Dead Bird Brewing, LLC

Trademark Trial and Appeal Board

Jun 13, 2018

No. 87140389 (T.T.A.B. Jun. 13, 2018)

Oral Hearing: March 8, 2018 Mailed: June 13, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Dead Bird Brewing, LLC
_____

Serial No. 87140389
Serial No. 87140417
_____

Erik M. Pelton of Erik M. Pelton & Associates PLLC,
for Dead Bird Brewing, LLC.
Amy E. Thomas, Trademark Examining Attorney, Law Office 110,
Chris A. F. Pedersen, Managing Attorney.
_____

Before Taylor, Wellington and Wolfson, Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Dead Bird Brewing, LLC (Applicant) seeks registration on the Principal Register
of the marks DEAD BIRD BREWING COMPANY (in standard characters, “Brewing
Company” disclaimed) and both for “beer” in International Class 32.1

1 Applications Serial Nos. 87140389 for the bird design mark (Application ‘389) and 87140417
for the word mark (Application ‘417) were filed on August 16, 2016. Both applications were
filed under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), on the basis of Applicant’s
allegation of December 1, 2015 as a date of first use anywhere and in commerce.
This Opinion is not a
Precedent of the TTAB
Serial Nos. 87140389 and 87140417
- 2 -
The Trademark Examining Attorney has refused registration of both marks under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s
marks, as used in connection with beer, so resemble the registered standard character
mark, DEADBIRD, for “wine,” as to be likely to cause confusion.2
I. Procedural Background
The two applications for the marks were prosecuted separately and, with respect
to each application, Applicant concurrently filed an appeal and a request for
reconsideration after the Examining Attorney made the refusals final.3 The requests
for reconsideration were denied by the Examining Attorney.4
In addition, Applicant filed with the Board a request to consolidate the two appeal
proceedings and a request to remand one application for the purpose of introducing
additional evidence “to ensure that the evidentiary record in each application is the
same on appeal.”5 Both requests were granted by the Board; the proceedings have
been consolidated and Applicant’s additional evidence is of record.6 The record is the
same for each appeal.

