No. 87380597 (T.T.A.B. May. 25, 2018)

Michael James Hart

Trademark Trial and Appeal BoardMay 25, 2018

No. 87380597 (T.T.A.B. May. 25, 2018)

Mailed: May 25, 2018 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Michael James Hart _____ Serial No. 87380597 _____ Gene Bolmarcich, Law Offices of Gene Bolmarcich, for Michael James Hart. Maureen Dall Lott, Trademark Examining Attorney, Law Office 105, Jennifer L. Williston, Managing Attorney. _____ Before Wolfson, Hightower, and Coggins, Administrative Trademark Judges. Opinion by Wolfson, Administrative Trademark Judge: Applicant, Michael James Hart, seeks registration on the Principal Register of the mark depicted below for “beer made with sterilized hemp seeds and excluding beer made with any other hemp or cannabis products,” in International Class 32.1 1 Application Serial No. 87380597 was filed on March 22, 2017 under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on an allegation of Applicant’s bona fide intention to use the mark in commerce. This Opinion Is Not a Precedent of the TTAB Serial No. 87380597 - 2 - There is a lengthy description of the mark,2 and the color(s) black, green, gold, white, red, and teal are claimed as a feature of the mark. The wording “Kentucky Hemp Beer” and “BEER BREWED WITH HEMP SEED” have been disclaimed. The Trademark Examining Attorney refused registration of Applicant’s mark on the grounds that it so resembles various marks comprised of the term KENTUCKY, 2 The mark consists of a rectangular-shaped label with a picture thereon. Inside the picture is the stylized wording “Kentucky HEMP Beer” above a design of a highly stylized and human-like horse that is standing on two legs, holding a beer mug dripping with beer, and wearing a horseshoe and cannabis plant design on its chest. The words “BEER BREWED WITH HEMP SEED” appear between the horse’s legs. The background of the top and middle of the picture contains fan-like designs on the left and right. The fan-like designs are mostly gold with teal and white highlights. The remainder of the top and middle of the background of the picture is white. The bottom portion of the background of the picture is green with a black line on top, except that the portion behind “BEER BREWED WITH HEMP SEED” is white. Black also outlines some portions of the rectangular picture on the label. The wording “Kentucky” is red with gold highlights and teal shadows. The words “HEMP Beer” are black and white with teal shadows. The body of the horse is red. The beer mug is black, and the beer dripping from the mug is red at the top with gold and white elongated drips. The horse and beer mug are outlined in white and black. Most of the horse and mug also have an outer gold outline. The horse’s nostril is white with a black outline. The horse’s eye is white with a black outline and black eyeball. The horse’s mane and tail are black surrounded by white and have black outlines. An outer gold outline also appears around the mane and part of the tail. The horseshoe is black and white. The cannabis plant is green with a black outline. Serial No. 87380597 - 3 - in twelve registrations owned by the same registrant, for “ale; beer,” that confusion, mistake or deception among purchasers is likely. The registered marks are:3 MARK REG. NO. MARK INFORMATION KENTUCKY ALE 4253124 (regd 12/4/12) Sect. 8/15 Acquired distinctiveness claim in whole; “Ale” disclaimed KENTUCKY KOLSCH 4629397 (regd 10/28/14) Acquired distinctiveness claim as to “Kentucky”; “Kolsch” disclaimed KENTUCKY IPA 4500711 (regd 3/25/14) Acquired distinctiveness claim as to “Kentucky”; “IPA” disclaimed KENTUCKY LIGHT 4253125 (regd 12/4/12) Acquired distinctiveness claim in whole; “Light” disclaimed KENTUCKY RYE BARREL IPA 5185318 (regd 4/18/17) Acquired distinctiveness claim as to “Kentucky”; “Rye Barrel IPA” disclaimed KENTUCKY ALE and design (see design below at left) 4256695 (regd 12/11/12) Sect. 8/15 Acquired distinctiveness claim as to “Kentucky Ale”; “Ale” disclaimed KENTUCKY ALE and design (see design below at left) 3203795 (regd 1/3007) renewed “Kentucky Ale” disclaimed KENTUCKY LIGHT and design (see design below at right) 4256696 (regd 12/11/12) Acquired distinctiveness claim as to “Kentucky Light”; “Light” disclaimed KENTUCKY WHITE ALE 5185298 (regd 4/18/17) Acquired distinctiveness claim as 3 All marks are in standard characters unless otherwise noted. Serial No. 87380597 - 4 - to “Kentucky”; “White Ale” disclaimed KENTUCKY PUMPKIN BARREL ALE 4862827 (regd 12/1/15) Acquired distinctiveness claim as to “Kentucky”; “Pumpkin” and “Ale” disclaimed KENTUCKY BOURBON BARREL STOUT 4558495 (regd 7/1/14) Acquired distinctiveness claim as to “Kentucky Bourbon Barrel”; “Stout” disclaimed KENTUCKY BOURBON BARREL ALE 3830032 (regd 8/10/10) Sect. 8/15 Acquired distinctiveness claim in whole; “Ale” disclaimed When the Examining Attorney made the refusal final, Applicant appealed. Applicant and the Examining Attorney each filed an appeal brief. We affirm the refusal to register. LIKELIHOOD OF CONFUSION Our determination under Trademark Act § 2(d) is based on an analysis of the probative facts in evidence that are relevant to the factors bearing on a likelihood of Serial No. 87380597 - 5 - 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., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). 