Black Bear Bottling Groupv.Black Bear Spring Water LLC

Trademark Trial and Appeal Board

Aug 18, 2011

No. 92050665 (T.T.A.B. Aug. 18, 2011)

Mailed: August 18, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Black Bear Bottling Group

v.

Black Bear Spring Water LLC
_____

Cancellation No. 92050665
_____

Donald J. Ersler of Donald J. Ersler, SC for Black Bear
Bottling Group.

Ernest D. Buff of Ernest D. Buff & Associates, LLC for Black
Bear Spring Water LLC.
_____

Before Quinn, Cataldo and Bergsman,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Petitioner, Black Bear Bottling Group, has petitioned
to cancel Registration No. 2981793 for the mark BLACK BEAR
SPRING WATER LLC (typed form, SPRING WATER LLC disclaimed),
owned by respondent, Black Bear Spring Water LLC. The
registration issued on August 2, 2005 on the Principal
Register. The goods are identified therein as “bottled
water,” in International Class 32.
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Cancellation No. 92050665
2
In its petition for cancellation, petitioner alleges
that it is the owner of application Serial No. 77492549 for
the mark BLACK BEAR SODA in standard characters for
“carbonated soft drinks” in International Class 32.1
Petitioner argues that respondent’s registration was cited
as a bar to registration of its applied-for mark; that
petitioner has made prior use of its BLACK BEAR SODA mark;
and that as a result of the similarity between the parties’
marks as applied to their respective goods, confusion is
likely among consumers as to the source of those goods.2
In its answer, respondent denied the salient
allegations of the petition to cancel. Respondent further
asserted “affirmative defenses” that are more in the nature
of amplifications of its denials and have been so construed.
The Record
The record in this case consists of the pleadings and
the file of respondent’s involved Registration No. 2981793.
In addition, pursuant to Trademark Rule 2.123(b) the parties
stipulated that the testimony of any witness may be taken by
affidavit or declaration. The parties further stipulated to

1 Application Serial No. 77492549 was filed on June 6, 2008,
based upon the assertion of May 15, 1920 as the date of first use
of the mark anywhere and January 2, 1998 as the date of first use
of the mark in commerce in connection with the goods.
2 In addition, petitioner asserted a claim of fraud but did not
pursue such claim at trial. Accordingly, it is deemed waived.
Cancellation No. 92050665
3
make of record pages 1-4 of respondent’s responses to
petitioner’s first set of interrogatories.3
Pursuant to the above, during its assigned testimony
and rebuttal testimony periods, petitioner submitted notices
of reliance upon the following: the affidavit, with
exhibits, of petitioner’s president, Peter J. Caruso; the
second declaration, with exhibits, of Peter J. Caruso; the
third declaration of Peter J. Caruso; the declaration, with
exhibits, of petitioner’s counsel, Donald J. Ersler; the
declaration of respondent’s office manager, Jill A. Wilson;
the first and supplemental declarations of the principal and
managing member of respondent, James J. Purcaro; and the
file history of petitioner’s application Serial No.
77492549.
During its assigned testimony period, respondent
submitted notices of reliance upon the following: the
declaration, with exhibits, of its principal and managing
member, James J. Purcaro; the declaration of its office
manager, Jill A. Wilson; petitioner’s responses to certain
of respondent’s interrogatories; specimens of use of
respondent’s involved mark; and the file wrappers of the
involved registration and petitioner’s asserted

3 The Board commends the parties for utilizing such evidentiary
stipulations. See TBMP §528.05(a)(2) (3d ed. 2011) and
authorities cited therein.
Cancellation No. 92050665
4
application.4 Respondent further submitted the supplemental
declaration, with exhibits, of James J. Purcaro.5
Petitioner and respondent filed main briefs.
Respondent’s Motion to Amend Answer
After the parties filed their briefs on the merits of
the case, respondent filed a motion under Fed. R. Civ. P.
15(b)(2) to amend its answer to conform to the evidence by
asserting laches as an affirmative defense. In its motion,
respondent asserts that during its assigned testimony
period, it submitted evidence going toward its laches
defense. Respondent further asserts that petitioner did not
move to strike such evidence; rather, petitioner filed
evidence during its rebuttal testimony period addressing
respondent’s laches defense. Thus, respondent argues,
petitioner was fairly apprised of respondent’s laches
defense, and that the issue of laches was tried by
petitioner’s implied consent. In response, petitioner
asserts that respondent’s motion “is nothing more than a
thinly veiled attempt to have reconsideration”6 of its

