RPD Management, LLC

Trademark Trial and Appeal Board

Feb 11, 2019

No. 87573250 (T.T.A.B. Feb. 11, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: February 11, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re RPD Management, LLC
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Serial No. 87573250
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Joseph P. Kincart and Trace H. Jackson of Rogers Towers PA for RPD
Management, LLC.

Michael Fitzsimons, Trademark Examining Attorney, Law Office 103,
Stacy Wahlberg, Managing Attorney.1
_____

Before Cataldo, Wellington and Hightower,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
Applicant, RPD Management, LLC, dba Intuition Ale Works, seeks registration
on the Principal Register of the mark displayed as Figure 1 below (“GENUINE,”
“QUALITY,” “WEST COAST,” “IPA,” and “INDIA PALE ALE” disclaimed),
identifying “beer” in International Class 32.2

1 The involved application was reassigned to the above-listed Examining Attorney
subsequent to issuance of the final Office Actions.
2 Application Serial No. 87573250 was filed on April 17, 2017 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based upon Applicant’s claim of November 21, 2010 as
a date of use of the mark anywhere and in commerce.
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Figure 1.

Applicant submitted the following description of the mark and color(s) claimed
statement:
The mark consists of a green block shaped vintage wagon style car facing to
the right, on the car there is a windshield, three passenger side windows and
on the right side of the car where the doors would be are the words “I-10” in
white covering the length of the car under the three side windows, along the
front right fender of the car in white small cap font are the words “WEST
COAST” with the words “Genuine” written vertically upwards behind the
wheel and “Quality” written vertically upwards in front of the wheel well,
across the hood of the car is the abbreviation “IPA” in all caps and the front of
the grill of the car has “India pale ale” written in all lower case, above a grill
with headlights.

The color(s) GREEN AND WHITE is/are claimed as a feature of the mark.

The Trademark Examining Attorney has refused registration of Applicant’s mark:
(1) on the ground of likelihood of confusion under Section 2(d) of the Trademark Act,
15 U.S.C. §1052(d), in view of Registration No. 5092193, issued on the Principal
Register for the mark I-10 IPA (standard characters, “IPA” disclaimed), identifying
“beer, ale, lager, stout and porter” in International Class 32;3 and (2) under
Trademark Rule 2.37, 37 C.F.R. § 2.37, on the ground that Applicant must amend the
description of the mark to specify the color of certain of the literal elements appearing
therein.

3 Registration No. 5092193 issued on November 29, 2016.
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The refusal to register under Section 2(d) has been fully briefed by Applicant and
the Examining Attorney.
Based upon the record and the arguments made, we affirm the likelihood of
confusion refusal and the mark description requirement.
I. Evidentiary Issue
Applicant included in its appeal brief a hyperlink to an online article that,
according to Applicant, discusses the influence of tap handles on beer selection by
purchasers in bars.4 Applicant did not introduce into the record during prosecution of
its involved application any printouts from this article or website.
We have made clear that providing hyperlinks to internet materials is insufficient
to make such materials of record. See In re Olin, 124 USPQ2d 1327, 1331 n.15 (TTAB
2017) (citing In re Powermat Inc., 105 USPQ2d 1789, 1791 (TTAB 2013)); In re HSB
Solomon Assocs., LLC, 102 USPQ2d 1269, 1274 (TTAB 2012) (stating that “a
reference to a website’s internet address is not sufficient to make the content of that
website or any pages from that website of record”); Safer Inc. v. OMS Investments
Inc., 94 USPQ2d 1031, 1039 (TTAB 2010) (noting that because of the transitory
nature of internet postings, websites referenced only by links may later be modified
or deleted). The procedure for making printouts of internet evidence of record is
addressed in Trademark Manual of Examining Procedure (TMEP) § 710.01(b) (Oct.
2018) and the cases cited therein.

4 4 TTABVUE 7.
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As a result, the information assertedly available by following the hyperlink is not
evidence in this appeal, nor will it be given any consideration.5
We turn now to the merits of this appeal.
II. Amendment to Description of the Mark
The Examining Attorney raised the requirement for an amended description of
the mark in the November 20, 2017 first Office Action.6 Applicant submitted an
amended description of the mark with its April 5, 2018 Response to the Examining
Attorney’s first Office Action.7 However, in the May 3, 2018 final Office Action, the
Examining Attorney made final the requirement, stating as follows:8
The trademark examining attorney submits that the description of the
mark is accurate but incomplete because it does not describe all the
significant aspects of the applied-for mark. Applications for marks not
in standard characters must include an accurate and concise description
of the entire mark that identifies literal elements as well as any design
elements. See 37 C.F.R. §2.37; TMEP §§808 et seq.

