Bell’s Brewery, Inc.v.Innovation Brewing

Trademark Trial and Appeal Board

Dec 20, 2017

No. 91215896 (T.T.A.B. Dec. 20, 2017)

Mailed: December 20, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Bell’s Brewery, Inc.
v.
Innovation Brewing
_____

Opposition No. 91215896
_____

Sarah M. Robertson, Susan Progoff, and Fara S. Sunderji of Dorsey & Whitney LLP
and G. Patrick Sage and Joanna T. French of The Firm of Hueschen and Sage,
for Bell’s Brewery, Inc.

Ian D. Gates of Dascenzo Intellectual Property Law, P.C.,
for Innovation Brewing.
_____

Before Kuczma, Hightower, and Coggins,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Innovation Brewing (“Applicant”) seeks to register the mark INNOVATION
BREWING, in standard characters and with “BREWING” disclaimed, on the
Principal Register for “beer” in International Class 32.1 Bell’s Brewery, Inc.
(“Opposer”) opposes registration under Section 2(d) of the Trademark Act, 15 U.S.C.

1 Application Serial No. 85929587 was filed May 12, 2013, based on Applicant’s allegation of
a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b).
This Opinion Is a
Precedent of the TTAB
Opposition No. 91215896
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§ 1052(d), asserting priority and a likelihood of confusion with its mark INSPIRED
BREWING, registered on the Principal Register in standard characters and with
“BREWING” disclaimed, and its common-law mark BOTTLING INNOVATION
SINCE 1985. We dismiss the opposition.
I. Evidentiary Objections
Opposer objects to two pieces of evidence: a response to a request for admission,
and a copy of a settlement agreement. We address each in turn.2
A. Opposer’s Response to Applicant’s Request for Admission No. 67
The parties agree that, pursuant to Trademark Rule 2.120(j)(3)(i), 37 C.F.R.
§ 2.120(j)(3)(i), only admissions to requests for admission may be made of record by
notice of reliance. Where they disagree is whether the response Opposer seeks to
strike from the record is an admission or a denial. The request and response state:
Request for Admission No. 67: The word “inspired” has the
same meaning as the word “innovation.”
Response: Bell’s objects to Request 67 on the ground that it
is vague and indefinite. Subject to the foregoing objections,
Bell’s denies that the word “inspired” has the identical
meaning as the word “innovation,” but the terms “inspired”
and “innovation” have similar meanings.
Exhibit 5 to Applicant’s Notice of Reliance, Opposer’s Responses to Applicant’s Second
Set of Requests for Admissions, 39 TTABVUE 109. We read the response in its
entirety as a properly introduced admission and consider it for whatever probative
value it may have.

2 Trial of this proceeding concluded before the Trademark Rules of Practice were amended
effective January 14, 2017. Except where otherwise specified, therefore, citations to the rules
are to the rules that were in effect in 2016, at the time of trial.
Opposition No. 91215896
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B. Settlement Agreement
Opposer also objects to admission of a confidential settlement agreement between
it and a nonparty that Applicant submitted under seal as Exhibit 6 to Applicant’s
Notice of Reliance, 38 TTABVUE 113-18.3 Applicant responds that this document
may be submitted by notice of reliance because it was produced by Opposer, which
admitted in response to a request for admission that: “All of the documents produced
by Opposer in response to Applicant’s First Set of Requests for Production are
genuine, authentic, true, accurate, and were in the possession, custody, and/or control
of Opposer.” Response to Request for Admission No. 50, Exhibit 3 to Applicant’s
Notice of Reliance, Opposer’s Responses to Applicant’s First Set of Requests for
Admissions, 39 TTABVUE 36.
We agree with Applicant. In Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d
1100, 1103-04 (TTAB 2007), the Board made clear that because the respondent
produced documents in responding to the petitioner’s interrogatories and admitted in
responses to requests for admissions that the documents it produced were true and
correct copies of authentic documents, the documents were admissible by notice of
reliance. This is a longstanding practice well known to practitioners. See, e.g., TBMP
§ 711, 700-42 (1st ed. 1995) (“A party which has obtained documents under FRCP 34
may serve upon its adversary requests for admission of the authenticity of the

