Robertv.Marcon

Trademark Trial and Appeal Board

Apr 28, 2008

No. 78288366 (T.T.A.B. Apr. 28, 2008)

Mailed: April 28, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

In re Robert V. Marcon

Application No. 78288366
_______

Robert V. Marcon, Pro Se.

D. Beryl Gardner, Examining Attorney, Law Office 112
(Angela Wilson, Managing Attorney).
_______

Before Quinn, Mermelstein, and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

On October 29, 2003, Robert V. Marcon filed an
application to register the mark HEINEKEN (in standard
character format) on the Principal Register for goods
ultimately identified as “meat juices” in International
Class 29.1

1 Application serial no. 78288366 was filed August 17, 2003,
based on applicant’s statement of a bona fide intent to use the
mark in commerce and ownership of a foreign application.
Trademark Act §§ 1(b) and 44(d). The original identification of
goods read: “water, still water, mineral water spring water,
aerated water carbonated water sparkling water, ice water,
iceberg water, ice, crushed ice, juices, flavored drinks (except
beverages based on coffee, tea, or cocoa and milk beverages),
nutrient drinks, non-alcoholic beverages, preparations for making
beverages, syrups.”

THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Application No. 78288366
2
The trademark examining attorney refused registration
under Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a),
on the ground that applicant’s mark falsely suggests a
connection with Heineken Brouwerijen B.V. (“Heineken
brewery”), a Dutch beer brewing company. The examining
attorney also refused registration under Section 2(d), 15
U.S.C. §1052(d), on the ground of likelihood of confusion
with ten previously registered marks, all issued to the
Heineken brewery.
Applicant appealed. Both applicant and the examining
attorney have filed briefs. In view of the meager record,
we are constrained to reverse the refusal on both grounds.
We turn first to the refusal to register under Section
2(a).
In University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., Inc., 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983), the Court of Appeals for the Federal Circuit
stated that to succeed on a Section 2(a) false suggestion of
a connection ground for refusal, the plaintiff or the
examining attorney must demonstrate that the name or
equivalent thereof claimed to be appropriated by another is
unmistakably associated with a particular personality or
“persona” and must point uniquely to the plaintiff.
Following that decision and in accordance with the
principles set forth therein, the Board, in Buffett v. Chi-
Application No. 78288366
3
Chi's, Inc., 226 USPQ 428 (TTAB 1985), required that a
plaintiff asserting a claim of a false suggestion of a
connection demonstrate the following: 1) that the
defendant's mark is the same or a close approximation of
plaintiff's previously used name or identity; 2) that the
mark would be recognized as such; 3) that the plaintiff is
not connected with the activities performed by the defendant
under the mark; and 4) that the plaintiff's name or identity
is of sufficient fame or reputation that when the
defendant's mark is used on its goods or services, a
connection with the plaintiff would be presumed. See also,
In re Sloppy Joe’s International Inc., 43 USPQ2d 1350 (TTAB
1997); and In re Kayser-Roth Corp., 29 USPQ2d 1379 (TTAB
1993).
In this ex parte proceeding, the trademark examining
attorney must establish the elements relating to the name or
identity with which the examining attorney asserts the
applicant's mark falsely suggests a connection.
Specifically, the examining attorney must establish that
applicant’s mark falsely suggests a connection with the
Heineken brewery persona. See In re Pacer Technology, 338
F.3d 1348, 67 USPQ2d 1629 (Fed. Cir. 2003), and cases cited
therein.
Based on the scant record before us, we can not make a
finding in the Office’s favor as to the fourth Buffett
Application No. 78288366
4
element, namely, that the HEINEKEN name is of sufficient
fame that a connection with Heineken brewery will be
presumed. Indeed, the only evidence submitted by the
examining attorney in support of the false suggestion of a
connection ground consists of: (1) two sets of Google
search engine “hit list” result pages; and (2) printouts
from a Heineken brewery website www.heineken.com/usa/.2
The two sets of Google search “hit list” evidence each
consist of two pages which merely demonstrate that the
examining attorney conducted searches (via the Google search
engine) for websites containing the term “Heineken.”
Although one search results in 1,170,000 “hits” and the
other results in 11,800,000 “hits”, the printouts only show
excerpts for the first ten (or fewer) results of each search
and these excerpts are extremely truncated, containing very
little text. It has long been held that such evidence,
i.e., an electronic search hit list that does not show
results in context, has very limited probative value. In
re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828
(Fed. Cir. 2007); In Remacle, 66 UPSQ2d 1222, 1223 (TTAB
2002) (“Examining Attorney's print-out of the results of an
Internet search by the Yahoo search engine are of little
probative value, largely because insufficient text is

