Shaffer Young LLC

Trademark Trial and Appeal Board

Jan 25, 2017

No. 86590798 (T.T.A.B. Jan. 25, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: January 25, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Shaffer Young LLC
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Serial No. 86590798
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H. Michael Drumm of Drumm Law LLC,
for Shaffer Young LLC.
Samuel R. Paquin, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
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Before Bergsman, Goodman and Coggins,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Shaffer Young LLC (“Applicant”) seeks registration on the Principal Register of
the mark BLUE OWL BREWING (in standard characters) for “bar services; taproom
services; taproom services featuring beer brewed on premises,” in Class 43.1
Applicant disclaimed the exclusive right to use the word “Brewing.”

1 Application Serial No. 86590798 was filed on April 8, 2015, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide
intention to use the mark in commerce.
Serial No. 86590798
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The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark, when used in connection with the activities in the description of
services, so resembles the registered mark BLUE OWL for “restaurant services,
namely, providing of food and beverages for consumption on and off the premises,” in
Class 43, as to be likely to cause confusion.2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
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 issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973) (“du Pont”) (cited in B&B Hardware, Inc. v. Hargis Ind.,
Inc., 135 S.Ct. 1293, 113 USPQ2d 2045, 2049 (2015)); see also In re Majestic Distilling
Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each
du Pont factor that is relevant and for which there is evidence of record. See M2
Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir.
2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB
2015) (“While we have considered each factor for which we have evidence, we focus
our analysis on those factors we find to be relevant.”). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the

2 Registration No. 3973565, registered on June 7, 2011.
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similarities between the goods and/or services. See In re Chatam Int’l Inc., 380 F.2d
1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental
inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”); see also In re
i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015).
A. The similarity or dissimilarity of the marks.
We turn first to the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177
USPQ at 567. In comparing the marks, we are mindful that “[t]he proper test is not
a side-by-side 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); see also San Fernando Electric Mfg. Co. v. JFD Electronics
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants
Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353
(Fed. Cir. 1992). The proper focus is on the recollection of the average customer, who
retains a general rather than specific impression of the marks. Geigy Chem. Corp. v.
Atlas Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A.
v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Indus., Inc. v. Oliver &
Serial No. 86590798
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Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co.,
190 USPQ 106, 108 (TTAB 1975). Since the services at issue are restaurant services,
bar services, and taproom services without any limitations, the average customer is
an ordinary consumer.
The marks are similar because they share the unitary term “Blue Owl.”3
Inasmuch as there is no evidence to the contrary or providing an alternative
interpretation, the mark means and engenders the commercial impression of a blue-
colored owl. As such the term “Blue Owl” is arbitrary when used in connection with
restaurant services and, therefore, it is entitled to a broad scope of protection or
exclusivity of use.
The marks are different because Applicant’s mark includes the descriptive word
“Brewing.” However, it is well-settled that disclaimed, descriptive matter may have
less significance in likelihood of confusion determinations and, therefore, we find that
“Blue Owl” is the dominant part of Applicant’s mark. 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
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)); 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 (TTAB 2001) (disclaimed matter is

3 Applicant concedes that “Blue Owl” is a unitary term by referring to it as a “single word.”
See Applicant’s Brief, p. 4 (7 TTABVUE 7) (“The single word BLUE OWL, by itself, carries
no association with beer or brewing.”).
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often “less significant in creating the mark’s commercial impression”). There is
nothing improper in stating that, for rational reasons, more or less weight has been
given to a particular feature of a mark, such as a common dominant element, provided
the ultimate conclusion rests on a consideration of the marks in their entireties. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Further reinforcing the significance of the term “Blue Owl” as the dominant part
of Applicant’s mark BLUE OWL BREWING is its position as the first part of the
mark. See Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most prominent
part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark
and the first word to appear on the label); Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon
encountering the marks, consumers will first notice the identical lead word); Presto
Prod. Inc. v. Nice-Pak Prod., 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”).
Under the circumstances discussed above (i.e., BLUE OWL is an arbitrary term,
BLUE OWL is the dominant part of Applicant’s mark, and the word “Brewing” is
descriptive), the fact Registrant’s mark BLUE OWL is subsumed by Applicant’s mark
BLUE OWL BREWING increases the similarity between the two. See, e.g., Coca-Cola
Bottling Co. of Memphis, Tennessee, Inc. v. Joseph E. Seagram and Sons, Inc., 526
F.2d 556, 188 USPQ 105 (CCPA 1975) (applicant’s mark BENGAL LANCER for club
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soda, quinine water and ginger ale is likely to cause confusion with BENGAL for gin);
In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (applicant’s mark
VANTAGE TITAN for medical magnetic resonance imaging diagnostic apparatus
confusingly similar to TITAN for medical ultrasound diagnostic apparatus); In re El
Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (applicant’s mark MACHO
COMBOS for food items confusingly similar to MACHO for restaurant entrees).
Applicant argues that the addition of the word “Brewing” distinguishes its mark
BLUE OWL BREWING from the BLUE OWL registration because it “intrinsically
identifies a maker of beer.”4 Applicant contends that the 17 sets of registrations for
similar marks for restaurant services and bar services distinguished by the addition
of descriptive words such as “beer,” “brewing,” “ale,” etc. corroborate its argument.5
The following registrations submitted with Applicant’s August 8, 2016 Request for
Reconsideration are representative:
• EPIPHANY ALE for beer (Registration No. 3873558) and THE EPIPHANY
for restaurant and bar services (Registration No. 4568785);
• BARREL BOTTLE for bottles containing beer (Registration No. 0995937)
and THE BARREL for bar and restaurant services;
• CABIN FEVER ALE for beer (Registration No. 3180241) and CABIN FEVER
COFFEE for coffee shops and fast-food restaurants (Registration No. 3205714);
and

