Anheuser-Busch, Incorporatedv.M&M Sportswear Ltd. And Moshe Bouskila

Trademark Trial and Appeal Board

Sep 9, 2008

No. 91159713 (T.T.A.B. Sep. 9, 2008)

Mailed: September 9, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

Anheuser-Busch, Incorporated
v.
M&M Sportswear Ltd. and Moshe Bouskila
_______

Opposition No. 91159713
to Application No. 76498018
filed on March 18, 2003
_______

Edward G. Wierzbicki, Daniel D. Frohling and Nathan J. Hole
of Loeb & Loeb for Anheuser-Busch, Incorporated.

M&M Sportswear Ltd. and Moshe Bouskila, Pro Se.
_______

Before Walters, Drost and Walsh, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

Anheuser-Busch, Incorporated filed its opposition to
the application of Moshe Bouskila to register the mark IF
YOU DON’T BUD YOU AIN’T WISER for “live flowers, namely rose
buds; dried flowers, namely rose buds,” in International
Class 31.1

1 Application Serial No. 76498018, filed March 18, 2003, based upon an
allegation of a bona fide intention to use the mark in commerce in

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Opposition No. 91159713
2
As grounds for opposition, opposer asserts that
applicant’s mark, when applied to applicant’s goods so
resembles opposer’s previously used and registered famous
BUDWEISER mark and family of famous BUD marks for beer and a
wide variety of consumer products as to be likely to cause
confusion, under Section 2(d) of the Trademark Act. Opposer
also asserts a dilution claim, under Section 43(c) of the
Trademark Act, alleging that since long prior to applicant’s
filing date, opposer’s BUDWEISER mark and family of BUD
marks have been famous in connection with beer.
Applicant, in its answer, denied the salient
allegations of the claim and asserted as affirmative
defenses lawful parody and first amendment freedom of
speech. However, because applicant submitted neither
evidence nor a brief, we find that these affirmative
defenses have not been pursued herein and we have given them
no consideration.
The Record
We note, first, that the parties entered into a
protective order for submission of confidential documents
and a stipulation to allow, by notice of reliance at trial,
evidence submitted in connection with opposer’s motion for
summary judgment of March 30, 2006 (received by the Board on
April 4, 2006). The record consists of the pleadings; the

connection with the identified goods. This application was filed by and
Opposition No. 91159713
3
file of the involved application; certified status and title
copies of most of opposer’s pleaded registrations; the
declarations of Danny Scott, opposer’s senior director–
promotional products group, tours and gifts and
merchandising, Randall Blackford, opposer’s director-
Budweiser Marketing, George Mantis, president of The Mantis
Group, and Nathan J. Hole, opposer’s counsel, all with
exhibits, all made of record by opposer’s notices of
reliance. Opposer also submitted the testimony of Angela
Ocasio, employed by opposer’s counsel, and Gregory Ward,
Ph.D., linguistics professor at Northwestern University at
Evanston, both with exhibits. Only opposer filed a brief on
the case.
Factual Findings
Opposer produces beer that is identified by the
trademarks BUDWEISER, BUD, BUD LIGHT and several other “BUD-
formative” marks. Opposer began using the mark BUDWEISER in
connection with beer in 1876; opposer began using the mark
BUD in connection with beer in 1939; and opposer began using
the mark BUD LIGHT in connection with beer in 1982.
(Blackford Decl. ¶¶2 & 3.) Opposer is the largest brewer
and marketer of beer in the United States. (Blackford Decl.
¶2.) In 2004, opposer’s beer sales were nearly $8 billion
and its beer advertising was more than $500 million. (Id.,

