Karben4 Brewing, LLC

Trademark Trial and Appeal Board

Dec 22, 2017

No. 86902390 (T.T.A.B. Dec. 22, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: December 22, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Karben4 Brewing, LLC
_____

Serial No. 86902390
_____

Jason M. Hunt of Boardman & Clark LLP
for Karben4 Brewing, LLC.
Andrea Hack, Trademark Examining Attorney, Law Office 108,
Andrew Lawrence, Managing Attorney.
_____

Before Bergsman, Lykos and Adlin,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
On February 9, 2016, Karben4 Brewing, LLC (“Applicant”) filed an application to
register on the Principal Register the standard character mark SILK SCORPION
for “beer” in International Class 32. 1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground
that Applicant’s mark so resembles the registered mark SCORPION in typed

1 Application Serial No. 86902390, filed under Section 1(a) of the Trademark Act, 15 U.S.C.
§ 1051(a), alleging January 18, 2013, as the date of first use anywhere and in commerce.
Serial No. 86902390
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format2 for “[b]eer; brewed malt-based alcoholic beverage in the nature of beer” in
International Class 323 that when used on or in connection with Applicant’s identified
goods, it is likely to cause confusion or mistake or to deceive.
Applicant appealed, and filed a request for reconsideration which was denied. The
case is now fully briefed. For the reasons set forth below, we affirm the Section 2(d)
refusal.
I. Applicable Law
We base our determination under Section 2(d) on an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E. I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See also In re
Majestic Distilling Co., 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. See In re Chatam Int’l Inc., 380
F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). These factors and others are
discussed below. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78
USPQ2d 1944 (Fed. Cir. 2006) (even within du Pont list, only factors that are
“relevant and of record” need be considered).

2 “Prior to November 2, 2003, ‘standard character’ drawings were known as ‘typed’ drawings.
… A typed mark is the legal equivalent of a standard character mark.” Trademark Manual
of Examining Procedure (“TMEP”) § 807.03(i) (Oct. 2017).
3 Registration No. 2788115; renewed.
Serial No. 86902390
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A. The Goods and Trade Channels

Applicant’s and Registrant’s respective goods must be compared as they are
identified in the application and the cited registration. See Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014); Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990). Obviously, the goods are identical, which Applicant does
not dispute. Because the goods are identical and unrestricted as to trade channels,
we must also presume that they travel in the same ordinary trade and distribution
channels and will be marketed to the same potential consumers. See In re Viterra
Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was
no evidence regarding channels of trade and classes of consumers, the Board was
entitled to rely on this legal presumption in determining likelihood of confusion); In
re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where
there are legally identical goods, the channels of trade and classes of purchasers are
considered to be the same); American Lebanese Syrian Associated Charities Inc. v.
Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011). Accordingly,
these du Pont factors both weigh heavily in favor of finding a likelihood of confusion.
B. The Number and Nature of Similar Marks in Use on Similar Goods
Next we direct our attention to, the number and nature of similar marks in use
on similar goods. In an ex parte appeal, “[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
Serial No. 86902390
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different such marks on the bases of minute distinctions.” Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689,
1694 (Fed. Cir. 2005); 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” but rather “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 1676 (internal citations omitted).
“In determining the strength of a mark, we consider both its inherent strength based
on the nature of the mark itself and its commercial strength, based on the
marketplace recognition value of the mark.” American Lebanese Syrian Associated
Charities, 101 USPQ2d at 1028 (citing Tea Board of India v. Republic of Tea Inc., 80
USPQ2d 1881, 1899 (TTAB 2006)) and McCarthy on Trademarks and Unfair
Competition § 11:83 (4th ed. 2011)
Applicant argues that the cited mark SCORPION is entitled to a narrow scope of
protection because the consuming public is exposed to third-party use of similar
marks on similar goods. In support thereof, Applicant has submitted the following
evidence:4

4 In the absence of evidence of U.S. consumer exposure, we have not considered website
excerpts about New Lion Brewery, a local brewery located in Totnes, United Kingdom
Serial No. 86902390
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Trademark Goods Owner and
Location
Citation to Record5
JACK
O’SCORPION
PUMPKIN

Beer

Scorpion Brewing
(Owings, Maryland)

www.scorpionbrewing .com

Nov. 1, 2016 Response, Ex.
D at 31-35.

