Grill 505 LLC

Trademark Trial and Appeal Board

Mar 31, 2015

No. 85951305 (T.T.A.B. Mar. 31, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 31, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Grill 505 LLC
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Serial No. 85951305
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Matthew H. Swyers of The Trademark Company,
for Grill 505 LLC.
John D. Dalier, Trademark Examining Attorney, Law Office 106,
Mary I. Sparrow, Managing Attorney.
_____

Before Quinn, Taylor and Lykos,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
Grill 505 LLC (“Applicant”) seeks registration on the Principal Register of the
mark BRUTOPIA BREWERY (in standard characters) for “Beer” in International
Class 32; and “Pubs” in International Class 43.1 The word BREWERY was
voluntarily disclaimed at the time of filing the original application.
The Trademark Examining Attorney has finally refused registration of
Applicant’s mark under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the

1 Application Serial No. 85951305 was filed on June 5, 2013, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
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ground that Applicant’s mark as used on or in connection with the identified goods
and services is likely to cause confusion with the mark in Registration No. 3066029,
BREWTOPIA, for “Providing beer events and beer festivals; and providing online
information regarding the beer events and beer festivals” in International Class 41.2
Applicant appealed to this Board, and both Applicant and the Examining
Attorney filed briefs. We affirm in part and reverse in part the refusal to register.
Our determination under Section 2(d) is based on an analysis of all of the
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 Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (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, 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”). These
factors, and any other relevant du Pont factors in the proceeding now before us, will
be considered in this decision.

2 Issued March 7, 2006, Section 8 Affidavit accepted, Section 15 Affidavit acknowledged.
The Examining Attorney had also finally refused registration on the basis of Registration
No. 4233907 for the mark BIG LICK BEERTOPIA (in standard character form) for
“conducting entertainment exhibitions in the nature of beer festivals; entertainment in the
nature of a festival primarily featuring live music, beer brewing competitions and also
providing food and alcoholic beverages.” The Examining Attorney, in his brief, withdrew the
refusal based on this registration which is owned by a different Registrant.
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We consider the first du Pont factor, the similarity or dissimilarity of the marks.
In making our determination, we must compare the marks in their entireties as to
appearance, sound, connotation and commercial impression to determine the
similarity or dissimilarity between them. Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.
Cir. 2005), quoting In re E. I. du Pont de Nemours & Co., 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) (citation omitted). While we must consider the
marks in their entireties, it is entirely appropriate to accord greater importance to
the more distinctive elements in the marks. See In re Nat’l Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (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.” See id.
Applicant, by its disclaimer of the word “Brewery” has conceded the descriptive
nature of that term, which merely describes a feature of Applicant’s services.
Accordingly, this term would not be looked to as source-identifying. Instead, it is the
term BRUTOPIA that dominates Applicant’s mark, and is the part of the mark that
consumers are likely to recall. The dominant term BRUTOPIA in Applicant’s mark
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is substantially similar to the sole term in the cited mark BREWTOPIA in
appearance, both beginning with the letters “BR” and ending with the letters
“TOPIA.” The differences between them, i.e., the letters “EW” in Applicant’s mark
and the letter “U” in Registrant’s mark may not be noticed due to their imbedded
placement in both marks. As to sound, BRUTOPIA in Applicant’s mark and the
cited mark BREWTOPIA are phonetic equivalents. Similarity in sound alone may
be sufficient to support a finding that the marks are confusingly similar. In re White
Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 2007). The record contains no information
on the meaning of the two marks, but given their similarities, it is likely consumers
will attribute the same meaning to both. One meaning, as the Examining Attorney
suggests, may be that of “a place for beers.”
Because the term BREWTOPIA is Registrant’s entire mark and the visually
similar and phonetically equivalent term BRUTOPIA forms the most significant
and dominant portion of Applicant’s mark, we find the marks as a whole are similar
in appearance, sound, connotation and commercial impression.
Indeed, Applicant, in its brief, “concede[d] the phonetic equivalence of
BRUTOPIA versus BREWTOPIA” and, “[m]oreover, as the Applicant has
disclaimed BREWERY apart from its mark as a whole, Applicant must concede the
highly similar nature of the first cited trademark [BREWTOPIA] against its
mark.”3 Applicant also specifically “conceded that this du Pont factor may favor a
likelihood of confusion with BREWTOPIA.”

