Lakefront Brewery, Inc.

Trademark Trial and Appeal Board

Jan 4, 2018

No. 86879642 (T.T.A.B. Jan. 4, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: January 4, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Lakefront Brewery, Inc.
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Serial No. 86879642

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Joseph A. Kromholz and Keith L. Reese-Kelley of Ryan Kromholz & Manion, S.C.,
for Lakefront Brewery, Inc.

Rupali Shah, Trademark Examining Attorney, Law Office 125,
Mark Pilaro, Managing Attorney.
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Before Zervas, Wellington and Greenbaum,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Lakefront Brewery, Inc. (“Applicant”) seeks registration on the Principal Register
of the following mark for “beer” in International Class 32:1

1 Application Serial No. 86879642, filed on January 19, 2016, pursuant to Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), claiming first use and first use in commerce in 1987.
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The description of the mark statement in the application provides that “the mark
consists of ‘L’ and ‘B’ with a beer stein” and color is not claimed as a feature of the
mark. Applicant claims ownership of Registration No. 4741665 (registered May 26,
2015) for the following mark:2

The Examining Attorney refused registration of Applicant’s mark under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on Registration No. 3767317
(registered March 30, 2010, Section 8 affidavit accepted and Section 15 affidavit
acknowledged) for the standard character mark LB. BREWING CO. for goods and
services including “beer, ale and lager” in International Class 32. The wording
BREWING CO. has been disclaimed.

2 The mark is described as consisting of “a broken oval containing the words ‘Lakefront
Brewery, Inc.’, ‘Milwaukee Wisconsin’ and ‘Trade Mark’ surrounding the letter ‘L’ and the
letter ‘B’ with a beer mug between the letters ‘L’ and ‘B’. Horizontal lines appear both above
and below the words ‘Milwaukee’ and ‘Wisconsin.’” Color is not claimed as a feature of the
mark.
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After the Examining Attorney made the refusal final, Applicant appealed to this
Board and requested reconsideration. On remand, the Examining Attorney denied
the request for reconsideration. The appeal resumed and both Applicant and the
Examining Attorney filed briefs. We affirm the refusal to register.
I. Preliminary Issue
In its reply brief, Applicant for the first time requests a concurrent use
registration (“Applicant’s mark should be allowed, or in the alternative, Applicant’s
mark should be considered for concurrent registration.”)3 To the extent that the final
clause in the final sentence in Applicant’s final brief is a “motion” to amend its
application to seek a concurrent use registration, we deny the “motion.” First, the
Board generally does not consider “motions” embedded in other filings. Second, a
concurrent use proceeding before the Board may be generated only by filing an
application with the USPTO under Trademark Act § 1(a), 15 U.S.C. § 1051(a), for
registration as a lawful concurrent user. Third, Applicant’s application does not
contain the elements of a proper concurrent use application. See id.; Trademark Rule
2.42, 2.73, 37 C.F.R. § 2.42, 2.73; TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE (“TBMP”) § 1103 (June 2017).
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

3 10 TTABVUE 5.
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a likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973); 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); see also In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014).
A. The Goods, Trade Channels and Purchasers
The first du Pont factor we consider is the relationship between the goods, as they
are identified in the application and cited registration. See Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014) (goods as identified in involved application and cited registration compared);
Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990). The goods overlap in that both identify “beer.”
Because the identifications of goods in the application and cited registration
overlap and are unrestricted as to trade channels and purchasers, we must presume
that Applicant’s and registrant’s goods travel in the same ordinary trade and
distribution channels and will be marketed to the same potential consumers. 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
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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); Genesco Inc. v. Martz, 66 USPQ2d 1260,
1268 (TTAB 2003) (finding goods, which were in part identical and in part related, as
being offered and sold to the same classes of purchasers and channels of trade). Beer-
drinking members of the general public are purchasers of both Applicant’s and
registrant’s goods.
We therefore find that the du Pont factors regarding the similarity of the goods,
trade channels and purchasers weigh heavily in favor of a likelihood of confusion.
Applicant concedes that the goods and trade channels favor a finding of likelihood of
confusion (“Applicant does not dispute that both the Applicant and the Registered
Mark's goods and channels of trades are similar. The crux of this appeal centers on
the dissimilarity of the marks.”).4
B. The Marks
We compare the marks for similarities and dissimilarities in appearance, sound,
connotation and commercial impression. Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1692. The test is not whether the
marks can be distinguished when subjected to a side-by-side comparison, but rather
whether the marks are sufficiently similar in terms of their overall commercial

