Atlas Brewing Company, LLCv.Atlas Brew Works LLC

Trademark Trial and Appeal Board

Sep 22, 2015

No. 91210379 (T.T.A.B. Sep. 22, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 22, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Atlas Brewing Company, LLC
v.
Atlas Brew Works LLC
________

Opposition No. 91210379
_______

Lema A. Khorshid, Thomas Carroll and Perry Gattegno of Fuksa Khorshid, LLC,
for Atlas Brewing Company, LLC.

Maurine L. Knutsson, Helen Hill Minsker, Anna L. King and Evan M. Clark of
Banner & Witcoff, Ltd. for Atlas Brew Works LLC.
_____

Before Seeherman, Bucher and Zervas,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Atlas Brew Works LLC (“Applicant”) is the owner of application Serial
No. 85642549 filed on June 4, 2012, under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b), for the mark ATLAS in standard characters for “beer” in
International Class 32.
Opposition No. 91210379
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In its First Amended Notice of Opposition,1 Atlas Brewing Company, LLC
(“Opposer”) alleges use analogous to trademark use of ATLAS BREWING
COMPANY for selling, promoting and marketing beer prior to June 1, 2012.2
Opposer claims (i) geographic descriptiveness of Applicant’s mark pursuant to
Section 2(e)(2) of the Trademark Act, 15 U.S.C. § 1052(e)(2); (ii) likelihood of
confusion between ATLAS and ATLAS BREWING COMPANY pursuant to
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d); and (iii) lack of a bona fide
intent to use Applicant’s mark at the time of the filing of its application pursuant to
Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).
Applicant denied Opposer’s salient allegations in its Answer to the Amended
Notice of Opposition.
The parties have fully briefed the case.
The Record
On December 3, 2014, the parties filed a “Joint Motion for Entry of Evidence into
the Record,” which stipulated that “all of the summary judgment evidence be
treated as properly of record for purposes of final decision.”3 (On June 18, 2014, the

1 Amended Notice of Opposition, ¶ 6, 7 TTABVUE 28. Citations in this opinion will be to the
TTABVUE docket entry number and the electronic page number where the document or
testimony appears. Because the Board primarily uses TTABVUE in reviewing evidence, the
Board prefers that citations to material or testimony in the record that has not been
designated confidential include the TTABVUE docket entry number and the TTABVUE
page number. For material or testimony that has been designated confidential and which
does not appear on TTABVUE, the TTABVUE docket entry number where such material or
testimony is located should be included in any citation. See Turdin v. Trilobite, Ltd., 109
USPQ2d 1473, 1476 n.6 (TTAB 2014).
2 Opposer incorrectly identifies the filing date of Applicant’s application as June 1, 2012.
Amended Notice of Opposition ¶ 2, 7 TTABVUE 29.
3 31 TTABVUE 1.
Opposition No. 91210379
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Board denied Opposer’s motion for summary judgment on the grounds of no bona
fide intent to use and geographic descriptiveness.4) The “Joint Motion” specifically
identified (but is not limited to) (i) Opposer’s motion for summary judgment;
(ii) Applicant’s brief in opposition to Opposer’s motion for summary judgment;
(iii) Opposer’s reply brief in support of its summary judgment motion; and
(iv) Applicant’s confidential exhibits to the declaration of Justin Cox submitted in
support of Applicant’s opposition to Opposer’s motion for summary judgment. The
Board approved the “Joint Motion” on December 10, 2014.5
The parties also filed a stipulation on November 11, 2014, providing that various
photographs (taken August 19, 2014) be stipulated into the evidentiary record.6 The
Board approved the stipulation on November 26, 2014.7
Thus, in addition to Applicant’s opposed application which is automatically of
record pursuant to Trademark Rule 2.122(b), the evidence of record consists of:
● Opposer’s Motion for Summary Judgment and related exhibits (7
TTABVUE);
● Opposer’s Reply in Support of Opposer’s Motion for Summary
Judgment (12 TTABVUE);
● Opposer’s Notice of Reliance submitting Opposer’s Public Way
Application to the City of Chicago and Public Way Permit granted by
the City of Chicago (17 TTABVUE);
● the testimony deposition of John Saller, Opposer’s full-time brewer,
submitted by Opposer, and exhibits thereto (18 TTABVUE);

4 13 TTABVUE 1.
5 34 TTABVUE 1. Of course, the briefs themselves are not evidence of anything but
constitute attorney argument.
6 28 TTABVUE 1.
7 29 TTABVUE 1.
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● the testimony deposition of Dale Steven Soble, Opposer’s managing
member, submitted by Opposer, and exhibits thereto (19 TTABVUE);
● Applicant’s Opposition to Opposer’s Motion for Summary Judgment
and related exhibits (9 TTABVUE), including the declaration of Justin
Cox, Applicant’s Chief Executive Officer;
● Photographs relating to Atlas Brewing Company taken August 19,
2014 (28 TTABVUE);
● Mr. Cox’s testimony deposition submitted by Applicant, and related
exhibits (32-33 TTABVUE); and
● Applicant’s Notice of Reliance, including various responses by
Opposer to: (i) Applicant’s First Set of Interrogatories; (ii) Applicant’s
First Set of Admission Requests; and (iii) Applicant’s Second Set of
Admission Requests (35 TTABVUE).
Despite Opposer’s contention8 to the contrary, Opposer’s application Serial
No. 85762603 for the mark ATLAS BREWING COMPANY is not in evidence.
Opposer did not submit a copy of its application during its testimony period and the
application is not automatically of record because it is not the subject of this
proceeding. Cf. Trademark Rule 2.122(b).
Standing
Standing is an essential element of Opposer’s case which, if not established, will
defeat Opposer’s claim. Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024,
213 USPQ 185, 189 (CCPA 1982). An opposer must have “a ‘real interest’ in the
outcome of a proceeding in order to have standing.” Richie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999). The evidence of record shows that
Opposer uses the trade name and trademark ATLAS BREWING COMPANY in

