Luna Distributing

Trademark Trial and Appeal Board

Jan 29, 2020

86658188 (T.T.A.B. Jan. 29, 2020)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: January 29, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Luna Distributing
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Serial No. 86658188
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Luna Distributing, pro se.
John D. Dalier, former Trademark Examining Attorney,1 Law Office 106,
Mary I. Sparrow, Managing Attorney, Law Office 106.
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Before Wellington, Coggins, and Hudis,
Administrative Trademark Judges.

Opinion by Coggins, Administrative Trademark Judge:
Luna Distributing (“Applicant”) seeks registration of the mark LONG BEACH (in
standard characters) on the Supplemental Register for “beer” in International Class
32.2 The Trademark Examining Attorney 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 By the time the Examiner’s Statement (i.e., brief) was filed in this appeal, Mr. Dalier was
an Attorney Advisor, Office of the Deputy Commissioner for Trademark Examination Policy.
2 Application Serial No. 86658188, originally filed June 10, 2015, but with effective filing date
of July 19, 2016, as explained below.
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applied to beer, so resembles the mark (with LONG BEACH BREWING
COMPANY disclaimed) for “beers,” in International Class 32,3 on the Principal
Register as to be likely to cause confusion, to cause mistake, or to deceive. When the
refusal was made final, Applicant requested reconsideration, which was denied.
Applicant then appealed to this Board and requested remand. Upon remand the
Examining Attorney maintained and continued the final refusal, and the appeal was
resumed. We affirm the refusal to register.
I. Procedural Background and Issues
Application Serial No. 86658188 was filed June 10, 2015, seeking registration of
the mark LONG BEACH mark on the Principal Register under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s claim of a bona fide intent
to use the mark in commerce on beer. In response to a primarily geographically
descriptive refusal under Section 2(e)(2) of the Trademark Act, 15 U.S.C. § 1052(e)(2),
Applicant filed an Amendment to Allege Use on July 19, 2016, concurrently with an
amendment to seek registration of the mark on the Supplemental Register; thus, the
effective filing date of the application became July 19, 2016. Trademark Rule 2.75(b),
37 C.F.R. § 2.75(b). See also TRADEMARK MANUAL OF EXAMINING PROCEDURE
(“TMEP”) §§ 206.01 and 1102.03 (Oct. 2018).