2 Attached to Office action issued on August 30, 2005. Results
pages from a second Google search engine hit list were attached
to the Office action issued on April 18, 2006.
Application No. 78288366
5
available to determine the nature of the information and,
thus, its relevance”); In re Fitch IBCA Inc., 64 UPSQ2d
1058, 1060 (TTAB 2002). See also TBMP § 1208.03 (2d ed.
rev. 2004). We are unable to accord any fame to the
Heineken name based on this evidence because we have not
been provided with copies from any of the web pages
identified by Google so that we can examine the content and
context within which the term “Heineken” is being used.
Regarding the Heineken.com website printouts, they
appear to have been retrieved under the website’s
“Heineken’s History in the USA” section. The following are
the only relevant excerpts from these pages:
Second page:
“1880’s – The first barrels of Heineken reach the USA.”

Third page:
“1950’s...[d]uring the 1950’s, sales of Heineken in the
US really took off...sales were growing by 20 to 30
percent per year, focusing predominantly in better
class hotels, restaurants and cafes. Although it costs
20 cents more than the average domestic beer, Heineken
launches its advertising campaign under the motto
‘Heineken tastes tremendous’ and sales continue to
climb.”

Fourth page:
“Now & future...As the Millennium passed, Heineken USA
continued to be a leader in the imported beer segment.
The company garnered awards for advertising, as well as
for its community involvement activities in its
corporate home of Westchester County and around the
nation...”

Fifth page
“The corporate office is located in White Plains, New
York...We also have regional offices in Atlanta, GA;
Oakbrook, IL and El Segundo, CA.”

Application No. 78288366
6
The information that may be gleaned from this Heineken
website is clearly of little consequence to the specific
issue in this appeal, and does not demonstrate any real
level of fame of the Heineken name for its brewery. There
are no hard facts as to the amount of beer being imported
into the U.S., Heineken brewery’s actual market share in the
U.S., advertising figures, etc. We also need to take into
consideration the source of the information contained on
this website. Inasmuch as the website is obviously a
Heineken corporate website, there is a strong likelihood
that some of information being provided may be more in the
form of advertising or puffery rather than stating
objectively the Heineken brewery’s importance or its fame in
the beer industry. Without discounting the website
material, we view it as less probative or objective than had
it come from an unrelated source. Accordingly, in addition
to there being very little substance to show any fame of the
Heineken name for its brewery, we give this evidence limited
weight in view of the source of the information.
The Board can not and does not take judicial notice of
fame of an entity’s mark or, more specifically, that the
Heineken name for its brewery is of sufficient fame or
reputation to consumers in the United States as contemplated
in a Section 2(a) ground for refusal. Instead, these are
matters which must be borne out by the evidence of record.
Application No. 78288366
7
See, e.g., Hard Rock Cafe Licensing Corp. v. Elsea, 48
USPQ2d 1400 (TTAB 1998) (“[W]e will not take judicial notice
of fame.”); and Bristol-Myers Company v. Texize Chemicals,
Inc., 168 USPQ 670, 671 (TTAB 1971) (Board refused to take
judicial notice that parties were large, diversified
corporations and of various other facts relative to their
respective operations). Rule 201(b) of the Federal Rules of
Evidence provides that “a judicially noticed fact must be
one not subject to reasonable dispute in that it is either
(1) generally known within the territorial jurisdiction of
the trial court or (2) capable of accurate and ready
determination by resort to sources whose accuracy cannot
reasonably be questioned.”
Because certain authoritative reference materials may
demonstrate a generally known fact within the territorial
jurisdiction of the Board, the Board has taken judicial
notice of the information or facts contained therein. See,
e.g., University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372,
217 USPQ 505 (Fed. Cir. 1983) (Board may take judicial
notice of dictionary definitions); see also TBMP §704.12(a)
(2d ed. rev. 2004). However, this case is distinguishable
from Notre Dame because we have no such dictionary
definitions. Fed. R. Evid. 201(d) (“A court shall take
judicial notice if requested by a party and supplied with
Application No. 78288366
8
the necessary information.”). Thus, even if this were a
situation where we were willing to take judicial notice, we
have not been presented with the “necessary information.”
Without any resources of which to take judicial notice,
and upon consideration of what little evidence is of record,
we are simply unable to make a finding based on this record
that the Heineken brewery persona is of sufficient fame or
reputation to consumers in the United States that, when
applicant's mark is used on its goods, a connection between
the mark and the Heineken brewery would be presumed.
Because we find that the Office has not established the
fourth factor set forth in Buffett, we reverse the refusal
of registration on the false suggestion of connection
ground.
At the risk of stating the obvious, certainly a
different result might have been possible on this Section
2(a) ground, had we been privy to a fuller record. We
acknowledge that an ex parte appeal will generally be
decided on a smaller record than an inter partes
proceeding.3 And, both the Federal Circuit, our primary
reviewing court, and the Board have recognized the “limited
facilities for acquiring evidence” faced by the Office in

