the following goods in Class 32: “Beer, ale, lager, stout and porter; beers; all the foregoing not relating to baseball or softball or to a baseball or softball team, league, mascot or stadium.” The Examining Attorney limited the basis of the refusal to “beer, ale, lager, stout and porter; beers.” January 9, 2017 Office Action, TSDR 1. Citations to the record are to the Trademark Status and Document Retrieval (TSDR) page in the prosecution history of Applicant’s application, and to TTABVUE, the docket history system for the Trademark Trial and Appeal Board. Serial No. 87187265 - 3 - (“DuPont”). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). “Not all DuPont factors are relevant in each case.” Stratus Networks, Inc. v. UBTA-UBET Communs. Inc., 955 F.3d 994, 2020 USPQ2d 10341, *7 (Fed. Cir. 2020). The Board considers those DuPont factors 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). Two key considerations are the similarities between the marks and the similarities between the goods. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); 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.”). Based on the submissions of Applicant and the Examining Attorney on this appeal, we consider the respective marks and goods, the trade channels for the goods, the relevant consumers and the conditions under which sales are made. A. The Marks Under the first DuPont factor, we determine the similarity or dissimilarity of Applicant’s and Registrant’s marks in their entireties, taking into account their appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at Serial No. 87187265 - 4 - 567; In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1048 (Fed. Cir. 2018). We are mindful that “[t]he proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)). Because the similarity or dissimilarity of the marks is determined based on the marks in their entireties, our analysis cannot be predicated on dissecting the marks into their various components. In re Ox Paperboard, LLC, 2020 USPQ2d 10878, *4 (TTAB 2020) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014)); In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015). On the other hand, in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties. Indeed, this type of analysis appears to be unavoidable. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Here, the shared term RED LEG is the dominant part of both marks. As the first term in each mark, it is visually prominent and “most likely to be impressed upon the mind of a purchaser and remembered.” TiVo Brands LLC v. Tivoli, LLC, 129 USPQ2d 1097, 1115 (TTAB 2018) (quoting Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 Serial No. 87187265 - 5 - USPQ2d 1895, 1897 (TTAB 1988)). It is also the only pronounceable portion of Applicant’s mark, the most visually prominent portion of Applicant’s mark, and the only distinctive element of Registrant’s mark. The remaining wording in the cited mark, “brewing company,” is at a minimum descriptive of Registrant’s goods and has been disclaimed. See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive component of a mark may be given little weight in reaching a conclusion on likelihood of confusion.’”) (quoting In re Nat’l Data Corp., 224 USPQ at 751). The record does not suggest that RED LEG has a meaning other than as referring generally to a lower limb of that color, or that it has a specific meaning with respect to rum, spirits, beer, ale, lager, stout or porter. RED LEG is thus the only arbitrary wording in either mark. Applicant argues that its crab design “and flourished depiction of the words RED LEG in a script-like font” distinguish the marks. Applicant’s Brief, 15 TTABVUE 18. The Examining Attorney counters that the crab design “neither draws the consumer’s attention away from the prominent wording, nor does it detract from the consumer’s ability to read and notice the literal element of the mark.” Examining Attorney’s Brief, 18 TTABVUE 5. “When a mark consists of a literal portion and a design portion, the literal portion is usually more likely to be impressed upon a purchaser ’s memory and to be used in calling for the goods []; therefore, the literal portion is normally accorded greater weight in determining whether marks are confusingly similar.” Ox Paperboard, 2020 Serial No. 87187265 - 6 - USPQ2d 10878 at *4. See also In re Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012); Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB 2013). The principle is especially true here, where the crab’s legs are red and thus “merely emphasize[s], in a pictorial way, the main word portion of the cited mark.” In re Wine Society of Am., 12 USPQ2d 1139, 1142 (TTAB 1989). Here, the wording RED LEG is in bold, large script in sharp contrast to the background. Whereas a large portion of the crab design blends into the brown background, as the crab shell is the same color brown, its “red legs” stand out and visually underscore the dominant impression created by the words RED LEG. As to the script, because the cited mark is registered in standard characters, it is not limited to any particular font style, size, or color. 37 C.F.R. § 2.52(a). Registrant may display its mark in a script similar to Applicant’s, and in a beige and brown color scheme. See, e.g., In re Viterra, 101 USPQ2d at 1908 (holding that the specific font style of a mark cannot serve as the basis to distinguish it from a mark in standard character form); In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1186 (TTAB 2018) (“[T]he rights associated with a standard character mark reside in the wording per se and not in any particular font style, size, or color.”) (citing Citigroup, 98 USPQ2d at 1259). We find that the design component of Applicant’s mark visually distinguishes it only slightly from the registered mark. Moreover, and more importantly, we find the sight, sound, connotation, and overall commercial impression of the two marks considered as a whole to be more similar than dissimilar. Serial No. 87187265 - 7 - The first DuPont factor, similarity of the marks, favors a finding that confusion is likely. B. The Goods The second DuPont factor concerns the “similarity or dissimilarity and nature of the goods or services as described in an application or registration.” DuPont, 177 USPQ at 567. “This factor considers whether ‘the consuming public may perceive [the respective goods] as related enough to cause confusion about the source or origin of the goods ….’