3 Registration No. 5505726, issued July 3, 2018. The registration contains the following
statement: “The mark consists of the words ‘Long Beach Brewing Company’ on the
circumf[e]rence encompassing an anagram design consisting of the letters ‘L B B C.’” Color
is not claimed as a feature of the mark.
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Because the effective filing date of the application changed from June 10, 2015 to
July 19, 2016, the Examining Attorney conducted a new search of the Office’s records
for conflicting marks, see TMEP § 206.04, and suspended action on the application
after informing Applicant that Application Serial No. 86747457, filed September 3,
2015, prior to Applicant’s new effective filing date, was a potential bar to registration
of Applicant’s mark LONG BEACH under Section 2(d) of the Trademark Act. That
potential-bar application eventually matured into Registration No. 5505726 for the
mark , and is the registration at issue in this appeal.
The gravamen of Applicant’s appeal is Applicant’s alleged priority. Applicant
argues that it used its mark and filed an application therefor prior to either of
Registrant’s use of the cited mark or the filing of the application therefor. Applicant
claims that it is the “undisputed common law owner of the trademark LONG BEACH
for beer,” that since it is the “prior user of the mark, [Registrant] cannot be damaged
. . . by the registration” of Applicant’s mark, and that the application underlying the
cited registration was filed three months after Applicant’s own application. Brief, pp.
3-4 (4 TTABVUE 7-8).
The Examining Attorney correctly observes that Applicant’s allegation of priority
of use of its mark over Registrant’s use of its own mark constitutes an impermissible
collateral attack on the cited registration. See Examiner’s Brief, 11 TTABVUE 8.
Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b), provides that a certificate of
registration on the Principal Register shall be prima facie evidence of the validity of
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the registration, of the registrant’s ownership of the mark, and of the registrant’s
exclusive right to use the mark in connection with the goods or services identified in
the certificate. During ex parte prosecution, including an ex parte appeal, an
applicant will not be heard on matters that constitute a collateral attack on the cited
registration (e.g., priority of use of a mark over a registrant’s use of the cited
registered mark). In re Dixie Rests., 105 F.3d 1405, 41 USPQ2d 1531, 1534-35 (Fed.
Cir. 1997); In re Jump Designs, LLC, 80 USPQ2d 1370, 1376 (TTAB 2006). See TMEP
§ 1207.01(d)(iv).
Applicant’s argument that its application was originally filed earlier than the
application underlying the cited registration is also unavailing. As the Examining
Attorney correctly points out, see Examiner’s Brief, 11 TTABVUE 8, Trademark Rule
2.75 provides that when an application originally filed under Section 1(b) “is changed
from the Principal Register to the Supplemental Register, the effective filing date of
the application is the date of the filing of the allegation of use . . . .” 37 C.F.R. § 2.75(b).
Thus, the effective filing date of Applicant’s application is July 19, 2016 – a date after
the filing date of Registrant’s underlying application.
The same statutory and procedural rules that Applicant views as having caused
it to suffer an injustice also offered it at least two opportunities to attempt to avoid
the Section 2(d) likelihood of confusion refusal. After the issuance of the action
alerting Applicant that Registrant’s underlying application was a potential bar to
registration of Applicant’s mark, Applicant could have watched the status of
Registrant’s application and instituted an opposition proceeding under Section 13 of
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the Act, 15 U.S.C. § 1063, once Registrant’s mark published for opposition. See
Trademark Rule 2.101(b), 37 C.F.R. § 2.101(b) (“Filing an opposition.”). Alternatively,
after the issuance of the refusal under Section 2(d), Applicant could have instituted
a cancellation proceeding against the cited registration under Section 14 of the Act,
15 U.S.C. § 1064. See Trademark Rule 2.111(b), 37 C.F.R. § 2.111(b) (“Filing a petition
for cancellation.”). In either proceeding Applicant could have asserted its alleged
common law priority of use. If Applicant’s notice of opposition or petition for
cancellation were successful, the cited registration would have been removed as a bar
to Applicant’s application.
After the final disposition of this appeal, Applicant may still seek to cancel the
cited registration, relying upon Applicant’s alleged actual priority of use, if that can
be demonstrated. However, “the owner of the cited registration is not a party to the
appeal now before us, and we can neither cancel nor ignore the registration.” In re
House Beer, LLC, 114 USPQ2d 1073, 1077 (TTAB 2015). Accordingly, no further
consideration will be given to Applicant’s arguments of priority in the context of this
ex parte appeal. We turn, therefore, to the merits of the Examining Attorney’s refusal.
II. Likelihood of Confusion
Section 2(d) of the Trademark Act prohibits registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion or mistake, or to deceive. Our
determination of likelihood of confusion under Section 2(d) is based on an analysis of
all probative facts in the record that are relevant to the likelihood of confusion factors
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set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973) (cited in B&B Hardware, Inc. v. Hargis Ind., Inc., 575 U.S. 138, 113
USPQ2d 2045, 2049 (2015)); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each du Pont factor that is
relevant or for which there is evidence of record. See In re Guild Mortg. Co., 912 F.3d
1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019); M2 Software, Inc. v. M2
Commc’ns., Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark
Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we
have considered each factor for which we have evidence, we focus our analysis on
those factors we find to be relevant.”).
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the goods or services. See In re Chatam Int’l Inc., 380 F.3d
1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); 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.”); see also In re
i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The
likelihood of confusion analysis considers all [du Pont] factors for which there is
record evidence but ‘may focus . . . on dispositive factors, such as similarity of the
marks and relatedness of the goods.”’) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc.,
308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
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A. Identity of the Goods, Channels of Trade, Classes of Customers, and
Conditions of Sale