3 App. Br. p. 9, 4 TTABVue 10.
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For the reason discussed above, the du Pont factor of the similarity/dissimilarity
of the marks favors a finding of likelihood of confusion.
To the extent that Applicant is arguing that its mark should be registered
because of the co-existence on the Register of the cited registration and Registration
No. 4233097, initially cited as an additional bar to Applicant’s registration of
BRUTOPIA BREWERY, the Board is not bound by the prior decisions of examining
attorneys in allowing marks for registration. It has been noted many times that
each case must be decided on its own facts. See In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had
some characteristics similar to [applicant’s] application, the PTO’s allowance of
such prior registrations does not bind the Board or this court.”); In re Merrill Lynch,
Pierce, Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987).
We are obligated to assess the registrability of Applicant’s mark on its own merits
and not simply based on the existence of other registrations.
Similarity of the Goods and Services
We now consider the second du Pont factor, the similarity or dissimilarity of the
goods and services. It is well-established that the goods and services need not be
similar or competitive, or even offered through the same channels of trade, to
support a holding of likelihood of confusion. It is sufficient that the respective goods
and services are related in some manner, and/or that the conditions and activities
surrounding the marketing thereof are such that they would or could be
encountered by the same persons under circumstances that could, because of the
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similarity of the marks, give rise to the mistaken belief that they originate from the
same source. See Hilson Research, Inc. v. Society for Human Resource Management,
27 USPQ2d 1423 (TTAB 1993); In re International Telephone & Telephone Corp.,
197 USPQ 910, 911 (TTAB 1978). The issue, of course, is not whether purchasers
would confuse the goods and services, but rather whether there is a likelihood of
confusion as to the source thereof. In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
Further, where the goods and services in an application or cited registration are
broadly described, such that there are no restrictions as to trade channels and
purchasers, it is presumed that the identification of goods and services encompasses
not only all goods and services of the nature and type described therein, but that
the identified goods and services are provided in all channels of trade which would
be normal therefor, and that they would be purchased by all potential customers
thereof. See, e.g., In re Elbaum, 211 USPQ 639 (TTAB 1981).
With these principles in mind, we compare Applicant’s “beer” and “pubs” with
Registrant’s “providing beer events and beer festivals; and providing online
information regarding the beer events and beer festivals.”
The Examining Attorney maintains that “[b]eer, beer and craft beer pub services
and craft beer festival services are complementary to one another.”4 He goes on to
explain that “[c]raft beer, like that of the applicant, is often served and sold by

4 Br. unnumbered pp. 7-8, 6 TTABVue 8-9. We note that neither Applicant’s nor
Registrant’s identification limits their respective goods and services to use on or in
connection with “craft” beers. Contrary to the Examining Attorney’s contention, this
language narrows the identifications.
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festival or pub service providers at beer festivals and events.”5 The Examining
Attorney has supported his position with web pages from the websites of the Valley
Forge Beer Festival,6 AzBeer.com7 and the DC Craft Beer Festival – Spring
Seasons,8 shown below in full or excerpted (highlighting added by the Examining
Attorney).

5 Id.
6 http://www.azbeer.com, attached to the final Office action dated June 2, 2014.
7 http://www.valleyforgebeerfest.com/, attached to the final Office action dated June 2,
2014.
8 http://craftbeerfestdc.com/, attached to the final Office action dated June 2, 2014.
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We find, on the face of the respective identifications, that Applicant’s beer is
complementary to Registrant’s providing beer events and beer festivals; and
providing online information regarding the beer events and beer festivals services.
We find so because Applicant’s beer could be sampled or purchased at Registrant’s
festivals, or could be the subject matter of Registrant’s information regarding beer
festivals. This finding is bolstered by the Internet evidence of record which shows
that the principal subject matter of beer festivals is a wide variety of beers. We thus
find Applicant’s goods and Registrant’s services commercially related that, when
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identified by substantially similar marks, i.e., BRUTOPIA BREWERY and
BREWTOPIA, confusion as to source is likely.
However, we find no basis on this record for concluding that Applicant’s pubs
and Registrant’s provision of beer events and beer festivals, and provision of online
information regarding the beer events and beer festivals, are related in some viable
fashion and/or that they are marketed or promoted under circumstances and
conditions that could bring them to the attention of the same purchasers or
prospective purchasers under circumstances that could cause such purchasers
reasonably to assume, because of substantial similarity of the respective marks,
that the particular services share a common origin or sponsorship. First, the
respective services, as identified, are different. Moreover, the single web page cited
by the Examining Attorney in support of the relatedness of the services is
unpersuasive. The fact that breweries9 showcase their beer at beer events and
festivals simply does not demonstrate that consumers who frequent both pubs and
beer events and beer festivals will mistakenly believe that both types of services

