Beyond Juicery + Eatery Franchising, LLCv.David T. Michaels

Trademark Trial and Appeal Board

Jun 18, 2020

91234235 (T.T.A.B. Jun. 18, 2020)

Mailed: June 18, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Beyond Juicery + Eatery Franchising, LLC
v.
David T. Michaels
_____

Opposition No. 91234235
_____
Mark J. Burzych and Michael J. Cole of Fahey Schultz Burzych Rhodes PLC
for Beyond Juicery + Eatery Franchising, LLC.

David T. Michaels, pro se.
_____

Before Bergsman, Lynch and Lebow, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

David T. Michaels (Applicant) seeks registration on the Principal Register of the
mark BEYOND JUICE, in standard character form, for “Nutritional supplement
shakes; Nutritional supplements; Dietary and nutritional supplements; Liquid
nutritional supplement; Powdered nutritional supplement drink mix,” in
This Opinion Is Not a
Precedent of the TTAB

Opposition No. 91234235

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International Class 5.1 Applicant disclaims the exclusive right to use the word
“Juice.”
Beyond Juicery + Eatery Franchising, LLC (Opposer) filed a Notice of Opposition
against the registration of Applicant’s mark under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), alleging that Applicant’s mark is likely to cause confusion with
Opposer’s registered marks BEYOND JUICE, in standard character form, for “juice
bar services; restaurants,” in Class 43,2 and BEYOND JUICERY + EATERY, in
standard character form, for “fruit juices and fruit drinks; vegetable juices,” in
International Class 32, and “juice bar services; restaurants,” in International Class
43.3 Opposer also alleged that it has used the marks BEYOND JUICE and BEYOND
JUICERY + EATERY for the goods and services identified in its above-noted
registrations at least as early as June 1, 2005.4
Applicant, in his Answer, denied the salient allegations in the Notice of
Opposition.

1 Application Serial No. 87190374 filed September 30, 2016, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s claim of a bona fide intent to use
his mark in commerce.
2 Registration No. 5057497, registered October 11, 2016. Opposer disclaims the exclusive
right to use the word “Juice.”
3 Registration No. 5057496, registered October 11, 2016. Opposer disclaims the exclusive
right to use the words “Juicery” and “Eatery.”
4 Notice of Opposition ¶¶5 and 6 (1 TTABVUE 5).
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I. The Record.
The record includes the pleadings, and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of the subject application. The record also includes a
notice of reliance introduced by Opposer. The notice of reliance includes the following:
A. Copies of third-party registration certificates purportedly “evidencing [that]
Applicant’s various supplements commonly emanate from the same source as
Opposer’s juice bar and restaurant services”;5
B. Copies of third-party registration certificates purportedly “evidencing [that]
Applicant’s supplements commonly emanate from the same source as
Opposer’s goods, namely, fruit juices, smoothies, and vegetable juices”;6
C. Excerpts from nine websites purportedly to show that Applicant’s goods
emanate from the same source as Opposer’s goods and services;7 and
D. Opposer’s first set of requests for admission to which Applicant failed to
respond.8
Applicant did not introduce any testimony or evidence, nor did he file a brief.
Opposer attached nine exhibits to the Notice of Opposition. In its brief, Opposer
stated,
In addition to the pleadings and exhibits attached thereto,
the application file and the registrations certificates cited
by Opposer in support of this Opposition, the following

5 22 TTABVUE 2 and 6-44.
6 22 TTABVUE 2 and 46-61.
7 22 TTABVUE 63-116.
8 22 TTABVUE 4 and 118-126.
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evidence was introduced and made of record by Opposer in
connection with Opposer’s Notice of Reliance.9
However, with the exception of the copies of USPTO-prepared registration certificates
provided along with a showing of their current status and title,10 exhibits to pleadings
are not evidence properly of record in an inter partes proceeding. Trademark Rule
2.122(c), 37 C.F.R. § 2.122(c), provides,
Except as provided in paragraph (d)(1) of this section, an
exhibit attached to a pleading is not evidence on behalf of
the party to whose pleading the exhibit is attached, and
must be identified and introduced in evidence as an exhibit
during the period for the taking of testimony.
Opposer, in its Notice of Opposition, attached plain copies of its certificates of
registration but did not additionally provide the current status of and title to each
registration. Therefore, they are not properly of record.
In sum, none of the exhibits attached to Opposer’s Notice of Opposition (including
its pleaded registrations) are properly of record and we give them no consideration.
II. Standing
Standing is a threshold issue in every inter partes case. See Empresa Cubana Del
Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014);
John W. Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB 2010). To
establish standing in an opposition or cancellation proceeding, a plaintiff must prove
that it has a “real interest” in the proceeding and a “reasonable” basis for its belief of
damage. See Empresa Cubana, 111 USPQ2d at 1062; Ritchie v. Simpson, 170 F.3d

