Genghis Grill Franchise Concepts, LP

Trademark Trial and Appeal Board

Jul 2, 2013

No. 85372951 (T.T.A.B. Jul. 2, 2013)

Mailed:
July 2, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re Genghis Grill Franchise Concepts, LP
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Serial No. 85372951
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Dyan M. House of Carter Stafford Arnett Hamada & Mockler,
PLLC for Genghis Grill Franchise Concepts, LP.

Linda E. Blohm, Trademark Examining Attorney, Law Office
110 (Chris A. F. Pedersen, Managing Attorney).
_______

Before Zervas, Wellington, and Adlin,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Genghis Grill Franchise Concepts, LP, applicant, filed
an application to register the mark BATTLEFIELD BLUE ‘RITA
(in standard character form) on the Principal Register for
“prepared alcoholic cocktail[s]” in International Class 33.1
The examining attorney has refused registration of
applicant's mark pursuant to Section 2(d) of the Trademark
Act, 15 U.S.C. 1052(d), on the ground that applicant’s mark

1 Application Serial No. 85372951 is an intent-to-use application
filed under Section 1(b) of the Trademark Act.
THIS OPINION
IS NOT A PRECEDENT
OF THE TTAB
Serial No. 85372951
2
is likely to be confused with the previously registered
mark BATTLEFIELD (in typed characters) for “beer” in
International Class 32.2
Applicant has appealed the refusal and briefs have
been filed.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence 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 Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, two key, although not exclusive, 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).
We turn first to the marks and, in doing so, examine
the similarities and dissimilarities in their appearance,
sound, meaning, and commercial impression. Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).

2 Registration No. 1870762 issued December 27, 1994, renewed.
Serial No. 85372951
3
Here, applicant seeks to register a mark that
incorporates the entirety of the registered mark,
BATTLEFIELD, with the additional wording BLUE ‘RITA. We
are able to find that BATTLEFIELD, i.e., the registered
mark, is the dominant element of applicant’s proposed mark.
It appears first and it has not been argued, let alone
shown, to have any significance in connection with prepared
cocktails or beer. It is thus “most likely to be impressed
upon the mind of a purchaser and remembered.” Presto
Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895,
1897 (TTAB 1988). See also, Palm Bay 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); Wet Seal Inc. v. FD
Mgmt. Inc., 82 USPQ2d 1629, 1639 (TTAB 2007). The addition
of the wording BLUE ‘RITA in applicant's mark is a
combination of descriptive and suggestive terms. Applicant
has disclaimed the term BLUE and has acknowledged that its
goods will be blue in color.3 As the examining attorney
explained in the Office actions and reiterated in her
brief, it is well-settled that disclaimed, descriptive
matter may have less significance in likelihood of

3 Admission made in applicant’s March 22, 2012 response to Office
action.
Serial No. 85372951
4
confusion determinations. See In re Dixie Restaurants Inc.
105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)
(disclaimed term “cafe” in mark THE DELTA CAFE accorded
less weight than dominant portion, “delta”); In re Wm. B.
Coleman Co., Inc, 93 USPQ2d 2019, 2026 (TTAB 2010)
(“Tacking a company organizational designation such as
‘Company,’ or ‘Inc.’ or ‘Partners' cannot transform a
generic name into a protectable trademark.”). While the
term ‘RITA has not been disclaimed, we agree with the
examining attorney that it is certainly suggestive of a
type of cocktail to the extent that it will be understood
by consumers as an abbreviated form of “margarita.”4 Thus,
it too is accorded less significance for purposes of
distinguishing applicant’s mark from the cited mark.
Consumers viewing applicant’s mark as a whole will
understand BATTLEFIELD as being the major source-
identifying element of the mark and are likely to perceive
the wording BLUE ‘RITA as merely indicating the color of
applicant’s prepared cocktails and suggestive of one type
of prepared cocktail.

