House Beer, LLC

Trademark Trial and Appeal Board

Mar 27, 2015

No. 85684754 (T.T.A.B. Mar. 27, 2015)

This Opinion is a
Precedent of the TTAB

Mailed: March 27, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re House Beer, LLC
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Serial No. 85684754
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Gene Bolmarcich, Esq. for House Beer, LLC.

Katherine Weigle, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
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Before Bucher, Masiello, and Goodman,
Administrative Trademark Judges.

Opinion by Masiello, Administrative Trademark Judge:
House Beer, LLC (“Applicant”) has filed an application1 to register on the
Principal Register the mark HOUSE BEER in standard characters for “Retail store
services featuring beer.”

1 Application Serial No. 85684754 was filed July 23, 2012 under Trademark Act § 1(b),
15 U.S.C. § 1051(b), on the basis of Applicant’s stated bona fide intent to use the mark in
commerce. Applicant later filed an amendment to allege use claiming November 1, 2012 as
the date of first use and the date of first use in commerce. Applicant has disclaimed the
exclusive right to use the word “Beer” apart from the mark as shown.
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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
used in connection with Applicant’s services, so resembles the registered mark
HOUSE BEER as to be likely to cause confusion, or to cause mistake, or to deceive.
The cited mark is registered on the Supplemental Register in standard character
form for “Beer.”2 When the refusal was made final, Applicant appealed. The case
has been fully briefed.
1. Procedural issues.
Applicant’s brief does not address the merits of the refusal under Section 2(d).
Instead, Applicant focuses on certain incidents in the prosecution of the application
underlying the cited registration (the “Underlying Application”). According to
Applicant, the USPTO failed to follow certain required procedures during the
examination of the Underlying Application. Applicant contends that, had those
procedures been followed, the refusal now on appeal would not have issued.
Applicant has not made of record the file of the Underlying Application, but it
has made of record a copy of the cited registration as issued.3 The record also
includes printouts from the USPTO database showing the status of the Underlying
Application as of November 16, 2012,4 July 23, 2013,5 February 12, 2014,6 and

2 Registration No. 4449209 issued December 10, 2013. No claim is made to the exclusive
right to use BEER apart from the mark as shown.
3 Applicant’s response of February 18, 2014 at 4-5.
4 Office Action of November 16, 2012 at 5-6.
5 Office Action (suspension letter) of July 23, 2013 at 3-4.
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March 11, 2014.7 From these materials, most of Applicant’s factual contentions
regarding the Underlying Application can be confirmed. Although that evidence is
adequate for our purposes, the better practice would have been to file a copy of the
relevant pages of the record of the Underlying Application, because the Board does
not take judicial notice of the files of applications or registrations residing in the
Office. Edom Labs Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012); see also In
re Sela Products LLC, 107 USPQ2d 1580, 1583 (TTAB 2013).
To begin, some background on standard examining procedure is in order. In
general, the USPTO seeks to assign applications for examination in the order in
which they are received. Trademark Manual of Examining Procedure (TMEP)
§ 702.01 (January 2015). When the marks in two or more pending applications filed
by different applicants appear to be sufficiently similar that they may ultimately
require a refusal of registration under § 2(d), they are considered “conflicting
applications.” It is USPTO policy to process conflicting applications in the order of
their filing dates (or effective filing dates), such that the application having the
earliest effective filing date will be the first to proceed toward publication for
opposition (if it is eligible for registration on the Principal Register) or toward
registration if it is eligible for registration on the Supplemental Register.
Trademark Rule 2.83(a), 37 C.F.R. § 2.83(a); TMEP § 1208.01. As for the conflicting
applications that have later effective filing dates, the assigned examining attorneys

6 Office Action (first refusal under Section 2(d)) of February 17, 2014 at 7-8.
7 Office Action (final refusal) of March 11, 2014 at 7-8.
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will suspend action until the earlier-filed application either matures into a
registration or is abandoned. 37 C.F.R. § 2.83(c); TMEP § 1208.01.
The Underlying Application was filed under Trademark Act § 1(b) on December
7, 2011, prior to the filing date of Applicant’s application. At some time after the
filing of Applicant’s application, Registrant filed an amendment to allege use and
amended the Underlying Application to seek registration on the Supplemental
Register. As Applicant correctly points out, Trademark Rule 2.75 provides that
when an application originally filed under Section 1(b) “is changed from the
Principal Register to the Supplemental Register, the effective filing date of the
application is the date of the filing of the allegation of use.” 37 C.F.R. § 2.75(b). The
incomplete record before us does not reveal the date of filing of the allegation of use,
but it appears to have been at least a year after Applicant’s filing date of July 23,
2012, because the printout of July 23, 2013 regarding the Underlying Application
shows no claimed dates of use.8 (Logically, it ought to have been at least as late as
the date of first use stated on the registration certificate, which is October 17, 2013.)
In any event, we are satisfied that the amendment to Registrant’s Underlying
Application changed its effective filing date to a date subsequent to Applicant’s filing
date.
When these changes to the Underlying Application transpired, Applicant’s
application was in a state of suspension awaiting the final disposition of the
Underlying Application. The reason for suspension was the prospect that the

