One Love Brewery

Trademark Trial and Appeal Board

Jul 19, 2021

88407202 (T.T.A.B. Jul. 19, 2021)

This Opinion is not a
Precedent of the TTAB

Mailed: July 19, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re One Love Brewery
_____

Serial No. 88407202
_____

Kevin C. Cain of Sulloway & Hollis, P.L.L.C.,
for One Love Brewery.
Jillian Michaud-King, Trademark Examining Attorney, Law Office 122,
Kevin Mittler, Managing Attorney.
_____

Before Cataldo, Heasley, and English
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
Applicant, One Love Brewery, a limited liability company based in Lincoln, New
Hampshire, seeks registration on the Principal Register of the standard character
mark DRINK THE EAST for “hats; jackets; sweatshirts; T-shirts” in International
Class 25.1

1 Application Serial No. 88407202 was filed on April 29, 2019, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s claim of first use anywhere and
use in commerce since at least as early as January 1, 2015.

Serial No. 88407202
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The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of
likelihood of confusion with the registered mark DRINK THE WEST (in standard
characters) for “hats; shirts” in International Class 25, owned by Black Tooth
Brewing Company, LLC, based in Casper, Wyoming.2
When the refusal was made final, Applicant appealed. The appeal is fully briefed.
We affirm the refusal to register.
I. Likelihood of Confusion
Section 2(d) of the Trademark Act provides that an applied-for mark may be
refused registration if it “[c]onsists of or comprises a mark which so resembles a mark
registered in the Patent and Trademark Office, or a mark or trade name previously
used in the United States by another and not abandoned, as to be likely, when used
on or in connection with the goods of the applicant, to cause confusion, or to cause
mistake, or to deceive….” 15 U.S.C. § 1052(d).
To determine whether there is a likelihood of confusion between the marks under
Section 2(d), we analyze the evidence and arguments under the DuPont factors. 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

The TTABVUE and Trademark Status & Document Retrieval (“TSDR”) citations refer to the
docket and electronic file database for the involved application. All citations to the TSDR
database are to the downloadable .pdf version of the documents.

2 Registration No. 4979489, issued on the Principal Register on June 14, 2016. The subject
Registration also identifies “beer” in International Class 32, although the Examining
Attorney does not rely upon the Class 32 goods in support of her refusal.
Serial No. 88407202
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USPQ2d 2045, 2049 (2015). We consider each DuPont factor for which there is
evidence and argument. In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160,
1161-62 (Fed. Cir. 2019). “Not all DuPont factors are relevant in each case, and the
weight afforded to each factor depends on the circumstances.” Stratus Networks, Inc.
v. UBTA-UBET Commc’ns Inc., 955 F.3d 994, 2020 USPQ2d 10341, *3 (Fed. Cir.
2020). “In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods and services.”
In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (Fed. Cir. 2004), cited
in Ricardo Media v. Inventive Software, 2019 USPQ2d 311355 at *5 (TTAB 2019).
A. Similarity of the Goods and Channels of Trade

The second DuPont factor concerns the “similarity or dissimilarity and nature of
the goods or services as described in an application or registration….” DuPont, 177
USPQ at 567. The third DuPont factor concerns the “similarity or dissimilarity of
established, likely-to-continue trade channels.” Id.
Here, once again, Applicant’s identified goods are “hats; jackets; sweatshirts; T-
shirts” and Registrant’s goods are “hats; shirts.” A proper comparison of the goods
“considers whether ‘the consuming public may perceive [the respective goods or
services…] as related enough to cause confusion about the source or origin of the
goods and services.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086
(Fed. Cir. 2014) (quoting Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261,
62 USPQ2d 1001, 1004 (Fed. Cir. 2002)) quoted in In re FabFitFun, Inc., 127 USPQ2d
1670, 1672 (TTAB 2018).
Serial No. 88407202
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Applicant admits the obvious: that its “hats” are identical to Registrant’s hats.3
That identity suffices to establish that the Class 25 goods are related:
The Examining Attorney need not prove, and we need not find, similarity
as to each product listed in the description of goods. ‘[I]t is sufficient for
finding a likelihood of confusion if relatedness is established for any item
encompassed by the identification of goods within a particular class in the
application.’