3 Without divulging the contents of the confidential settlement agreement, Applicant argued
in its confidential brief that the agreement is evidence of weakness of the INSPIRED
BREWING mark. See Applicant’s Brief at 11, 24-25, 45 TTABVUE 17, 30-31. The strength of
Opposer’s marks is discussed in Section IV(C) infra.
Opposition No. 91215896
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documents, and then, during its testimony period, file a notice of reliance, under 37
CFR § 2.120(j)(3)(i), on the requests for admission, the exhibits thereto, and its
adversary’s admissions (or a statement that its adversary failed to respond to the
requests for admission.)”).4 This existing practice is codified in the amendments to
the Trademark Rules that took effect after trial in this proceeding. See Rule
2.120(k)(3)(ii), 37 C.F.R. § 2.120(k)(3)(ii), as amended effective January 14, 2017 (“A
party that has obtained documents from another party through disclosure or under
Rule 34 of the Federal Rules of Civil Procedure may not make the documents of record
by notice of reliance alone, except to the extent that they are admissible by notice of
reliance under the provisions of § 2.122(e), or the party has obtained an admission or
stipulation from the producing party that authenticates the documents.”); see also
Miscellaneous Changes to Trademark Trial and Appeal Board Rules of Practice, 81
Fed. Reg. 19296, 19297 (April 4, 2016) (Notice of Proposed Rulemaking) (stating that
the proposed rule permitting a party to serve a request for admission whereby the
producing party would authenticate all produced documents “recognize[s] general
practice”). Opposer’s objection therefore is overruled, and we consider the settlement
agreement for whatever probative value it may have.
We hasten to add that consideration of the two challenged pieces of evidence,
individually or together, does not alter the outcome of this proceeding.

4 The first edition of the TBMP is archived on the USPTO website at uspto.gov/sites/default/
files/documents/tbmp_1stedition.pdf.
Opposition No. 91215896
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II. Record
The record consists of the pleadings and, without any action by the parties, the
file of the involved application. Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1).
The record also comprises the evidence summarized below.
A. Opposer’s Evidence
Opposer made the following evidence of record:
• Copies of its two pleaded registrations for INSPIRED BREWING, which
were submitted via current printouts from the USPTO’s Trademark Status
& Document Retrieval (TSDR) electronic database attached as exhibits to
the Notice of Opposition pursuant to Trademark Rule 2.122(d)(1), 37 C.F.R.
§ 2.122(d)(1), as follows:
o Registration No. 3122464 for “beer, porter, ale, stout and malt liquor”
in International Class 32;5 and
o Registration No. 4098319 for “beer; ale; stout; porter; malt liquor” in
International Class 32, as well as collateral goods in several classes
that are not at issue in this proceeding;6
• Opposer’s Notice of Reliance with Exhibits 1-18, including certain of
Applicant’s responses to Opposer’s discovery requests, dictionary
definitions, and excerpts from the discovery deposition of Applicant’s
witness designated under FED. R. CIV. P. 30(b)(6), Nicole Dexter, 36 and
37 (confidential) TTABVUE;
• Opposer’s Rebuttal Notice of Reliance with Exhibits 19-26, which are
Internet printouts, 40 TTABVUE; and
• A transcript of the trial testimony of Laura Bell, Opposer’s vice president
of marketing and sales, with Exhibits 1-47, 41 (confidential) and 42
TTABVUE.
B. Applicant’s Evidence
Applicant submitted a Notice of Reliance with Exhibits 1-41, consisting of certain
of Opposer’s responses to Applicant’s discovery requests, authenticated produced

