Mother Earth Brewing, LLC

Trademark Trial and Appeal Board

Dec 30, 2013

No. 77716598 (T.T.A.B. Dec. 30, 2013)

Hearing: Mailed:
November 13, 2013 December 30, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Mother Earth Brewing, LLC
________

Serial No. 77716598
_______

David W. Sar and Rebecca L. Cage of Brooks, Pierce,
McLendon, Humphrey & Leonard, L.L.P. for Mother Earth
Brewing, LLC.

J. Brendan Regan, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
_______

Before Seeherman, Cataldo and Lykos, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Mother Earth Brewing, LLC has appealed from the final
refusal of the trademark examining attorney to register
MOTHER EARTH BREWING and design, as shown below, for “beer,
excluding both organic beer and beer comprised solely of
organic components; brewed malt-based alcoholic beverage in
the nature of a beer, excluding both organic beer and beer
comprised solely of organic components” in Class 32 and
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 77716598
2
“distributorships in the field of alcoholic beverages,
excluding both organic beer and beer comprised solely of
organic components” in Class 35.1 The word BREWING has been
disclaimed.

Registration as to both classes has been refused
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. §
1052(d), in view of Registration No. 3850662 for MOTHER
EARTH BREW CO. and design including the letters M and E, as
shown below, with BREW CO. disclaimed, for “beer comprised
solely of organic components.”2

The registration describes the mark as follows:

1 Application Serial No. 77716598, filed April 17, 2009, based
on Section 1(b) of the Trademark Act (intent-to-use).
2 Issued September 21, 2010.
Ser. No. 77716598
3

The mark consists of a concentric circular
design. The outer circle contains a tree,
representing the tree of life. In addition,
[sic] to the tree, the outer circle contains the
words "Mother Earth Brew Co." and two Irish cross
symbols. An inner circle contains a narrow band
with a Celtic design. The middle contains
vertical lines that represent waterfalls
cascading over the letters "M" and "E",
representing "Mother Earth".

Color is not claimed as a feature of the mark.

The appeal has been fully briefed, and an oral hearing
was held. We affirm the refusal with respect to each
class.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003).
Turning first to the refusal with respect to Class 32,
the goods identified in the cited registration are “beer
comprised solely of organic components.” Applicant’s goods
are also beer, but it has excluded “organic beer and beer
comprised solely of organic components” from its
Ser. No. 77716598
4
identification.3 Applicant has argued at length that
organic beer, and beer excluding organic beer, are
different. We are not persuaded by these arguments.
Organic beer and “non-organic beer” are both beer.
“Organic” in the context of the identification in the
registration refers to the methods of growing the
ingredients, but the end product still uses the same basic
ingredients as non-organic beer and is made in essentially
the same manner. Thus, as opposed to the situation in many
of the cases cited by applicant, organic beer and non-
organic beer are essentially the same goods.
Moreover, the record shows that both applicant and the
registrant make craft beers, and that organic beer is a
subset of the craft beer market. See May 17, 2011 article,

3 We note that applicant amended its application to exclude
organic beer/beer made from organic components after the
examining attorney issued the final Office action. Thus,
throughout the examination of the application, the examining
attorney treated the goods as legally identical, in that
applicant’s previous identification in Class 32 (“beer, brewed
malt-based alcoholic beverage in the nature of a beer”)
encompassed the registrant’s organic beer. However, it is clear
that the examining attorney determined that it was unnecessary to
submit additional evidence regarding the relatedness of the goods
or services, as amended, stating in the request for
reconsideration that issued the same date as applicant’s request
to amend the identification (which the examining attorney treated
as a request for reconsideration), that it did not “raise a new
issue or provide any new or compelling evidence with regard to
the outstanding issue in the final Office action.” June 5, 2012
denial of request for reconsideration.
Ser. No. 77716598
5
“ENN: Environmental News Network-Know Your Environment.”4
Eel River Brewing Company’s CEO described that company
“[a]s a craft brewer, an organic craft brewer.”5 Applicant
promotes its product as a craft beer: “Mother Earth Brewery
is a 40 barrel craft brewery”;6 “We craft beer with
artisanal devotion…,”7 while registrant describes itself as
specializing “in quality handcrafted beer and homebrew
supplies.”8 The record includes evidence that craft beers,
whether organic or non-organic, are promoted together.
See, e.g., article in Sign On San Diego, submitted by
applicant and discussing the various local craft breweries,
including registrant’s.9 The evidence further shows that
beer makers, both craft beer makers and mainstream beer
makers, also make organic beer:
For years, many craft-brews (made from non-
automated breweries in limited amounts) have gone
organic, both with specialty products and entire
company standards.
www.tasteforlife.com, Response filed April 24,
2012, p. 120.