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 Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999). Applicant and the Examining Attorney have limited their evidence and arguments to the du Pont factors of the similarity of the goods, similarity of trade channels and similarity of the marks, and we therefore do the same. A. THE GOODS; CHANNELS OF TRADE First we compare Applicant’s and Registrant’s respective goods as they are identified in the application and each 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. Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); see also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). Applicant is seeking to register his mark for “beer made with sterilized hemp seeds and excluding beer made with any other hemp Serial No. 87380597 - 6 - or cannabis products.” Each of the registered marks is for “ale” and “beer.”4 Because Registrant’s identification of “beer,” without any limitation as to nature or type encompasses Applicant’s more narrowly identified “beer made with sterilized hemp seeds,” the goods are in-part legally identical. See In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (applicant’s broadly worded identification of “furniture” necessarily encompasses registrant’s more narrowly identified “residential and commercial furniture”). Because the goods are identical in-part, the channels of trade and classes of purchasers for those goods are considered to be the same. 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); Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012); Am. Lebanese Syrian Associated Charities Inc. v. Child Health Research Instit., 101 USPQ2d 1022, 1028 (TTAB 2011). In addition, the Examining Attorney need not prove that “ale” is related to beer, as it is sufficient for a refusal based on likelihood of confusion that relatedness is established for any item encompassed by the identification of goods in the application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple Comput. v. TVNET.Net, Inc., 90 USPQ2d 1393, 1397 (TTAB 2007). 4 Reg. No. 7629397 is for “ales, beers.” The rest are for “ale; beer” or in reverse order, “beer, ale.” No other goods are services are included in any of the registrations. Serial No. 87380597 - 7 - Accordingly, we find that the du Pont factors of the similarity of the goods and channels of trade strongly favor a finding of likelihood of confusion. B. THE MARKS In comparing the marks, we recognize that “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) (citation omitted). The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. See In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971). Because the goods at issue are ale and beer, the average customer is an ordinary consumer of ale or beer. In cases such this case, where the applicant’s goods are identical in part to the registrant’s goods, the degree of similarity between the marks which is required to support a finding of likelihood of confusion is less than it would be if the goods were not identical. Coach Servs., 101 USPQ2d at 1721; Bridgestone Ams. Tire Operations LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012) (“When the goods are identical, the appearance of a mark of similar sound, appearance, or connotation is more likely to cause confusion than if the goods are significantly different.”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 Serial No. 87380597 - 8 - 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.”). While we must consider the marks in their entireties, one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“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 consideration of the marks in their entireties. Indeed, this type of analysis appears to be unavoidable.”). Registrant’s marks are comprised of the term KENTUCKY and additional, generic or merely descriptive terms that identify or describe different types of ales and beers. Applicant argues that Registrant’s mark is weak because the term KENTUCKY is a geographically descriptive term, which is inherently less distinctive than a fanciful or arbitrary term. However, in each except one of the registrations, the term KENTUCKY has acquired distinctiveness through use, whereas the other terms in each of the marks is at best merely descriptive, if not generic. It is well-settled that generic and descriptive matter may have less significance in likelihood of confusion determinations. See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion.’”) Serial No. 87380597 - 9 - (quoting In re Nat’l Data, 224 USPQ at 752); In re Dixie Rests. Inc., 41 USPQ2d at 1533-34. A term that has acquired distinctiveness through use is considered distinctive, and inasmuch as the other terms in each of the marks are at best merely descriptive and have universally been disclaimed,5 KENTUCKY is the dominant term in Registrant’s marks and that which identifies the source of Registrant’s goods. Moreover, Applicant has not shown commercial weakness of Registrant’s mark, such as through evidence of third-party use or registration of similar marks for beer; and three of Registrant’s marks have been registered for over five years, and therefore are not subject to attack on a claim that they are merely geographically descriptive. Trademark Act § 14(3), 15 U.S.C. § 1064(3). To