MadTree Brewing, LLC

Trademark Trial and Appeal Board

Nov 28, 2017

No. 86608588 (T.T.A.B. Nov. 28, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: November 28, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re MadTree Brewing, LLC
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Serial No. 86608588
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April L. Besl and Leanthony Edwards Jr. of Dinsmore & Shohl LLP,
for MadTree Brewing, LLC.
Alicia Collins Edwards, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
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Before Kuhlke, Ritchie and Gorowitz,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
MadTree Brewing, LLC (“Applicant”) seeks registration on the Principal Register
of the mark shown below for “beer,” in International Class 32.1

1 Application Serial No. 86608588 was filed on April 24, 2015, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051, based upon Applicant’s allegation of a bona fide intention
to use the mark in commerce.
Serial No. 86608588
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Color is not claimed as a feature of the mark but the application includes the
following description of the mark:2
The mark consists of the literal elements “BLACK
FOREST MILK STOUT BREWED WITH LACTOSE
MADTREE BREWING CO. CINCINNATI, OHIO” in an
oval. The background design incorporates three trees
without leaves and a moon with a face overlooking the
same. Fog appears with the trees and moon. The literal
element “BLACK” sits atop “FOREST” which sits atop
“MILK STOUT BREWED” which sits atop “WITH
LACTOSE” which sits atop “MADTREE BREWING CO.”
which sits atop “CINCINNATI, OHIO”.
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark, when used in connection with the identified goods, so resembles
the mark shown below registered on the Principal Register for “Brewed malt-based

2 Applicant also disclaimed the wording “MILK STOUT BREWED WITH LACTOSE,”
“CINCINNATI, OHIO” and the distinctive matter “BLACK FOREST,” as discussed infra.
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alcoholic beverage in the nature of a beer,” in International Class 32,3 as to be likely
to cause confusion, mistake or deception.

When the refusal was made final, Applicant appealed and requested
reconsideration. Upon the denial of the request for reconsideration, the appeal was
resumed and briefs were filed. We affirm the refusal to register.
Likelihood of Confusion
When the question is likelihood of confusion, we analyze the facts as they relate
to the relevant factors set out in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973) (“du Pont”) (cited in B&B Hardware, Inc. v. Hargis
Ind., Inc., 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015). See also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). Even within the du
Pont list, only factors that are “relevant and of record” need be considered. M2
Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir.

3 Registration No. 4556378, issued on June 24, 2014. The wording “SINCE 2005,”
“BREWERY” and “READING, PENNA.” is disclaimed. In addition, the colors “green, black,
and white [are] claimed as a feature of the mark.”
Serial No. 86608588
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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
similarities between the goods. See In re Chatam Int’l Inc., 380 F.2d 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 DuPont 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., 303 F.3d 1156, 64 USPQ2d 1375,
1380 (Fed. Cir. 2002).
Similarity of the Goods/Channels of Trade/Consumers
With regard to the goods, channels of trade and classes of consumers, we must
make our determinations based on 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); Hewlett-Packard Co. v. Packard
Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v.
Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
“This factor considers whether ‘the consuming public may perceive [the respective
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goods of the parties] as related enough to cause confusion about the source or origin
of the goods and services.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082,
1086 (Fed. Cir. 2014) (quoting Hewlett-Packard Co. v. Packard Press Inc., 62 USPQ2d
at 1004). Applicant’s “beer” encompasses Registrant’s “Brewed malt-based alcoholic
beverage in the nature of a beer,” thus the goods are legally identical.
Considering the channels of trade and classes of purchasers, because the goods
are legally identical and there are no limitations as to channels of trade or classes of
purchasers in either the application or cited registration, we must presume that
Applicant’s and Registrant’s goods will be sold in the same channels of trade and will
be bought by the same classes of purchasers. 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). See also Hewlett-Packard
Co. v. Packard Press Inc., 62 USPQ2d 1001; Canadian Imperial Bank v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Genesco Inc. v. Martz, 66
USPQ2d 1260, 1268 (TTAB 2003); In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB
1994).
Further, because we must consider the goods as they are identified, Applicant’s
arguments that Registrant is a home brewer located in Reading, Pennsylvania and
Applicant is located in Cincinnati, Ohio (and the respective locations are reflected in
the marks), are not persuasive. Their respective actual uses and marketing are not
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reflected in the identification of goods in the application or cited registration.4 The
reference to geographic locations in the marks may signal one location of the source
of the goods, but does not exclude the possibility of other source locations or markets
for the goods; in addition, as discussed below, the geographic locations are not as
prominent and are less likely to be retained by the consumer viewing the marks.
The argument that the consumers of craft beer are more sophisticated also fails.
Because the identifications refer to all types of beer, this encompasses the general
public as well as the possibly more sophisticated connoisseur of craft beer and we
must make our determination based on the least sophisticated consumer. Stone Lion
Capital Partners, LP v. Lion Capital LLP, 110 USPQ2d at 1163 (decision must be
based “on the least sophisticated potential purchasers.”) (quoting Gen. Mills, Inc. v.
Fage Dairy Proc. Indus. S.A., 100 USPQ2d 1584, 1600 (TTAB 2011), judgment set
aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (non-precedential)). As to the
general beer consuming public, we note that beer may be an impulse purchase. In re
Bay State Brewing Co., 117 USPQ2d 1958, 1960 n.4 (TTAB 2017). Furthermore, even
if it is not, the sophistication of the general consumer is not very high. With regard
to the more discerning craft beer consumers, while we may infer a higher level of
scrutiny in their purchasing, there is not sufficient evidence of record upon which to
make a determination that this factor would outweigh the other du Pont factors.

