Miller Products Companyv.Bomba Energia Getrank-evertriebes GmbH

Trademark Trial and Appeal Board

Aug 7, 2007

No. 91159224 (T.T.A.B. Aug. 7, 2007)

Mailed:
August 7, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Miller Products Company

v.

Bomba Energia Getrankevertriebes GmbH
_____

Opposition No. 91159224
to application Serial No. 75932797
filed on March 1, 2000

Opposition No. 91165241
to application Serial No. 75437843
filed on February 20, 1998
_____

Marta S. Levine, David R. Cross and Lauri A. Rollings of
Quarles & Brady LLP for Miller Products Company

Eugene R. Sawall and Gary A. Essmann of Andrus, Sceales,
Starke & Sawall for Bomba Energia Getrankevertriebes GmbH
______

Before Seeherman, Walters and Mermelstein, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Miller Products Company (hereafter “opposer”)1 has
opposed two applications filed by Bomba Energia

1 The opposition to Application Serial No. 75932797 was
initially filed by Miller Brewing Company. On August 10, 2004,
the Board granted opposer’s motion to substitute, opposer having
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition Nos. 91159224 and 91165241
2
Getrankevertriebes GmbH (hereafter “applicant”).
Application Serial No. 75932797 (hereafter “Bottle per se
mark” is for the bottle design, shown below, for “beer;
mineral water, carbonated water; and other alcohol-free
beverages, namely, fruit juice beverages, fruit flavored
soft drinks, sport drinks, sport drinks with electrolytes;
concentrates, syrups and fruit juice beverages, fruit
flavored soft drinks, sport drinks, sport drinks with
electrolytes; concentrates, syrups and powders for the
preparation of soft drinks, and all the aforesaid with the
addition of mineral aggregates and vitamins” in Class 32.2

The application contains the following description of the
mark:

stated that on June 1, 2004 all title and interest in the
trademarks owned by Miller Brewing Company were transferred to
Miller Products Company. On May 17, 2005 the opposition to
Application Serial No. 75437843 was filed by Miller Brewing
Company and Miller Products Company. The opposition proceedings
were subsequently consolidated on September 27, 2005, and Miller
Products Company has been treated as the opposer since that date.

2 Filed March 1, 2000, and currently based on Section 44(e) of
the Trademark Act. The application also claims a right of
priority under Section 44(d), giving it a priority date of
September 13, 1999.
Opposition Nos. 91159224 and 91165241
3
The mark is a transparent bottle in the
general shape of a barrel consisting of
a central continuous substantially flat
encircling middle portion with the upper
and lower portions being similarly
configured with intersecting [sic] the
raised portions defining a like-
rectangular portion above and below the
raised portion.

The second application, No. 75437843, (hereafter
“Bottle with BOMBA mark”) is for the mark shown below for
“nonalcoholic beverages, namely, mineral water, carbonated
water; and other alcohol-free beverages, namely, fruit juice
beverages, fruit flavored soft drinks, sport drinks, sport
drinks with electrolytes; fruit juice beverages, fruit
flavored soft drinks, sport drinks, sport drinks with
electrolytes; concentrates, syrups and powders for the
preparation of soft drinks, and all the aforesaid with the
addition of mineral aggregates and vitamins” in Class 32.3

Applicant has submitted the following description of its
mark:

3 Filed February 20, 1998, based on Section 1(b) of the
Trademark Act (intent-to-use).

Opposition Nos. 91159224 and 91165241
4
The mark consists of the three-
dimensional configuration of a beverage
container in the form of a barrel-shaped
hand grenade, the beverage container has
a center band that contains the stylized
wording "BOMBA". The pull top is not a
feature of the proposed mark.