5 Issued August 1, 2006; renewed.
6 Issued February 14, 2012.
Opposition No. 91215896
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documents, third-party registrations, and Internet printouts, 38 (confidential) and
39 TTABVUE.
As noted, some of the evidence proffered by both parties has been designated
confidential and filed under seal. We have discussed only in general terms the
relevant evidence submitted under seal.
III. Opposer’s Standing and Priority
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014); John W. Carson Found. v. Toilets.com Inc., 94
USPQ2d 1942, 1945 (TTAB 2010). Opposer’s standing to oppose registration of
Applicant’s mark is established by its two pleaded registrations, which the record
shows to be valid and subsisting, and owned by Opposer. See, e.g., Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); N.Y. Yankees
P’ship v. IET Prods. & Servs., Inc., 114 USPQ2d 1497, 1501 (TTAB 2015).
Under Trademark Act Section 7(c), 15 U.S.C. § 1057(c), Applicant’s constructive
use date for purposes of priority in the INNOVATION BREWING mark is May 12,
2013, the day it filed its application pursuant to Trademark Act Section 1(b). See
Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1119 (TTAB 2009).
Because Opposer’s pleaded registrations are of record, priority is not at issue with
respect to the goods identified in Opposer’s pleaded registrations for the mark
INSPIRED BREWING, including beer. Mini Melts, Inc. v. Reckitt Benckiser LLC, 118
USPQ2d 1464, 1469 (TTAB 2016) (citing King Candy Co. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)). In addition, Opposer
Opposition No. 91215896
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submitted evidence that it has used its pleaded common-law mark BOTTLING
INNOVATION SINCE 1985 (which Applicant calls Opposer’s “Advertising Slogan”)
since 2009. Laura Bell Tr. at 27:25-28:14, 42 TTABVUE 29-30. Although Applicant
questions the strength of Opposer’s common-law mark, it “cannot dispute that
Opposer’s initial use of Opposer’s Advertising Slogan predates Applicant’s filing
date.” Applicant’s Brief at 15, 46 TTABVUE 21. We find that Opposer has established
prior proprietary rights in BOTTLING INNOVATION SINCE 1985.
Because Opposer has established its standing and priority as to both of its pleaded
marks, we turn to the question of likelihood of confusion.
IV. Likelihood of Confusion
Our determination under Trademark Act Section 2(d) is based on an analysis of
all probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. 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., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (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, the first two du Pont factors. See Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in the marks.”). Opposer
bears the burden of proving its claim of likelihood of confusion by a preponderance of
the evidence. Cunningham, 55 USPQ2d at 1848.
Opposition No. 91215896
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We address in turn each of the du Pont factors for which the parties submitted
evidence or argument.
A. Similarity of the Goods, Customers, and Channels of Trade
We begin with the second and third du Pont factors, assessing the similarity or
dissimilarity of the parties’ goods and their established, likely-to-continue trade
channels. Id., 177 USPQ at 567.
Both parties are brewers. The goods identified in the subject application are
“beer,” which is among the goods identified in Opposer’s pleaded registrations.
Opposer also has established use of its common-law mark on beer. We find under the
second du Pont factor that the parties’ goods are identical in part.
Turning to the third du Pont factor, because Applicant’s goods and the goods
identified in Opposer’s registrations are identical in part, we must presume that those
goods move in the same channels of trade and are available to the same classes of
customers. See Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419,
1437 (TTAB 2014); see also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908
(Fed. Cir. 2012) (finding Board entitled to rely on this presumption).
No presumptions attach to Opposer’s mark BOTTLING INNOVATION SINCE
1985 because it is not registered. However, because there are no restrictions or
limitations in Applicant’s description of goods, we presume that Applicant’s beer will
move in all channels of trade normal for such goods and be purchased by all potential
customers, including Opposer’s trade channels and Opposer’s customers and
potential customers. Viterra, 101 USPQ2d at 1908; CBS Inc. v. Morrow, 708 F.2d
1579, 218 USPQ 198, 199 (Fed. Cir. 1983).
Opposition No. 91215896
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The second and third du Pont factors weigh heavily in support of a finding that
confusion is likely.
B. Conditions of Purchase and Consumer Sophistication
The fourth du Pont factor assesses the “conditions under which and buyers to
whom sales are made i.e., ‘impulse’ vs. careful, sophisticated purchasing.” Id., 177
USPQ at 567. The goods at issue, beer, are often relatively inexpensive and subject
to impulse purchase. See In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB
2016) (taking judicial notice of these facts). Record evidence shows that pints of each
party’s beer are priced between $3 and $8. Response to Interrogatory No. 13,
Applicant’s Third Amended Responses to Opposer’s First Set of Interrogatories,
Exhibit 3 to Opposer’s Notice of Reliance, 36 TTABVUE 20; Laura Bell Tr. at 84:17-
21, 42 TTABVUE 86.
“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.” Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1899 (Fed. Cir. 2000). We find that the fourth du Pont factor also
weighs in favor of a likelihood of confusion.
C. Strength of Opposer’s Marks
The fifth du Pont factor is the fame of the prior mark, and the sixth factor is the
number and nature of similar marks in use for similar goods or services. Id., 177
USPQ at 567. In determining strength of a mark, we consider both inherent strength,
based on the nature of the mark itself, and commercial strength or recognition.
Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1476
Opposition No. 91215896
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(TTAB 2014); see also 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).”).
As discussed further infra, Applicant argues that both of Opposer’s marks have
been weakened and diluted by third-party use of similar marks for beer and related
goods. Applicant also contends that Opposer’s mark BOTTLING INNOVATION
SINCE 1985 is inherently weak because (1) it is merely informational in nature, given
that Opposer has been bottling and selling beer since 1985, and (2) it is not used on
beer labels or packaging but rather on bumper stickers and other customer “swag,”
and therefore the public will not perceive it as a source-identifier. See Applicant’s
Brief at 15, 46 TTABVUE 21.
Concerning conceptual strength, we find that Opposer’s pleaded marks
INSPIRED BREWING and BOTTLING INNOVATION SINCE 1985 both are
inherently distinctive. There is no evidence that the phrase constituting the latter
mark is used in everyday parlance or is used by other providers in conjunction with
similar goods or services to impart the same kind of information.7 See In re Eagle

7 Trademark Manual of Examining Procedure (TMEP) § 1202.04(a) (Oct. 2017) explains that
matter that only conveys general information about an applicant’s identified goods, including
highly laudatory claims of superiority, fails to function as a mark. “Any evidence
demonstrating that the public perception of the matter is merely to convey general
information about the goods or services supports this refusal. In addition to dictionary or
encyclopedia entries showing the meaning or significance of wording, supporting evidence
may include materials (e.g., website pages, social-media pages, product fact sheets, and other
promotional materials) showing the wording listed with other features of the goods/services,
showing the wording being used in a manner that does not stand out from other informational
text, or showing the same or similar wording commonly used in business or by other providers
of similar goods or services to impart the same kind of general information.” Id.
Opposition No. 91215896
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Crest, Inc., 96 USPQ2d 1227, 1129-30 (TTAB 2010) (discussing exclusive rights in
common phrases or slogans). In addition, some evidence showing the display of
BOTTLING INNOVATION SINCE 1985, including its use on truck wraps as seen
below, supports a finding that consumers would perceive it as a source indicator:8

See D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (TTAB 2016) (“The
critical inquiry in determining whether a designation functions as a mark is how the
designation would be perceived by the relevant public.”).

