Rebel Wine Co. LLCv.Piney River Brewing Co.

Trademark Trial and Appeal Board

May 25, 2018

No. 92063917 (T.T.A.B. May. 25, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: May 25, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Rebel Wine Co. LLC
v.
Piney River Brewing Co.
_____

Cancellation No. 92063917
_____

J. Scott Gerien and Joy L. Durand of Dickenson, Peatman & Fogarty
for Rebel Wine Co. LLC.

Michael B. Bressman of the Vanderbilt Legal Clinic
for Piney River Brewing Co.
_____
Before Adlin, Hightower, and Lynch
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

Rebel Wine Co. LLC (“Petitioner”) petitions to cancel Registration No. 4597351 for
the mark MASKED BANDIT1 in standard characters for “Ale; Beer; Beer, ale, lager,
stout and porter; Brewed malt-based alcoholic beverage in the nature of a beer; Pale

1 Issued on the Principal Register on September 2, 2014, from an application filed April 17,
2014, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a).
Cancellation No. 92063917
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beer” in International Class 32 based on priority and likelihood of confusion under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1152(d).2 Petitioner pleads ownership
of Registration Nos. 33119263 and 39743404 both for the mark BANDIT in standard
characters for, respectively, “Wine” and “Alcoholic beverages except beers,” all in
International Class 33.
In its answer, Respondent denied the salient allegations of the petition and
asserted the affirmative defense of laches.5 However, in its Brief, Respondent
expressly waived the defense, stating that it “is not asserting a laches affirmative
defense.”6
I. Evidentiary Record
The record consists of:
• The pleadings;
• The file of challenged Registration No. 4597351;7
• TSDR (Trademark Status and Document Retrieval) records showing the
current status and title (owner) of pleaded Registration Nos. 3311926 and
3974340. 6 TTABVUE 28-42;

• TSDR records for third-party use-based registrations of the same marks for
both beer and wine. 6 TTABVUE 43-53;

2 1 TTABVUE (Complaint).
3 Issued on the Principal Register on October 16, 2007, from an application filed on February
2, 2006; renewed. See 15 U.S.C. §§ 1059, 1065.
4 Issued on the Principal Register on June 7, 2011, from an application filed October 20, 2010;
Section 8 affidavit accepted and Section 15 affidavit acknowledged. See 15 U.S.C. §§ 1058,
1065.
5 5 TTABVUE.
6 29 TTABVUE 18 n.1.
7 See Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b).
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• Screenshots of third-party websites offering both beer and wine under the
same mark. 6 TTABVUE 54-256;

• Screenshots of third-party websites showing the same retail outlet, bar or
restaurant advertising or offering both beer and wine, including some selling
Petitioner’s wine. 6 TTABVUE 257-453;

• Screenshots of a third-party search website allowing users to “Find and price
wines, beers and spirits across all online stores,” with search results for
Petitioner’s wine. 6 TTABVUE 454-458;

• Articles about alcoholic beverage producers who make both wine and beer. 6
TTABVUE 459-502;

• Articles and blogs that feature or mention Petitioner’s wine. 6 TTABVUE 503-
717;

• The declaration of Joy Durand, Petitioner’s counsel, to authenticate
accompanying Internet image search results for the terms “bandit” and
“masked bandit.” 7 TTABVUE 2-40;

• The declaration of Robert R. Torkelson, Chairman of Petitioner’s Board of
Directors, and exhibits, some of which are confidential. 7 TTABVUE 40-363and
8 TTABVUE;

• The declaration of Brian Durham, Respondent’s co-founder, co-owner and
Head Brewer, and exhibits. 9 TTABVUE;

• The declaration of Joleen Senter Durham, Respondent’s co-founder and co-
owner, and exhibits, some of which are confidential. 10 TTABVUE and 15
TTABVUE (confidential exhibits);

• The declaration of Rodney Edwards, General Manager of Grellner Sales and
Service, a wholesale beverage distributor, and exhibits. 11 TTABVUE;

• The declaration of Paula J. Glidewell, Vice President of Glidewell Distributing,
a wholesale food and beverage distributor, and exhibits. 12 TTABVUE;

• The declaration of Brooke Hamilton, founder and owner of Grindstone Design,
LLC d/b/a Grindstone Design Studio, who designed all but one of Respondent’s
beer cans and did promotional design work for Respondent, and exhibits. 13
TTABVUE;

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• The declaration of Brianne Montgomery, a Legal Assistant with Respondent’s
law firm and exhibits. 14 TTABVUE;

