Patron Spirits International AGv.Peter W. Noyes

Trademark Trial and Appeal Board

Oct 28, 2016

No. 91215615 (T.T.A.B. Oct. 28, 2016)

Mailed: October 28, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Patron Spirits International AG
v.
Peter W. Noyes
_____

Opposition No. 91215615
_____

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

Peter W. Noyes, pro se.
_____

Before Cataldo, Ritchie, and Adlin, Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

On March 28, 2013, Peter W. Noyes (“Applicant”) applied to register IT’S
PIRATE TIME, in standard character form, for “distilled spirits,” in
International Class 33, and “retail store services featuring rum and rum
based products and also featuring branded merchandise including apparel
and apparel accessories, housewares, jewelry, gift novelties, and office and
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91215615
2
stationery supplies,” in International Class 35.1 On March 26, 2014, Patron
Spirits International AG (“Opposer”), filed an opposition to the registration of
Applicant’s mark on the ground that it is likely to cause confusion with
Opposer’s marks. Specifically, Opposer asserted in its Notice of Opposition
that it owns Registration No. 2727996 for PYRAT, in typed drawing form,2
for “distilled spirits,” in International Class 33,3 and Registration No.
2058075 for PYRAT RUM, also in typed drawing form, for “rum,” in
International Class 33.4
Applicant’s answer denies the salient allegations of the Notice, except that
he admits that Opposer owns its pleaded registrations.
Both parties filed briefs, and Opposer filed a reply brief.
The Record
The record consists of the pleadings; the file of the involved application;
and Opposer’s Notice of Reliance on status and title copies of its pleaded
trademark registrations as well as excerpts from printed publications and
Internet web pages; excerpts of Applicant’s written responses to Opposer’s
discovery requests; and printouts of third-party registrations intended to
show relatedness of the goods and services. The record also contains

1 Application Serial No. 8588933, filed March 28, 2013, alleging a bona fide intent to
use the mark in commerce.
2 “Prior to November 2, 2003, ‘standard character’ drawings were known as ‘typed’
drawings. The mark on a typed drawing was required to be typed entirely in capital
letters. A typed mark is the legal equivalent of a standard character mark.” TMEP
§ 807.03(i) (April 2016).
3 Registered June 17, 2003. Renewed.
4 Registered April 29, 1997. Renewed.
Opposition No. 91215615
3
Applicant’s notice of reliance on Internet web pages and printouts of third-
party registrations intended to show that Opposer’s PYRAT mark is
suggestive and thus not entitled to a broad scope of protection.
Standing and Priority
Standing is a threshold issue that must be proven in every inter partes
case. See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982) ("The facts regarding standing . . . must be
affirmatively proved. Accordingly, [plaintiff] is not entitled to standing solely
because of the allegations in its [pleading]."). To establish standing in an
opposition, opposer must show both “a real interest in the proceedings as well
as a ‘reasonable’ basis for his belief of damage.” See Ritchie v. Simpson, 170
F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999).
As a result of Opposer’s submission of status and title copies of its
Registration Nos. 2727996 (PYRAT), and 2058075 (PYRAT RUM), Opposer
has established its standing. See Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). Likewise, because Applicant has
not counterclaimed to cancel these registrations, priority is not at issue with
respect to the marks and goods set out in the registrations. King Candy Co. v.
Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974). We
note further that Applicant conceded that Opposer has priority. See 4
TTABVUE 2-3. See also 23 TTABVUE 3-4.

