8-Bit Brewing LLC

Trademark Trial and Appeal Board

Oct 30, 2017

No. 86760527 (T.T.A.B. Oct. 30, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: October 30, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re 8-Bit Brewing LLC
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Serial No. 86760527
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Lorie K. Mallari of The Craft Beer Attorney, APC for
8-Bit Brewing, LLC.

Daniel F. Capshaw, Trademark Examining Attorney, Law Office 110,
Chris A. F. Pedersen, Managing Attorney.
_____

Before Cataldo, Wellington, and Hightower,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
8-Bit Brewing LLC (“Applicant”) seeks registration on the Principal Register of
the mark 8-Bit Aleworks, in standard character format, for “beer” in
International Class 32.1

1 Application Serial No. 86760527 was filed on September 17, 2015, based on Applicant’s
allegation of an intent to use the mark in commerce, under Trademark Act Section 1(b).
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The Trademark Examining Attorney has refused registration of Applicant’s mark
on the ground of a likelihood of confusion under Section 2(d) of the Trademark Act,
15 U.S.C. §1052(d), in view of the registered marks:
8 bit Brewing Company, in standard characters (Reg. No. 4564603); and
(Reg. No. 4564602).2
The two registrations are owned the same entity and are for “Beer, ale, lager, stout
and porter; Malt liquor; Pale beer.” Each registration contains a disclaimer of the
wording BREWING COMPANY.
When the refusal was made final, Applicant filed a request for reconsideration
which was denied by the Examining Attorney. Applicant then filed a timely appeal
which has been briefed. For the following reasons, we affirm the refusal.
Likelihood of Confusion
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., 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 or services.

2 Both registrations issued on July 8, 2014.
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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 further note that the record includes a consent agreement
entered into by Applicant and Registrant. A consent agreement presented in an effort
to overcome a Section 2(d) refusal is given consideration in conjunction with the du
Pont factor concerning the market interface between Applicant and Registrant. du
Pont, 177 USPQ at 567; In re Bay State Brewing Co., 117 USPQ2d 1958, 1959 (TTAB
2016). The market interface du Pont factor is taken into account with all other
relevant circumstances bearing on a likelihood of confusion determination. In re
N.A.D. Inc., 754 F.2d 996, 224 USPQ 969, 971 (Fed. Cir. 1985); du Pont, 177 USPQ
at 567. Here, we first address several other relevant factors before addressing market
interface in order to properly weigh the consent agreement’s importance in the
context of the full du Pont analysis. Bay State Brewing Co., 117 USPQ2d at 1959.
Identity of Goods and Trade Channels
We first consider the du Pont factors involving the relatedness of goods and their
established, likely to continue trade channels. It is settled that in making our
determinations, we must look to the goods as identified in the application vis-à-vis
the goods recited in the cited registrations. See Octocom Sys., Inc. v. Houston
Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re
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Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). In this case, the application
and registration identify the same goods – beer.3
Because the involved goods are identical, we must presume that the channels of
trade and classes of purchasers are the same. Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); In re Fat Boys
Water Sports LLC, 118 USPQ2d 1511, 1518-19 (TTAB 2016); see also In re Viterra
Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled
to rely on this legal presumption in determining likelihood of confusion).
Accordingly, the du Pont factors involving the relatedness of the goods and trade
channels weigh in favor of finding a likelihood of confusion.
Similarity of the Marks
We move now to the du Pont likelihood of confusion factor focusing on “the
similarity or dissimilarity of 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, 1691 (Fed. Cir.
2005) (quoting du Pont, 177 USPQ at 567). “The proper test is not a side-by-side
comparison of the marks, but instead whether the marks are sufficiently similar in
terms of their commercial impression such that persons who encounter the marks
would be likely to assume a connection between the parties.” Coach Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)

3 The registrations also list “ale, lager, stout and porter; malt liquor; pale beer,” which are
encompassed by, and thus legally identical to, Applicant’s beer.
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(citation omitted). The focus is on the recollection of the average purchaser, who
normally retains a general rather than a specific impression of trademarks. In re C.H.
Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015). In this case, because the goods
are beer, the average purchaser is an ordinary consumer. See Bay State Brewing Co.,
117 USPQ2d at 1960 & n.4.
When, as here, marks appear on goods that are identical, “the degree of similarity
necessary to support a conclusion of likely confusion declines.” Century 21 Real Estate
Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992);
Jansen Enters. Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007).
The involved marks in this case are extremely similar given that the most
important, source-identifying literal portions of the marks are virtually identical. In
each of the three marks, the distinctive term 8 BIT or 8-BIT precedes disclaimed,
highly descriptive or generic terms. “8 BIT” or “8-BIT” has no known significance in
the context of beer. Rather, both Applicant and Registrant use the term in their
marks to evoke classic video games and the technology used at the time. Specifically,
“8-Bit” is defined as:4
…a measure of computer information generally used to refer to hardware
and software in an era where computers were only able to store and process
a maximum of 8 bits per data block. … The 8-bit architecture is particularly
popular with gamers, as the first truly classic game consoles, which paved
the way for the game industry started in 8-bit.