• The declaration of J. Scott Gerien, Petitioner’s counsel, which, inter alia,
authenticates photographs from Cost Plus World Market in Napa, California,
Safeway in Napa, California, information about the third-party use of THE
DOCTOR & THE BANDIT for wine, as well as cease-and-desist and
enforcement letters sent to breweries and a winery using marks containing
BANDIT. 19 TTABVUE 36-71;

• The declaration of Mark Billings, Executive Vice President/General Manager
of Young’s Market Company Arizona. 19 TTABVUE 74-75;

• The declaration of Richard Fiumara, Senior Regional Manager, America West,
for Sutter Home Winery, Inc., with exhibits. 19 TTABVUE 78-88;

• TSDR records for registrations. 16 TTABVUE 33-541; 19 TTABVUE 5-34;

• Dictionary definitions and translations of various terms. 16 TTABVUE 542-
553;

• Screenshots from the third-party websites. 16 TTABVUE 554-1671;

• Excerpts of Petitioner’s discovery responses. 16 TTABVUE 1672-1708; 17
TTABVUE 1-8; 26 TTABVUE; 27 TTABVUE.

II. Standing and Priority
Any person who believes it is or will be damaged by registration of a mark has
standing to file a petition to cancel. Trademark Act Section 14, 15 U.S.C. § 1064. “A
petitioner is authorized by statute to seek cancellation of a mark where it has ‘both a
“real interest” in the proceedings as well as a “reasonable” basis for its belief of
damage.’” Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014) (quoting ShutEmDown Sports, Inc. v. Lacy, 102
USPQ2d 1036, 1041 (TTAB 2012) and citing Ritchie v. Simpson, 170 F.3d 1092, 50
USPQ2d 1023 (Fed. Cir. 1999)). Petitioner’s claim of likelihood of confusion based on
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its pleaded registrations and prior use of an allegedly confusingly similar mark
establishes its standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1844 (Fed. Cir. 2000) (petitioner’s prior registrations establish “direct
commercial interest and its standing to petition for cancellation”); Lipton Indus., Inc.
v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
It is undisputed that Petitioner has priority. The February 2, 2006 and October
20, 2010 filing dates of the applications that matured into Petitioner’s pleaded
registrations precede the April 17, 2014 filing date of the application that matured
into Respondent’s challenged registration, and Respondent does not allege prior use.
See Brewski Beer Co. v. Brewski Bros. Inc., 47 USPQ2d 1281, 1284 (TTAB 1998) (a
petitioner who owns a registration may rely on it to establish constructive first use
as of the application filing date).
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
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mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”). Petitioner bears the
burden of proving its claim of likelihood of confusion by a preponderance of the
evidence. Cunningham, 55 USPQ2d at 1848.
A. The Strength of Petitioner’s Mark and the Number and Nature of
Similar Marks for Similar Goods
We first address the strength of Petitioner’s mark because it affects the mark’s
scope of protection. Petitioner argues under the fifth du Pont factor that its BANDIT
mark should be deemed strong within the wine industry, while Respondent argues
under the sixth du Pont factor that the mark is weak and diluted. In determining the
strength of a mark, we consider both its inherent strength based on the nature of the
term itself and its commercial strength based on use in the marketplace. See In re
Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir.
2010) (measuring both conceptual and marketplace strength).
The strength of a mark rests on the extent to which “a significant portion of the
relevant consuming public . . . recognizes the mark as a source indicator.” Joseph
Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733,
1734 (Fed. Cir. 2017) (citing Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005)). This is not
“an all-or-nothing factor,” but instead involves assessing the mark “‘along a spectrum
from very strong to very weak’” Id. (internal citations omitted). A very strong mark
receives broader legal protection than a weak one. See Palm Bay Imps., 73 USPQ2d
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at 1694 (strong marks “enjoy wide latitude of legal protection” and are “more
attractive as targets for would-be copyists”).
Petitioner’s BANDIT mark is inherently distinctive. See In re Opus One Inc., 60
USPQ2d 1812, 1813-14 (TTAB 2001) (arbitrary mark is considered strong and
entitled to a “broad scope of protection”); see also Tea Board of India v. Republic of
Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006) (“A mark that is registered on the
Principal Register is entitled to all Section 7(b) presumptions including the
presumption that the mark is distinctive and moreover, in the absence of a Section
2(f) claim in the registration, that the mark is inherently distinctive for the goods.”).
Commercial strength may be measured indirectly by the volume of sales and
advertising expenditures in connection with the goods sold under the mark, and other
factors such as length of time of use of the mark; widespread critical assessments;
notice by independent sources of the goods identified by the mark; and the general
reputation of the goods. Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d
1347, 1354 (TTAB 2014); see also Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367,
63 USPQ2d 1303, 1308 (Fed. Cir. 2002) (recognizing indirect evidence as appropriate
proof of strength).
Petitioner provided a variety of such indirect evidence of commercial strength,
some of which is confidential and therefore will be discussed only in general terms.
Petitioner or its predecessor has used the BANDIT mark on wine since 2004,8 and it