2 Registration No. 5054429 issued on October 4, 2016.
3 Application ‘417: 1 TTABVUE (appeal) and 4 TTABVUE (Request for Reconsideration).
Application ‘389: 1 TTABVUE (appeal) and 5 TTABVUE (Request for Reconsideration).
4 Application ‘417: 7 TTABVUE (Request for Reconsideration Denied). Application ‘389: 7
TTABVUE (Request for Reconsideration Denied).
5 Application ‘417: 6 TTABVUE (Motion to Consolidate) and 5 TTABVUE (Motion for
Remand). Application ‘389: 4 TTABVUE (Motion to Consolidate). Unless otherwise specified,
all citations in the decision are to the TTABVUE docket in Application ‘389.
6 4 TTABVUE.
Serial Nos. 87140389 and 87140417
- 3 -
The consolidated appeals have been briefed. An oral hearing was held on March
8, 2018.
II. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the
cumulative effect of differences in the essential characteristics of the goods and
differences in the marks.”).
1. Similarity of the Marks
We first consider the similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression. See Palm Bay Imps.,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005). “The proper test is not a side-by-side comparison of the
marks, but instead whether the marks are sufficiently similar in terms of their
commercial impression such that persons who encounter the marks would be likely
to assume a connection between the parties.” In re i.am.symbolic, llc, 866 F.3d 1315,
123 USPQ2d 1744, 1748 (Fed. Cir. 2017) (quoting Coach Servs. Inc. v. Triumph
Serial Nos. 87140389 and 87140417
- 4 -
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)) (internal
quotation marks omitted). We address Applicant’s marks individually in making our
comparison with the cited, registered mark.
a. DEAD BIRD BREWING COMPANY versus DEADBIRD
With respect to Applicant’s mark DEAD BIRD BREWING COMPANY, we find
DEAD BIRD to be the dominant and source-identifying element. In the context of
beer, the disclaimed, generic wording BREWING COMPANY has little, if any, value
for purposes of distinguishing Applicant’s mark. See In re Chatam Int'l Inc., 380 F.3d
1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004) (“Because ALE has nominal commercial
significance, the Board properly accorded the term less weight in assessing the
similarity of the marks under DuPont. As a generic term, ALE simply delineates a
class of goods.”). In addition, the significance of the wording DEAD BIRD as the
dominant element of Applicant’s mark is further reinforced by its location as the first
part of the mark. See Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895,
1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be
impressed upon the mind of a purchaser and remembered”); see also Palm Bay Imps.,
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).
When comparing the source-identifying element of Applicant’s mark, DEAD
BIRD, with the cited mark DEADBIRD, we find them virtually identical; the space
(or lack thereof) between the easily recognized words “dead” and “bird” does not
Serial Nos. 87140389 and 87140417
- 5 -
distinguish them from each other. See In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499
(TTAB 2010) (difference between ACTIVECARE and ACTIVE CARE has no
trademark significance).
In terms of meaning, because consumers are likely to view and understand both
marks as the combination of the two words “dead bird,” the commercial impressions
created by the marks will be the same. There is no evidence that the term “dead bird”
has any significance in connection with beer or wine. Consumers will thus understand
the term as merely connoting just that, a dead bird, and being arbitrarily employed
in each mark in the context of the involved goods.
In sum, these marks, despite any differences between them, when viewed as a
whole are extremely similar. Indeed, for consumers already familiar with
Registrant’s mark in connection with wine, they may believe (incorrectly, of course)
that the added term BREWING COMPANY is simply being used in connection with
a variant mark to designate Registrant’s attempt at brewing beer, a concept that
would be plausible in the minds of the relevant consumers, as discussed infra.
b. versus DEADBIRD
As to Applicant’s design mark, we immediately find it to be the pictorial
equivalent to the wording “dead bird.” The doctrine of legal equivalents is based on a
recognition that a pictorial depiction and equivalent wording are likely to impress the
same mental image on purchasers. See TRADEMARK MANUAL OF EXAMINING
PROCEDURE (“TMEP”) Section 1207.01(c)(i) (Oct. 2017) and authorities cited
Serial Nos. 87140389 and 87140417
- 6 -
therein. Under this doctrine, a design mark has often been found to be confusingly
similar to a word mark consisting of the design’s literal equivalent. See, e.g., In re
Rolf Nilsson AB, 230 USPQ 141, 142-43 (TTAB 1986) (holding applicant’s lion’s head
design with a stylized letter “L” mark for shoes, and registrant’s word mark, LION,
for shoes, likely to cause confusion) (citing In re Serac, Inc. 218 USPQ 340, 341 (TTAB
1983) (“[I]t is well settled . . . that a picture and the word that describes that picture
are given the same significance in determining the question of likelihood of
confusion.”)).
Here, Applicant’s mark does not consist of a highly stylized or abstract pictorial
representation, but will readily evoke a “dead bird.” The Examining Attorney has
presented evidence showing that utilizing the image of a bird on its back, with crosses
for eyes and feet lifted stiffly up in the air is certainly not novel, and an internet
search engine retrieved several images similar to Applicant’s design in response to a
search for “dead bird drawing,” including:
and .7
Indeed, the mark is described in Application ‘389 as an “upside down dead bird.”8
Applicant also uses its design mark in conjunction with its word mark and evidently
intends to evoke the “dead bird” connotation:

7 7 TTABVUE 7, 10.
8 In its entirety, Application ‘389 describes the mark as: The mark consists of Upside down
dead bird with an "x" for an eye, two feet, a wing, and five lines making up the tail feathers.
Serial Nos. 87140389 and 87140417
- 7 -
.9
In sum, although Applicant’s mark, because it is a design or logo, cannot be said
to be similar to Registrant’s word mark in terms of sound or appearance, the overall
commercial impressions engendered by the respective marks, namely that of dead
birds, are the same. It is also important to bear in mind that consumers who are
familiar with or have been exposed to Applicant’s mark are very likely to use the
words “the dead bird design (or mark or logo)” when describing the mark to others,
and are very likely to use the words “dead bird beer” when requesting or ordering
Applicant’s beer. See In re Bay State Brewing Co., 117 USPQ2d 1958, 1961 (TTAB
2016) (“Beer is often ordered by name, in a bar or restaurant, or from a menu, where
only the name of the beer will be used …”).
Under the aforementioned circumstances, we find that the similarity between the
marks is very strong. The fact that Applicant’s mark is a design, without any literal

9 Specimen filed with application on August 16, 2016.
Serial Nos. 87140389 and 87140417
- 8 -
element, does not remove or negate this similarity with the registered mark,
DEADBIRD.
Accordingly, the du Pont factor involving the similarity or dissimilarity of the
marks weighs in favor of a finding of likelihood of confusion.
2. Similarity of the Goods, Their Trade Channels and Consumers
We now consider the du Pont factors addressing the similarity of the goods, the
channels of trade in which they may be encountered and the purchasers to whom they
are marketed. Here, the goods are Applicant’s beer and Registrant’s wine – as such,
the goods share the common characteristic of an everyday alcoholic beverage often
consumed with meals. That said, we have long held that “[t]here is no per se rule that
holds that all alcoholic beverages are related.” In re White Rock Distilleries Inc., 92
USPQ2d 1282, 1285 (TTAB 2009). Even though beer and wine have been found
related in other cases, we must decide the outcome of this proceeding based on its
own facts and evidence.
The Examining Attorney argues that, aside from both being alcoholic beverages,
beer and wine are “highly related” because they are the type of goods that may be
sold by the same entity under the same mark, are marketed in the same trade
channels, and are offered to the same classes of consumers.10 In support, the
Examining Attorney cites the previous Board decisions finding beer and wine to be
sufficiently related for purposes of finding a likelihood of confusion, but also relies on
the following types of evidence of record:

