Pan American Properties, Corp.

Trademark Trial and Appeal Board

Jul 5, 2017

No. 86350072 (T.T.A.B. Jul. 5, 2017)

This Opinion is Not a
Precedent of the TTAB
Mailed: July 5, 2017
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Pan American Properties, Corp.
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Serial No. 86350072
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Samuel F. Pamias of Hoglund & Pamias, PSC
for Pan American Properties, Corp.

Amanda Rosen, Trademark Examining Attorney, Law Office 121,
Michael W. Baird, Managing Attorney.
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Before Kuhlke, Adlin and Coggins,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Pan American Properties, Corp. (“Applicant”) seeks registration of G SHOT, in
standard characters (with SHOT disclaimed), for “alcoholic beverages except beers;
prepared alcoholic cocktail.”1 The Examining Attorney refused registration under
Section 2(d) of the Act on the ground that Applicant’s mark so resembles the
registered mark G-SHOT, in standard characters, for “non-alcoholic energy drinks
containing red ginseng”2 that use of Applicant’s mark in connection with Applicant’s

1 Application Serial No. 86350072, filed July 28, 2014 under Section 1(b) of the Trademark
Act based on an alleged intent to use the mark in commerce.
2 Registration No. 4180572, issued July 24, 2012.
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goods is likely to cause confusion or mistake or to deceive. After the refusal became
final, Applicant appealed, filed a request for reconsideration which was denied, and
then filed an Appeal Brief. Subsequently, the Examining Attorney requested and was
granted a remand to introduce additional evidence, following which Applicant filed a
Supplemental Appeal Brief with new responsive evidence, and the Examining
Attorney filed her brief.
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the likelihood of confusion factors set forth in In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See
also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed.
Cir. 2003). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods. See 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.”).
The marks are virtually identical “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). In fact, the only difference between them,
the hyphen in Registrant’s mark which is absent from Applicant’s mark, does not
change how the marks sound, is inconsequential to how the marks look and there is
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no evidence that it alters the meaning of Registrant’s mark in any way.3 See e.g. Mag
Instrument, Inc. v. Brinkman Corp., 96 USPQ2d 1701, 1712 (TTAB 2010), aff’d, 2011
WL 5400095 (Fed. Cir. 2011) (“In comparing Mag Instrument’s MAG-NUM STAR
mark to Brinkmann’s MAGNUM MAXFIRE mark, the obvious similarity is that both
marks begin with the term MAGNUM or MAG-NUM. Thus, the initial term in both
marks is essentially identical; the hyphen in the Mag Instrument’s mark does not
distinguish them.”); Charette Corp. v. Bowater Communication Papers Inc., 13
USPQ2d 2040, 2042 (TTAB 1989) (“It is also quite obvious that the marks [PRO-
PRINT and PROPRINT] are identical except for the division of registrant’s mark by
a hyphen between the syllables. We therefore, believe that confusion would be likely
should these marks be applied to the same or related goods.”); Goodyear Tire &
Rubber Co. v. Dayco Corp., 201 USPQ 485, 488 n.4 (TTAB 1978) (FAST-FINDER “is
in legal contemplation substantially identical to” FASTFINDER).
This factor not only weighs heavily in favor of finding a likelihood of confusion,
but also reduces the degree of similarity between the goods that is required to support
a finding of likelihood of confusion. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1689 (Fed. Cir. 1993); Time Warner Entm’t Co. v. Jones, 65 USPQ2d 1650, 1661
(TTAB 2002); and In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001).
Applicant’s argument that the refusal to register its mark was improper because

3 Applicant’s argument that its mark conveys an alcoholic drink consumed from a “shot
glass,” while Registrant’s mark conveys a “shot of medicine,” 7 TTABVUE 12, is
unpersuasive. Even if consumers perceive the marks as Applicant presumes, in both cases
the “shot” is how the goods are delivered, whether by a syringe, small glass or another
method.
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certain third-party registrations for various other similar or identical marks coexist
is essentially irrelevant because neither the goods nor the marks in those
registrations are the same as those in this case.4 In re Nett Designs, Inc., 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“The Board must decide each case on
its own merits … Even if some prior registrations had some characteristics similar to
Nett Designs’ application, the PTO’s allowance of such prior registrations does not
bind the Board or this court.”) (internal citation omitted).
As for the goods, the similarities go well beyond the mere fact that both Applicant
and Registrant offer beverages. In this case, the Examining Attorney has established
that energy drinks and alcoholic beverages are complementary, as consumers are
increasingly mixing and consuming them together.5 For example:
The Black Diamond, a bar in Spokane, Washington, offers
a cocktail called the Hell Yeah consisting of two types of
vodka, cranberry and Red Bull, an energy drink.