In re St. Julian Wine Co., 2020 USPQ2d 10595, *3-4 (TTAB 2020) (quoting In re
Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015)); see also Tuxedo Monopoly,
Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
Applicant, however, argues that Registrant’s “‘shirts’ are not identical and are not
confusingly related” to Applicant’s “jackets; sweatshirts; T-shirts.”4 We agree with
the Examining Attorney that Registrant’s broadly described “shirts” are presumed to
encompass all goods of the type identified, including Applicant’s more narrowly
described “sweatshirts; T-shirts.” In re Country Oven, Inc., 2019 USPQ2d 443903, *9
(TTAB 2019); Varsity Pajamas, Inc. v. Schackne, 143 USPQ 428, 430 (TTAB 1964)
(“shirts” presumed to include T-shirts). So these goods are legally identical. See In re
i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018).
And Applicant’s “jackets” are related to Registrant’s clothing goods. Many
different articles of clothing have been found to be related for likelihood of confusion
purposes. See In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (women’s
shoes considered complementary to women’s pants, blouses, shorts and jackets); In

3 Applicant’s brief, 4 TTABVUE 14.
4 Applicant’s brief, 4 TTABVUE 14.
Serial No. 88407202
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re Mercedes Slacks, Ltd., 213 USPQ 397, 398-399 (TTAB 1982) (TTAB 1982) (hosiery
related to trousers).
To corroborate this relatedness, the Examining Attorney adduces evidence from
clothing retailers American Eagle, H&M, and Victoria’s Secret to show that the same
entity markets jackets, shirts and hats under the same mark.5 More to the point, she
adduces evidence from Black Plague Brewing, Great Lakes Brewing Co., Stone
Brewing, Equilibrium Brewing, and Boulevard Brewing Co. showing that breweries
provide jackets, hats, shirts, and sweatshirts under the same mark.6 This evidence,
showing that these goods come from the same sources under the same mark, helps
establish that the respective goods are related. In re Detroit Athletic Co., 903 F.3d
1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018); Ricardo Media v. Inventive Software,
219 USPQ2d 311355, at *3.
Applicant argues that “The trade channels are dissimilar insofar as the Class 025
items are sold at the Registrant’s and Applicant’s physical brewery locations in
Wyoming and New Hampshire; and on the websites tied to those specific regional
brewery locations.”7 But as Applicant and the Examining Attorney agree, likelihood
of confusion is determined based on the description of the goods stated in the
application and registration at issue, not on extrinsic evidence of actual use. See In

5 AE.com, HM.com, VictoriasSecret.com, all accessed on 10/3/2019, Feb. 9, 2020 Office Action
at 7-23.
6 BlackPlagueBrewing.com, GreatLakesBrewing.com, StoneBrewing.com, Equilibrium-
Brewery.myshopify.com, all Boulevard.com, all accessed on 7/20/2020, July 20, 2020 Office
Action at 5-21.
7 Applicant’s June 25, 2020 Response to Office Action at 3. See also Applicant’s brief, 4
TTABVUE 14, and Applicant’s reply brief, 7 TTABVUE 6.
Serial No. 88407202
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re Detroit Athletic, 128 USPQ2d at 1052.8 As the Board has declared:
In innumerable cases, the Board hears arguments about how the parties’
actual goods, services, customers, trade channels, and conditions of sale
are narrower or different from the goods and services identified in the
applications and registrations. But as stated in equally innumerable
decisions of our primary reviewing court, we may consider any such
restrictions only if they are included in the identification of goods or
services.