3 In addition, certain grounds for refusing registration of a
mark, e.g., dilution under Sections 13(a) and 14 of the Trademark
Act, are not contemplated in an ex parte setting, but may be
asserted by a plaintiff in an inter partes proceeding.

Application No. 78288366
9
obtaining evidence supporting a prima facie case. See In re
Budge Mfg., Inc., 857 F.2d 773, 8 USPQ2d 1259, 1260-61 (Fed.
Cir. 1988); In re Squaw Development Co., 80 USPQ2d 1264,
1271 - 1272 (TTAB 2006). Nonetheless, the limited record in
this proceeding was not the result of “limited facilities.”
Rather, the examining attorney in this case was presented
with Google search engine “hit lists” indicating 1 to 12
million results for the term “Heineken,” but surprisingly
did not attach any of the web pages themselves or any other
information probative of how “Heineken” is used on those
websites and whether it has attained sufficient fame to
justify the refusal to register. We can not assume that all
of the results refer to the Heineken brewery or that such a
high number of results, by itself, is indicative of a high
level of fame or reputation.
We now turn to the likelihood of confusion ground.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E. I. du Pont de Nemours and
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
Application No. 78288366
10
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
In considering the evidence of record on these factors,
we keep in mind that “[t]he fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); and In re
Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein.
As already noted, the examining attorney has cited ten
different registrations (owned by the same party). They are
as follows4:
1. HEINEKEN SPECIAL DARK BEER BREWED IN HOLLAND HORS
CONCOURS MEMBRE DU JURY PARIS 1900 TRADE MARK GRAND
PRIX PARIS 1889 DIPLOME D’HONNEUR AMSTERDAM 1883
MEDAILLE D’OR PARIS 1875 (and design) for “beer” in
Registration No. 0823033;
2. HEINEKEN LAGER BEER BREWED IN HOLLAND HORS CONSOURS
MEMBRE DU JURY PARIS 1900 TRADE MARK GRAND PRIX PARIS
1889 DIPLOME D’HONNEUR AMSTERDAM 1883 MEDAILLE D’OR
PARIS 1875 (and design) for “beer” in Registration No.
0823034;5

4 Registrations Nos. 1846907 and 1731454 were added to the list
of cited marks by the examining attorney in her fourth Office
action (issued April 18, 2006), but she did not attach copies of
these registrations to the Office action. TMEP Section 705.03
provides that “[w]hen refusing registration under 15 U.S.C.
§1052(d) based on a likelihood of confusion with a previously
registered mark, the examining attorney must give the
registration number(s) and attach to the Office action copies of
each cited registration, which will become part of the record.”
In spite of this omission, we have considered these two
registrations in our decision.
5 This registration was cancelled (for failure to renew) on
October 27, 2007, subsequent to the briefing of the appeal. It
is therefore not considered a possible bar to registration of
applicant’s mark.
Application No. 78288366
11
3. HEINEKEN HORS CONCOURS MEMBRE DU JURY PARIS 1900 GRAND
PRIX 1889 DIPLOME D’HONNEUR AMSTERDAM 1883 MEDAILLE
D’OR PARIS 1875 for “beer” in Registration No. 0823035;
4. HEINEKEN for “beer and malt beverages” in Registration
No. 0956608;
5. HEINEKEN (and configuration of a bottle) for “beer” in
Registration No. 1504209;
6. HEINEKEN (and design) for “beers” in Registration No.
1846907;
7. HEINEKEN HEINEKEN LAGER BEER BREWED IN HOLLAND EST.
1873 THE ORIGINAL QUALITY BREWED WITH NATURAL
INGREDIENTS HORS CONCOURS MEMBRE DU JURY PARIS 1900
GRAND PRIX PARIS 1889 TRADEMARK DIPLOME D'HONNEUR
AMSTERDAM 1883 MEDAILLE D'OR PARIS 1875 (and design)
for “beers” in Registration No. 1731454;
8. HEINEKEN (and design) for “beer” in Registration No.
2019060;
9. HEINEKEN EN VIVO for “beer” in Registration No.
2285509; and
10. HEINEKEN (and design) for “beer” in Registration
No. 2781138.