4 Definition taken from online dictionary, Technopedia (www.technopedia.com) and attached
to Office Action issued on February 24, 2017.
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Applicant readily admits that the commercial impression of its mark “is reliant on
the nostalgia one feels when reminiscing about one’s childhood and video games.”5
Applicant further admits its beers “are all [video] game inspired.”6 The record shows
that Registrant also uses its marks as a nod to the technology behind early video
games.7 Indeed, the cited registered mark with design contains lettering and graphic
design akin to that used in older video games.
Applicant attempts to distinguish the overall commercial impressions of the
marks by arguing that “Registrant is located in California and features a more
modern gaming experience.”8 There is no evidence to support this contention or
indicate whether such a nuance, purportedly based upon Registrant’s use of the term
“8 Bit” and being located in California, even exists. We further note that Applicant
makes reference to Registrant’s use of a “highly dissimilar” mark featuring a mug of
beer; however, that mark is not before us for and whether Registrant uses other
marks that are distinguishable from the ones at hand is inconsequential to our
analysis. Ultimately, we agree with the Examining Attorney’s conclusion that the
“commercial impression created by the marks is identical.”9
We emphasize too that 8 BIT (or 8-BIT), apart from being the only source-
identifying literal portion of each mark, appears first in each mark and thus is more

5 4 TTABVUE 7.
6 Id. at 8.
7 Printouts from Registrant’s website attached to Office Action issued on February 24, 2017.
8 4 TTABVUE 8.
9 6 TTABVUE 7.
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likely to be remembered by consumers. See Palm Bay Imports, 73 USPQ2d 1692
(“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve”
is the first word in the mark and the first word to appear on the label); Century 21
Real Estate, 23 USPQ2d 1700 (upon encountering the marks, consumers will first
notice the identical lead word); Presto Prod. Inc. v. Nice-Pak Prod., Inc., 9 USPQ2d
1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to
be impressed upon the mind of a purchaser and remembered”).
The additional wording, ALEWORKS in Applicant’s mark and BREWING
COMPANY in Registrant’s marks, does little, if anything, to distinguish the marks.
As mentioned, these disclaimed terms are highly descriptive or generic with regard
to beer and ale. To reinforce this point, the Examining Attorney submitted numerous
third-party use registrations and some website printouts showing that it is fairly
common for entities to adopt marks that incorporate these terms in connection with
beer.10 Consumers are accustomed to seeing these terms in others’ marks and are
thus unlikely to view the wording in either Applicant’s or Registrant’s marks as
distinctive.
In sum, we find the marks to be overall very similar, particularly in light of the
identical commercial impression created by the marks. This du Pont factor therefore
weighs in favor of finding a likelihood of confusion.

10 Website printouts and third-party registrations attached to Office Action issued on
November 28, 2016.
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Market Interface and Consent Agreement
We now consider the du Pont factor involving the market interface between
Applicant and Registrant including, as mentioned, consideration of the proposed
consent agreement.11 Factors to be considered in weighing a consent agreement
include the following:
(1) Whether the consent shows an agreement between both parties;

(2) Whether the agreement includes a clear indication that the goods
and/or services travel in separate trade channels;

(3) Whether the parties agree to restrict their fields of use;

(4) Whether the parties will make efforts to prevent confusion, and
cooperate and take steps to avoid any confusion that may arise in the
future; and

(5) Whether the marks have been used for a period of time without evidence
of actual confusion.

See generally In re Four Seasons Hotels Ltd., 987 F.2d 1565, 26 USPQ2d 1071 (Fed.
Cir. 1993); In re Mastic Inc., 829 F.2d 1114, 4 USPQ2d 1292 (Fed. Cir. 1987); du Pont,
177 USPQ at 568; cf. Bongrain Int’l (Am.) Corp. v. Delice de Fr., Inc., 811 F.2d 1479,
1 USPQ2d 1775 (Fed. Cir. 1987). In the seminal case on consent agreements, the du
Pont court also cautioned that while “a naked ‘consent’ may carry little weight,”
“substantial” weight should be conferred to “more detailed agreements.” du Pont, 177
USPQ at 568.