4 Response filed April 24, 2012, p. 124. Page numbers for
papers filed during prosecution refer to the pagination found in
the USPTO’s Trademark Status & Document Retrieval (TSDR) data
base.
5 Response filed April 24, 2012, p. 123.
6 www.motherearthbrewing.com, response filed April 24, 2012,
p. 24.
7 Id. at p. 132.
8 Response filed April 24, 2012, p. 57.
9 Response filed April 24, 2012, pp. 58-65.
Ser. No. 77716598
6
Even Anheuser-Busch (http://www.anheuser-
busch.com) (makers of Budweiser) has entered the
organic beer market….
www.tasteforlife.com, Response filed April 24,
2012, p. 120.

…Orlio Organic Beer Company, a new wholly-owned
subsidiary of Magic Hat Brewing….
Massachusetts Beverage Business,
www.beveragebusiness.com, Response filed
April 24, 2012, p. 116.

The Wolaver’s [organic beer] sells for about a
dollar more a six than the Otter Creek.
www.beveragebusiness.com, Response filed
April 24, 2012, p. 117.

Thus, even if we were to treat the differences in how
the ingredients are grown as creating different types of
beers, such that they are not considered identical, they
are still closely related. Although there are certain
requirements for a beer to be labeled “organic,” this does
not mean that the brewers of non-organic beers cannot and
do not brew organic beers. The distinction between organic
and non-organic beers does not obviate the likelihood of
confusion. Consumers would assume that if they were sold
under confusingly similar marks that they emanate from the
same source.
We must also consider organic and non-organic beers to
be sold in the same channels of trade. Applicant has
pointed to statements made about registrant and the manner
in which it sells its beer in an attempt to differentiate
Ser. No. 77716598
7
the trade channels. Specifically, registrant’s Facebook
page states that it is a microbrewery and homebrew supply
retail store located in Vista, San Diego, CA, and states
that it “Takes Reservations,” “Walk-Ins Welcome,” “Good for
Groups,” and lists limited hours for its tasting room.10
Applicant would have us treat registrant’s goods as being
sold only in this particular location, or at special events
such as the Vista Strawberry Festival,11 i.e., not through
third-party outlets, and therefore that its channels of
trade differ from those of applicant, which sells its beer
through convenience stores, grocery stores, bars,
restaurants and the like. The problem with this argument
is that registrant’s certificate of registration is prima
facie evidence of registrant’s exclusive right to use the
mark in connection with the goods identified in the
registration. See Section 7(b) of the Trademark Act, 15
U.S.C. § 1057; In re Dixie Restaurants Inc., 105 F.3d 1405,
41 USPQ2d 1531, 1534 (Fed. Cir. 1997). Likelihood of
confusion must be determined on an analysis of the mark as
applied to the goods or services recited in an applicant’s
application vis-à-vis the goods or services recited in the

10 www.motherearthbrewco.com, response filed April 24, 2012, pp.
56-57.
11 Response filed April 24, 2012, pp. 128-29.

Ser. No. 77716598
8
registration, rather than what the evidence shows the goods
or services to be. See id. Thus, we must treat the
registrant’s goods as traveling in all channels of trade
appropriate for goods of this type, and that would include
the same channels in which non-organic beer is sold. See
In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
As for the customers of organic beer, the evidence
indicates that there is overlap: “It’s not a coincidence
that the market for organic beer looks a lot like the
market for craft beer: picky, well-informed, deliberately
different, curious, and willing to pay more for perceived
quality.”12 Although the evidence indicates that the
purchasers of organic beers do not necessarily purchase
mass-market beers, they do purchase craft beers, and as
noted, applicant’s beer is promoted as a craft beer and
craft beers are encompassed by the identication of goods in
its application.
We now turn to a consideration of the marks, keeping
in mind that “when marks would appear on virtually
identical goods or services, the degree of similarity
necessary to support a conclusion of likely confusion
declines.” Century 21 Real Estate Corp. v. Century Life of