8 7 TTABVUE 41.
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is sold in 47 states.9 The confidential record includes sales and revenue figures from
2012 through 2016 which are not insubstantial but not overwhelming.10 Respondent
criticizes the lack of context for these figures, including that Petitioner has not
provided the market share for BANDIT, and compares Petitioner’s evidence to the
total U.S. annual wine revenue figures11 and the relatively larger sales and revenue
figures of other companies in the wine and beer industries to undercut the
persuasiveness of Petitioner’s evidence.12 Petitioner advertises its BANDIT wine
online, in magazines, social media, retail outlets and trade shows, and the
confidential record includes the not particularly impressive promotional expenditures
for a recent four-year period.13
Respondent asserts that Petitioner’s advertising expenditures are relatively
smaller than what the Board has relied on for fame in other cases. One 2012
advertisement in Women’s Health Magazine, however, resulted in 5.6 million
consumer impressions.14 Petitioner’s evidence of commercial strength in the form of
media coverage includes numerous articles featuring or mentioning Petitioner’s
BANDIT wine, often characterizing it as one of the best boxed wines on the market.15
Examples include articles from the New York Daily News website (“Boxed wine is

9 7 TTABVUE 45.
10 8 TTABVUE 4-6 (Torkelson Declaration -- confidential).
11 16 TTABVUE 15 (Nat’l Assoc. of Am. Wineries reporting $35 billion for 2014).
12 29 TTABVUE 39 (Respondent’s Brief).
13 7 TTABVUE 41 (Torkelson Declaration).
14 7 TTABVUE 44 (Torkelson Declaration).
15 6 TTABVUE 505-717; 7 TTABVUE 44-45.
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hotter than ever – find the perfect pairing for you”),16 the Wine Enthusiast Magazine
website (“The 26 Best Boxed Wines”),17 the Forbes website (“The Best in Boxed Wines:
Thinking Inside the Box”),18 and the Wine Spectator website (“Box Scores: 15 Top-
Rated California Value Wines”).19 However, Respondent alleges that many of the
articles only “mention BANDIT in passing and appear to be of limited circulation.”20
Indeed, Petitioner failed to provide circulation figures. On the other hand, Petitioner’s
BANDIT wine appeared in the mainstream movie “Trainwreck.”21
Petitioner’s revenue, sales, and advertising figures do not convince us of the
strength of the BANDIT mark in the wine industry in general, and their lack of
context diminishes the persuasiveness of this evidence. Cf., e.g., Recot Inc. v. Becton,
214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000) (noting that retail sales of
products under the famous mark FRITO-LAY exceeded $6 billion in 1995, for a
greater than 50 percent market share in the domestic snack chip industry). On the
other hand, the media evidence touting Petitioner’s wine suggests some recognition
in the boxed wine market.
Evidence of third-party use also bears on the strength or weakness of a
registrant’s mark. In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1751

16 6 TTABVUE 505-12.
17 6 TTABVUE 526-28.
18 6 TTABVUE 539-43.
19 6 TTABVUE 620-23.
20 29 TTABVUE 39 (Respondent’s Brief).
21 7 TTABVUE 45 (Torkelson Declaration); see also 7 TTABVUE 97.
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(Fed. Cir. 2017). If the evidence establishes that the consuming public is exposed to
third-party uses of similar marks for similar goods, it “is relevant to show that a mark
is relatively weak and entitled to only a narrow scope of protection.” Palm Bay Imps.,
73 USPQ2d at 1693. Respondent contends that Petitioner’s mark lacks commercial
strength because it is “diluted” by widespread third-party use and registration of the
term BANDIT. Respondent points to the following 14 third-party uses of marks that
consist of or include BANDIT (or variations such as BANDITO) for alcoholic
beverages:22
Mark Goods Additional Information
BANDIT BROWN Beer City Star Brewing (Berthoud, CO)
website lists as “Currently
Available” and indicates that this
beer won several awards in 2013
BANDOLERO Tequila Website of Safeway grocery store in
Largo, Florida
HOP BANDIT Beer Bank Brewing Co.
LA BANDOLERA Tequila MS Walker Fine Wines & Spirits
website lists this tequila with an
indication that it is available in the
states of Massachusetts and Rhode
Island
LIL’ BANDIT BROWN ALE Beer Northwoods BrewPub Grill (Osseo,
WI) website indicates that it offers
beer “brewed on premises to be
enjoyed fresh and unpasteurized”
as well as “FRESH BEER TO GO!”
NEATO BANDITO Beer Deep Ellum Brewing Co. shows this
beer in a can under the “Year-
Round Brews” heading
NODA BANDITO Beer Article on charlottefive.com website
announcing the upcoming release