ORANGE
SCORPION
Beer CIB Brewery
(location not
indicated in record)
cibbrewery.com

Nov. 1, 2016 Response, Ex.
F at 42-45.
GHOST
SCORPION
Limited
edition beer
Elevator Brewing
Company
(location not in the
record)

elevatorbrewery.com

Nov. 1, 2016 Response, Ex.
G at 46-47.
MORTAL
COMBAT X
(housemark)
SCORPION
IMPERIAL
STOUT
Beer

Sound Brewery

(Poulsbo,
Washington)
www.beerstreetjournal.com

Nov. 1, 2016 Response, Ex.
H at 48-60.

According to the record, JACK O’SCORPION PUMPKIN is sold only on tap at the
premises of Scorpion Brewing, a microbrewer located in Owings, Maryland. Likewise,

showing a “collaborative brew” offered under the trademark SCORPION IPA created in
conjunction with South Devon Chili Farm just outside of Totnes. See In re Kysela Pere et Fils
Ltd., 98 USPQ2d 1261, 1265 n.9 (TTAB 2011) (no basis to conclude U.S. consumers exposed
to website for Australian brewery; those webpages not considered).
Similarly, we have not considered excerpts from the United Kingdom website
CanMuseum.com (a website for beer can collectors) depicting a beer can displaying the mark
SCORPION issued in Great Britain in the year 1998. The website shows a total membership
of 1,045 individuals from 105 countries. Aside from the fact that we cannot conclude that U.S.
consumer exposure is sufficiently widespread, evidence from a beer can collectable website
does not constitute evidence of third-party use of a mark in U.S. commerce for “beer.”
5 Citations are to the Trademark Document and Status Retrieval (TSDR) database.
Serial No. 86902390
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ORANGE SCORPION appears to be sold only at the premises of CIB Brewery; there
is nothing in the record to suggest that this beer is widely distributed. The record
shows that Elevator Brewing Company offers its GHOST SCORPION beer as a
limited edition brew. The only beer offered through a wide distribution network,
SCORPION IMPERIAL STOUT, is sold under the prominently displayed house mark
MORTAL COMBAT X. Thus, based on the record before us, we cannot conclude that
consumers have been exposed to a “plethora” of SCORPION or SCORPION formative
marks such that they are able to make minute distinctions amongst different brands
of beer. Moreover, even if the record demonstrated that all of the aforementioned
brands were widely distributed, four instances of third-party use is insufficient for us
to conclude that SCORPION is weak in connection with beer.
In addition, Applicant made of record the following third-party registrations for
distilled spirits or various types thereof:6
TM/RN/Disclaimer Register Goods Owner
SCORPION
MEZCAL (MEZCAL
disclaimed)

RN: 3841502
Principal
Register

“Alcoholic beverages,
namely, Mezcal” in
International Class 33

Douglas Kohlberg
French
(individual,
U.S.A)

SKORPPIO

RN: 3957164
Principal
Register
“Alcoholic beverages,
namely, vodka, tequila,
rum, brandy, whiskey,
scotch, gin” in
International Class 33
Rodrigo Rodriguez
Islas
(individual,
Mexico)

6 Applicant also made of record Application Serial No. 77946053 which we have not
considered. Third-party applications, as opposed to registrations, have no probative value
other than as evidence that the applications were filed. In re Mr. Recipe, LLC, 118 USPQ2d
1084, 1089 (TTAB 2016).
Serial No. 86902390
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SCORPION and
design

RN: 4340359
Principal
Register
“Alcoholic beverages,
namely, Distilled Spirits”
in International Class 33
Douglas Kohlberg
French
(individual,
U.S.A)
ESCORPION

The English
translation of the
word
“ESCORPION” in
the mark is
“scorpion”.