9 Opposer’s Brief, p. 2 (23 TTABVUE 3).
10 Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1).
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1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185, 189 (TTAB 1982).
As noted above, Opposer alleged common law use of BEYOND JUICE and
BEYOND JUICERY + EATERY. Because Applicant failed to respond to Opposer’s
requests for admission, he admitted the following:11
•Opposer’s use of BEYOND JUICE and BEYOND JUICERY + EATERY predate
the filing date of Applicant’s application;12
•Applicant’s products are related to Opposer’s goods and services;13
•Applicant’s mark is identical to and related to Opposer’s marks;14 and
•Consumers may believe that there is an association between Applicant’s goods
and Opposer’s goods because of the similarity of the marks.15
Because these facts form the basis of a plausible Section 2(d) claim, Opposer has
established its standing. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1844 (Fed. Cir. 2000) (standing can be established by proving a direct
commercial interest); Lipton Indus. Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982) (standing may be established when a plaintiff proves a

11 Fed. R. Civ. P. 36(a)(3) provides, “A matter is admitted unless, within 30 days after being
served, the party to whom the request is directed serves on the requesting party a written
answer or objection addressed to the matter and signed by the party or its attorney.” Because
Applicant did not respond to Opposer’s requests for admission, he admitted the subject of the
requests.
12 Opposer’s request for admission No. 1 (22 TTABVUE 121).
13 Opposer’s requests for admission Nos. 3, 4, 15-17, 19, 21-22 (22 TTABVUE 121, 123, 124).
14 Opposer’s requests for admission Nos. 6-10 and 18 (22 TTABVUE 122-123).
15 Opposer’s requests for admission Nos. 11 and 13 (22 TTABVUE 122-123).
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real commercial interest in its own marks and a reasonable belief that it will
damaged); Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1022 (TTAB 2009)
(“Petitioner has established its common-law rights in the [pleaded mark], and has
thereby established his standing to bring this proceeding.”).
III. Priority
As noted above, Applicant admitted that Opposer’s use of BEYOND JUICE and
BEYOND JUICERY + EATERY predate the filing date of Applicant’s application.16
Accordingly, we find that Opposer has priority.
IV. 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 the likelihood of confusion.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973)
(“DuPont”), cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 113
USPQ2d 2045, 2049 (2015). See also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). “In discharging this duty, the thirteen DuPont
factors ‘must be considered’ ‘when [they] are of record.’” In re Guild Mortg. Co., 912
F.3d 1376, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019), quoting In re Dixie Rests. Inc.,
105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997), quoting DuPont, 177 USPQ
at 567. “Not all of the DuPont factors are relevant to every case, and only factors of
significance to the particular mark need be considered.” Cai v. Diamond Hong, Inc.,
901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018), quoting In re Mighty Leaf