The goods identified in both Applicant’s application and the cited registration are
beer. Because the goods are identical and there are no restrictions or limitations in
the respective identifications, we presume that the goods travel through the same
channels of trade to the same classes of purchasers. See, e.g., 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 Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1518-19 (TTAB 2016); In re
Aquamar, Inc., 115 USPQ2d 1122, 1126 (TTAB 2015). Moreover, it appears that
Applicant concedes that the goods, channels of trade, and classes of customers are
identical because it does not address these issues in its brief.
In addition, because there is no price limitation in Applicant’s application or the
cited registration we must further presume that the goods include inexpensive beer
that may be purchased on impulse by ordinary consumers. In re Bay State Brewing
Co., 117 USPQ2d 1958, 1960 and n.4 (TTAB 2016) (taking judicial notice that “in the
absence of any evidence to the contrary . . . beer is often relatively inexpensive, subject
to impulse purchase . . . .”). “When products are relatively low-priced and subject to
impulse buying, the likelihood of confusion is increased because purchasers of such
products are held to a lesser standard of purchasing care.” Recot Inc. v. Becton, 214
F.3d 1322, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000); see also Specialty Brands, Inc. v.
Coffee Bean Distribs., Inc., 748 F.2d 669, 223 USPQ 1281, 1282 (Fed. Cir. 1984).
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Based on the identity of the goods, and the presumptive identical trade channels,
classes of purchasers, and low cost, impulse-purchase nature of the goods, the second,
third, and fourth du Pont factors weigh in favor of likelihood of confusion.
B. Similarity or Dissimilarity of the Marks in Their Entireties
We next consider the first du Pont likelihood of confusion factor, which focuses on
“the similarity or dissimilarity of the marks in their entireties as to appearance,
sound, connotation and commercial impression.” Palm Bay Imps., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691
(Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). “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.” Coach Servs. Inc.
v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(quotation omitted). Consumers may not necessarily encounter the marks in close
proximity and must rely upon their recollections thereof over time. In re Mucky Duck
Mustard Co., 6 USPQ2d 1467, 1468 (TTAB 1988). Moreover, where the goods of the
applicant and registrant are identical, as they are in this case, the degree of similarity
between the marks required to support a finding of likelihood of confusion is not as
great as would be required with diverse goods. See Bridgestone Ams. Tire Operations,
LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); Viterra,
101 USPQ2d at 1908; In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260
(Fed. Cir. 2010). The focus is on the recollection of the average purchaser, who
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normally retains a general rather than a specific impression of trademarks. United
Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); In re Binion,
93 USPQ2d 1531, 1534 (TTAB 2009). Here, the average purchaser of Applicant’s
goods includes ordinary adult beer drinkers.
Applicant’s mark is LONG BEACH (in standard characters) while the cited mark
is (with LONG BEACH BREWING COMPANY disclaimed). The marks
are similar in appearance, sound, connotation, and commercial impression to the
extent that Applicant’s mark is wholly contained within Registrant’s mark. While
there is no rule that likelihood of confusion automatically applies where one mark
encompasses another, likelihood of confusion has often been found where the entirety
of one mark is incorporated within another. See, e.g., Mighty Leaf Tea, 94 USPQ2d at
1260 (finding ML similar to ML MARK LEES).
The LONG BEACH portion of the cited mark is a prominent, large-font, top-most
feature of that mark. LONG BEACH has the same meaning for each mark, namely,
the city of Long Beach, California (see, e.g., September 28, 2015 Office Action, TSDR
2), where, according to a press release from the city, “[t]he brewery business is
bubbling and booming . . . .” January 19, 2016 Office Action, TSDR 4. Moreover, with
respect to Applicant’s standard character mark, it could be displayed in a font style
and size comparable to any of the fonts used in the cited mark – including the font
style and size used by Registrant for the LONG BEACH portion of the cited mark.
See Trademark Rule 2.52(a); In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181,
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1186 (TTAB 2018) (“a ‘standard character mark’ . . . may be used in ‘any particular
font style, size, or color.”’). See also Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ
937, 939 (Fed. Cir. 1983) (“[T]he argument concerning a difference in type style is not
viable where one party asserts rights in no particular display. By presenting its mark
merely in a typed drawing, a difference cannot legally be asserted by that party.”).
While Applicant’s mark and the LONG BEACH BREWING COMPANY portion of
the cited mark are both primarily geographically descriptive, and Applicant seeks
registration on the Supplemental Register while Registrant has disclaimed LONG
BEACH BREWING COMPANY, we note that even marks that are deemed “weak” or
merely descriptive are still entitled to protection under Section 2(d) against the
registration by a subsequent user of a similar mark for related goods. See King Candy
Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 1401, 182 USPQ 108, 109 (CCPA
1974); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010).
We acknowledge that the cited mark contains additional matter not included in
Applicant’s mark, namely, the generic wording “brewing company” and the stylized
LBBC monogram which Applicant concedes “does not have a meaning distinct from
the underlying words” LONG BEACH BREWING COMPANY, Brief, p. 7 (4
TTABVUE 11); however, when viewing the marks in their entireties, the substantial
similarities between the marks in connotation and commercial impression due to the
geographic wording LONG BEACH outweigh the differences between the marks in
appearance and sound of the additional matter in the cited mark, particularly when
we take into account the identity of the goods. Accordingly, the first du Pont factor
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relating to the similarity of the marks also weighs in favor of finding a likelihood of
confusion.
C. Conclusion on Likelihood of Confusion
The first, second, third, and fourth factors favor finding a likelihood of confusion.
Neither Applicant nor the Examining Attorney presented evidence or argument in
their briefs as to the other du Pont factors and, accordingly, we treat those factors as
neutral. As the marks at issue are similar, the goods are identical, and we presume
identical trade channels, classes of purchasers, and low cost, impulse-purchase
nature of the goods, we find that Applicant’s mark, used in connection with
Applicant’s goods, so closely resembles the registered mark as to be likely to cause
confusion, mistake or deception as to the source of Applicant’s goods.
III. Decision
The refusal to register Applicant’s mark LONG BEACH is affirmed.