Labatt Brewing Co. Ltd.v.Northamp-ton Brewing Corp.

Trademark Trial and Appeal Board

Jan 3, 2001

No. 91104770 (T.T.A.B. Jan. 3, 2001)

1/3/01 Paper No. 30
DEB
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
Labatt Brewing Company Limited
v.
Northampton Brewing Corp.
_____
Opposition No. 104,770
to application Serial No. 75/003,025
filed on October 10, 1995
_____
Helen Hill Minsker of Banner & Witcoff, Ltd. for Labatt
Brewing Company Limited.
Charles A. Wilkinson for Northampton Brewing Corp.
______
Before Seeherman, Walters and Bucher, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Labatt Brewing Company Limited, a corporation of Canada,
has opposed the application of Northampton Brewing Corp. of
Pennsylvania to register “TRU BLU BEER & ALE” as a trademark
for “malt beverages, specifically beer and ale.”1 As grounds
for opposition, opposer alleges that it has long used marks
containing the word “BLUE” in connection with beer, and that
applicant’s mark so resembles opposer’s registered trademarks
“LABATT BLUE,”2 “BLUE LIGHT” (with the word “Light”
1 Application Serial No. 75/003,025, filed October 10, 1995,
asserting a bona fide intent to use the mark in commerce.
2 Reg. No. 1,098,297, issued on August 1, 1978; §8 affidavit
accepted and §15 affidavit received; renewed in 1998.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 104,770
2
disclaimed),3 and “BIG BLUE”4 as to be likely, when used in
connection with applicant’s products, to cause confusion, to
cause mistake or to deceive.
In its answer applicant has denied the salient
allegations of the notice of opposition.
The record includes the pleadings; the file of the
opposed application; the testimony deposition, with exhibits,
of opposer’s witness, David van Wees, Director of Marketing;
and the testimony deposition, with exhibits, of opposer’s
witness, Bernard Beasley, Director of Intellectual Property.
In addition, opposer has submitted, under a notice of
reliance, status and title copies of its three pleaded
registrations as identified above, applicant’s responses to
selected interrogatories and the exhibits thereto, and
applicant’s responses to opposer’s requests for admission and
the exhibits thereto. In addition, applicant has submitted,
under a notice of reliance, opposer’s responses to
applicant’s interrogatories and related documents produced
during discovery, and applicant’s responses to opposer’s
interrogatories5 with enclosures and exhibits, including a
3 Reg. No. 1,350,920, issued on July 23, 1985; §8 affidavit
accepted & §15 affidavit received.
4 Reg. No. 1,563,650, issued on October 31, 1989; §8 affidavit
accepted and §15 affidavit received; renewed in 1999.
5 Applicant contends in its Notice of Reliance that pursuant to
Rule 2.120(j)(5), its own answers to opposer’s interrogatories
should be made part of the record because fewer than all of the
answers to interrogatories were offered into evidence by opposer.
Hence, applicant introduced under its notice of reliance four
other answers to interrogatories which it argues should in
Opposition No. 104,770
3
dozen different trademark listings derived from a variety of
trademark searches. Under a rebuttal notice of reliance,
opposer submitted certified histories of four of its
registrations.6 Under a supplemental notice of reliance,
opposer submitted a copy of an article taken from The
Washington Post of September 3, 1999.
Only the opposer has filed a brief in this case and an
oral hearing was not requested.
The record shows that Labatt Brewing Company Limited,
the opposer herein, is a Canadian manufacturer of beer, and
that it has been distributing beer in the United States for
more than thirty years. Opposer has marketed beer in the
United States under the mark “LABATT BLUE” since July 1972,
under the mark “BLUE LIGHT” since November 1983, and under
the mark “BIG BLUE” since 1994. Opposer’s witness Bernard
Beasley testified that opposer’s three marks containing the
word “BLUE” have been used continuously in the United States
in connection with beer since their respective introductions.
fairness be considered so as to make not misleading what was
offered by opposer. Applicant’s notice of reliance is supported
by a written statement that it needs to rely upon these additional
discovery responses because they support applicant’s bona fide
intent to use a trademark which it believes is not likely to be
confused with other trademarks. Accordingly, we have considered
these additional responses and the exhibits attached thereto.
6 Opposer’s Rebuttal Notice of Reliance, exhibits 1 – 4,
comprised certified copies of four registrations and the file
wrappers of the respective applications. “LABATT’S” (Reg. No.
1,313,759); “LABATT’S” (stylized) (Reg. No. 1,357,076); “50” (Reg.
No. 939,002); and “EXTRA STOCK” (Reg. No. 1,766,109).
Opposition No. 104,770
4
Opposer’s beer products sold in the United States under
the marks “LABATT BLUE,” “BLUE LIGHT,” and “BIG BLUE” are
marketed through opposer’s U.S. subsidiary, Labatt U.S.A.
Inc., which in turn markets opposer’s beer products through
wholesale distributors. According to the trial testimony of
opposer’s witnesses and the accompanying records, opposer’s
“LABATT BLUE,” “BLUE LIGHT,” and “BIG BLUE” beer can be found
in stores and in bars throughout the United States, although
Michigan and upstate New York make up its two top markets.