4 As noted by respondent, the file wrapper of the involved
registration is automatically of record and respondent’s
submission thereof by notice of reliance is thus unnecessary and
redundant.
5 We note that certain of the declarations submitted by
petitioner and respondent during their assigned testimony periods
are identical. The parties are reminded that when evidence is
made of record by one party, it may be referred to by any other
party for any purpose permitted by the Rules of Evidence.
Anheuser-Busch, Inc. v. Major Mud & Chemical Co., Inc., 221 USPQ
1191, 1192 n.7 (TTAB 1984).
6 Petitioner’s response to motion to amend, p. 1.
Cancellation No. 92050665
5
earlier motion to amend to assert laches.7 Petitioner
argues that respondent has unreasonably delayed in bringing
its motion to amend and that petitioner will be prejudiced
by its inability to address the defense, and because further
delay will continue to prevent petitioner from expanding its
territory of operation during the increased pendency of this
proceeding. Petitioner argues in addition that it did
object to respondent’s earlier attempt to assert laches and
has not provided express or implied consent to this attempt.
In reply, respondent argues that it is not seeking
reconsideration of the Board’s earlier interlocutory order,
but rather bases its present motion on evidence subsequently
made of record. Respondent reiterates that petitioner did
not object to its evidence going toward the issue of laches,
but rather submitted rebuttal evidence on the issue.
Turning now to the merits of respondent’s motion, Fed.
R. Civ. P. 15(b)(2) provides as follows:
When an issue not raised by the pleadings is tried
by the parties’ express or implied consent, it
must be treated in all respects as if raised in
the pleadings. A party may move – at any time,
even after judgment – to amend the pleadings to
conform to the evidence and to raise an unpleaded
issue. But failure to so amend does not affect
the result of the trial of that issue.

7 Respondent’s previous motion, filed on the last day of its
testimony period, to amend its answer to assert laches was denied
in an interlocutory order issued on September 27, 2010 on the
ground that it would be prejudicial to petitioner to allow the
amendment at that stage in the proceeding.

Cancellation No. 92050665
6
TBMP §507.03(b) (3d ed. 2011) provides, in pertinent part,
that “[i]mplied consent to the trial of an unpleaded issue
can be found only where the nonoffering party (1) raised no
objection to the introduction of evidence on the issue, and
(2) was fairly apprised that the evidence was being offered
in support of the issue.”
In this case, respondent introduced declaration
testimony and evidence during its testimony period on the
issue of petitioner’s asserted “undue delay” in bringing
this proceeding and the resulting detriment to respondent.8
We note, however, that petitioner submitted rebuttal
declarations on the issue of the parties’ knowledge of each
other’s marks and the asserted detriment to respondent.9 As
a result, our review of the record convinces us that the
issue of laches was impliedly tried by the parties as
contemplated under Fed. R. Civ. P. 15(b). Simply put,
petitioner did not object to respondent’s introduction of
testimony and evidence on the issue of laches. Rather,
petitioner submitted rebuttal testimony and evidence on that
issue. We find, therefore, that petitioner was fairly
apprised that respondent’s testimony and evidence was being
submitted on the issue of laches. See, for example, Time

8 Declaration and supplemental declaration of James J. Purcaro;
and Declaration of Jill A. Wilson.
9 Second declaration of Peter J. Caruso; and Declaration of
Donald J. Ersler.