formerly owned by M&M Sportswear Ltd.
Opposition No. 91159713
4
¶¶5 & 8.) BUDWEISER and BUD LIGHT have been the top two
best selling beers in the United States since 1994. (Id.,
¶6.) Opposer also markets a wide variety of consumer
products, including novelties, apparel and home décor under
its BUDWEISER and BUD-formative marks. (Scott Decl. ¶3.)
Between 2001 and March 2006, opposer’s consumer products
identified by its BUDWEISER and BUD-formative marks totaled
more than $300 million and it spent more than $24 million
advertising and marketing these products. (Id., ¶¶7-8.)
Additionally, opposer licensees the use of its BUDWEISER and
BUD-formative marks in connection with flowers and floral
arrangements, including the sale of flowers and cartons of
opposer’s beer together in gift packages. (Id., ¶¶3-6 and
exh. A-J to Ocasio Dep.) Additionally, opposer has shown
authorized use of its mark THIS BUD’S FOR YOU in connection
with flowers since before the filing date of the application
herein.
Opposer pleaded several registrations that it did not
establish at trial and it submitted status and title copies
of several registrations that were not pleaded.2 These
registrations have not been considered.
The following registrations were pleaded and
established in this record:

2 Registrations pleaded but not established are nos. 2501706, 1443856
and 1828494. Unpleaded registrations are nos. 3011229, 2550770,
3165347, 3029203, 72101,1825937, 3238415, 2010060, 2488727 and 1819549.
Opposition No. 91159713
5
TRADEMARK GOODS REGISTRATION NO.
BUDWEISER beer 64125
BUDWEISER Beer 922481
BUDWEISER Beer 952277
BUD Beer 666367
BUD MAN Beer 999817
BUD LIGHT Beer 1261873
THIS BUD’S FOR YOU Beer 1332479
BUD BOWL Beer 1567443
BUD LIGHT Flying discs, golf
bags, et. al.
1694621
BUD LIGHT Key chains 1681774
BUD LIGHT Clocks & watches 1569580
BUD Caps, hats, sweat
shirts, et. al.
1401344
THIS BUD’S FOR YOU Shirts, et. al. 1632431
BUD BOWL Hats and shirts 1632099
BUDWEISER Radios, telephone
receivers &
sunglasses
1402016
BUD LIGHT Bags sold empty for
equipment, waste
pouches, wallets
et. al.
1699080
BUD LIGHT Towels 1684487
BUD MAN Drinking vessels 2531846

Opposer conducted a consumer survey with results
showing that 63% of respondents, who were purchasers or

Opposition No. 91159713
6
likely purchasers of roses, believed that roses identified
by the mark IF YOU DON’T BUD YOU AIN’T WISER were sponsored
by opposer. (See declaration of George Mantis and exhibits
thereto.) Opposer also submitted the deposition of Dr.
Gregory Ward, its linguistics expert. Dr. Ward conducted a
linguistics analysis of the marks BUDWEISER and IF YOU DON’T
BUD YOU AIN’T WISER and concluded that the “salient”
elements of applicant’s mark are BUD and WISER and that
anyone competent in English and familiar with the brand
BUDWEISER would strongly and immediately associate these
“salient” terms in applicant’s mark with the BUDWEISER
brand.
Regarding applicant, the record establishes only that
applicant has not produced any packaging, sold any goods or
conducted any marketing under the applied-for mark; and that
applicant knew of opposer’s use of its BUDWEISER mark when
it adopted the applied-for mark.
Analysis
Because opposer has properly made most of its pleaded
registrations of record, we find that opposer has
established its standing to oppose registration of
applicant’s mark. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982).
Opposition No. 91159713
7
Priority and Likelihood of Confusion
Because most of opposer’s pleaded registrations are of
record, Section 2(d) priority is not an issue in this case
as to the marks and goods covered by said registrations.
See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).
Our determination of likelihood of confusion under
Section 2(d) must be based on an analysis of all of the
probative facts in evidence that are relevant to the factors
bearing on the likelihood of confusion issue. In re E.I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005); In re Majestic Distilling Company,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
In considering the evidence of record on these factors,
we keep in mind that “[t]he fundamental inquiry mandated by
Section 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). See also
In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209
(TTAB 1999) and the cases cited therein.
Opposition No. 91159713
8
We find, first, that opposer has clearly established
that its BUDWEISER and BUD marks are famous in connection
with beer.3 The fame of opposer’s marks plays a “dominant
role in the process of balancing the DuPont factors.” Recot
Inc. v. M.C. Becton, 214 F.3d 1322, 1327, 54 USPQ2d 1894,
1897 (Fed. Cir. 2000). See Bose Corp. v. QSC Audio Products
Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed. Cir. 2002).
Considering, first, the goods involved herein, it is a
general rule that goods or services need not be identical or
even competitive in order to support a finding of likelihood
of confusion. Rather, it is enough that goods or services
are related in some manner or that some circumstances
surrounding their marketing are such that they would be
likely to be seen by the same persons under circumstances
which could give rise, because of the marks used therewith,
to a mistaken belief that they originate from or are in some
way associated with the same producer or that there is an
association between the producers of each parties’ goods or
services. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991),
and cases cited therein; and Time Warner Entertainment Co.
v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002).

