Karben4 Brewing, LLC

Trademark Trial and Appeal Board

May 18, 2018

No. 87064954 (T.T.A.B. May. 18, 2018)

Mailed: May 18, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Karben4 Brewing, LLC
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Serial No. 87064954
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Jason M. Hunt of Boardman & Clark LLP,
for Karben4 Brewing, LLC.
Ahsen Khan, Trademark Examining Attorney, Law Office 113,
Odette Bonnet, Managing Attorney.
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Before Cataldo, Wellington and Kuczma, Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Karben4 Brewing, LLC (Applicant) seeks registration on the Principal Register of
the stylized mark for “beer” in International Class 32 and “bar
services” in International Class 43.1
The Trademark Examining Attorney has refused registration under Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as

1 Application Serial No. 87064954 filed on June 8, 2016. The application was filed under
Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), on the basis (for both classes) of
Applicant’s allegation of December 28, 2012 as a date of first use in commerce.
This Opinion is not a
Precedent of the TTAB
Serial No. 87064954
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used on beer, so resembles the registered standard character mark, CARBON, for
goods that include “beers,” as to be likely to cause confusion.2 The Examining
Attorney specifically limited the refusal to Class 32 and there is no refusal with
respect to the Class 43 services.3
After the Examining Attorney made the refusal final, Applicant filed a request for
reconsideration that was denied. Applicant has appealed. We affirm the refusal to
register.
Preliminary Evidentiary Matters
As an initial matter, we note that Applicant attached, as an exhibit to its response
to the first Office Action, a list of thirteen third-party registrations and applications
for marks containing the term “carbon” (either by itself or as part of a composite term
and mark).4 Applicant relied on the list in arguing that the cited registered mark is
weak and that “the term carbon is used to refer to several beverage registrations.”5
In the subsequent Office actions and on brief, the Examining Attorney addresses the
issue of the purported weakness of the registered mark, but he did not discuss or
acknowledge Applicant’s list.
Generally, in order to make a third-party registration of record, either a copy of
the paper USPTO record registration, or a copy taken from the electronic records of

2 Registration No. 4577975 issued on August 5, 2014. The registration recites additional
alcoholic and non-alcoholic beverages in Classes 32 and 33.
3 See, e.g., Office Action issued on September 19, 2016 (“Section 2(d) refusal: Class 32 only”).
4 Response filed March 17, 2017 (“Exhibit E,” TSDR pp. 18-21). Citations to the TSDR
database are to the downloadable .pdf format.
5 Id. at p. 7.
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the Office, should be submitted during prosecution of the application. See Trademark
Board Manual of Procedure (TBMP) § 1208.02 (June 2017) and authorities cited
therein. However, in view of the fact that the Examining Attorney did not object to
the list or advise Applicant that the list is insufficient to make the identified
registrations and applications of record at a point where Applicant could have
corrected the error, we will consider the list. Id. However, we only consider the list
for the information that is provided on its face; we further point out that third-party
applications, as opposed to registrations, have no probative value other than as
evidence that the applications were filed. See, e.g., In re Mr. Recipe, LLC, 118 USPQ2d
1084, 1089 (TTAB 2016) (third-party application is “evidence only that the
application was filed on a certain date”); Interpayment Services Ltd. v. Docters &
Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003).
Applicant, in its appeal brief, has objected to certain evidence submitted by the
Examining Attorney with the Office Action denying the request for reconsideration.
The objected-to evidence consists of a printout from the Office’s Trademark Electronic
Search System (TESS) database showing the results of a search of the database.6
Applicant specifically objects to this evidence on the basis of the “Examining
Attorney’s failure to submit copies of the registrations [listed in the search results] or
complete electronic equivalents…”7 The Examining Attorney responds:8

6 Office Action issued September 16, 2017.
7 4 TTABVUE 16.
8 6 TTABVUE 7.
Serial No. 87064954
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The contents of the individual records were never meant to be part of the
record. The search was only meant to illustrate the number of live
applications or registrations on the USPTO database that use the term
CARBON in relation to “beer” in Class 32 and refute applicant’s argument
that CARBON is diluted with respect to “beer” in Class 32. Within this
limited context, the evidence is probative and has been properly introduced
into the record.