4 We note that Applicant does not seek a Concurrent Use application with an excepted user,
but rather seeks nation-wide rights, while the cited registration also includes nation-wide
rights.
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Moreover, even sophisticated buyers are not immune from confusion. In re Decombe,
9 USPQ2d 1812 (TTAB 1988).
In view thereof, these du Pont factors favor a finding of likelihood of confusion.
Similarity/Dissimilarity of the Marks
Under this factor, we compare Applicant’s and Registrant’s marks “in their
entireties as to appearance, sound, connotation and commercial impression.” Palm
Bay Imports 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 test
is not whether the marks can be distinguished in a side-by-side comparison, but
rather whether the marks are sufficiently similar in terms of their overall commercial
impression that confusion as to the source of the goods and/or services offered under
the respective marks is likely to result. Midwestern Pet Foods, Inc. v. Societe des
Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012).
Further, the marks “‘must be considered … in light of the fallibility of memory ….’”
In re St. Helena Hosp., 113 USPQ2d at 1085 (quoting San Fernando Elec. Mfg. Co. v.
JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1 (CCPA 1977)). The proper
focus is on the recollection of the average customer, who retains a general rather than
specific impression of the marks. Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438
F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434,
1438 (TTAB 2012); Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335,
344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB
1975). Because the goods are beer without any restrictions or limitations as to price
Serial No. 86608588
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point or classes of consumers, as discussed above, the average customer is an ordinary
consumer of the respective goods.
Finally, when the goods are identical or virtually identical, the degree of similarity
between the marks necessary to support a determination that confusion is likely
declines. See Bridgestone Americas Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330,
1337, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); In re Viterra Inc., 101 USPQ2d at
1908; In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir.
2010); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 877, 23
USPQ2d 1698, 1701 (Fed. Cir. 1992); In re Max Capital Grp. Ltd., 93 USPQ2d 1243,
1248 (TTAB 2010); In re Ginc UK Ltd., 90 USPQ2d 1472, 1477 (TTAB 2007).
Looking at the marks in their entireties, the shared term BLACK FOREST stands
out as the most prominent element and conveying the strongest commercial
impression within each mark. Generally, it is “the verbal portion of a word and design
mark [that] likely will be the dominant portion.” In re Viterra, 101 USPQ2d at 1911.
See also CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983)
(“[T]he verbal portion of the mark is the one most likely to indicate the origin of the
goods to which it is affixed.”). This may be true even where the literal portion has
been disclaimed. In re Viterra, 101 USPQ2d at 1911 (citing Giant Food, Inc. v.
Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983) (finding
that the term “GIANT” was the dominant portion of a mark consisting of the words
GIANT HAMBURGERS with a large background design, even though the applicant
disclaimed “GIANT HAMBURGERS.”). The designs in these marks do not overwhelm
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or detract from the wording BLACK FOREST, but rather serve as a backdrop
highlighting the wording BLACK FOREST. In the case of Applicant’s mark, it clearly
reinforces the meaning of a forest. In Registrant’s mark the design with the claimed
green color also evokes a forest or natural geographic location. In fact, according to
Registrant’s website the green design is a depiction of a hiking trail in a local park.
March 20, 2017 Request for Reconsideration at 13.
Relying on Parfums De Coeur, Ltd. v. Lazarus, 83 USPQ2d 1012 (TTAB 2007)
(BODYMAN and design for television series not confusingly similar to BOD MAN for
fragrances), Applicant argues that in view of “the design elements present in both
Applicant[’s] and Registrant’s marks, the term ‘Black Forest’ couldn’t possibly be the
dominant portion of both marks.” 7 TTABVUE 12. In Parfums the Board found that:
[T]he design is prominently displayed, being the largest
element in the mark, and at the top of the mark. Further,