Although separate notices of opposition were filed by
opposer, essentially they contain the same allegations,
namely, that opposer is engaged in the business of
distributing and selling beer; that opposer and applicant
are competitors in the business of brewing and marketing
beverages; that since prior to the priority dates of
applicant’s applications and prior to any use by applicant
of its marks, opposer has used a barrel-shaped bottle in
connection with the marketing of its MICKEY’S brand beer;
that opposer owns a registration for this bottle
configuration; and that applicant’s bottle designs so
resemble opposer’s bottle configuration as to be likely,
when used in connection with applicant’s goods, to cause
confusion or mistake or to deceive. Opposer also requested,
in its notice of opposition to Application Serial No.
75437843, that the opposition proceeding be consolidated
with the previously brought opposition to Application Serial
No. 75932797.
Applicant filed answers to the notices of opposition,
and in its answer in Opposition No. 91165241 admitted that
opposer is in the business of distributing and selling beer;
Opposition Nos. 91159224 and 91165241
5
that Miller Products Company is the owner of trademarks used
in connection with the distribution and sale of beer and
licenses these trademarks to Miller Brewing Company; and
that opposer and applicant are competitors in the business
of brewing and marketing beverages. Applicant otherwise
denied the salient allegations in both notices of
opposition.
Pursuant to opposer’s uncontested motion for
consolidation, the Board consolidated these opposition
proceedings on September 27, 2005.
The record consists of the pleadings; the files of the
opposed applications; the testimony deposition, with
exhibits, of David F. Dixon, a marketing director at Miller
Brewing Company; and a copy of opposer’s pleaded
registration, No. 947679, for the bottle configuration shown
below, for beer, submitted by opposer under a notice of
reliance. This status and title copy shows that the
registration is currently existing and that it is owned by
Miller Products Company.4

4 Registration issued November 21, 1972; Section 8 & 15
affidavits accepted and acknowledged. It is noted that the
status and title copy of the registration states that there was a
first renewal for a term of ten years from November 21, 2002. In
point of fact, Office records, including a copy of the renewal
certificate submitted as part of the status and title copy, show
that a first renewal, for a term of ten years, occurred on
November 21, 1992, and that the second renewal term began on
November 21, 2002.
Opposition Nos. 91159224 and 91165241
6

The registration bears the following description of the
mark:
The mark consists of the configuration
of the bottle which is used as a
container for the goods.