8 Office Action of July 23, 2013 at 3-4.
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Underlying Application might mature into a registration, giving rise to a ground for
refusal of registration of Applicant’s mark under Trademark Act § 2(d).
As far as we can tell, the change of the effective filing date of the Underlying
Application went unnoticed by the Examining Attorney and Applicant prior to the
issuance of the registration that is now cited against Applicant. Had Applicant
noticed the change prior to such issuance, it would have been in a position to inform
the Examining Attorney that its filing date preceded that of the effective filing date
of the Underlying Application, and to request that its application be removed from
suspension so that examination could resume. Had the Examining Attorney noticed
the change in filing dates, it would have been her duty, as Applicant correctly points
out, to “withdraw [Applicant’s] application from suspension and either approve it for
publication or take action on any other outstanding issues.” TMEP § 206.04.
Applicant also cites TMEP § 1208.01, which states that “[i]f the effective filing date
in an application containing a conflicting mark changes, the examining attorney
should review all the application(s) involved to determine which application has the
earliest effective filing date as a result of the change, and notify the examining
attorney assigned to the application with the earliest effective filing date.”9

9 Unfortunately, the Examining Attorney would not have had immediate knowledge of the
change in the effective filing date of the Underlying Application, because that application
was being examined by another examining attorney. Under USPTO procedures, when the
effective filing date of the Underlying Application changed, the examining attorney
assigned to the Underlying Application should have conducted a new search for conflicting
marks in the USPTO records, TMEP §§ 206.01 and 206.04, a search that should have
revealed the existence of Applicant’s application. Upon becoming aware of Applicant’s
application, that examining attorney should have notified the Examining Attorney assigned

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As Applicant points out, had the procedures outlined in the TMEP been followed,
the progress of Applicant’s application would not have been impeded by the
Underlying Application; and it is possible that Applicant’s application would even
have prevented the issuance of the cited registration. The Examining Attorney
contends that once the cited registration issued, it was procedurally appropriate for
her to cite it as a bar to registration of Applicant’s mark;10 and she points out
Applicant’s admission that “a registration is a valid basis for refusal under 2(d)
(even if the registration happens to have a later filing date than the refused
application).”11 Applicant requests that the Board “craft a remedy,” while admitting
that “Applicant is fully aware that the remedy in this case is not readily
apparent.”12
We find that the Examining Attorney’s refusal of registration was procedurally
sound, being based upon Section 2(d) of the Trademark Act, which provides for
refusal on the basis of a mark’s resemblance to “a mark registered in the Patent and
Trademark Office….” 15 U.S.C. § 1052(d) (emphasis added). This provision of the
statute makes no reference to the filing date of the application underlying the

to Applicant’s application of the change in the effective filing date of the Underlying
Application. TMEP § 206.04.
10 Examining Attorney’s brief, 9 TTABVUE 9.
11 Applicant’s brief at 7, 7 TTABVUE 9. Applicant’s suggestion that the Underlying
Application had not yet matured into a registration “at the time the Examining Attorney
issued the first refusal” is incorrect. The Examining Attorney first refused registration
under Section 2(d) in her Office Action of February 17, 2014, and attached a copy of the
cited registration, which had issued on December 10, 2013.
12 Applicant’s brief at 7, 8, 7 TTABVUE 9, 10.
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registration cited as the basis for the refusal.13 If the mark is registered, it may be
cited as grounds for refusing registration.14
The gravamen of Applicant’s appeal is that the procedures discussed above were
not followed, and that as a result the refusal issued by the Examining Attorney was
improper. Applicant’s appeal essentially asks us to interpret the TMEP and the
Trademark Rules in a way that would be inconsistent with the governing statute,
Section 2(d) of the Trademark Act; that is, Applicant asks us to find that a refusal
that is clearly authorized by Section 2(d) is invalid because certain examination
procedures were not followed during the independent examinations of Applicant’s
application and the Underlying Application. We cannot give the internal examining
procedures of the USPTO such primacy over statutory law. Agency rules and the
effect of implementing them must be consistent with the language of the governing
statute. K Mart Corp. v. Cartier Inc., 486 U.S. 281, 6 USPQ2d 1897, 1902 (1988)
(citing Board of Governors, FRS v. Dimension Financial Corp., 474 U.S. 361, 368
(1986) (quoting Chevron USA Inc. v. Natural Resources Defense Council, Inc., 467
U.S. 837, 842-43 (1984)). The specific examining procedures at issue are not

