Capital Brewery Company, Inc.

Trademark Trial and Appeal Board

Dec 12, 2007

No. 78655889 (T.T.A.B. Dec. 12, 2007)

Mailed: December 12, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Capital Brewery Company, Inc.
________

Serial No. 78655889
_______

Sverre David Roang and Norman D. Farnam of Stroud, Willink
& Howard, LLC for Capital Brewery Company, Inc.

Kristina Kloiber, Trademark Examining Attorney, Law Office
116 (Michael W. Baird, Managing Attorney).
_______

Before Hairston, Taylor and Mermelstein,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Capital Brewery Company, Inc. has filed an application
to register the mark ISLAND WHEAT (in standard character
form) for “beer” in International Class 32.1 The term
“WHEAT” has been disclaimed.
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the

1 Application Serial No. 78655889, filed June 22, 2005. On
August 25, 2005, applicant filed an amendment to allege use,
alleging August 18, 2005 as the date of first use of the mark
anywhere and in commerce.
THIS OPINION IS NOT A
PRECEDENT OF
THE TTAB
Ser No. 78655889
2
ground that applicant’s mark, when used on the identified
goods, so resembles the registered mark, shown below,

for “beer” in International Class 32.2 The words “BREWING
COMPANY” have been disclaimed.
After the refusal was made final, applicant appealed
and requested reconsideration of the final refusal. On
December 13, 2006, the examining attorney denied the
request for reconsideration and the appeal was resumed.
Applicant and the examining attorney filed briefs. We
affirm the refusal to register.
Preliminary Matters
Before addressing the merits of the appeal, we must
address two preliminary matters. We note that applicant is
maintaining that the examining attorney is making certain
arguments for the first time in her appeal brief and
applicant requests that we therefore disregard such
arguments. While an examining attorney may not advance a

2 Registration No. 2805704, issued January 13, 2004.
Ser No. 78655889
3
new ground for refusing registration in the appeal brief,
an examining attorney is not prohibited from offering
additional arguments or case law in support of a previously
raised ground for refusal. We consider the examining
attorney’s additional arguments and supporting authority as
a continuation of her arguments relative to the likelihood
of confusion ground and not a new ground for refusal.
Accordingly, in determining the merits of the case, we
have considered all of the examining attorney’s arguments
and case law in support thereof.
We also note that applicant has cited a number of
cases in support of its position that the refusal should be
reversed. Further, applicant complains that the examining
attorney has failed to distinguish such cases. Contrary to
applicant’s contention, the examining attorney is not
required to distinguish each and every case with
particularity. Moreover, it is well settled that each case
must be decided on its own merits, on the basis of the
record therein. See In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564 (Fed. Cir. 2001.)
Refusal Based on Likelihood of Confusion
Turning now to the merits of this appeal, our
determination of the issue of likelihood of confusion is
based on an analysis of all the probative facts in evidence
Ser No. 78655889
4
that are relevant to the factors set forth in In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also, In re Majestic Distilling Company, Inc.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any
likelihood of confusion analysis, two key considerations
are the similarities between the marks and the similarities
between the goods and/or services. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976). See also, In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Similarity of the Goods/Trade Channels/Class of Purchasers
Turning first to a consideration of the respective
goods, applicant’s goods and registrant’s goods are
identical (i.e., beer). Since neither the application nor
the cited registration contains any limitations, we must
consider both to encompass identical goods, sold in the
usual trade channels for such goods and to the same class
of purchasers. It is apparent that both applicant and
registrant would sell their beer to ordinary consumers,
through the same channels of trade (e.g., grocery stores,
convenience stores and liquor stores).
Accordingly, the du Pont factors of similarity of
goods, channels of trade and class of purchasers strongly
favor a finding of likelihood of confusion.
Ser No. 78655889
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Similarity of the Marks
We next consider the similarity of the marks, keeping
in mind that when marks would appear on identical goods, as
they do here, the degree of similarity necessary to support
a conclusion of likely confusion declines. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992). In determining the
similarity or dissimilarity of the marks, we must consider
the marks in their entireties in terms of sound,
appearance, meaning and commercial impression. See du
Pont, supra. See also Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005). The test 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
their entireties that confusion as to the source of the
goods offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general, rather than a
specific impression of trademarks. Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975).
The examining attorney argues that when the marks are
compared in their entireties, applicant’s mark is
confusingly similar to the registered mark in appearance
Ser No. 78655889
6
and overall commercial impression because the dominant
element of each mark, i.e., the term “ISLAND,” is
identical.
Applicant, on the other hand, contends that:
[T]he Trademark Examining Attorney improperly
failed to give appropriate weight to the
entirety of the marks and designs in relation to
the goods at issue and has, instead, improperly
focused on a single common element in each mark
and design, the word “island.” This focus on
the single common element in each mark and
design has caused the Trademark Examining
Attorney to erroneously conclude that there is a
substantial likelihood of confusion between the
proposed mark ISLAND WHEAT and the registered
word and design mark for ISLAND BREWING COMPANY.