Applicant did not submit any evidence. Both parties filed
appeal briefs, and opposer filed a reply brief. Applicant
had originally requested an oral hearing, but subsequently
withdrew that request; no oral hearing was held.
The only evidence we have relates to opposer and its
use of its mark. The record shows that opposer uses a
somewhat updated version of its registered bottle
configuration for its MICKEY’S brand of beer, which is one
of opposer’s economy brands. It obtained this brand,
including the bottle configuration, from Stroh’s in 1999;
that company in turn obtained it from the Heileman Brewing
Company when it purchased that company in 1995 or 1996.
Because of the importance of the bottle configuration,
opposer, and its predecessor Stroh’s, have used a depiction
of the bottle configuration even on its cans of MICKEY’S
beer since 1997. Sales of MICKEY’S beer have amounted to
Opposition Nos. 91159224 and 91165241
7
approximately half a million barrels, or seven million
cases, per year for the last ten years. Seventy-five to
eighty percent of these sales are in the trademarked
bottles. Opposer promotes its beer through stickers,
posters, and case stackers that are used as point-of-sale
displays.
Although opposer itself does not do so, many consumers
refer to the bottle configuration as “the grenade, the “hand
grenade” or the “green grenade.” Opposer has made of record
pages from various websites showing such references. These
websites appear to carry personal opinions of ordinary
people, and most are very casual in nature. For example, a
webpage entitled “The Opinionated Beer Page,” www.tobp.com,
contains a review of Mickey’s Fine Malt liquor from someone
called Steve, which says that “it came in a 24 oz. ‘silo,’
not the ‘Green Grenade’ that we all knew and loved from our
college days.” The website Epinions.com, reviewing Mickey’s
Fine Malt Liquor, has the statement, “Mickeys has an
incredibly smooth taste, whether it’s out of a grenade, a
40, or even a 24 oz. Tallboy can, it’s still undeniably
smooth.” A review of Mickey’s Snack Bar by Sean states that
“As for the drinks menu, the beer selection consists
primarily of ‘low-brow domestics’ (according to The Official
Chicago Bar Guide 2001), but does at least feature Mickey’s
Big Mouth. For those of you not sophisticated enough to
Opposition Nos. 91159224 and 91165241
8
know, Mickey’s Big Mouths is a fine malt liquor beverage
served in small green, grenade-like glass bottles that often
explode like grenades when hurled against a wall
afterwards.” www.chicagobarproject.com. An online article
in The Kansas State Collegian, www.kstatecollegian.com, on
the author’s favorite drinks, says, in connection with
Mickeys, “The smaller bottles are great, too, but watch out
because their hand grenade style bottle makes it really
tempting to throw one or two after you’ve thrown back one or
two.” A posting at http://granturismox.net/forum states
that “me and my big bro chugged 2.40’s each of mickey’s hand
grenades (these were obviously not the ‘hand grenade’ size)
before arriving at the game.”
The evidence of opposer’s ownership of the bottle
configuration registration, as well as the testimony of its
witness about the similarity of applicant’s bottle and the
likelihood of confusion, establish opposer’s standing.
Further, in view of opposer’s registration, priority is not
in issue. King Candy Company v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). In any
event, opposer’s witness testified that opposer has used the
bottle configuration since at least 1997, which is earlier
than the 1998 and 1999 filing dates/priority filing dates of
applicant’s applications.
Opposition Nos. 91159224 and 91165241
9
Thus, we turn to the issue of likelihood of confusion.
Our determination of this issue 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, two key considerations are the similarities
between the marks and the similarities between the goods
and/or services. 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).
Opposer has identified five du Pont factors that are
relevant to this present case: similarity or dissimilarity
of the marks; similarity or dissimilarity of the goods;
similarity or dissimilarity of trade channels; conditions
under which and buyers to whom sales are made; and the fame
of the prior mark. We note that applicant, in its brief,
has addressed only the factors of similarity of appearance
and the degree of care customers would take when purchasing
the products.
We first consider the opposition proceeding against
applicant’s Bottle per se mark. This application includes,
in its identification, “beer.” This is the identical item
Opposition Nos. 91159224 and 91165241
10
for which opposer’s bottle configuration is registered.
Thus, these goods are legally identical and therefore must
be deemed to travel through the same channels of trade and
be sold to the same classes of consumers. The du Pont
factors of the similarity of the goods and channels of trade
favor opposer.
We turn next to a consideration of the marks, noting
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). Here, the marks
themselves are extremely similar. Both are, of course,
configurations of bottles, and both suggest a barrel shape,
with both vertical and horizontal lines. Both also have a
somewhat convex bulge in the middle. Although some
differences can be discerned when the marks are compared on
a side-by-side basis, that is not the proper test. Under
actual marketing conditions, consumers do not necessarily
have the luxury of making side-by-side comparisons between
marks, and must rely upon their imperfect recollections.
Dassler KG v. Roller Derby Skate Corporation, 206 USPQ 255
(TTAB 1980). We also note that there is no evidence of
third-party uses of similar bottle configurations, such that
we can say that consumers would be used to noting small
Opposition Nos. 91159224 and 91165241
11
differences between bottles and viewing such differences as
distinguishing features.
Applicant argues that the marks are distinguishable
because opposer’s beer has always been marketed in a green
bottle, while applicant’s bottle configuration, as set forth
in the description of the mark in the application, is “a
transparent bottle.” We agree that this difference would
merit consideration if opposer were relying solely on its
common law rights in the bottle configuration (and we
discuss this point, infra, in connection with the Bottle
with BOMBA mark), but opposer’s registration does not limit
its rights to a green bottle configuration. Rather, the
protection granted by opposer’s registration must be deemed
to extend to a bottle design that is clear and/or
transparent.
Accordingly, we find that the marks are similar, and
that this du Pont factor favors opposer.
Because we have relied, in determining that the marks
are similar, on opposer’s registration and the rights
inherent in that registration, we have not given any effect
to the evidence of the strength of opposer’s mark based on