In re FCA US LLC, 126 USPQ2d 1214, 1217n. 18 (TTAB 2018), quoted in In re
Embiid, 2021 USPQ2d 577, *28 n.38 (TTAB 2021).
Here, the Application and Registration contain no geographic restrictions, and are
presumed to be national in scope. See Giant Food, Inc. v. Nation’s Foodservice, Inc.,
710 F.2d 1565, 218 USPQ 390, 393 (Fed. Cir. 1983) (“Applicant seeks a geographically
unrestricted registration under which it might expand throughout the United States.
Under these facts, it is not proper, as the TTAB found, to limit our consideration to
the likelihood of confusion in the areas presently occupied by the parties. Section 7(b)
of the Trademark Act of 1946, 15 U.S.C. § 1057(b), creates a presumption that the
registrant has the exclusive right to use its mark throughout the United States.
Therefore, the geographical distance between the present locations of the respective
businesses of the two parties has little relevance in this case.”).
As Applicant admits, the identical goods, hats, are presumed to travel in the same
channels of trade to the same classes of customers—the general public.9 Zheng Cai v.

8 Applicant’s brief, 4 TTABVUE 13; Examining Attorney’s brief, 6 TTABVUE 9.
9 Applicant’s brief, 4 TTABVUE 14.
Serial No. 88407202
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Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting
In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).
So too with the legally identical goods. In re Yawata Iron & Steel Co., 403 F.2d
752, 159 USPQ 721, 723 (CCPA 1968) (where the goods are legally identical, the
channels of trade and classes of purchasers are considered to be the same). And as
the third-party evidence shows, the remaining related goods travel through the same
channels to the same customers.
Because the goods, the channels of trade, and the classes of customers are similar
or the same, the second and third DuPont factors favor a finding of likelihood of
confusion.
B. Similarity of the Marks

Under the first DuPont factor, we determine the similarity or dissimilarity of
Applicant’s and Registrant’s marks in their entireties, taking into account their
appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at
567; Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1160 (Fed. Cir. 2014). “Similarity in any one of these elements may be
sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126
USPQ2d 1742, 1746 (TTAB 2018) aff’d 777 Fed. Appx. 516 (Fed. Cir. 2019) (citing In
re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)).
Again, Applicant’s mark is DRINK THE EAST and Registrant’s mark is DRINK
THE WEST. It is undisputed that both marks begin with the same two words:
Serial No. 88407202
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“DRINK THE.”10 The Examining Attorney notes that consumers are generally more
inclined to focus on the first part of a mark, citing Palm Bay Imps., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE
CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the
first word in the mark and the first word to appear on the label”).11
Applicant argues that Palm Bay is distinguishable. In that case, the first word,
“VEUVE,” was arbitrary for sparkling wine and thus conceptually strong. Id. In this
case, unlike “VEUVE,” Applicant argues, “DRINK THE” is not a strong, distinctive
term as applied to merchandise sold by breweries; it is a generic or descriptive term,
like “PECAN” in PECAN SANDIES and PECAN SHORTEES for pecan cookies. See
Keebler Co. v. Murray Bakery Prods., 866 F.2d 1386, 9 USPQ2d 1736 (Fed. Cir. 1989).
Here, as in Keebler, Applicant concludes, the shared words “DRINK THE” are not
the dominant, distinctive part of Applicant’s or Registrant’s marks, even though they
are the first words in both marks.12
We find Applicant’s attempted distinction inapt. In Keebler, the Federal Circuit
affirmed the Board’s holding that PECAN is “merely descriptive of a principal
ingredient of both parties’ cookies….” Id. at 1739. In this case, “DRINK THE” is
neither generic for nor merely descriptive of clothing. See generally Park ’N Fly, Inc.