22 29 TTABVUE 36 (Respondent’s Brief); 16 TTABVUE 1507-1576 (third-party uses).
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by NoDa Brewing of Bandito
Mexican Lager, and stating “Four-
packs of the 16-ounce cans will be
available at the brewery for $8.99
each….”
PIE BANDIT Beer Spoonwood Brewing Company
(Bethel Park, PA) uses the slogan
“Fresh beer, fresh food,” and shows
this beer in a glass with a pumpkin
design and the wording
“Septoberfest 2015.”
STICKY BANDIT Beer Badger State Brewing (Green Bay,
WI) website lists this under its
“Seasonal Beers” for the month of
November
THREE BANDITS Beer Lupine Brewing Company (Delano,
MN) website states of this beer,
“Status: Taproom/Limited
Distribution”
TRAIL BANDIT Beer Crank Arm Brewing website
indicates this beer is “On Tap Year-
Round”
BANDIT BREWING CO. Beer Facebook page states that “Bandit
Brewery is a nano-brewery and the
smallest brewery in Montana with
a quaint tasting room in Darby,
Montana….”
THE DOCTOR & THE
BANDIT
Wine Premiere Napa Valley website
states that “This rare expression of
Napa Valley winemaking is one of
only 60 bottles that will ever be
made.”
WILD BANDIT Wine Amazon.com

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Respondent also points to Alcohol and Tobacco Tax and Trade Bureau (“TTB”) label
approvals for alcoholic beverages in which the labels include BANDIT or foreign
translations of the term.23
However, Petitioner argues that some of this evidence is irrelevant (citing the
marks BANDOLERO and LA BANDOLERA for tequila, in particular, which it deems
too different from BANDIT). Moreover, Petitioner contends that the evidence does
not show public awareness of these alleged uses. Palm Bay Imps., 73 USPQ2d at 1693
(“The probative value of third-party trademarks depends entirely upon their usage.”).
For example, the level of consumer exposure to what mostly appear to be local
microbreweries remains unclear, such as with the THREE BANDITS beer designated
as “Taproom/Limited Distribution.”24 Finally, Petitioner counters that it has
aggressively and successfully enforced its trademark rights25 to prevent any
weakening of its mark, and introduced ten enforcement letters sent to most of the
third-party users set forth above after Respondent introduced the third-party
evidence. Respondent acknowledges that Petitioner has pursued some enforcement
actions against these third-party users, but notes that the enforcement efforts were
in some cases delayed and do not extend to all the users. Petitioner replies that it

23 29 TTABVUE 36-37 (Respondent’s Brief); 14 TTABVUE 4-7 (Montgomery Declaration
pointing to 13 labels including the term BANDIT and 9 labels including either BANDOLERO
or BANDOLERA).
24 16 TTABVUE 1512.
25 7 TTABVUE 45-53; 19 TTABVUE 37-38; 19 TTABVUE 50-71 (cease-and-desist and
enforcement letters).
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deliberately chose not to address certain uses because of the “limited scope and extent
of the use of the marks.”26
While Respondent has not presented specifics concerning the extent and impact
of the third-party uses, we nevertheless have evidence of these marks being used for
various types of alcoholic beverages. See Jack Wolfskin Ausrustung Fur Draussen
GmbH & Co. v. Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136
(Fed. Cir. 2015); see also Rocket Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d
1066, 1072 (TTAB 2011) (internet printouts “on their face, show that the public may
have been exposed to those internet websites and therefore may be aware of the
advertisements contained therein”). Some of the uses, such as on Amazon.com and at
a Safeway, suggest wider consumer exposure. But we agree with Petitioner that
many others suggest that their consumer exposure likely is rather limited. For
example, indications noted in the “Additional Information” column in the table above
that beers are only seasonal, or are distributed on the premises of local
microbreweries, tend to suggest more restricted consumer exposure to these uses. The
third-party evidence here is far less voluminous and compelling than that in Juice
Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1673 n.1 (Fed.
Cir. 2015) or in Jack Wolfskin, 116 USPQ2d at 1136 n.2. See also Primrose Retirement
Communities, LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030 (TTAB
2016) (weakness found based on at least 85 actual uses of ROSE-formative marks for
similar services, eight similar third-party registrations, expert testimony and other