10 13 TTABVUE 4-9.
Serial Nos. 87140389 and 87140417
- 9 -
• Copies of 24 use-based registrations owned by third parties for a mark that
covers both beer and wine;11

• Printouts from websites showing beer and wine featured in festivals, e.g.,
“Portland Spring Beer and Wine Fest”12 and Lighthouse Beer Wine website
printout advertising a “beer & wine” festival;13

• Printouts from various websites showing beer and wine made (and offered) by
a single entity under the same mark -- Schram Vineyards (a winery and
brewery), Wagner Valley Brewing Co. and Wagner Vineyards, Arcadian Moon
Winery and Brewery, and Von Jakob Winery and Brewery;14 and

• Printouts from websites advertising retail establishments, such as restaurants
and stores, that specifically feature beer and wine.15

Applicant “readily acknowledges that the Board has frequently in the past found
beer and wine to be related goods for purposes of [a likelihood of confusion decision],”
but counters that it has created a record in this appeal that “demonstrates that beer
and wine are not treated as related goods by the USPTO, by Applicants, or by
business operators in the field.”16 Applicant primarily relies on evidence it submitted
to show that the same, or very similar, mark is used or registered by one entity for

11 Attached to Office Action issued on November 30, 2016, TSDR pp. 4-67. The Examining
Attorney asserts that the 24 registrations are “representative … of over 70 registered marks
found from the [Office trademark search database].” 13 TTABVUE 8. We cannot consider the
asserted additional registrations or acknowledge their existence, let alone that they
represent what the Examining Attorney states they do, without copies thereof submitted
properly into the record. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE (“TBMP”) Section 1208.02 (June 2017) (treatment of evidence and third-party
registrations).
12 Attached to Office Action issued on November 30, 2016, TSDR p. 104.
13 Attached to Office Action issued on April 26, 2017, TSDR p. 12.
14 Attached to Office Action issued on November 30, 2016, TSDR pp. 69-112; additional
examples attached to Office Action issued on April 26, 2017 at TSDR pp. 12-59.
15 Attached to Office Action issued on November 30, 2016, TSDR pp. 69-112; and attached to
Office Action issued on April 26, 2017 at TSDR pp. 12-59.
16 9 TTABVUE 13 and 25, respectively.
Serial Nos. 87140389 and 87140417
- 10 -
beer and is also used or registered by a different entity for wine. Specifically,
Applicant submitted:
• Copies of use-based, third-party registrations showing one mark registered for
beer and the same, or similar, mark registered for wine by a different entity.17
Of these, Applicant asserts that more than “60 pairs show marks that are
identical, or that have only minor differentiations (such as disclaimed or
descriptive wording, differences in language, tense, singular/plural status, or
punctuation);”18

• Printouts from various websites showing approximately 30 examples of the
advertisement of a mark for beer by one entity and another advertisement for
wine under the same, or similar, mark being offered by a different entity.19

• Printouts from the website www.brewersassociation.org indicating that there
are approximately 5,301 total U.S. breweries in 2016;20 and

• Printout of an article from February 2016 from the “Wine Business Monthly”
website www.winebusiness.com indicating that the “number of United States
wineries” reached 8,702.21

Applicant asserts that the record it has created demonstrates the following:22
(A) a history of inconsistent treatment of such marks for beer versus wine
marks by the USPTO over many years;

(B) a pattern of permitting registration of dozens of marks for beer or wine
when nearly identical marks are already registered for the other good;

17 Attached to Applicant’s response filed March 21, 2107, TSDR pp. 27-194.
18 9 TTABVUE 13. We also note Applicant’s argument that the “pairs” of registrations for
wine and beer represent “only a small sample of marks that coexist for beer and wine” due to
the difficulty in searching the Office’s TESS database for such evidence. Id. at 14. However,
while we appreciate that such evidence may be difficult to ascertain, we cannot extrapolate
from what has been submitted that there is a significant number of additional such pairs of
registrations in existence.
19 Attached to Request for Reconsideration filed on July 12, 2017, TSDR pp. 32-303.
20 Id. at pp. 304-307.
21 Id. at pp. 308-312.
22 9 TTABVUE 14-15.
Serial Nos. 87140389 and 87140417
- 11 -
(C) the marketplace realities that consumers are used to seeing such marks
used to indicated [sic] different sources for beer and for wine; and

(D) the business realities that beer and wine makers repeatedly have
applied for very similar marks and thus clearly do not view their
products as presenting potential trademark conflicts.