9 In any event as defined in The American Heritage Dictionary of the English Language (5th
ed. 2014), pubs and breweries appear to perform different functions. We take judicial notice
of the definition of “pub,” defined as “[a] place of business serving beer or other alcoholic
drinks and often basic meals,” https://www.ahdictionary.com/word/search.html?q=pub, and
“brewery” defined as “[a] place where beer is brewed, especially commercially.
https://www.ahdictionary.com/word/search.html?q=brewery. The Board may take judicial
notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co.,
213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including
online dictionaries that exist in printed format or have regular fixed editions. In re Red Bull
GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
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emanate from a common source, or otherwise are commercially related, even when
the respective services are offered under similar marks.10
Relying on the Affidavit of Umberto Sorbo,11 Applicant argues that its goods
differ significantly from the services of the cited mark because its goods are only
artisan craft beers local to the state of Rhode Island whereas Registrant’s services
are not used in connection with a brewery. Instead, Registrant’s mark is used
exclusively in connection with providing evaluations on certain types of beer, as well
as providing information on beer events and hosing beer events. As stated, the
respective goods and services need not be identical. They need only be related in
such a manner that confusion as to the source of the respective goods and services
ensues. To the extent that Applicant also is attempting to distinguish its goods and
services from the services of Registrant by geographical limitations, we point out
that geographical distinctions are only considered within the context of a concurrent
use proceeding. And, in any event, Registrant’s cited registration, and Applicant’s
application for that matter, contain no such geographical limitations.
Further, in the absence of any limitations in the identifications as to channels of
trade and classes of purchasers in the application and cited registration, we
must presume that the respective goods and services will be purchased in the usual

10 We hasten to point out that, on a different and more complete record, we might arrive at
a different result on the likelihood of confusion between the marks when used in connection
with the identified services.
11 Attachment to Applicant’s response to the first Office action, dated March 10, 2014. Mr.
Sorbo is described in the affidavit as a resident of Florida who has become familiar with the
goods and services offered under the BRUTOPIA BREWERY mark in the course and scope
of his work.
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channels of trade for those goods and services and by the usual classes of
purchasers for those goods and services, including ordinary consumers looking to
purchase and/or sample beer. Thus, at a minimum, the classes of purchasers
overlap. In re Elbaum, supra.
Sophistication of Purchasers
Last, Applicant argues that its craft beer and pub services offered under the
BRUTOPIA BREWERY mark are designed to attract a very specific consumer (i.e.,
people seeking to enjoy local craft beer, available at between $3.50 and $5.50 a pint,
and fresh local food at market prices in a friendly pub setting) whereas Registrant’s
BREWTOPIA mark is used to attract those seeking information on beer festivals,
specifically the “Classic City Brest Fest,” the ticket price to which is $39.99 plus a
processing fee. As such, Applicant urges, the average purchaser of the respective
goods and services would exercise “a high level of sophistication,” thereby
minimizing any likelihood of confusion.
First, as identified, Applicant’s beer is not limited to local craft beer sold only in
a pub setting, and is relatively inexpensive, being priced between $3.50 and $5.50 a
pint. The record also is devoid of any information regarding a consumer’s selection
process for attending beer festivals, but the consumers will include ordinary
purchasers seeking to taste a variety of beers, who will exercise no more than
ordinary care. However, even assuming arguendo that the respective goods and
services will be purchased by consumers who will exercise some degree of care in
their purchasing decisions, even careful purchasers can be confused as to source
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under circumstances where substantially similar marks are used on closely related
goods and services. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49,
50 (Fed. Cir. 1986) citing Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd.,
434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970).
In conclusion, after careful consideration of the evidence of record and the
arguments, we find that purchasers familiar with Registrant’s providing of beer
events and beer festivals; and providing online information regarding the beer
events and beer festivals under the BREWTOPIA mark would likely believe, upon
encountering Applicant’s mark BRUTOPIA BREWERY for beer, that the goods and
services originate from or are associated with or sponsored by the same source.
However, notwithstanding the similarity of the marks, the record fails to
demonstrate that there is a likelihood of confusion from the contemporaneous use
by Applicant of the BRUTOPIA BREWERY mark in connection with pubs and the
use by Registrant of the mark BREWTOPIA for providing beer events and beer
festivals; and providing online information regarding the beer events and beer
festivals.
Decision: The refusal to register Applicant’s mark BRUTOPIA BREWERY
pursuant to Section 2(d) of the Act is affirmed as to “beer” identified in
International Class 32, and reversed as to “pubs” identified in International Class
43.
The application will proceed to publication solely as it regards the Class 43
services.