its use and advertising, since that evidence relates to
opposer’s use of a green-colored bottle.
We next consider the last du Pont factor that the
parties consider relevant, that of the conditions of
Opposition Nos. 91159224 and 91165241
12
purchase and the buyers to whom sales are made. There is no
dispute that beer is a consumer item that is purchased by
the public at large. Applicant has also conceded that the
purchasers of the goods may be impulse buyers. (“Opposers
have characterized the purchasers of the goods as impulse
buyers. While this may be true to some degree….” Brief, p.
4). Applicant contends, however, that even someone making
an impulse purchase will not completely ignore the packaging
or the name displayed on that packaging. To the extent that
applicant is asserting that additional information will
appear on packaging or labels for the beer, that argument is
unpersuasive. Given that opposer has made its registration
of record, we must determine the issue of likelihood of
confusion based on the mark shown in its registration and
the mark for which applicant seeks registration. To the
extent that applicant is referring to the word BOMBA which
appears on the bottle configuration in its companion
application, that word in not part of the mark at issue in
Application Serial No. 75932797. Thus, if applicant were to
obtain a registration for its applied-for mark, it would be
entitled to use it without any word mark.
Finally, although neither party has addressed this, we
note that opposer’s witness was asked about any instances of
actual confusion, and testified that he was not aware of
any. However, because there is no evidence that applicant’s
Opposition Nos. 91159224 and 91165241
13
mark has even been used in the United States, we can draw no
conclusion about the likelihood of confusion from the lack
of evidence of actual confusion. Therefore, this du Pont
factor is neutral.
Because all relevant du Pont factors are either neutral
or favor a finding of likelihood of confusion, opposer’s
opposition to Application Serial No. 75932797 for the Bottle
per se mark is sustained.
As for the opposition to the Bottle with BOMBA mark,
again, applicant has argued only that the marks are
different and that even impulse purchasers will be able to
distinguish the marks. Considering first the du Pont factor
of the similarity of the goods, applicant’s identification
is for non-alcoholic beverages, and specifically lists such
types of beverages as carbonated water and fruit flavored
soft drinks. Opposer uses and has registered its mark for
beer. Although there are differences between beer and non-
alcoholic beverages, both are, of course, beverages. In
addition, opposer’s witness testified that both opposer and
other beer companies sell soft drinks as well as beer. For
example, opposer’s “Henry Weinhard’s brand has a whole line
of soft drinks, root beer, orange.” Test, p. 20. There is
also testimony about other companies that, for example, make
both beer and root beer. Opposer’s witness testified that
if a confusingly similar bottle configuration were used for
Opposition Nos. 91159224 and 91165241
14
a non-alcoholic beverage, consumers would assume that it was
a line extension of opposer’s MICKEY’S mark, or was a non-
alcoholic drink from the makers of MICKEY’S. Although there
is no evidence that beer companies offer both beer and soft
drinks under the same mark, the fact that they offer both
types of goods supports a finding that the goods are
related. Moreover, applicant has not contended that the
goods are not related. Accordingly, we treat this du Pont
factor as favoring opposer.
As far as the factor of trade channels, opposer’s
witness testified that many of the distributors of opposer’s
MICKEY’S beer sell other beverages, including soft drinks.
Again, applicant has not contested this, and we therefore
treat this factor as favoring opposer.
This brings us to the factor of the similarity or
dissimilarity of the marks. As we stated in our discussion
of the Bottle per se mark, the configurations of opposer’s
and applicant’s mark are very similar. However, applicant’s
Bottle with BOMBA mark also includes the word BOMBA.
Opposer’s witness testified that because this word would be
perceived as the word “bomb,” and the popular nickname given
to opposer’s bottle configuration is “the grenade,”
consumers would not distinguish the marks based on the
presence of this word. We note that, according to the
application file, BOMBA has no meaning, but is derived from
Opposition Nos. 91159224 and 91165241
15
the German word for “bombastic.” Response filed June 11,
1999. However, because BOMBA sounds and looks like the word
“bomb,” and because most people are unlikely to view “bomba”
as the beginning letters of the German word “bombastitch,”
we agree with opposer that many consumers would view BOMBA
in applicant’s mark as a reference to “bomb.” Further,
because both “bomb” and “grenade” are words for weapons, and
applicant itself describes its bottle configuration as being
in the shape of a “hand grenade,” BOMBA is likely to suggest
a connection with opposer’s “grenade” bottle mark.
Moreover, it is a well-established rule that the addition of
a trade name or house mark to one of two otherwise
confusingly similar marks will not avoid the likelihood of
confusion. See In re C. F. Hathaway Co., 190 USPQ 343 (TTAB
1976). In fact, where the marks are otherwise virtually the
same, the addition of a house mark is more likely to add to
the likelihood of confusion than to aid to distinguish the
marks. Key West Fragrance & Cosmetic Factory, Inc. v.
Mennen Co., 216 USPQ 168 (TTAB 1982).
Applicant has relied on three cases brought pursuant
to Section 43(a) of the Trademark Act to support its
contention that the inclusion of the word mark BOMBA on its
bottle will avoid confusion. We find these cases, all of
which involved the issue of unfair competition, to be
distinguishable. For example, Braun, Inc. v. Dynamics Corp.
Opposition Nos. 91159224 and 91165241
16
of America, 975 F.2d 815, 24 USPQ2d 1121 (Fed. Cir. 1992)
involved the issue of trade dress infringement of the
packaging for the parties’ products, and the Court
considered all aspects of the parties’ cartons, saying that
Braun identifies its product as a “hand
blender” in horizontal red letters
directly below the brand name “Braun”
and the product named “Multipractic” in
plain black lettering. The name Braun
also appears in stylized black lettering
on the white background at the bottom of
the carton. In contrast, Waring refers
to its product by its registered
trademark “Blendor” preceded by the
words “Hand Held” in vertical white
lettering on a grey stripe of the front
panel that is bordered by a red stripe.
Its Waring name appears in logo form in
white letters on a red rectangle. All
of Waring's products, including its
Juice Extractor and Vortex Blendor,
share this trade dress, which Waring has
used since 1985, that is one full year
before the introduction of Braun's
blender.

