Blacklands Malt, LLCv.M Distillery, Inc.

Trademark Trial and Appeal Board

Nov 18, 2019

91243647 (T.T.A.B. Nov. 18, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: November 18, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Blacklands Malt, LLC
v.
M Distillery, Inc.

Opposition No. 91243647

Richard J. Groos and Samantha Porphy Ade of King & Spalding LLP,
for Blacklands Malt, LLC.

Scott H. Davison of Musick Davison LLP,
for M Distillery, Inc.

Before Cataldo, Ritchie and Pologeorgis,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, M Distillery, Inc., seeks registration on the Principal Register of the
mark BLACKLAND DISTILLERY (standard characters, “DISTILLERY” disclaimed),
identifying “distilled spirits” in International Class 33.1
Opposer, Blacklands Malt, LLC, opposes registration, asserting the following

1 Application Serial No. 87731387 was filed December 21, 2017, based on Applicant’s
assertion 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).

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claims:
1. Priority and Likelihood of confusion under Trademark
Act Section 2(d), 15 U.S.C. § 1052(d); and

2. Geographic descriptiveness under Trademark Act Section
2(e)(2), 15 U.S.C. § 1052(e)(2).

Opposer pleaded the following applications:
Application Serial No. 87859068 for the mark BLACKLANDS MALT (standard
characters, “MALT” disclaimed), and
Application Serial No. 87859071 for the mark (“MALT”
disclaimed), both identifying “malt for brewing and distilling” in International Class
31.2
Applicant denied the salient allegations of the notice of opposition.3

2 Both applications were filed on April 2, 2018, based upon an assertion of use in commerce
since December 2013 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a).
Applicant describes the mark in Application Serial No. 87859071 as follows: The mark
consists of two concentric circles, the outer circle having a stylized scalloped edge, around a
picture of a farm scene with a barn and a cultivated field, and a shovel at the front left and
stalks of cereal grains at the front right, with the words “BLACKLANDS MALT” between
the two concentric circles in all caps, with “BLACKLANDS” across the top and “MALT” across
the bottom, with a single seed on either side of the word “MALT.”
3 Answer, 4 TTABVUE. Applicant asserted seven affirmative defenses. In a November 16,
2018 interlocutory order, the Board struck Applicant’s second through sixth affirmative
defenses on the ground that they were insufficiently pleaded, and construed Applicant’s first
and seventh affirmative defenses as mere amplifications of its denials.
Opposition No. 91243647
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I. Accelerated Case Resolution
The parties agreed to try this case via the Board’s Accelerated Case Resolution
(“ACR”) procedure.4 Specifically, they agreed to forego a traditional trial, and to
proceed on the summary judgment model of ACR, in which each party may submit a
brief with accompanying evidentiary submissions. In addition to stipulating, inter
alia, to certain facts and the use of limited evidence and discovery,5 their stipulation
provides that the Board may resolve any genuine disputes of material facts that may
be found to exist based on the record. See generally Kemi Organics, LLC v. Gupta,
126 USPQ2d 1601, 1602 (TTAB 2018) (describing summary judgment ACR model);
TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 702.04(b)
(2019).
The case is fully briefed.6 As in a traditional Board proceeding, the burden of proof
remains with Opposer, which must establish its case by a preponderance of the
evidence. TBMP § 702.04(a). As noted above, under the terms of the stipulation the
Board may resolve any and all issues of material fact in the course of issuing a final
ruling. See TPI Holdings, Inc. v. TrailerTrader.com, LLC, 126 USPQ2d 1409, 1411

4 See stipulation to proceed via ACR, 9 TTABVUE, clarified and approved by the Board, 10
TTABVUE; and subsequent ACR stipulation, 15 TTABVUE.
5 Stipulations, 9 TTABVUE 2; 15 TTABVUE 2-3.
6 On November 16, 2018, Opposer notified the Board of a state court action brought in Tarrant
County, Texas involving the parties and marks at issue herein. 6 TTABVUE. In a November
27, 2018 interlocutory order, the Board deferred consideration of whether to suspend this
opposition pending the outcome of the Texas court action. 8 TTABVUE. The parties
subsequently have informed the Board in their stipulation for ACR that no trial date had
been set in the Tarrant County litigation. 9 TTABUVE. Accordingly, we see no reason to
delay the determination of this opposition pending the outcome of the Tarrant County state
court action.
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(TTAB 2018); Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016) (“In order to take
advantage of any form of ACR, the parties must stipulate that the Board may resolve
any genuine disputes of material fact in the context of something less than a full
trial.”). See generally TBMP §§ 528.05(a)(2), 702.04, 705.
II. The Record and Stipulations of Fact
The parties introduced the following evidence by stipulation:7
• The pleadings, including any exhibits and attachments thereto;

• Opposer’s pleaded applications, including any documents in the file
histories for the applications;

• Applicant’s Opposed application, including all documents in the file history
for the application; and

• Opposer’s application Serial No. 87898729 for the mark BLACKLANDS
BREWING (standard characters, “BERWING” disclaimed), identifying
“beer” in International Class 32.8

The parties further submitted the following testimony and evidence:
• Testimony declaration of Mr. Brandon Ade, founder and managing partner
of Opposer, with exhibits (18 TTABVUE);

• Testimony declaration of Mr. Thomas Mote, Distillery Manager of third-
party Balcones Distilling, with exhibits (20 TTABVUE);

• Testimony declaration of Mr. Jeffrey Stuffings, co-founder of third-party
Jester King Brewery, with exhibits (21 TTABVUE);

• Testimony declaration of Mr. Tim Matthews, Vice President of Global
Brewing for third-party Canarchy Craft Collective and Brewmaster of
third-party Oskar Blues Brewery, with exhibits (22 TTABVUE);

7 15 TTABVUE 9-225.
8 Filed April 28, 2018 based upon an assertion of a bona fide intent to use intention to use
the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).
Opposition No. 91243647
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• Opposer’s notice of reliance upon internet materials, with exhibits (14
TTABVUE);

• Opposer’s notice of reliance upon discovery responses, with exhibits (16
TTABVUE);

• Testimony declaration of Mr. Markus Kypreos, CEO and President of
Applicant, with exhibits (25 TTABVUE);

• Applicant’s notice of reliance upon internet materials, including exhibits
(26 TTABVUE);

• Applicant’s notice of reliance upon discovery responses, including exhibits
(27 TTABVUE).