8 See Applicant’s Brief at 5, 37 TTABVUE 6.
Opposition No. 91210379
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connection with the manufacture and sale of beer. This is sufficient to demonstrate
that Opposer has a real interest in this proceeding and, therefore, has standing.9
No Intent to Use
Opposer did not discuss in its main brief its claim that Applicant did not have a
bona fide intent to use the mark ATLAS in commerce. We therefore find that
Opposer has waived this claim.

Geographic Descriptiveness
Section 2(e)(2) of the Trademark Act prohibits registration on the Principal
Register of a mark that is primarily geographically descriptive of the goods or
services named in the application. The test for determining whether a term is
primarily geographically descriptive is whether:
1. the primary significance of the mark is a generally known
geographic location; and
2. purchasers would be likely to believe that the goods or
services originate in the geographic place identified in the
mark.

9 In order for a plaintiff to prevail on a claim of likelihood of confusion based on its
ownership of common law rights in a mark, the mark must be distinctive, inherently or
otherwise, and plaintiff must show priority of use. See Otto Roth & Co. v. Universal Foods
Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981).
In this case, Opposer maintains that Applicant’s ATLAS mark is geographically
descriptive. Applicant, however, has not alleged that Opposer’s ATLAS BREWING
COMPANY mark is geographically descriptive. (A geographic composite mark, composed of
geographic matter coupled with additional wording, may be considered geographically
descriptive if the primary significance of the composite is geographic. See In re Save Venice
New York Inc., 259 F.3d 1346, 59 USPQ2d 1778 (Fed. Cir. 2001).) Because Applicant has
not questioned the distinctiveness of ATLAS BREWING COMPANY, and we know of no
circumstances in the case which would have put Opposer on notice of this defense, we find
ATLAS BREWING COMPANY to be distinctive. See The Chicago Corp. v. North American
Chicago Corp., 20 USPQ2d 1715 (TTAB 1991). See also Shalom Children’s Wear Inc. v. In-
Wear A/S, 26 USPQ2d 1516 (TTAB 1993).
Opposition No. 91210379
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In re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889, 891 (CCPA 1982). See also In re
Societe Generales des Eaux Minerales de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450,
1452 (Fed. Cir. 1987) (“a prima facie case of unregistrability cannot be made out
simply by evidence showing that the mark sought to be registered is the name of a
place generally known to the public; it is also necessary to show that the public
would make a goods/place association, i.e., believe that the goods for which the
mark is sought to be registered originate in that place.”); In re Hollywood Lawyers
Online, 110 USPQ2d 1852 (TTAB 2014). If the goods do in fact originate from the
place named in the mark, the requisite goods/place association can be presumed.
See In re Handler Fenton Westerns, Inc., 214 USPQ 848 (TTAB 1982).
The purchasing public in this case consists of the average American beer
consumer. See In re Brouwerij Nacional Balashi NV, 80 USPQ2d 1820, 1829 (TTAB
2006) (“We concur that in dealing with the supposed reactions of a segment of the
American public, in this case the average American beer consumer … .”) Because
Applicant’s identification of goods is not geographically restricted, the purchasing
public is not limited to consumers of beer in Washington, DC, as Opposer maintains
at p. 28 of its Brief (“the D.C. public is the only relevant public for such an inquiry,
because Applicant markets and sells its products ‘exclusively’ within D.C.”).10
Opposer maintains that “Atlas” identifies a geographic area in Washington, D.C.
For support, Opposer relies on the following evidence:

10 37 TTABVUE 29. We note that the record shows that Applicant currently sells its
products only in Washington, DC. However, the application is based on intent-to-use, and
therefore there is no requirement that Applicant sell its goods in interstate commerce at
this time.
Opposition No. 91210379
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● Mr. Cox’s deposition testimony:
Q. And is the H Street neighborhood known by any other names?
A. Yes
Q. What other names is it known by?
A. Near Northeast, Capitol Hill East, SoFlo, the Atlas District.
Q. So “Atlas District” is a term to refer to that neighborhood?
A. Yes.
***
Q. Does it surprise you that people are referring to H Street Northeast
as Atlas District?
A. No.
Q. Why not?
A. I mean, it’s a term that people use.
Q. Do a lot of people come into your brewery?
A. Yes.
Q. How many people come into your brewery on a weekly basis?
A. Depends on the week, but I’d say somewhere around 500 people
come through.
Q. Do those people ever -- do they ever ask you about your name with
respect to the geographic area known as the Atlas District?
A. They do.11

● Applicant’s response to Opposer’s Interrogatory No. 7:
Interrogatory Request No.7:
Describe in detail the process in which Applicant created
and/or chose Applicant’s Mark, including when it was created,
the reasons for its creation, and the person(s) involved in its
creation.