13 Section 2(d) does give regard to filing dates of underlying applications where a concurrent
use registration is at issue; but that provision is not relevant to the case before us.
14 The relevant clause in Section 2(d) provides that registration may be refused based on [1]
“a mark registered in the Patent and Trademark Office,” or [2] “a mark . . . previously used
in the United States by another and not abandoned.” Long-standing precedent makes clear
that the clauses quoted above provide separate bases for refusal, and that the requirement
of priority of use (“previously used . . . and not abandoned”) applies only to unregistered
marks asserted as a bar to registration. It is for this reason that the Board frequently notes
in oppositions that priority of use is not at issue when the opposer establishes its ownership
of a registration. See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108, 110 (CCPA 1974).
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expressly required by the terms of the Trademark Act. Strict compliance with those
procedures is by no means a prerequisite to issuing a refusal that Section 2(d) of the
Act requires.
The same application processing rules that Applicant views as having caused it
to suffer an injustice also offered it an opportunity to attempt to avoid the Section
2(d) refusal. After the issuance of the refusal under Section 2(d), Applicant could
have instituted a cancellation proceeding against the cited registration under
Section 24, 15 U.S.C. § 1092. In that event, prosecution of Applicant’s pending
application would have been suspended. In the cancellation action, Applicant could
have asserted its earlier filing date as a constructive date of first use of its mark for
purposes of proving priority. See Trademark Act Section 7(c), 15 U.S.C. § 1057(c)
(“Contingent on the registration of a mark on the principal register provided by this
chapter, the filing of the application to register such mark shall constitute
constructive use of the mark, conferring a right of priority … .”). See also Spirits
International B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri
Birligi, 99 USPQ2d 1545, 1549 (TTAB 2011); Truescents LLC v. Ride Skin Care
LLC, 81 USPQ2d 1334, 1339 (TTAB 2006); Larami Corp. v. Talk To Me Programs
Inc., 36 USPQ2d 1840, 1844 (TTAB 1995); Zirco Corp. v. American Telephone and
Telegraph Co., 21 USPQ2d 1542, 1544 (TTAB 1991). If Applicant’s petition for
cancellation were successful, the cited registration would have been removed as a
bar to Applicant’s application. But the owner of the cited registration is not a party
Serial No. 85684754
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to the appeal now before us, and we can neither cancel nor ignore the registration.15
After the final disposition of this appeal, Applicant may still seek to cancel the cited
registration, relying upon Applicant’s alleged actual priority of use, if that can be
demonstrated. It bears noting, however, that mere error in the examination of the
Underlying Application would not be a valid ground for an inter partes challenge to
the cited registration. See AS Holdings, Inc. v. H & C Milcor, Inc., 107 USPQ2d
1829 (TTAB 2013), citing Saint-Gobain Abrasives, Inc. v. Unova Indus. Automation
Sys., Inc., 66 USPQ2d 1355 (TTAB 2003).
For the reasons stated, the Examining Attorney’s refusal, being required by the
express terms of Section 2(d), is not rendered invalid by the procedural mishaps
described herein. We turn, therefore, to the merits of the Examining Attorney’s
refusal.
2. The refusal under Section 2(d).
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 as set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two