4 Applicant’s Brief, p. 4 (7 TTABVUE 7).
5 Applicant’s Brief, p. 4 (7 TTABVUE 7). See also Applicant’s August 8, 2016 Request for
Reconsideration making the registrations of record. (4 TTABVUE 17-57).
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• EPIC BREWING for brewery services and restaurant services (Registration
No. 4214386) and EPIC SMOKEHOUSE for restaurant services (Registration
No. 4493764) and EPIC BUFFET for restaurant services (Registration No.
4399890) and EPIC BURGER for restaurant services (Registration No.
3584153) (all owned by different entities).
In the registrations noted by Applicant, the USPTO registered similar marks for
beer and restaurant or bar services. However, the case before involves similar marks
for restaurant and bar or taproom services. Assuming arguendo that the registrations
referred to by Applicant do indeed corroborate its position, it is still our well-settled
practice that each application must be evaluated on its own set of facts. As the Board
stated in In re BankAmerica Corp., 231 USPQ 873, 876 (TTAB 1986):
The cases are legion holding that each application for
registration of a mark for particular goods or services must
be separately evaluated. See, for example, In re Loew’s
Theatres, Inc., 769 F.2d 764, 226 USPQ 865, 869 (Fed. Cir.
1985) [other citations omitted]. Section 20 of the
Trademark Act, 15 USC Section 1070, gives the Board the
authority and duty to decide an appeal from an adverse
final decision of the Examining Attorney. This duty may
not be delegated by adoption of conclusions reached by
Examining Attorneys on different records.
Suffice it to say that each case must be decided on its own merits based on the
evidence of record. We obviously are not privy to the record in the files of the
registered marks and, in any event, the issuance of a registration(s) by a Trademark
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Examining Attorney cannot control the result of another case.6 See In re Sunmarks
Inc., 32 USPQ 1470, 1472 (TTAB 1994). These prior registrations do not conclusively
rebut the Trademark Examining Attorney’s argument that the marks are similar.
Even if some prior registrations with characteristics similar to the marks at issue
were registered, the registration of those marks does not bind the Trademark
Examining Attorney or this Board. See In re Nett Designs, Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001).
We find that Applicant’s mark BLUE OWL BREWING is similar to the registered
mark BLUE OWL in terms of appearance, sound, connotation and commercial
impression.
B. The similarity or dissimilarity and nature of the services.
In determining whether the services are related, it is not necessary that
Applicant’s services and Registrant’s services be similar or competitive in character
to support a holding of likelihood of confusion; it is sufficient for such purposes that
the services are related in some manner and/or that conditions and activities
surrounding marketing of these services are such that they would or could be
encountered by same persons under circumstances that could, because of similarities
of marks used with them, give rise to the mistaken belief that they originate from or
are in some way associated with the same producer. Coach Servs., Inc. v. Triumph
Learning LLC, 101 USPQ2d at 1722; Edwards Lifesciences Corp. v. VigiLanz Corp.,

6 For example, the registrants for those registrations may have executed consents to register
or entered coexistence agreements, or the record may have shown that the dominant part of
those registered marks were diluted.
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94 USPQ2d 1399, 1410 (TTAB 2010); Schering Corp. v. Alza Corp., 207 USPQ 504,
507 (TTAB 1980); Oxford Pendaflex Corp. v. Anixter Bros. Inc., 201 USPQ 851, 854
(TTAB 1978).
To prove that the services are related, the Trademark Examining Attorney
submitted excerpts from 25 third-party websites advertising restaurant services and
bar or taproom services under the same mark.7 The websites listed below are
illustrative:
1. W. Rick’s Taproom & Grill (wrickstaproom.com)8