Response:
… Applicant responds that it originally intended to use the
term VOLSTEAD with its beer. On May 9, 2012, Applicant
received an Office Action in its U.S. trademark application for
“Volstead Beer Works” citing a likelihood of confusion refusal.
Accordingly, in late May, 2012 Applicant’s Chief Executive
Officer, Justin Cox, began considering the mark ATLAS as an
alternative. This was because the “Atlas District” is the name of
the commercial strip neighborhood in the District of Columbia

11 Cox Dep. at 72, 75-76, 32 TTABVUE 75, 78-79.

Opposition No. 91210379
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near the intended location of the brewery. Moreover, the name
was determined to go well with the logo designed by Applicant’s
designer, Alan Guidera, for the previous mark and a preliminary
sketch of the tap handle by Mr. Guidera was found to make a
strong impression. Applicant’s Chief Executive Officer also
concluded that the initials of the intended brewery name, Atlas
Beer Works, “ABW” would be useful for promotional purposes.
(Emphasis added.)12

● An email from Mr. Cox dated June 5, 2012, stating:
Hello all,
I wanted to pass along an update on our progress with
Volstead. First thing is we’ve run into a trademark issue with
the name Volstead Beer Works. House Spirits distillery in
Portland, OR applied to register a trademark for “Volstead” in
the distilled spirits category about two months before we applied
to register in the beer category. That does not necessarily
preclude our using that name, but it does cloudy the water in
terms of our chance of parsing the trademark details out in
court. Rather than run that risk, we reached out to the CEO of
House Spirits in hopes of reaching an agreement allowing us to
use the name without litigation. I spoke to him in person briefly
yesterday, he plans to get back to me in the next couple of days
after talking with his lawyers. … I am not hopeful we will be
able to use the name Volstead.

After racking our brains through hundreds of alternatives,
we landed on Atlas Beer Works. The Atlas District is the name of
the commercial strip neighborhood in DC that we will be near. I
think the name goes well with our current logo and my designer
sent the attached preliminary sketch of a tap handle that makes
a strong impression. We think the name is simple, strong, and
memorable. And the initials ABW will be useful in swag, etc.
Would love to hear your thoughts.13 (Emphasis added.)

● The Atlas Theater webpage on the H Street Northeast corridor,
authenticated by Mr. Cox at p.74 of his deposition, stating, “Today, this
neighborhood is known as the Atlas District.”14

12 32 TTABVUE 220.
13 Cox Dep. Exh. 10, 32 TTABVUE 266.
14 Cox Dep. Exh. 31, 32 TTABVUE 745.
Opposition No. 91210379
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● A webpage from “Atlas District D.C.,” authenticated by Mr. Cox at
p. 75 of his deposition, stating, “atlasdistrictdc.com is a convenient
online resource with information regarding businesses and events on H
Street Northeast, also known as Atlas District.”15
● A webpage from yelp.com, authenticated by Mr. Cox at p. 78 of his
deposition, containing a business listing for “Browsing H Street
Corridor/Atlas District/Near Northeast, Washington, DC.”16
● A map showing driving directions from Applicant’s brewery to “H
Street Corridor” or “atlas district dc.”17
Applicant maintains that “[a]lthough the “Atlas District” is a nickname that has
been used to describe the H Street area in Washington, D.C., Opposer has failed to
show that a significant portion of purchasers would, upon seeing ATLAS in
connection with Applicant’s beer, conclude that it was a place name and that the
beer came from there, which it in fact does not.”18 In addition, Applicant states that
Opposer’s evidence does not establish that the geographic meaning of Atlas is
generally known”; and that Opposer’s evidence demonstrates that “Atlas District” is
only one of a few designations for the geographic area better known as “H Street
District,” “H Street Northeast,” “H Street Corridor,” or simply as “H Street.”19
Applicant points to a District of Columbia publication, the Washington, D.C.

15 Cox Dep. Exh. 32, 32 TTABVUE 743.
16 Cox Dep. Exh. 33, 32 TTABVUE 746.
17 Cox Dep. Exh. 34, 32 TTABVUE 748.
18 Applicant’s Brief at 19, 38 TTABVUE 25.
19 Applicant’s Brief at 22, 38 TTABVUE 28. Cox Decl. ¶ 29; 9 TTABVUE 30.
To the extent that Opposer contends that Atlas is a nickname for “H Street,” it should be
noted that a geographic nickname is treated the same as the actual name of the geographic
location, if it is likely to be perceived as such by the purchasing public. See In re Spirits of
New Merced, LLC, 85 USPQ2d 1614 (TTAB 2007) (“Yosemite,” a well-recognized and
frequently used shorthand reference to Yosemite National Park and the Yosemite region in
general conveys a readily recognizable geographic significance).
Opposition No. 91210379
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Economic Partnership’s D.C. Neighborhood Profiles 2013, which designates the
neighborhood simply as “H Street.”20 Applicant offers a different meaning for the
term “Atlas” based on the dictionary definition taken from the online version of
Merriam-Webster’s Dictionary accessed at merriam-webster.com/dictionary/atlas on
March 15, 2014; “a book of maps,” and “a Titan who for his part in the Titans’ revolt
against the gods is forced by Zeus to support the heavens on his shoulders.”21 (The
dictionary does not identify “Atlas” as a district in Washington, D.C.) Applicant
points to Mr. Cox’s declaration filed in opposition to Opposer’s summary judgment
motion, which states in relevant part:
12. [While] “racking our brains” for a new name, “... we landed on
Atlas Beer Works. The Atlas District is the name of the commercial
strip neighborhood in DC that we will be near. I think the name goes
well with our current logo and my designer sent the attached
preliminary sketch of a tap handle that makes a strong impression. We
think the name is simple, strong and memorable. And the initials ABW
will be useful in swag, etc. ... .” At the time I sent this email, Applicant
had not yet signed a lease for its brewery, so we did not know the exact
location for it. However, we expected it would be somewhere in North
East Washington, which included the commercial district known as the
Atlas District, among others.