4 Applicant’s brief at 3, 7 TTABVUE 8.
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impression that confusion as to the source of the goods offered under the respective
marks is likely to result. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1721 (Fed. Cir. 2012). Under actual marketing conditions,
consumers do not necessarily have the luxury of making side-by-side comparisons
between marks, and must rely upon their imperfect recollections. Dassler KG v. Roller
Derby Skate Corp., 206 USPQ 255, 259 (TTAB 1980). The focus is on the recollection
of the average purchaser, who normally retains a general rather than a specific
impression of trademarks. In re Assoc. of the United States Army, 85 USPQ2d 1264
(TTAB 2007); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, the 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. Vv. 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.”). On the other hand, different features may be
analyzed to determine whether the marks are similar. Joel Gott Wines LLC v.
Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013) (citing Price Candy Co.
v. Gold Medal Candy Corp., 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955)). In fact,
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
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rests on a consideration of the marks in their entireties. In re Nat’l Data Corp., 224
USPQ at 751.
The marks differ in that registrant’s mark does not include the same or similar
design element, and includes BREWING CO., in addition to the shared term “LB” or
“LB.” in registrant’s mark. The marks are similar, however, because Applicant’s and
registrant’s marks contain the designation “LB”, which is the dominant term in
registrant’s mark and the only term in Applicant’s mark. LB is the first term in
registrant’s mark and the first term in a mark is often its dominant portion. 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 Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1692; Century 21 Real Estate Corp.
v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). Also,
the wording “BREWING CO.” in the registrant’s mark does not serve to distinguish
the marks because this wording, which has been disclaimed, is at a minimum highly
descriptive of registrant, indicating that registrant is a brewery. Matter that is
descriptive of or generic for a party's goods is typically less significant or less
dominant in relation to other wording in a mark. See In re Dixie Rests., Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997). With regard to the period after “LB”
in registrant’s mark, it has no meaningful impact on purchasers. See TRADEMARK
MANUAL OF EXAMINING PROCEDURE (“TMEP”) 807.14(c) (October 2017)
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(”[p]unctuation, such as … periods, commas, and exclamation marks, generally does
not significantly alter the commercial impression of the mark.”).
The dominant term in registrant’s mark is identical in sound to Applicant’s mark
because the other elements of Applicant’s mark will not be articulated. (Applicant has
not contended otherwise in its briefs.) Similarity in any one of the elements of sound,
appearance, meaning, or commercial impression is sufficient to support a
determination of likelihood of confusion. See Krim-Ko Corp. v. The Coca-Cola Co., 390
F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either
form, spelling or sound alone is likely to cause confusion”); In re White Swan Ltd., 8
USPQ2d 1534, 1535 (TTAB 1988) (“In appropriate cases, a finding of similarity as to
any one factor (sight, sound or meaning) alone ‘may be sufficient to support a holding
that the marks are confusingly similar’”) (citations omitted).
As for the appearance of the marks, Applicant’s mark includes a frothy beer stein
positioned within the letter “L” and linked to the letter “B.” Registrant’s mark
includes the terms BREWING CO. in addition to “LB.” The design does not
distinguish Applicant’s and registrant’s marks because the letters “LB” are a major
component of the design, and the frothy beer stein is simply a slightly stylized
pictorial representation of Applicant’s goods, i.e., beer. Applicant has pointed to legal
precedent where the design of a mark has been considered to be dominant and
distinguishing two marks from one another; Applicant, however, has not indicated
why in the present case, the design will distinguish the marks when the dominant
portion of the marks is the lettering. Indeed, Applicant acknowledges that “it is often
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true that the words in a composite word and design mark are considered to be
dominant … .”5
For the reasons stated above, and particularly because the primary indicator of
source in both marks is the lettering “LB,” we find the overall commercial impression
of the marks to be similar.
The du Pont factor regarding the similarity of the marks therefore favors a finding
of likelihood of confusion.
III. Conclusion
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. The goods at issue
are identical in part, and would move through identical trade channels to the same
classes of customers. When identical goods are at issue, the degree of similarity of the
marks that is necessary to find a likelihood of confusion is not as great as where the
goods are disparate. Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at
1721; Century 21 Real Estate Corp. v. Century Life of Am., 23 USPQ2d at 1700.
Applicant’s and registrant’s marks are similar in sound and commercial impression,
and Applicant has not established any substantial weakness in registrant’s mark as
a whole. We therefore find that Applicant’s LB and design mark for beer is likely to
cause confusion with the mark LB. BREWING CO. for “beer, ale and lager.”
Decision: The refusal to register under Section 2(d) is affirmed.

5 Applicant’s brief at 6, 7 TTABVUE 11.