RN: 5120883
Principal
Register

“Alcoholic beverages,
namely, mezcal” in
International Class 33
Douglas Kohlberg
French
(individual,
U.S.A)

May 4, 2017 Request for Reconsideration, 5 TTABVUE 36-43. Active third-party
registrations may be relevant to show that a mark or a portion of a mark is
descriptive, suggestive, or so commonly used that the public will look to other
elements to distinguish the source of the goods. See, e.g., Jack Wolfskin, supra; Juice
Generation, 115 USPQ2d at 1674-75; In re Hartz Hotel Servs., Inc., 102 USPQ2d 1150,
1153-54 (TTAB 2012); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In
re Dayco Products-Eaglemotive Inc., 9 USPQ2d 1910, 1911-12 (TTAB 1988); Plus
Prods. v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983). In this case, three
of the four third-party registrations are owned by the same individual. Even
assuming that that the distilled spirits listed above are closely related to beer, we
cannot find based on this very limited number that consumers will look to the SILK
element of Applicant’s mark to distinguish the source of the goods. Compare Jack
Wolfskin, 116 USPQ2d at 1136 (“extensive” evidence not only of third-party
Serial No. 86902390
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registrations but also “of these marks being used in internet commerce” for the
relevant goods); Juice Generation, 115 USPQ2d at 1671 (uncontradicted testimony of
“a considerable number” of third party uses of similar marks, along with third-party
registrations).7
Thus, the evidence before us falls short of a showing that would allow us to
conclude that SCORPION is diluted for beer. That being said, according to the record,
two of the beer brands noted above, ORANGE SCORPION and GHOST SCORPION
incorporate the ‘Trinidad Scorpion Chile” as a key ingredient of their beer. Nov. 1,
2016 Response, Ex. F at 42-45 and Ex. G at 46-47. We cannot draw an inference,
however, based on two instances of the use of this particular type of chili in beer that
the practice is so extensive as to conclude that consumers will perceive SCORPION
as commercially or conceptually weak. Accordingly, we deem this du Pont factor
neutral.
C. The Marks
Lastly, we consider similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression. See Palm Bay, 73
USPQ2d at 1692. “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

7 Applicant also made of record two third-party registrations, each owned by the same entity,
to show that the term SILK is weak in connection with beer. See Reg. Nos. 4403098 and
4403103 for the marks SILK PORTER and CAFÉ SILK PORTER submitted with Nov.1, 2016
Response. However, insofar as SILK is not a component of the cited registration, such
evidence does nothing to prove that Registrant’s mark deserves less protection.
Serial No. 86902390
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connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). Our analysis
cannot be predicated on dissecting the marks into their various components; that is,
the decision must be based on the entire marks, not just part of the marks. In re Nat’l
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). See also Franklin
Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It
is axiomatic that a mark should not be dissected and considered piecemeal; rather, it
must be considered as a whole in determining likelihood of confusion.”). However, in
reaching a conclusion on the issue of likelihood of confusion, 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 a consideration of the
marks in their entireties. In re Nat’l Data Corp., 224 USPQ at 751. See also Stone
Lion, 110 USPQ2d at 1161. Finally, it is well-settled that where, as here, the goods
are identical, less similarity between the marks is needed for us to find a likelihood
of confusion. See, e.g., Viterra, 101 USPQ2d at 1908; Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (“When
marks would appear on virtually identical goods or services, the degree of similarity
necessary to support a conclusion of likely confusion declines.”).
Applicant’s mark SILK SCORPION incorporates the entirety of Registrant’s
mark SCORPION, making it similar in sound and appearance. In the context of the
goods, “scorpion” suggests a beer that is spicy or hot or perhaps even brewed with the
Serial No. 86902390
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“Trinidad Scorpion Chile” as an ingredient.8 Thus, consumers would likely perceive
both marks as having virtually the same meaning and commercial impression. The
addition of the adjective “silk” in Applicant’s mark is merely ancillary to the
connotation and commercial impression created by the term “scorpion” and could
perhaps be suggestive of a beer with a spicy yet smooth taste. In that regard,
consumers are likely to perceive Applicant’s marks as an extension of Registrant’s
beer product line. While we are cognizant of the principle that prospective consumers
are more likely to focus on the first portion or word in a trademark (see Palm Bay, 73
USPQ2d at 1692), it is likewise true that likelihood of confusion is not necessarily
avoided between otherwise confusingly similar marks merely by adding other
distinctive matter. If an important portion of both marks is the same, then the marks
may be confusingly similar notwithstanding peripheral differences. See. e.g., Stone
Lion, 110 USPQ2d at 1161 (affirming Board’s finding that confusion likely where
applicant’s mark STONE LION CAPITAL incorporated the entirety of the registered
marks LION CAPITAL and LION); Hewlett-Packard Co. v. Packard Press, Inc., 281
F.3d 1261, 1266, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (finding that, even though
applicant’s mark PACKARD TECHNOLOGIES, with “TECHNOLOGIES”
disclaimed, does not incorporate every feature of opposer’s HEWLETT PACKARD
marks, a similar overall commercial impression is created); In re Toshiba Med. Sys.
Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (holding VANTAGE TITAN for MRI