***

28. As explained in the June 5, 2012, email to investors (Ex. B to
Opposer’s Summary Judgment Motion), the selection of the ATLAS
name also was desirable because it fit well with our marketing plan.
We expected that our brewery would be near the Atlas District in the
District of Columbia. However, the proximity of the Atlas District was
not the sole basis for selecting ATLAS, as was explained both in the
June 5 email to investors and in my Affidavit before the USPTO
(Exhibits Band F to Opposer’s Summary Judgment Motion). Indeed, at
the time we selected the ATLAS name, we had not yet signed a lease
for our premises. As it turned out, after negotiations for two different

20 Applicant’s summary judgment brief, Exh. D, 9 TTABVUE 103.
21 Applicant’s summary judgment brief, Exh. B, 9 TTABVUE 95.
Opposition No. 91210379
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leases in the NoMa neighborhood fell through, we eventually located
our brewery in the Ivy City Neighborhood in DC, which is near the
Atlas District, but not within the Atlas District.

29. Although the Atlas District is a neighborhood in the District of
Columbia, I do not believe that the name Atlas District is generally
known. In fact, it is not even the most common name for that
neighborhood, which is more commonly known as “H Street District,”
“H Street Northeast”, “H Street Corridor”, or simply “H Street”.

30. I am personally familiar with the types of businesses located in
the Atlas District. The Atlas District was named after the Atlas
Theater, and as evidenced by Exhibits H and I to Opposer’s Summary
Judgment Motion, it is known as an “Arts and Entertainment” district.
To the best of my knowledge, the Atlas District is not particularly
known for beer, nor are purchasers likely to believe that Applicant’s
beer originates from the Atlas District.

31. Applicant’s goods, namely, beer, do not originate from the
neighborhood in DC known as both the Atlas District and the H Street
District.22

Further, Applicant explains its “admissions” as follows:
Applicant did identify proximity to the Atlas District as a factor to
Applicant’s investors, however, in that same email Applicant’s CEO
explained that ATLAS fit with the existing logo, was simple and
strong, and the letters ABW would be useful in marketing efforts.23

Opposer’s Section 2(e)(2) claim can be disposed of by a determination of whether
Applicant’s mark sought to be registered primarily denotes a geographic place,
namely, the so-called Atlas District in Washington, D.C. See In re International
Taste Inc., 53 USPQ2d 1604, 1605 (TTAB 2000). The record does not establish that
the primary meaning of ATLAS is the geographic location. First, the term has more
well-known meanings, as reflected in the dictionary evidence, i.e., a “book of maps”
or a “titan,” rather than the district in Washington, D.C. Second, the probative

22 Applicant’s summary judgment brief, Exh. B, 9 TTABVUE 27, 29-30.
23 Applicant’s Brief at 21, 38 TTABVUE 27.
Opposition No. 91210379
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value of the theater and district website evidence which identity “Atlas District” as
the name of an area in Washington, D.C. is reduced because (i) the websites refer to
the geographic area as “Atlas District” rather than simply “Atlas,” (ii) there is no
evidence tending to show how widely the webpages have been viewed by the beer
consuming public, and (iii) they belong to businesses within the geographic location
rather than from sources beyond or unrelated to the geographic location. Further,
the one government publication in the record, Washington, D.C., Economic
Partnership’s D.C. Neighborhood Profiles 2013, does not identify the area as Atlas,
but as “H Street.” At best, it appears from the evidence that the district is an up-
and-coming area which is in the process of developing the name “Atlas District”
because the area is centered on a vintage 1950 movie theater with the name “Atlas.”
Mr. Cox, Applicant’s CEO, has acknowledged that there is an area called the
Atlas District, and that depending on the week, somewhere around 500 people come
through Applicant’s establishment and ask about Atlas “with respect to the
geographic area known as the Atlas District.” He referred to the Atlas District in his
declaration and Applicant referred to the district in its answer to Interrogatory
No. 7. However, the testimony did not shed any light on the question as to whether
average American beer consumers know of the geographic area, or whether they
would understand ATLAS, without the word DISTRICT, to refer to that location.
Also, Mr. Saller, who is a professional brewer, did not identify the Atlas District of
Washington, D.C. when he testified as follows regarding the selection of “Atlas” by
Opposer:
Opposition No. 91210379
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Q. So other than the historical brewery known as Atlas [founded
in Chicago, during the prohibition period], was there any other
inspiration for the name to your knowledge?

A. Yeah, well, we liked that it has references both to Greek
mythology and to the, you know, atlas like maps and also
Chicago.24

Thus, when we consider the evidence as a whole, we are not persuaded that
“Atlas” identifies a geographic location known to the average American beer
consumer. Rather, we find that this geographic location is minor and obscure, and
as such it is not a generally known geographic location. In In re Societe Generale des
Eaux Minerales de Vittel S.A., 3 USPQ2d at 1452, our primary reviewing court
stated:
There can be no doubt that the PTO has established that Vittel is in
fact the name of a small town in the Voges mountain region of France
where there is a resort with mineral springs - a spa - where the water is
bottled and thence distributed somewhere, but how many people in this
country know that? Certainly Vittel is remote and we deem the evidence
produced by the PTO insufficient to show that it is not obscure. We think
the evidence is inadequate to show that the bulk of cosmetics purchasers,
or even a significant portion of them, would upon seeing the word Vittel
on a bottle of skin lotion or the like, conclude that it is a place name and
that the lotion came from there, rather than simply a trademark or trade
name of a manufacturer like Chanel, Bourgois, or Vuitton.
See also, In re Bavaria St. Pauli Brauerei AG,
222 USPQ 926, 927-28 (TTAB 1984) (“JEVER” and
design for “beer” produced in the German town of
Jever has an obscure geographical meaning and is
not primarily geographically descriptive); In re