Opposition No. 91215615
4
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
relevant, probative evidence in the record related to a likelihood of confusion.
See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973); see also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003); and In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities
between the goods and services. See Federated Foods, Inc. v. Fort Howard
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.”). We
discuss the du Pont factors for which there is relevant argument and
evidence. For purposes of our likelihood of confusion analysis, we focus on the
most relevant pleaded registration, Registration No. 2727996 (PYRAT).
That is, if we find a likelihood of confusion as to this pleaded registration, we
need not find it as to the other. On the other hand, if we do not find likelihood
of confusion with the mark in this registration, we would not find it as to the
other pleaded registration. See In re Max Capital Group Ltd., 93 USPQ2d
1243, 1245 (TTAB 2010).
Opposition No. 91215615
5
The Goods and Services and Channels of Trade
The goods in Registration No. 2727996 are “distilled spirits.” The
application also identifies “distilled spirits.” Thus the goods are
identical. In addition, the application identifies, in another
International Class, “retail store services featuring rum and rum based
products …, and Applicant admits that rum isa “distilled spirit.”5
Retail store services have frequently been found to be related to goods
sold by those retail stores, in this case rum, a distilled spirit. See, e.g.,
In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed.
Cir. 1988) (BIGGS for retail grocery and general merchandise store
services likely to be confused with BIGGS for furniture); In re Thomas,
79 USPQ2d 1021, 1024 (TTAB 2006) (“It is clear that consumers would
be likely to believe that jewelry on the one hand and retail stores
selling jewelry on the other emanate from or are sponsored by the
same source if such goods and services are sold under the same or
similar marks.”); In re Peebles Inc., 23 USPQ2d 1795, 1796 (TTAB
1992) (“As we have said before there is no question that store services
and the goods which may be sold in that store are related goods and
services …”); see also 4 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition § 24:25 (4th ed. updated
September 2016) (“Where the services consist of retail sales services,
likelihood of confusion is found when another mark is used on goods
Opposition No. 91215615
6
which are commonly sold through such a retail outlet.”). Since we thus
find a relationship between Opposer’s “distilled spirits” on the one
hand, and Applicant’s “retail store services featuring rum and rum
based products” on the other hand, it is not necessary for us to find
similarity with other services in that class. See Tuxedo Monopoly, Inc.
v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981); Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393, 1398
(TTAB 2007).
As for the channels of trade, where the goods are identical, it is presumed
that the channels of trade are the same as well. 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).6 As for the services, neither Opposer’s identification of goods nor
Applicant’s identification of services include any limitations as to channels of
trade or classes of consumers, and their goods and services are therefore
presumed to move in all normal channels of trade for those goods and
services and to be available to all classes of consumers. Citigroup Inc. v.
Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed.
Cir. 2011); In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In
re Elbaum, 211 USPQ 639, 640 (TTAB 1981); see also Stone Lion Capital

5 16 TTABVUE 58.
Opposition No. 91215615
7
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162
(Fed. Cir. 2014) (“Even assuming there is no overlap between Stone Lion’s
and Lion’s current customers, the Board correctly declined to look beyond the
application and registered marks at issue. An application with ‘no restriction
on trade channels’ cannot be ‘narrowed by testimony that the applicant’s use
is, in fact, restricted to a particular class of purchasers.’”). Accordingly, we
must presume that Opposer’s distilled spirits may be sold through retail
outlets like Applicant’s, and to the same consumers.
These factors weigh in favor of finding a likelihood of confusion.
The Marks
We consider and compare the appearance, sound, connotation and
commercial impression of the marks in their entireties. Palm Bay Imports, 73
USPQ2d at 1692. In comparing the marks, we are mindful that the test is not
whether the marks can be distinguished when subjected to 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.
San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565
F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison
Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff'd unpublished, No. 92-1086
(Fed. Cir. June 5, 1992). The proper focus is on the recollection of the average

6 This was also admitted by Applicant in Requests for Admission Nos. 15 and 16. See
16 TTABVUE 58.
Opposition No. 91215615
8
consumer, who retains a general rather than specific impression of the
marks. Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335,
344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108
(TTAB 1975).
Opposer’s mark is PYRAT. Opposer included a definition of PYRAT as an
alternate spelling of “pirate”:
Pirate: Also pyrat: 1. One who robs and plunders on the sea, navigable
rivers, etc., or cruises about for that purpose; one who practices piracy;
a sea-robber.7

Other sources confirm this understanding of “PYRAT” as an alternate
spelling of “pirate,” particularly in historical texts:
Wikipedia: Piracy: Did you know . . . that in the Golden Age of
Piracy, the word “pirate” was often spelled ‘pyrate’ or ‘pyrat’?
http://en.wikipedia.org; 16 TTABVUE 139.