26 31 TTABVUE 15 (Petitioner’s Reply Brief).
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evidence regarding the common nature of ROSE-formative marks in the industry,
and testimony by opposer that it did not vigorously enforce its mark). Overall, we find
this record insufficient to “show that customers … have been educated to distinguish
between different … [BANDIT] marks on the basis of minute distinctions.” Juice
Generation, 115 USPQ2d at 1674 (internal quotations omitted). However,
Respondent’s evidence tends to show that the term BANDIT is somewhat suggestive
in the alcoholic beverage industry. Id. at 1675 (third-party use and registrations may
show that a term carries a suggestive connotation in the industry).
Considering the record in its entirety as to strength, including the inherent
distinctiveness of BANDIT and its recognition in the boxed wine market,
counterbalanced by the number and nature of third-party uses, we accord Petitioner’s
mark a normal degree of strength overall as to its identified goods in the likelihood
of confusion analysis.
B. Similarity of the Marks
Turning 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., 73 USPQ2d at 1691 (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.’ [citation omitted].” In re St. Helena
Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014).
Comparing BANDIT to MASKED BANDIT, the shared term BANDIT creates a
significant visual resemblance between the two marks and makes them sound
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similar. In this case, Respondent’s addition of a term to the registered mark does not
obviate the similarity. See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc.,
526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (BENGAL and BENGAL LANCER
and design deemed confusingly similar). The additional word MASKED in
Respondent’s mark modifies BANDIT, thereby emphasizing BANDIT as the
dominant word, regardless of MASKED’s placement as the first word of the mark.
See, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1161 (Fed. Cir. 2014) (affirming TTAB’s finding that the noun LION
was the dominant part of the mark STONE LION CAPITAL). We also find the
connotation and commercial impression of both marks to be very close because of the
shared term. The evidence shows that “bandits” often are depicted wearing masks, so
that with or without “masked” as a modifier, the commercial impression remains
similar.27 Furthermore, while the record reflects that “masked bandit” may refer to a
robber wearing a mask or a raccoon,28 the same dual connotation holds true with
“bandit.”29 Thus, whether considering the human or animal reference, the meanings
and commercial impressions engendered by both marks are very similar. We find
unpersuasive Respondent’s argument that its MASKED BANDIT mark would be
perceived only as a reference to a raccoon, based on its particular trade dress in the
marketplace and its naming scheme for other products. Our analysis focuses on the

27 7 TTABVUE 2, 7-25 (Durand Declaration and exhibits).
28 7 TTABVUE 2, 24-39 (Durand Declaration and exhibits) (results of a Google images search
for “masked bandit” displaying both raccoons and thieves wearing masks).
29 7 TTABVUE 2, 7-8 (Durand Declaration and exhibits) (results of a Google images search
for “bandit” displaying both raccoons and thieves wearing masks).
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marks in the registrations, not “extrinsic evidence concerning the actual uses of the
marks” where “the restrictions are not reflected in the four corners of the …
registrations.” In re i.am.symbolic, 123 USPQ2d at 1748-49 (rejecting limitations
based on examples of use where the limitations are not in the registration, and
holding “[t]o the extent that Symbolic is advocating that we consider another mark,
will.i.am, that is not part of the applied-for mark in analyzing the similarity of the
marks, we decline to do so”).
Considering the marks in their entireties, we find MASKED BANDIT and
BANDIT similar, weighing in favor of likely confusion. See Wella Corp. v. California
Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (finding
CALIFORNIA CONCEPT marks substantially similar to prior mark CONCEPT); In
re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (“Applicant has
taken registrant’s mark and added its ‘product mark’ to it. It is not clear why the
addition of the word VANTAGE would avoid confusion. It is more likely to be
considered another product from the previously anonymous source of TITAN medical
diagnostic apparatus, namely, medical ultrasound devices.”).
C. Relatedness of the Goods
As to the goods, we must determine whether their degree of relatedness rises to
such a level that consumers would mistakenly believe the parties’ goods and services
emanate from the same source. In making this analysis of the second du Pont factor,
we look to the identifications of goods in the pleaded and challenged registrations.
See Stone Lion Capital Partners, 110 USPQ2d at 1162; Octocom Sys., Inc. v. Houston
Cancellation No. 92063917
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Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Petitioner’s goods are wine and alcoholic beverages except beers, while Respondent’s
registration identifies beer and various types of beer. Respondent correctly
acknowledges that while no per se rule exists as to the relatedness of beer and wine,
“the Board has often concluded that alcoholic beverages, including beer and wine, are
related goods.”30
In support of its position that the goods are related, Petitioner introduced
webpages of at least 24 entities offering both wine and beer under the same mark.31
This shows consumer exposure to goods such as Petitioner’s and Respondent’s
emanating from the same source under the same mark. In addition, Petitioner
submitted four third-party use-based registrations identifying both wine and beer
under the same mark.32 See Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107
USPQ2d 1424, 1432 (TTAB 2013) (“The use-based, third-party registrations . . . also
have probative value to the extent that they serve to suggest that the goods listed
therein are of a kind which may emanate from a single source under a single mark.”);
In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky
Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). Petitioner also
supplied articles about additional alcoholic beverage producers who make both wine