12 www.beveragebusiness.com article, supra, response filed
April 24, 2012, p. 116, 118.
Ser. No. 77716598
9
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992). Again, although applicant has restricted its
identification to non-organic beer, and the registrant’s
beer is specifically identified as being made from organic
components, these products are virtually identical, in that
they are both beer. Thus, applicant’s amendment to limit
its beer to exclude organic beer does not make applicant’s
product and the registrant’s beer made from organic
components significantly different in nature.
Applicant’s mark consists of the words MOTHER EARTH
BREWING and the design of a woman’s head. The cited mark
consists of the words MOTHER EARTH BREW CO. and a design of
a tree that incorporates the letters M and E. The words
MOTHER EARTH are identical in both marks. The additional
words BREWING in applicant’s mark and BREW CO. in the
registered mark (although descriptive and therefore having
little or no source-indicating value), are very similar in
appearance and meaning. As a result, the literal portions
of the marks are essentially identical. Despite this
similarity, applicant contends that the differences in the
design portions of the marks are sufficient to distinguish
them.
It is true that when one views the marks together, one
can clearly see the differences in the design elements.
Ser. No. 77716598
10
However, “the test to be applied in determining likelihood
of confusion is not whether marks are distinguishable on
the basis of a side-by-side comparison, but rather whether
they so resemble one another as to be likely to cause
confusion, and this necessarily requires us to consider the
fallibility of memory over a period of time.” Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Both marks, of course, have concentric circles with the
words MOTHER EARTH in the outer circle. There are specific
differences in the design elements, in that applicant’s
mark prominently depicts a female head that the viewer is
likely to understand as a personification of “mother
earth,” a nurturing figure. The registered mark, on the
other hand, has a tree on top of a circle, with what appear
to be the roots of the tree leading into the letters “M”
and “E” and with additional lines that might also be
understood as a continuation of the roots or, as the
registrant has stated in its description of the mark,
waterfalls. Whether this element is viewed as tree roots
or waterfalls, the entire design portion suggests the earth
as a nurturing place, and the letters would be seen as the
initials for MOTHER EARTH, thereby reinforcing the meaning
of and connection with the words. As a result, even though
the design elements of the two marks have specific
Ser. No. 77716598
11
differences, when viewed in connection with the words
MOTHER EARTH, they project similar connotations and
commercial impressions.
Marks must, of course, be compared in their
entireties. However, there is nothing improper in stating
that, for rational reasons, more or less weight has been
given to a particular feature of a mark. In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985). When marks consist of words and designs, the words
are generally accorded greater weight because they would be
used by purchasers to request the goods or services. In re
Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987).
We see no reason to depart from that approach in the
present case. A patron in a bar is likely to ask for
MOTHER EARTH beer, rather than the beer with the picture of
a woman’s head, or the beer with the tree and waterfall.
Or if someone were to recommend the beer to a friend, it is
more likely that the person would refer to it by the words,
rather than by describing the design.
Applicant asserts that both it and the registrant use
their respective marks as “umbrella” marks, and use other
marks for their particular beers, such that a consumer
would order a beer by the “model” mark, rather than by the
respective MOTHER EARTH marks. However, there is no
Ser. No. 77716598
12
restriction in the identifications of either the
application or registration that would require the marks to
be used in this manner. Further, even if the marks were
used as “umbrella” marks to identify all beers emanating
from applicant or the registrant, a customer could still go
into an establishment and ask what MOTHER EARTH beer it
carried. To the extent that applicant implies that the
consumer would then ask about the particular MOTHER EARTH
beers, and determine from the subsidiary trademarks which
MOTHER EARTH brewery made which beer, that scenario would
not be sufficient for us not to find likelihood of
confusion. The determination of likelihood of confusion is
based on whether the applied-for mark is likely to cause
confusion with a registered mark, not on whether further
inquiry, such as the location of the brewery or knowledge
of particular brands also offered by the brewery, would
enable the customer to figure out, from information
separate from the marks at issue, the actual source of the
goods.
In terms of the question of the similarity of the
marks, the situation before us is similar to that presented
in In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059
(Fed. Cir. 2003), in which the applicant sought to register
the mark
Ser. No. 77716598
13

for beer, and registration was refused in light of

for restaurant services. On appeal, the Board found that
the marks were similar, examining the appearance, sound,
connotation and commercial impression of the two marks.
The Court upheld that finding, despite the fact that the
two moon figures were quite different.13
The present case presents an even stronger argument
for finding the marks to be similar. The literal parts of
the marks are essentially identical in pronunciation and
connotation, and the marks as a whole are similar in
pronunciation, connotation and commercial impression. The