We focus our likelihood of confusion analysis on the
fourth-identified registered mark vis-à-vis applicant’s mark
inasmuch it is the only registered mark that is simply
HEINEKEN, i.e., without additional wording or design
elements, and is, therefore, the closest mark to
applicant’s, and it covers the same goods, beer, as the
other registrations, in addition to “malt beverages.”
We begin with the first du Pont factor, which requires
us to determine the similarity or dissimilarity of the
marks when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial
impression. Palm Bay Imports, Inc., supra. We find that
Application No. 78288366
12
applicant’s HEINEKEN mark is identical in every respect to
the cited registered HEINEKEN mark. The first du Pont
factor weighs in favor of a finding of likelihood of
confusion.
Next, we turn to the second du Pont factor that
requires us to determine the similarity or dissimilarity of
the goods as recited in the application and in the cited
registrations. It is settled that it is not necessary that
the goods be identical or even competitive in order to
support a finding of likelihood of confusion. That is, the
issue is not whether consumers would confuse the goods
themselves, but rather whether they would be confused as to
the source of the goods. See In re Rexel Inc., 223 USPQ 830
(TTAB 1984). Rather, it is sufficient that the goods be
related in some manner, or that the circumstances
surrounding their use be such that they would be likely to
be encountered by the same persons in situations that would
give rise, because of the marks used thereon, to a mistaken
belief that they originate from or are in some way
associated with the same source or that there is an
association or connection between the sources of the
respective goods. See In re Martin’s Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991); and In re
International Telephone & Telegraph Corp., 197 USPQ 910
Application No. 78288366
13
(TTAB 1978). Moreover, in cases such as this where the
applicant’s mark is identical to the cited registered mark,
there need be only a viable relationship between the
respective goods in order to find that a likelihood of
confusion exists. See In re Shell Oil Co., 992 F.2d 1204,
26 USPQ2d 1687 (Fed. Cir. 1993); In re Opus One Inc., 60
USPQ2d 1812 (TTAB 2001); and In re Concordia International
Forwarding Corp., 222 USPQ 355 (TTAB 1983).
Before considering the relatedness of the goods, we
find our analysis is inhibited by the lack of any clear
definition of applicant’s goods, i.e., “meat juices.” We do
take notice that “meat juices” in International Class 29 is
listed in the USPTO’s “Acceptable Identification of Goods
and Services Manual.” However, neither applicant nor the
examining attorney actually clarifies the exact nature and
purpose of these goods.6 Applicant is presumably in a
better position to describe the identified goods and does
shed some light by stating that its goods “form a
constituent or ingredient typically used in cooking
recipes.” Brief, p. 10. Nevertheless, it is the examining
attorney who ultimately bears the burden of establishing at
least a “viable relationship” between applicant’s “meat

6 Because the Board was not familiar with the term “meat juices,”
we consulted several dictionaries and internet sources, In re
Trackmobile Inc., 15 USPQ2d 1152, 1154 (TTAB 1990), but we were
unable to find any definition of the term.

Application No. 78288366
14
juices” and registrant’s beer and malt beverages. To this
end, it would have behooved her to at least explain what she
believes meat juices to be. As a result, it remains unclear
to us if “meat juice” is akin to au jus or if it could
encompass chicken or beef broth, or something else entirely.
In her brief, the examining attorney dedicated one
paragraph of argument as to how applicant’s “meat juices”
are related to the registrant’s “beer.” The paragraph also
appears to cover why she believes the trade channels for the
respective goods are similar. It is as follows:
The evidence of third party registrations in the
record, provided by the examining attorney, shows that
a single owner provides meats, meat extracts and beer.
Additional evidence revealed that restaurants, such as
microbreweries of beer and lager also provide meat
dishes that may be prepared with beer. For example,
the attached third[-]party registration for HOPS GRILL
& BAR MICROBREWERY shows that this registrant is a
brewery providing restaurant services which likely
feature meat dishes. Two other third[-]party
registrations for the SEA DOG BREWING CO. and the
BLUEGRASS BREWING COMPANY each show that these
breweries also provide restaurant services that likely
feature meat dishes. Finally, there is internet
evidence from a Google search and Lexis-Nexis articles
showing that beer is used as a marinade to tenderize
and season meats.

Brief, unnumbered pp. 12-13.