Cancellation No. 92050665
7
Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1653 n.2
(TTAB 2002) (where opposer, during trial, filed notice of
reliance on seven unpleaded registrations and where
applicant did not object thereto, Board found parties had
tried by implied consent, any issues arising from those
registrations); and Kasco Corp. v. Southern Saw Service
Inc., 27 USPQ 2d 1501, 1504 (TTAB 1993) (defendant raised no
objection to evidence on unpleaded issue but was fairly
apprised of its purpose).
In view thereof, respondent’s motion to amend its
answer to the petition for cancellation to assert the
affirmative defense of laches is granted.
Nonetheless, we must observe at this point that neither
petitioner nor respondent discussed laches in their briefs
on the case. Respondent’s arguments in its brief with
regard to petitioner’s delay in bringing this action are
directed solely to the relative strength of the parties’
marks. Petitioner did not discuss laches in its brief and
did not file a reply brief. Thus, while we are left with
evidence in the record on the issue of laches without
corresponding arguments in the parties’ briefs, we find (1)
that such evidence demonstrates that the parties considered
laches to be an issue in this case; and (2) the evidence is
sufficiently straightforward that we may make a
determination thereupon without the parties having addressed
Cancellation No. 92050665
8
the matter in their briefs.
Laches
To prevail on the affirmative defense of laches,
respondent has to establish that there was undue or
unreasonable delay by petitioner in asserting its rights,
and prejudice to respondent resulting from the delay.
Bridgestone/Firestone Research Inc. v. Automobile Club de
l'Ouest de la France, 245 F.3d 1359, 58 USPQ2d 1460 (Fed.
Cir. 2001). In this case, there is testimony that
petitioner first became aware of respondent and its involved
mark on September 18, 2008 upon receipt of a communication
from the examining attorney assigned to its application
Serial No. 77492549, in which respondent’s involved mark was
cited as a bar to registration.10 Even absent this
testimony, the earliest date for purposes of determining
whether there has been undue delay is the March 2, 2004
publication date and the August 2, 2005 issue date of the
subject registration. See National Cable Television Ass'n,
Inc. v. American Cinema Editors, Inc., 937 F.2d 1572, 1581,
19 USPQ2d 1424, 1432 (Fed. Cir. 1991) (laches runs from the
time from which action could be taken against the trademark
rights inhering upon registration). Petitioner brought this
cancellation proceeding on March 9, 2009, approximately five

10 Second Declaration of Peter J. Caruso; and Declaration of
Donald J. Ersler.

Cancellation No. 92050665
9
years after the publication date and three years and seven
months after the date of registration.
The two factors of unreasonable delay and prejudice
must be considered together. On its face, the delay cannot
be viewed as unreasonable, inasmuch as the Trademark Act
provides that a cancellation action may be brought on the
ground of likelihood of confusion up until the point that a
registration is five years old. We would also point out
that the registration date is only constructive notice of
respondent's registration; petitioner does not appear to
have had actual notice of respondent's use of the mark until
September 2008, a mere six months before the petition for
cancellation was filed. As for prejudice resulting to
respondent from this delay in asserting its rights,
respondent states that in reliance on petitioner’s silence,
respondent “expanded its business and expended large sums of
money in advertising and building good will”11 in its mark.
According to respondent’s testimony, the total expenditures
in advertising from August 2005 to March 2009 are $165,000,
while advertising costs from 2003 through 2009 are
$285,000.12 We further note evidence that respondent became
aware of petitioner as early as November 3, 2008 when
petitioner sent a letter and proposed consent agreement to