Therefore, applicant must provide a more complete description of the
applied-for mark. The following is suggested:

The mark consists of a green block shaped vintage wagon
style car facing to the right with features outlined in
white. On the car there is a windshield, three passenger
side windows and on the right side of the car where the

5 The evidentiary record in an application should be complete prior to the filing of an appeal.
Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d); Trademark Board Manual of Procedure
(TBMP) §§ 1203.02(e), 1207.01 (2018); TMEP § 710.01(c) (Oct. 2018). The proper procedure
for an applicant or examining attorney to introduce evidence after an appeal has been filed
is to submit a written request with the Board to suspend the appeal and remand the
application for further examination. See Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d). See
also TBMP § 1207.02 and authorities cited therein.
6 At .pdf 7. Citations to the prosecution history are to the downloadable .pdf version of the
Trademark Search and Data Retrieval (TSDR) database.
7 At .pdf 1.
8 At .pdf 5. Emphasis provided by the Examining Attorney.
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doors would be are the words “I-10” in white covering the
length of the car under the three side windows. Along the
front right fender of the car in white small cap font are the
words “WEST COAST” with the words “Genuine” in white
written vertically upwards behind the wheel and “Quality”
in white written vertically upwards in front of the wheel
well. Across the hood of the car is the abbreviation “IPA”
in white and in all caps and the front of the grill of the car
has “India pale ale” written in all lower case in white,
above a grill with headlights.

Applicant presents no arguments in its brief addressing the requirement for an
amendment to the description of the mark.9 In her appeal brief, the Examining
Attorney presents arguments regarding the requirement and notes that Applicant
has not addressed the requirement in its brief. Applicant did not file a reply brief.
We find that Applicant has waived its appeal of the Examining Attorney’s
requirement under Trademark Rule 2.37, 37 C.F.R. § 2.37. In re Harley, 119 USPQ2d
1755, 1758 (TTAB 2016) (Applicants’ failure to address any of the grounds for refusal
is a basis for affirming the examining attorney’s refusal on all grounds); TBMP
§ 1203.02(g) (2018) (“If an applicant, in its appeal brief, does not assert an argument
made during prosecution, it may be deemed waived by the Board.”).
Accordingly, the Examining Attorney’s requirement under Trademark Rule 2.37,
37 C.F.R. § 2.37 for an amended description of the mark, is affirmed.
III. Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In