11 There are actually two consent agreements of record. Applicant first submitted a consent
agreement with its response filed on August 8, 2016. Applicant submitted a second consent
agreement with its request for reconsideration, filed on February 3, 2017. The latter
agreement is essentially a revised version of the first, providing slightly more detailed
information and attaching an exhibit. Although we have considered both agreements, it is
the second agreement that we refer to for purposes of this decision.
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It can be safely taken as fundamental that reputable businessmen-users of
valuable trademarks have no interest in causing public confusion. The
genius of the free competitive system is the paralleling of the interest of
the entrepreneur and the consuming public so far as possible. Altruism
aside, it is in his pecuniary interest, indeed a matter of economic survival,
that the businessman obtain and retain customers, the very purpose and
function of a trademark, and that he avoid and preclude confusion. Millions
of advertising dollars are spent daily for that precise purpose. The history
of trademark litigation and the substantial body of law to which it relates
demonstrate the businessman’s alertness in seeking to enjoin confusion. In
so doing he guards both his pocketbook and the public interest.
…

[E]xperienced businessmen fully and continuously alert to each other’s
products, labels, trade channels and advertising . . . will be quick to act
against confusion. . . . Dollars were at stake. Decisions of men who stand
to lose if wrong are normally more reliable than those of examiners and
judges.

Id. at 568-69.
On the other hand, we have held that “there is no per se rule that a consent,
whatever its terms, will always tip the balance to finding no likelihood of confusion,
and it therefore follows that the content of each agreement must be examined. Few
may be found lacking, but it is not a foregone conclusion that all will be
determinative.” Bay State Brewing Co., 117 USPQ2d at 1953. The Federal Circuit in
In re Mastic, 4 USPQ2d at 1294, has also instructed that the role of a consent
agreement in the likelihood of confusion analysis is not always the answer in avoiding
confusion:
[T]he DuPont case does not make it a “given” that experienced
businessmen, in all cases, make an agreement countenancing each other’s
concurrent use of the same or similar marks only in recognition of no
likelihood of confusion of the public. One must look at all of the
surrounding circumstances, as in DuPont, to determine if the consent
reflects the reality of no likelihood of confusion in the marketplace, or if the
parties struck a bargain that may be beneficial to their own interests,
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regardless of confusion of the public. For example, the parties may prefer
the simplicity of a consent to the encumbrances of a valid trademark
license. However, if the goods of the parties are likely to be attributed to
the same source because of the use of the same or a similar mark, a license
(not merely a consent) is necessary to cure the conflict. See 1 J. McCarthy,
Trademarks and Unfair Competition § 18:25, at 866 (2d ed. 1984).

With the above in mind, we now analyze the consent agreement before us and
what significance it has with respect to our likelihood of confusion analysis.
At the outset, we note the consent agreement correctly identifies the involved
application, the cited registered marks and the parties’ goods. However, the
agreement also references an exhibit containing depictions of a purported composite
mark of Applicant’s and only one of the registered marks. Specifically, in Paragraph
1, the parties (Applicant and Registrant) state that they believe no likelihood of
confusion exists because “each party currently uses, and shall continue to so use, their
respective marks” in the following manner:
a. In conjunction with highly dissimilar stylized designs, as shown in
Exhibit A;
b. In conjunction with commercially distinct product packaging that
features highly dissimilar hyphenation, capitalization, formats, color
schemes, and design elements;
c. Such that the marks create highly dissimilar commercial impressions;
d. Without reports of consumer confusion; and
e. In different geographic markets, California and Arizona respectively.

The referenced “Exhibit A” contains the following depiction of marks:
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The only other substantive provisions in the agreement supporting their
contention that there is no likelihood of confusion are:
(2) Each party acknowledges that it knows of no evidence of actual
confusion between the parties’ respective marks during the time both
marks have been in use, namely, since June 2016. Both parties have agreed
not to adopt any visual logos, trade dress, or other marketing materials
similar to that of the other and have agreed to cooperate in good faith to
avoid and/or minimize potential confusion amongst consumers as to the
parties’ marks.

(3) If, in the future such evidence comes to either party’s attention, the
party receiving and possessing such evidence shall promptly make the
same available in detail to the other party. Additionally, in the event of
such confusion, each party hereby agrees to cooperate with the other and
to take reasonable steps to avoid future such confusion.

