Domecq, Baxley, Resch and Niermeyer

Trademark Trial and Appeal Board

Aug 30, 2006

No. 76585314 (T.T.A.B. Aug. 30, 2006)

Mailed: 8/30/06

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Domecq, Baxley, Resch and Niermeyer
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Serial No. 76585314
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Peter H. Smith, Esq. for Raymond Domecq, Glenn Baxley,
Jackie Resch and Lawrence T. Niermeyer.

Howard Smiga, Trademark Examining Attorney, Law Office 102
(Thomas V. Shaw, Managing Attorney).
_______

Before Quinn, Walters and Cataldo, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed by Raymond Domecq, Glenn
Baxley, Jackie Resch and Lawrence T. Niermeyer, as joint
applicants (hereinafter referred to as “applicant”), to
register the mark RODEO COLD (“COLD” disclaimed) for “malt
beverages, namely beer.”1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.

1 Application Serial No. 76585314, filed April 6, 2004, based on
an allegation of a bona fide intention to use the mark in
commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76585314
2
§1052(d), on the ground that applicant’s mark, if applied
to applicant’s goods, would so resemble the previously
registered mark RODEO STOUT (“STOUT” disclaimed) for “malt
liquors, namely, stout” as to be likely to cause confusion.2
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Applicant contends that there is no likelihood of
confusion in view of the differences between the marks and
the goods. In addition, applicant argues, its prior
ownership of a registration, now canceled, of the same mark
it seeks to register herein tips the scales in its favor.
The examining attorney maintains that the marks are
dominated by the same, arbitrary term “RODEO,” and that
beer and stout are closely related products. The examining
attorney submitted a dictionary definition of the term
“stout,” and, in connection with the comparison of the
goods, copies of several third-party use-based
registrations showing that each entity has registered a
single mark for beer and stout. The examining attorney was
not persuaded by applicant’s claim that it previously owned
a registration, indicating that he is not bound by the
prior decisions of other examining attorneys.

2 Registration No. 1865390, issued November 29, 1994; renewed.
Ser No. 76585314
3
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also: In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities
between the marks and the similarities between the goods.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). See also: In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
We first turn to compare the goods, namely beer and
stout. It is not necessary that the respective goods be
identical or competitive, or even that they move in the
same channels of trade to support a holding of likelihood
of confusion. It is sufficient that the respective goods
are related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods are such
that they would or could be encountered by the same persons
under circumstances that could, because of the similarity
of the marks, give rise to the mistaken belief that they
originated from the same producer. In re Melville Corp.,
Ser No. 76585314
4
18 USPQ2d 1386 (TTAB 1991). Further, although applicant
draws several distinctions in the characteristics between
beer and stout, the issue is not whether purchasers would
confuse beer and stout, but rather whether there is a
likelihood of confusion as to the source of the goods. In
re Rexel Inc., 223 USPQ 830 (TTAB 1984).
It hardly need be stated that beer and stout are
closely related malt beverages. As shown by the dictionary
definition, “stout” is a type of strong, dark beer. In
connection with this du Pont factor, the examining attorney
introduced several third-party use-based registrations
showing that each entity adopted a single mark for a
variety of malt beverages, including beer and stout.
Third-party registrations that individually cover different
items and that are based on use in commerce serve to
suggest that the listed goods are of a type that may
emanate from a single source. In re Albert Trostel & Sons
Co., 29 USPQ2d 1783 (TTAB 1993).
Further, beer and stout travel in the same trade
channels, and the same classes of purchasers, including
ordinary consumers, buy these beverages. Applicant would
have us find that consumers of stout are sophisticated and,
thus, less likely to be confused. More specifically,
applicant contends that “stout consumers are a limited
Ser No. 76585314
5
class of consumers with a refined taste for their product,
which has small appeal compared with the mass marketing
appeal of beer,” and that “stout consumers are apt to be
more perceptive than the average consumer.” (Appeal Brief,
p. 7). Applicant has failed to support its proposition
with any evidence. Moreover, its identification of goods
contains no restrictions as to classes of purchasers, and
it is presumed that stout would be purchased by all
potential buyers thereof. In re Elbaum, 211 USPQ 639, 640
(TTAB 1981). Accordingly, we have no reason to assume that
potential purchasers could not include ordinary individuals
interested in consuming a malt beverage, including those
who drink beer. In any event, even sophisticated
purchasers are not immune from source confusion, especially
in cases such as the instant one involving very similar
marks and closely related goods. See In re Research
Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir.
1986), citing Carlisle Chemical Works, Inc. v. Hardman &
Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970)
[“Human memories even of discriminating purchasers...are
not infallible.”]. See also In re Decombe, 9 USPQ2d 1812
(TTAB 1988).
We next turn to consider the marks. In determining
the similarity or dissimilarity of the marks, we must
Ser No. 76585314
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compare the marks in their entireties as to appearance,
sound, connotation and commercial impression. Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The
test is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in their entireties that
confusion as to the source of the goods offered under the
respective marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks.
Furthermore, although the marks at issue must be considered
in their entireties, it is well settled that one feature of
a mark may be more significant than another, and it is not
improper, for rational reasons, to give more weight to this
dominant feature in determining the commercial impression
created by the mark. See In re National Data Corp., 753
F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
In comparing the marks RODEO COLD and RODEO STOUT, we
first note that both begin with the same arbitrary term.
We also note that applicant has disclaimed the descriptive
word “COLD” and registrant has disclaimed the generic word
“STOUT.” Such descriptive or generic terms are often given
little weight in likelihood of confusion determinations.
Ser No. 76585314
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“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.’”
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1846 (Fed. Cir. 2000), quoting, In re National Data
Corp., 224 USPQ at 752. See also In re Chatam
International Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946
(Fed. Cir. 2004) [“With respect to GOLD, the Board
determined that the term denotes a premium quality, a
descriptive term offering little to alter the commercial
impression of the mark.” Court found that as a result the
Board had good reason to discount the term’s significance];
and In re Code Consultants Inc., 60 USPQ2d 1699, 1702 [TTAB
2001) [Disclaimed matter is often “less significant in
creating the mark’s commercial impression”].
While we have considered the marks as a whole, the
term “STOUT” in registrant’s mark and the term “COLD” in
applicant’s mark do not have much trademark significance.
Each mark is clearly dominated by the identical, arbitrary
portion “RODEO.” “If the dominant portion of both marks is
the same, the confusion may be likely notwithstanding
peripheral differences.” TMEP § 1207.01 (b)(iii) (4th ed.
2005). See, e.g., Hewlett-Packard Co. v. Packard Press
Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002)
Ser No. 76585314
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[HEWLETT PACKARD and PACKARD TECHNOLOGIES]; In re El Torito
Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988) [MACHO and
MACHO COMBOS]; In re Equitable Bancorporation, 229 USPQ 709
(TTAB 1986) [RESPONSE and RESPONSE CARD]; and In re Corning
Glass Works, 229 USPQ 65 (TTAB 1985) [CONFIRM and
CONFIRMCELLS].
We find that the marks RODEO COLD and RODEO STOUT,
when considered in their entireties, are substantially
similar in sound, appearance, meaning and commercial
impression. This factor favors a conclusion that there is
a likelihood of confusion.
The only point raised by applicant that merits further
discussion is its prior ownership of a now-canceled
registration. Applicant explains that two of the four
current joint applicants owned Registration No. 2149620,
issued April 7, 1998, for the mark RODEO COLD covering
“malt beverages, namely, beer.” Applicant further explains
that its prior registration, identical in all respects to
the registration sought herein, lapsed on January 8, 2005
due to its failure to file an affidavit of continued use:
The registrants were not able to keep
the 1998 RODEO COLD registration in
effect because they had a significant
gap in their use of the mark RODEO COLD
for malt beverages, having lost their
brewer, and they did not believe that
it was appropriate to file a continuing
Ser No. 76585314
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use affidavit. At this time, however,
the applicants are still actively
pursuing new brewers and intend to
recommence use of the mark in
interstate commerce. Therefore, they
are still very interested in obtaining
a notice of allowance in connection
with their pending application.
(Appeal Brief, p. 2).