10 Examining Attorney’s brief, 6 TTABVUE 5; Applicant’s reply brief, 7 TTABVUE 4.
11 Examining Attorney’s brief, 6 TTABVUE 5.
12 Applicant’s brief, 4 TTABVUE 10-12; Applicant’s reply brief, 7 TTABVUE 4-5.
Serial No. 88407202
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v. Dollar Park & Fly, Inc., 469 U.S. 189, 194 (1985) (A mark is generic if the relevant
public primarily uses or understands the mark to refer to the class or genus of
products in question); In re North Carolina Lottery, 866 F.3d 1363, 123 USPQ2d 1707,
1709 (Fed. Cir. 2017) (A mark is merely descriptive if it immediately conveys
information concerning a feature, quality, or characteristic of the goods or services
for which registration is sought). Neither Applicant nor Registrant has disclaimed
“DRINK THE.” See Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107
USPQ2d 1750, 1762 (TTAB 2013) (disclaimer concedes mere descriptiveness), aff’d
565 Fed. Appx. 900 (Fed. Cir. 2014).
Furthermore, Registrant’s mark is registered on the Principal Register without a
showing of acquired distinctiveness under Section 2(f) of the Trademark Act, 15
U.S.C. § 1052(f), so it is presumed to be inherently distinctive. See Tea Bd. of India
v. Republic of Tea Inc., 80 USPQ2d 1881, 1889 (TTAB 2006). This holds true even if
it is deemed suggestive in the context of brewery merchandise. See Maytag Co. v.
Luskin’s, Inc., 228 USPQ 747, 750 (TTAB 1986) (“there is nothing in our trademark
law which prescribes any different protection for suggestive, nondescriptive marks
than that which is accorded arbitrary and fanciful marks”). Consequently, the marks’
shared words “DRINK THE” are not conceptually weak, as Applicant argues.
Even if the marks’ initial two words were somewhat conceptually weak, they
would still make the greatest impression on consumers. In In re Detroit Athletic, the
Federal Circuit affirmed the Board’s decision that DETROIT ATHLETIC CO. is
confusingly similar to DETROIT ATHLETIC CLUB, stating:
Serial No. 88407202
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The Board acknowledged that ‘the wording DETROIT ATHLETIC is itself
conceptually weak’ insofar as DETROIT is geographically descriptive and
ATHLETIC is merely descriptive, but the Board nevertheless found that
the identical wording at the beginning of the marks ‘lessens the possible
influence of differing wording at the end.’ … We see no reversible error in
this finding.

Id. at 1049 n.3.

The Federal Circuit emphasized:

The identity of the marks’ initial two words is particularly significant
because consumers typically notice those words first. … Indeed, in view of
the marks’ structural similarity, the lead words are their dominant portion
and are likely to make the greatest impression on consumers. … This
likeness weighs heavily in the confusion analysis and the Board did not err
in so finding.

Id. at 1049 (internal citation omitted).
So too here. We find that the marks’ initial two words create a structural
similarity that is likely to be make the greatest impression on consumers.
The Examining Attorney maintains that the last word in each mark—EAST in
Applicant’s case and WEST in Registrant’s case—creates a similar commercial
impression, as each connotes a cardinal direction.13 A “cardinal direction” is “any of
the four principal compass directions-north, east, south and west.”14 Applicant
protests that “[t]he marks have absolutely opposite (in fact direct opposite)
commercial impressions of drinking West and drinking East.”15