Taken in its entirety, the consent agreement does little to alleviate the concern of
likelihood of confusion. Initially, we point out that the applied-for mark is 8-BIT
ALEWORKS, in standard characters, and not the composite mark depicted in
“Exhibit A” of the agreement; likewise, Exhibit A only shows Registrant’s composite
mark and not its standard character mark. Many of the agreement’s provisions
appear to relate only to the marks shown in Exhibit A. Thus, at the very least, it
remains unclear if Registrant is consenting only to the coexistence of the marks
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depicted in Exhibit A or if it is actually consenting to use and registration of
Applicant’s standard character mark, with or without the design element.
The agreement further acknowledges that there has been a very short period of
coexistence thus far. While the parties affirmatively state that they are unaware of
any instances of actual confusion since June 2016, the agreement was executed in
November of 2016. A mere five months without any actual confusion is hardly
indicative that confusion is unlikely. This stands in sharp contrast to provisions
typically found in consent agreements noting that “each party had done business for
many years under their present names, that each had been aware of the other’s use
of its name as at present, and neither knew of any instances of customers’ confusion,
mistake, or deception.” Amalgamated Bank of New York v. Amalgamated Trust &
Savings Bank, 842 F.2d 1270, 6 USPQ2d 1305, 1306 (Fed. Cir. 1988).
The agreement also fails to illustrate how Applicant’s and Registrant’s trade
channels are different from one another. Furthermore, aside from stating that they
will be using their marks in different geographic areas, namely California versus
Arizona, the parties do not indicate how they will restrict their fields of use. Applicant
and registrant will presumably be selling to the same types of individuals,
restaurants or retailers and distributors. Beer is not necessarily an expensive
consumer item and prices run the gamut; the agreement does not clarify the actual
price ranges of the parties’ beer nor do the identifications of goods in the application
and cited registrations shed any light on this. Thus it is probable that the ultimate
consumer of both Applicant’s and Registrant’s beer will, in many instances, be the
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ordinary consumer of beer who will only exercise ordinary care that one takes in
purchasing beer. See Bay State Brewing Co., 117 USPQ2d at 1960 (taking judicial
notice “that beer is often relatively inexpensive, subject to impulse purchase, and
often ordered orally in a bar or restaurant”). No provisions have been made to
diminish the likelihood of confusion for these consumers.
Applicant’s and Registrant’s agreement to use their marks “in conjunction with
commercially distinct product packaging that features highly dissimilar hyphenation,
capitalization, formats, color schemes, and design elements,” has little importance
given that there are no examples of what this “distinct product packaging” will consist
of or what distinctive color schemes will be used. This is indeed a vague statement,
and given the similarity in the marks, both being used on beer, it would have
behooved Applicant and Registrant to have identified the specific distinctive trade
dress each would be employing to distinguish the sources of the beer. Without such
information, we cannot gauge how effective the additional packaging design would be
in diminishing the likelihood of confusion. We reiterate that because the involved
application is for a standard character mark, the agreement to use it with a design
or as part of a composite mark is irrelevant to our analysis.
Finally, as mentioned, Applicant and Registrant seemingly have agreed to limit
use of their marks within their own states, respectively, California and Arizona, two
states that share a border. However, the agreement is silent as to other states and
we note that in order for the involved application to mature into a registration,
Applicant must allege use in interstate commerce, as Registrant did with respect to
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use of its registered marks. Moreover, Applicant is not seeking a concurrent use
registration (with a corresponding geographical restriction in Registrant's
registrations), but rather a nationwide registration. Because an applicant’s right to a
geographically restricted registration may only be considered in the context of a
concurrent use proceeding, Trademark Rule 2.99(h), any geographic restrictions that
Applicant and Registrant agree to will not be reflected in a registration that would
issue from the involved application.
For the reasons explained above, the du Pont factor regarding market interface
does not weigh in favor of lessening the likelihood of confusion; accordingly, we deem
this factor neutral.
Conclusion
We have carefully reviewed the entire record and considered all relevant factors
concerning the likelihood of confusion between Applicant’s mark and the registered
marks. Ultimately, in view of the identity of the involved goods, beer, and their trade
channels, as well as the overall strong similarity of the marks, we conclude there is a
likelihood of confusion between Applicant’s applied-for mark 8-Bit Aleworks and
the registered marks, 8 bit Brewing Company (with and without design). We make
this conclusion bearing in mind that “consent agreements are frequently entitled to
great weight.” Bay State Brewing Co., 117 USPQ2d at 1967. In this case, however,
Registrant’s consent is ambiguous and outweighed by the several other relevant du
Pont factors. In other words, the shortcomings in the consent agreement are such that
consumer confusion remains likely.
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Decision: The refusal to register Applicant’s mark is affirmed.