Patrón Spirits International AGv.Conyngham Brewing Company

Trademark Trial and Appeal Board

Jun 8, 2018

No. 91226939 (T.T.A.B. Jun. 8, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 8, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Patrón Spirits International AG
v.
Conyngham Brewing Company
_____

Opposition No. 91226939 to
Application Serial No. 86765751
_____

Jessica Bromall Sparkman and Bernard R. Gans of Jeffer Mangels Butler &
Mitchell LLP for Patrón Spirits International AG.

Lee Ann Palubinsky for Conyngham Brewing Company.
_____
Before Bergsman, Wellington, and Heasley,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Conyngham Brewing Company (“Applicant”) seeks registration on the Principal
Register of the mark PIRATE PISS, in standard characters, for “beer, ale and lager”
in International Class 32.1 Patrón Spirits International AG (“Opposer”) opposes

1 Application Serial No. 86765751, filed September 23, 2015, alleging May 1, 2015 as the date
of first use and use in commerce.
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registration under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), asserting a
likelihood of confusion with its previously-registered, standard-character marks
PYRAT and PYRAT RUM (RUM disclaimed) for, respectively, “distilled spirits” and
“rum” in International Class 33.2 We dismiss the opposition.
I. Evidentiary Record
The record comprises the pleadings and, without any action by the parties, the file
of the involved application. Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1).
Opposer filed a notice of reliance submitting, inter alia, the following materials:3
• Copies of its pleaded registrations from the UPSTO electronic database (TESS)
showing the current status and title (owner);

• Copies of 6 third-party, use-based live registrations from the UPSTO electronic
database (TESS);4

• Internet printouts from various websites regarding the meaning of the term
“Pyrat” and various alternate spellings for the word “pirate”;

• Internet printouts from various websites, including articles and awards,
involving the mark PYRAT; and

• Internet printouts from various websites purportedly showing “sales
information” for Opposer’s goods for purposes of demonstrating the strength of
Opposer’s PYRAT mark.

Applicant filed a notice of reliance submitting, inter alia, the following materials:5

2 Registration No. 2727996 (PYRAT), issued June 17, 2003; renewed. Registration No.
2058075 (PYRAT RUM), issued April 29, 1997; renewed.
3 5 TTABVUE.
4 In total, Opposer submitted 13 live third-party registrations. However, seven of these are
based on a foreign registration and do not have use-in-commerce dates – the probative value
ramifications of this are discussed infra.
5 6 TTABVUE.
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• Copies of three live, third-party registrations for marks with the term “pirate”
or a similar term in the marks – namely, BLIND PIRATE and EMBRACE
YOUR INNER PIRATE and PIRAAT;

• Internet printouts from various websites, including the USPTO’s ID manual
involving Classes 32 and 33 goods;

• Internet printouts from the Wikipedia website involving “distilled beverages,”
“rum,” and “beer”;

• Printouts from various websites involving beer;

• Printouts from various websites involving the definitions of the terms “pirate,”
“pyrat,” and “piracy”; and

• Printouts from the Board’s TTABVUE database regarding Board proceedings
involving the term PYRAT.