(Applicant’s brief at p. 8).
It is a well-established principle, however, that in
articulating reasons for reaching a conclusion on the issue
of likelihood 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., 753 F.2d
1056, 224 USPQ 749 (Fed. Cir. 1985). For instance, as our
principal reviewing court has observed, “[t]hat a
particular feature is descriptive or generic with respect
to the involved goods or services is one commonly accepted
rationale for giving less weight to a portion of the mark.”
Ser No. 78655889
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Moreover, with a composite mark comprising a design
and words, the word portion of the mark is usually the one
most likely to indicate the origin of the goods to which it
is affixed. CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ
198, 200 (Fed. Cir. 1983); In re Dakin’s Miniatures, Inc.,
59 USPQ2d 1593 (TTAB 2001) [“words are normally accorded
greater weight because they would be used by purchasers to
request the goods”]; In re Nat’l Data Corp., 753 F.2d at
1056.
Finally, the issue of likelihood of confusion must be
decided based upon a comparison of applicant’s mark ISLAND
WHEAT and the registered mark ISLAND BREWING COMPANY (and
design), and not upon a comparison of applicant’s mark as
it appears on its label and the registered mark as it
appears on its label. In our likelihood of confusion
analysis, the Board is not permitted to consider the trade
dress of the products or any additional wording that may
appear on the products, other than to the extent that these
elements may show possible bad faith adoption on the part
of the applicant. Ultracahsmere v. Spring Mills, 828 F.2d
1580, 4 USPQ2d 1252, 1254 (Fed. Cir. 1987). This is so
Ser No. 78655889
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because the issue before the Board in this proceeding is
registrability and not use.3
Applicant’s mark is ISLAND WHEAT. The term WHEAT, as
evidenced by the disclaimer thereof, merely describes a
style of beer. Indeed, applicant admits that its mark
ISLAND WHEAT refers to a variety of beer. (Applicant’s
Response, filed March 13, 2006, at p. 9). Further, the
examining attorney made of record, by exhibits to her
Office action issued April 13, 2006, excerpts from websites
showing that it is common practice in the beer industry for
a brewery to market a number of different styles of beers,
e.g., pale ale, stout, and wheat, under the same house mark
and that customers are used to this practice. As such and
contrary to applicant’s contention, the term WHEAT would
not be looked to by consumers as a strongly source-
identifying element of the mark. Accordingly, the dominant
portion of applicant’s applied-for mark is the term ISLAND.
The cited registration consists of the term ISLAND
BREWING COMPANY in a stylized font superimposed on a design
element featuring an island scene. The words BREWING
COMPANY in registrant’s mark also have been disclaimed, as

3 For this reason, the infringement cases cited by registrant
in support of its position that the Board should consider the
respective product labels as actually used are readily
distinguishable.