15 It also must be noted, now that Applicant’s appeal has reached the juncture where this
final decision is required, that Applicant is not in a position to request a suspension of these
proceedings to allow Applicant to seek cancellation of the cited registration. Such a request
would, in fact, constitute a request to reopen prosecution of the application. See In re Vycom
Electronics Ltd., 21 USPQ2d 1799 (Comm’r Pats. 1991). See also 37 C.F.R. § 2.142(g) (“An
application which has been considered and decided on appeal will not be reopened except
for the entry of a disclaimer … or upon order of the Director …”; and TBMP § 1213 (“A
request for suspension of proceedings before the Board in an ex parte appeal must be filed
prior to the issuance of the Board’s final decision in the case.”)
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key considerations are the similarities between the marks and the similarities
between the goods and services at issue. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
(a) The marks.
We first consider the similarity or dissimilarity of the marks at issue in their
entireties as to appearance, sound, connotation and commercial impression. See
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The marks are identical. Even though
the registered mark is set forth on the registration certificate in upper-case and
lower-case letters (i.e., House Beer), it is, like Applicant’s mark, a “standard
character” mark, “without claim to any particular font, style, size or color.”
Accordingly, the du Pont factor of the similarity or dissimilarity of the marks
weighs in favor of a finding of likelihood of confusion.
(b) The goods and services.
We next consider the similarity or dissimilarity of the goods and services of
Applicant and Registrant. We bear in mind that where identical marks are
involved, as is the case here, the degree of similarity between the goods and services
that is required to support a finding of likelihood of confusion declines. In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688-89 (Fed. Cir. 1993); Time Warner
Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002); and In re Opus One
Inc., 60 USPQ2d 1812 (TTAB 2001). The cited mark is registered for “beer.”
Applicant seeks to register its mark for “Retail store services featuring beer.”
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In order to demonstrate that beer is commercially related to retail stores
featuring beer, the Examining Attorney has presented webpages from the Internet16
showing the following:
- A bottled ale offered under the mark TRADER JOE’S; and a webpage
showing that stores are operated under the mark TRADER JOE’S.

- A bottled lager offered under the mark BLUE MOUNTAIN and a
webpage indicating that the beers of Blue Mountain Brewery are
available “at our brewery restaurant.”

- A brewery called LOST RHINO BREWING COMPANY that offers a
Pilsner under the mark RHINO CHASERS; and a webpage showing
that the brewery has a tasting room and conducts events where its
beers are offered along with live music.

The Examining Attorney has also submitted four third-party registrations in
order to further demonstrate that Applicant’s services and Registrant’s goods are
commercially related.17 Third-party registrations which individually cover different
goods and services and are based on use in commerce may have some probative
value to the extent that they serve to suggest that the listed goods and services are
of types which may emanate from the same source. 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 registrations cover (inter alia) the goods
and services indicated below:
Reg. No. 4458365 Beer; Retail store services featuring beer.

Reg. No. 4319000 Beer; Retail store and on-line retail store
services featuring beer [and other goods].

16 Office Action of February 17, 2014 at 23-50.
17 Id. at 9-22.
Serial No. 85684754
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Reg. No. 3060794 Beer; Retail store services featuring
convenience store items and gasoline.

Reg. No. 3955170 Beer … relating to the STURGIS motorcycle
rally; on-line retail store services.18

Only the evidence relating to the TRADER JOE’s trademark and two of the
third-party registrations (Nos. 4458365 and 4319000) squarely support the
Examining Attorney’s position.19 However, it has often been recognized that
likelihood of confusion may arise where confusingly similar marks are used on
goods, on the one hand, and in connection with sales of such goods, on the other. See
In re Wet Seal, Inc. v. FD Management, Inc., 82 USPQ2d 1629, 1640 (TTAB 2006); 4
J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 24:25
(4th ed. 2014). As our principal reviewing court has noted, “trademarks for goods
find their principal use in connection with selling the goods” and accordingly marks
for goods and marks for the service of selling such goods will have their impact on
the purchasing public in the same marketplace. In re Hyper Shoppes (Ohio), Inc.,
837 F.2d 463, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988). In this case, the marks are
identical and the goods and services at issue are commonplace goods and services

18 We give little weight to this 16-class registration, as nearly all of the goods and services
are apparently collateral goods and services associated with a motorcycle rally.
19 We have noted the Internet evidence submitted by the Examining Attorney with her
Office Action of March 11, 2014 at 9-17; however, we do not find it probative of a
commercial relationship between beer and stores that sell beer. The webpages of FWB
winery and brewery and Schnebly winery and brewery show that breweries make and sell
beer; but a brewery is not the same as “retail store services featuring beer.” Moreover, the
webpages do not show that the beer produced by each brewery is marked with a trademark
that is the same as, or similar to, that of the brewery.
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with which most consumers would be familiar. The evidence is sufficient to
persuade us that if customers were to encounter beer under a mark that is identical
to the mark of a retail store that features beer, they would likely believe that the
product and the service are related. Accordingly, we find that the du Pont factor of
the similarity or dissimilarity of the goods and services favors a finding of likelihood
of confusion.
Applicant and the Examining Attorney have not presented evidence or argument
as to other du Pont factors and, accordingly, we treat those factors as neutral.
(c) Conclusion.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. As the marks at
issue are identical and the goods and services at issue are related, we find that
Applicant’s mark, used in connection with Applicant’s services, so closely resembles
the registered mark as to be likely to cause confusion, mistake or deception as to the
source of Applicant’s services.
Decision: The refusal to register is affirmed.