8 Exhibit 39 to Laura Bell Tr. and testimony at 69:1-16, 42 TTABVUE 71, 215. A non-
comprehensive list showing the number and cost of Opposer’s vehicle wraps is designated
confidential. Id., Exhibit 40 and testimony at 69:19-70:10, 41 TTABVUE 71-72, 221.
Opposition No. 91215896
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Third-party registrations may be relevant to show the sense in which a mark is
used in ordinary parlance; that is, an element common to both parties’ marks may
have a normally understood and well-recognized descriptive or suggestive meaning,
leading to the conclusion that that segment is inherently relatively weak. Jack
Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports,
S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015), cert. denied, 136 S.
Ct. 982 (2016); see also In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738,
1745 (TTAB 2016) (“[T]hird-party registrations are relevant evidence of the inherent
or conceptual strength of a mark or term because they are probative of how terms are
used in connection with the goods or services identified in the registrations.”).
Evidence of use of similar marks by third parties for similar or related goods or
services, in turn, is relevant to a mark’s commercial strength. Juice Generation, Inc.
v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015).
Through its notice of reliance, Applicant introduced evidence that third parties
have both registered and used marks incorporating the terms INSPIRED and
INNOVATION in association with beer and related goods and services. The more
probative evidence9 is summarized in the following tables, beginning with Applicant’s
evidence of registration or use of INSPIRE-formative marks.

9 Pending applications, cancelled registrations, and registrations for alcoholic beverages
excluding beers are omitted. Certain of the listed registrations include disclaimers, which
also are omitted.
Opposition No. 91215896
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Mark Most Relevant Goods/Services Reference
39
TTABVUE

Beer Reg. No.
4536208
152-57
(Exh. 16)
INSPIRED BY THE VINE.
PERFECTED IN THE BREW
KETTLE.
Beer Reg. No.
4441119
143-47
(Exh. 14)

Beer Reg. No. 4635412
163-67
(Exh. 18)
INSPIRED BY TASTE Retail stores featuring alcoholic beverages
including beer
Reg. No.
4755944
168-71
(Exh. 19)
WORLD INSPIRED OHIO
BREWED
Beer Reg. No.
4458079
148-51,
231-39
(Exhs. 15,
35)
HEINEKEN INSPIRE Beer Reg. No. 3918086
119-24
(Exh. 9)
CHALICE DIVINELY
INSPIRED Beer
Reg. No.
4998751
177-81
(Exh. 21)
THE KIN GROUP – INSPIRE
SPIRITS Beers
Reg. No.
4017912
129-32
(Exh. 11)
AIR ALCOHOL INSPIRED
REFRESHER Beer
Reg. No.
4227737
133-37
(Exh. 12)
NATIVE-INSPIRED FOODS
& SPIRITS
Beer making and
brewpub services
Reg. No.
4830684
172-76
(Exh. 20)
INSPIRATION
(Community Beer Co.) Beer
Common-
law use
215-17
(Exh. 30)
INSPIRATION
(LTS Brewing Company) Beer
Common-
law use
218-24
(Exh. 31)
CREATIVELY INSPIRED.
ARTFULLY BREWED. Beer
Common-
law use
213-14
(Exh. 29)
Opposition No. 91215896
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Applicant’s evidence concerning INNOVATION marks is summarized below.
Mark Most Relevant Goods/Services Reference
39
TTABVUE

Beers Reg. No.
4575482
207-12
(Exh. 28)

Education in the field
of beer making
Reg. No.
4120237
203-06
(Exh. 27)
INNOVATION IN TASTE Beer Common- law use
251-52
(Exh. 40)
INNOVATION STARTS AND
ENDS WITH OUR BEER
DRINKERS.; DEDICATION
TO INNOVATION;
INNOVATION IN MOTION
(Molson Coors Brewing Co.)
Beer