Ser No. 78655889
9
they merely describe the type of entity from which
registrant’s goods emanate, and likewise would not be
looked upon as a source-identifying element.
Applicant argues that the distinction between its mark
ISLAND WHEAT and the registered mark ISLAND BREWING COMPANY
and design “becomes more evident” when comparing the
appearance of each mark as it actually appears on the
labels, (i.e., the tan label featuring the words ISLAND
WHEAT with a prominent design of a “Capitol Dome flanked by
wheat grain” on applicant’s beer vis-à-vis the bright blue
and orange ISLAND BREWING CO. label with the design of an
island scene on registrant’s beer), and that the examining
attorney discounted the significance of the design portion
of the registered mark. We find these arguments
unavailing. As previously indicated, we must compare the
marks as they appear in applicant’s application and the
cited registration. In so doing, although applicant’s mark
contains no design element, we find that the design in the
registered mark, consisting of an island scene featuring
palm trees, a beach and the ocean, while clearly
noticeable, does not detract from the significance of the
term “island.” The design simply reinforces the meaning of
the wording “ISLAND BREWING COMPANY” in registrant’s mark.
Ser No. 78655889
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We thus find that the term ISLAND is the dominant portion
of the registered mark.
In sum, even though applicant’s and registrant’s marks
contain some different wording, because of the descriptive
nature of the term WHEAT in applicant’s mark and the words
BREWING COMPANY in registrant’s mark, and the lesser weight
to which these terms are entitled as we compare the marks
in their entireties, applicant’s mark and the registered
mark are similar in sound, appearance, connotation and
commercial impression.
Thus, the factor of the similarity of the marks favors
a finding of likelihood of confusion.
Applicant argues that because of the presence of the
term WHEAT in its mark and the term BREWING COMPANY in the
registered mark, its mark can be readily distinguished from
the registered mark and that the examining attorney
committed an “analytical error” by disregarding the
significance of the terms “wheat” and “brewing company.”
Applicant principally relies on Application of Blanchard
Importing and Distributing Company, 360 F.2d 254, 149 USPQ
699 (CCPA 1966) and In re Hearst Corp., 982 F.2d 493, 25
USPQ2d 1238 (Fed. Cir. 1992) in support of its position.
These cases, however, are distinguishable from the facts of
this case and do not control our determination. In
Ser No. 78655889
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Blanchard Importing, the mark CANADIAN CHAMP for whiskey
was held not to be confusingly similar to CHAMPION for
whiskey. The Court found that the “[B]oard erred in
placing too much emphasis on ‘CHAMP’ and too little
emphasis on the composite mark as a whole.” 149 USPQ at
700. In Blanchard Importing, the dominant portion of the
applicant’s composite mark, CHAMP, slang for the registered
mark, and the registered mark, CHAMPION, were self-
laudatory terms. In this case, the dominant portion of
both applicant’s mark and the registered mark is the
arbitrary term, ISLAND. In Hearst, the mark VARGA GIRL for
calendars was held not to be confusingly similar to VARGAS
for, among other things, calendars. The Court found that
“the Board erred in its diminution of the contribution of
the word ‘girl’” and that “[w]hen GIRL is given fair
weight, along with VARGA, confusion with VARGAS becomes
less likely.” 25 USPQ2d at 1239. In Hearst the applicant
did not add a descriptive and disclaimed term to the
registered mark as applicant has done to the dominant
portion of the registered mark here. Rather, the
registered mark was VARGAS (emphasis added), while the
applicant’s mark was VARGA GIRL (without an “S”), and the
word GIRL was not disclaimed. Moreover, the Court in
Ser No. 78655889
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Hearst explicitly recognized that the weight to be given
terms in a mark is “not entirely free of subjectivity.”
Accordingly, in considering the marks in their
entireties, it is entirely proper that we give more weight
to the term ISLAND in the respective marks, and less weight
to the descriptive terms WHEAT and BREWING COMPANY.
Third-Party Use