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed. Cir. 2014) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002)). The goods need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods] … emanate from the same source.” Coach Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). The identification of goods in the cited registration, on which registration to Applicant is refused, are: “beer, ale, lager, stout and porter; beers.” Applicant’s goods are “rum [and] spirits.” As evidence of product relatedness, the Examining Attorney made of record copies of pages from sixteen websites showing that the same entity Serial No. 87187265 - 8 - promotes and offers for sale under the same mark the types of goods identified in Applicant’s involved application and the cited registration. For example: 1. Two Brothers Brewing Company offers beer, ale, and rum under the mark TWO BROTHERS.3 2. Malibu Beer offers beer and “Caribbean rum” under the MALIBU trademark:4 3 At http://twobrothersbrewing.com, July 5, 2019 Office Action, TSDR 2-20. 4 At https://www.maliburumdrinks.com, July 5, 2019 Office Action, TSDR 61-67. Serial No. 87187265 - 9 - 3. Ellison Brewery + Spirits sells ELLISON whiskey, vodka, gin and rum as well as beer under the ELLISON mark.5 . The Examining Attorney also submitted copies of three on-line articles reporting that beer breweries increasingly are distilling craft spirits.6 The Examining Attorney submitted web pages from several such breweries. For example: 5 At http://ellisonbrewing.com/spirits/, July 5, 2019 Office Action, TSDR 71-75. 6 These articles are titled: “Breweries are cranking out distilled spirits like it’s going out of style--and it isn’t,” 10 TTABVUE 2-14; “The Rise of Brewery Distillery Hybrids,” 11 TTABVUE 2-9; and “Actually, It Makes a Lot of Sense That Craft Brewers Are Also Distilling Spirits,” 11 TTABVUE 10-13 and 12 TTABVUE 2-4. Serial No. 87187265 - 10 - 1. Dogfish Head restaurant sells DOGFISH HEAD beers and DOGFISH HEAD rum, gin, and other spirits. 2. Brickway Brewery sells BRICKWAY ales and stout as well as BRICKWAY whiskey and gin:7 7 At https://www.drinkbrickway.com/, 6 TTABVUE 12-15 and 7 TTABVUE 2-7. Serial No. 87187265 - 11 - 3. Barley Creek, a craft brewery and distillery, sells beer under the BARLEY CREEK brand - and spirits, including “spiced rum,” under the BARLEY CREEK brand.8 8 At https://www.barleycreek.com, 7 TTABVUE 8-13 and 8 TTABVUE 2-7. Serial No. 87187265 - 12 - . The website evidence demonstrates that the same entities sell both beer and spirits (such as rum) under a single mark. See Hewlett-Packard, 62 USPQ2d at 1004 (evidence that “a single company sells the goods and services of both parties, if presented, is relevant to the relatedness analysis....”). The Examining Attorney also provided copies of sixteen third-party, use-based registrations to show that Applicant’s and Registrant’s goods are related.9 Third-party registrations that individually cover a number of different items and that are based on use in commerce have probative value to the extent that they serve to suggest that the listed goods are 9 These registrations include: Reg. No. 4492539 for the mark EPIDAURO for “beer” and “distilled spirits”; Reg. No. 5604011 for the mark TROPHY ROOM for “beer” and “distilled spirits”; Reg. No. 5116260 for the mark TULASI for “beer” and “rum”; Reg. No. 4978216 for the mark ENDURE for “beers” and “spirits”; Reg. No. 5287269 for the mark SIP BETTER for “beer” and “spirits”; and Reg. No. 5905455 for the mark BOYKIN for “beer” and “spirits.” November 18, 2019 Denial of Request for Reconsideration, TSDR 57-155. Serial No. 87187265 - 13 - of a type which may emanate from a single source. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217- 18 (TTAB 2001)); In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.6 (TTAB 2015); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). Applicant argues that “beer brewers typically do not use their marks in connection with other alcoholic beverages, including spirits,” citing to Exhibit A of its Request for Reconsideration, which Applicant characterized as “Trademark Office records,” and although it remains unclear, appears to be a compilation of excerpts of TESS database search results. 15 TTABVUE 12; Exhibit A at 4 TTABVUE 18. The Examining Attorney objects to the admission of Exhibit A on the ground that a “mere submission of a list of registrations or a copy of a search report does not make such registrations part of the record.” 18 TTABVUE 20. Exhibit A does not specifically list any registrations or applications. It merely shows that Applicant conducted several searches to determine the number of records that allegedly exist in the USPTO database for marks containing both “beer” and either “rum” or “spirits.” Although it is correct that none of the underlying registrations (or applications) that may account for the numerical data presented in Exhibit A forms part of the record, Applicant relies on Exhibit A as a statistical reference only, purporting to show that out of the allegedly 30,031 live registrations and applications for “beer” in Class 32, only 225 registrations also claimed “rum” in Class 33. Serial No. 87187265 - 14 - We consider Exhibit A part of the prosecution record. Nonetheless, we find this evidence cannot be relied on for Applicant’s stated purpose and carries little weight. First, the exhibit is not a copy of an actual record as it would appear in TESS but is pieced together from excerpts of TESS printouts. Second, Applicant’s search did not encompass all instances of possible overlap between Applicant’s and Registrant’s goods.10 As the Examining