The Blue Velvet Lounge in Madison Wisconsin offers a
variety of martinis and cocktails, as well as Red Bull, the
energy drink. It also offers a cocktail called Rocket Fuel
consisting of vodka, schnapps and Red Bull and a shot
called Lohan consisting of vodka, strawberry syrup and
Red Bull.

4 Applicant cited to several third-party registrations for marks containing FOUR
SEASONS, PATIO, SIMON, JOSEPH, CREEK WINERY, CLEMENT and SAINT JAMES,
or variations thereof. 7 TTABVUE 17-18 (Applicant’s Original Appeal Brief at 16-17) and
Office Action response of March 2, 2015 (TSDR pp. 22-52).
5 It is irrelevant that Applicant’s and Registrant’s goods fall within different international
classes. Jean Patou Inc. v. Theon Inc., 9 F.3d 971, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993)
(stating that classification is for the convenience of the Office and “wholly irrelevant to the
issue of registrability under section 1052(d), which makes no reference to classification”).

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The National Council on Alcoholism and Drug
Dependence’s and Centers for Disease Control and
Prevention’s websites include a warning about the dangers
of “Alcohol energy drinks (AEDs) or Caffeinated alcoholic
beverages (CABs),” which “are very popular among young
people and are regularly consumed by 31% of 12-to 17-year
olds and 34% of 18- to 24- year olds.”

According to a Beverage Daily article, Niveau offers an
“alternative” energy drink called Smart Energy, which is
intended to be safer to mix with alcohol than traditional
energy drinks.

Office Action of April 8, 2016 (printouts from “blackdiamondspokane.com,”
“thebluevelvetlounge.com,” “ncadd.org,” “cdc.gov” and -“beveragedaily.com.”) (TSDR
pp. 24-44).
The following evidence depicts energy drinks and alcoholic beverages being
marketed or used together, or media recognition of energy drinks being mixed with
alcohol:

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Id. (TSDR pp. 6-13, 20); Office Action of August 30, 2014 (TSDR p. 6).
It is settled that complementary goods may be found related. See In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984);
General Mills, Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1597-98
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(TTAB 2011), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014);
In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272 (TTAB 2009). Here, the
evidence establishes that Applicant’s and Registrant’s goods are complementary and
related, so much so that: (1) the producer of Red Bull promotes its energy drink as a
mixer for specific brands of vodka, rum and whiskey, and includes on its website a
“frequently asked question” about mixing the energy drink with alcohol; (2) alcoholic
beverages with energy drink mixers have their own acronyms (“AED”s and “CAB”s)
and recipes appearing online; and (3) alcoholic beverages and energy drinks are
“regularly consumed” together by 34% of 18-24 year olds, with government agencies
warning against the practice. The evidence also establishes that Applicant’s and
Registrant’s goods travel in the same channels of trade,6 including bars and
restaurants, some of which have many locations nationally. These factors also weigh
in favor of finding a likelihood of confusion.7
In short, because the marks are virtually identical, the goods are complementary
and related and the channels of trade overlap, confusion is likely.
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.

6 While Registrant’s goods are limited to energy drinks containing red ginseng, there is no
evidence that the channels of trade for these goods are any different than for other types of
energy drinks.
7 Applicant’s focus on the evidence that many consumers of alcoholic cocktails containing
energy drinks are under aged, and on the danger of mixing Applicant’s and Registrant’s
goods, is misplaced. There is ample evidence that many consumers of alcoholic cocktails
containing energy drinks are 21 years old or older, and Section 2(d) of the Act is focused on
consumer confusion, not the advisability of consuming or combining legal products.