24 Saller Dep. at 10-11, 18 TTABVUE 6.
Opposition No. 91210379
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Brauerei Aying Franz Inselkammer KG, 217 USPQ 73, 75 (TTAB 1983)
(“AYINGER,” in an application to register the mark “AYINGER BIER” (“BIER”
disclaimed) for “beer” produced in the German town of Aying, has a minor, remote
or obscure geographical significance and not is primarily geographically descriptive,
because “the geographic significance of a name is lost on the public because of
obscurity, there too, the usage becomes arbitrary.”).
Accordingly, because Opposer has failed to prove the first prong of the test for
geographic descriptiveness, the opposition on this ground is dismissed.
Likelihood of Confusion
There are two elements to proving the ground of likelihood of confusion, priority
and likelihood of confusion.
Priority
To establish priority, an opposer must show it has proprietary rights. Herbko
International, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378
(Fed. Cir. 2002).25 See also, Otto Roth & Co. v. Universal Foods Corp., 640 F.2d
1317, 1320, 209 USPQ 40, 43 (CCPA 1981). These proprietary rights may arise from
a prior registration, prior trademark use, prior use as a trade name, or prior use
analogous to trademark use. Id. Opposer claims prior rights in the trademark
ATLAS BREWING COMPANY by virtue of use analogous to trademark use.
“‘[A]nalogous use’ can succeed … only where the analogous use is of such a nature
and extent as to create public identification of the target term with the opposer's

25 Opposer characterizes Herbko as a non-precedential decision. Applicant’s Reply Brief at
12, 39 TTABVUE 13. This is not correct.
Opposition No. 91210379
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product or service.” T.A.B. Systems v. PacTel Teletrac, 77 F.3d 1373, 37 USPQ2d
1879, 1881 (Fed. Cir. 1996). The Federal Circuit has required that evidence of such
analogous use enable the factfinder to infer that “a substantial share of the
consuming public had been reached,” and that such use “must have a substantial
impact on the purchasing public.” Id. at 1882. In Liqwacon Corp. v. Browning-Ferris
Industries, Inc., 203 USPQ 305, 309 (TTAB 1979), the Board discussed analogous
use:
[T]he use of a mark necessary to bestow a proprietary right therein
need not be a technical trademark or service mark use, but must be an
“open and notorious” use reaching purchasers or prospective
purchasers of the goods or services for which the mark is employed;
and the fact that a party first conceived the mark and discussed it
and/or used it within an organization or with persons outside of the
organization, other than potential customers, in anticipation of and in
preparation for a subsequent use in trade does not constitute an “open”
use and therefore is insufficient to establish priority of use as of the
time of these activities.

Here, Applicant has not submitted evidence of use prior to the June 4, 2012
filing date of its intent-to-use application. Therefore, the earliest date on which
Applicant may rely is the June 4, 2012 filing date of its application. Cent. Garden &
Pet Co. v. Doskocil Mfg. Co., 108 USPQ2d 1134, 1140 (TTAB 2013) (“for when an
application or registration is of record, the party may rely on the filing date of the
application for registration, i.e., its constructive use date”); Syngenta Crop Prot. Inc.
v. Bio-Chek LLC, 90 USPQ2d 1112, 1119 (TTAB 2009) (“applicant may rely without
further proof upon the filing date of its application as a ‘constructive use’ date for
purposes of priority”). We must therefore determine whether Opposer can establish
proprietary rights in its pleaded mark before that date.
Opposition No. 91210379
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Opposer asserts that it has made use analogous to trademark use. According to
Opposer, it “engaged in three types of use that all accrue trademark rights in the
ATLAS mark: government/regulatory approval, pre-sales commercial activity that
was necessary in the ordinary course of its particular industry, and pre-sales
marketing and public relations – most notably through social media.”26 It also
argues in its Reply Brief that its signage establish rights in its mark.27 Each is
discussed below.
Government/Regulatory Approvals
Opposer cites to state, municipal and federal licensing and permit applications,
such as the application it filed for formation of an Illinois limited liability company,
Atlas Brewing Company, LLC, on May 26, 2011;28 an assumed name application on
April 6, 2012, with the Illinois Secretary of State for “Atlas/Seven Ten”;29 a Public
Way Grant application under the name ATLAS from the City of Chicago’s
Department of Zoning;30 and a U.S. Department of Treasury Federal Tax and Trade
Bureau application on April 2, 2012.31
The formation of a limited liability entity using the term ATLAS is not
sufficient. See Liqwacon 203 USPQ at 309, 316 (“while prior use of a trade name
may be sufficient to give rise to superior rights in a mark, the mere act of