11 Motion to amend, p. 14.
12 Supplemental declaration of James J. Purcaro.

Cancellation No. 92050665
10
respondent in an attempt to obviate the examining attorney’s
refusal to register the mark in its application.13 Thus,
respondent’s advertising expenditures incurred after
November 2008 could not have been made in reliance on
petitioner's inaction.
In light of the foregoing, we find that respondent has
not demonstrated that petitioner's claim is barred by
laches. We turn then to petitioner’s pleaded ground of
priority and likelihood of confusion.
Petitioner’s Standing
Preliminarily, it is noted that there is no issue as to
petitioner's standing to bring this proceeding. As
previously indicated, petitioner filed application Serial
No. 77492549 to secure registration for its BLACK BEAR SODA
mark. Such application has been refused registration on the
basis of respondent's involved registration.14 Petitioner,
therefore, has adequately proven its standing to be heard on
its claim of priority and likelihood of confusion. See,
e.g., Lipton Industries, Inc. v. Ralston Purina Co., 670
F.2d 1024, 213 USPQ 185, 189 (CCPA 1982) (to have standing
in a cancellation proceeding, "it would be sufficient that
appellee prove that it filed an application and that a
rejection was made because of appellant's registration").

13 Declaration of Donald J. Ersler and Exhibits A-C.
14 Declaration of Donald J. Ersler, Exhibits A-C.
Cancellation No. 92050665
11
Priority of Use
It is well-settled that in the absence of any evidence
of earlier use, the earliest date upon which a respondent
may rely is the filing date of its underlying application.
See Trademark Act Section 7(c), 15 U.S.C. §1057(c). See
also Larami Corp. v. Talk to Me Programs, Inc., 36 USPQ2d
1840 (TTAB 1995). In this case, the application that
matured into respondent’s registration at issue was accorded
a filing date of March 20, 2003. Inasmuch as respondent has
neither alleged nor introduced any evidence to support a
finding that it made earlier use of its BLACK BEAR SPRING
WATER LLC mark, we find that March 20, 2003 is the earliest
date upon which respondent is entitled to rely for purposes
of priority.15 Petitioner, therefore, may establish its
priority by proving that on or before March 20, 2003, it
made use of the BLACK BEAR SODA mark in connection with
carbonated soft drinks.
Because petitioner has not pleaded ownership of any
registered trademark, and further because its pleaded
application was filed subsequent to the filing date of the
application that matured into respondent’s registration,
petitioner must rely on its common law use of BLACK BEAR

15 Respondent asserts that its earliest date of first use is June
5, 2003, which is subsequent to its filing date. Furthermore,
respondent indicates that its first sale of goods under its
involved mark in interstate commerce occurred in July 2003
(Respondent’s response to petitioner’s Interrogatory No. 1).
Cancellation No. 92050665
12
SODA as a trademark to prove priority. In order for a
plaintiff to prevail on a claim of likelihood of confusion
based on its ownership of common law rights in a mark, the
mark must be distinctive, inherently or otherwise, and
plaintiff must show priority of use. See Otto Roth & Co. v.
Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA
1981).
Respondent maintains that petitioner has not
demonstrated its priority as to the mark BLACK BEAR SODA.
First, respondent argues that “[p]etitioner’s evidence
consists of unsubstantiated allegations as to its first use
date and first use date in commerce.”16 Respondent asserts
that the invoices showing petitioner’s earliest use, dated
March 22, 2002 and March 28, 2002, fail to show that such
use was made in connection with the BLACK BEAR SODA mark.
Second, respondent argues that the labels submitted by
petitioner in connection with its claim of priority do not
indicate the date upon which sales of the products bearing
the labels were made. Thus, respondent argues, “Petitioner
has not established a first use in commerce that is prior to
Respondent’s date and Petitioner cannot prevail.”17
Upon review of the evidence of record, we find that
petitioner has failed to prove that it made prior use of its
BLACK BEAR SODA mark. We find, however, that the record