13 The Court reversed the Board’s ultimate decision affirming the
refusal because of the lack of evidence that beer and restaurant
services were related. That, of course, is not the situation
here, where the goods are both types of beer.
Ser. No. 77716598
14
marks also have a similar overall appearance, as they both
consist of concentric circles with the words MOTHER EARTH
in the outer circle. The specific differences in the marks
due to the design elements do not outweigh these
similarities.
Applicant has argued that the term common to both
marks, MOTHER EARTH, is weak, “and the scope of protection
afforded to the cited registration should be deemed so
narrow that the Application for [applicant’s mark] should
be allowed.” Brief, p. 17. In support of this argument,
applicant points to a dictionary definition for “mother
earth” and to certain third-party registrations for marks
which contain the term MOTHER EARTH, or include a
translation statement that has the words MOTHER EARTH. The
dictionary defines the term as “the mother of everything
animate or inanimate upon the earth” and “soil; ground.”14
Applicant claims that in the context of beer comprised of
organic components, the term is descriptive. We are not
persuaded. Based on the dictionary definition, we cannot
agree that MOTHER EARTH immediately and directly describes
beer that is composed of organic ingredients. At most, the
term somewhat suggests that the registrant’s beer is made

14 Webster’s Third New International Dictionary, submitted with
April 24, 2012 response.
Ser. No. 77716598
15
of natural ingredients. Although a suggestive term is
entitled to a lesser scope of protection than an arbitrary
term, the protection to which the registered mark is
entitled would certainly extend to prevent the registration
of a similar mark containing the words MOTHER EARTH for
virtually identical goods. We also point out that in
applicant’s mark the term MOTHER EARTH has the same
connotation, suggesting that applicant’s beer is natural
and not made of man-made ingredients.
As for the third-party registrations, applicant is
incorrect in stating that they show that the term is
commonly used. It has long been recognized that the mere
existence of third-party registrations is not sufficient to
show that the public is familiar with them. “We will not
assume any knowledge on the part of the purchasing public
of mere registrations in the Patent Office and neither will
we assume that marks are in continuing use, so as to have
had any effect on the mind of the purchasing public, merely
because they have been registered.” In re Helene Curtis
Industries, Inc., 305 F.2d 492, 134 USPQ 501, 503-04 (CCPA
1962). Because applicant has not shown any third-party use
of MOTHER EARTH marks, its reliance on In re Hartz Hotel
Services Inc., 102 USPQ2d 1150 (TTAB 2012), is inapposite.
That case included evidence of numerous third-party use of
Ser. No. 77716598
16
GRAND HOTEL marks, e.g., a declaration of an investigator
who confirmed the use of seven establishments using GRAND
HOTEL or GRANDE HOTEL in their marks, and website evidence
advertising ten additional third-party uses. Similarly, in
the case of In re Broadway Chicken Inc., 38 USPQ2d 1559
(TTAB 1996), the record included evidence of extensive
third-party use of the particular common term, BROADWAY,
for restaurant services (the services at issue in that
case), including a Dun & Bradstreet report and information
from telephone directories.
Third-party registrations can, however, be used in the
manner of a dictionary definition, to show that a term has
a significance within a particular industry. Conde Nast
Publications, Inc. v. Miss Quality, Inc., 507 F.2d 1404,
185 USPQ 422 (CCPA 1975). The third-party registrations
for goods that are far removed from the goods of the
registrant and applicant have little probative value in
this regard. For example, the registrations for MOTHER
EARTH for organic potting soil (Nos. 3252545 and 3254164)
obviously reference EARTH as a synonym for “soil, ground.”
See definition above. Nor is it clear what significance
MOTHER EARTH has in the registrations for, inter alia,
computer software (No. 3272691), paper products (No.
3793559) or paddle surfboards (No. 4031276). As for the
Ser. No. 77716598
17
registrations for food and beverages, at best they show
only that MOTHER EARTH has the significance that the
dictionary definition of “the mother of everything animate
or inanimate upon the earth” somewhat suggests, namely,
something that is nourishing and wholesome and natural.15
We certainly cannot conclude from the limited number of
third-party registrations submitted by applicant,
particularly from the three currently existing
registrations for beverages (No. 3593000 for GAIA for
sotol, No. 3342899 for MADRE TIERRA for wine and No.
2958978 for MATER TERRAMATER for wine),16 that MOTHER EARTH
has a strong suggestive connotation for beverages, and that
we must therefore give greater weight to the design

