Coors Brewing Co.

Trademark Trial and Appeal Board

Aug 24, 1998

No. 74574985 (T.T.A.B. Aug. 24, 1998)

Hearing:
October 16, 1997
Paper No. 19
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 8/24/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Coors Brewing Company
___________
Serial No. 74/574,985
___________
Sabrina Crowley Stavish of Sheridan Ross for applicant.
Montia O. Givens, Trademark Examining Attorney, Law Office
101 (R. Ellsworth Williams, Managing Attorney).
____________
Before Simms, Quinn and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Coors Brewing Company has filed a trademark application
to register the mark BLUE MOON for “beer.”1
The Trademark Examining Attorney has finally refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the mark shown below, previously registered for

1 Serial No. 74/574,985, in International Class 32, filed September 19,
1994, based on an allegation of a bona fide intention to use the mark in
commerce. On September 22, 1995, applicant submitted its amendment to
Serial No. 74/574,985
2
“restaurant services,”2 that, when used on or in connection
with applicant’s goods, it would be likely to cause
confusion or mistake or to deceive.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs and an oral hearing was
held. We affirm the refusal to register.
In the analysis of likelihood of confusion in this
case, two key considerations are the similarities between
the marks and the similarities between the goods. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976). Turning, first, to the goods, we
note that the Examining Attorney submitted a substantial
amount of evidence in support of her position that
applicant’s goods and registrant’s services are related
because brewpubs are restaurants that serve beer brewed on
the premises, and restaurants without on-site breweries
often purchase private label beer from third-party
microbreweries; and that such beers often are identified by

allege use and specimens, alleging dates of first use and first use in
commerce as of August 15, 1995.
2 Registration No. 1,770,568 issued May 11, 1993, to Happy Bread &
Fenster, Inc., in International Class 42.
Serial No. 74/574,985
3
the restaurant/ brewpub trademark. The record includes an
excerpt from the Encyclopedia of Beer (undated) describing a
“brewpub” as “a small brewery serving most of its beer on
the premises, often through an associated restaurant or
taproom” and indicating that “brewpubs usually incorporate a
restaurant [and] are the fastest-growing segment of the
burgeoning United States microbrewery movement.”
Additionally, the Examining Attorney submitted excerpts of
articles retrieved from the LEXIS/NEXIS database indicating
that the term “brewpub” is used to describe a restaurant
that produces its own beer and serves it on-site.3 A number
of excerpts indicate, also, that microbreweries are
providing private label beers to restaurants. Although
several of these articles indicate that, in specific
instances, the private label beer is identified by a
trademark that differs from the service mark identifying the
restaurant, there is also evidence that some private label
beers are identified by the same name identifying the
restaurant.4

