Augustiner-Brau Wagner KG

Trademark Trial and Appeal Board

Nov 19, 2009

No. 79045906 (T.T.A.B. Nov. 19, 2009)

Mailed: November 19, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Augustiner-Brau Wagner KG
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Serial No. 79045906
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Cynthia J. Lee of Thomas, Kayden, Horstemeyer & Risley, LLP
for Augustiner-Brau Wagner KG.

Heather D. Thompson, Trademark Examining Attorney, Law
Office 109 (Dan Vavonese, Managing Attorney).
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Before Bucher, Kuhlke and Wellington, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

On January 26, 2007, Augustiner-Brau Wagner KG applied
to register the mark on the Principal Register
based on a request for extension of protection under
Section 66(a) of the Trademark Act, 15 U.S.C. §1141(f), for
goods identified as “beer, namely, strong beer, low-alcohol
beer, beer wort and colorant beer, non-alcoholic beers,
non-alcoholic beverages, namely, non-alcoholic beers, malt
wort” in International Class 32. The application includes
the statement that the “foreign wording in the mark
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 79045906
2
translates into English as Augustinian” and a claim of
ownership of Registration No. 3492930.
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used with its identified goods, so
resembles the registered mark AUGUSTINER in typed form for
“beer” in International Class 32, as to be likely to cause
confusion, mistake or deception.1
Applicant has appealed the final refusal and the
appeal is fully briefed. We affirm the refusal to
register.
When there is a question of likelihood of confusion,
we analyze the facts as they relate to the relevant factors
set out in In re E. I. Du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (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 services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).

1 Registration No. 2478537, issued August 14, 2001, Section 8 and
15 affidavits accepted and acknowledged. The registration
includes the statement that “the English translation of
Augustiner is Augustinian.”

