Blue Collar Brewery, Inc.v.Blue Collar Brewery, LLC

Trademark Trial and Appeal Board

Dec 28, 2015

No. 91219820 (T.T.A.B. Dec. 28, 2015)

Mailed: December 28, 2015

Opposition No. 91219820
Blue Collar Brewery, Inc.
v.
Blue Collar Brewery, LLC.

Before Cataldo, Shaw and Kuczma,
Administrative Trademark Judges.

By Cataldo, Administrative Trademark Judge:

On April 1, 2014, Blue Collar Brewery, LLC (“Applicant”) filed Application Serial
No. 86238657, seeking registration on the Principal Register of the standard
character mark BLUE COLLAR BREWERY (“BREWERY” disclaimed) for
Beer; Beer, ale, lager, stout, porter, shandy; Brewed malt-based
alcoholic beverage in the nature of a beer; Flavored beers; Ginger beer;
Malt beer1

Beer making kit; Beer wort; Extracts of hops for making beer; Hop
extracts for manufacturing beer; Malt extracts for making beer;
Processed hops for use in making beer2

in International Class 32. During prosecution, Applicant amended its involved

1 Under Section 1(b) of the Trademark Act, based upon Applicant’s assertion of its bona fide
intent to use the mark in commerce.

2 Under Section 1(a) of the Trademark Act, based upon Applicant’s assertion of March 10,
2009 as a date of first use of the mark anywhere, and March 10, 2014 as a date of first use
of the mark in commerce.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
THIS OPINION IS NOT
A PRECEDENT OF THE TTAB
Opposition No. 91219820

2
application to delete from the identification of goods all of the goods based upon
Applicant’s asserted bona fide intent to use the mark in commerce and deleted
Section 1(b) as a filing basis.3 Consequently, the identification of goods currently
reads as follows:
Beer making kit; Beer wort; Extracts of hops for making beer; Hop
extracts for manufacturing beer; Malt extracts for making beer;
Processed hops for use in making beer.

On December 18, 2014, Blue Collar Brewery, Inc. (“Opposer”) filed a notice of
opposition alleging that it operates a brewery “using the name Blue Collar Brewery
upon the labels applied to the containers in which its alcoholic beverages are
offered.”4 As grounds for its opposition, Opposer makes the following allegations:5

3 Applicant’s October 21, 2014 response to the Examining Attorney’s first Office Action.

4 1 TTABVUE 3. Record citations are to TTABVUE, the Trademark Trial and Appeal
Board’s publically available docket history system. See Turdin v. Trilobite, Ltd., 109
USPQ2d 1473, 1476 n.6 (TTAB 2014).

5 1 TTABVUE 5.

Opposition No. 91219820

3

Applicant, in its answer, denied the salient allegations of the notice of opposition.6
Summary Judgment
Now before the Board is Applicant’s motion for summary judgment on both

6 2 TTABVUE 2-6. In addition, Applicant asserted as affirmative defenses that Opposer’s
claims are barred by the doctrines of unclean hands, laches and acquiescence.

Opposition No. 91219820

4
grounds pleaded in the notice of opposition. The motion is fully briefed. By its
motion, Applicant argues that Opposer’s sole allegation in support of its claim of
fraud is that Applicant filed the involved application alleging actual use on beer;
that Applicant never alleged that it was using the mark on beer, but rather alleged
its bona fide intent to use the mark thereon; and that, as a result, Opposer’s fraud
allegations must fail as a matter of law. Applicant further argues that multiple
registered marks incorporate the term “brewery” for goods and services other than
beer; that third parties use the term “brewery” to identify goods that do not
originate in breweries; that definitions for the term “brewery” include meanings
other than a commercial place for brewing beer; and that, in any event, if the term
“brewery” in Applicant’s mark is found to be deceptively misdescriptive, Applicant is
prepared to make a showing of acquired distinctiveness under Section 2(f) of the
Trademark Act or amend the application to seek registration on the Supplemental
Register.
In support of its arguments, Applicant introduced into the record the following:
A copy of its prior registration for the mark BCB BLUE COLLAR BREWERY
and design for “beer, beer wort, brewed malt-based alcoholic beverage in the nature
of a beer, malt beer, malt liquor;”7
A copy of the file history of its involved application;8

7 Reg. No. 4231808, 9 TTABVUE 51-53.

8 9 TTABVUE 65-128. These documents automatically form part of the record in this
proceeding and need not be introduced at summary judgment or trial. See Trademark Rule
2.122. See also TBMP § 704.03(a) and authorities cited therein.