Common-
law use
253-55
(Exh. 41)
BREWING INNOVATION Beer-brewing equipment
Common-
law use
240-41
(Exh. 36)
BREWING INNOVATIVE
ALES IN SMALL BATCHES
Beer and brewpub
services
Common-
law use
242-43
(Exh. 37)
CLARK BREWING
INNOVATIONS
Home beer-brewing
equipment
Common-
law use
244-45
(Exh. 38)
GENUINE INNOVATIONS CO2 chargers for kegs Common law use
246-50
(Exh. 39)
Opposer distinguishes the marks and criticizes this evidence on several grounds,
including that some evidence of use is dated; some marks are for goods in limited
distribution; and some uses are informational rather than as trademarks. Opposer
also submitted evidence with its rebuttal notice of reliance that two of the common-
law marks cited by Applicant are no longer in use: INNOVATION IN TASTE and
CLARK BREWING INNOVATIONS. Exhibits 24 and 25 to Opposer’s Rebuttal Notice
of Reliance, 40 TTABVUE 323-86. All told, Opposer argues, Applicant’s evidence of
Opposition No. 91215896
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third-party use and registration does not affect the marketplace strength of Opposer’s
INSPIRED BREWING or BOTTLING INNOVATION SINCE 1985 marks. See Reply
Brief at 12-13, 48 TTABVUE 18-19.
Applicant’s most relevant evidence comprises some 13 distinct registrations and
uses at common law of marks incorporating formatives of INSPIRE for beer or related
goods, and eight registrations and uses of marks incorporating INNOVATION or, in
one instance, INNOVATIVE.10 We give probative weight to this evidence as
indicating that these terms may be used by some third parties in the beer field. We
do not, however, find the evidence sufficient to establish that the terms either have a
descriptive significance or are in such widespread use that consumers have come to
distinguish marks containing them based on minute differences. See In re
i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017) (stating
that evidence of third-party use “falls short of the ‘ubiquitous’ or ‘considerable’ use of
the mark components present in [applicant’s] cited cases”). Cf. Jack Wolfskin, 116
USPQ2d at 1136 (discussing “voluminous evidence” of registration and use of paw
print design elements); Juice Generation, 115 USPQ2d at 1674 (referencing evidence
of “a fair number” of third-party marks).
Considering the record as a whole, including evidence pertaining to both
conceptual and commercial strength, we find that Opposer’s marks are inherently
distinctive and accord them the normal scope of protection to which inherently

10 Although we find infra that the conjoint use theory does not apply to this case, we note that
none of the evidence of third-party registrations and use included marks incorporating both
INSPIRE and INNOVATION.
Opposition No. 91215896
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distinctive marks are entitled. See Joseph Phelps Vineyards, LLC v. Fairmont
Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (stating that
likelihood of confusion fame varies along a spectrum from very strong to very weak).
D. Similarity of the Marks
Finally, we consider the first du Pont factor, the similarity of the parties’ marks.
Id., 177 USPQ at 567. Opposer argues that Applicant’s INNOVATION BREWING
mark is confusingly similar to Opposer’s INSPIRED BREWING mark. Although
Opposer pleaded that Applicant’s mark also is confusingly similar to its mark
BOTTLING INNOVATION SINCE 1985, it did not make that argument in its brief,
and the claim as to the latter mark standing alone therefore is deemed waived. See
Swatch AG (Swatch SA) (Swatch Ltd.) v. M. Z. Berger & Co., 108 USPQ2d 1463, 1465
n.3 (TTAB 2013), aff’d, 787 F.3d 1368, 114 USPQ2d 1892 (Fed. Cir. 2015). Rather,
Opposer now argues that Applicant’s mark is confusingly similar to the joint
impression created by its two marks, INSPIRED BREWING and BOTTLING
INNOVATION SINCE 1985, considered together. As we discuss infra, we find that
this claim is not properly before us.
1. Opposer Failed to Plead a Conjoint Use Theory
Opposer’s only argument with respect to the BOTTLING INNOVATION SINCE
1985 mark is that it is used together with INSPIRED BREWING and confusion is
likely under a conjoint use analysis, i.e.: “Applicant’s proposed mark INNOVATION
BREWING combines elements of both of Bell’s conjoined trademarks INSPIRED
BREWING and BOTTLING INNOVATION SINCE 1985.” Opposer’s Brief at 22, 44
TTABVUE 29.
Opposition No. 91215896
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Applicant objects that Opposer did not plead a claim of conjoint use and asks us
to strike the argument from Opposer’s brief. In its reply, Opposer contends that it
need not plead conjoint use or, in the alternative, that Applicant has waived any
objection “because Applicant failed to object to the introduction of the evidence of
[Opposer’s] conjoint use at Ms. Bell’s testimony.” Reply Brief at 15, 48 TTABVUE 21.
We agree that Opposer pleaded not a claim of conjoint use, but rather likelihood
of confusion with each of its two marks. In the Notice of Opposition, Opposer first
addressed its INSPIRED BREWING mark in ¶¶ 2-9, alleging priority and a
likelihood of confusion in ¶¶ 8-9, then separately discussed BOTTLING
INNOVATION SINCE 1985 in ¶¶ 10-15, alleging priority and a likelihood of
confusion with that mark in ¶¶ 14-15. In the final ¶ 16, Opposer alleged that
registration of the subject application would violate its rights in its “INSPIRED
BREWING trademarks,” a term that is not defined in the notice. Nowhere in the
notice did Opposer allege that Applicant’s mark would create a likelihood of confusion
with Opposer’s conjoint use of INSPIRED BREWING and BOTTLING
INNOVATION SINCE 1985.
By contrast, in the leading cases in which an opposer pursued a conjoint use claim
before the Board, the claim had been clearly pled. For example, in Schering-Plough
HealthCare Prods. Inc. v. Huang, 84 USPQ2d 1323 (TTAB 2007), in which the Board
refused registration of the mark DR. AIR, Opposer’s amended pleading alleged in
part that:
Opposition No. 91215896
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Since prior to the filing date of [the subject application],
Opposer has used and displayed its trademarks
DR. SCHOLL’S and AIR-PILLO together on packages and
in advertising so that the purchasing public associates the
DR. SCHOLL’S and AIR-PILLO trademarks and
recognizes that they jointly distinguish the products on
which they are used and identify Opposer as the source of
the products.
Applicant’s DR. AIR mark, which draws on two elements
of Opposer’s associated trademarks DR. SCHOLL’S and
AIR-PILLO, is likely to cause confusion or mistake among
ordinary purchasers of the goods identified in the
application concerning the origin, sponsorship, or
association of Applicant’s goods or the possibility that
Applicant’s goods are manufactured and marked pursuant
to authorization from Opposer.
Opposition No. 91117558, 13 TTABVUE 7 at ¶¶ 10-11.
Similarly, Sperry Rand Corp. v. Remvac Sys. Corp., 172 USPQ 415 (TTAB 1971),
refusing registration of REMVAC, states: “Opposer has also pleaded prior use of
‘REMINGTON’ and ‘UNIVAC’ together upon and in connection with the promotion of
data processing and transmission equipment and related goods of its manufacture.”11
Id. at 415; see also Simoniz Co. v. Hysan Prods. Co., 142 USPQ 377, 377 (TTAB 1964)
(“Opposer, in its pleading, alleges that the goods of the parties are closely related and
that applicant’s ‘PERMA LOK’ is confusingly similar to opposer’s trademarks
‘PERMACRYLIC’ and ‘LOCK AND KEY’ because it is ‘a combined portion of each’ of
opposer’s marks.”).
We hold that a likelihood of confusion claim based on the claimant’s use of two
marks conjointly must be pleaded clearly enough to provide fair notice of the claim to