Attorney points out, “Applicant did not search for terms such as ‘alcoholic beverages,’” 18 TTABVUE 20, or individually for the other items covered in Registrant’s identification, namely, ale, lager, stout and porter. Accordingly, we give this evidence very little probative value, which in any event is outweighed by the Examining Attorney’s evidence showing relatedness of the goods. The second DuPont factor, the similarity and nature of the goods, weighs in favor of likely confusion. C. Trade Channels and Classes of Purchasers The third DuPont factor considers “the similarity or dissimilarity of established, likely-to-continue trade channels.” DuPont, 177 USPQ at 567. Where, as here, there is an absence of any restrictions or limitations in the application and cited registration, we must assume the goods are sold or marketed through all normal and usual trade channels for such goods, “including retail outlets such as liquor stores, supermarkets, convenience stores, restaurants, and bars,” and that they are offered 10 The probative value of the search also suffers from the inclusion of pending applications, which are evidence only of the fact that they have been filed. Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003). Serial No. 87187265 - 15 - to all the usual purchasers of such goods.11 Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1827-28 (TTAB 2015) (finding beer and other alcoholic beverages to be sold to consumers in “many of the same channels of trade”). See also Citigroup, 98 USPQ2d at 1261; Hewlett-Packard Co., 62 USPQ2d at 1005; In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006). The electronic articles submitted by the Examining Attorney show that beer breweries increasingly are distilling craft spirits, selling both at their bars, taprooms, and restaurants. The websites show that online retailers are selling an array of alcoholic beverages including beers and spirits at the same website. The record evidence in this case thus establishes that the goods of Applicant and Registrant travel in the same trade channels to the same classes of purchasers. The third DuPont factor, the similarity of trade channels, weighs in favor of likely confusion. D. Purchaser Sophistication Under the fourth DuPont factor, we consider “[t]he conditions under which and buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.” 11 We also reject as unsupported Applicant’s contention that beer and rum “do not appear on store shelves together.” Applicant’s Brief, 15 TTABVUE 11. An applicant may not restrict the scope of the goods covered in its application or in the cited registration by argument or extrinsic evidence. Stone Lion, 110 USPQ2d at 1162 (“It was proper, however, for the Board to focus on the application and registrations rather than on real world conditions, because ‘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.’”) (quoting Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937 , 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). See also In re Midwest Gaming & Enter. LLC, 106 USPQ2d 1163, 1165 (TTAB 2013); In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008). Serial No. 87187265 - 16 - DuPont, 177 USPQ at 567. Relying on an online article in a trade magazine, Cheers,12 Applicant argues that Registrant’s customers are sophisticated buyers: The increasingly noteworthy sophistication of purchasers of alcoholic beverages, due in large part to the craft beer and spirit movements, has been discussed recently in various media channels. … The customers referred to in the “Cheers” [article] are Registrant’s and Applicant’s customers -- well educated, sophisticated, and discerning beverage enthusiasts. 15 TTABVUE 13. Applicant’s argument is specifically directed to craft brewers and Applicant’s perception of “the relative sophistication of the craft beer buyer as an individual as discerning and passionate as a wine or vodka drinker .” Id. However, Registrant’s beers are not limited to craft beers. We may not read limitations into the unlimited identification of goods, nor may we decline to consider the level of sophistication of all potential customers of the goods. Rather, we must take into account the least sophisticated purchasers of the involved goods as they are recited in the application and registration, that is, the ordinary beer, rum or spirits drinker and purchaser of such beverages. See Stone Lion, 110 USPQ2d at 1162-63. Even taking craft brews into account, these still tend to be ordinary consumer goods that are relatively inexpensive. Furthermore, even sophisticated purchasers are not immune from source confusion, especially in cases such as the instant one involving similar marks and 12 “7 Trends Shaping the Alcohol Industry in 2016-17,” July 10, 2017 Response to Office Action at TSDR 9-18. Serial No. 87187265 - 17 - closely related goods. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (“[t]hat the relevant class of buyers may exercise care does not necessarily impose on that class the responsibility of distinguishing between similar trademarks for similar goods”) (citing Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human memories even of discriminating purchasers...are not infallible.”)). The fourth DuPont factor, the conditions under which and buyers to whom sales are made, is neutral. II. Balancing the Factors After considering all of the arguments and evidence of record as they pertain to the relevant DuPont factors, we find that the marks are substantially similar in sight, sound, connotation and commercial impression. We further find that (1) the goods are related, (2) the goods travel through similar channels of trade to the same classes of consumers, and (3) purchasers of Applicant’s and Registrant’s goods are likely to exercise at most an ordinary degree of care. Accordingly, we find that there is a likelihood of confusion between Applicant’s mark and the cited mark RED LEG BREWING COMPANY for the goods as identified. Decision: The refusal to register Applicant’s mark under Trademark Act Section 2(d) is affirmed.