At retail stores, a six-pack of “LABATT BLUE” beer sells for
between four and nine dollars.
According to the trial testimony of opposer’s witnesses
and the accompanying exhibits, the combined volume of
Labatt's beer sold under these three pleaded marks: “LABATT
BLUE,” “BLUE LIGHT,” and “BIG BLUE,” represents the largest
volume of Canadian beer imported into the United States from
a single Canadian brewer.
Opposer advertises its Labatt beer products sold in the
United States under the marks “LABATT BLUE,” “BLUE LIGHT,”
and “BIG BLUE” through media such as television, radio,
billboards and local print media, and also through point of
sale promotions. The record is replete with examples of
opposer’s promotional materials for all three marks,
including videotapes of television advertisements,
photographs of point of sale displays, full-page
Opposition No. 104,770
5
advertisements from glossy magazines distributed within the
United States, publicity packets provided to U.S.
distributors containing glossy pull-outs promoting beverage
products and other merchandise, and examples of outdoor and
transit advertisements.
Applicant’s responses to opposer’s interrogatories show
that applicant is seeking to establish a brew pub under the
name Northampton Brewing Corp. and revive the rights to TRU
BLU BEER & ALE – a product produced a hundred years ago in
the Commonwealth of Pennsylvania and marketed at that time
throughout the northeastern United States by an earlier
entity known as Northampton Brewing Corp. At the time of
trial, applicant had not yet made use of the mark in
commerce.
Priority is not in issue in view of opposer’s pleaded
registrations, which are of record. King Candy Company v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974). Furthermore, the record shows that Labatt has
used its marks “LABATT BLUE,” “BLUE LIGHT,” and “BIG BLUE” on
beer prior to the filing date of applicant’s application,
which in the absence of any evidence of use, is the earliest
date on which applicant may rely.
We turn next to a consideration of the issue of
likelihood of confusion. Our determination is based upon an
analysis of all of the probative facts in evidence that are
Opposition No. 104,770
6
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).
Having reviewed all of the evidence in light of the du Pont
factors, we find that confusion is likely.
Applicant’s identified beer is legally identical to
opposer’s beer as identified in the registrations, and
applicant’s ale is closely related thereto. Because there is
no limitation as to the channels of trade or the goods as
identified in either applicant’s application or opposer’s
registrations, we must assume that the parties’ beer will be
sold in the same channels of trade, which would include the
sale of beer in stores, bars and restaurants, and to the same
classes of purchasers. See Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, NA, 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987) (the question of likelihood of
confusion must be determined based on an analysis of the mark
as applied to the goods recited in applicant’s application
vis-à-vis the goods and/or services recited in an opposer’s
registration). Moreover, when considering a related du Pont
factor (i.e., conditions under which and buyers to whom sales
are made), the evidence shows that beer generally is fairly
inexpensive. Because of that, we conclude that these
purchases would not be the subject of a great deal of thought
or analysis.
Opposition No. 104,770
7
Applicant asserted in its answer, in the form of an
“affirmative defense,” that its beer is microbrewed and that
purchasers of its brewpub beer or micro-brew beer product
would be sophisticated connoisseurs. Aside from the fact
that defendant has not proven this claim, its identification
of goods is not limited to brewpub beers or micro-brewed
beers. Rather, it encompasses all beers and hence, all
purchasers of beers.
We now turn to a consideration of the parties’ marks,
keeping in mind that “when marks would appear on virtually
identical goods or services, the degree of similarity
necessary to support a conclusion of likely confusion
declines.” Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
In considering opposer’s marks, we note that the
evidence demonstrates that in Canada and in the United
States, opposer’s house mark is “LABATT” or “LABATT’S.”
Because “LABATT” is used and is perceived as opposer’s house
mark, the word “BLUE” in opposer’s mark “LABATT BLUE” stands
as the product mark and hence carries a strong, separate
commercial impression. As used on packaging, labels and
promotional materials, the composite mark is always displayed
with the word “BLUE” shown in bold lettering much more
prominent than the lettering of the house mark, “LABATT,” as
shown in the following image:
Opposition No. 104,770
8
Furthermore, the brilliant blue trade-dress of opposer’s
labels, cans and six-pack carriers also reinforces the “Blue”
color connotation of opposer’s “LABATT BLUE” mark. The
record shows that substantially all of the advertising images
emphasize the “BLUE” portions of opposer’s marks with the use
of a dramatic blue color. The advertising copy uses phrases
such as “Blue Heaven,” “Summertime Blue,” “True Blue Taste of
Canada,” “…brewed from Canada’s purest blue waters…,” and
“Labatt’s Blue – the Color of Canada.”
As for opposer’s “BLUE LIGHT” mark, although one
interpretation for this mark might be that of ‘a light that
is blue,’ the word “Light” as applied to beer has a well-
known descriptive, or even generic, significance – a fact
that is acknowledged by the disclaimer of this term.
Accordingly, the word “BLUE” would be perceived as the most
prominent source-indicating feature of this second pleaded
composite mark.
