Iron Balls International

Trademark Trial and Appeal Board

Jan 16, 2019

EX (T.T.A.B. Jan. 16, 2019)

This Opinion is not a
Precedent of the TTAB

Mailed: January 16, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Iron Balls International
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Serial No. 87299536

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Michael J. Hoisington of Higgs Fletcher & Mack LLP,
for Iron Balls International.

Meredith Maresca, Trademark Examining Attorney, Law Office 109,
Michael Kazazian, Managing Attorney.
_____

Before Zervas, Wolfson and Pologeorgis,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Iron Balls International (“Applicant”) seeks registration on the Principal Register
of the following mark for “gin” in International Class 33:1

1 Application Serial No. 87299536, filed on January 12, 2017 pursuant to Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), asserting a bona fide intent to use the mark in
commerce.
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The wording “ENGINEERED ALCOHOL” is disclaimed and the mark is described as
follows:
The mark consists of the phrase “IRON BALLS” above the phrase
“ENGINEERED ALCOHOL” with a watermark behind the term
“IRON” consisting of a fanciful skull design with a crossed hammer and
wrench and the phrase “IRON BALLS ENGINEERED ALCOHOL”
encircling the skull design.

The Examining Attorney refused registration pursuant to Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so
resembles the previously registered mark IRON BALLS (in standard character form)
for “beer” in International Class 322 that, as used on Applicant’s identified goods, it
is likely to cause confusion or mistake or to deceive.
After the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal resumed. The appeal is fully briefed. We affirm the
refusal to register.3
I. Evidentiary Issue
Applicant states, “Please ignore the portion of the evidence attached in Exhibit E
to the [Response] dated April 16, 2018 entitled Craft Beer and Consumer Behavior.
This document was inadvertently attached to Exhibit E and the undersigned attorney

2 Registration No. 4565000, registered July 8, 2014.
3 The TTABVUE and Trademark Status and Document Retrieval (“TSDR”) citations refer to
the docket and electronic file database for the involved application. All citations to the TSDR
database are to the downloadable .PDF version of the documents.

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apologizes for the error. This evidence consists of … approximately 328 pages.”4 We
have not considered Exhibit E.
II. Likelihood of Confusion
Our determination under Section 2(d) of the Trademark Act is based on an
analysis of the probative facts in evidence that are relevant to the factors bearing on
a likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973) (“du Pont”); see also Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005);
In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
considering the evidence of record on these factors, we keep in mind that “[t]he
fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976). “Not all of the [du Pont] factors are relevant to every case, and only
factors of significance to the particular mark need be considered.” Coach Servs., Inc.
v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012)
(quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir
2010)).