16 Opposer’s request for admission No. 1 (22 TTABVUE 121).
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Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010). See also M2 Software,
Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006);
ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015)
(“While we have considered each factor for which we have evidence, we focus our
analysis on those factors we find to be relevant.”).
“Each case must be decided on its own facts and the differences are often subtle
ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386, 387 (CCPA
1973). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods or services.
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.”). See also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747
(Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for
which there is record evidence but ‘may focus … on dispositive factors, such as
similarity of the marks and relatedness of the goods.’”), quoting Herbko Int’l, Inc. v.
Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002).
A. The similarity or dissimilarity of the marks.
We turn first to the DuPont likelihood of confusion factor focusing on the similarity
or dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression. DuPont, 177 USPQ at 567. “Similarity in any one of these
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elements may be sufficient to find the marks confusingly similar.” In re Inn at St.
John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018), quoting In re Davia, 110 USPQ2d
1810, 1812 (TTAB 2014); accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d
728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form,
spelling or sound alone is likely to cause confusion.”) (citation omitted).
“The 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, 127 USPQ2d at 1801, quoting Coach Servs. Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). See also
Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103
USPQ2d 1435, 1440 (Fed. Cir. 2012); San Fernando Elec. Mfg. Co. v. JFD Elec.
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v.
Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed.
Cir. 1992).
Applicant’s mark BEYOND JUICE and Opposer’s mark BEYOND JUICE are
identical. Applicant has proffered no evidence or argument that his use of BEYOND
JUICE for nutritional supplements has a different meaning or engenders a different
commercial impression than Opposer’s BEYOND JUICE mark. In fact, Applicant has
admitted that the marks are identical in terms of spelling, sound, meaning, and
commercial impression.17

17 Opposer’s requests for admission Nos. 6, 8, 9, and 18 (22 TTABVUE 122-123).
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While not identical, Applicant’s mark BEYOND JUICE is similar to Opposer’s
mark BEYOND JUICERY + EATERY because Opposer’s mark encompasses the
entirety of Applicant’s mark. While there is no explicit rule that we must find the
marks similar where one mark incorporates the entirety of another mark, the fact
that Applicant’s mark is subsumed by Opposer’s mark increases the likelihood of
finding a similarity between the two. See, e.g., In re Mighty Leaf Tea, 601 USPQ2d
1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (applicant’s mark ML is similar to
opposer’s mark ML MARK LEES both for personal care and skin products); Hunter
Indus., Inc. v. Toro Co., 110 USPQ2d 1651, 1660 (TTAB 2014) (applicant’s mark
PRECISION is similar to opposer’s mark PRECISION DISTRIBUTION CONTROL).
See also Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406, 407
(CCPA 1967) (THE LILLY as a mark for women's dresses is likely to be confused with
LILLI ANN for women's apparel including dresses); In re U.S. Shoe Corp., 229 USPQ
707, 709 (TTAB 1985) (CAREER IMAGE for women's clothing stores and women's
clothing likely to cause confusion with CREST CAREER IMAGES for uniforms
including items of women's clothing).
In U.S. Shoe, the Board observed, “Applicant’s mark would appear to prospective
purchasers to be a shortened form of registrant’s mark.” 229 USPQ at 709. Likewise,
in this case, Applicant’s mark BEYOND JUICE may appear to prospective
purchasers to be a shortened form of Opposer’s mark BEYOND JUICERY + EATERY
because the term “+ EATERY” is descriptive when used in connection with fruit and
vegetable juices and juice bar and restaurant services. It is well-settled that
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descriptive matter may have less significance in likelihood of confusion
determinations. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047,
1050 (Fed. Cir. 2018), citing Dixie Rests., 41 USPQ2d at 1533-34); Cunningham v.
Laser Golf Corp., 55 USPQ2d at 1846 (“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 addition, BEYOND JUICE, as the lead element of the mark BEYOND
JUICERY + EATERY, has a position of prominence; it is likely to be noticed and
remembered by consumers and so as to play a dominant role in the mark. See Detroit
Athletic Co., 128 USPQ2d at 1049 (finding “the identity of the marks’ two initial words
is particularly significant because consumers typically notice those words first”);
Palm Bay Imps. 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 Am., 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks,
consumers will first notice the identical lead word). There is nothing improper in
stating that, for rational reasons, more or less weight has been given to a particular
feature of a mark, such as a common dominant element, provided the ultimate
conclusion rests on a consideration of the marks in their entireties. See In re Viterra
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Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); Nat’l Data Corp., 224
USPQ at 751.
Again, because Applicant failed to respond to Opposer’s requests for admission,
Applicant admitted that his BEYOND JUICE mark is similar in spelling, sound,
meaning, and commercial impression to Opposer’s mark BEYOND JUICERY +
EATERY.18
We find that Applicant’s mark BEYOND JUICE is identical to Opposer’s mark
BEYOND JUICE and similar to Opposer’s mark BEYOND JUICERY + EATERY in
their entireties in terms of appearance, sound, connotation and commercial
impression.
B. Similarity or dissimilarity and nature of the goods and services.
Applicant admitted that Opposer’s is using its marks for juice bars and
restaurants and fruit and vegetable juices.19
Opposer introduced 10 use-based, third-party registrations for nutritional and
dietary supplements and juice bars or restaurants.20 Third-party registrations based
on use in commerce that individually cover a number of different goods or services
may have probative value to the extent that they serve to suggest that the listed goods

