Ernest Everett James

Trademark Trial and Appeal Board

Jul 30, 2019

87905550 (T.T.A.B. Jul. 30, 2019)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: July 30, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Ernest Everett James
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Serial No. 87905550
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Mark Borghese of Borghese Legal, Ltd.,
for Ernest Everett James.
Caroline L. Moran, Trademark Examining Attorney, Law Office 125,
Heather Biddulph, Managing Attorney.
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Before Rogers, Chief Administrative Trademark Judge; and
Lynch and Coggins, Administrative Trademark Judges.

Opinion by Coggins, Administrative Trademark Judge:
Ernest Everett James (“Applicant”) seeks registration on the Principal Register of
the mark LIQUOR SLINGER DISTILLING (in standard characters, with LIQUOR
and DISTILLING disclaimed) for “liquor,” in International Class 33.1
The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as applied

1 Application Serial No. 87905550 filed on May 3, 2018, under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide intention to use the
mark in commerce.
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to the goods identified in the application, so resembles the mark SLINGER for
“drinking glasses; shot glasses,” in International Class 21,2 on the Principal Register
as to be likely to cause confusion, to cause mistake, or to deceive. After the Trademark
Examining Attorney made the refusal final, Applicant appealed to this Board. We
affirm the refusal to register.
I. Evidentiary Issue
The Examining Attorney submitted for the first time with her brief a definition of
“shot glass” from OXFORD DICTIONARIES and a request that the Board take judicial
notice thereof.3 Applicant did not object to the request. See TRADEMARK MANUAL OF
EXAMINING PROCEDURE (TMEP) § 710.01(c) (Oct. 2018). While the better practice
would have been for the Examining Attorney to ensure that the relevant definition
was included in the record prior to appeal, it is well-established that the “Board may
take judicial notice of definitions from printed dictionaries that were not made of
record prior to appeal, and may do so either sua sponte or upon request of the . . .
examining attorney.” Id. See also In re Premiere Distillery LLC, 103 USPQ2d 1483,
1448 n.2 (TTAB 2012) (judicial notice taken of definition submitted with examining
attorney’s brief after appeal filed); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE (TBMP) § 1208.04 (June 2019). In view of this established practice we
grant the Examining Attorney’s request and will consider the definition of “shot
glass.”

2 Registration No. 5083798, issued November 15, 2016.
3 Brief, unnumbered p. 7, n.1 (6 TTABVUE 8).
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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 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.”).
A. Similarity of the Goods, Channels of Trade, and Classes of Customers

We start, as Applicant did in its brief, by considering the second and third du Pont
factors, the similarity of the goods, channels of trade, and classes of customers. We
must make our determinations under these factors based on the goods as they are
identified in the application and cited registration. See Stone Lion Capital Partners,
LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014);
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004
(Fed. Cir. 2002); In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed.
Cir. 1997); Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990).
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Applicant’s goods are “liquor,” and Registrant’s goods are “drinking glasses; shot
glasses.” There is an inherent, complementary relationship between the parties’
goods: liquor is served in and drunk from drinking glasses and shot glasses. Indeed,
a shot glass is defined as “[a] small glass used for serving liquor.”4 We find that the
goods are related on their face and would be used by the same consumer, one who
drinks or serves liquor.
The Examining Attorney argues that it is “common for a distillery selling liquor
to also sell drinkware and shot glasses under the same mark.” Brief, unnumbered p.
10 (6 TTABVUE 11). In support of her argument, she submitted web evidence of
distilleries that offer both liquor and drinking or shot glasses. These include, among
others, Woodford Reserve Distillery (liquor and julep cup), Watershed Distillery
(liquor and rocks glass), Crown Valley Distillery (liquor and shot glass), and Evan
Williams Distillery (liquor and shot glass).5 Applicant counters that the goods are
distinct and that the glassware in the Examining Attorney’s evidence “appear to be
promotional items.” Brief, p. 3 (4 TTABVUE 6). In addition to the obvious and
definitional relationship between liquor and shot glasses, the Internet evidence
supports a finding that the goods are related, and complementary, and that the
relevant consumers may expect to find both liquor and either drinking glasses or shot
glasses offered together from a single source.

4 OXFORD DICTIONARIES (en.oxforddictionaries.com/definition/us/shot_glass); exhibit to
Examining Attorney’s Brief, 6 TTABVUE 13.
5 August 27, 2018 Office Action at TSDR 7-20; November 14, 2018 Office Action at TSDR 6-
19. Citations to documents contained in the TSDR database are to the downloadable .pdf
versions of the documents.
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The Examining Attorney’s Internet evidence also shows that liquor and shot
glasses travel in some of the same channels of trade to some of the same classes of
consumers. Applicant argues that liquor is “tightly controlled by state regulators and
may only be purchased by consumers over the age of 21,” Brief, p. 3 (4 TTABVUE 6),
and the “channels of trade for liquor . . . are through a highly regulated three-tiered
system” while glassware is sold in “stores selling home goods.” Id., p. 4 (4 TTABVUE
7). We have considered Applicant’s evidence from the Park Street website of a brief
article on the alcoholic beverage industry and the “three-tier system.”6 However,
nothing in the article suggests that liquor and shot glasses could not have some
overlap in their trade channels or classes of consumers. Even assuming that liquor is
“tightly controlled,” there are no limitations in either the cited registration or the
application as to the channels of trade or classes of purchasers. Specifically, there is
no restriction in the cited registration limiting the channels of trade of drinking and
shot glasses to “stores selling home goods” or limiting the classes of purchasers to
people under 21 years of age or to those who do not drink or serve liquor. The
Examining Attorney’s Internet evidence demonstrates that liquor and drinking and
shot glasses are commonly sold by the same entity (e.g., distilleries) to some of the
same consumers, even if the environment might be, as Applicant argues, tightly
controlled. In view thereof, the second and third du Pont factors favor finding a
likelihood of confusion.