The parties stipulated to the authenticity of all produced documents.9
In addition, the parties stipulated to the following facts:10
1. Opposer manufactures and sells, among other things, raw and malted
grains.

2. Opposer’s manufacturing facility is located in Leander, Texas.

3. Opposer’s first sale of products bearing the BLACKLANDS MALT mark was
in December 2013.

4. Opposer has continuously offered for sale products bearing the
BLACKLANDS MALT mark since 2013.

5. Opposer receives orders for its raw and malted grains primarily via e-mail
or telephone.

6. Approximately ninety-eight (98) percent of Opposer’s sales to-date were to
commercial entities.

7. Malt is an ingredient in beer, some distilled spirits, non-alcoholic beverages
and food products.

9 9 TTABVUE 2; 15 TTABVUE 1-2.
10 15 TTABVUE 3-7.
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8. Opposer’s craft malt and raw grains have been sold to and used by brewers
and distillers to make products such as beer, whisky, vodka, bourbon, and
other spirits. Opposer also sold grain to a bakery in 2015.

9. Opposer has used the following logo in connection with sales of goods since
December 2013:

10. Opposer filed application Serial No. 87859068 on April 2, 2018 for a
BLACKLANDS MALT word mark in Class 31.

11. Opposer filed application Serial No. 87859071 on April 2, 2018 for a
BLACKLANDS MALT stylized mark in Class 31.

12. Opposer filed application Serial No. 87898729 on April 28, 2018 for a
BLACKLANDS BREWING word mark in Class 32.

13. Opposer filed application Serial Nos. 87859068 for the BLACKLANDS
MALT word mark and 87859071 for the BLACKLANDS MALT stylized mark
as in-use applications reflecting a first-use date of December 2013. Opposer
filed Application Serial No. 87898729 for the BLACKLANDS BREWING word
mark as intent-to-use.

14. Applicant filed application Serial No. 87731387 for a BLACKLAND
DISTILLERY word mark on December 21, 2017 in Class 33.

15. Applicant disclaimed the exclusive right to the term “DISTILLERY” apart
from the BLACKLAND DISTILLERY mark.

16. Applicant’s application Serial No. 87731387 was filed as intent-to-use.

17. Applicant’s distillery and tasting room is located in Fort Worth, Texas.

18. Applicant sells distilled spirits including bourbon, gin, rye whiskey and
vodka, as well as mixed drinks and food items.

19. Applicant first became aware of Blacklands Malt on December 19, 2017.

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20. Other than applications filed by Applicant and Opposer, there are no other
applications or registrations for “Blackland” or “Blacklands” that reference
brewing or distilling.

21. Applicant has used the following logo in connection with the sale of its
goods:

22. The term “Blackland” in the BLACKLAND DISTILLERY mark was
derived from the Blackland Prairies Ecoregion of Texas.

23. The term “Blackland” in the BLACKLANDS MALT name was inspired by
the Blackland Prairies Ecoregion of Texas.

24. Many of Applicant’s customers have inquired about the meaning of the
name “Blackland.”

25. Many of Opposer’s customers have inquired about the meaning of the name
“Blacklands.”

26. Among other places, distilled spirits are sold in bars, grocery stores,
restaurants, and liquor stores.

27. Among other places, beer is sold in bars, grocery stores, restaurants, and
liquor stores.

28. Malt is not sold in bars, grocery stores, restaurants or liquor stores.

29. Purchasers of malt are not the type of consumers who purchase on impulse.

30. Malt and distilled spirits are not sold through the same channels of trade.

31. Applicant is located near the Blackland Prairies Ecoregion of Texas.

32. Applicant is located in Tarrant County, Texas, portions of which are in the
Blackland Prairies Ecoregion of Texas.

33. Opposer is located near the Blackland Prairies Ecoregion of Texas.

34. Opposer is located in Williamson County, Texas, portions of which are in
the Blackland Prairies Ecoregion of Texas.
Opposition No. 91243647
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35. The boundaries of the Blackland Prairies Ecoregion of Texas are unclear.

For efficiency, we focus on Opposer’s pleaded application Serial No. 87859068 for
the mark BLACKLANDS MALT in standard characters with “MALT” disclaimed,
identifying “malt for brewing and distilling,” in Class 31. We consider the mark and
goods in this application most relevant to the likelihood of confusion analysis. See In
re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
III. Standing
Opposer must prove standing by showing a real interest in the outcome of the
proceeding and a reasonable basis for believing that it would suffer damage if the
mark is registered. See 15 U.S.C. § 1063; Empresa Cubana Del Tabaco v. Gen. Cigar
Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014). In order to meet the
standing requirement, a plaintiff need only show that it has a real interest, i.e., a
personal stake, in the outcome of the proceeding. See Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023, 1026 (Fed. Cir. 1999); Jewelers Vigilance Committee, Inc. v.
Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2012, 2023-24 (Fed. Cir. 1987).
In this case, the Examining Attorney assigned to Opposer’s pleaded applications
cited Applicant’s involved application as a potential bar to registration.11 Thus,
Opposer has standing based on the Trademark Examining Operation’s action taken
in regard to its pleaded applications. Fiat Group Automobiles S.p.A. v. ISM Inc. 94
USPQ2d 1111 (TTAB 2010). See also Life Zone Inc. v. Middleman Group Inc., 87