Applicant’s third-party use evidence is probative and demonstrates that different
entities use the same or similar marks, with one using the mark on beer and the other
on wine. Third-party registrations, by themselves, are not evidence that the
underlying marks are in use or that consumers have been exposed to them;
nevertheless, we find the “pairs of existing registrations” evidence also has some
probative value in that it may reflect the views of coexisting registration owners.
While acknowledging that the Office should strive for consistency, prior decisions and
actions of other trademark examining attorneys in registering other marks or
approving marks for registration have little evidentiary value and are not binding
upon the Board. See In re Cordua Rests. Inc., 823 F.3d 594, 118 USPQ2d 1632, 1635
(Fed. Cir. 2016) (citing In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001)). In this respect, and as Applicant and the Examining Attorney have
both noted, the Board’s case law in this area suggests that refusals, oppositions and
cancellations premised on the relatedness of beer and wine typically have resulted in
a finding of a likelihood of confusion. See, e.g., In re Kysela Pere et Fils, Ltd., 98
USPQ2d 1261, 1265 (TTAB 2011); In re Sailerbrau Franz Sailer, 23 USPQ2d 1719
(TTAB 1992); Krantz Brewing Corp. v. Henry Kelly Importing & Distrib. Co. Inc., 96
USPQ 219 (Exm’r in Chief 1953).
Serial Nos. 87140389 and 87140417
- 12 -
We also acknowledge the probative value and importance of the Examining
Attorney’s evidence, particularly that there are a significant number of examples of
third-party use of a single mark by the same entity in connection with beer and wine,
including several businesses that hold themselves out as a “winery and brewery,” e.g.,
.23
Likewise, the third-party registration evidence is relevant and helps corroborate
that beer and wine are the type of goods which may emanate from a common source
under the same mark. See Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107
USPQ2d 1424, 1432 (TTAB 2013); In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785-86 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6
(TTAB 1988).
The record further demonstrates that beer and wine can be sold and advertised
together, as the primary or only featured goods, through the same trade channels and
will target the same consumers. This includes the following festival:

23 Attached to Office Action issued Action issued on November 30, 2016, TSDR p. 109.
Serial Nos. 87140389 and 87140417
- 13 -
.24
Stores and restaurants specifically may feature beer and wine as their main
offerings, for example:
25
and

24 Id., TSDR p. 104.
25 Attached to Office Action issued on April 26, 2017, TSDR p. 13.
Serial Nos. 87140389 and 87140417
- 14 -
.26
We have considered the entire record and, to be clear, our determination regarding
the relatedness of the involved goods is not based upon who has submitted the most
third-party registrations or examples of use to support their arguments. Rather, our
determination is based on finding that the respective goods are “related in some
manner and/or the circumstances surrounding their marketing [be] such that they
could give rise to the mistaken belief that [the respective goods] emanate from the
same source.” Coach Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler,
83 USPQ2d 1715, 1724 (TTAB 2007)).
Here, we find the goods are sufficiently related such that, given the surrounding
circumstances, confusion as to the source of the goods would be likely. In making this
determination, we rely on the evidence that there are people offering beer and wine
under a single mark and these goods are marketed together in distinct channels of

26 Attached to Office Action issued Action issued on November 30, 2016, TSDR p. 91.
Serial Nos. 87140389 and 87140417
- 15 -
trade to the same consumers. Applicant’s evidence of coexisting marks for beer and
wine does not convince us otherwise; that is, while consumers may be aware of
coexisting marks, this does not negate that they may also be aware of the same mark
being used in connection with beer and wine by the same entity. As the evidence
demonstrates, wine and beer are types of alcoholic beverages featured in some of the
same venues and directed to the general adult drinking population.
Accordingly, we find that the du Pont factors relating to the similarity of the goods,
the trade channels through which they travel, and the customers to whom they are
offered, all favor a finding of likelihood of confusion.
Summary
Considering all the evidence of record, we find that there is a likelihood of
confusion. Again, Applicant’s word mark, DEAD BIRD BREWING COMPANY is
extremely similar in appearance, sound, connotation and commercial impression to
the registered mark, DEADBIRD. Applicant’s mark clearly evokes a dead
bird and thus creates the same commercial impression as the registered mark. The
evidence further shows that beer and wine will be encountered by the same
consumers in common channels of trade.
Decision: The refusals to register Applicant’s marks on the ground of likelihood
of confusion are affirmed.