15 We say “at best” because it is not clear to us that GAIA,
which is translated in Registration No. 3593000 as “Mother Earth
or Goddess of the Earth,” and which is translated in Registration
No. 3676512 as “Earth or Mother Earth” actually would be
understood to have the meaning of “mother earth” per se. The
dictionary definition of GAIA is “the goddess of the earth, who
bore Uranus and by him Oceanus, Cronus, and the Titans” (from
Greek gaia, meaning earth). Dictionary.com, from Collins English
Dictionary, unabridged, 10th ed. (2009). The Board may take
judicial notice of dictionary definitions. University of Notre
Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594
(TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Nor is it clear that the Latin phrase MATER TERRAMATER
(Registration No. 2958978) would be the equivalent of MOTHER
EARTH, or that people would understand it this way, and it is
also unclear whether DAICHI (Registration No. 3023585 for rice)
or MADRE TIERRA (Registration No. 3342899 for wine) would be
translated and therefore viewed as “mother earth.”
16 A fourth registration submitted by applicant, MOTHER EARTH
MINERALS for mineral water, has been cancelled for failure to
file a Section 8 affidavit.

Ser. No. 77716598
18
features when we compare applicant’s mark and the cited
mark.
Applicant has also argued that the du Pont factor of
the conditions of purchase favors a finding of no
likelihood of confusion, because both its craft beer and
the registrant’s beer made from organic components are
“premium and specialized products,” and the consumers “are
well-versed in the styles of beer being offered and are
knowledgeable about the sources (i.e., the brewers) of the
beers they select.” Brief, p. 22.
To the extent that applicant contends that confusion
is not likely because consumers will go behind the
trademark and rely on the name of the brewers, that is not
an argument that we can entertain. As we stated above, we
must determine likelihood of confusion based on the
involved marks, not on whether there is additional
information that the potential consumer can obtain to
determine the source of the goods. We do agree with
applicant that at least some of the purchasers of craft
beers and organic beers are more discriminating than
consumers of mass market beers, and even that some
consumers of organic beers specifically choose such beers
because they are organic. However, even discriminating
purchasers are likely to be confused by the use of
Ser. No. 77716598
19
applicant’s mark on its craft beer in view of the
registrant’s mark for beer made from organic components.
That is, even if such purchasers note the difference in the
design elements in the marks, they are not likely to view
the different designs as indicating separate sources for
the goods. Rather, they are likely to assume that a single
source has adopted these marks as variations of each other,
perhaps to differentiate its organic beer from its non-
organic beer. As we have previously discussed, the
evidence shows that the same entity can make both organic
and non-organic beer.
The final du Pont factor that has been discussed is
the lack of evidence of actual confusion. As applicant
candidly admits, the parties are not in the same locations
or channels of trade. Brief, p. 24. As a result, there
has been no opportunity for confusion to occur, and we can
draw no conclusion from the lack of evidence of actual
confusion that confusion is not likely. Because of the
presumptions of Section 7(b) due to the registrant through
its ownership of the cited registration, we must assume
that registrant may sell its beer nationwide, including in
the area in which applicant sells its beer, and that the
beer may be sold in all appropriate channels of trade for
such goods.
Ser. No. 77716598
20
In considering the relevant du Pont factors, we find
that the factors of the similarity of the goods and
channels of trade heavily favor a finding of likelihood of
confusion, that the factor of the similarity of the marks
(and giving weight to the factor of the similarity of the
goods) also favors a finding of likelihood of confusion,
while the factors of third-party use and lack of actual
confusion are neutral. In addition, the term MOTHER EARTH
is only slightly suggestive, such that the registered mark
is entitled to a normal scope of protection. Although the
factor of the conditions of purchase favors applicant in
that we accept that the purchasers are discriminating, for
the reasons we have already discussed, this factor does not
outweigh the factors favoring a finding of likelihood of
confusion. Thus, when we balance the factors, we find that
applicant’s mark for non-organic beer and non-organic
brewed malt-based alcoholic beverage in the nature of a
beer is likely to cause confusion with the registered mark
for beer made of organic components.
We now consider the application in Class 35 for
“distributorships in the field of alcoholic beverages,
excluding both organic beer and beer comprised solely of
organic components.” We should point out that to be a
service, the distributorship must be for the benefit of
Ser. No. 77716598
21
others. That is, if applicant’s distributorships consist
only of distributing its own beer on its own behalf, this
would not constitute a service. We have some concerns that
this is the case. For example, in its response filed
April 24, 2012, at p. 18, applicant states that it
“produces close to 10 times as much product, and primarily
distributes product (and, of course, performs its
distributorship services) through hundreds of third party
retailers….” In its brief, under Recitation of Facts, it
states, at p. 7:
Applicant owns and operates a 40 barrel craft
brewery and distributorship located in Kinston,
North Carolina. It bottles, kegs and cans beer
for sale and distribution in hundreds of
outlets….