3 In view of this evidence, we find that applicant’s argument that “a
brewpub is not a type of restaurant, but a place where beer is brewed
and sold to the public to drink on the premises” is not well-taken.
While a brewpub is a place where beer is brewed and served on the
premises, it is also usually a restaurant or a facility incorporating a
restaurant.
4 A number of excerpts submitted pertain to retail grocers selling food
products identified by restaurant chain trademarks. We do not find
these examples to be particularly probative of the extent to which
restaurant services and beer may be related.
Serial No. 74/574,985
4
The Examining Attorney submitted numerous third-party
registrations for marks including restaurant and brewpub
services in the identification of goods; and approximately
six registrations for marks that include restaurant services
and beer in the identification of goods.
Applicant contends that food products and restaurant
services are not per se related and, in particular, that
beer and restaurant services are not related. Applicant
submitted a copy of the specimen from the cited registration
file, a restaurant menu, and argues that registrant is a
Mexican restaurant whereas applicant is a large nationally
known brewing company and, thus, consumers are unlikely to
believe either that a Mexican restaurant is brewing its own
beer or that a major brewer provides restaurant services.
While we agree that no per se relationship exists between
the identified goods and services, applicant’s additional
contentions are not well-taken. In determining
registrability, “the question of likelihood of confusion
must be determined based on an analysis of the mark as
applied to the goods and/or services recited in applicant’s
application vis-à-vis the goods and/or services recited in
[the] registration, rather than what the evidence shows the
goods and/or services to be.” Canadian Imperial Bank v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed.
Cir. 1987). In this case, applicant’s goods and
Serial No. 74/574,985
5
registrant’s services are broadly identified and contain no
limitations. In arguing that registrant’s restaurant
services are actually limited to Mexican restaurants,
applicant is essentially arguing that the registrant’s
identification of services should be limited, which is a
collateral attack upon the validity of the cited
registration. See, Section 18 of the Trademark Act, 15
U.S.C. 1068; and Eurostar v. “Euro-star” Reitmoden GmbH &
Co. KG, 34 USPQ2d 1266 (TTAB 1994). A collateral attack on
the validity of a cited registration is not appropriately
raised in an ex parte proceeding and should be addressed
before the PTO in a cancellation proceeding. See, In re
Calgon Corp., 435 F.2d 596, 168 USPQ 278, 280 (CCPA 1971)
[applicant’s allegation of priority of use in ex parte
proceeding is inappropriate collateral attack on validity of
cited registration]; In re Peebles, Inc., 23 USPQ2d 1795,
1797 n.5 (TTAB 1992) [applicant’s contention that cited
registration is merely descriptive is inappropriate in ex
parte proceeding as it constitutes a collateral attack on
validity of cited registration].
Applicant concedes that some restaurants serve beer;
that there are brewpubs which brew their own beer and serve
food; and that brewpubs are currently popular. However,
applicant argues that consumers expect beer to be brewed by
a brewery and do not expect a restaurant to be the source of
Serial No. 74/574,985
6
beer served in that restaurant. In support of this
contention, applicant submitted copies of third-party
registrations of several substantially identical marks owned
by different parties for, respectively, beer and restaurant
services. Regarding the Examining Attorney’s evidence of
registrations identifying both beer and restaurant services,
applicant states, simply, that “this is not typical.”
Applicant makes several additional statements of purported
fact which are not persuasive as these statements are
unsupported by any evidence in this record.5
In this case, we find that the Examining Attorney has
established that there is a class of restaurants, commonly
known as “brewpubs,” which brew and serve their own beer on
the premises; that a number of restaurants order and serve
private label beers; and that a number of marks are
registered for both restaurant and brewpub services and for
restaurant services and beer. We acknowledge that the
record in this case also establishes that not all private
label beers are identified by the same name as the
restaurant serving that beer; and that several registrations
exist for substantially identical marks apparently owned by

5 For example, applicant states that “since the advent of brewpubs,
there are many more marks used in connection with beer [and] as a
result, it is likely that beer products and restaurant services more
frequently use the same name, even though they are not from a common
source”; that “brewpubs do not name the beers they produce by the same
name as the brewpub, but sell numerous varieties of beers which have
different and changing names”; and that “there are many more restaurants
in the United States than brewpubs, and it is much more typical for a
restaurant not to be a brewpub” (emphasis in original).
Serial No. 74/574,985
7
third-parties for, respectively, beer and restaurant
services. However, we conclude that sufficient evidence
exists in this record to warrant our conclusion that
registrant’s restaurant services and applicant’s beer are
likely to be seen by the same persons under circumstances
which could give rise, because of the marks used thereon, to
a mistaken belief that they originate from or are in some
way associated with the same producer or that there is an
association between the producers of each parties’ goods or
services. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991),
and cases cited therein.
Turning our consideration to the marks, the Examining
Attorney contends that applicant’s mark is identical to the
word portion of registrant’s mark; and that the word portion
of registrant’s mark is dominant as the design of a moon
simply reinforces the word portion of the mark.
Applicant argues, on the other hand, that the design
element of registrant’s mark is the central and largest
portion of the mark; that, as such, it is at least equal in
significance to the word portion of registrant’s mark; and
that, therefore applicant’s mark is sufficiently
distinguished from registrant’s mark. Applicant contends,
further, that in view of third-party registrations and uses,
BLUE MOON is a weak mark in connection with restaurant