the extent the marks may be considered weak, even weak marks are entitled to protection from confusingly similar marks, provided the ultimate conclusion rests on a consideration of the marks in their entireties. See, e.g., Nike Inc. v. WNBA Enters. LLC, 85 USPQ2d 1187, 1198 (TTAB 2007) (“[W]hile star designs in and of themselves may be weak, there is no evidence which would effectively diminish the scope of protection to be accorded opposer’s S and star design mark as a whole.”); In re Clorox Co., 578 F.2d 305, 198 USPQ 337 (CCPA 1978) (ERASE is confusingly similar to STAIN ERASER on the Supplemental Register both for stain removers). Turning to Applicant’s mark, we consider the word KENTUCKY as its source- identifying, and thus dominant, portion. Applicant argues that its mark is dominated 5 With the exception of the term BARREL, which simply modifies “ale” in each of the marks in which it appears. Serial No. 87380597 - 10 - by the design elements “that make a much greater commercial impression on a consumer than does the word ‘Kentucky.’” 4 TTABVUE 5.6 However, although we assess each mark in its entirety, in a mark comprising both literal and design elements, the wording is often considered the mark’s dominant feature because it is most likely to indicate the source of the goods. See Jack Wolfskin v. New Millennium Sports, 116 USPQ2d at 1134; In re Viterra Inc., 101 USPQ2d at 1908. In other words, the words are likely to make a greater impression upon purchasers than the designs and would be remembered by them and used by them to request the goods. See In re Viterra, 101 USPQ2d at 1908, 1911 (citing CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir 1983)); Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB 2013) (“In the case of marks consisting of words and a design, the words are normally given greater weight because they would be used by consumers to request the products.”) (citing In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999)); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987). Moreover, the phrase “Kentucky Hemp Beer” is in large stylized print and the first word to appear on the label is KENTUCKY. As the first word, it is “most likely to be impressed upon the mind of a purchaser and remembered.” Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988); see also Palm Bay Imps., 73 USPQ2d at 1692 (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word 6 Citations to the appeal record are to TTABVUE. See TRADEMARK BOARD MANUAL OF PROCEDURE (TBMP) § 1203.01 (June 2017). Serial No. 87380597 - 11 - to appear on the label); Century 21 Real Estate Corp., 23 USPQ2d at 1700 (upon encountering the marks, consumers will first notice the identical lead word). Moreover, as to the other wording, “Hemp Beer” merely describes a type of beer7 and BEER BREWED WITH HEMP SEED is in far smaller print and less likely to be noticed by a consumer; to the extent it would be, it reinforces the impression of “hemp beer” as a type of beer. Thus, the most salient feature of Applicant’s mark, in terms of its overall commercial impression and focusing on the likely recollection of the purchaser, is the term KENTUCKY. Moreover, as the Examining Attorney points out, “even though the horse designs in the registrations differ from the horse design in Applicant’s mark, the overall impressions of these marks are still quite similar with each calling to mind horses and types of ‘KENTUCKY’ beer.” 6 TTABVUE 11. The Examining Attorney submitted evidence that beer producers commonly offer a variety of beers under the same or similar marks, causing consumers to “mistakenly believe that Applicant’s goods are another option that Registrant offers under its ‘KENTUCKY’ brand beers.” Id. See, e.g., an online advertisement from Guinness.com, for various types of beer such as Guinness Draught, Guinness Blonde American Lager, Guinness Nitro IPA, and Guinness Extra Stout.8 7 “Beer brewed with hemp, a botanical cousin to hops, can be (and has been) sold elsewhere in the U.S., so long as it tests negative for mind-altering THC.” Steinmetz, WITH LEGAL WEED COMES HEMP BEER – WASHINGTON BREWERIES RIDE THE GREEN WAVE, at http://nation.time.com/2013, attached to October 20, 2017 Office Action at 28. 8 At https://www.guinness.com, attached to December 4, 2017 Final Office Action at 73-4. Serial No. 87380597 - 12 - In sum, we find that the marks are similar in their entireties in terms of appearance, sound, connotation and commercial impression. The first du Pont factor favors a finding of likelihood of confusion. CONCLUSION The goods are identical, and the conceptual weakness of Registrant’s marks is outweighed by the fact that the term KENTUCKY in all but one of the marks has acquired distinctiveness. Although Applicant’s horse design is unusual, it is not so overpowering that it dominates the mark as a whole; consumers will focus on the word KENTUCKY when ordering Applicant’s “beer made with sterilized hemp seeds and excluding beer made with any other hemp or cannabis products.” Accordingly, consumers familiar with Registrant’s various KENTUCKY marks for “ale; beer” will be confused or subject to mistake or deception upon encountering Applicant’s goods sold under the mark: . Decision: The refusal to register Applicant’s mark under Section 2(d) is affirmed.