7 July 16, 2015 and February 8, 2016 Office Actions.
8 July 16, 2015 Office Action.
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2. Boondocks Brewing Tap Room & Restaurant (boondocks-brewing.com)9

3. Finnegan’s (lessings.com)10

These websites demonstrate that the services of the type offered by both Applicant
and Registrant are marketed and sold together. See Hewlett-Packard Co. v. Packard
Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (evidence that “a
single company sells the goods and services of both parties, if presented, is relevant
to the relatedness analysis”); In re Integrated Embedded, 120 USPQ2d 1504, 1514-15
(TTAB 2016).

9 July 16, 2015 Office Action.
10 July 16, 2015 Office Action.
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The Trademark Examining Attorney also submitted 14 third-party, use-based
registrations for services listed in both the application and registration at issue.
Third-party registrations based on use in commerce that individually cover a number
of different services may have probative value to the extent that they serve to suggest
that the listed services are of a type that may emanate from the same source. In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786 (TTAB 1993); In re Mucky
Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). Representative
registrations, with relevant portions of the identifications, are listed below.11
Mark Reg. No. Services

LOCAL BREWING CO. 4813043 Bar and restaurant services; taproom
services

RUBICON BREWING
COMPANY
4591368 Taproom services; restaurant and cafe
services

SUGAR CREEK
BREWING CO.
4657346 Restaurant and bar services; taproom
services

VICTORY BIERGARTEN 4813810 Restaurant, bar and catering services;
taproom services

OLD BAKERY 4890080 Restaurant and bar services; taproom
services

Applicant argues that its mark will be used to identify bar and taproom services
featuring beer brewed on the premises while Registrant’s mark is for restaurant
services specializing in pies and baked goods.12 However, in considering the scope of

11 February 8, 2016 Office Action.
12 Applicant’s Brief, p. 8 (7 TTABVUE 11).
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the cited registration, we look to the registration itself, and not to extrinsic evidence
about the registrant’s actual goods, customers, or channels of trade. See Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813,
1815 (Fed. Cir. 1987) (quoting CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198,
199 (Fed. Cir. 1983)); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981) (citing Kalart
Co., Inc. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958)).
Moreover, it is not necessary for Registrant to offer Applicant’s services to find
that the services are related. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d
1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); In re Integrated Embedded, 120
USPQ2d at 1515. The Trademark Examining Attorney’s evidence shows that third
parties provide the types of services offered and advertised by both Applicant and
Registrant under a single mark. Such evidence is sufficient to find that the services
at issue are related. See, e.g., In re Integrated Embedded, 120 USPQ2d at 1515; In re
Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Applicant also contends that “[w]hen distinct, non-overlapping services are offered
in separate facilities, consumers are not likely to believe they originate from the same
source,” particularly because Applicant’s bar and taproom services are rendered in
Austin, Texas, and Registrant’s restaurant services are rendered in Kimmswick,
Missouri.13 However, Applicant has applied for a geographically unrestricted
registration. Likewise, the cited registration is not geographically restricted and,
therefore, it has a presumption of exclusive nationwide use. See Section 7(b) of the

13 Applicant’s Brief, p. 8 (7 TTABVUE 11).
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Trademark Act, 15 U.S.C. § 1057(b); see also Giant Food, Inc. v. Nation’s Foodservice,
Inc. 710 F.2d 1565, 218 USPQ 390, 393 (Fed. Cir. 1983). Therefore, the geographic
distance between the present locations of the respective businesses has no relevance
to our likelihood of confusion analysis.
We find that the services are related.
C. Established, likely-to-continue channels of trade.
Because there are no meaningful limitations in the identification of services in
either the application or the cited registration, we must presume that the services
move through all the usual channels of trade and are offered to all normal potential
purchasers. In re i.am.symbolic, llc, 116 USPQ2d at 1412; see also Paula Payne Prods.
Co. v. Johnson Publ’g Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973); In re Elbaum,
211 USPQ at 640. The third-party websites show that restaurant, bar and taproom
services are advertised and offered to the same consumers at the same time and,
therefore, the services at issue move in the same channels of trade.
D. Balancing the factors.
Because the marks are similar, the services are related and the services move in
the same channels of trade, we find that Applicant’s mark BLUE OWL BREWING
for “bar services; taproom services; taproom services featuring beer brewed on
premises” is likely to cause confusion with the registered mark BLUE OWL for
“restaurant services, namely, providing of food and beverages for consumption on and
off the premises.”

Serial No. 86590798
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Decision: The refusal to register Applicant’s mark BLUE OWL BREWING is
affirmed.