16 Respondent’s brief, p. 6.
Cancellation No. 92050665
13
demonstrates that petitioner made sales of carbonated soft
drinks under the common-law mark BLACK BEAR at least as
early as March 22, 2002 and that such sales have been
followed by activities proving continuous use of that mark.
Petitioner testified that it first used the mark BLACK
BEAR in connection with carbonated soft drinks in intrastate
commerce in 1920.18 Petitioner further testified that its
first interstate use of its BLACK BEAR mark in connection
with the sale of carbonated soft drinks occurred in January
1998; however, “invoices providing evidence of a first date
of use in commerce were destroyed, after moving to the new
Black Bear headquarters in Oak Creek in April 2001.”19
Petitioner submitted an invoice from March 22, 2002,
displaying the mark BLACK BEAR and testified that “[e]ach
bottle was labeled with the mark Black Bear.”20 Petitioner
submitted subsequent invoices and labels displaying the
BLACK BEAR mark in connection with carbonated soft drinks.21
Petitioner further testified that sales of carbonated
soft drinks under the mark BLACK BEAR have been
continuous.22 We find that petitioner’s testimony is clear
and consistent as to how the invoice records and labels are

17 Id. at 8.
18 Affidavit of Peter J. Caruso.
19 Id.
20 Id. and Exhibit 5.
21 Id. and Exhibits 6-11.
22 Id.

Cancellation No. 92050665
14
kept. We further find that petitioner’s testimony is
uncontradicted by any testimony or evidence submitted by
respondent.
Therefore, we find that petitioner has demonstrated, by
a preponderance of the evidence, use of the mark BLACK BEAR
in connection with carbonated soft drinks as early as March
22, 2002 - a date prior to the earliest date respondent can
rely on, March 20, 2003, and that initial sales were
followed by activities proving continuous use of the BLACK
BEAR mark.23 See National Bank Book Co. v. Leather Crafted
Products, Inc., 218 USPQ 826, 828 (TTAB 1993) (oral
testimony may be sufficient to prove the first use of a
party’s mark when it is based on personal knowledge, it is
clear and convincing, and it has not been contradicted); and
Liqwacon Corp. v. Browning-Ferris Industries, Inc., 203 USPQ
305, 316 (TTAB 1979) (oral testimony may be sufficient to
establish both prior use and continuous use when the

23 We note that while petitioner did not specifically assert
ownership of the mark BLACK BEAR in its petition for
cancellation, its testimony and evidence, as well as its
arguments in its brief on the issue of priority, are directed
toward its use of the BLACK BEAR mark. Similarly, certain of
respondent’s arguments regarding priority in its brief are
directed toward petitioner’s use of the BLACK BEAR mark.
Accordingly, we deem the petition to cancel to be amended to
assert a claim of priority and likelihood of confusion based upon
petitioner’s use of the mark BLACK BEAR in connection with
carbonated soft drinks. In any event, because the word “soda” is
a generic term for carbonated soft drinks, the marks BLACK BEAR
SODA and BLACK BEAR are legal equivalents.