9 Neither did Applicant submit a request for reconsideration of the refusal of registration or
requirement at issue herein.
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re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973); see
also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
In any likelihood of confusion analysis, however, two key considerations are the
similarities between the marks and the similarities between the goods or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976); see also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
A. Relatedness of the Goods and Channels of Trade
With regard to the goods, channels of trade and classes of consumers, we must make
our determinations under these factors based on the goods as they are identified in
the application and cited registration. See In re Dixie Rests. Inc., 41 USPQ2d at 1534;
see also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281
F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Computers
Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). “This factor
considers whether ‘the consuming public may perceive [the respective goods or
services of the parties] as related enough to cause confusion about the source or origin
of the goods and services.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082,
1086 (Fed. Cir. 2014) (quoting Hewlett-Packard, 62 USPQ2d at 1004).
In this case, the identified “beer, ale, lager, stout and porter” in the cited
registration encompasses and includes Applicant’s “beer.” Put another way,
Applicant’s “beer” is subsumed under the broader list of “beer, ale, lager, stout and
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porter” in the cited registration. Applicant’s goods thus are identical in part to the
goods identified in the cited registration. As noted above, we determine the
relatedness of the goods, as we must, based upon their respective identifications in
the cited registration and involved application. See, e.g., Stone Lion Capital Partners,
LP v. Lion Capital LLP, 110 USPQ2d at 1161. Neither Applicant nor Registrant
recites any restrictions in their identified “beer” as to style, flavor or price point and,
as discussed above, they are presumed to be legally identical. Applicant, while not
expressly conceding this point, presents no argument in its brief that the goods differ
or otherwise are not related.
Because the goods identified in the application and the cited registration are, in
part, legally identical, we must presume that the channels of trade and classes of
purchasers for these goods are the same. See In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012); Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268
(TTAB 2003) (“Given the in-part identical and in-part related nature of the parties’
goods, and the lack of any restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be offered and sold to the same
classes of purchasers through the same channels of trade”); In re Smith & Mehaffey,
31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally ident ical, they
must be presumed to travel in the same channels of trade, and be sold to the same
class of purchasers”); see also Octocom Sys., Inc., 16 USPQ2d at 1787 (“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
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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.”).
We find that the du Pont factors regarding the in-part legal identity of the goods,
channels of trade and consumers weigh heavily in favor of likelihood of confusion. It
is clear that if these in-part identical goods are offered under similar marks there
would be a likelihood of confusion. Thus, we turn to the marks, keeping in mind that
when marks would appear on identical goods, as they do here, the degree of similarity
between the marks necessary to support a finding of likely confusion declines. See
Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018)
(quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012)); Century 21 Real Estate v. Century Life, 970 F.2d 874, 23 USPQ2d 1698 (Fed.
Cir. 1992).
B. Similarity or Dissimilarity of the Marks
We consider Applicant’s mark and the registered mark I-10
IPA (in standard characters) and compare them “in their entireties as to appearance,
sound, connotation and commercial impression.” Stone Lion Capital Partners, LP v.
Lion Capital LLP, 110 USPQ2d at 1160; 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). “The proper test is not a side-by-side
Serial No. 87573250
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comparison of the marks, but instead whether the marks are sufficiently similar in
terms of their commercial impression such that persons who encounter the marks
would be likely to assume a connection between the parties.” Coach Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(internal quotation marks omitted); see also Mini Melts, Inc. v. Reckitt Benckiser LLC,
118 USPQ2d 1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089
(TTAB 2016). Although we place the marks alongside each other for purposes of this
decision, consumers may not necessarily encounter the marks in close proximity and
must rely upon their recollections thereof over time. In re Mucky Duck Mustard, 6
USPQ2d 1467, 1468 (TTAB 1988).
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, our analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d
1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”). On the other hand, there is nothing improper
in stating that, for rational reasons, more or less weight has been given to a particular
feature of a mark, provided the ultimate conclusion rests on a consideration of the
marks in their entireties. Nat’l Data, 224 USPQ at 751.
Serial No. 87573250
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Applicant’s mark consists of the entirety of the registered
mark I-10 IPA in standard characters, with additional wording and a design. While
there is no rule that likelihood of confusion automatically applies where one mark
encompasses another, in this case, as in many others, the fact that the entire cited
mark is incorporated in Applicant’s mark increases the similarity between the two.
See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir.
2010) (applicant’s mark ML is similar to registrant’s mark ML MARK LEES); In re
U.S. Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (finding applicant’s CAREER
IMAGE marks similar to registered mark CREST CAREER IMAGES). Thus, the
marks are similar in appearance and sound to the extent that Applicant’s mark fully
encompasses the registered mark.
Upon evaluating the mark and the registered mark I-10 IPA,
we find that the dominant feature of the registered mark is the term “I-10” and,
similarly, “I-10” is a prominent feature of Applicant’s mark. Because this term
appears first in each mark, it is most likely to be impressed upon purchasers’
memories. Presto Products, Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895, 1897
(TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed
upon the mind of a purchaser and remembered”). There is no evidence of record
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regarding the possible significance of “I-10” in relation to the identified goods.
Applicant’s website indicates that “I-10” or “Interstate 10…starts right here in
Jacksonville [FL] and runs all the way to the West Coast.”10 Neither Applicant nor
the Examining Attorney suggests that “I-10” would have a different meaning or
connotation in Applicant’s mark from that engendered by the registered mark,
particularly as applied to goods that are, in-part, identical. The wording “I-10” and
“IPA” in Applicant’s mark appears in much larger letters than the lettering
comprising the other terms in the mark. As a result, the “I-10” and “IPA” portions of
Applicant’s mark are visually more prominent than the remainder of the wording.
This wording is identical to the registered mark.
Moreover, for source-identifying purposes, consumers will likely focus on the term
“I-10” in the registered mark than the highly descriptive and disclaimed term “IPA.”
Similarly, the “I-10” element in Applicant’s mark possesses more source-identifying
significance in view of the fact that the additional literal portions thereof, namely,
“GENUINE,” “QUALITY,” “WEST COAST,” “IPA,” and “INDIA PALE ALE,” are
descriptive of the recited goods and thus disclaimed. See Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive
terms, this court has noted that the descriptive component of a mark may be given
little weight in reaching a conclusion on the likelihood of confusion”) quoting In re
Nat’l Data. 224 USPQ at 752; In re Dixie Rests. Inc., 105 F.3d 1405, 1407, 41 USPQ2d
1531, 1533-34 (Fed. Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702