Applicant sells and distributes over ten
varieties of craft beer.

Again, at p. 23 of its brief, it states:
…Applicant produces close to 10 times as
much product [as registrant], and primarily
distributes product (and of course, performs its
distributorship services) through hundreds of
third party retailers….

However, despite our suspicion that applicant is not
actually performing distribution services, as services are
understood in the Trademark Act and case law, we will not
remand the application to the examining attorney pursuant
to Trademark Rule 2.142(f)(1) to consider whether
Ser. No. 77716598
22
registration should also be refused on this basis. This is
because the application was based on Section 1(b), intent-
to-use, and a refusal of this sort would normally not be
made until the applicant submits its specimens of use,
i.e., at the time it files an amendment to allege use or a
statement of use.
Therefore, in deciding the appeal, we will proceed on
the assumption that applicant is rendering a service, and
that it is distributing beer made of non-organic components
for third parties, rather than for itself.
Applicant has not addressed the similarity of its
services and the registrant’s goods, except to the extent
that it argues the differences in the goods that are the
subject of the services (non-organic beer) and the
registrant’s goods (beer made from organic components),
that is, its arguments are the same as those it put forth
in connection with its application in Class 32. It would
appear that applicant accepts that if non-organic and
organic beer are found to be similar, then distribution
services for non-organic beer would be similar to organic
beer.
We have found, as discussed above, that the goods are
virtually identical. However, we do not treat this as a
concession of the relatedness of applicant’s services and
Ser. No. 77716598
23
the registrant’s goods. Our finding that the goods and
services are related is based on the complementary nature
of the goods and the services of distributing such goods.
The distinction made between organic beer and non-organic
beer does not make the services and goods unrelated.
Consumers, i.e., retail establishments which would be the
users of the distribution services, are likely to assume
that the company that does distribution services also sells
beer. In fact, the distinction in the type of beer, with
applicant’s distribution services being for non-organic
beer and registrant’s goods being beer made of organic
components, is likely to heighten the likelihood of
confusion. That is, consumers could assume that a company
that produces beer could use its distribution system to
distribute beer for others, and that since the registrant
makes an organic beer, it would choose to distribute non-
organic beers for third parties, rather than organic beers
that would compete more directly with its own products.
The comments that we have made with respect to the
similarities of the marks, strength of the registrant’s
mark, and lack of evidence of actual confusion are
applicable here. As for the conditions of purchase, we
treat the retail establishment purchasers/resellers of beer
which would be the customers of applicant’s distribution
Ser. No. 77716598
24
services as discriminating and sophisticated purchasers.
However, as we said earlier, even though we accept that the
purchasers will note the specific differences in the design
elements in both marks, they are not likely to treat these
differences as indicating separate sources for the goods
and services. Rather, they are likely to view the marks as
variations of each other, with both indicating origin in a
single source, perhaps having the design differences in
order to show that one is for goods and the other for
services.
We find, upon considering all of the relevant du Pont
factors, that confusion is likely between applicant’s mark
for its identified services and the mark and goods
identified in the cited registration. To the extent that
there is any doubt on this issue, it must be resolved in
favor of the registrant. In re Pneumatiques, Caoutchouc
Manufacture et Plastiques Kleber-Colombes, 487 F.2d 918,
179 USPQ 729 (CCPA 1973).
Decision: The refusal of registration as to both
classes in the application is affirmed.