3 It is unnecessary to determine whether, on this record, opposer has
established a family of marks. “Simply using a series of similar marks
does not of itself establish the existence of a family.” J & J
Snackfoods Corp. v. McDonald’s Corp., 932 F.2d 1360, 18 USPQ2d 1889,
1891 (Fed. Cir. 1991). In order to prove a family of marks, opposer
must show that it promotes its marks together. Id.

Opposition No. 91159713
9
Opposer has demonstrated the authorized use by florists
of its BUDWEISER and BUD marks in connection with flowers,
for example, on vases for flower arrangements; authorized
sales of cartons of its beer with flowers in gift packages;
and authorized use of its mark THIS BUD’S FOR YOU in
connection with flowers. Consistent with the fame of
opposer’s marks, which entitles it to a broad scope of
protection, and the evidence of actual use of opposer’s
marks in connection with flowers, we find that the
respective goods are sufficiently similar that, if
identified by confusingly similar marks, confusion as to
source or sponsorship is likely. This du Pont factor weighs
in opposer’s favor.
Regarding the class of purchasers and conditions of
sale, it is clear that both opposer’s beer and many consumer
products, including its licensed use on flowers, identified
by its marks and applicant’s live and dried roses are
offered to the general consumer and these items are not of a
category of expense that will result in a great deal of care
being exercised in purchasing these goods. Similarly, the
channels of trade for the respective goods are, if not the
same, overlapping in that the respective products will be
available in the same customary retail establishments for
such goods.
Opposition No. 91159713
10
Therefore, these du Pont factors also weigh in
opposer’s favor.
Turning to the marks, we note that while we must base
our determination on a comparison of the marks in their
entireties, we are guided, equally, by the well established
principle that, 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 consideration of
the marks in their entireties.” In re National Data Corp.,
732 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Although
there are specific differences between the marks, "a
purchaser is less likely to perceive differences from a
famous mark." B.V.D. Licensing v. Body Action Design, 846
F.2d 727, 730, 6 USPQ2d 1719, 1722 (Fed. Cir. 1988) (Nies,
J., dissenting)(emphasis in original), and quoted with
approval in Kenner Parker Toys, Inc. v. Rose Art Industries,
Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir 1992).
In view of the fame of opposer’s marks and the evidence
regarding consumer perceptions of applicant’s mark, we find
that consumers viewing applicant’s mark, IF YOU DON’T BUD
YOU AIN’T WISER, are likely to perceive the BUD and WISER
portions of the mark as dominant and as a reference to
opposer’s BUDWEISER mark. Therefore, we conclude that the
Opposition No. 91159713
11
marks are sufficiently similar that confusion as to source
or sponsorship is likely. Thus, this du Pont factor also
weighs in opposer’s favor.
When we consider the record and the relevant likelihood
of confusion factors, and all of opposer’s arguments
relating thereto, including those arguments not specifically
addressed herein, we conclude that the relevant du Pont
factors discussed herein weigh conclusively in favor of our
finding that the contemporaneous use of applicant’s mark and
opposer’s famous marks on the goods involved in this case is
likely to cause confusion as to the source or sponsorship of
such goods.
Dilution
In view of our conclusion on the issues of priority and
likelihood of confusion, it is unnecessary to consider
opposer’s claim of dilution.
Decision: The opposition is sustained.