Opposition No. 91219820

5
Printed copies downloaded from the Internet regarding Opposer’s entity
information from the New York State Department of State Division of Corporations
and pages from Opposer’s website;9
Printed copies of third-party registrations containing the term “brewery;”10
pages from third-party Internet websites showing use of the term “brewery” in
connection with various goods and services other than beer;11 and a dictionary
definition of “brewery;”12
With regard to its allegation of fraud, Opposer argues in response to Applicant’s
motion as follows:
While it is true that Applicant deleted its 1(b) designation for “beer” for
its [involved] BCB Mark, apparently Applicant only deleted said
designation in order to deceive the USPTO and the Examiner to
register its Mark.

Further, as Applicant indicated, Applicant owns U.S. Reg. No.
4,231,808 for BLUE COLLAR BREWERY & Design. Applicant filed a
Section 7 request to delete “beer; beer wort; brewed malt-based
alcoholic beverage in the nature of beer; malt beer; malt liquor” from
its goods and services … knowing that it is not a brewery, and knowing
that it does not have the proper and required licensing to operate a
brewery or produce beer for use in commerce.

Similarly, in the application being opposed, Applicant deleted its 1(b)
designation for “Beer; Beer, ale, lager, stout, porter, shandy; Brewed
malt-based alcoholic beverage in the nature of a beer; Flavored beers;
Ginger beer; Malt beer” for the same reason; that is, Applicant is not a

9 9 TTABVUE 129-136.

10 9 TTABVUE 137-145.

11 9 TTABVUE 146-152.

12 9 TTABVUE 153-155.

Opposition No. 91219820

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licensed brewery, does not and has never produced beer, and therefore
has never used its mark on beer in commerce. Applicant deleted its
designation only after the Examiner issued an Office Action on April
22, 2014 requiring Applicant to disclaim “BREWERY” from its mark.
The Examiner stated that “brewery” is defined as “a place where beer
is made commercially.” See Exhibit 2 of Applicant’s Motion, containing
the file wrapper to Applicant’s application and a USPTO Office Action
dated 4/22/2014.

Applicant, knowing that it does not and has never produced or made
beer – and cannot do so without the proper licenses – disclaimed
“BREWERY” and deleted its 1(b) designation for “Beer; Beer, ale,
lager, stout, porter, shandy; Brewed malt-based alcoholic beverage in
the nature of a beer; Flavored beers; Ginger beer; Malt beer” in an
attempt to deceive the USPTO and fraudulently obtain a registration
for a brewery without actual use on beer or any other alcoholic
beverage product, and therefore obtain a registration to which
Applicant is not entitled.13

With regard to its allegations of deceptive misdescriptiveness, Opposer argues as
follows:
Applicant is not a brewery. Applicant has never used its mark on beer
or any other alcoholic beverage product, and cannot obtain the
appropriate governmental approval for such use. See Opposer’s Notice
of Opposition, Para. 12.

The term “brewery” in Applicant’s BCB Mark is deceptively
misdescriptive. The term “brewery,” as the Examiner of Applicant’s
BCB Mark stated, is a “place where beer is made commercially.” See
Exhibit 2 to Applicant’s Motion, Office Action dated April 22, 2014 and
Opposer’s Notice of Opposition, Para. 9. Therefore, as Applicant is not
a brewery, nor have they ever claimed to be same, the term “brewery”
is inherently misdescriptive of the “character, function, composition . .
. [and] use” of Applicant’s goods and services. See TMEP 1203.02(b).

Using Applicant’s own dictionary definition (See Applicant’s Motion
Exhibit 6), a brewery is a “place where beer is made,” or is a “company
that makes beer.” Under the first inquiry of the test outlined in TMEP
1203.02(b), Applicant’s mark is comprised [ o f ] deceptive matter as
the character of its company is not a brewery; it is not licensed or

13 12 TTABVUE 7-8.
Opposition No. 91219820

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regulated to be a brewery, and as such the quality of the company
cannot be held to the same standards as licensed and legitimate
breweries; it does not function as a brewery. It is likely that a
purchaser would believe that the “brewery” portion of Applicant’s mark
would actually describe Applicant and its mark.

Applicant’s mark, BLUE COLLAR BREWERY, conveys the immediate
idea of a brewery and a place where beer is made. Applicant is not a
brewery, and as such the immediate idea conveyed is false. Given the
“brewery” term present in Applicant’s mark, as well as its goods and
services description of various ingredients that might appear in actual
breweries, is would be plausible to believe that Applicant’s mark
represents a brewery. It is not a brewery and so the mark must be
deceptively misdescriptive and thus unregistrable under §2(e)(1).