11 See 4 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS & UNFAIR COMPETITION
§ 23:61.25 (5th ed. 2017) (discussing conjoint use and characterizing Schering-Plough and
Sperry Rand as “[t]wo leading examples of where the conjoint use rule has been successful”).
Opposition No. 91215896
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the defendant. Our holding is analogous to our familiar requirement that a plaintiff
must plead reliance on a family of marks. Cf. Wise F&I, LLC v. Allstate Ins. Co., 120
USPQ2d 1103, 1107 (TTAB 2016) (“A plaintiff must plead ownership of a family of
marks in its complaint in order to rely on the marks as a family as a basis for
sustaining the opposition at trial or in a motion for summary judgment.”); Productos
Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1927
(TTAB 2011) (“Petitioner’s reference to a family of marks in its brief will not be
considered because this claim was neither pleaded nor tried by the parties.”); Sunnen
Prods. Co. v. Sunex Int’l Inc., 1 USPQ2d 1744, 1747 n.12 (TTAB 1987) (treating
reference to unpleaded family of marks as if stricken from brief).
2. Conjoint Use Was Not Tried By Consent
We also find that a conjoint use claim was not tried by implied consent through
Applicant’s failure to object to evidence of conjoint use introduced in the trial
testimony of Opposer’s witness and exhibits. The testimony cited by Opposer does not
directly address the specific extent to which the two pleaded marks are used together.
The cited testimony and exhibits do establish use of both marks together, but this
evidence also is relevant to Opposer’s pleaded claim that confusion is likely as to each
of its marks individually. Thus, Opposer’s evidence was insufficient to put Applicant
on notice that Opposer was proffering it in support of a conjoint use claim. See, e.g.,
Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628, 1629 (TTAB 1998); see also
TBMP § 507.03(b) (June 2017) (“Fairness dictates whether an issue has been tried by
consent – there must be an absence of doubt that the nonmoving party is aware that
Opposition No. 91215896
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the issue is being tried.”). Applicant therefore had no obligation to object during
Ms. Bell’s deposition.
3. In the Alternative, Opposer Did Not Prove the Extent of Its
Conjoint Use
Even were we to find that Opposer need not have pleaded the conjoint use claim
it asserted at trial or that such a claim was tried by consent, Opposer did not establish
through record evidence that use of its pleaded marks together has been effective to
qualify them for conjoint analysis. The two prerequisites for this showing are stated
as follows in Schering-Plough, 84 USPQ2d at 1326:
In order that opposer’s marks may be considered together,
two elements must be satisfied before traditional likelihood
of confusion analysis can proceed. First, it must be
established that the marks have been and are being used
together on a single product or in marketing. See H.D.
Hudson Manufacturing Co. v. Food Machinery and
Chemical Corp., 230 F.2d 445, 109 USPQ 48 (CCPA 1956);
and Simoniz Company v. Hysan Products Company, 142
USPQ 377 (TTAB 1964). Further, it must be established
that opposer’s marks are used in such a fashion that it
would be proper to combine them for purposes of
comparison, that is, that they have been used and/or
advertised conjointly in such a manner and to such an
extent in connection with a single product that they have
come to be associated together, in the mind of the
purchasing public, as indications of origin for opposer’s
product. (citations omitted).
Opposer satisfied the first element of the test by submitting marketing and
promotional materials displaying both marks, including, for example, the truck wrap
shown supra and the following:
Opposition No. 91215896
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12
13 14