Opposition No. 104,770
9
Finally, the record shows that “BIG BLUE” is the “LABATT
BLUE” formulation marketed in a large, 750 ml. can. Hence,
consumers would perceive the word “Big” as a laudatory
reference to the large container in which the beer is
marketed. Consequently, we find that the word “BLUE” is the
most prominent element of each of these three pleaded marks.
In considering the issue of likelihood of confusion, an
important factor in our decision is the strength of opposer’s
marks. As noted above, opposer is the largest Canadian
importer of beer into the United States, and the combined
sales of “LABATT BLUE,” “BLUE LIGHT,” and “BIG BLUE” place
opposer’s beers in the top tier of all beers imported into
the United States. While the sales and promotion figures
have been held confidential,7 we conclude that opposer has
adequately demonstrated that “LABATT BLUE” is a well-known
mark within the United States.
Moreover, the record demonstrates that opposer has built
and maintains a substantial merchandising program in the
United States as part of its marketing efforts. Hence,
“LABATT BLUE” has been used by opposer on a wide variety of
collateral goods including an array of clothing items,
7 Consistent with Trademark Rules §2.27(e) and §2.125(e), the
stipulated protective order for confidential information executed
by the parties during October 1997 was acknowledged and entered by
the Board on November 19, 1997. Confidential, commercial
information contained in testimony and related exhibits was filed
under seal, and confidential portions of subsequent filings have
been kept confidential under the provisions of this stipulated
agreement.
Opposition No. 104,770
10
chairs, banners, mirrors, ash-trays and bar supplies, as well
as a growing inventory of equipment and gear to outfit one
for camping, sporting and other outdoor activities.
It is clear that when spoken, the BLUE in opposer’s
marks and the BLU in applicant’s mark sound identical and
both connote the color “blue.” Similarly, TRU sounds like,
and connotes, “true,” meaning “authentic.” The designation
“TRU BLU” is the phonetic equivalent of “TRUE BLUE.” The
evidence of record demonstrates that patrons in bars and
restaurants call for opposer’s beer as “Blue,” and that
opposer has occasionally used the phrase “TRUE BLUE” in
various advertising campaigns conducted within the United
States over the years. Thus, although applicant’s TRU BLU
might otherwise have the connotation of “loyal,” we agree
with opposer that in this context, the “TRU BLU” portion of
applicant’s mark is likely to be construed as connoting the
“authentic BLUE.”
As to appearance, although there are obvious
dissimilarities between applicant’s mark and opposer’s marks,
in each mark, BLUE or its phonetic equivalent is used as a
noun and refers to the color blue. Moreover, we have seen
that the phrase “Beer & Ale” in applicant’s mark is generic,
the word “Labatt” is opposer’s house mark, the word “Light”
is highly descriptive in the context of beer, and the word
“Big” suggests a large beer can. Hence, the BLUE or BLU
Opposition No. 104,770
11
portion of each of opposer’s marks creates a strong separate
impression, while as indicated previously, a connotation of
applicant’s mark is that of “genuine” BLU beer. As such, the
commercial impression of both parties’ marks considered in
their entireties is of various BLUE beers.8 Thus, we find
the overall commercial impression of the parties marks are
sufficiently similar that when used or registered for the
same goods, confusion as to source or sponsorship is likely.
We are not persuaded otherwise by applicant’s evidence,
placed into the record by its notice of reliance upon
specific interrogatories and documents related thereto of
third-party registrations (listed on the federal and various
state registers) for marks that contain the word “BLUE” for
beer products. While third-party registrations, of course,
are not evidence of actual usage of these listed marks in the
marketplace, such registrations may be probative of the
strength or weakness of a term or its connotation in
connection with certain goods. However, it is clear from the
listing of third-party registered marks containing the word
“Blue” that the overall commercial impressions of these marks
are quite different from each other and from the marks in
8 From the notice of opposition to its final brief, opposer
refers repeatedly to its “BLUE marks” and “BLUE beer products.”
Yet nowhere does opposer plead a family of marks. Accordingly, we
point out that in reaching a result herein favorable to opposer,
our decision is based upon separate analyses of each of the three
pleaded trademarks, and is not based in any way on a claim of a
“family of marks.”
Opposition No. 104,770
12
this case. Within many of these marks, the word “blue” is
used as an adjective modifying a noun (e.g., “Blue Hen”), as
an adjective modifying a noun within a well-known expression
applied in a fanciful or arbitrary manner to beer (e.g.,
“Blue Moon,” “Blue Ribbon,” or “Blue Note”), or in a variety
of distinct noun forms along with other nouns (e.g., “Red,
White and Blue,” “Blues Beer,” etc.).
In conclusion, we find that with respect to the specific
marks opposer has pleaded herein for its beer products,
opposer has shown a likelihood of confusion as to source or
sponsorship between opposer’s three pleaded marks and
applicant’s mark, “TRU BLU BEER & ALE,” for “malt beverages,
specifically beer and ale.”
Moreover, 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).
Decision: The opposition is sustained and registration
to applicant is refused.