II. Standing and Priority
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014); see also, e.g., Bell’s Brewery, Inc. v. Innovation
Brewing, 125 USPQ2d 1340, 1344 (TTAB 2017). Opposer’s standing to oppose
registration of Applicant’s mark is established by its pleaded registrations, which the
record shows to be valid and subsisting, and owned by Opposer. See, e.g.,
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000); Otter Prods. LLC v. BaseOneLabs LLC, 105 USPQ2d 1252, 1254 (TTAB 2012).
In addition, because Opposer’s pleaded registrations are of record and Applicant did
not counterclaim to cancel either one, priority is not an issue with respect to the goods
covered by Opposer’s registrations, namely distilled spirits and rum. Penguin Books
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Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998) (citing King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)).
III. Likelihood of Confusion
Our determination under Section 2(d) requires an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
considered, hereinafter referred to as “du Pont factors”); see also In re Majestic
Distilling Co., 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 relatedness of the goods. See In re Chatam Int’l Inc., 380 F.3d
1340, 71 USPQ2d 1944 (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.”). Opposer, as plaintiff,
bears the burden of proving its claim of likelihood of confusion by a preponderance of
the evidence. Cunningham, 55 USPQ2d at 1848.
A. Relatedness of the Goods
We first consider the second DuPont factor, the similarity or dissimilarity of the
parties’ goods.
In support of its argument that its rum and Applicant’s beer are related, Opposer
submitted copies of 13 live, third-party registrations for marks covering both beer and
rum. However, of these, only six are use-based registrations. Only use-based
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registrations are probative to the extent that they are being used to show that goods
covered by the registrations are the type of goods that may emanate from a common
source under a single mark. The other seven non-use based registrations are
irrelevant to our analysis because they issued based solely on ownership of foreign
registrations without any claim of use in commerce in the U.S.6 See Calypso Tech.,
Inc. v. Calypso Capital Mgmt., LP, 100 USPQ2d 1213, 1221 (TTAB 2011); In re
Princeton Tectonics, Inc., 95 USPQ2d 1509, 1511 (TTAB 2010); and In re 1st USA
Realty Prof’ls Inc., 84 USPQ2d 1581, 1583 (TTAB 2007) (third-party registrations not
based on use in commerce have no probative value in showing the relatedness of the
goods or services). Opposer also relies on prior decisions by the Board and the Court
of Appeals for the Federal Circuit, our primary reviewing court, in which beer and
other alcoholic beverages have been found to be related.
Opposer’s submission of the six relevant third-party registrations is not very
convincing for purposes of showing that beer and rum are sufficiently related that
consumers expect them to emanate from the same source. While there is no threshold
number, six relevant registrations is a relatively small number given the number of
breweries and beer brands in the U.S.7 Moreover, the probative value of these
registrations is limited; for example, they are not evidence that the marks have
actually been used in the U.S. or even that consumers are aware of the registrants