4 Although the examining attorney does not contend that ‘RITA is
descriptive, the record includes several printouts from different
third party websites showing use of the term “rita” (by itself or
in conjunction with other wording) as an abbreviated reference to
a “margarita.” See Office action dated May 7, 2012.
Serial No. 85372951
5
In sum, when we consider the marks in their entireties
in terms of appearance, sound, connotation and overall
commercial impression, we find them to be highly similar.
Applicant essentially has appropriated the registrant's
entire arbitrary mark BATTLEFIELD and has merely added to
it the descriptive or suggestive wording BLUE ‘RITA. The
additional wording does not suffice to distinguish the two
marks. This du Pont factor weighs in favor of finding a
likelihood of confusion.
We turn now to the relatedness and nature of the
goods, as well as their trade channels and classes of
purchasers. In comparing the relatedness of the goods, it
is not necessary that the respective goods be identical or
even competitive in order to find that they are related for
purposes of our likelihood of confusion analysis. That is,
the issue is not whether consumers would confuse the beer
with prepared alcoholic cocktails, but rather whether they
would be confused as to the source of these goods. The
goods need only be sufficiently related that consumers
would be likely to assume, upon encountering the goods
under similar marks, that the goods originate from, are
sponsored or authorized by, or are otherwise connected to
the same source. See In re Rexel Inc., 223 USPQ 830, 831
(TTAB 1984).
Serial No. 85372951
6
Finally, one guiding principle, relevant to several
arguments raised by applicant, is that where the goods in
the application at issue and the cited registration are
broadly identified as to their nature and type, such that
there is an absence of any restrictions relating to the
channels of trade and no limitations relating to the
classes of purchasers, it is presumed that the
identifications of goods encompass not only all the goods
of the nature and type described therein, but that the
identified goods are also offered in all channels of trade
which would be normal therefor, and that they would be
purchased by all potential buyers thereof. In re Elbaum,
211 USPQ 639, 640 (TTAB 1981). Again, the goods identified
in the application are prepared alcoholic cocktails and the
goods identified in the registration are beer; there are no
restrictions or limitations in the trade channels or
classes of consumers. Thus, we disregard applicant’s
arguments that its prepared alcoholic cocktails will only
be served in its restaurants, and likewise that
registrant’s beer will only be “offered at Registrant’s
brewery, pubs and the like.” Brief, p. 4.
The Board and our reviewing court have found on many
occasions different types of alcoholic beverages to be
sufficiently related for purposes of a likelihood of
Serial No. 85372951
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confusion analysis; in doing so, it has been observed that
certain alcoholic beverages, albeit different types, may
share common uses, channels of trade, and customers. See,
e.g., In re Chatam Int'l Inc., 380 F.3d 1340, 71 USPQ2d
1944 (Fed. Cir. 2004) (beer and ale related to tequila); In
re Majestic Distilling, 65 USPQ2d 1204 (malt liquor related
to tequila); In re Kysela Pere et Fils Ltd., 98 USPQ2d
1261, 1265 (TTAB 2011) (beer related to wine); In re
Sailerbrau Franz Sailer, 23 USPQ2d 1719, 1720 (TTAB 1992)
(beer related to wine); Somerset Distilling, Inc. v.
Speymalt Whiskey Distribs. Ltd., 14 USPQ2d 1539, 1542 (TTAB
1989) (whiskey related to gin and vodka); Schieffelin & Co.
v. Molson Cos., 9 USPQ2d 2069, 2073 (TTAB 1989) (Cognac
brandy related to malt liquor, beer and ale); Monarch Wine
Co. v. Hood River Distillers, Inc., 196 USPQ 855, 857 (TTAB
1977) (distilled spirits related to wine); In re AGE
Bodegas Unidas, S.A., 192 USPQ 326 at 326 (TTAB 1976)
(wines related to whiskey); Rosenblum v. George Willsher &
Co., 161 USPQ 492, 492 (TTAB 1969) (Scotch whisky related
to rum).
Here, the examining attorney has submitted printouts
of numerous use-based third-party registrations which
include both beer and alcoholic cocktails in their
Serial No. 85372951
8
identifications of goods.5 These registrations have
probative value to the extent that they suggest that beer
and alcoholic cocktails are goods which could be marketed
by a single source under a single mark. See In re
Association of the United States Army, supra, 85 USPQ2d
1264, 1270; In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co.
Inc., supra, 6 USPQ2d 1467, 1470 n.6.
The record created by the examining attorney also
includes news articles, advertisements and recipes showing
that beer may be used as an ingredient in alcoholic
cocktails.6
In addition, the examining attorney has submitted
evidence showing that beer and alcoholic cocktails may be
offered in the same trade channels and to the same classes
of consumers. Specifically, the evidence includes retail
store advertisements and restaurant menus offering beer and
alcoholic cocktails alongside each other.
In sum, the record shows that beer and prepared
alcoholic cocktails are sufficiently related and they may
be offered in the same trade channels to the same classes
of consumers. Accordingly, the du Pont factors regarding

5 Submitted with Office action dated September 21, 2011.
Serial No. 85372951
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relatedness of goods, trade channels and classes of
consumers favor finding a likelihood of confusion.
Upon consideration of the entire record and all
relevant likelihood of confusion factors, we find there is
a likelihood of confusion. Beer is sufficiently related to
prepared alcoholic cocktails such that when extremely
similar marks are used for these goods, as with the marks
involved in this appeal, we find confusion is likely.
Because it has been shown that the respective beverages may
emanate from a common source, consumers already familiar
with BATTLEFIELD beer may, upon encountering BATTLEFIELD
BLUE ‘RITA-branded prepared alcoholic cocktails, mistakenly
believe that a BATTLEFIELD BLUE ‘RITA prepared cocktail is
merely an extension of drink products from the same source
as BATTLEFIELD beer. This likelihood of confusion prevents
registration of applicant’s proposed mark.
DECISION: The refusal to register the mark under
Section 2(d) of the Trademark Act is affirmed.

6 Printouts from third-party websites submitted with Office
actions dated September 21, 2011 and May 7, 2012.