Serial No. 74/574,985
8
services and food products. In connection with this latter
contention, applicant submitted evidence in the nature of
two third-party registrations owned by the same party for
cheese products and one third-party registration for food
flavorings; listings of variations of BLUE MOON in the
yellow pages of numerous phone directories from around the
United States under the heading “restaurants”; listings from
a Dunn & Bradstreet database of company/business names
indicating variations of BLUE MOON under the principal and
secondary categories of “eating places” and/or “drinking
places”; and a Thomson and Thomson search report.
We do not agree with the Examining Attorney’s argument
that such evidence is an improper collateral attack on the
validity of the cited registration. Certainly, even if
applicant established that BLUE MOON is a weak mark, weak
marks are entitled to registration and protection. Looking
at the specific evidence submitted by applicant, we find
that, in view of the significant differences between the
goods and services involved in this case and the goods
recited in the three third-party registrations for BLUE
MOON, these registrations are not particularly probative of
the strength or weakness of registrant’s mark as it relates
to restaurant services.
Considering the other evidence submitted by applicant
in support of its contention that BLUE MOON is a weak mark
Serial No. 74/574,985
9
in connection with restaurant services, we note that the
Examining Attorney has voiced objections to the
acceptability of this evidence. However, even if we were to
consider all of applicant’s evidence acceptable to show
third-party uses of BLUE MOON in connection with restaurant
services, we find the nature and extent of this evidence
insufficient to warrant a conclusion that BLUE MOON is a
weak mark in connection with restaurant services. Listings
of marks and business names, alone, do not reveal the extent
of the use made by the listed third-party businesses; some
of the businesses may never have gotten off the ground, or
may have gone out of business; some of the businesses may be
small enterprises, in remote locations, that have affected
only a minuscule portion of the general purchasing public
for restaurant services; and at least some, if not all, of
the listings may be registrant’s. See, Lloyd’s Food
Products Inc. v. Eli’s Inc., 987 F2d 766, 25 USPQ2d 2027
(Fed. Cir. 1993); In re Broadway Chicken Inc., 38 USPQ2d
1559, 1565 (TTAB 1996); and Carl Karcher Enterprises Inc. v.
Stars Restaurants Corp., 35 USPQ2d 1125, 1131 (TTAB 1995).
The significance of applicant’s evidence must be
considered in the context of the entire record.6 In the

6 We note, for example, that in In re Broadway Chicken Inc., supra, the
Board found the sheer magnitude of telephone directory listings and Dunn
& Bradstreet entries indicative of widespread third-party use of the
dominant portion, BROADWAY, of the cited registered marks, BROADWAY
PIZZA and BROADWAY BAR AND PIZZA. However, in reversing the refusal to
register BROADWAY CHICKEN for substantially the same services, the Board
Serial No. 74/574,985
10
case before us, applicant’s mark is identical to the word
portion of registrant’s mark and there is no indication in
the record that BLUE MOON is other than an arbitrary term in
connection with either beer or restaurant services. We find
these factors would greatly outweigh applicant’s evidence of
third-party use such that applicant’s mark and registrant’s
mark are not distinguishable merely by the additional design
element in registrant’s mark. Rather, we find that the
overall commercial impressions of applicant’s and
registrant’s marks are substantially similar.
Therefore, we conclude that in view of the substantial
similarity in the commercial impressions of applicant’s
mark, BLUE MOON, and registrant’s mark, BLUE MOON and
design, their contemporaneous use on the goods and services
involved in this case is likely to cause confusion as to the
source or sponsorship of such goods and services.
If we had any doubt concerning our conclusion that
confusion is likely, we would be obligated to resolve such
doubt in favor of the registrant. In re Hyper Shoppes
(Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed Cir. 1988).

made it clear that this evidence was not conclusive. Rather, the Board
found no likelihood of confusion in view of the differences in the marks
and the geographic significance of the term BROADWAY, as well as in
consideration of applicant’s evidence of widespread third-party use of
BROADWAY in connection with both related and unrelated goods and
services. On the other hand, in Carl Karcher Enterprises Inc. v. Stars
Restaurants Corp., in finding a likelihood of confusion between the
parties’ marks in connection with restaurant services, the Board
considered applicant’s evidence of third-party use balanced by opposer’s
evidence of its marks’ considerable notoriety. Thus, in that case, the
Board found the evidence of third-party use to be of limited probative
value in support of applicant’s position.
Serial No. 74/574,985
11
Decision: The refusal under Section 2(d) of the Act is
affirmed.
R. L. Simms
T. J. Quinn
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board