Historic Print (L): The battel between the Spaniards and the
pyrats or buccaniers before the Citty of Panama [sic]; by Library
Images; Source: Library of Congress; Date: 1648.
Amazon.com; 16 TTABVUE 124.

A true relation, of the lives and deaths of two most famous
English pyrats, Pursar, and Clinton who lived in the reigne of
Queene Elizabeth [sic]. Together . . . particular actions of their
takings (1639) By Thomas Heywood.
Amazon.com; 16 TTABVUE 128.

P132-133 Nola Pyrate Week: Take What Ye Can, Give
Something Back: . . . While we insist on spelling it PYRATE, ye
may see Pirate, Pyrat, Pyraat or other variations.
http://nolapyrateweek.com. 16 TTABVUE 132-133.

Piracy, Then & Now: . . . In the Golden Age of Piracy, spelling
was a haphazard kind of thing, and the word was often spelled

7 Oxford English Dictionary. 16 TTABVUE 113.
Opposition No. 91215615
9
with a ‘y”. So there was a time when the word Pirate was spelled
Pyrate, Pirate, Pyrat, or Pirat.
http://pirates.hegwisch.net/piracy. 16 TTABVUE 142.

Applicant’s mark is IT’S PIRATE TIME. While the sight and sound are
somewhat different to the extent Applicant’s mark includes two additional
terms and has a different spelling of the term PYRAT/PIRATE, we find that
the commercial impression is quite similar in that the dominant term in
Applicant’s mark is the same as Opposer’s mark and consumers could
perceive Applicant’s mark as a reference to Opposer’s goods, exclaiming that
it is time for Opposer’s PYRAT, which would likely be pronounced the same
as “pirate.” See In re Teradata Corp., 223 USPQ 361, 362 (TTAB 1984)
(noting that there is no “correct” way to pronounce a trademark). This is
especially so since the goods are identical and the services relate to those
same goods. Alternatively, consumers could perceive Applicant’s mark as a
variation of Opposer’s, or a slogan developed by Opposer in connection with
its mark.
Accordingly, we find that the relatively minor dissimilarities in sight and
sound are outweighed by similarities in connotation and commercial
impression, and this du Pont factor also weighs in favor of finding likelihood
of confusion.

Strength of the Mark
Opposition No. 91215615
10
Applicant alleges that the term “pirate” – or pyrat – is weak and
suggestive in that it is often associated with rum, and that consumers will
therefore recognize subtle differences between the marks due to widespread
third-party use of the term. See Jack Wolfskin Ausrustung Fur Draussen
GmbH & Co. KGAA v. New 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, 1675 (Fed. Cir. 2015); Promark v.
GFA Brands, Inc., 114 USPQ2d 1232, 1244 (TTAB 2015) (“Such third-party
registrations and uses are competent to show that the common term has an
accepted meaning in a given field and that marks containing the term have
been registered and used for related goods because the remaining portions of
the marks may be sufficient to distinguish the marks as a whole from one
another.”).
Specifically, Applicant points to a number of websites that use the term
“pirate” in a suggestive or descriptive manner in reference to rum. A number
of these include references to brands that do not appear to be sold in the
United States, however. Most of the others are either recipes including rum
that incorporate the term “pirate” in the name, or are discussions about
pirates drinking rum. Some examples include the following:
Pirates: Stevenson shows pirates simultaneously as brutal and
romantic. He also provides some of the best-known pirate
clichés, right down to the parrot perched on Long John Silver’s
shoulder. Stevenson gets it mostly correct as his pirates lust for
money, rum, and glory, all while freely indulging their anger
and pompous brutality.
Opposition No. 91215615
11
Drunkard.com; Attached to 20 TTABVUE 20.

History: Did pirates really drink a lot of rum?: In every movie,
cartoon, comic or any other fictional sources I have read or
watched that involves sea pirates, it is always shown that their
favorite beverage is rum.
History.stackexchange.com; Attached to 20 TTABVUE 40.

Alcoholic Spirits: pirates & rum: . . . Thanks to Captain Billy
Bones in the book, Treasure Island, the alcoholic beverage most
associated with pirates is rum.
http://pirates.hegewisch.net; Attached to 20 TTABVUE 48.