12 Exhibit 11 to Laura Bell Tr. and testimony at 27:3-29:10, 42 TTABVUE 29-31, 133
(promotional material for event at a Hy-Vee grocery store).
13 Id., Exhibit 17 and testimony at 39:15-40:4, 42 TTABVUE 41-42, 151 (ad that ran in August
2009 and August 2010 issues of REVIEW MAGAZINE, distributed in Southwest Michigan).
14 Id., Exhibit 41 and testimony at 72:12-75:6, 42 TTABVUE 74-77, 223 (screen shots showing
promotional stickers from Opposer’s Facebook pages).
Opposition No. 91215896
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Opposer has not, however, met the second element of the test by establishing that
its marks “have been used and/or advertised conjointly in such a manner and to such
an extent in connection with a single product that they have come to be associated
together, in the mind of the purchasing public, as indications of origin for opposer’s
product.” Schering-Plough, 84 USPQ2d at 1326. Apart from its vehicle wraps,
Opposer’s evidence of use of its two pleaded marks together generally represents
discrete instances, comprising ads from three magazine issues;15 a digital billboard
in Alexandria, Michigan;16 and photos and testimony concerning four beer festivals,
although Opposer’s witness did testify that some elements are typical of Opposer’s
use at other beer festivals.17
Missing from Opposer’s proof is sufficient evidence that its two marks have been
used conjointly to such an extent that together they have come to indicate source.
Even for the evidence displaying both marks, there is no reason to assume that
purchasers would see them as anything other than two distinct marks. See, e.g.,
Simoniz Co., 142 USPQ at 378 (declining to assume that a customer would
automatically combine parts of two marks appearing together on a product label). In
contrast, the plaintiff in Sperry Rand showed that it “has consistently displayed
conjointly its marks and trade names ‘REMINGTON’, ‘REMINGTON RAND’ and

15 Id., Exhibit 15 and testimony at 38:7-38:9, 42 TTABVUE 39-40, 144 (ad from October 2009
issue of ENCORE magazine).
16 Id., Exhibit 21 and testimony at 42:12-20, 42 TTABVUE 44, 155 (image from digital
billboard in Alexandria, Michigan).
17 Id., Exhibits 32-34 and testimony at 58:7-62:8, 42 TTABVUE 60-64, 198-205 (pictures of
sailboat turned into beer dispenser displaying both marks that was used at two festivals in
2015 and other uses of both marks at festivals, e.g., on kegs, draft boxes, and token tubs).
Opposition No. 91215896
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‘UNIVAC,’” 172 USPQ at 416, while the plaintiff in Schering-Plough submitted
testimony that it never used its pleaded mark AIR-PILLO without its house mark
DR. SCHOLL’S, 84 USPQ2d at 1327. See also Am. Cyanamid Co. v. J. Josephson,
Inc., 192 USPQ 765, 767 (TTAB 1976) (noting that an estimated 95 percent of
opposer’s advertising and promotional materials jointly featured its pleaded conjoint
marks). More comprehensive evidence of joint use than Opposer submitted would be
necessary to provide supporting context for a successful conjoint use claim.
In sum, we find that Opposer has waived its claim that Applicant’s mark is likely
to cause confusion with its mark BOTTLING INNOVATION SINCE 1895, and that
Opposer failed to plead or, in the alternative, to prove a conjoint use claim. Thus,
under the first du Pont factor, we assess only the similarity of Applicant’s mark
INNOVATION BREWING to Opposer’s mark INSPIRED BREWING.
4. Similarity of INNOVATION BREWING to INSPIRED BREWING
In a likelihood of confusion analysis, we compare the marks in their entireties for
similarities and dissimilarities in appearance, sound, connotation and overall
commercial impression. Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). “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) (quotation omitted).
Opposition No. 91215896
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Where, as here, the marks are used in association with identical goods, the degree
of similarity between the marks necessary to support a determination that confusion
is likely declines. Bridgestone Ams. Tire Operations LLC v. Fed. Corp., 673 F.3d 1330,
102 USPQ2d 1061, 1064 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century
Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
Both marks consist of a lead word starting with IN- followed by the same
disclaimed word, BREWING, which is descriptive or generic in association with beer
and therefore entitled to relatively less weight in our analysis.18 See, e.g., In re Nat’l
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“That a particular
feature is descriptive or generic with respect to the involved goods or services is one
commonly accepted rationale for giving less weight to a portion of a mark[.]”);
Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030,
1037 (TTAB 2016) (quoting Nat’l Data). Although the initial letters IN- lend some
similarity to the marks, INSPIRED and INNOVATION look and sound different
(INNOVATION is longer than INSPIRED, with no shared phonemes) and convey
different meanings. Opposer submitted the following definitions from the Merriam-
Webster online dictionary:
• inspired adjective
Simple Definition of INSPIRED
: very good or clever
: having a particular cause or influence