11 15 TTABVUE 13-18; 39-45; 76-81; 102-107.
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USPQ2d 1953 (TTAB 2008) (standing found based on opposer’s ownership of pending
trademark application and Office action which resulted in suspension of its
application due to involved application being cited as a potential bar to registration).
IV. Priority
The question of priority is an issue in this case because Opposer has asserted
ownership of two prior trademark applications for the mark BLACKLANDS MALT
and does not own an existing registration upon which it can rely under Section 2(d).
Cf., e.g., King Candy Co., Inc. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974). A party may establish prior proprietary rights in a mark
through an earlier constructive filing date accorded to the party’s own registration
or application, actual use, or through use analogous to trademark use that creates a
public awareness of the designation as a trademark identifying the party as a source.
See Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1022 (TTAB 2009).
To establish priority on its likelihood of confusion claim under Section 2(d) of the
Trademark Act, Opposer must prove that, vis-à-vis Applicant, it owns “a mark or
trade name previously used in the United States . . . and not abandoned.” Here,
Opposer must prove prior proprietary rights based on prior common-law use.
To establish priority, the petitioner must show proprietary
rights in the mark that produce a likelihood of confusion.
Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317,
1320, 209 USPQ 40, 43 (CCPA 1981). These proprietary
rights may arise from . . . prior trademark or service mark
use, prior use as a trade name, prior use analogous to
trademark or service mark use, or any other use sufficient
to establish proprietary rights.
Opposition No. 91243647
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Herbko Int’l Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed.
Cir. 2002).
A party challenging registration of a trademark due to a likelihood of confusion
with its own unregistered term cannot prevail unless it shows that its term is
distinctive of its services, whether inherently, through the acquisition of secondary
meaning, or through “‘whatever other type of use may have developed a trade
identity.’” Towers v. Advent Software Inc., 913 F.2d 942, 16 USPQ2d 1039, 1041 (Fed.
Cir. 1990) (quoting Otto Roth, 209 USPQ at 43). Thus, in order to prevail, Opposer
must establish that its mark BLACKLANDS MALT is distinctive, either inherently
or through acquired distinctiveness, and that its use and acquisition of
distinctiveness predates Applicant’s acquisition of proprietary rights.
Applicant does not appear to contest Opposer’s priority. The parties have
stipulated above that “Opposer’s first sale of products bearing the BLACKLANDS
MALT mark was in December 2013;” and that “Opposer has continuously offered for
sale products bearing the BLACKLANDS MALT mark since 2013.”12 Applicant did
not argue that BLACKLANDS MALT lacks inherent distinctiveness and, as
discussed below, we find it to be suggestive and, thus inherently distinctive.13
Furthermore, it is well-settled that in the absence of any evidence of earlier use,
the earliest date upon which an applicant may rely is the filing date of its challenged
application. See Trademark Act Section 7(c), 15 U.S.C. §1057(c). See also Syngenta

12 15 TTABVUE 3.
13 Opposer argues that its BLACKLANDS MALT mark is inherently distinctive and, in the
alternative, that it has acquired distinctiveness. 24 TTABVUE 11-16.
Opposition No. 91243647
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Crop Prot. Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1119 (TTAB 2009) (“applicant may
rely without further proof upon the filing date of its application as a ‘constructive use’
date for purposes of priority.”); Larami Corp. v. Talk to Me Programs, Inc., 36
USPQ2d 1840 (TTAB 1995). Applicant filed the involved application on December 21,
2017 based upon its claim of a bona fide intent to use the mark in commerce under
Trademark Act Section 1(b), 15 U.S.C. § 1051(b), and has not asserted an earlier date
of first use.
Therefore, we find that Opposer has met its burden of showing by a preponderance
of the evidence that it first used the mark BLACKLANDS MALT in connection with
its goods prior to Applicant’s constructive first use.
V. Likelihood of Confusion
The determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. DuPont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
considered, hereinafter referred to as “DuPont factors”); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). “‘Not all of the
DuPont factors are relevant to every case, and only factors of significance to the
particular mark need be considered.”’ See Cai v. Diamond Hong, Inc., 901 F.3d 1367,
127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (quoting In re Mighty Leaf Tea, 601 F.3d
1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)); M2 Software, Inc. v. M2 Commc’ns,
Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (even within DuPont list,
only factors that are “relevant and of record” need be considered). Two key
Opposition No. 91243647
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considerations are the similarities between the marks and the similarities between
the goods and/or services. See In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d
1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d
1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); In re FabFitFun, Inc., 127
USPQ2d 1670, 1672 (TTAB 2018).
A. Similarity or Dissimilarity of the Marks
We compare the parties’ marks “in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imps. 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 test assesses not whether the marks
can be distinguished in a side-by-side comparison, but rather whether their overall
commercial impressions are so similar that confusion as to the source of the goods
offered under the respective marks is likely to result. Coach Servs., Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); see also Edom
Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012). Similarity in any one of
the elements of sound, appearance, meaning, or commercial impression suffices to
support a determination of likelihood of confusion. See Krim-Ko Corp. v. The Coca-
Cola Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the
similarity in either form, spelling or sound alone is likely to cause confusion”); In re
Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (“Similarity in any one of these elements
may be sufficient to find the marks confusingly similar.”).
Opposition No. 91243647
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The proper focus is on the recollection of the average customer, who retains a
general rather than specific impression of the marks. Geigy Chem. Corp. v. Atlas
Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A. v.
Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); see also In re St. Helena Hosp., 774
F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (“marks must be considered in
light of the fallibility of memory”) (citation, internal quotation marks, and ellipsis
omitted).
Opposer’s mark is BLACKLANDS MALT in standard characters, and Applicant’s
mark is BLACKLAND DISTILLERY, in standard characters. The marks are similar
to the extent they share the word “BLACKLAND[S].” As between BLACKLANDS and
BLACKLAND, we see little viable distinction. If the term BLACKLANDS in
Opposer’s mark is perceived to be a plural form of BLACKLAND, the distinction is
not sufficient to prevent likely confusion. Wilson v. Delaunay, 114 USPQ 339, 341
(CCPA 1957); In re Pix of America, Inc., 225 USPQ 691, 692 (TTAB 1985); In re
Sarjanian, 136 USPQ 307, 308 (TTAB 1962). If BLACKLANDS is perceived as a
possessive form of BLACKLAND, that too is not a sufficient distinction. In re Binion,
93 USPQ2d 1531, 1534 (TTAB 2009); In re Curtice-Burns, Inc., 231 USPQ 990, 992
(TTAB 1986); Winn’s Stores, Inc. v. Hi-Lo, Inc., 203 USPQ 140, 143 (TTAB 1979).
The dominant part of both marks is the word “BLACKLAND[S].” The term
“BLACKLAND” in Applicant’s mark “was derived from the Blackland Prairies
Ecoregion of Texas.”14 The term “BLACKLANDS” in Opposer’s mark also “was