26 Opposer’s Brief at 19, 37 TTABVUE 20.
27 Applicant’s Reply Brief at 12 – 13, 38 TTABVUE 18-19.
28 Soble Dep. Exh. 5, 19 TTABVUE 59.
29 Soble Dep. Exh. 14, 19 TTABVUE 99.
30 Soble Dep. Exh. 20, 19 TTABVUE 109.
31 Soble Dep., Exh 11, 19 TTABVUE 95.
Opposition No. 91210379
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incorporation, in itself, does not establish such priority of use.”). The other filings
cited by Opposer are also insufficient; to confer trademark rights, the uses must be
“‘open and notorious’ use[s] … calculated to come to the attention of customers and
prospective customers for the corporation’s present or prospective offerings.” Id.
Governmental filings are not “calculated to come to the attention of customers and
prospective customers for the corporation’s present or prospective offerings.” Id.
Commercial Activity
Opposer relies on the following:
● November 16, 2011
“Atlas Brewing Company” signed a contract with, and made a first
payment to, Premier Stainless Systems for the purchase of stainless
steel brewing tanks, heaters, pumps, valves and other specialized
beer-making equipment.32 On the same date, “Atlas Brewing” made
its first installment payment to Premier.33
● January 1, 2012
Atlas Brewing Company LLC entered into a Management and
Licensing Agreement with Lucky Strike Corp. in connection with
the operation of a restaurant and to serve beer under Lucky
Strike’s preexisting City of Chicago liquor license.34
● February and March of 2012
Opposer engaged and worked with a beer branding specialist.35
● April 11, 2012
“Atlas Brewery” contracted with Contract Industries, Inc., a
furniture vendor, to provide booths, benches and tables to Opposer’s
brewery.36

32 Soble Dep. Exh. 6, 19 TTABVUE 62.
33 Soble Dep. Exh. 7, 19 TTABVUE 70.
34 Soble Dep. 24-25, 19 TTABVUE 13; Soble Dep. Exh. 8, 19 TTABVUE 75.
35 Saller Dep., 9, 18 TTABVUE 6; Soble Dep. Exh. 10, 19 TTABVUE 87.
36 Soble Dep. Exh. 18, 19 TTABVUE 107.
Opposition No. 91210379
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● April 27, 2012
“Atlas Brewery” executed a contract with Best Neon Sign Company
to create exterior signage.37 Additionally, Barker Nestor, an
architecture firm retained by Opposer for construction of
components of Opposer’s facility, submitted an invoice to Mr. Soble
for the project identified as “Atlas Brewery.”38
● May 7, 2012
Mr. Saller, on Atlas Brewing Company’s behalf, communicated in
writing with the Cook County Farm Bureau about selling brewing
byproduct to farmers.39
● May 31, 2012
North Community Bank issued a statement to “Atlas Brewing
Company LLC” and Heartland Payment Systems issued a
“Merchant Statement” to “Atlas Seven Ten.”40
Inasmuch as these communications and agreements are not “‘open and
notorious’ use[s] … calculated to come to the attention of customers and prospective
customers for the corporation’s present or prospective offerings,” they are not
sufficient to establish Opposer’s priority rights. See Liqwacon 203 USPQ at 316. See
also Computer Food Stores Inc. v. Corner Store Franchises, Inc., 176 USPQ 535, 539
(TTAB 1973) (“These [private conversations, letters, and negotiations with
architects, builders, and prospective venders of equipment for use in a contemplated
store] were more or less internal or organizational activities which would not
generally be known by the general public and there is nothing to suggest that an
effort was made in this direction during this period.”).

37 Soble Dep. Exh. 20, 19 TTABVUE 109.
38 Soble Dep. Exh. 22, 19 TTABVUE 115. The invoice notes previous payments on July 20,
2011, and August 26, 2011, as well as Opposer’s alterations to building plans on
February 8, 2012.
39 Saller Dep. Exh. 3, 18 TTABVUE 34.
40 Soble Dep. Exh. 22 and 24, 19 TTABVUE 115 and 122-127.
Opposition No. 91210379
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Marketing Efforts
Opposer points to the following marketing efforts to secure rights in ATLAS:
● April 30, 2012
Opposer launched its Twitter page.41
● May 14, 2012
Opposer launched a Facebook page.42
● May 22, 2012
Opposer entered into an agreement with Rewards Network, a daily
deals operation with national reach which provides members with
rewards such as miles and points.43
We are not persuaded that these marketing efforts created an association in the
minds of the purchasing public between Opposer’s mark and its goods and that they
reasonably had a substantial impact on the purchasing public before Applicant’s
June 4, 2012 filing date. See Herbko International, 64 USPQ2d at 1378. The act of
joining Twitter on April 30, 2012, or Facebook on May 14, 2012, does not by itself
establish use analogous to trademark use. Cf. Brookfield Communications, Inc. v.
West Coast Entertainment Corp., 174 F.3d 1036, 50 USPQ2d 1545, 1556 (9th Cir.
1999) (registration of a domain name does not by itself constitute use for purposes
of establishing priority of use). Prior to June 4, 2012, Opposer sent a total of ten
Tweets (i.e., postings on Twitter), some of them re-Tweets, which generally concern
beer but not necessarily beer brewed by Opposer,44 and there is no evidence
concerning consumer exposure to the Tweets or to Opposer’s Facebook page. Most of

