Jaeger Corporation

Trademark Trial and Appeal Board

Jun 15, 2009

No. 77366250 (T.T.A.B. Jun. 15, 2009)

Mailed: June 15, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Jaeger Corporation
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Serial No. 77366250
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Dustin R. DuFault of DuFault Law Firm, P.C. for Jaeger
Corporation.

David H. Stine, Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney).
_______

Before Quinn, Drost and Taylor, Administrative Trademark
Judges.

Opinion by Taylor, Administrative Trademark Judge:

Jaeger Corporation has filed an application to
register on the Principal Register the mark JÄGER LAGER (in
standard character form) for “Draft beer as sold in bars or
restaurants” in Class 32.1 The term “LAGER” has been
disclaimed. In addition, the application includes the
following translation: “The foreign wording in the mark
translates into English as hunter.”

1 Application Serial No. 77366250 filed January 8, 2008 and
asserting bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT A PRECEDENT
OF THE TTAB
Ser No. 77366250
2
The examining attorney has refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), and
has cited as bars to registration the three registered
marks, owned by the same entity, set forth below.
Registration No. 3008995 for the mark JAGER, in
stylized block lettering, shown below,

for “Bitter liqueurs, semi-bitter liqueurs and herbal
liqueurs” in International Class 33. The application
includes the following translation: “The English
translation of “Jager” is “hunter.”;2

Registration No. 1946190 for the mark JAGERETTES, in
typed form, for “promoting the sale of the goods and
services of others, namely alcoholic beverages,
through personal appearances by models” in
International Class 35;3 and

Registration No. 1946191 for the mark JAGER DUDES, in
typed form, for “promoting the sale of the goods and
services of others, namely alcoholic beverages,
through personal appearances by models” in
International Class 35;4

After the refusal was made final, applicant appealed
and requested reconsideration of the refusal. The request
for reconsideration was denied on January 24, 2009 and this
appeal was resumed on January 27, 2009. Both applicant and
the examining attorney filed briefs.5 For the reasons
discussed below, we affirm the refusal to register.

2 Issued October 25, 2005.
3 Issued January 9, 1996, renewed.
4 Issued January 9, 1996, renewed.
5 The evidence attached to applicant’s brief is the same as that
previously submitted. Accordingly, it is already of record as
part of the application file, and its submission was unnecessary.
Ser No. 77366250
3
Our determination of the issue of likelihood of
confusion is based on an analysis of all 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 Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
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 (CCPA 1976).
As an initial matter, we note that applicant has
devoted much of its brief to the issue of whether the cited
registered marks comprise a “family of marks.” As pointed
out by the examining attorney, this argument “appears
directed to an offhand remark in a prior Office Action.”
(Examining attorney’s br. p. 5). While the cited marks may
arguably share some characteristics of a family of marks6,
such a finding is unnecessary to this issue involved in

See ITC Entertainment Group Ltd. v. Nintendo of America Inc., 45
USPQ2d 2021, 2022-23 (TTAB 1998) (submission of duplicative
papers is a waste of time and resources, and is a burden upon the
Board).
6 A family of marks is a group of marks having a recognizable
common characteristic which are promoted together in such in way
that the public would come to associate them with a single
source. See, e.g., J & J Snack Foods Corp. v. McDonald’s Corp.,
932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991).
Ser No. 77366250
4
this appeal. Herein, the final refusal is based on the
examining attorney’s contention that applicant’s applied-
for mark is confusingly similar to each of the cited marks
when these marks are viewed on their individual merits.
Further, in analyzing likelihood of confusion, we
limit our discussion to Registration No. 3008995 for
for “bitter liqueurs, semi-bitter liqueurs and herbal
liqueurs,” as this mark and goods are the closest to
applicant’s mark and recited goods. To the extent that
there would be confusion with the ‘995 registration, it
would serve little purpose to consider the other
registrations. And if there is no likelihood of confusion
with the ‘995 registration, there would similarly be no
likelihood of confusion with the other registrations.
We first consider the du Pont factor of similarity or
dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.
In re E. I. du Pont de Nemours & Co., supra. Applicant’s
standard character form mark JÄGER LAGER is substantially
similar in appearance, sound, connotation and commercial
impression to the cited registered mark, . Applicant
does not contend that its mark is dissimilar to that of
registrant. The dominant portion of applicant’s mark is
the term “JÄGER” because the term “LAGER” is the generic
Ser No. 77366250
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designation of a type of beer, as evidenced by the
disclaimer and the definition [submitted by the examining
attorney with his Office action issued April 10, 2008] of
“lager,” i.e., “a light colored beer.” 7 Although
likelihood of confusion must be determined by analyzing the
marks in their entireties, “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 consideration of the marks in
their entireties.” In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). For instance,
“[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.” Id at 751.
The dominant portion of applicant’s mark is virtually
identical to the registered mark. The sole difference is
the stylization of the cited registered mark. The
stylization, however, does not serve to distinguish
applicant’s mark from the cited mark because applicant
seeks registration of its JAGER LAGER mark in standard
character format and, accordingly, is not limited to the