14 15 TTABVUE 5-6.
Opposition No. 91243647
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inspired by the Blackland Prairies Ecoregion of Texas.”15 Thus, the term
BLACKLAND[S] common to both marks is nearly identical in appearance and sound,
as well as meaning.16 The word “DISTILLERY” in Applicant’s mark is, at best, highly
descriptive and has been disclaimed.17 Likewise, the word “MALT” in Opposer’s mark
is, at best, highly descriptive and has been disclaimed.18 It is well-settled that
disclaimed, descriptive matter may have less significance in likelihood of confusion
determinations. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047,
1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d
1531, 1533-34 (Fed. Cir. 1997)); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has
noted that the ‘descriptive component of a mark may be given little weight in reaching

15 15 TTABVUE 6.
16 In consequence of the parties’ stipulation, we are not convinced by Applicant’s arguments
in its brief (29 TTABVUE 11) that the term BLACKLAND[S] possesses different connotations
in the marks at issue.
17 15 TTABVUE 5; April 3, 2018 Examiner’s Amendment in the prosecution history of
Applicant’s involved application. We hereby take judicial notice that the word “distillery” is
defined as “a place or establishment where distilling, especially the distilling of liquors, is
done.” Dictionary.com based on the RANDOM HOUSE UNABRIDGED DICTIONARY (2019)
accessed November 7, 2019.
The Board may take judicial notice of dictionary definitions, including online dictionaries
which exist in printed format. See In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB
2014); In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002). See also
University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594
(TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
18 Examining Attorney’s July 20, 2018 Office Action in the prosecution history of Opposer’s
pleaded application Serial No. 87859068. We hereby take judicial notice that the word “malt”
is defined, inter alia, as “germinated grain, usually barley, used in brewing and distilling.”
Dictionary.com based on the RANDOM HOUSE UNABRIDGED DICTIONARY (2019) accessed
November 7, 2019.

Opposition No. 91243647
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a conclusion on the likelihood of confusion.’”) (quoting In re Nat’l Data Corp., 753 F.2d
1056, 224 USPQ 749, 752 (Fed. Cir. 1985)); In re Dixie Rests. Inc., 41 USPQ2d at
1533-34; In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001)
(disclaimed matter is often “less significant in creating the mark’s commercial
impression”). There is nothing improper in stating that, for rational reasons, more or
less weight has been given to a particular feature of a mark, such as a common
dominant element, provided the ultimate conclusion rests on a consideration of the
marks in their entireties. In re Nat’l Data Corp., 224 USPQ at 751; see also In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012).
Further, the significance of the word “BLACKLAND[S]” in the parties’ marks as
the dominant element is enhanced by its position as the first word in both. See In re
Detroit Athletic Co., 128 USPQ2d at 1049 (finding “the identity of the marks’ two
initial words is particularly significant because consumers typically notice those
words first”); Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Fondee En 1772, 73
USPQ2d at 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 Corp. v. Century Life of Am., 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will
first notice the identical lead word); In re Integrated Embedded, 120 USPQ2d 1504,
1513 (TTAB 2016) (noting that the dominance of BARR in the mark BARR GROUP
is reinforced by its location as the first word in the mark); Presto Prods. Inc. v. Nice-
Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a
Opposition No. 91243647
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mark which is most likely to be impressed upon the mind of a purchaser and
remembered”).
The marks BLACKLANDS MALT and BLACKLAND DISTILLERY share the
dominant word “BLACKLAND[S],” which the parties agree was “derived from” (in
the case of Applicant’s mark) or “inspired by” (in the case of Opposer’s mark) a Texas
ecoregion of unclearly defined borders. In both marks, BLACKLAND(S) is followed
by a highly descriptive term denoting Opposer’s goods and the place where
Applicant’s goods are distilled. Thus, they are more similar than dissimilar in
appearance, sound, meaning and commercial impression. Where, as here, “the
dominant portion of both marks is the same, then confusion may be likely
notwithstanding peripheral differences.” In re Denisi, 225 USPQ 624, 624 (TTAB
1985). The peripheral differences in this case fail to distinguish the marks.
Consumers familiar with Opposer’s BLACKLANDS MALT mark, upon encountering
the mark BLACKLAND DISTILLERY, may mistakenly believe that BLACKLAND
DISTILLERY is a variation or new line of distilled spirits emanating from the same
source as BLACKLANDS MALT.
Accordingly, this DuPont factor weighs in favor of finding that there is a likelihood
of confusion.
B. Strength of the BLACKLANDS MALT Mark
In determining the strength of a mark, we consider both its inherent or conceptual
strength, based on the nature of the mark itself and its commercial strength, based
on the marketplace recognition value of the mark. See Top Tobacco, L.P. v. North
Opposition No. 91243647
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Atlantic Operating Co., Inc., 101 USPQ2d 1163, 1171-72 (TTAB 2011) (the strength
of a mark is determined by assessing its inherent strength and its commercial
strength); Tea Bd. of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB
2006). Market strength is the extent to which the relevant public recognizes a mark
as denoting a single source. Id. For purposes of analysis of likelihood of confusion, a
mark’s renown may “var[y] along a spectrum from very strong to very weak.” Joseph
Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733,
1734 (Fed. Cir. 2017) (internal quotations omitted). The proper standard is the mark’s
“renown within a specific product market,” id., and “is determined from the viewpoint
of consumers of like products,” id. at 1735, and not from the viewpoint of the general
public.
As discussed above, the parties have stipulated that the wording BLACKLANDS
MALT, used in connection with “malt for brewing and distilling,” was “inspired by”
the Blackland Prairie region of Texas. Accordingly, Opposer’s BLACKLANDS MALT
mark appears to be suggestive of Opposer’s goods.
With respect to the commercial strength of the BLACKLANDS MALT marks,
Applicant introduced into the record a list of
at least 43 business names in the State of Texas which utilize the name
“Blackland” in its name, including several with goods similar to
Opposer’s raw and malted grain products, examples of which include
“Blackland Prairies Mix ‘Seeds’ Native American Seed,” “Blackland
Cotton & Grain Producer’s Association,” “Blackland Bakery,”
“Blacklands Café,” “Blackland Smokehouse,” “Blackland Water Supply
Co.,” “Blackland Farm & Cattle,” and “Blacklands Ranch.” 27
TTABVUE 32-36. Applicant is also including a publicly-available
corporate tax profile of Blackland Cotton & Grain Producer’s Association
showing its recent tax activity as further evidence of its business
Opposition No. 91243647
- 18 -
activity. 26 TTABVUE 61-63. All of these businesses could potentially
offer raw or malted grain products or any food or beverage product which
uses raw or malted grain as an ingredient, such as bread, vinegar, malt
shakes, etc. Thus, Opposer’s common law rights in BLACKLANDS
MALT are commercially weak, as consumers have been exposed to
numerous grain, farming and food production companies which utilize
the term “BLACKLAND.”19