30 29 TTABVUE 19 (Respondent’s Brief).
31 6 TTABVUE 43-53.
32 6 TTABVUE 54-256.
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and beer,33 again reflecting consumer exposure to the possibility of beer and wine
being offered under identical marks.
Respondent offers evidence that some producers of beer and wine “market
multiple brands,”34 and contends that Petitioner’s evidence of combination
breweries/wineries therefore does not necessarily mean that the goods at issue are
sold under the same mark. However, we find Respondent’s evidence on this largely
anecdotal, and we do not accept unsubstantiated opinion testimony about what
individual consumers know or think about particular branding scenarios.35
Respondent makes a statistical argument comparing evidence of the total number
of breweries and wineries in the U.S. (“between approximately 13,000 and 18,000”
according to Respondent) compared to the number of examples of combination
breweries/wineries introduced by Petitioner (“approximately 30 examples” according
to Respondent).36 According to Respondent, citing In re Coors Brewing Co., 343 F.3d
1340, 68 USPQ2d 1059, 1063-64 (Fed. Cir. 2003), situations where beer and wine
emanate from the same source under the same mark are de minimis and do not
establish the relatedness of these goods. In Coors Brewing, the Court assessed

33 6 TTABVUE 459-502.
34 29 TTABVUE 22 (Respondent’s Brief); 11 TTABVUE 9-14, 32-59 (Edwards Declaration);
see also 6 TTABVUE 3-4, 7, 58-60, 87-89, 143-45; 16 TTABVUE 1618-21; 18 TTABVUE 6 (all
showing combined breweries/wineries that use different names for the brewery than the
winery).
35 E.g., 11 TTABVUE 11-14 (Edwards Declaration).
36 14 TTABVUE 2-232 (Montgomery Declaration and exhibits). Respondent also offered
anecdotal observations by a beer distributor about the alleged relatively uncommon
phenomenon of beer and wine produced by the same source, and that when they are the
producers “usually sell their wine and beer through different companies or different named
divisions…,” with examples attached. 11 TTABVUE 10-15 (Edwards Declaration).
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whether “something more” showed the relatedness of beer and restaurant services,
relying on evidence of the number of overall restaurants compared to the relatively
smaller number of brewpubs that brew their own beer or sell it under their own
marks. Id. at 1063-64. In this case, by contrast, Petitioner’s “examples” are just that
– rather than a comprehensive number appropriate for use in statistical analysis.
Respondent failed to provide a study or published figure of the total number of joint
producers of wine and beer. We also note the different dates and substantial variation
in some of the figures Respondent relies on to calculate its own proposed small
percentage of brewery/wineries.37 In addition, the mere number of joint producers
fails to take account of the level of renown and degree of distribution, so as to obtain
a sense of the level of consumer exposure. So, we do not find these statistical
arguments reliable or persuasive. Also, unlike in this case comparing goods -- beer
and wine -- Coors Brewing and its statistics involved a comparison of beer and
restaurant services subject to a “something more” requirement inapplicable here. Id.
at 1063.
As an additional argument against the relatedness of wine and beer, Respondent
introduced 237 pairs of third-party registrations of the same or very similar marks
for wine and beer, respectively, owned by different companies.38 Citing In re Thor
Tech, Inc., 113 USPQ2d 1546, 1549 (TTAB 2015), Respondent contends that the
Board considered comparable evidence of fifty pairs of registrations to suggest “that