Applicant contends that its now-canceled registration was
examined without any citation to previously issued
Registration No. 1865390 as a statutory bar under Section
2(d). Applicant goes on to argue that the coexistence on
the register of its registration and the cited registration
is probative in showing that there is no likelihood of
confusion between the two marks. In the words of
applicant, “RODEO COLD for beer was not deemed by the
Patent and Trademark Office to be confusingly similar to
RODEO STOUT for stout in 1996, and it should not be deemed
to be confusingly similar to that mark in 2005 or 2006.”
(Appeal Brief, p. 8).
The situation in which applicant finds itself is not
unprecedented. We fully recognize that applicant owned a
prior registration, now canceled, for RODEO COLD for “malt
beverages, namely, beer,” and that the Office allowed that
registration to issue over the now-cited registration for
RODEO STOUT. However, there is longstanding, well-settled
precedent holding that the Board is not bound by prior
Ser No. 76585314
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decisions of examining attorneys, and that each case must
be decided on its own merits and on the basis of its own
record, in accordance with relevant statutory, regulatory
and decisional authority. See, e.g., In re International
Flavors & Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513
(Fed. Cir. 1999). More specifically, we are not bound by
the previous examining attorney’s determination that
applicant’s mark was registrable, and we will not compound
the problem of the registration of a confusingly similar
mark by permitting such a mark to register again. In re
Thomas, 79 USPQ2d 1021 (TTAB 2006); In re Perez, 21 USPQ2d
1075 (TTAB 1991); and In re Wilson, 57 USPQ2d 1863 (TTAB
2001).
The fact that the cited mark and applicant’s mark at
one time coexisted on the register does not prove that they
coexisted during that time without confusion in the
marketplace. Without evidence of the nature and extent of
both applicant’s and registrant’s use of their respective
marks, we cannot determine whether a meaningful opportunity
for actual confusion ever existed. See Gillette Canada
Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992). We cannot
conclude that registrant had no objection to applicant’s
earlier registration simply because registrant failed to
object to it. We are not privy to registrant’s reasons for
Ser No. 76585314
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not challenging the registration and we will not speculate
about them. Further, any objections registrant may have
had to applicant’s earlier registration were eliminated
once the registration was canceled. In re Thomas, 79
USPQ2d at 1028. See Action Temporary Services Inc. v.
Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed.
Cir. 1989) [“[A] canceled registration does not provide
constructive notice of anything.”].
We conclude that consumers familiar with registrant’s
stout sold under the mark RODEO STOUT would be likely to
believe, upon encountering applicant’s mark RODEO COLD for
beer, that the malt beverages originate from or are
associated with or sponsored by the same source.
Decision: The refusal to register is affirmed.