Applicant’s objection is sustained only to the extent that none of the identified
applications or registrations listed are of record because copies of the actual
registrations were not submitted. TBMP § 1208.02. However, the TESS printout itself
is not stricken and will be considered for what it shows on its face, namely that a
specific search of the TESS database for marks containing the term “carbon,” or an
equivalent, for “beer” resulted in three applications or four registrations.
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all 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 Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the goods. 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.”).
1. Relatedness of the Goods, Their Trade Channels and Consumers
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We first consider the du Pont factors addressing the similarity of the goods, the
channels of trade in which they may be encountered and the purchasers to whom they
are marketed. Here, the goods are, in relevant part, identical – Applicant seeks
registration of its mark for “beer” and the cited registration covers “beers.” Because
Applicant’s and Registrant’s goods are in-part identical, we must presume that the
channels of trade and classes of customers for those goods are the same. See American
Lebanese Syrian Associated Charities Inc. v. Child Health Research Inst., 101
USPQ2d 1022, 1028 (TTAB 2011); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532
(TTAB 1994). See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed.
Cir. 2012).
Accordingly, we find that the du Pont factors relating to the similarity of the goods,
the trade channels through which they travel, and the customers to whom they are
offered, all favor a finding of likelihood of confusion.
2. Similarity of the Marks
We consider next the similarity or dissimilarity of the marks 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 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.” In re i.am.symbolic, LLC, 866 F.3d 1315,
123 USPQ2d 1744, 1748 (Fed. Cir. 2017) (quoting Coach Servs. Inc. v. Triumph
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Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)) (internal
quotation marks omitted).
Here, Applicant’s mark appears to be merely a novel spelling of
the registered mark and word, CARBON, with the addition of the raised number (or
superscript) “4.” In sound, the first two syllables of the marks are extremely similar
and may be aurally indistinguishable. Indeed, Applicant’s own website contains an
admission that “Karben” is the “phonetic spelling” of the word “carbon.”9 In terms of
appearance, while Applicant’s mark begins with the letter “K,” contains the letter “E”
in place of “O,” and ends with the numeral “4,” there is some visual similarity in that
both marks share the letters ARB and N.
Indeed, as far as meaning and connotation, customers will recognize Applicant’s
mark as an intended misspelling of the word “carbon,” which is also Registrant’s
mark. As the Examining Attorney points out, Applicant, in fact, acknowledges this
and “markets its trademark in a manner that emphasizes that it is a play on the word
CARBON.”10 Specifically, the Examining Attorney points to the following website
printouts:
If you’re wondering about the brewery’s name, Karben4, the brewery
partners say it’s a twist on how carbon is the foundation of all life, and beer
is the foundation for modern civilizations.
[www.isthmus.com; “Karben4 Brewing fires up its brew kettle, ready for
Madison debut”];11

9 From Applicant’s website, printout attached to Office Action issued on March 30, 2017;
TSDR p. 6-7 (more complete excerpt from website provided infra.).
10 6 TTABVUE 5.
11 Attached to Office Action issued on March 30, 2017; TSDR p. 7.
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WHERE DID THE NAME KARBEN4 COME FROM?
Conceptually the name is rooted in the foundational element of all organic
life: carbon. This is married with beer’s history as being the foundational
essence of civilizations. We chose the phonetic spelling and added a
numerical character for differentiation purposes.
[Applicant’s website www.karben4.com].12

The term “carbon,” itself, may refer simply to the chemical element; as applied to
beer, it may be understood as arbitrary or suggestive of a carbonated beverage. In
any event, use of the term (or a recognized misspelling thereof) in the marks would
likely be understood in the same or very similar manner by consumers.
Under the circumstances, we find that the similarities between the marks
outweigh the differences, and the du Pont factor of the similarity or dissimilarity of
the marks weighs in favor of a finding of likelihood of confusion.
3. Strength of the Cited Mark
Applicant argues that the registered mark “is weak and [the registration] does not
provide exclusive rights to the word CARBON.”13 Specifically, Applicant argues that
the term “carbon” is “descriptive or highly suggestive of [beer]” and that “multiple
uses of the term exist on the same or similar goods.”14 Applicant points out that beer
is a “carbonated” beverage and relies on evidence, including website printouts and
lists of applications and registrations for marks containing the term “carbon” in one
form or another.

12 Id., TSDR p. 9.
13 4 TTABVUE 13.
14 Id. at 13-14.
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As to any inherent weakness of the term “carbon” in connection with beer, we find
that the registered mark may be understood by consumers as suggestive of the
carbonated aspect of the drink. However, any argument from Applicant that the term
is descriptive constitutes an impermissible collateral attack on the cited
registration. This is an ex parte proceeding, and “inasmuch as the cited mark is
registered on the Principal Register, we must assume that it is at least
suggestive….” In re Fiesta Palms, 85 USPQ2d 1360, 1363 (TTAB 2007) (citing In re
Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997)).
With respect to Applicant’s evidence involving third-party use and registration of
similar marks, “[t]he purpose of [an applicant] introducing third-party uses is to show
that customers have become so conditioned by a plethora of such similar marks that
customers have been educated to distinguish between different such marks on the
bases of minute distinctions.” Palm Bay, 73 USPQ2d at 1694. See also Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797
F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS
Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675-76 (Fed. Cir. 2015) (internal
citations omitted). “[T]he strength of a mark is not a binary factor” and “varies along
a spectrum from very strong to very weak.” Juice Generation, 115 USPQ2d at 1675-
76 (internal citations omitted). “The weaker [the registrant’s] mark, the closer an
applicant’s mark can come without causing a likelihood of confusion and thereby
invading what amounts to its comparatively narrower range of protection.” Id. at
1674 (internal citations omitted). See also Palm Bay, 73 USPQ2d at 1693 (“Evidence
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of third-party use of similar marks on similar goods is relevant to show that a mark
is relatively weak and entitled to only a narrow scope of protection.”).
Here, in terms of any commercial weakness, we are not persuaded that consumers
have been exposed to multiple “carbon” formative marks in connection with beer such
that they have been conditioned to overlook or give less significance to the presence
of this term in marks. The only evidence of third-party use of a similar mark,
CARBON 14 (or “Gordon Finest Carbon”), for beer is a single printout from a
website.15 The website address for this printout (www.gordon.be) has a Belgian
country code top level domain (“.be”) and the text at the bottom of the printout is in
French. There is no additional evidence to indicate any consumer exposure to this
mark in the U.S. marketplace or that the beer is even offered for sale in the U.S. The
remaining website printouts involve: CARBONE (the surname of owner) for
restaurant services, CARBON for wine, CHAMPAGNE CARBON for champagne,
and CARBONX for an energy drink. These uses are few in number and do not involve
beer. Moreover, we again have no additional information to gauge their popularity or
extent to which consumers have been exposed to these marks.
As to the list of third-party registrations and applications submitted by Applicant,
the sole registered mark for beer is MICROCARBONATED.16 The remaining six
registrations identified in the list cover various other alcoholic and non-alcoholic
beverages other than beer, such as wine, fruit juice, distilled spirits, etc., and involve