13 Examining Attorney’s brief, 6 TTABVUE 6.
14 YourDictionary.com, accessed 7/12/2021. The Board may take judicial notice of dictionary
definitions, including online dictionaries that exist in printed format or regular fixed
editions. Int’l Dairy Foods Ass’n v. Interprofession du Gruyère and Syndicat
Interprofessionnel du Gruyère, 2020 USPQ2d 10892, * 17 n. 115 (TTAB 2020).
15 Applicant’s brief, 4 TTABVUE 10. To the same effect, see Applicant’s brief, 4 TTABVUE 3,
12; Applicant’s reply brief, 7 TTABVUE 3, 6.
Serial No. 88407202
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Give the marks’ identical structure and cadence, however, the fact that they end
with disparate compass points does not suffice to distinguish them. Both marks
consist of three words beginning with “DRINK THE” and ending with a one-syllable
EAST or WEST. Compare In re Detroit Athletic, 128 USPQ2d at 1049 (“both marks
consist of three words beginning with the identical phrase ‘Detroit Athletic’ and
ending with one-syllable ‘C’ words (i.e., ‘Co.’ and ‘Club’).”).
And the similarly-structured marks appear on clothing lines that are in part
identical. “‘[W]here . . . the goods at issue are identical, the degree of similarity
necessary to support a conclusion of likely confusion declines.’ In re Viterra, 671 F.3d
at 1363 (internal quotation marks and citation omitted).” Zheng Cai v. Diamond
Hong, 127 USPQ2d at 1801. As such, Applicant’s mark would tend to be seen as a
variation of Registrant’s mark, suggesting another clothing line emanating from the
same source. See In re Collegian Sportswear, Inc., 224 USPQ 174, 176 (TTAB 1984)
(“customers familiar with registrant’s ‘COLLEGIENNE’ clothing might believe that
‘COLLEGIAN OF CALIFORNIA’ clothing was a new line of clothing from registrant
featuring a ‘California’ or west coast style.”).
For these reasons, we agree with the Examining Attorney’s analysis:

[C]onsumers would perceive the goods as originating from the same source,
with DRINK THE EAST denoting a product line that originates in the East
or uses ingredients or materials from the East and with DRINK THE
WEST denoting a product line that originates in the West or uses
ingredients or materials from the West. Accordingly, the differences in
geographic direction are insufficient to obviate a likelihood of confusion
between the marks.16

16 Examining Attorney’s brief, 6 TTABVUE 8.
Serial No. 88407202
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Taken in their entireties, the marks are similar in sight, sound, connotation, and
commercial impression, and the first DuPont factor weighs in favor of finding a
likelihood of confusion.
C. Sophistication of the Customers

The fourth DuPont factor concerns “[t]he conditions under which and buyers to
whom sales are made, i.e. ‘impulse’ vs. careful, sophisticated purchasing.” DuPont,
177 USPQ at 567.
Applicant asserts that microbreweries such as Applicant and Registrant attract
discerning, sophisticated craft beer drinkers “who are willing to pay premium prices
for premium malt beverages.”17 These customers would exercise care and
sophistication, not only in purchasing the beer, but in purchasing clothing items
offered by each microbrewery, it argues.18
Several problems beset this argument. First, Applicant’s assertion is unsupported
by any evidence that the relevant class of consumers is sophisticated or careful.
“Attorney argument is no substitute for evidence.” Enzo Biochem, Inc. v. Gen-Probe
Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005). Second, Applicant’s
assertion is unsupported by the respective identifications of goods, which identify
various clothing items with no restriction as to price, quality or category of consumer.
“It is also important to consider that t-shirts and many of the other casual, everyday
items of wearing apparel identified in applicant’s application are relatively

17 Applicant’s June 25, 2020 Response to Office Action at 3.
18 Applicant’s reply brief, 7 TTABVUE 7.
Serial No. 88407202
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inexpensive and are therefore likely to be purchased by consumers on impulse, and
without a great deal of care.” Boston Red Sox Partnership v. Sherman, 88 USPQ2d
1581, 1591 (TTAB 2008) (quoting Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1899 (Fed. Cir. 2000) (“When products are relatively low-priced and
subject to impulse buying, the risk of likelihood of confusion is increased because
purchasers of such products are held to a lesser standard of purchasing care.”)).
Third, even if the purchasers of Applicant’s clothing include beer drinkers, that
broad spectrum of consumers encompasses not only sophisticated connoisseurs of
craft beer who will only wear the beer-related merchandise of favored brewers, but
“ordinary consumers who may buy inexpensive beer on impulse,” In re Bay State
Brewing Co., 117 USPQ2d 1958, 1960 n.4 (TTAB 2016), and we must make our
determination based on the least sophisticated consumer. Id. (citing Stone Lion
Capital v. Lion Capital, 110 USPQ2d at 1163-64). Finally, even those who are
sophisticated could well infer from the similar marks that a single brewery, or
affiliated breweries, produced the respective goods. See Bay State Brewing, 117
USPQ2d at 1961. “[W]ith in-part identical goods and similar marks, even a careful,
sophisticated consumer of these goods is not likely to note the differences in the
marks.” In re Hitachi High-Technologies Corp., 109 USPQ2d 1769, 1774 (TTAB 2014).
So the asserted sophistication and care of the purchasing public is neutral.
D. Third-Party Marks