6 October 25, 2018 Response to Office Action at TSDR 7-9 (parkstreet.com).
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B. Similarity of the Marks
We next consider the first du Pont likelihood of confusion factor, which focuses on
“‘the similarity or dissimilarity of the marks in their entireties as to appearance,
sound, connotation and commercial impression.’” Palm Bay Imps. Inc. 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 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.” Coach Servs.,
Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir.
2012) (quotation omitted). Consumers may not necessarily encounter the marks in
close proximity and must rely upon their recollections thereof over time. In re Mucky
Duck Mustard Co., 6 USPQ2d 1467, 1468 (TTAB 1988). The focus is on the
recollection of the average purchaser, who normally retains a general rather than a
specific impression of trademarks. United Global Media Grp., Inc. v. Tseng, 112
USPQ2d 1039, 1049 (TTAB 2014); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009).
Here, the average purchaser of Applicant’s goods includes ordinary consumers who
drink or serve liquor.
Our analysis is not predicated on dissection of the involved marks. Stone Lion, 110
USPQ2d at 1161. Rather, we are obliged to consider the marks in their entireties. Id.;
see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234
(CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered
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piecemeal; rather, it must be considered as a whole in determining likelihood of
confusion.”). Nonetheless, 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 a consideration of the marks in their entireties. Stone
Lion, 110 USPQ2d at 1161. For instance, as the Federal Circuit 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 a
mark . . . .” In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Registrant’s mark is SLINGER. Applicant’s mark is LIQUOR SLINGER
DISTILLING. The marks share the identical term SLINGER, which comprises the
entirety of Registrant’s mark and the dominant portion of Applicant’s mark. To the
extent that both Applicant’s and Registrant’s marks contain the identical term
SLINGER, the marks are similar in sound and appearance. See In re Dixie Rests., 41
USPQ2d at 1533-34.
The term LIQUOR is the generic designation of Applicant’s goods, see Royal
Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1045 (Fed. Cir. 2018)
(“A generic term ‘is the common descriptive name of a class of goods or services.’”)
(quoting H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228
USPQ 528, 530 (Fed. Cir. 1986)), and the term DISTILLING is at least descriptive of
the goods. See In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2014 n.4 (TTAB 1988)
(“By its disclaimer . . . applicant has conceded that the term is merely descriptive as
used in connection with applicant’s goods.”). Applicant’s mark adds the generic or
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descriptive terms LIQUOR and DISTILLING to Registrant’s mark, and consumers
are less likely to focus on such terms to indicate source.
Applicant argues that the term SLINGER in Registrant’s mark “brings to mind
an ancient solider,” but that same term in its own mark has the “commercial
impression of a proprietor of liquor” when it is preceded by LIQUOR. Brief, pp. 5-6 (4
TTABVUE 8-9). Applicant submitted no evidence to suggest that LIQUOR SLINGER
is a recognized term or would otherwise be perceived by the relevant public as a term
with any particular meaning, or, more generally, that SLINGER as used in
Applicant’s mark would have a different connotation or commercial impression than
Registrant’s mark. We conclude that the term SLINGER is likely to have the same
connotation and commercial impression in each mark, particularly where that term
is used on complementary goods. The consuming public, which is prone to shortening
marks, could easily regard Registrant’s mark SLINGER as a shortened version of
Applicant’s mark LIQUOR SLINGER DISTILLING. See In re Mighty Leaf Tea, 601
F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (“ML is likely to be perceived as a
shortened version of ML MARK LEES when used on the same or closely related skin
care products.”).
We find the marks to be overall more similar than not. Because the terms
LIQUOR and DISTILLING are at least descriptive and have been appropriately
disclaimed by Applicant, they are less likely to make an impact in the minds of
consumers. See In re Dixie Rests., 41 USPQ2d at 1533-34 (disclaimed matter that is
descriptive of or generic for a party’s goods is typically less significant or less
Serial No. 87905550
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dominant when comparing marks); see also In re Nat’l Data Corp., 224 USPQ at 752.
The term SLINGER is common to each mark. As Applicant points out, there are
differences between the marks when viewed on a side-by-side basis, but as stated
supra, this is not the proper test. Coach Servs. v. Triumph Learning, 101 USPQ2d at
1721. We find that when considered in their entireties, and against the backdrop of
complementary goods, the cited mark SLINGER and Applicant’s mark LIQUOR
SLINGER DISTILLING are similar in appearance, sound, and connotation, and
convey a similar commercial impression, and those similarities outweigh the
differences identified by Applicant. Accordingly, the first du Pont factor also favors
finding a likelihood of confusion.
C. Summary
We have considered all of the arguments and evidence of record, and all relevant
du Pont factors. We have found that the marks at issue are similar; and that
Applicant’s and the Registrant’s goods have an inherent, complementary
relationship, move in overlapping trade channels, and are offered to the same class
of relevant purchasers. In view thereof, the relevant factors favor a finding of a
likelihood of confusion.
III. Decision
The refusal to register Applicant’s mark LIQUOR SLINGER DISTILLING is
affirmed.