4 16 TTABVUE 3.
Serial No. 87299536
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A. Similarity of the Marks
We first consider whether Applicant’s and registrant’s marks are similar when
viewed in their entireties in terms of appearance, sound, connotation and commercial
impression. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,
110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1689). The test under the
first du Pont factor is not whether the marks can be distinguished when subjected to
a side-by-side comparison, but rather whether the marks are sufficiently similar that
confusion as to the source of the goods offered under the respective marks is likely to
result. See In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1748 (Fed.
Cir. 2017); Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721. The
focus is on the recollection of the average purchaser, who normally retains a general
rather than a specific impression of trademarks. See Mini Melts, Inc. v. Reckitt
Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC, 118
USPQ2d 1084, 1089 (TTAB 2016); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106
(TTAB 1975).
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 than to the
less distinctive elements in determining whether the marks are similar. In re Nat’l
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“[T]here 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
Serial No. 87299536
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consideration of the marks in their entireties.”). When a mark comprises both words
and a design, the words are normally accorded greater weight because they are more
likely to be impressed upon a purchaser’s memory and would typically be used by
purchasers to request the goods or services. See In re Viterra, 671 F.3d 1358, 101
USPQ2d 1905, 1911 (Fed. Cir. 2012).
Registrant’s entire mark is IRON BALLS. The most notable part of Applicant’s
mark is the wording IRON BALLS, which dominates Applicant’s mark by standing
out in very large lettering superimposed on a small design component which functions
as a background watermark (as characterized by Applicant) and above the smaller
disclaimed wording ENGINEERED ALCOHOL. Likelihood of confusion has been
found where the entirety of one mark is encompassed by another. See, e.g., The Wella
Corp, v. Calif. Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977)
(CALIFORNIA CONCEPT and surfer design for men’s cologne, hair spray,
conditioner and shampoo likely to cause confusion with the mark CONCEPT for cold
permanent wave lotion and neutralizer); In re Riddle, 225 USPQ 630, 632 (TTAB
1985) (“Richard Petty’s Accu Tune” for automotive service centers specializing in
engine tune-ups and oil changes likely to cause confusion with “Accutune” automotive
testing equipment.”).
The marks are similar in that both marks contain the wording IRON BALLS,
which is the first term (and most prominent in size) in Applicant’s mark. The first
term in a mark often dominates its overall impression. Palm Bay Imps., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1692 (“The presence of
Serial No. 87299536
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this strong distinctive term as the first word in both parties’ marks renders the marks
similar, especially in light of the largely laudatory (and hence non-source identifying)
significance of ROYALE.”); 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 Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992) (upon encountering the marks, consumers must first notice the
identical lead word). In addition, IRON BALLS is a stronger source identifier than
the other wording in Applicant’s mark; ENGINEERED ALCOHOL is merely
descriptive of a feature of Applicant’s gin, which Applicant disclaimed at the
Examining Attorney’s request.5 According to the definitions in the record,
“engineered” signifies that the goods have been made by “skillful craft,”6 and “alcohol”
indicates that the goods are a “colorless volatile flammable liquid that is produced by
the natural fermentation of sugars [which is] is the intoxicating constituent of … beer,
spirits, and other drinks.”7 Merely descriptive terms in a mark do little to distinguish
one mark from the other. Thus, while we may not ignore ENGINEERED ALCOHOL
in Applicant’s mark, we find this wording to be subordinate to IRON BALLS.

5 Req. for Recon., TSDR 2. The disclaimer of a term pursuant to a requirement by the
Examining Attorney is a concession that the term is at best merely descriptive. See In re
Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2014 n.4 (TTAB 1988) (“By its disclaimer of the
word LITE, applicant has conceded that the term is merely descriptive as used in connection
with applicant’s goods.”) (citing State Oil Refining Corp. v. Quaker Oil Corp., 161 USPQ 547
(TTAB 1969), aff’d, 453 F.2d 1296, 172 USPQ 361 (CCPA 1972)).
6 October 14, 2017 Office Action, TSDR 20.
7 April 10, 2017 Office Action, TSDR 15.
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In addition, registrant’s mark may be displayed in the same lettering style as
Applicant’s mark. Registrant’s mark is a standard character mark and standard
character marks may be displayed in any lettering style; the rights reside in the
wording or other literal element and not in any particular display or rendition. See
In re Viterra Inc., 101 USPQ2d at 1909; In re Mighty Leaf Tea, 94 USPQ2d at 1260.
Applicant argues that “IRON BALLS is suggestive and therefore (although of
course protectable) is not deserving the utmost protection. It is well known that
having ‘balls’ is a euphemism for being strong, and the phrase IRON BALLS only ups
the ante.”8 Applicant does not identity what feature of beer IRON BALLS is
suggestive of and hence we do not give much credence to this argument. In any event,
the term IRON BALLS has the same meaning in both Applicant’s and registrant’s
marks.
In view of the foregoing, we find Applicant’s and registrant’s marks to be similar
in appearance, sound, meaning and commercial impression when the marks are
considered in their entireties. The dominant wording of Applicant’s mark is the
entirety of registrant’s mark and the additional characteristics of Applicant’s mark
do little to change the similar appearance, sound, meaning and commercial
impression caused by this shared wording.
This du Pont factor weighs in favor of a finding that confusion is likely.