Under the sixth DuPont factor, we consider “[t]he number and nature of similar
marks in use on similar goods.” DuPont, 177 USPQ at 567. This factor addresses the
Serial No. 88407202
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strength of a mark with respect to both its inherent strength, based on the nature of
the term itself, and its commercial strength, based on the marketplace recognition
value of the term as a mark. Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC,
110 USPQ2d 1458, 1476 (TTAB 2014) (citing In re Chippendales USA, Inc., 622 F.3d
1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both
by its conceptual strength (distinctiveness) and its marketplace strength (secondary
meaning).”)).
Applicant adduces evidence of two third-party registrations (one of them
cancelled) and two third-party applications (both based on intent to use):
Reg. No. Mark Pertinent Goods
3729580
(Cancelled)
DRINK THE SOUTH Beers and ales.
0853793 THE GRAND OLD DRINK OF THE
SOUTH
Liqueur
Appl. No. Mark Pertinent Goods
88322527
(Section 1(b))
LIVE NORTHWEST DRINK
NORTHWEST
Soft drinks, flavored
water, non-alcoholic fruit
juice beverages; bottled
water
88587063
(Section 1(b))

DRINK THE NORTH Drinking water.19

This sparse showing fails to demonstrate that the cited registered mark is weak—
either commercially or conceptually. Applicant adduces no evidence of third-party use
of similar marks in the marketplace, and confines its evidence to two applications,
both based on intent to use, and two registrations, one of which is cancelled. The two

19 Applicant’s June 25, 2020 Response to Office Action at 11-14; Applicant’s brief, 4
TTABVUE 6-7.
Serial No. 88407202
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“pending applications are evidence only that the applications were filed on a certain
date . . . .” In re Embiid, 2021 USPQ2d 577, at *36 (quoting Inn at St. John’s, 126
USPQ2d at 1745). And “‘dead’ or cancelled registrations have no probative value at
all.” In re Embiid, 2021 USPQ2d 577, at *35 n. 48 (TTAB 2021) (quoting In re Kysela
Pere et Fils Ltd., 98 USPQ2d 1261, 1264 (TTAB 2011)). At any rate, “[w]e have
frequently said that little weight is to be given such [third party] registrations in
evaluating whether there is likelihood of confusion. The existence of these
registrations is not evidence of what happens in the market place or that customers
are familiar with them….” AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177
USPQ 268, 269 (CCPA 1973) quoted in In re Inn at St. John’s, 126 USPQ2d at 1746
(TTAB 2018). This proffered evidence thus fails to demonstrate that the cited
registered mark is commercially weak.
Applicant’s evidence falls short of proving conceptual weakness, as well. A single
third-party registration is insufficient to establish that the wording in Registrant’s
mark is weak or diluted. “[E]vidence of one third-party user of a mark that is similar
to Opposer’s mark is not sufficient to establish that Opposer’s mark is a weak mark
entitled to only a narrow scope of protection or exclusivity of use especially when
Applicant has not introduced any evidence regarding the extent to which that mark
has been used.” Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016). The identified
goods are also far afield of Registrant’s clothing goods. “[T]he controlling inquiry is
the extent of third-party marks in use on ‘similar’ goods or services. . . . ‘It is less
relevant that [the mark] is used on unrelated goods or services….’ ” Omaha Steaks
Serial No. 88407202
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Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1694
(Fed. Cir. 2018) (quoting Century 21 Real Estate Corp. v. Century Life of Am., 970
F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992)).
In sum, Applicant has failed to demonstrate that the cited registered mark is
weak, either commercially or conceptually. We thus accord the registered mark the
normal scope of protection to which it is entitled. 15 U.S.C. § 1057(b); see Joseph
Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733,
1734 (Fed. Cir. 2017). The sixth DuPont factor is neutral.
E. Actual Confusion, vel non