As to the examining attorney’s contention that the
evidence shows that beer and meat or meat extracts may
emanate from the same source, this is not supported by the
evidence of record. Although the examining attorney
submitted eleven third-party registrations for marks
Application No. 78288366
15
covering beer and meat products (usually in addition to a
long line of other goods), all of these registrations are
owned by foreign entities, based on Section 44(e) (ownership
of a foreign registration) and do not have use in commerce
dates. As we have held many times before, these
registrations therefore are not indicative of a common
source in the United States of the goods identified therein
and have no probative value. See, e.g., In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467, 1470, n. 6 (TTAB 1988)
(third-party registrations which are based upon foreign
registrations “are not even necessarily evidence of a
serious intent to use the marks shown therein in the United
States on all of the listed goods and services, and they
have very little, if any, persuasive value on the point for
which they were offered.”).
The examining attorney’s other arguments that
applicant’s “meat juices” and registrant’s “beer” are
otherwise related are not persuasive. That a restaurant (or
microbrewery) serves beer and meat dishes (including meat
dishes prepared with beer), is wholly irrelevant to
establishing that beer is somehow related to “meat juices.”
There is simply no evidence to suggest that “meat juices”
(again, we are uncertain as to what that term encompasses)
are also sold to customers at these restaurants. The
examining attorney also fails to establish a link between
Application No. 78288366
16
“meat juices” and beer based on the scant evidence
indicating that beer may used in marinades or cooking meat
dishes. At best, the evidence establishes a connection
between beer and meat, albeit a tenuous one. She also
attached a Google search engine “hit list” reflecting
“10,700” results for a search of the terms “meat sauces” and
“beer” combined, of which she only submitted four extended
excerpts. One of these suggests “Top 10 household uses for
drinks” -- proposing “beer and wine as marinades for meat”
in addition to using beer as “an enrichener for garden
soil.” Even if we were to accept that beer has a multitude
of uses, other than as a beverage, we can not conclude that
beer and “meat juices” are related based on this evidence.
Simply put, this evidence falls far short of establishing a
connection between the goods.
Accordingly, the second du Pont factor weighs against a
finding of likelihood of confusion.
Finally, applicant’s argument regarding the fifth du
Pont factor, namely, that the term HEINEKEN should be
accorded less protection because it is a surname and
“inherently weak”, is not well taken. Brief, pp. 5-6. In
support of this contention, applicant submitted printouts
from two websites, “WhitePages.com” and “411.com”, both
indicating 70 persons in the United States with the surname
Application No. 78288366
17
“Heineken.”7 On this record, we conclude that “Heineken”
is, at worst, a rare surname.8 However, the mere fact that
the prior registered mark may be a rare surname is not
enough reason to accord it any less protection against the
identical mark.
To the extent that the examining attorney argues the
contrary, i.e., that the registered HEINEKEN trademark is
famous, we acknowledge that while it is not usually a factor
in ex parte proceedings famous marks may enjoy a wide scope
of protection. Recot Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1897 (Fed. Cir. 2000). However, for the
reasons stated above, we can not conclude on this record
that HEINEKEN is famous mark.
Accordingly, we find the fifth du Pont factor regarding
the fame or strength of the registered marks to be neutral
in our likelihood of confusion analysis.
Upon balancing all of the du Pont factors for which
there is evidence of record, we conclude that the examining
attorney has not demonstrated that there is a likelihood of
confusion. Despite the marks being identical in one case,
we have no evidence on which to base a conclusion that

7 Attached, respectively, to applicant’s responses filed July 14,
2005 and March 1, 2006.
8 In reaching this conclusion, we rely on the fact that only 70
examples of the “Heineken” surname were located from a directory
purportedly of the entire United States. See In re Sava Research
Corp., supra; In re Garan Inc., 3 USPQ2d 1537, 1540 (TTAB 1987).

Application No. 78288366
18
purchasers are likely to assume or expect that beer (and
malt beverages) and “meat juices” originate from a single
source. The examining attorney’s suggestion that these same
products may be used in cooking or preparing meat dishes is
tenuous at best. Without any viable relationship between
“beer” and “meat juices” having been established, the
dissimilarity of the goods under the second du Pont factor
is dispositive, outweighing all of the scant evidence of
record pertaining to the other du Pont factors in our
likelihood of confusion analysis. See Kellogg Co. v.
Pack’Em Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142 (Fed.
Cir. 1991).
So as to be clear here, the examining attorney had the
burden of proof in showing that Section 2(a) and/or Section
2(d) barred registration. In re Urbano, 51 USPQ2d 1776
(TTAB 1999); In re Cotter & Co., 228 USPQ 202 (TTAB 1985).
The evidentiary record controls the result herein, and the
examining attorney’s evidence, as indicated above, falls far
short in meeting this burden.
Decision: The refusals to register under Trademark Act
§§ 2(a) and 2(d) are reversed.