However, the list of business submitted by Applicant includes only a business
name, address and telephone number. A representative sample consisting of the first
five businesses is reproduced below:20
Blackland Building Supply
1701 S. Kaufman Street
Ennis, TX 75119
(972) 878-0995

Blackland Research & Extension Center – Texas A&M University
720 East Blackland Road
Temple, TX 76502
(254) 774-6000

Blackland Community Development Corporation
1902 E 22nd Street
Austin, TX 78722
(512) 220-8751

Blackland Prairie Raptor Center
1625 Brockdale Park Road
Allen, TX 75002
(469) 964-9696

Blackland Texas Archives
Building F 1201 Brazos
P. O. Box 12927
Austin, TX 78711
(512) 463-5460

19 Applicant’s brief, 31 TTABVUE 20.
20 Applicant’s notice of reliance, 27 TTABVUE 32.
Opposition No. 91243647
- 19 -
There is no testimony or evidence in the record regarding the nature or extent of
the activities in which any of these third parties are engaged. Thus, we can only infer
from the names of the forty-three businesses that they involve, e.g., building supply,
community development, Native American “seed,” home inspections, cemeteries,
hardware, publication and an association of grain producers.21 Based upon the very
scant information in the record, we find insufficient support for Applicant’s
speculative contention that any of these third parties could potentially offer products
similar to Opposer’s malt. See Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371,
91 USPQ2d 1409, 1415 (Fed. Cir. 2009) (reasoning that a party’s “unsworn attorney
argument … is not evidence” and thus cannot rebut record evidence); Enzo Biochem,
Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005)
(“Attorney argument is no substitute for evidence.”); cf. In re Simulations Publ’ns,
Inc., 521 F.2d 797, 187 USPQ 147, 148 (CCPA 1975) (where appellant argued that
the magazines at issue deal with unrelated subject matter, the court held that
“[s]tatements in a brief cannot take the place of evidence.”).
Opposer, on the other hand, introduced testimony that it is the first modern craft
malt house in Texas, and has sold its goods to over ninety commercial breweries,
distillers and individual consumers.22 Opposer has introduced evidence that its goods
under the BLACKLANDS MALT mark have received unsolicited printed and online
media coverage in local and regional magazines, newspapers, trade journals,

21 27 TTABVUE 32-36.
22 Declaration of Brandon Ade, 18 TTABVUE 4.
Opposition No. 91243647
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websites, blogs and social media postings, including Austin Chronicle, Houston
Chronicle, San Antonio Express and Beer & Brewing Magazine.23 Opposer has also
introduced testimony and evidence that its goods under the BLACKLANDS MALT
mark are advertised by some of the brewers and distillers who are its customers on
labels and packaging as an ingredient of the distilled spirits and beers they produce.24
Opposer’s testimony and evidence shows that Opposer is commercially successful
as indicated by the fact that it has been rendering its services since at least 2013, and
has received regional and local attention in the mainstream media as well as national
and regional attention in niche publications relating to brewing and distilling.
However, the record does not necessarily show that Opposer’s mark is commercially
strong. For example, Opposer has not introduced any testimony or other evidence
placing Opposer’s success in context with other producers of malt operating at a
comparable scale.
Considering the record as a whole, we find that Opposer’s BLACKLANDS MALT
mark is appropriately placed in the middle of the spectrum of “very strong to very
weak.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 122 USPQ2d at
1734 (quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed.
Cir. 2003)); Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d at 1059 (“The
commercial strength of Petitioner’s TAO mark outweighs any conceptual weakness.”).

23 Opposer’s notice of reliance, see generally 14 TTABVUE.
24 Declaration of Jeffrey Stuffings, 21 TTABVUE 3-25.
Opposition No. 91243647
- 21 -
C. The Similarity or Dissimilarity and Nature of the Goods
This DuPont factor concerns the “similarity or dissimilarity and nature of the
goods or services as described in an application or registration . . . .” Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1159
(Fed. Cir. 2014). The analysis of this factor is premised on the identifications of goods
in Applicant’s involved application and Opposer’s pleaded application. Id. at 1161-63;
Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990). Relatedness may be shown on the basis of those identifications alone,
without resort to extrinsic evidence. Hewlett-Packard Co. v. Packard Press Inc., 281
F.3d 1261, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002).
In this regard “likelihood of confusion can be found ‘if the respective products are
related in some manner and/or if the circumstances surrounding their marketing are
such that they could give rise to the mistaken belief that they emanate from the same
source.”’ Coach Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83
USPQ2d 1715, 1724 (TTAB 2007)).
Opposer contends that “consumers of distilled spirits and beer encounter the
BLACKLANDS MALT mark on and advertised in connection with finished beers and
spirits.”25 There is no evidence of record that at the time of trial, Opposer itself
produces beer or distilled spirits. Rather, Opposer introduced evidence that third-
party brewers and distillers indicate in their advertising, packaging and labels that

25 Opposer’s brief, 24 TTABVUE 18.
Opposition No. 91243647
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their beers and spirits are produced with Opposer’s malt. The following examples are
illustrative.
Balcones Distilling released an All-Texas Single Malt
Whisky.…Blacklands Malt and Balcones Distilling have teamed up and
are proud to announce their groundbreaking project of creating a single
malt whisky made from Texas-grown barley….Named the first
malthouse in modern Texas history, Blacklands Malt has been the
driving force behind the revitalization of Texas-grown malting barley
statewide, providing brewers with access to local malt for the first time
in Texas history….Together the two companies have created High
Plains Texas Single Malt, which features aromas of stewed apples,
sauternes, honeycomb, and light mink oil.26

Two locals launched Banner Distilling a few years in a small building in
rural Manor with the goal of bottling up a Texas-made wheat whiskey.
But it was only earlier this year that their dream was realized.
Simpson and Jimenez decided to play with wheat as the dominant grain
in the whiskey, rather than the more commonly used corn or rye,
because of their desire to keep ingredients as local as possible. Their
distillery is located in an area where farmers told them, early on, that
they’d be willing to grow whatever Banner needs.
In addition to winter wheat grown in nearby New Sweden, the 92-proof
whiskey also features malted barley from Leander’s Blacklands Malt
and rainwater harvested from Smithville’s Texas Rain. “We literally use
Texas air, sun, soil and rain to make the whiskey,” Simpson said in a
recent email. “We like to say it has Texas in the bottle, not just on it.”27