10 Applicant’s April 5, 2018 Response to first Office Action at .pdf 13.
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(TTAB 2001) (disclaimed matter is often “less significant in creating the mark’s
commercial impression”).
Applicant’s mark comprises both words and a design. The words are normally
accorded greater weight, in part because consumers are likely to remember and use
the word(s) to request the goods. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1911 (Fed. Cir. 2012) (“the verbal portion of a word and design mark likely will be the
dominant portion”); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987)
(holding that “if one of the marks comprises both a word and a design, then the word
is normally accorded greater weight because it would be used by purchasers to
request the goods or services” and “because applicant’s mark shares with registrant’s
mark that element responsible for creating its overall commercial impression, the
marks are confusingly similar”). In this case, the design of a vintage wagon also
serves as a carrier for the wording, which literally is emblazoned upon the doors,
hood, fenders and grill of the automobile.
Consumers further are known to use shortened forms of names, and it is possible
that Applicant and its goods are referred to as “I-10 IPA.” Cf. In re Abcor Dev. Corp.,
200 USPQ at 219 (Rich, J., concurring) (“the users of language have a universal habit
of shortening full names – from haste or laziness or just economy of words”). In that
regard, Applicant and at least one third party refer to its goods under the applied-for
mark and related merchandise on its website and social media accounts as “I-10 IPA.”
The following example, displayed below as Figure 2, is illustrative:11

11 Applicant’s April 5, 2018 Response to First Office Action at .pdf 10-15.
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Figure 2.

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Applicant argues that the facts of this case are similar to those presented in In re
Covalinski, 113 USPQ2d 1166 (TTAB 2014), in which this tribunal found no
likelihood of confusion between the applied-for mark
for various clothing items and the registered mark RACEGIRL for clothing items that
encompassed in part the applicant’s goods. In that decision, the Board found as
follows:
Here, Applicant’s design mark includes the very large, prominently
displayed letters RR. The bodies of the Rs are filled with a checkerboard
pattern resembling a racing flag. To each R an elongated horizontal “leg”
of gradually increasing thickness is appended, each of which ends in a
heart design. Inside the legs appear the rest of the letters (i.e., the letter
strings “edneck” and “acegirl”), in a form in which the initial letters of
each string are displayed in relatively tiny typeface and subsequent
letters are displayed in increasing thickness. Together, these graphic
devices serve not only to draw attention to the RR letters apart from the
wording, but also make the letters that form the “a-c-e” of the word
“RACEGIRL” difficult to notice.

In re Covalinski, 113 USPQ2d at 1168 (emphasis added). As a result, the Board held
“that confusion is not likely because of the crucial difference between the marks.” Id.
at 1167-68.
However, the applied-for mark in Covalinski is distinguishable from Applicant’s
mark herein. As discussed above, the vintage wagon in Applicant’s
mark clearly displays the wording emblazoned upon the sides,
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hood and front of the car. The design does not draw the viewer’s attention away from
the wording, but rather draws attention to the wording by incorporating it into the
design. A consumer viewing Applicant’s mark cannot look at the design without
noticing and reading the wording that covers large portions of the car. The largest
lettering, “I-10” and “IPA” are particularly prominently displayed on the door and
hood of the wagon. There is no separate design element, such as the “RR letters” in
the Covalinski mark to either draw attention away from the wording or render the
wording difficult to read. As a result, we find the facts of Covalinski to be
distinguishable from those in the instant appeal.
In sum, while we recognize the obvious differences between them, we find the
marks in their entireties to be more similar than dissimilar in appearance, sound and
meaning and, overall, to convey similar commercial impressions. The fact that each
mark is dominated by the same term “I-10” simply outweighs the points of
dissimilarity. Nat’l Data, 224 USPQ at 751. Thus, this du Pont factor weighs in favor
of finding a likelihood of confusion.
C. Likelihood of Confusion Summary
Considering all the evidence of record, including any evidence not specifically
discussed herein, we find that the marks in their entireties are more similar than
dissimilar and that the identified goods are in-part legally identical and will be
encountered in common channels of trade at all price points by the same classes of
consumers. We find therefore that Applicant’s mark is likely to cause confusion with
the mark in the cited registration when used in association with the identified goods.
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IV. Conclusion
Decision: The refusal to register based upon a requirement under 37 C.F.R. § 2.37
for an amended description of the mark, is affirmed.
The refusal to register based on likelihood of confusion under Section 2(d) of the
Trademark Act is affirmed.