41 Saller Dep. 49, 18 TTABVUE 24, Saller Exh. 1, 18 TTABVUE 34-32.
42 Saller Dep. 26, 18 TTABVUE 13-14, Saller Exh. 2, 18 TTABVUE 33.
43 Soble Dep. 27, 19 TTABVUE 14, Soble Exh. 9, 19 TTABVUE 71-74 .
44 Saller Dep. 49-52, 18 TTABVUE 24-25.
Opposition No. 91210379
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the Facebook postings do not concern beer, and all are dated after Applicant filed its
application. Further, there is no testimony regarding when members of the Rewards
Network started seeing Opposer’s name or the actual exposure Opposer received
through the Rewards Network. Moreover, because the Rewards Network concerns
restaurant services, not beer or brewing, it is unlikely that potential consumers
would have associated ATLAS BREWING COMPANY with Opposer’s ATLAS brand
beer through the Rewards Network activity.
Signage
Opposer erected two signs depicting the mark sometime in May 2012, at 2747
Lincoln Avenue, characterized as a busy street in Chicago.45 One sign is on the face
of the building and is eight to ten feet long, and the other sign extends outwards
from the building and is three feet by four feet in size. Opposer placed the order for
the signs on April 27, 2012, and received a permit from the City of Chicago to erect
the signs on May 3, 2012.46 The record does not specify on what date Opposer
erected the signs.
The record reflects the following facts regarding Opposer’s business(es) at 2747
Lincoln Avenue:
1. Opposer has a restaurant and a brewery, and is under common
ownership with an entity that owns and operates a bowling alley next
door named Seven Ten Lounge.

2. Prior to May 4, 2012, the restaurant, the brewery and the bowling
alley were under construction. The restaurant and the bowling alley

45 Soble Dep. at 42-43, 19 TTABVUE 21-22 (“There is a lot of traffic on Lincoln. It’s a
highly-traveled street.”). Exh. A to Joint Motion (filed November 11, 2014), 28 TTABVUE 5.
46 Soble Dep. at 62, 68, 19 TTABVUE 30-31, 33. Soble Dep. Exh. 21, 19 TTABVUE 114.
Opposition No. 91210379
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opened for business on May 4, 2012,47 and Opposer first offered
restaurant and bar services under the ATLAS BREWING COMPANY
mark on May 4, 2012.48

3. The sign for the bowling alley, “Seven Ten Lounge,” is “[a] little further
down the street” from the ATLAS BREWING COMPANY sign and the
facades of the two business have different appearances.49 The facilities
have separate entrances, and the ATLAS BREWING COMPANY sign
which extends from the building is “above the restaurant entrance”
and the “Seven Ten” sign is above the entrance to the bowling alley.50

4. Opposer’s brewery is located in the same location as its restaurant.
(“Q. So is the brewery located in the same location as the brew pub
restaurant? A. Yeah. Yeah. You see it when you are sitting, eating your
dinner, the glass walls. You see the stainless steel tanks. It’s part of
the atmosphere for sure.”).51

5. Applicant received its brewing equipment on April 23, 2012.52

6. Sales of Opposer’s ATLAS BREWING COMPANY beer did not
commence until July 19, 2012, after Opposer received its license from
U.S. Department of Treasury Federal Tax and Trade Bureau.53

The record before us does not persuade us that Opposer’s signage had a
substantial impact on the purchasing public prior to June 4, 2012, when Opposer
filed its trademark application. First, Opposer’s evidence does not reflect the date

47 Saller Dep. at 21-22, 18 TTABVUE 11-12. See also Saller Exh. 1, 18 TTABVUE 31, a
Twitter post dated May 4, 2012, where Opposer tweeted “Not brewing yet but the bowling
alley reopens tonight … .”
48 Opposer’s response to Int. Nos. 1-3, Exh. A, Applicant’s Notice of Reliance, 35 TTABVUE
19.
49 Saller Dep. at 46, 18 TTABVUE 23.
50 Saller Dep. at 46, 18 TTABVUE 23.
51 Saller Dep. at 15, 18 TTABVUE 8-9.
52 Saller Dep. at 17, 18 TTABVUE 9-10.
53 Soble Dep. at 88, 19 TTABVUE 42-43; Saller Dep. at 56-57, 18 TTABVUE 27-28;
Opposer’s Response to Int. Nos. 1-3, Applicant’s notice of reliance Exh. A, 35
TTABVUE 19. See also Opposer’s Resp. to Req. for Admissions No. 28, Exh. E to
Applicant’s Notice of Reliance, 35 TTABVUE 55.

Opposition No. 91210379
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Opposer installed its signs. The record only indicates that Opposer installed its
signs in May 2012; it is therefore possible that Opposer’s signs went up as late as
May 31, 2012, just four days before Applicant filed its intent-to-use application.
Second, even if Opposer erected the signs in early May 2012, the signs appear in
front of what would be viewed as a restaurant or bar, and therefore passersby would
not be aware that the signs were identifying a product, i.e., beer. Thus, to the extent
Opposer argues that the signage in front of its premises created a substantial
impact among members of the consuming public of a connection between its mark
ATLAS BREWING COMPANY and its beer, either by the signage alone or in
combination with its other efforts prior to June 4, 2012, we are not persuaded.
We turn now to an additional argument raised by Opposer, i.e., that there are
special circumstances which apply because regulatory approval is required prior to
being able to sell beer; and that the beer industry is similar to the pharmaceutical
industry, where trademark rights may attach prior to the actual sales of goods, and
government approvals are needed prior to actual sales to the general public.54
Opposer cites to G.D. Searle & Co. v. Nutrapharm, Inc., No. 98-6890 (S.D.N.Y. Oct.
29, 1999) (shipping a drug to a clinical investigator for use in clinical trials during
the Food and Drug Administration’s approval process was sufficient use to
constitute trademark use), and explains:55
[W]hen the special circumstances of governmental approval apply,
such as the TTB’s required approval prior to sales of a beer as applied
for under a given name, the preliminary use of the name that the