Further, in Exhibit 4 to Applicant's Motion, Applicant includes various
third-party registrations in an attempt to prove that its BCB Mark is
not deceptively misdescriptive. Applicant’s use of third-party
registrations deliberately mischaracterizes the goods and services of
those registrations. With the exception of two of the registrations,
every single registration cited is owned by a true and existing brewery,
i.e., “a place where beer is made; a company that makes beer.” See
Applicant’s Motion, Exh. 6.

Further, the two other registrations cited that are not breweries are
services directly involved with actual breweries. Applicant purposely
cherry picked these registrations for ones that represent the breweries’
products sold in support of the breweries, such as t-shirts and beer
steins or mugs in an attempt to show that registrations purportedly
exist that would support Applicant’s own application.

Additionally, Applicant reworded the registration goods and services
description to further its own agenda. Applicant, in its motion, states
that BREWERY SHERPA is for goods and services, “for, inter alia,
websites for location special events.” Applicant’s Motion, Para. 11.
However, a review of Applicant’s Motion, Exhibit 4 indicates that
Applicant provides a copy of a Registration for BREWERY SHERPA,
Reg. No. 4,588,605. The goods and services description for BREWERY
SHERPA is as follows: “Providing a website that features technology
enabling users to locate and travel to breweries while providing
information about participating locations including events, specials
and products.” See, Applicant’s Motion, Exhibit 4 (emphasis added). It
is clear that Applicant specifically and deliberately did not mention
Opposition No. 91219820

8
“breweries” and reconstructed and manipulated the goods and services
of BREWERY SHERPA in an attempt to support its frivolous motion.

Applicant next attempts to confuse the record by stating that there are
“dictionary definitions for BREWERY that do not mean a commercial
place for making beer.” Applicant’s Motion, Para. 14; Exhibit 6. But
Applicant’s evidence provides only the following definition: “a place
where beer is made; a company that makes beer.” That is hardly
multiple definitions, and it is clear that a brewery is a place that
makes beer, which Applicant’s business decidedly does not.14

Summary judgment is appropriate only where there are no genuine disputes of
material fact, thus allowing the case to be resolved as a matter of law. Fed. R. Civ.
P. 56(a). The party seeking summary judgment bears the initial burden of
demonstrating the absence of any genuine dispute of material fact. See Celotex
Corp. v. Catrett, 477 U.S. 317, 323 (1986); Sweats Fashions, Inc. v. Pannill Knitting
Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1796 (Fed. Cir. 1987). A factual dispute is
genuine if, on the evidence of record, a reasonable fact finder could resolve the
matter in favor of the non-moving party. See Opryland USA Inc. v. Great American
Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme
Foods, Inc. v. Roundy’s, Inc., 961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992).
The evidence on summary judgment must be viewed in a light most favorable to
the non-movant, and all justifiable inferences are to be drawn in the non-movant’s
favor. Lloyd’s Food Products, Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2029
(Fed. Cir. 1993); Opryland USA, 23 USPQ2d at 1472. The Board may not resolve
disputes of material fact; it may only ascertain whether disputes of material fact

14 12 TTABVUE 9-11.
Opposition No. 91219820

9
exist. See Lloyd’s Food Products, 987 F.2d at 766, 25 USPQ2d at 2029; Olde Tyme
Foods, 961 F.2d at 200, 22 USPQ2d at 1542.
Fraud
Fraud in obtaining a trademark registration occurs “when an applicant knowingly
makes false, material representations of fact in connection with his application.” In
re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938, 1939 (Fed. Cir. 2009), citing Torres
v. Cantine Torresella S.r.l., 808 F.2d 46, 1 USPQ2d 1483, 1484 (Fed. Cir. 1986);
Nationstar Mortg. LLC v. Ahmad, 112 USPQ2d 1361 (TTAB 2014). To constitute
fraud on the USPTO, the statement must be (1) false, (2) a material representation
and (3) made knowingly with intent to deceive the USPTO. Mister Leonard Inc. v.
Jaques Leonard Couture Inc. 23 USPQ2d 1064, 1065 (TTAB 1992).
In this case, Opposer claims that Applicant falsely stated in its application that it
was using the mark in connection with “beer” and that such statement was a
material misrepresentation made with intent to deceive the Office. With regard to
this claim, and as discussed above, we find no genuine dispute as to the following:
Applicant filed the involved application based, in part, on Section 1(b) of the
Trademark Act, asserting its bona fide intent to use the mark in commerce;
The goods identified in the involved application based upon Applicant’s
allegation of its bona fide intent to use the mark in commerce include “Beer; Beer,
ale, lager, stout, porter, shandy; Brewed malt-based alcoholic beverage in the
nature of a beer; Flavored beers; Ginger beer; Malt beer;”
The goods identified in the involved application based upon Applicant’s
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allegation of use in commerce under Section 1(a) of the Trademark Act do not
include “beer,” but rather are identified as “Beer making kit; Beer wort; Extracts of
hops for making beer; Hop extracts for manufacturing beer; Malt extracts for
making beer; Processed hops for use in making beer;”
At no time during prosecution of the involved application did Applicant claim
use of the involved mark on “beer;”
Applicant deleted “beer” as well as the remainder of the goods applied-for
under its alleged bona fide intent to use the mark in commerce during prosecution
of the involved application and deleted Section 1(b) of the Trademark Act as a filing
basis therefor.
We find as a matter of law that Applicant never claimed it was using the mark in
commerce in connection with “beer” or, for that matter, any of the goods applied-for
under Section 1(b) of the Trademark Act as of date on which the underlying
application was filed.15 Opposer thus cannot meet the first element of the ground of
fraud, namely, that Applicant made a false statement in connection with these
goods. Accordingly, with regard to Opposer’s claim of fraud, Applicant’s motion for
summary judgment is GRANTED, and judgment is entered in Applicant’s favor.