37 29 TTABVUE 21 (Respondent’s Brief) (offering both 11,496 (2016 figure from TTB) and
7,900 (2014 figure from Wine America) as the number of wine producers/wineries).
38 16 TTABVUE 49-539.
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businesses in these two industries believe that their respective goods are distinct
enough that confusion between even identical marks is unlikely.” Respondent
supplemented its showing in this regard with marketplace evidence of some identical
marks in use by different entities for beer and wine, respectively.39 While this
evidence may have some probative value as to the views of coexisting mark owners,
we lack information about the underlying marketplace and any consent agreements
or other considerations that may be distinguishable from the case at hand. Also, this
showing does not take account of the unknown number of applicants who may have
been refused registration of marks for beer or wine, based on a prior registration of
the same or a similar mark for the other type of alcoholic beverage. As indicated
above, Respondent concedes that the Board’s case law in this area suggests that
refusals, oppositions and cancellations premised on the relatedness of these goods
typically have been affirmed. See, e.g., In re Kysela Pere et Fils, Ltd., 98 USPQ2d
1261, 1265 (TTAB 2011); In re Sailerbrau Franz Sailer, 23 USPQ2d 1719 (TTAB
1992); Krantz Brewing Corp. v. Henry Kelly Importing & Distrib. Co. Inc., 96 USPQ
219 (Exm’r in Chief 1953).
Respondent also made a public policy argument based on a recent law review
article,40 asserting that because the pool of “available competitive marks” is “rapidly
depleting,”41 the Board should “treat beer and wine as presumptively not closely

39 16 TTABVUE 1577-1616.
40 Barton Beebe & Jeanne C. Fromer, Are we Running Out of Trademarks? An Empirical
Study of Trademark Depletion and Congestion, 131 Harv. L. Rev. 947 (2018).
41 29 TTABVUE 28 (Respondent’s Brief).
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related.” However, we do no find this argument relevant to the likelihood of consumer
confusion as to source. In any event, we reiterate that no per se rule exists as to the
relatedness of particular goods, and each case must be considered on its own record.
In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1285 (TTAB 2009) (“There is no
per se rule that holds that all alcoholic beverages are related.”).
Based on this record, we find substantial evidence to show that consumers
encounter beer and wine from the same source, and under the same marks. On this
record, we find beer and wine related.
D. Trade Channels
We presume that because Respondent’s and Petitioner’s identifications contain no
trade channel restrictions, their goods travel through all usual channels of trade
therefor. 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”). Respondent argues that
although beer and wine are sold by many of the same retailers, they often are in
different sections of a store, or on different shelves.42
However, the record shows beer and wine frequently found together on the same
shelves, and even Respondent’s wine on the same shelving unit as beer.43 Petitioner
also introduced third-party testimony from those in the alcoholic beverage industry,

42 11 TTABVUE 8-9, 18-25 (Edwards Declaration); 12 TTABVUE 7; 14 TTABVUE 7.
43 19 TTABVUE 41-48 (photographs from Cost Plus World Market and Safeway in Napa, CA).
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with supporting documentary evidence, that wine and beer are displayed together for
retail sale and advertised together.44
According to the testimony and other evidence, the usual trade channels for beer
and wine frequently overlap both online and in brick-and-mortar establishments, and
the record leaves no doubt as to overlapping trade channels and classes of consumers
for the wine and beer identified by Petitioner’s and Respondent’s registrations. The
third du Pont factor weighs heavily in favor of likely confusion.
E. Actual Confusion
Respondent argues that the lack of known instances of actual confusion weighs in
its favor. See du Pont, 177 USPQ at 567 (identifying seventh and eighth du Pont
factors as “[t]he nature and extent of any actual confusion,” and “[t]he length of time
during and conditions under which there has been concurrent use without evidence
of actual confusion”). According to Respondent, it has sold MASKED BANDIT beer in
Missouri since February 2013,45 “in commerce” since January 2014,46 and has sold
the beer “in Missouri every year since 2013,” including at some locations that also sell
Petitioner’s wine.47 Given that neither party reports instances of actual confusion,