6 We further note that none of these third-party registrants have filed declarations of
continued use under Section 8 of the Trademark Act, 15 U.S.C. § 1058.
7 According to the website Craft Beer .Com (www.craftbeer.com), “the U.S. now has more beer
… brands (20,000+) to choose from than any other market in the world” and “more than 5,000
breweries are responsible for the beer brands available in the U.S…..” 6 TTABVUE 58.
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using the same mark on beer and rum. To be clear, there is insufficient evidence of
third parties using the same mark in connection with beer and rum, or evidence that
a maker of rum also actually produces beer.
As to Opposer’s reliance on previous decisions, “[t]here is no per se rule that holds
that all alcoholic beverages are related.” In re White Rock Distilleries Inc., 92 USPQ2d
1282, 1285 (TTAB 2009). Even though beer and other alcoholic beverages have been
found related in other cases, we must decide the outcome of this proceeding based on
its own facts and evidence. In Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115
USPQ2d 1816 (TTAB 2015), the Board acknowledged that “beer and wine (among
other alcoholic beverages) certainly can be, and frequently are, found to be related,”
but stated in the same sentence that “each case must be decided on its own record.”
Id. at 1827. Put simply, Opposer cannot evade its burden to prove relatedness by
bootstrapping upon previous factual findings made in other decisions on different
records.
This is not to say that we can entirely ignore previous holdings involving the
relatedness of various types of alcoholic beverages. However, we note that Opposer’s
evidence pales in comparison to the records in many of the decisions where beer was
found to be related to other alcoholic beverages. See, e.g., In re Kysela Pere et Fils Ltd.,
98 USPQ2d 1261, 1265-66 (TTAB 2011) (relying on some 20 third-party registrations
listing wine and beer and webpages showing that companies make and sell both types
of goods, finding: “The third-party registration evidence and the website evidence
together amply demonstrate the relatedness of beer and wine, and show that
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consumers, if they encountered both goods sold under confusingly similar marks, are
likely to believe that they emanate from the same source.”). Moreover, we must also
take into consideration other differentiating circumstances, such as the nature of the
marks themselves or other factors present in the previous decisions; for example,
marks that are identical or highly similar may reduce the degree of relatedness of the
goods needed to support a likelihood of confusion. In re Shell Oil Co., 992 F.2d 1204,
26 USPQ2d 1687, 1689 (Fed. Cir. 1993) (“even when goods or services are not
competitive or intrinsically related, the use of identical marks can lead to the
assumption that there is a common source”). As discussed infra, we do not find the
marks involved in this proceeding to be so highly similar that Opposer’s burden is
lessened with respect to showing the relatedness of the involved goods.
In sum, based on this record, beer and rum have not been shown to be sufficiently
related goods in order for us to weigh the second DuPont factor in support of a finding
that confusion is likely.
B. Trade Channels for the Goods
We presume that because Opposer’s rum and Applicant’s beer are described in the
respective registration and application without any trade channel restrictions, their
respective goods travel through all usual channels of trade for the goods. See In re
Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); see also
Cunningham, 55 USPQ2d at 1846 (affirming Board finding that where the
identification is unrestricted, “we must deem the goods to travel in all appropriate
trade channels to all potential purchasers of such goods”).
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Opposer did not submit any evidence to show that its rum may travel in the same
trade channels as Applicant’s beer. Rather, Opposer relies on common knowledge that
both beer and rum may be purchased in liquor stores or ordered in certain restaurants
and bars. We agree that this is common knowledge and further note that the goods
are sold to the same general class of consumers -- adult drinkers of alcoholic
beverages. Thus, while we do not have evidence showing that beer and rum are
marketed in any specific manner that gives rise to confusion, the aforementioned
factual circumstances do favor a finding of a likelihood of confusion, and we weigh
the third du Pont factor accordingly.
C. Alleged Weakness of PIRATE and Alleged Strength of Opposer’s Mark
Applicant has attempted to show that the term PIRATE is weak, at least in the
context of beer, but only introduced three live, third-party registrations for marks
containing this term (or a similar term) for beer. As discussed supra, third-party
registrations are not evidence that the marks are in use or that the consuming public
is even aware of them. Three registrations, without evidence of actual use of these
marks or any other third-party marks containing the term PIRATE, do not approach
the type and amount of evidence that has been held to be convincing or powerful for
purposes of demonstrating a term’s weakness. See, e.g., Jack Wolfskin Ausrustung
Fur Draussen GmbH & Co. KGAA v. Millennium Sports, S.L.U., 797 F.3d 1363, 116
USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794
F.3d 1334, 115 USPQ2d 1671, 1673-74 (Fed. Cir. 2015). The term PIRATE has not
been shown to be weak in connection with beer or rum.
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Opposer argues that its PYRAT mark is “well known, rendering confusion more
likely.”8 Opposer specifically relies on materials it submitted under the notice of
reliance that include awards, advertisements, recipes mentioning Pyrat rum, online
retail stores featuring Pyrat rum for sale, etc. The problem, however, is that these
materials are not accompanied by testimony, either by declaration or deposition, and
we can only rely on these materials for what they show on their face.
See Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1467
n.30 (TTAB 2014) (Internet webpage evidence admissible only to show what has been
printed and not for the truth of what has been printed), accord WeaponX Perf. Prods.
Ltd v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1040 (TTAB 2018). Thus, for
example, the Internet printout from “Liquor News” column from a duty-free magazine
contains a statement that “Pryat (sic) Rum increases sales by 31% in global duty
free”9 – but without corroborating testimony, this statement cannot be construed as
an assessment of increased sales. The lack of testimony accompanying these
materials also creates issues with putting some of the evidence into context. For
example, Internet printout lists “The Fifty Best” aged rums and Pyrat is listed;10
while this shows Pyrat rum is regarded by one website as one of the fifty best aged
rums, the level of consumer exposure to this website is unknown. Although Opposer’s
rum is mentioned by brand name in recipes and various online journals, we cannot