Cancellation No. 92050665
15
testimony is proffered by a witness with knowledge of the
facts and the testimony is clear, convincing, consistent,
and sufficiently circumstantial to convince the Board of its
probative value).
Likelihood of Confusion
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
The Goods
Turning first to our consideration of the similarities
or dissimilarities between the parties’ goods, we note that
it is well established that the goods of the parties need
not be similar or competitive, or even offered through the
same channels of trade, to support a holding of likelihood
of confusion. It is sufficient that the respective goods of
the parties are related in some manner, and/or that the
conditions and activities surrounding the marketing of the
goods are such that they would or could be encountered by
Cancellation No. 92050665
16
the same persons under circumstances that could, because of
the similarity of the marks, give rise to the mistaken
belief that they originate from the same source. See Hilson
Research, Inc. v. Society for Human Resource Management, 27
USPQ2d 1423 (TTAB 1993); and In re International Telephone &
Telephone Corp., 197 USPQ 910, 911 (TTAB 1978). The issue,
of course, is not whether purchasers would confuse the
goods, but rather whether there is a likelihood of confusion
as to the source thereof. In re Rexel Inc., 223 USPQ 830
(TTAB 1984).
In this case, respondent’s “bottled water” is related
on its face to petitioner’s “carbonated soft drinks”
inasmuch as both are commonly available beverage products.
Furthermore, petitioner made of record the file history of
its pleaded application Serial No. 77492549, including the
examining attorney’s Office Action and evidence citing
respondent’s involved mark as a bar to registration. Such
evidence consists of third-party registrations showing the
goods of both petitioner and respondent identified by the
same marks. The following examples are illustrative:
Registration No. 3142609 for goods including “carbonated and
non-carbonated soft drinks; bottled drinking water”;
Registration No. 3060794 for goods including “carbonated and
non-carbonated beverages, namely soft drinks, fruit juices,
smoothies, beer; drinking water”; Registration No. 3407929
Cancellation No. 92050665
17
for goods including “bottled water, drinking water, soft
drinks”; and Registration No. 3406531 for goods including
“non-alcoholic carbonated and non-carbonated beverages,
namely, fruit-flavored soft drinks, soft drink colas, soft
drinks flavored with tea, bottled water, namely, spring
water”. Third-party registrations which individually cover
a number of different items and which are based on use in
commerce serve to suggest that the listed goods and/or
services are of a type which may emanate from a single
source. See In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1786 (TTAB 1993). Thus, the record in this case
supports a finding that entities utilize a single mark to
identify both petitioner’s and respondent’s goods.
Channels of Trade
Respondent argues that its goods move in different
channels of trade from those in which petitioner’s goods are
encountered. The testimony and evidence adduced at trial
demonstrate that petitioner markets its soft drinks
primarily in 20 ounce bottles to beverage distributors,
grocery stores and bars for subsequent sale to end
consumers.24 Respondent markets its goods primarily in 8,
16.9, and 24 ounce bottles, as well as 1, 3, and 5 gallon
bottles for use in water coolers, to consumers’ residences,

24 Affidavit of Peter J. Caruso.
Cancellation No. 92050665
18
businesses and sporting events for consumption.25 Thus, it
appears that petitioner’s goods are marketed through
somewhat different trade channels from those in which
respondent’s goods are marketed. Nonetheless, we note that
there is overlap between consumers who purchase petitioner’s
soft drinks from distributors or grocery stores for
consumption at their place of residence or business and
consumers who purchase respondent’s bottled water for
consumption in the same places. In other words, the same
consumers of petitioner’s soft drinks may consume
respondent’s bottled water. We find, as a result, that
while the parties’ goods may be marketed in somewhat
different channels of trade, the end consumers are the same.
Actual Confusion
Another du Pont factor discussed by the parties is the
lack of instances of actual confusion despite use by the
parties of their respective marks from July 2003 until the
time of trial. Petitioner has not introduced any testimony
or evidence to support a finding that actual confusion has
occurred. However, petitioner is correct that it is not
necessary to show actual confusion in order to establish
likelihood of confusion. See Weiss Associates Inc. v. HRL
Associates Inc. 902 F.2d 1546, 223 USPQ 1025 (Fed. Cir.
1990). Thus, while evidence of actual confusion would

25 Declaration of James J. Purcaro.
Cancellation No. 92050665
19
strongly support a finding of likelihood of confusion, the
absence thereof does not require a finding of no likelihood
of confusion. See In re Majestic Distilling Company, Inc.,
315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003) (“The
lack of evidence of actual confusion carries little
weight.”). We further note that testimony and evidence of
record indicates that the parties’ goods are sold in
geographically distinct areas of the United States.26 As a
result, there does not appear to have been many
opportunities for actual confusion to occur.
The Marks
We turn now to the first du Pont factor, i.e., whether
respondent’s and petitioner’s marks are similar or
dissimilar when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial
impression. See Palm Bay Imports, Inc. v. Veuve Clicquot,
supra. The test, under the first du Pont factor, is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impression that confusion as to the source of the goods
offered under the respective marks is likely to result.
We note that while we must base our determination on a
comparison of the marks in their entireties, we are guided,