24 USPQ at 1131-32.

Thus, the plaintiff in that case did not have a
trademark in the packaging separate from the house mark and
product mark that appeared on the packaging, unlike the
bottle configuration which is a registered trademark of
opposer’s. Rather, both parties were using house marks and
product marks on their cartons. Further, the Court never
considered that the plaintiff’s packaging without the BRAUN
or MULTIPRACTIC trademark could be inherently distinctive.
Opposition Nos. 91159224 and 91165241
17
Even if we accept that the decisions cited by applicant
can be said to support the position that the addition of a
company’s trade name to the packaging or trade dress of
goods can serve to avoid confusion, the decisions are
inapposite here. A major factor here, not present in those
cases, is the similarity in connotation between the word
that appears on applicant’s bottle configuration, BOMBA, and
the popular nickname for opposer’s bottle configuration, the
“grenade” or the “green grenade.” Thus, the word BOMBA is
not a distinguishing element, but would be viewed as
relating to the opposer’s bottle shape.
This nickname obviously is based not only on the shape,
but the color, of opposer’s bottle, so we must consider
applicant’s argument that the difference in color between
the bottles, with opposer’s being green and the applicant’s
being transparent, will avoid confusion. Although
applicant’s application does not limit its bottle to clear
glass, it does describe it as being transparent, so if it is
not clear, it must be of a pale color. For purposes of this
discussion, we will treat the glass as being clear.
We agree with applicant that consumers will readily
perceive the differences between a bottle that is green, and
one that is clear. However, the question is not whether the
bottle configuration marks can be told apart, but whether
they will be perceived as indicating goods emanating from a
Opposition Nos. 91159224 and 91165241
18
single source. In this case, given that there is no
evidence of third parties that use similar bottle
configurations, we think that consumers who are familiar
with opposer’s green “grenade” bottle for beer, and see non-
alcoholic beverages sold in applicant’s similar clear glass
bottle, are likely to believe that these goods all emanate
from the same source, and that opposer is using a clear
version of its bottle for its non-alcoholic beverages. In
other words, the clear color of the bottle will be seen as
differentiating the goods, rather than the source of the
goods.
Because of this, we are not persuaded by applicant’s
argument that impulse buyers will not be confused because
they will note the coloring of the bottles and the name
BOMBA on applicant’s bottle.
Accordingly, we find that applicant’s Bottle with BOMBA
mark is likely to cause confusion with opposer’s bottle
configuration. In reaching this conclusion, we have not
treated opposer’s mark as famous or extremely strong.
Although the bottle shape has clearly achieved some
recognition as indicating the source of opposer’s beer, and
there are no third-party uses of similar bottle marks, the
evidence regarding opposer’s use and promotion is rather
limited. For example, opposer has not provided any evidence
about the degree of its advertising or promotion of the
Opposition Nos. 91159224 and 91165241
19
mark, such as its advertising expenditures. Nor has opposer
provided evidence about the geographic extent of its sales,
or given any context for its sales figures, so that we could
determine whether its sales are significant in the product
category of beer. Thus, we have accorded the bottle
configuration only the normal scope of protection for an
inherently distinctive mark. However, even without evidence
of fame, opposer is entitled to judgment based on the other
du Pont factors discussed by the parties, all of which favor
a finding of likelihood of confusion.
Decision: The oppositions are sustained.