The Pirate Empire: Authentic Pirate Rum Drinks: Spring is
finally starting to show up in my part of the world, and everyone
is preparing for festivals, outdoor parties and nights under the
stars. For those of us who enjoy pirating, it helps to have some
rum available.
http://thepirateempire.blogspot.com; Attached to 20 TTABVUE
52.

A Pirates Life for Me: Margaritas and Rum on the River:
theriverdeck.com; Attached to 20 TTABVUE 134.

Applicant also relies on third-party registrations from the USPTO
electronic database system, TESS, only two of which are “live.” These are
PIRATE AND PARROT (and design), Registration No. 417073, for “rum”; and
PIRATES OF THE MISSISSIPI, Registration No. 4686707, for alcoholic
beverages including distilled spirits.
Evidence of extensive registration and use of a term by others as a mark
can be “powerful” evidence of weakness. See Jack Wolfskin, 116 USPQ2d at
1136; Juice Generation, 115 USPQ2d at 1674. However, in Juice Generation
there were at least twenty-six relevant third-party uses or registrations of
record, see 115 USPQ2d at 1672 n. 1, and in Jack Wolfskin, there were at
Opposition No. 91215615
12
least fourteen, 116 USPQ2d at 1136 n. 2. By comparison, Applicant has
produced at best a couple of actual uses, which is not persuasive that the
mark is diluted or weak. Thus, while PYRAT/PIRATE may be suggestive in
regard to rum, it is not so weak on this record as to be afforded such a limited
scope of protection as Applicant seeks. To the extent that consumers will look
to slight differences in the marks, as noted above, they are likely to perceive
Applicant’s IT’S PIRATE TIME as a variation of or otherwise related to
Registrant’s PYRAT mark.
Opposer, on the other hand, would have us consider the commercial
strength of its mark. In particular, Opposer asserts that the PYRAT mark is
“well known.”8 Fame, where it exists, plays a dominant role assessing
likelihood of confusion. Kenner Parker Toys Inc. v. Rose Arts Industries, Inc.,
963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992). But Opposer only submitted
a number of advertisements containing its PYRAT mark, and some examples
of media coverage of the mark on npr.org, adweek.com, and others.9 There is
no evidence of the extent of consumer exposure, nor any sales or advertising
figures, much less any context that can be used for comparisons within the
industry.10

8 22 TTABVUE 12.
9 17 TTABVUE.
10 The information that Opposer points to in Exhibit 33 is unhelpful on this point,
and also is not testimony, but rather is a printed publication admissible only for
consumer perception, not truth of the matter. See Safer Inc. v. OMS Investments
Inc., 94 USPQ2d 1031, 1039 (TTAB 2010).
Opposition No. 91215615
13
Overall, we find both the conceptual and commercial strength of the mark
to be neutral.
Consumer Sophistication
Although there is evidence of record that rum and distilled spirits may
cost up to hundreds of dollars per bottle, and may involve sophisticated
consumers, we must look at the identification of goods and services in
assessing the range of prices, which could also include very inexpensive
products. Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the
question of registrability of an applicant’s mark must be decided on the basis
of the identification of goods set forth in the application regardless of what
the record may reveal as to the particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to which the sales of
goods are directed.”) (citations omitted). Since rum and distilled spirits may
be inexpensive, impulse purchases, we find that this factor favors a finding of
likelihood of confusion. See Stone Lion Capital, 110 USPQ2d at 1163
(affirming that TTAB properly considered all potential purchasers for recited
services, including both sophisticated and unsophisticated investors, since
precedent requires consumer care for likelihood-of-confusion decision be
based “on the least sophisticated potential purchasers”).

Opposition No. 91215615
14
Conclusion
Considering all of the arguments and evidence of record as they pertain to
the relevant du Pont factors, in comparing Opposer’s Mark in Registration
No. 2727996 (PYRAT) to Applicant’s mark, IT’S PIRATE TIME, we conclude
that the parties’ goods are identical and the goods and services are related,
and are likely to be marketed through the same channels of trade to
unsophisticated consumers, and that the marks are similar and convey a
similar commercial impression. Accordingly, we find a likelihood of confusion.
DECISION: The opposition is sustained as to Registration No. 2727996.