the design is of a grotesque image—a torso that acts as a
face, with the nipples being eyes and the navel acting as a
mouth. As a result, the design is very noticeable and has
the effect of catching the eye and engaging the viewer
before the viewer looks at the word BODYMAN. Because of
the strong visual impact of the design element, which also
includes a cape with the initials BM, reminiscent of a super
hero costume, we find that in appearance applicant’s mark
BM BODYMAN and design differs from opposer’s marks
BOD and BOD MAN.
Id. at 1016.
In addition, the Board noted that:
[I]t must be remembered that applicant’s mark includes a
prominent design element, and it is intended to be used for
an animated television series. Because television is a
visual medium, the “consumers” of applicant’s show, i.e.,
the viewers, will see the mark, and see the prominent
design element. Even if they recommend the program to
Serial No. 86608588
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others by word of mouth, it will be a recommendation for a
television program, not for a fragrance product. As for
those consumers who have no familiarity with applicant’s
mark other than hearing it referred to as the name of an
animated television series, if they encounter opposer’s
fragrance products sold under the mark BOD or BOD
MAN, because of the differences between men’s fragrances
and an animated cartoon series, as discussed below, they
would have no basis to associate the fragrance products
with the television series.
Id. at 1016-17.
As discussed above, in the application before us the design elements serve as
background and do not catch the eye in such a strong manner. Moreover, this case
does not involve a television series; rather, the goods are legally identical and are of
a type that would be called for by name.
We also find that BLACK FOREST is the most dominant literal element. The
additional descriptive wording in each mark is less significant and does not serve to
distinguish the marks. The remaining literal elements consist of the slogan
PRECISION FOR THE CRAFT encircling the term BLACK FOREST in Registrant’s
mark and the house mark MADTREE in Applicant’s mark. With regard to the
wording PRECISION FOR THE CRAFT, its placement as part of a circle that frames
the term BLACK FOREST serves to focus the eye on the prominent element BLACK
FOREST and is a somewhat suggestive phrase suggesting excellence in the product.
Applicant argues that its “well known” house mark MADTREE is the dominant
part of its mark and potential consumers would focus on that portion of the mark,
rather than BLACK FOREST because it is geographically descriptive of Registrant’s
goods and merely descriptive of Applicant’s goods. 7 TTABVUE 8, 16. It is well
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established that likely confusion is not necessarily avoided by the addition of a house
mark to otherwise confusingly similar marks. In re Apparel Ventures, Inc., 229 USPQ
225, 226 (TTAB 1986) (holding applicant’s mark, SPARKS BY SASSAFRAS
(stylized), for clothing, and registrant’s mark, SPARKS (stylized), for footwear, likely
to cause confusion, noting that “[t]hose already familiar with registrant’s use of its
mark in connection with its goods, upon encountering applicant’s mark on applicant’s
goods, could easily assume that ‘sassafras’ is some sort of house mark that may be
used with only some of the ‘SPARKS’ goods”). See also In re Fiesta Palms LLC, 85
USPQ2d 1360, 1366 (TTAB 2007) (CLUB PALMS MVP for casino services
confusingly similar to MVP for casino services). While the addition of MADTREE to
Applicant’s mark is a difference between the marks, its addition to the mark “does
not result in marks that are dissimilar for likelihood of confusion purposes.” Id. at
1366.
Applicant relies on Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313
(TTAB 2005) (NORTON MCNAUGHTON ESSENTIALS for clothing not confusingly
similar to ESSENTIALS for clothing) to support its position that the house mark
MADTREE is the dominant element in its mark. In that case, however, the record
(including, inter alia, a dictionary definition, third-party registrations, and third-
party uses of the term ESSENTIALS with clothing) established that the term
ESSENTIALS was highly suggestive for clothing. As discussed below, this record does
not establish that the term BLACK FOREST is either geographically or merely
descriptive.
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The term BLACK FOREST in Registrant’s mark is not disclaimed or registered
under Section 2(f), based on acquired distinctiveness. Under Section 7(b) of the