26 Opposer’s notice of reliance, 34 TTABVUE 38-41.
27 Ade Declaration, 18 TTABVUE 61-62.
Opposition No. 91243647
- 23 -
28

29
Opposer also introduced evidence that it licenses use of its mark and portions thereof
to third-party brewers for use in such beers as “Smoak on the Blacklands.”30
Opposer’s Managing Partner, Brandon Ade, states as follows in his declaration:
30. Through the Craft Maltsters Guild, I am aware of numerous
manufacturers that produce both malt and beer or spirits, including,
among others, Admiral Maltings (malt and beer), Bentley Heritage
(malt and spirits); Colorado Malting Company (malt and beer), Eckert
Malting & Brewing (malt and beer), Leopold Brothers (malt and spirits),
and West Branch Malts (malt and spirits).31

In response, Applicant argues in its brief:

28 Ade Declaration, 18 TTABVUE 59.
29 18 TTABVUE 68.
30 18 TTABVUE 5.
31 18 TTABVUE 17.
Opposition No. 91243647
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As Opposer offered no evidence to support this statement, Applicant
investigated and determined that neither Admiral Maltings, Bently
Heritage, Colorado Malting Company, Leopold Brothers or West Branch
Malts actually sell both malt and beer/spirits, as they instead either
produce their own malt without selling it or sell malt and beer/spirits
under separate trademark names. 26 TTABVUE 38-59. Therefore, it
would appear that only one company in the entire United States –
Eckert Malting and Brewing – is engaged in the production and sale of
both malt and beer.

However, the contents of Applicant’s notice of reliance at 26 TTABVUE are not
present in the record. While Opposer appears to have received the documents
associated with this notice of reliance, they are absent from the record before the
Board. Further, Opposer introduced evidence that third party craft distiller Leopold
Bros. was in the process of opening one of the largest malting facilities in the world
(shankenewsdaily.com).32 Opposer also introduced into the record copies of four use
based, third-party registrations for marks identifying both “malt for brewing and
distilling” and various beers.33
To be clear, none of the evidence points to Opposer or its marks as the source of
beer or distilled spirits. As a result, we disagree with Opposer’s statement in its reply
brief that “Opposer’s common law rights extend to alcoholic beverages.”34 The
evidence of record clearly establishes that third parties credit Opposer as the source

32 34 TTABVUE 7-9.
33 33 TTABVUE 115-151. We have considered only those marks which were shown to be
registered and based on actual use. The marks that have been registered under the provisions
of the Madrid protocol (Section 66A) or pursuant to Section 44(e) have no probative value
because they do not require use in commerce to be registered and therefore are not evidence
that the marks therein have ever been encountered by consumers in the marketplace. See In
re 1st USA Realty Professionals, Inc., 84 USPQ2d 1581, 1583 (TTAB 2007); In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
34 35 TTABVUE 2.
Opposition No. 91243647
- 25 -
of the local malt used in their distilled spirits and beer both on the products
themselves and marketing therefor. However, this evidence does not indicate
Opposer’s BLACKLANDS MALT as the source of the distilled spirits and beer
produced by third parties under their respective marks and trade names.
Nonetheless, the evidence of record does support Opposer’s claim that “Opposer
and its goods are inextricably entwined in the alcoholic-beverages industry.”35 The
packaging, advertisements and labelling of record demonstrates that third parties
tout Opposer’s “malt for brewing and distilling” under its BLACKLANDS MALT
mark as an ingredient in their beers and spirits. As discussed above, “malt” is defined,
inter alia, as “germinated grain, usually barley, used in brewing and distilling.”36 The
evidence of record, including the examples of packaging and advertising displayed
above, demonstrates that Opposer’s malt under its BLACKALNDS MALT mark is a
necessary and, in some cases, sought-after primary ingredient in beers and certain
distilled spirits.37 We recognize that malt is not an ingredient in all distilled spirits.
However, Opposer’s malt, especially intended for use in brewing and distilling, is
used, inter alia, in various vodkas, whiskeys and bourbons.38 Indeed, the parties have
stipulated that “Malt is an ingredient in beer, some distilled spirits, non-alcoholic
beverages and food products.”39

35 35 TTABVUE 2.
36 Dictionary.com based on the RANDOM HOUSE UNABRIDGED DICTIONARY (2019) accessed
November 7, 2019.
37 18 TTABVUE 4, 15-18, 37-68.
38 18 TTABVUE 4.
39 15 TTABVUE 4.
Opposition No. 91243647
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As a result, the parties’ goods are related inasmuch as Opposer’s malt is a
necessary and primary ingredient in distilled spirits, including distilled spirits of the
types produced by Applicant. It is not necessary that the goods under consideration
be identical or even competitive in nature in order to support a finding of likelihood
of confusion. The goods need only be “related in some manner or if the circumstances
surrounding their marketing are such that they could give rise to the mistaken belief
that they emanate from the same source.” Coach Servs., 101 USPQ2d at 1722
(quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). We find on
this record that Applicant’s “distilled spirits” are related to Opposer’s “malt for
brewing and distilling.” Accordingly, this DuPont factor weighs in favor of finding
that there is a likelihood of confusion.
D. Channels of Trade and Classes of Consumers
The parties have stipulated as follows:40
Opposer receives orders for its raw and malted grains primarily via e-mail or
telephone.

Approximately ninety-eight (98) percent of Opposer’s sales to-date were to
commercial entities.

Among other places, distilled spirits are sold in bars, grocery stores,
restaurants, and liquor stores.

Malt is not sold in bars, grocery stores, restaurants or liquor stores.

Malt and distilled spirits are not sold through the same channels of trade.

40 15 TTABVUE 6.
Opposition No. 91243647
- 27 -
We find as a result of the parties’ stipulations that the channels of trade and
classes of consumers are different, and this DuPont factor weighs in favor of finding
that there is no likelihood of confusion.
E. The Conditions under Which Sales Are Made
With regard to Opposer’s goods, the parties have stipulated as follows:41
Purchasers of malt are not the type of consumers who purchase on impulse.