Applicant asserts that marks containing the term
ISLAND are weak marks which are therefore entitled to only
a narrow scope of protection. In particular, applicant
maintains that the term ISLAND is so frequently used in
trademarks for liquor and beer, that its use in both the
ISLAND WHEAT and ISLAND BREWING COMPANY (and design) marks
is not likely to lead to consumer confusion. We are not
persuaded by this argument. In support of its position,
applicant submitted: (i) excerpts of search results from
searches of the TESS database of the U.S. Patent and
Trademark Office for marks including the words ISLAND or
ISLANDS; (ii) copies from the TESS database records of
eight applications and eighteen registrations for marks
consisting of the term ISLAND in combination with other
matter; and (iii) excerpts from websites purportedly
showing that there are numerous brewing companies using the
word ISLAND in their names. As regards the TESS search
Ser No. 78655889
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reports, they consist simply of lists of marks with
registration numbers and serial numbers and fail to
indicate the particular goods and services in connection
with which the marks are registered or sought to be
registered. A mere listing of registration/application
numbers and marks is insufficient to make the registrations
and applications properly of record. See In re Duofold
Inc., 184 USPQ 638 (TTAB 1974). As regards the copies of
third-party applications, they show only that the
applications have been filed. See Interpayment Services
Ltd. v. Docters & Thiede, 66 USPQ2d 1463 (TTAB 2003). As
regards the copies of third-party registrations, while they
may be used to demonstrate that a portion of a mark is
suggestive or descriptive, they are not evidence that the
marks shown therein are in use or that the public is aware
of them. See AMF Incorporated v. American Leisure
Products, Inc., 177 USPQ 268, 269 (CCPA 1973)[“little
weight is to be given such registrations in evaluating
whether there is likelihood of confusion.”]. Moreover, our
review of such registrations reveals that six are for goods
or services unrelated to the goods involved herein. In
addition, none of the marks in the third-party
registrations is as similar to registrant’s mark as is
applicant’s mark. As our principal reviewing court noted
Ser No. 78655889
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in Nett Designs, supra at 1447, “[e]ven if some prior
registrations had some characteristics similar to
[applicant’s] application, the PTO’s allowance of such
prior registrations does not bind this Board or this
court.”4
Further, the website excerpts are of limited probative
value because there is no information as to the extent of
exposure of the websites to the public or the public’s
familiarity with them. See Sports Authority Michigan Inc.
v. PC Authority Inc., 63 USPQ2d 1782 (TTAB 2001).
Nonetheless, we note that even if marks which contain
the word ISLAND are considered to be weak, due to an
asserted degree of suggestiveness conveyed by such term,
even weak marks are entitled to protection where confusion
is likely. See Matsushita Electric Company v. National
Steel Co., 442 F.2d 1383, 170 USPQ 98, 99 (CCPA 1971)
[“Even though a mark may be ‘weak’ in the sense of being a
common word in common use as a trademark, it is entitled to
be protected sufficiently to prevent confusion from source
arising”]. Here, notwithstanding any alleged weakness in

4 In this regard, we note that most of the marks in the third-
party registrations have a specific geographic connotation (e.g.
GOOSE ISLAND (Registration No. 1957898); VIRGIN ISLANDS BREWING
COMPANY (Registration No. 2360946); and RABBIT ISLAND
(Registration No. 2358637), and therefore differ from the
registered mark ISLAND BREWING COMPANY and design.

Ser No. 78655889
15
the term “ISLAND,” the registered mark is still similar in
sound, appearance, connotation and commercial impression to
applicant’s mark. We accordingly find this du Pont factor
is neutral.
Conclusion
We conclude that purchasers familiar with registrant’s
beer, sold under the mark ISLAND BREWING COMPANY (and
design) would be likely to believe, upon encountering
applicant’s mark ISLAND WHEAT for beer, that the goods
originate from or are associated with or sponsored by the
same source.

Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.