7 Encarta® World English Dictionary [North American Edition]
(2007), retrieved at www.encarta.msn on April 10, 2008.
Ser No. 77366250
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depiction thereof in any special form. See Phillips
Petroleum Co. v. C. J. Webb, Inc. 441 F.2d 1376, 170 USPQ
35, 36 (CCPA 1971).
While admittedly there are differences between the
marks, we find that applicant’s mark is substantially
similar to the cited registered mark in appearance, sound,
connotation and commercial impression due to the shared
term JAGER. The factor of similarity of the marks thus
favors a finding of likelihood of confusion.
We next consider the du Pont factors of relatedness of
the goods, trade channels and classes of purchasers. It is
well settled that the question of likelihood of confusion
must be determined based on an analysis of the goods
recited in applicant’s application vis-à-vis the goods
recited in the registration. Canadian Imperial Bank v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir.
1992); and The Chicago Corp. v. North American Chicago
Corp., 20 USPQ 2d 1715 (TTAB 1991). Further, it is a
general rule that applicant’s goods and registrant’s goods
do not have to be identical or directly competitive to
support a finding that there is a likelihood of confusion.
It is sufficient if the respective products are related in
some manner and/or that the conditions surrounding their
marketing are such that they would be encountered by the
Ser No. 77366250
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same persons under circumstances that could, because of the
similarity of the marks used in connection therewith, give
rise to the mistaken belief that they emanate from or are
associated with a single source. In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993); In re
International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
The examining attorney has submitted five use-based
third-party registrations that cover both beer and
liqueurs. These registrations include:
Registration No. 2350261 for the mark BINNY’S BEVERAGE
DEPOT for, inter alia, beer and liqueurs;

Registration No. 1286155 for the mark HONG MEI and
design for, inter alia, beer and liqueurs;

Registration No. 1815068 for the mark MB for, inter
alia, beer and alcoholic beverages, namely liqueurs;

Registration No. 2896830 for the mark LE DELIZIE ZARA
for, inter alia, beer and liqueurs; and

Registration No. 3057119 for a miscellaneous design
for, inter alia, beer and liqueurs.

The examining attorney also submitted three use-based
third-party registrations that show beer in general and
liqueurs originate from the same sources and are sold in
the same general channels of trade. These registrations
include:
Registration No. 2002863 for the mark MARTHA’S for
retail convenience store services, retail grocery
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store services, delicatessen services, and specialty
retail store services featuring, inter alia, liqueurs
and imported and domestic beer;

Registration No. 3179708 for the mark ASTOR for, inter
alia, on-line retail store, telephone order services,
mail order services and retail store services
featuring, inter alia, beer and liqueurs; and

Registration No. 3224184 for the mark ENGLEWOOD WINE
MERCHANTS for retail store services, telephone order
services featuring, inter alia, alcoholic beverages,
namely liqueurs and beers.

While these registrations are admittedly not evidence of
use in commerce, they are sufficient to suggest that these
goods are ones which might be provided by a single entity
and offered to the public under the same mark. In re
Albert Trostel & Sons Co., 29 USPQ2d at 1785-1786; In re
Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB
1988).
Based on the nature of the goods and the third-party
registrations, we conclude that applicant’s beer is closely
related to registrant’s bitter, semi-bitter and herbal
liqueurs, such goods all being alcoholic beverages that are
often sold by the same source and under the same mark.
Moreover, in the absence of any limitations in the cited
registration as to channels of trade and classes of
purchasers, we must presume that registrant’s bitter, semi-
bitter and herbal liqueurs travel in all the normal trade
channels for such goods, including the same bars or
Ser No. 77366250
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restaurants in which applicant’s beer is sold, and to all
normal classes purchasers for such goods, including
ordinary consumers frequenting those bars and restaurants.
See In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). We thus
find that, at a minimum, the channels of trade and the
classes of purchasers overlap.
We are not persuaded by applicant’s arguments that the
goods are unrelated because they are distinct types of
alcohol. As discussed, the goods are closely related
alcoholic beverages that move in over lapping trade
channels under circumstances where perspective consumers
are conditioned by trade practices to expect that such
goods will emanate from a single source.
Last, we are not persuaded by applicant’s arguments
relating to the conditions of sale and consumer
sophistication. First, there is nothing in the record to
show that ordinary purchasers of beer or liqueurs will
exercise more than ordinary care in making their purchases
simply because they are in a bar or restaurant setting or
because “restaurants and bars charge considerably more for
alcohol sales.” (Applicant’s br., p. 7). Indeed, as the
examining attorney notes, “many purchasers of alcohol,
particularly in the restaurant/bar setting where
applicant’s product is offered, are made casually and
Ser No. 77366250
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involve relatively low purchase cost.” (Examining
attorney’s br., p. 6). Moreover, even if these restaurant
and bar setting consumers exercise some degree of care in
their purchasing decisions, even careful purchasers of
goods can be confused as to source under circumstances
where substantially similar marks are used on closely
related goods. 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).
We conclude that purchasers familiar with registrant’s
bitter liqueurs, semi-bitter liqueurs and herbal liqueurs,
sold under the mark would be likely to believe, upon
encountering applicant’s mark JÄGER LAGER for beer, that
the goods originate from or are associated with or
sponsored by the same source.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.