8 7 TTABVUE 17.
9 5 TTABVUE 261-263.
10 Id. at 294-305. We further note that the actual sales and advertising figures with regard
to Opposer’s rum being sold under the Pyrat mark are unknown.
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find the mark possesses a degree of renown that would entitle it to a wider scope of
protection.
Accordingly, we find the fifth du Pont factor (fame of prior mark) and sixth factor
(number and nature of similar marks in use on similar goods) to be neutral in our
likelihood of confusion analysis.
D. Similarity of the Marks
With respect to the first du Pont factor, comparison of the marks, we consider
them “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). We remain mindful that “marks ‘must be considered . . . in light of the
fallibility of memory’ and ‘not on the basis of side-by-side comparison.’” In re St.
Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting San
Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1,
3 (CCPA 1977). Here, where the goods are beer, ale, lager, and spirits, the average
purchaser is an ordinary consumer. Also, we focus on Opposer’s mark, PYRAT,
inasmuch as it does not contain the additional term RUM and thus is closer to
Applicant’s mark PIRATE PISS.
In comparing PYRAT to PIRATE PISS, we initially note that Opposer has
submitted evidence showing that the term “Pyrat” (or “pyrate” or “pyracy”) is an
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archaic alternative spelling (or variations thereof), of “pirate.”11 While perhaps not
common in contemporary use, “Pyrat” or “Pyrate” can be used in place of “pirate” in
a nostalgic manner to suggest a time when naval piracy was more common.12
Opposer’s PYRAT mark will likely be understood as “pirate,” albeit in an archaic
spelling that will perhaps connote the golden age of piracy. In that case, consumers
are also likely to pronounce it in the same or similar way that “pirate” is pronounced.
The involved marks share a visual similarity in that PYRAT and PIRATE are not so
different.
The marks differ, however, with respect to their connotations and commercial
impressions. Opposer’s mark simply conjures a feeling of nostalgia for “pirates” or
“piracy,” and this is certainly enhanced in the context of the goods, inasmuch as there
is a strong association between rum and pirates.13 Applicant’s mark, PIRATE PISS,

11 5 TTABVUE 61-250. As explained in one of the materials, “Pirate or Pyrates? What gives?!
Nothing really. Today, the words ‘Pirate’ or ‘Piracy’ are spelled with an ‘I.’ In the Golden Age
of Piracy, spelling was a haphazard kind of thing, and the word was often spelled with a ‘y.’
So there was a time when the word Pirate was spelled Pyrate, Pirate, Pyrat, or Pirat. I use
pyrates, just for the whimsy and feel of it.” 5 TTABVUE 91.
12 See, e.g., advertisement for “NOLA PYRATE WEEK” (an affair in New Orleans, Louisiana).
Id. at 81-84.
13 The long storied association between pirates and rum is a matter of common knowledge of
which the Board can take judicial notice. See Fed. R. Evid. 201(b)(1); Wella Corp. v.
California Concept Corp., 192 USPQ 158 (TTAB 1976), rev’d on other grounds, 558 F.2d 1019,
194 USPQ 419, 422 n.5 (CCPA 1977) (fact of common knowledge appropriate
for judicial notice); In re Thermo LabSystems Inc., 85 USPQ2d 1285, 1291 (TTAB
2007) (common knowledge that places are often named after individuals). This is also
corroborated and explained via materials in the record, e.g., “Rum’s association with piracy
began with British privateers trading on the valuable commodity. As some of the privateers
became pirates and buccaneers, their fondness for rum remained, the association between
the two only being strengthened by literary works such as Robert Louis Stevenson’s Treasure
Island.” 6 TTABVUE 41 (www.wikipedia.com).
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on the other hand, conjures the vulgar image of urine from a pirate.14 In the context
of Applicant’s beer, and for better or worse, the mark will likely be understood as a
humorous, self-deprecating description of a quality or strength of the beer or simply
just as an arbitrary vulgar expression. Nevertheless, the strong image and
commercial impression of Applicant’s mark, PIRATE PISS, distinguishes it from
Opposer’s PYRAT mark.
Considering the marks in their entireties, there are some similarities in
appearance and sound, but the unique connotation and strong commercial impression
of Applicant’s mark helps distinguish it from Opposer’s mark. Accordingly, this factor
weighs against a finding of likely confusion.
E. Conclusion
Upon consideration of the entire record and the parties’ arguments, we conclude
that confusion is not likely. Particularly, we find that Applicant’s mark PIRATE PISS
and Opposer’s mark PYRAT (or PYRAT RUM) are sufficiently distinguishable from
one another that, when used on beer and rum, respectively, there would be no
likelihood of confusion as to the source of the goods. We make this finding bearing in
mind that the record is weak with regard to showing a relationship between beer and
rum, but also that it is common knowledge that the involved goods may be purchased

14 The Board may take judicial notice of dictionary definitions. See Univ. of Notre Dame du
Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983) and In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006)
(taking notice of online dictionaries that exist in printed format or regular fixed editions).We
take judicial notice of the following dictionary definition:
Piss: (usually vulgar) : urine. MERRIAM-WEBSTER DICTIONARY (merriam-webster.com,
accessed on June 8, 2018)
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from the same retail stores, namely liquor stores, and marketed to the same broad
class of consumers, namely, adult drinkers of alcoholic beverages.
Decision: The opposition is dismissed.