With regard to Applicant’s goods, because the “distilled spirits” are not limited by
price point or quality, we must presume that purchasers for Applicant’s goods include
ordinary consumers who may not exercise a high degree of purchasing care. See Stone
Lion Capital Partners v. Lion Capital, 110 USPQ2d at 1163-64 (recognizing Board
precedent requiring consideration of the “least sophisticated consumer in the class”);
In re Sailerbrau Franz Sailer, 23 USPQ2d 1719, 1720 (TTAB 1992) (finding that all
purchasers of wine may not be discriminating because while some may have preferred
brands, “there are just as likely to be purchasers who delight in trying new taste
treats.”). Thus, while purchasers of Opposer’s goods may exercise a heightened degree
of care, purchasers of Applicant’s goods may or may not be discriminating in their
tastes. Accordingly, this DuPont factor appears neutral or weighs slightly against a
finding of likelihood of confusion.
F. Actual Confusion
Opposer’s only asserted instance of actual confusion consists of “a telephone call
inquiring if Opposer was starting a distillery in Fort Worth. At the time of the call,

41 15 TTABVUE 6.
Opposition No. 91243647
- 28 -
there had been only a single brief mention that there would be a distillery opening in
Fort Worth”42 However, an inquiry regarding whether there is a relationship between
the parties, as we have here, is not evidence of confusion. See Couch/Braunsdorf
Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1479 (TTAB 2014) (inquiry is
not evidence of confusion because the inquiry indicates that the prospective customer
had a reason to suspect that there were two different companies); Marshall Field &
Co. v. Mrs. Field’s Cookies, 25 USPQ2d 1321, 1334 (TTAB 1992) (inquiries indicate
that the declarants were aware that there may be two different entities); Elec. Water
Conditioners, Inc. v. Turbomag Corp., 221 USPQ 162, 164 (TTAB 1984) (“That
questions have been raised as the relationship between firms is not evidence of actual
confusion of their trademarks.”); Toys “R” Us, Inc. v. Lamps R Us, 219 USPQ 340,
346 (TTAB 1983) (“The fact that questions have been raised as the possible
relationship between firms is not by itself evidence of actual confusion of their
marks.”).
This DuPont factor is neutral.
G. Applicant’s Intent in Adopting Its Mark
Opposer asserts that because Applicant knew of Opposer prior to filing the
involved application, adopted a circular logo similar to that of Opposer,
refers to itself as “Blackland,” and emphasizes its use of local Texas grains in

42 24 TTABVUE 21; 18 TTABVUE 15.
Opposition No. 91243647
- 29 -
producing its spirits,43 “there is significant circumstantial evidence that Applicant
intends to cause consumer confusion.”44 However, this asserted “circumstantial
evidence” falls short of establishing that Applicant intended to create confusion with
Opposer and its marks.
We will not infer bad faith under circumstances in which the party asserting it
has submitted insufficient evidence thereof. Cf. L.C. Licensing Inc. v. Berman, 86
USPQ2d 183, 1891 (TTAB 2008) (bad faith adoption of a mark is strong evidence that
confusion is likely because an inference may be drawn from the imitator’s expectation
of confusion); Broadway Catering Corp. v. Carla Inc., 215 USPQ 462, 465 (TTAB
1982) (“One’s wrongful intent to trade on the trademark or trade name of another is
strong evidence that confusion is likely. Such inference is drawn from the imitator’s
own expectation of confusion as to the source of his product”).
This DuPont factor is neutral.
H. Summary of Likelihood of Confusion
We have considered all of the arguments and evidence of record, and all relevant
DuPont factors. We do not rely on any evidence not discussed in this decision. We
have found that the marks at issue are similar, and that Applicant’s distilled spirits
are related to Opposer’s malt for brewing and distilling. Although the channels of
trade and classes of consumers of the goods differ, we note that the consumers of the
end product created from Opposer’s goods are the same as Applicant’s consumers. We

43 14 TTABVUE 528, 635; 15 TTABVUE 4; 16 TTABVUE 9; 18 TTABVUE 9.
44 23 TTABVUE 55.
Opposition No. 91243647
- 30 -
further note that Opposer’s goods are not purchased on impulse and are likely subject
to a higher degree of deliberation than Applicant’s goods, the consumers of which
include ordinary consumers who may not exercise a high degree of purchasing care.
On balance, the relevant factors favor a finding of a likelihood of confusion.
VI. Geographic Descriptiveness
Section 2(e)(2) of the Trademark Act, 15 U.S.C. §1052(e)(2), prohibits registration
on the Principal Register of a mark that is primarily geographically descriptive of the
goods or services named in the application. To establish a prima facie case that the
BLACKLAND DISTILLERY mark is primarily geographically descriptive, Opposer
must prove that:
1. the primary significance of the mark is a generally known geographic
location;

2. purchasers would be likely to believe that the goods or services originate in
the geographic place identified in the mark; and

3. the source of the goods or services is the geographic region named in the
mark.

See In re Newbridge Cutlery Co., 776 F.3d 854, 113 USPQ2d 1445 (Fed. Cir. 2015); In
re Joint-Stock Co. “Baik”, 80 USPQ2d 1305 (TTAB 2006). See also In re Societe
Generales des Eaux Minerales de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450, 1452
(Fed. Cir. 1987) (“a prima facie case of unregistrability cannot be made out simply by
evidence showing that the mark sought to be registered is the name of a place
generally known to the public; it is also necessary to show that the public would make
a goods/place association, i.e., believe that the goods for which the mark is sought to
be registered originate in that place.”); In re Spirits of New Merced LLC, 85 USPQ2d
Opposition No. 91243647
- 31 -
1614, 1616 (TTAB 2007) (“Provided that these conditions are met and the goods from
the place named by in or in the mark, the mark is primarily geographically
descriptive.”).
A. Whether the primary significance of BLACKLAND MALT is a generally known
geographic location?