Serial No. 79045906
3
In this case, applicant’s goods include goods that are
encompassed by or closely related to registrant’s beer.
Furthermore, at least as to the legally identical
goods, we must presume that the purchasers and channels of
trade for such goods would overlap. See Octocom Systems,
Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is
legion that the question of registrability of an
applicant’s mark must be decided on the basis of the
identification of goods [or services] set forth in the
application regardless of what the record may reveal as to
the particular nature of an applicant’s goods [or
services], the particular channels of trade or the class of
purchasers to which the sales of goods [or services] are
directed”). See also Hewlett-Packard Co. v. Packard Press
Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and
Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003)
(“Given the in-part identical and in-part related nature of
the parties’ foods, and the lack of any restrictions in the
identifications thereof as to trade channels and
purchasers, these clothing items could be offered and sold
to the same classes of purchasers through the same channels
of trade”). Finally, applicant has not presented evidence
Serial No. 79045906
4
to support any argument that the goods, as identified, are
not related.
In view of the above, the du Pont factors of the
relatedness of the goods, the channels of trade, and class
of customers weigh in favor of a likelihood of confusion.
In determining the similarity between the marks we
analyze “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. In addition, where as in
the present case, applicant’s identification includes goods
legally identical to registrant’s beer, the degree of
similarity between the marks which is necessary to support
a finding of likelihood of confusion declines. Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698 (Fed. Cir. 1992).
Applicant asserts that the mark in the application
AUGUSTINER “does not resemble the mark” AUGUSTINER in the
cited registration. Reply Br. p. 3. Not surprisingly,
applicant offers no explanation as to the points of
dissimilarity. Indeed this would be a difficult task as
the marks are essentially identical other than the almost
indistinguishable block style font in applicant’s mark.
Serial No. 79045906
5
Moreover, because registrant’s mark is in typed form we
must consider all reasonable displays for purposes of
comparison, including applicant’s block style lettering.
In re RSI Systems, LLC, 88 USPQ2d 1445 (TTAB 2008). We
find the marks essentially identical in appearance and
identical in sound, connotation and commercial impression.
This factor also weighs in favor of a likelihood of
confusion.
Applicant’s argument on the factor of the strength of
the marks is not persuasive. First, the reference in
applicant’s reply brief to a “search of the USPTO database”
does not make such search of record and in any event the
record is closed and the attempt to include and rely on new
evidence is untimely. Trademark Rule 2.142(d); see also
TBMP §1207 (2d ed. rev. 2004) and authorities cited
therein. Second, registrations are not evidence of use in
the marketplace and are not useful for purposes of
analyzing this factor. Third, applicant searched the word
AUGUST which has a very different connotation from the word
AUGUSTINER, thus, the search would have no probative value.
In addition, applicant’s arguments regarding its prior
registration do not persuade us of a different result. The
mark in applicant’s prior registration is shown below.
Serial No. 79045906
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The wording in the mark is J. W. AUGUSTINERBRÄU MÜNCHEN.
The registration includes the translation statement that
“the foreign wording in the mark translates into English as
Augustiner Brewery Munich.”
As noted by the examining attorney, the Board is not
bound by decisions made in other applications. See In re
Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994). See also In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir.
2001). Each case must be decided on its own facts. AMF
Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ
268, 269 (CCPA 1973). This is simply a recognition that
the Board is not privy to information resulting in
allowance of prior registrations and/or that possible prior
mistakes by the Office are not a proper basis upon which to
register a confusingly similar mark. Moreover, the mark in
the registration contains several other elements distinct
from the marks in the application and the cited
registration.
Serial No. 79045906
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Applicant relies heavily on its argument that the
applicant and registrant’s goods have coexisted for ten
years without any known actual confusion.
We first note that the inquiry here is likelihood of
confusion, not actual confusion. HRL Associates Inc. v.
Weiss Associates Inc., 12 USPQ2d 1819, 1824 (TTAB 1989)
aff’d, 14 USPQ2d 1840 (Fed. Cir. 1990). Also, the Court of
Appeals for the Federal Circuit has observed, “A showing of
actual confusion would of course be highly probative, if
not conclusive, of a high likelihood of confusion. The
opposite is not true, however. The lack of evidence of
actual confusion carries little weight, J.C. Hall Co. v.
Hallmark Cards, Inc., 340 F.2d 960, 964, 144 USPQ 435, 438
(CCPA 1965), especially in an ex parte context.” In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1205 (Fed. Cir. 2003). Thus, regardless of the
evidence, an ex parte proceeding is ill equipped for a fair
determination inasmuch as the registrant does not have an
opportunity to defend its registration. Moreover, while
applicant points to the statement in its responses that its
mark has been used in the United States since the 1930s,
and to the first use statements in the cited registration,
this is not sufficient evidence upon which we could
determine whether or not the products actually overlapped
Serial No. 79045906
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in the marketplace such that there have been meaningful
opportunities for confusion to occur.
In its reply brief, applicant requests in the
alternative that “[i]f the Board disagrees that the above
statements by ABW during prosecution and appeal are not
sufficient as evidence, then ABW respectfully request that
the Board remand the application back to the Examining
Attorney and that ABW be given sufficient opportunity to
submit such evidence. Given the opportunity, ABW would
easily be able to evidence through various documents its
longstanding use of the AUGUSTNER mark on beer abroad and,
particularly in the U.S.” Reply Br. p.5.
The Board does not consider such alternative requests
for remand. The proper procedure is to file a separately
captioned request for remand and suspension of the appeal,
not to bury an alternative request in the reply brief.
Moreover, a request must include a showing of good cause.
“Generally, the later in the appeal proceeding that the
request for remand is filed, the stronger the reason that
must be given for good cause to be found.” TBMP §1207.02.
Here, where applicant did not request remand until the
filing of the reply brief, virtually the last stage of the
appeal process, the reason for remand would have had to be
strong indeed. However, applicant has not provided any
Serial No. 79045906
9
reason whatsoever to explain its delay in attempting to
submit such evidence. In addition, even if granted, the
record still would not reflect the extent of registrant’s
use in the marketplace and, thus, the question of actual
overlap would remain. As such, the request is futile. In
view thereof, the request for remand is denied.
Finally, applicant argues that its “goods are from the
oldest and arguably the most prestigious brewery in Munich,
Germany [and applicant] has marketed these goods in the
U.S. since the 1930s...Purchasers of specialty German beer
are likely very knowledgeable about this niche area of beer
tasting, and will be able to distinguish one brand from
another.”2 Reply Br. p. 6.
While some purchasers of specialty beers may be more
discriminating, we must consider all potential purchasers
which would include general consumers not well-versed in
beer varieties. Moreover, even the more discriminating
purchasers may be confused. As stated by our primary
reviewing court, “[t]hat the relevant class of buyers may
exercise care does not necessarily impose on that class the
responsibility of distinguishing between similar trademarks

2 Applicant’s relentless reference to and reliance on prior and
longstanding use in the United States is misplaced. Such
evidence is only relevant in the context of an inter partes case.

Serial No. 79045906
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for similar goods. ‘Human memories even of discriminating
purchasers ... are not infallible.’” In re Research and
Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir.
1986) quoting Carlisle Chemical Works, Inc. v. Hardman &
Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970).
Further, there is no evidence to support the proposition
that all purchasers of applicant’s beer would be “looking
for a prestigious beer.” We must make our determination
based on the least sophisticated potential consumer.
Finally, applicant’s identification of goods is not limited
to premium beer. Therefore, this factor weighs in favor of
a likelihood of confusion.
Applicant’s reliance on G.H. Mumm & Cie v. Desnoes &
Geddes Ltd., 917 F.2d 1292, 16 USPQ2d 1635 (Fed. Cir. 1990)
and Harry Fischer Corp. v. Keneth Knits, Inc., 207 USPQ
1019 (TTAB 1980) is misplaced. Notably, these were inter
partes cases where both parties could develop the record on
the nature and extent of their respective uses and the
existence or nonexistence of opportunities for confusion to
occur.
In conclusion, we find that because the marks are
nearly identical, the goods are legally identical, the
channels of trade and purchasers overlap, and the goods, as
identified, are subject to impulse purchase by some
Serial No. 79045906
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potential purchasers, confusion is likely between
applicant’s mark and the mark in the cited registration.
Decision: The refusal to register under Section
2(d) of the Trademark Act is affirmed.