18 Generally, consumers are more inclined to focus on the first word in a trademark. See, e.g.,
Palm Bay Imps., 73 USPQ2d at 1692; Century 21, 23 USPQ2d at 1700; Presto Prods. Inc. v.
Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988).
Opposition No. 91215896
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Full Definition of INSPIRED
: outstanding or brilliant in a way or to a degree suggestive of divine
inspiration 19
• innovation noun
Simple Definition of INNOVATION
: a new idea, device, or method
: the act or process of introducing new ideas, devices, or methods
Full Definition of INNOVATION
1 : the introduction of something new
2 : a new idea, method, or device : NOVELTY20
There simply is no overlap in the meanings of these two words. Opposer’s
argument that “[b]oth words have a similar connotation in, at a minimum, denoting
a positive attribute as applied to beer, such that they will be confused and mistaken
by consumers as one for the other or as coming from the same source, particularly
when combined with the identical word BREWING” is insufficient. Reply Brief at 2,
48 TTABVUE 8. Not all marks denoting positive attributes are confusingly similar.
We also disagree with Opposer that “inspired” suggests “a new way of doing things
or something that causes a person to do something new.” Opposer’s Brief at 21, 44
TTABVUE 28. There is no evidence that “inspired,” like “innovation,” conveys a
suggestion of novelty.
Paired with BREWING, the dictionary definitions of record show that INSPIRED
connotes beer that tastes very good, while INNOVATION connotes a new method of
brewing. Thus, the overall commercial impressions made by the marks as a whole are
dissimilar. Even bearing in mind that the required degree of similarity is lower

19 Opposer’s Notice of Reliance, Exhibit 4, 36 TTABVUE 27-33.
20 Id., Exhibit 5, 36 TTABVUE 34-42.
Opposition No. 91215896
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because the marks are used in association with identical goods, we find no support
for a conclusion that persons who encounter the marks would be likely to assume a
connection between the parties.
Considered in their entireties, we find that INSPIRED BREWING and
INNOVATION BREWING differ in sight, sound, meaning, and overall commercial
impression to an extent that the first du Pont factor, the similarity of the marks,
weighs heavily against a finding that confusion is likely.
V. Conclusion
We have carefully considered all arguments and evidence properly of record,
including any not specifically discussed herein, as they pertain to the relevant
likelihood of confusion factors. To the extent that any other du Pont factors for which
no evidence was presented by Applicant or Opposer nonetheless may be applicable,
we treat them as neutral.
Any of the du Pont factors may play a dominant role in our analysis, and in some
cases, a single factor is dispositive. Champagne Louis Roederer S.A. v. Delicato
Vineyards, 148 F.3d 1373, 47 USPQ2d 1459, 1460 (Fed. Cir. 1998) (holding that the
Board did not err in deciding likelihood of confusion based solely on dissimilarity of
marks, noting that “we have previously upheld Board determinations that one
DuPont factor may be dispositive in a likelihood of confusion analysis, especially
when that single factor is the dissimilarity of the marks”); Kellogg Co. v. Pack’em
Enters. Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991). We find this to be
such a case.
Opposition No. 91215896
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We have found that the parties’ goods, customers, and channels of trade are
identical; that beer is inexpensive and subject to impulse purchase; and that
Opposer’s marks are afforded the normal scope of protection to which inherently
distinctive marks are entitled. Nonetheless, on the record before us, we find that the
dissimilarity of the marks INSPIRED BREWING and INNOVATION BREWING in
appearance, sound, connotation, and overall commercial impression outweighs the
other du Pont factors. For that reason, we find the first du Pont factor to be outcome-
determinative.
Considering the record evidence as a whole, we find that Opposer has not carried
its burden to establish by a preponderance of the evidence that Applicant’s mark
INNOVATION BREWING is likely to cause consumer confusion with Opposer’s mark
INSPIRED BREWING in association with beer.
Decision: The opposition to registration of application Serial No. 85929587 is
dismissed.