15 Had Applicant not deleted the goods applied-for under Section 1(b), it would have been
necessary before registration could be granted for Applicant to file a timely statement of
use, including, inter alia, a declaration that the mark is in use in commerce, a listing of the
goods on or in connection with which the mark used, and providing the date of first use and
use of the mark in commerce. Trademark Act § 1(d)(1); Trademark Rule 2.88(b).

Opposition No. 91219820

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Deceptive Misdescriptiveness
The test for deceptive misdescriptiveness under Section 2(e)(1) has two parts.
First, we must determine whether the matter sought to be registered misdescribes
the goods or services. In order for a term to misdescribe goods or services, “the term
must be merely descriptive, rather than suggestive, of a significant aspect of the
goods or services which the goods or services plausibly possess but in fact do not.” In
re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1051 (TTAB 2002); see also In re
Shniberg, 79 USPQ2d 1309, 1312 (TTAB 2006). Second, if the term misdescribes the
goods or services, we must determine whether consumers are likely to believe the
misrepresentation. In re White Jasmine LLC, 106 USPQ2d 1385, 1394 (TTAB 2013);
In re Phillips-Van Heusen Corp., 63 USPQ2d at 1048; In re Quady Winery Inc., 221
USPQ 1213, 1214 (TTAB 1984). The Board has applied the reasonably prudent
consumer test in assessing whether a mark determined to be misdescriptive also
would deceive consumers. See R. J. Reynolds Tobacco Co. v. Brown & Williamson
Tobacco Corp., 226 USPQ 169, 179 (TTAB 1985) (“On this evidence, we do not
believe reasonably prudent purchasers are apt to be deceived.”).
We have carefully considered all of the parties’ arguments and evidence in the
record with respect to this claim, even if not specifically discussed;16 and drawn all
justifiable inferences in favor of Opposer as the non-moving party on motion. Based
on the evidence presented, we find that Applicant has failed to establish that there

16 The evidence submitted in connection with a motion for summary judgment or
opposition thereto is of record only for consideration of that motion. Any such evidence to be
considered at final hearing must be properly introduced in evidence during the appropriate
trial period. See Levi Strauss & Co. v. R. Joseph Sportswear Inc., 28 USPQ2d 1464 (TTAB
1993).
Opposition No. 91219820

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are no genuine disputes of material fact, and that it is entitled to judgment as a
matter of law on Opposer’s claim that the term “brewery” in Applicant’s mark is
deceptively misdescriptive as applied to the identified goods.17
Therefore, Applicant’s motion for summary judgment is DENIED with respect to
Opposer’s claim under Trademark Act Section 2(e)(1).
Schedule
Proceedings are resumed upon the following schedule:

Deadline for Discovery Conference

CLOSED
Discovery Opens 1/2/2016
Initial Disclosures Due 2/1/2016
Expert Disclosures Due 5/31/2016
Discovery Closes 6/30/2016
Plaintiff's Pretrial Disclosures 8/14/2016
Plaintiff's 30-day Trial Period Ends 9/28/2016
Defendant's Pretrial Disclosures 10/13/2016
Defendant's 30-day Trial Period Ends 11/27/2016
Plaintiff's Rebuttal Disclosures 12/12/2016
Plaintiff's 15-day Rebuttal Period Ends 1/11/2017

In each instance, a copy of the transcript of any testimony, together with copies of
documentary exhibits, must be served on the adverse party within thirty days after
completion of the taking of that testimony. Trademark Rule 2.125.
Briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b). An oral
hearing will be set only upon request filed as provided by Trademark Rule 2.129.

17 The fact that we identify only certain material facts that are genuinely in dispute should
not be construed as a finding that these are necessarily the only issues that remain for
trial.