Trademark Act, 15 U.S.C. §1051(b), a certificate of registration on the Principal
Register shall be prima facie evidence of the validity of the registration, of the
registrant’s ownership of the mark, and of the registrant’s exclusive right to use the
mark in commerce in connection with the goods specified in the certificate. During ex
parte prosecution, an applicant will not be heard on matters that constitute a
collateral attack on the cited registration. See In re Dixie Rests., Inc., 105 F.3d 1405,
1408, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997); In re Fiesta Palms, LLC, 85
USPQ2d at 1363; In re Peebles Inc. 23 USPQ2d 1795, 1797 n.5 (TTAB 1992); In re
Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2014-15 (TTAB 1988). Applicant’s
argument that the term BLACK FOREST is geographically descriptive in
Registrant’s mark is a collateral attack on the cited registration to the extent it
suggests the term BLACK FOREST is not distinctive. We may consider arguments
concerning the scope of protection to be accorded a particular term in a mark.
However, even if we consider whether the term BLACK FOREST suggests a
geographic location, the purported location is a hiking trail in Pennsylvania. March
20, 2017 Request for Reconsideration at 13. This registration is national in scope and
there is no evidence to support a finding that consumers, other than locals, would be
aware of this geographic connection. Moreover, to the extent such a connection would
be made, it could also have that same meaning in Applicant’s mark.
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As to its mark, Applicant argues that BLACK FOREST is descriptive of a type of
beer. In this case, the Examining Attorney required a disclaimer for the term BLACK
FOREST based on an excerpt from a website that has the following text:
What type of beer is Black Forest Amber (Black Forest
Brew Haus)?
According to our research engine: Black Forest Amber is
a(n) German Lager and originates from United States. It
has a(n) Red color. …
Facts about Black Forest Amber (Black Forest Brew Haus)
…
Beer – Black Forest Amber;
Style – German Style Marzen;
Brewery – Black Forest Brew Haus.
February 10, 2016 Office Action at 2.
Applicant disclaimed the term in its August 5, 2016, Response. However, this
evidence is not sufficient to establish that BLACK FOREST is a type of beer; this
example may simply show trademark use for the Black Forest Brew Haus that has a
product it calls Black Forest Amber. In a subsequent Office Action, apparently
recognizing the inadequacy of the evidence, the Examining Attorney withdrew the
disclaimer requirement. September 19, 2016 Final Office Action. Applicant relies on
evidence submitted in an unrelated application (Serial No. 86362759) for the mark
BLACK FOREST SCHWARTZBIER for beer, which was refused as merely
descriptive. That evidence includes this same excerpt, and an excerpt from Wikipedia
and an article from The New York Times about a particular brewery in Germany
located in a region called the Black Forest. December 1, 2015 Response at 18-34.
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Again, this evidence is insufficient to establish that the term BLACK FOREST is
merely descriptive of a type of beer. We further note that the applicant in Serial No.
86362759 did not respond and the application abandoned for failure to respond. 9
TTABVUE 8. In addition, prior decisions and actions of other examining attorneys in
prosecuting other applications have little evidentiary value and are not binding upon
the Board. In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1165 n.3 (TTAB
2013) (citing In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001)). We therefore find Applicant’s argument inapposite, and we distinguish the
Knight Textile case, as we find that the term BLACK FOREST has not been shown
to be highly suggestive of beer.
The dominant element in the marks, the wording BLACK FOREST, is identical
in sound and meaning. Although the additional wording and design elements in each
mark presents dissimilarities, they are not sufficient to overcome the identity of the
prominently displayed BLACK FOREST wording and as such the overall commercial
impression of the marks is similar. We find the similarities outweigh the
dissimilarities and this du Pont factor weighs in favor of finding a likelihood of
confusion.
Balancing of Factors
In conclusion, because the goods, channels of trade and consumers are legally
identical, and the marks are similar, we find that confusion is likely.
Decision: The refusal to register Applicant’s mark is affirmed.