26 Affidavit of Peter J. Caruso, Exhibit 8.
Cancellation No. 92050665
20
equally, by the well-established principle that, in
articulating reasons for reaching a conclusion on the issue
of confusion, “there is nothing improper in stating that,
for rational reasons, more or less weight has been given to
a particular feature of a mark, provided the ultimate
conclusion rests on consideration of the marks in their
entireties.” In re National Data Corp., 732 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985).
In this case, petitioner’s BLACK BEAR mark is similar
to respondent’s BLACK BEAR SPRING WATER LLC mark in that the
identical wording, BLACK BEAR, comprising the entirety of
petitioner’s mark is the distinctive first term of
respondent’s mark. We find that the wording BLACK BEAR,
being the first term in respondent’s mark, is the dominant
feature in the commercial impression created thereby. See
Presto Products, Inc. v. Nice-Pak Products Inc., 9 USPQ2d
1895, 1897 (TTAB 1988)(“…[it is] a matter of some importance
since it is often the first part of a mark which is most
likely to be impressed upon the mind of a purchaser and
remembered.”). See also Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin, supra, (“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).
Furthermore, the disclaimed wording SPRING WATER LLC in
respondent’s mark clearly is generic for respondent’s goods
Cancellation No. 92050665
21
and business entity and has no source-identifying
significance.
Thus, to state the obvious, we find that the wording
BLACK BEAR in respondent’s mark contributes more
significantly to its commercial impression than the wording
SPRING WATER LLC. In terms of appearance, sound,
connotation and overall commercial impression, we find that
the similarities between the parties’ marks which result
from the presence of BLACK BEAR as the first term of
respondent’s mark outweigh the dissimilarities resulting
from the different second term, SPRING WATER LLC. Viewing
the marks in their entireties, we find that they are similar
because the wording BLACK BEAR is the dominant, and
identical, feature of respondent’s mark and the entirety of
petitioner’s mark.27
We are not persuaded by respondent’s argument that
petitioner’s BLACK BEAR mark is weak or otherwise entitled
to a narrow scope of protection. Respondent’s position,
which essentially is a conflation of its laches argument, is
that because of petitioner’s delay in bringing this action,
respondent’s mark “has become symbolic of the extensive good

27 We note that if we were to compare respondent’s BLACK BEAR
SPRING WATER LLC mark with the BLACK BEAR SODA mark in
petitioner’s pleaded application, the result would be the same.
The mere presence of the generic term SODA in petitioner’s
applied-for mark is insufficient to create a commercial
impression that is separate and distinct from respondent’s mark
BLACK BEAR SPRING WATER LLC.
Cancellation No. 92050665
22
will and consumer recognition built up by Respondent.”28
However, in arguing that “it is Respondent who should be
accorded broad protection”29 respondent has not introduced
any evidence that petitioner’s BLACK BEAR mark is weak or
otherwise entitled to a narrow scope of protection. To the
contrary, there is nothing in the record to suggest that
BLACK BEAR is suggestive of petitioner’s goods or that there
exists extensive third-party use of similar marks on related
goods. We note in addition that even if petitioner’s BLACK
BEAR mark was found to be a weaker mark entitled to a
narrower scope of protection, such scope would nonetheless
be sufficient to prevent the registration of such a highly
similar mark as that of respondent for goods that are
closely related.
Conclusion
We have carefully considered all of the testimony and
evidence pertaining to priority of use, the relevant du Pont
factors, as well as all of the parties’ arguments with
respect thereto, including any evidence and arguments not
specifically discussed in this opinion.
We conclude that petitioner has established priority of
use as to its BLACK BEAR mark and that consumers familiar
with petitioner’s goods under such mark would be likely to

28 Respondent’s brief, p. 13.
29 Id.

Cancellation No. 92050665
23
believe, upon encountering respondent’s BLACK BEAR SPRING
WATER LLC mark for its goods, that the parties’ goods
originate with or are associated with or sponsored by the
same entity. In making our determination, we have balanced
the relevant du Pont factors. The factors of the
relatedness of the goods and the similarities in the marks
weigh strongly in petitioner’s favor.
DECISION: Based upon our findings above, the petition
to cancel on the ground of priority and likelihood of
confusion is granted. Registration No. 2981793 will be
cancelled in due course.