8 Insofar as the cited mark is registered on the Principal Register, we cannot draw the
inference that it is merely descriptive within the meaning of Trademark Act Section 2(e)(1).
To do so would be an improper collateral attack.
Serial No. 86902390
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diagnostic apparatus, and TITAN for medical ultrasound device, likely to cause
confusion, noting that the marks are more similar than they are different and that
the addition of applicant’s “product mark,” VANTAGE, to the registered mark would
not avoid confusion); In re U.S. Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (holding
CAREER IMAGE (stylized) for clothing and retail women's clothing store services,
and CREST CAREER IMAGES (stylized) for uniforms, likely to cause confusion,
noting that CAREER IMAGE would be perceived by consumers as a shortened form
of CREST CAREER IMAGES). Such is the case here where the adjective SILK merely
modifies the dominant element SCORPION.
Applicant argues that when considered in its entirety, its applied-for mark SILK
SCORPION conveys a “significantly different visual, auditory, connotative and
commercial impression” than the cited mark SCORPION. Brief, p. 15; 7 TTABVUE
16. Applicant points to the obvious differences in sight and sound due to the presence
of the initial term SILK in its mark. Applicant emphasizes the different alliterative
quality due to the reoccurring “s” sound in its mark contrasted with the single “s”
sound in the cited mark. Applicant also contends that its mark projects a different
connotation due to the incongruity of juxtaposing “silk” which means something
“composed of or similar to the fabric of silk” (American Heritage Dictionary,
www.ahdictioinary.com attached to May 7, 2017 Denial of Request for
Reconsideration, TSDR p. 3) and “scorpion,” an arachnid with “an elongated body and
narrow segmented tail bearing a venomous stinger at the tip.” Merriam-Webster.com
Serial No. 86902390
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(definition of “scorpion”) attached to Nov. 1, 2016 Response to Office Action; TSDR at
pp. 8-9.
We acknowledge the specific differences in sound and appearance pointed out by
Applicant. These differences, however, are outweighed by the similarities. Moreover,
Applicant’s argument that its mark is incongruous is unconvincing for the reasons
stated above. Thus, keeping in mind that the involved goods are identical, when
comparing the marks overall, they are similar in sight, sound, connotation and
commercial impression. This du Pont factor therefore also weighs in favor of finding
a likelihood of confusion.
II. Conclusion
After considering all of the evidence of record and arguments pertaining to the
du Pont likelihood of confusion factors, the first, second and third du Pont factors
discussed above favor a finding of likelihood of confusion, and the sixth factor is
neutral. As noted above, the goods and trade channels are identical, and the marks
SILK SCORPION and SCORPION overall are similar in sight, sound, connotation
and commercial impression, despite the addition of the modifying adjective “silk.” We
treat as neutral any du Pont factors for which there is no evidence or argument of
record. Accordingly, we find that there is a likelihood of confusion between Applicant’s
standard character mark SILK SCORPION for “beer” in International Class 32, and
Registrant’s mark SCORPION in typed format for “[b]eer; brewed malt-based
alcoholic beverage in the nature of beer” in International Class 32.
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.