54 Opposer’s Brief at 17-19, 37 TTABVUE 18-20.
55 Opposer’s Brief at 17-19, 37 TTABVUE 18-20.
Opposition No. 91210379
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license applicant makes is absolutely sufficient to establish trademark
rights in that name. … Opposer was not permitted to sell its beer prior
to TTB approval, nor did it do so. However, the [Dyneer Corp. v.
Automotive Products plc, 37 USPQ2d 1251 (TTAB 1995)] rule explicitly
permits trademark rights to accrue before a mark owner has the
capacity to produce its goods, so long as the use it has already made is
use analogous to trademark use. Opposer has made of record its
continuous use of the ATLAS mark for regulatory purposes prior to
any such use by Applicant.56

Applicant’s reliance on practices within the pharmaceutical industry and Searle
are not apt because they deal with actual sales of a product bearing a trademark
during clinical testing prior to introduction into the marketplace, not use analogous
to trademark use. In the pharmaceutical industry, sales may be made to clinical
investigators during the process of obtaining regulatory approval. In the beer
industry, there is no similar regulatory scheme wherein pre-approval sales or
transfers of beverages are made prior to obtaining governmental approval. This
situation is no different from situations involving products for which governmental
approval is not required and where trademark rights may attach through use
analogous to trademark use.
We have, as we must, looked at the totality of the evidence and “pieces” of the
“puzzle” in their entirety. West Fla. Seafood v. Jet Restaurants, 31 F.3d 1122, 31
USPQ2d 1660, 163 (Fed. Cir. 1994) (“However, whether a particular piece of
evidence by itself establishes prior use is not necessarily dispositive as to whether a
party has established prior use by a preponderance. Rather one should look at the

56 Applicant’s Brief at 18-19, 38 TTABVUE 24-25.
In Dyneer, the Board stated, “[C]ontrary to opposer’s assertion, when use analogous to
trademark use is involved, the user need not necessarily have a capacity to produce goods
for sale under the involved mark at the time of the analogous use.” Dyneer, 37 USPQ2d at
1255.
Opposition No. 91210379
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evidence as a whole, as if each piece of evidence were part of a puzzle which, when
fitted together, establishes prior use.”). We find that Opposer has not established
that its activities prior to June 4, 2012, created an association in the minds of the
purchasing public between its mark and goods which had a substantial impact on
the purchasing public. Herbko International, 64 USPQ2d at 1378. Thus, based on
this record, Opposer did not prove that it is the owner of prior proprietary rights in
ATLAS BREWNG COMPANY. Therefore, Opposer cannot, as a matter of law,
prevail in its claim under Trademark Act § 2(d).
Likelihood of Confusion
The issue of priority is dispositive on Opposer’s claim. However, in order to
render a decision on all the issues, we turn to the merits of Opposer’s likelihood of
confusion claim.
Our determination under Section 2(d) is based on an analysis of all of the facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003). In considering the evidence of record on these
factors, we 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).
There is little doubt that there is a likelihood of confusion. First, the parties’
goods are identical. This not only weighs heavily in favor of a finding of likelihood of
Opposition No. 91210379
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confusion, but also reduces the degree of similarity of the marks necessary to find a
likelihood of confusion. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908
(Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed.
Cir. 2010); Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
Second, the parties’ marks are highly similar, the only difference being that
Opposer’s mark includes the term BREWING COMPANY, which describes
Opposer’s business and is merely descriptive or even generic.57 This minor
distinction is not enough to prevent confusion when the parties’ marks are used on
identical goods. Descriptive words are entitled to less weight in our analysis of the
similarity of the parties’ marks. 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 the likelihood of confusion.”‘) (quoting In re Nat’l Data
Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)); In re Dixie Rests., Inc.,
105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Binion, 93 USPQ2d
1531, 1534 (TTAB 2009) (BINION’S, not disclaimed word ROADHOUSE, is
dominant element of BINION’S ROADHOUSE); In re Code Consultants, Inc., 60

57 We take judicial notice of the definitions of “brew” (“to prepare (as beer or ale) by
steeping, boiling, and fermentation or by infusion and fermentation”) and “company” (“a
chartered commercial organization”) from the online version of Merriam-Webster
Dictionary, accessed on August 9, 2015 at http://www.merriam-webster.com/dictionary/brew
and at http://www.merriam-webster.com/dictionary/company. The Board may take judicial
notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co.,
213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including
online dictionaries that exist in printed format or have regular fixed editions. In re Red Bull
GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
Opposition No. 91210379
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USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in
creating the mark’s commercial impression”). Furthermore, the first term in
Opposer’ mark is identical to the entirety of Applicant’s mark. “[I]t is often the first
part of a mark which is most likely to be impressed upon the mind of a purchaser
and remembered.” Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895,
1897 (TTAB 1988). See also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is
the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the
first word in the mark and the first word to appear on the label); Century 21 Real
Estate Corp. v. Century Life of America, 23 USPQ2d at 1700 (upon encountering the
marks, consumers will first notice the identical lead word).
Thus, the relevant du Pont factors favor a finding of likelihood of confusion.
Applicant does not dispute this; it has not argued that any of the du Pont factors
favor Applicant, but rather has argued that “[e]ven if one accepts that the marks
are similar, such that confusion between Applicant’s mark and Opposer’s marks is
likely, the issue is moot here because Opposer is not the senior user.”58
In view of Opposer’s failure to prove that it has prior proprietary rights in
ATLAS BREWING COMPANY, its claim of likelihood of confusion is dismissed.
Decision: The opposition is dismissed as to all grounds.

58 Applicant’s Brief at 19, 38 TTABVUE 25.