44 19 TTABVUE 74-88.
45 10 TTABVUE 4 (Durham Declaration, stating that a keg of beer bearing the mark was sold
to a distributor on February 14, 2013, and the distributor sold it for a beer dinner that
occurred in Joplin, Missouri).
46 10 TTABVUE 4 (Durham Declaration, stating that a sale of beer under the mark in
Arkansas occurred on January 2, 2014).
47 39 TTABVUE 43 (Respondent’s Brief); see also 10 TTABVUE 6 (Durham Declaration).
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Respondent contends that confusion is unlikely. Petitioner counters that this factor
carries little weight and should be considered neutral.
On this record, some of which is confidential and thus discussed only in general
terms, we cannot conclude that there has been sufficient “opportunity for confusion
to have occurred.” See Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1287
(TTAB 2007) (where the respective marks coexisted in the marketplace for at least
nine years, absence of actual confusion nonetheless deemed “of little probative value”
because of the absence of a significant opportunity for such confusion to occur, given
“the minimal scope of applicant’s actual use of her mark in the marketplace”). First,
Respondent’s co-owner testified that it “produces and offers MASKED BANDIT IPA
on a limited, seasonal basis typically from around March through August each year,
depending on the availability of ingredients.”48 Second, Respondent’s sales figures
and accompanying customer information49 reflect a relatively limited territory and
modest sales. Under these circumstances, Respondent’s use of the mark has
presented only a limited opportunity for confusion to take place. Accordingly, we find
the seventh and eighth factors neutral.
F. Purchasing Conditions
Respondent, asserting careful purchasing conditions, contends that the alleged
high-end nature of its craft beer and the alleged low-end nature of Petitioner’s boxed

48 10 TTABVUE 6 (Durham Declaration) (emphasis added).
49 15 TTABVUE 5-16 ((Durham Declaration Exhibits J and K, showing retail sales of beer
under the mark for 2016 and 2017 -- confidential).
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wine, as well as differences in the products’ trade dress, weigh against likely
confusion. However, this line of argument overlooks that neither Respondent’s nor
Petitioner’s identifications of goods is so limited, as they broadly identify beer and
wine, respectively. Neither is limited as to price or type. “‘[I]t is the identification of
goods that controls, not what extrinsic evidence may show about the specific nature
of the goods.” In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1165 (TTAB
2013). As the Board noted in In re Bay State Brewing Co., 117 USPQ2d 1958, 1960
(TTAB 2016):
[W]e take judicial notice that beer is often relatively
inexpensive, subject to impulse purchase, and often
ordered orally in a bar or restaurant. “When products are
relatively low-priced and subject to impulse buying, the
risk of likelihood of confusion is increased because
purchasers of such products are held to a lesser standard
of purchasing care.” Recot Inc. v. M.C. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000); Specialty
Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669,
223 USPQ 1281, 1282 (Fed. Cir. 1984).
There is no basis in the record in this case to find that ordinary consumers purchasing
beer and wine, much less the “low end” beer and wine encompassed by the parties’
identifications of goods, would exercise a high degree of care.
Respondent also asserts that because of certain state laws governing beer sales, it
cannot sell directly to the end consumer, and its direct customers are beer distributors
who are unlikely to be confused about the source of the beer they purchase.50
However, the record reflects that the distributors, in turn, sell the same branded beer

50 11 TTABVUE 4-5 (Edwards Declaration); 12 TTABVUE 4 (Glidewell Declaration).
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to retailers, who would then sell it to end consumers.51 This makes clear that alcohol
subject to the three-tiered system ultimately can be sold under its brand name to
individual consumers. Thus, we do not find Respondent’s argument persuasive.
Although Respondent also submitted non-expert declaration testimony from beer
distributors containing their views that end consumers would be unlikely to be
confused by the marks at issue, we find such opinion and hearsay testimony lacking
in probative value.
G. Other Factors
The parties also made brief arguments regarding the eleventh and twelfth and
thirteenth du Pont factors.52 We find them neutral.
Conclusion as to Likely Confusion
We conclude that confusion is likely, particularly based on the similarity of the
marks and relatedness of the goods that move in the same trade channels to the same
classes of ordinary consumers.
Decision: The petition to cancel Registration No. 4597351 is granted.
Accordingly, the registration will be cancelled in due course.

51 11 TTABVUE 4-5 (Edwards Declaration); 12 TTABVUE 4 (Glidewell Declaration).
52 Respondent essentially reargues its waived laches defense under the thirteenth factor. We
remain unconvinced that any delay would render consumer confusion more likely, so as to
make it an appropriate consideration under the thirteenth du Pont “catchall” factor.
Respondent failed to point to supporting case law for the relevance of delay in the likelihood
of confusion analysis. Under the eleventh factor, an applicant’s right to exclude others, and
the twelfth factor, the extent of potential confusion, Petitioner essentially reargues
previously discussed evidence and factors.