15 Attached to Aug. 30, 2017 request for reconsideration at TSDR pp. 51-53.
16 Response filed March 17, 2017, TSDR pp. 18-21.
Serial No. 87064954
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marks where the term “carbon” is either accompanied by other terms and letters (e.g.,
CHATEAU CARBONNIEUX, CARBONOFF, and CARBONADO), or appear to be
used in a manner whereby consumers may not even notice the term or its significance
in the mark, e.g., (the term “Maceracion Carbonica” appears in the lower
left of the banner design element). Although the Board has recognized Federal Circuit
precedent wherein evidence of the extensive registration and use of a term by others
has been treated as “powerful” evidence of weakness (See In re Morinaga Nyugyo
Kabushiki Kaisha, 120 USPQ2d 1738, 1746 n. 8 (TTAB 2016), citing Juice
Generation, 115 USPQ2d at 1674 and Jack Wolfskin, 116 USPQ2d at 1136)),
Applicant’s list of seven registrations, all but one of which do not involve beer, and
the one example of use from a Belgian website is not a strong showing of relevant
third-party registration and use of the term “carbon.” By comparison, in Juice
Generation, there were at least twenty-six relevant third party uses or registrations
of record, see 115 USPQ2d at 1672 n. 1, and in Jack Wolfskin, there were at least
fourteen, 116 USPQ2d at 1136 n. 2. Moreover, as the Board also explained in
Morinaga, a list of registrations and applications has limited probative value because
it is not evidence that the marks have actually been used in commerce or that the
public is even aware of them. Morinaga, 120 USPQ2d at 1745 (“But Applicant’s
citation of third-party registrations as evidence of market weakness is unavailing
because third-party registrations, standing alone, are not evidence that the
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registered marks are in use on a commercial scale, let alone that consumers have
become so accustomed to seeing them in the marketplace that they have learned to
distinguish among them by minor differences.”).
Although Applicant’s list of registrations and applications is not proof of third-
party use of the marks, it does bear on the previously-discussed conceptual weakness
of “carbon” to the extent that it shows how the term, or a variant thereof, may be
understood in the context of the same or similar goods. See Tektronix, Inc. v.
Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694-95 (CCPA 1976) (even if “there is
no evidence of actual use” of third-party registrations, such registrations “may be
given some weight to show the meaning of a mark in the same way that dictionaries
are used”). In other words, some of the marks in the list may corroborate the
suggestive nature of “carbon” and how it can be adopted in mark in connection with
beverages to connote a carbonated attribute.
In sum, we do not find that the term CARBON is commercially weak due to third-
party use of this or similar terms in connection with beer. However, the term may be
understood by consumers as suggestive of an attribute of beer – that beer is
carbonated – and, as a result, the cited mark is not as conceptually strong as a term
that is entirely arbitrary. We keep this in mind in our analysis and making our
determination as to whether there is a likelihood of confusion.
Summary
Considering all the evidence of record, we find that there is a likelihood of
confusion. Again, the marks in their entireties are very similar and they will be used
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on identical goods, beer. Furthermore, we must presume these goods will be
encountered by the same consumers in common channels of trade. The suggestive
nature of the registered mark, CARBON, and any decreased strength in the mark, is
insufficient to favor a finding of no likelihood of confusion. While strong marks
are entitled to a broader scope of protection than weak ones,
even weaker marks are entitled to protection from registration by a subsequent user
of a confusingly similar mark for related, or in this case identical, goods. See,
e.g., King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108,
109 (CCPA 1974); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010).
Decision: The refusal to register Applicant’s mark for Class 32 on the ground of
likelihood of confusion is affirmed. In due course, the application will be forwarded
for publication with respect to the Class 43 services only.