Under the seventh and eighth DuPont factors, we consider the nature and extent
of any actual confusion, in light of the length of time and conditions under which
there has been contemporaneous use of the subject marks. DuPont, 177 USPQ at 567.
Applicant asserts that “There simply [is] no evidence of any confusion between the
merchandise sold and purchased from the brewery in Wyoming that states DRINK
THE WEST and the merchandise sold and purchased in New Hampshire that states
DRINK THE EAST.”20
As the Federal Circuit has made clear, however, “[u]ncorroborated statements of
no known instances of actual confusion . . . are of little evidentiary value,” especially
in ex parte examination. In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d

20 Applicant’s reply brief, 7 TTABVUE 7.

Serial No. 88407202
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1201, 1205 (Fed. Cir. 2003) quoted in In re Guild Mortg., 129 USPQ2d at 1163. The
Board explains why:
The fact that an applicant in an ex parte case is unaware of any instances
of actual confusion is generally entitled to little probative weight in the
likelihood of confusion analysis, inasmuch as the Board in such cases
generally has no way to know whether the registrant likewise is unaware
of any instances of actual confusion, nor is it usually possible to determine
that there has been any significant opportunity for actual confusion to have
occurred.

In re Opus One Inc., 60 USPQ2d 1812, 1817 (TTAB 2001).

The last consideration, a “significant opportunity for actual confusion to have
occurred,” is absent here. Unlike other DuPont factors, the eighth factor requires us
to look at actual market conditions, such as the geographic separation that has
heretofore existed between Applicant’s and Registrant’s markets. In re Embiid, 2021
USPQ2d 577, at *39 (citing In re Guild Mortg. Co., 2020 USPQ2d 10279, *39 (TTAB
2020). Applicant states that “The Registrant is a microbrewery located in Wyoming,
not surprisingly a western state of the United States. Applicant is located in New
Hampshire, an eastern state of the United States. The Registrant and Applicant
serve two separate and distinct consumer markets.”21 If that is true, then there is no
evidence that their markets have thus far overlapped, “further reducing the
significance of the absence of actual confusion.” Stratus Networks v. UBTA-UBET,
2020 USPQ2d 10341, at *5-6.
In any event, “While evidence of actual confusion may be considered in the DuPont
analysis, a showing of actual confusion is not necessary to establish a likelihood of

21 Applicant’s June 25, 2020 Response to Office Action at 2.
Serial No. 88407202
- 18 -
confusion.” In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed.
Cir. 2017) (internal punctuation omitted).
Accordingly, the seventh and eighth DuPont factors, gauging the length of time
during and conditions under which there has been contemporaneous use of the marks
without evidence of actual confusion, are neutral.22
II. Conclusion

Because the respective marks and goods are identical in part and otherwise
similar, and the other DuPont factors do not dispel this similarity, we find a likelihood
of confusion between the marks under Section 2(d). 15 U.S.C. § 1052(d).
Decision: The refusal to register Applicant’s mark is affirmed.

22 During prosecution, Applicant also claimed priority over the cited registered mark.
Applicant’s June 25, 2020 Response to Office Action at 2. However, “the validity of a cited
registration cannot be challenged in an ex parte proceeding.” In re Fat Boys Water Sports
LLC, 118 USPQ2d 1511, 1517 (TTAB 2016). Tacitly acknowledging this stricture, Applicant
did not assert the argument in its briefs on appeal, and has therefore waived it. See
TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 1203.02(g)
(June 2021) (“If an applicant, in its appeal brief, does not assert an argument made during
prosecution, it may be deemed waived by the Board.”) quoted in In re Katch, LLC, 2019
USPQ2d 233842, *1-2 (TTAB 2019) (2018 version).