Turning to the question of whether BLACKLAND is the name of a place generally
known to the public, we look to the Vittel decision wherein our primary reviewing
Court, the Court of Appeals for the Federal Circuit, held that “it is necessary that the
purchasers perceive the mark as a place name and this is where the question of
obscurity or remoteness comes to the fore.” 3 USPQ2d at 1452. Based upon the record
in that case, the Federal Circuit found “Vittel” is the name of a small town in France,
and posed the question, “how many people in this country know that?” and ultimately
found the evidence “insufficient to show the likelihood of [the relevant consuming
public] thinking that Vittel refers to a place where the goods come from.” Id. In
Newbridge, the Federal Circuit stated
Regarding the first prong of the test, that the population of the location
is sizable and/or that members of the consuming public have ties to the
location (to use the example in Loew’s: that Durango, Mexico, would be
recognized by “the Mexican population of this country”) is evidence that
a location is generally known. See Loew’s, 769 F.2d [764] at 766, 768 [226
USPQ 865 (Fed. Cir. 1985)]. By contrast, that the geographic meaning
of a location is “minor, obscure [or] remote” indicates that the location is
not generally known. See Nantucket, 677 F.2d [95] at 99 [213 USPQ 889
(CCPA 1982)] (internal quotations omitted). Of course, there are many
probative factors to the question of whether a location is generally
known, and these are just a few examples.

113 USPQ2d at 1449.
Opposition No. 91243647
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A mark is not “primarily” geographic where the geographic meaning is minor,
obscure, remote, or unconnected with the goods. In re Wada, 194 F.3d 1297, 52
USPQ2d 1539, 1540 (Fed. Cir. 1999); In re Loew’s Theatres, Inc., 769 F.2d 764, 226
USPQ 865, 867 (Fed. Cir. 1985) (use of a geographic term in a fictitious, arbitrary or
fanciful manner, is not “primarily” as a geographic designation).
A geographic nickname (e.g., “Big Apple” or “Motown”), or an abbreviation or other
variant of the name of a geographic location, is treated the same as the actual name
of the geographic location, if it is likely to be perceived as such by the purchasing
public. See In re Spirits of New Merced, LLC, 85 USPQ2d 1614 (holding that
“Yosemite” – a well-recognized and frequently used shorthand reference to Yosemite
National Park and the Yosemite region in general – conveys a readily recognizable
geographic significance); In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998)
(CAROLINA APPAREL primarily geographically descriptive of retail clothing store
services, where the evidence showed that “Carolina” is used to indicate either the
state of North Carolina or the state of South Carolina). Cf. In re Trans Cont’l Records,
Inc., 62 USPQ2d 1541 (TTAB 2002) (O-TOWN found to be a “relatively obscure term”
that would not be perceived by a significant portion of the purchasing public as a
geographic reference to Orlando, Florida).
With regard to the significance of the term BLACKLAND[S], the parties have
stipulated as follows:45
The term “Blackland” in the BLACKLAND DISTILLERY mark was derived
from the Blackland Prairies Ecoregion of Texas.

45 15 TTABVUE 3-7.
Opposition No. 91243647
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The term “Blackland” in the BLACKLANDS MALT name was inspired by the
Blackland Prairies Ecoregion of Texas.

Many of Applicant’s customers have inquired about the meaning of the name
“Blackland.”

Many of Opposer’s customers have inquired about the meaning of the name
“Blacklands.”

Applicant is located in Tarrant County, Texas, portions of which are in the
Blackland Prairies Ecoregion of Texas.

Opposer is located near the Blackland Prairies Ecoregion of Texas.

Opposer is located in Williamson County, Texas, portions of which are in the
Blackland Prairies Ecoregion of Texas.

The boundaries of the Blackland Prairies Ecoregion of Texas are unclear.

In addition, the labels for certain of Applicant’s distilled spirits note that they are
“Handmade on the Blackland Prairie” and explain that “The Blackland Prairie runs
from the Red River to the North down to San Antonio in the South. Lightning fires
cleared the land for native tallgrass to thrive in the rich dark soil.”46
Upon review of the totality of the record, we find the evidence does not support
Opposer’s contention that the Blackland Prairie in Texas is generally known to the
relevant consuming public, namely, purchasers of distilled spirits. The parties
stipulate that the boundaries of the Blackland Prairie Ecoregion are unclear. The
labels on Applicant’s bottles, certainly not authoritative but to the extent accurate,
describe only a Northern geographical boundary and a municipal Southern boundary
therefor. There is little, if any, additional evidence in the record that establishes any

46 16 TTABVUE 59-63.
Opposition No. 91243647
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recognized boundaries for the Blackland Prairie. Opposer states in its reply brief that
“Applicant admits it operates in a county in the ecoregion and is, at a minimum, near
the ecoregion.”47 It thus is unclear from the parties’ stipulation to what extent
Applicant is located within the vaguely defined boundaries of the Blackland Prairie.
The parties further stipulate that many of their own customers, presumably
including local brewers, distillers and consumers living in or near the Blackland
Prairie, are not familiar with the significance of the term, calling into question
whether people living in the region may be viewed as having ties to the area. See
Newbridge, 113 USPQ2d at 1449. Furthermore, there is no evidence of the size of the
population of this area. Id.
The scant evidence in this case, along with the parties’ stipulations, do not
necessarily evidence that the Blackland Prairie is a geographic location known
generally to the relevant American purchasing public. As such, the term does not
convey a readily recognizable geographical significance to the average American
consumer, but rather simply denotes the name of an obscure or vaguely defined
geographic area. See, e.g., Newbridge, 113 USPQ2d at 1450; In re Bavaria St. Pauli
Brauerie Ag, 222 USPQ 926 (TTAB 1984); In re Brauerie: Aying Franz Inselkammer
KG, 217 USPQ 73 (TTAB 1983).
In sum, the record does not establish that the relevant American consumer is
generally aware of the Blackland Prairie Ecoregion in Texas, and, thus, we find that
the consumer, upon encountering the mark BLACKLAND DISTILLERY on distilled

47 35 TTABVUE 11.
Opposition No. 91243647
- 35 -
spirits, would not believe this term is a geographic reference to the origin thereof. The
first part of the test for primarily geographically descriptive marks is therefore not
met. Accordingly, we need not and do not separately consider whether a goods/place
association exists.
VII. Decision
The opposition to registration of the mark BLACKLAND DISTILLERY is
sustained on the ground of likelihood of confusion under Section 2(d), and registration
to Applicant is refused.
The opposition to registration of the mark BLACKLAND DISTILLERY is
dismissed on the ground that the mark is primarily geographically descriptive of the
goods under Trademark Act Section 2(e)(2).