8 16 TTABVUE 4.
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B. The Goods, Trade Channels and Classes of Purchasers
Goods need not be identical or competitive in order to support a finding of
likelihood of confusion. “Likelihood of confusion can be found if the respective
products are related in some manner and/or if the circumstances surrounding their
marketing are such that they could give rise to the mistaken belief that they emanate
from the same source.” Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at
1722 (internal quotation marks omitted). The issue is not whether purchasers would
confuse the respective goods, but rather whether there is a likelihood of confusion as
to the source of these goods. In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
Applicant acknowledges that the goods are “somewhat related” because they are
both alcoholic beverages.9 In addition, the record contains the following:
● Third- party registrations showing that a single mark has been registered for
both gin and beer, including:10
Registration No. 1560079 for JINRO;11

Registration No. 3981731 for VIRINS;12

Registration No. 4301733 for MALT LIFE;13

9 16 TTABVUE 4.
10 Use-based, third-party registrations may have some probative value to the extent they may
serve to suggest that the goods and services are of a kind that emanate from a single source.
See In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel
& Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co.,
6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
11 April 10, 2017 Office Action, TSDR 75.
12 Id., TSDR 77.
13 Id., TSDR 83.
Serial No. 87299536
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Registration No. 4951746 for 16 HOBBS TAVERN & BREWING CO. and
design;14

Registration No. 4721168 for MCGARGLES IRISH FAMILY BREWERS
NEVER ESTABLISHED and design;15

Registration No. 5018633 for ANGELICUS;16

Registration No. 2350261 for BINNY’S BEVERAGE DEPOT;17 and

Registration No. 4144520 for UNLEASH THE CARBON WITHIN.18

● Internet evidence, including the following, demonstrating:
Treaty Oak: the mark “Treaty Oak” is used for both gin and beer;19

Warfield Distillery & Brewery: “Warfield” is used for both gin and beer;20

Bent Brewstillery: the mark “Bent Brewstillery” and the same logo are used
for both gin and beer;21

New Holland Brewing: the mark “New Holland” is used for both gin and
beer;22 and

Dogfish Head Distilling Co.: the mark “Dogfish Head” and the shark design
logo are used for both gin and beer.23

14 Id., TSDR 86.
15 Id., TSDR 89.
16 Id., TSDR 92.
17 May 6, 2018 Office Action, TSDR 74.
18 April 10, 2017 Office Action, TSDR 80.
19 Id., TSDR 34 (http://treatyoakdistilling.com).
20 Id., TSDR 48-50 (https://www.warfielddistillery.com).
21 Id., TSDR 57-60 (http://www.bentbrewstillery.com).
22 Id., TSDR 64-67 (http://newhollandbrew.com).
23 Id., TSDR 68-72 (https://www.dogfish.com/distillery; https://www.dogfish.com/brewery).
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We find that the evidence in the record, including the evidence set forth above,
establishes a commercial relationship between Applicant’s and registrant’s goods.
The evidence also demonstrates an overlap in their trade channels (which include
brewpubs and restaurants)24 and purchasers (who are adult members of the general
public who consume alcohol).
Applicant argues that the “USPTO has approved and registered many marks for
beer and gin containing similar/identical wording filed by unrelated companies,” and
that “the craft beer and spirits industry is brand intensive with extensive common
use by manufacturers of identical/similar terms to brand their goods.”25 In support,
Applicant provided TSDR printouts of the following registrations:

24 See, e.g., October 1, 2017 Office Action, TSDR 31-43.
25 16 TTABVUE 4.
Serial No. 87299536
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This evidence does not rebut the Examining Attorney’s evidence showing a
relationship between the goods. First, the registrations containing the term BOISE,
likely a geographically descriptive term, are not probative - one is on the
Supplemental Register (where geographically descriptive marks may be registered),
and the other contains a disclaimer of BOISE GIN. Second, there are other elements
to each of the remaining marks which may have been significant in the determination
to register them, and the application records for the registrations are not in the
present evidentiary record so we have no information on why the later registrations
registered in view of the earlier registrations. Third, the mere fact that some goods
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are not included in a registration's identification of goods does not establish that the
owner of the mark has not registered the mark for those goods in another registration
since, for example, the registrant may have begun using the mark on those goods at
a later date. Fourth, the law recognizes that trademark owners have different marks
that are used as a house mark, a mark for a line of products, and a mark for specific
items. It is, therefore, to be expected that many registrations for marks would not
cover all of a trademark owner’s goods and services. The fact that Applicant was able
to find and submit registrations for beer and gin with common terms does not rebut
the Examining Attorney's evidence showing the existence of third-party registrations
using the same marks on a variety of items, including Applicant's and registrant's
goods. Therefore, while Applicant’s evidence provides some indication that there are
some trademarks that are not registered for beer and gin, it does not rebut the
Examining Attorney's evidence that the goods are related. In addition, there is
longstanding, well-settled precedent holding that the Board is not bound by prior
decisions of examining attorneys, and that each case must be decided on its own
merits and on the basis of its own record, in accordance with relevant statutory,
regulatory and decisional authority. See, e.g., In re Int’l Flavors & Fragrances Inc.,
183 F.3d 1361, 51 USPQ2d 1513 (Fed. Cir. 1999).
The du Pont factor regarding the relatedness of the goods, and the factors
regarding purchasers and trade channels, favor a finding of likelihood of confusion.
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C. Purchaser Sophistication
Applicant argues that consumers of craft beer and spirits are educated and
sophisticated.26 Registrant’s identification is not limited to craft beer; registrant’s
goods are considered to include all types of beer sold through all normal channels of
trade. See In re Bay State Brewing Co., 117 USPQ2d 1958, 1959 n.4 (TTAB 2016)
(“[b]ecause the respective identifications include ‘beer’ without any limit regarding a
particular price point, we must treat the goods as including inexpensive as well as
more costly beers, and therefore presume that purchasers for ‘beer’ include ordinary
consumers who may buy inexpensive beer on impulse.”) (citing Stone Lion, 110
USPQ2d at 1163-64, which recognized Board precedent requiring consideration of the
“least sophisticated consumer in the class.”). Applicant offers no comment or evidence
regarding those who consume non-craft beers. Further, Applicant’s evidence from
“Entrepreneur” entitled “Craft Brewers: This Is What Your Customers Want” in
support of its argument is not particularly persuasive. It states in relevant part:
Craft drinkers are experimenters and nonlinear explorers who jump
from one new beer or spirits or hard cider to another without an obvious,
discernable progression, according to Demeter Group Investment Bank.
Their omnivorous tendency tracks styles rather than brands. They’re
pushing the overall market toward a style-first identity - they
overwhelmingly favor hoppy IPA beers - and away from the brand-first
identity that has long dominated beer consumption. The extremists
among them drive the development of new breweries with their
willingness to try every new beer they find.27

26 16 TTABVUE 5.
27 October 10, 2017 Office Action, TSDR 13.
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In any event, even sophisticated purchasers are not immune from source
confusion, especially in cases such as the instant one involving very similar marks
and closely related goods. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ
49, 50 (Fed. Cir. 1986) (citing Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd.,
434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human memories even of
discriminating purchasers...are not infallible.”)) The du Pont factor regarding
purchaser sophistication is neutral in our analysis.
D. Additional Argument
Applicant argues that Applicant and registrant are not in competition because
Applicant makes gin in Thailand and “hopes” to import its gin into the United States,
whereas registrant makes beer in Texas and “[i]t is not clear that Registrant sells its
product outside of Texas.”28 Applicant essentially argues that its activities are
geographically separate from those of registrant. Because Applicant seeks a
geographically unrestricted registration and the owner of a registration without
specified limitations enjoys a presumption of exclusive right to nationwide use of the
registered mark under Trademark Act Section 7(b), 15 U.S.C. §1057(b), regardless of
its actual extent of use, Applicant’s argument is not persuasive.
E. Conclusion
We have considered all of the evidence in the record and the arguments of the
Examining Attorney and Applicant, including evidence and arguments not

28 16 TTABVUE 5.
Serial No. 87299536
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specifically addressed in this decision. In view of the similarity of the marks, the
relatedness of the goods, and the overlapping purchasers and trade channels, and
because Applicant has not demonstrated any weakness in registrant’s mark, we
conclude that confusion is likely between Applicant’s mark for gin and registrant’s
mark for beer.
Decision: The refusal to register is affirmed.