18 Opposer’s requests for admission Nos. 7, 8, 10, 18 (22 TTABVUE 122 and 123).
19 Opposer’s request for admission No. 2 (22 TTABVUE 121).
20 22 TTABVUE 6-44. We did not include registrations that did not include both nutritional
or dietary supplements and juice bars or restaurants. See 22 TTABVUE 11, 25, 31, 33, 39,
and 43.
Because Registration No. 5441526 did not register under use in commerce and it did not
include nutritional or dietary supplements, we did not consider it. 22 TTABVUE 37.
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or services are of a type that may emanate from the same source. In re Albert Trostel
& Sons Co., 29 USPQ2d 1783, 1785-1786 (TTAB 1993); In re Mucky Duck Mustard
Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d mem. 864 F.2d 149 (Fed. Cir.
1988).
Opposer also introduced seven use-based, third-party registrations for both
nutritional or dietary supplements and fruit and vegetable juices.21
In addition, Applicant made the following admissions:
•“[C]onsumers’ purpose or motivation for choosing to eat at Opposer’s juice bars
is the same or related to consumers’ purpose or motivation for purchasing Applicant’s
goods”;22
•Consumers “expect to find nutritional supplements of the type described in
Applicant’s application when visiting juice bars”;23
•Third parties sell Applicant’s goods and Opposer’s goods under the same
trademark;24
•“[J]uice bars sell Applicant’s Goods, including without limitation, nutritional
supplements”;25 and
•Applicant’s good and Opposer’s goods are related.26

21 22 TTABVUE 46-61. We did not include Registration No. 5773310 because it did not include
either nutritional or dietary supplements, nor fruit or vegetable juice. 22 TTABVUE 46.
22 Opposer’s request for admission No. 12 (22 TTABVUE 122-123).
23 Opposer’s request for admission No. 15 (22 TTABVUE 123).
24 Opposer’s request for admission No. 16 (22 TTABVUE 123).
25 Opposer’s request for admission No. 17 (22 TTABVUE 123).
26 Opposer’s request for admission No. 22 (22 TTABVUE 124).
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We find that Applicant’s nutritional and dietary supplements and Opposer’s fruit
and vegetable juices and fruit bars and restaurants are related.
C. Established, likely-to-continue channels of trade and classes consumers.
Applicant has made the following admissions:
•Applicant’s nutritional and dietary supplements are sold in juice bars and
restaurants similar to those operated by Opposer;27
•Consumers for Applicant’s nutritional and dietary supplements are the same
type of consumer that purchases Opposer’s goods and services;28 and
•Opposer’s goods and services serve the same niche market as Applicant’s goods.29
We find that Applicant offers his goods and Opposer offers its goods and services
in the same channels of trade and to the same class of consumers.
D. Conclusion
Because the marks are identical and similar, the goods and services are related,
and the parties offer their goods and services in the same channels of trade to the
same classes of consumers, we find that Applicant’s mark BEYOND JUICE for
“nutritional supplement shakes; nutritional supplements; dietary and nutritional
supplements; liquid nutritional supplement; powdered nutritional supplement drink
mix” is likely to cause confusion with Opposer’s marks BEYOND JUICE for juice bars

27 Opposer’s request for admission No. 3 (22 TTABVUE 121).
28 Opposer’s requests for admission Nos. 4 and 19 (22 TTABVUE 121 and 123).
29 Opposer’s request for admission No. 21 (22 TTABVUE 124).
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and restaurants and BEYOND JUICERY + EATERY for juice bars and restaurants
and fruit and vegetable juice.
Decision: The opposition is sustained.