Sparta Beverage LLC

Trademark Trial and Appeal Board

May 20, 2015

No. 85578578 (T.T.A.B. May. 20, 2015)

THIS OPINION IS NOT
A PRECEDENT OF THE
TTAB
Mailed:
May 20, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Sparta Beverage LLC
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Serial No. 85578578
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Sam Hope for Sparta Beverage LLC.
Juhi Kaveeshvar Patel, Trademark Examining Attorney, Law Office 108 (Andrew
Lawrence, Managing Attorney).

Before Zervas, Shaw and Masiello, Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Sparta Beverage LLC (“Applicant”) seeks registration on the Principal Register
of the mark for “Beer, ale, lager, stout and porter; Beers; Brewed
malt-based alcoholic beverage in the nature of a beer; Non-alcoholic beer” in
International Class 32.1

1 Application Serial No. 85578578 was filed on March 23, 2012, claiming a bona fide intent
to use the mark in commerce pursuant to Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b). The application includes the following description of the mark: “The mark
consists of two swords with characteristic design cross-crossed, above it a drawing or photo
Serial No. 85578578

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The Examining Attorney refused registration of Applicant’s mark under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), having determined that Applicant’s
mark is likely to cause confusion or mistake or to deceive in view of Registration No.
41006002 for the mark for the following International Class 41
services:
ENTERTAINMENT SERVICES in the nature of on-going special
variety, news, live music and comedy show series featuring recap,
details and exhibitions of creative or skillful animation of talent shows
and its participants in non-downloadable multimedia presentations for
broadcast, on television, cable, satellite, the internet, mobile web, cell
phones, smartphones and other handheld wireless devices;
entertainment services in the nature of animation competitions and
exhibitions broadcast via a global communication network, namely,
television, online and mobile handheld devices.

During the course of prosecution, Applicant filed several proposed amendments
to its drawing depicting the applied-for mark:

of a front facing Spartan soldier helmet and wording ‘SPARTAN’ on top, all super-imposed
on what appears to be a shield.”
2 Registered February 21, 2012. The description of the mark states, “The mark consists of a
circular shield, with a superimposed pair of crossed swords, a superimposed helmet
modified to look like armor within a second circular design, with the word ‘SPARTANS’ on
the shield above the helmet and between the swords.”
Serial No. 85578578

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Date of Submission Proposed Mark
October 7, 2012

April 7, 2013
March 12, 2013

The Examining Attorney refused to accept any of the proposed amendments to
the drawing, citing Trademark Rule 2.72, 37 C.F.R. §2.72, and maintaining they are
all material alterations of the applied-for mark.
After the refusals were made final, Applicant filed an appeal and multiple
requests for reconsideration. The Examining Attorney denied each of the requests
for reconsideration and the appeal was resumed. The appeal is fully briefed.
Likelihood of Confusion
Our determination under Trademark Act Section 2(d) is based on an analysis of
the probative facts in evidence that are relevant to the factors bearing on a
likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
Serial No. 85578578

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USPQ 563 (CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and
In re Dixie Rests. 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); see also In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014).
We first consider the similarity or dissimilarity of the goods and services. In
determining whether the goods and services are related, it is not necessary that the
goods and services of the parties be similar or competitive in character to support a
holding of likelihood of confusion; it is sufficient for such purposes that a party
claiming damage establish that the goods and services are related in some manner
and/or that conditions and activities surrounding marketing of these goods and
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 source. Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399.
1410 (TTAB 2010); Schering Corp. v. Alza Corp., 207 USPQ 504, 507 (TTAB 1980).
It is settled that the question of likelihood of confusion must be determined
based on an analysis of the goods and services recited in Applicant’s application vis-
Serial No. 85578578

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à-vis the services recited in the cited registration and we cannot read limitations
into those goods or services. See Stone Lion Capital Partners, LP v. Lion Capital
LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-Packard
Press Inc., 281 F.3d 1261, 62 USPQ 2d 1001 (Fed. Cir 2002); Octocom Systems Inc.
v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990).
In order to show a relationship between the respective goods and services, the
Examining Attorney has made of record several use-based third-party registrations
to show that entities have registered their marks for goods of the type listed in
Applicant’s application and services of the type listed in the cited registration.
Although third-party registrations are not evidence that the marks shown therein
are in commercial use, or that the public is familiar with them, third-party
registrations may have probative value to the extent that they serve to suggest that
the goods and services listed therein are of a kind that may emanate from a single
source. In re Infinity Broad. Corp. of Dallas, 60 USPQ2d 1214, 1217-18 (TTAB
2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re
Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). The following are
set forth in the Examining Attorney’s Brief and hence presumably are the most
relevant:
•Registration No. 4026291 “FEATHER FALLS CASINO BREWING
COMPANY” and Design for “beer” and “entertainment in the nature of
live shows and performances by actors, comedians, vocalists, musicians,
bands and other performing artists”;

•Registration No. 3918086 “HEINEKEN INSPIRE” for “beer” and
“entertainment services in the nature of live concerts featuring music”;

Serial No. 85578578

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•Registration No. 2791447 “LEINIE LODGE” for “beer” and
“entertainment services, namely, sponsoring musical concerts; tourist
entertainment services, namely providing and maintaining an information
and guide center for a brewery”;

•Registration No. 3131210 “AMSTERJAM” for “beer” and “entertainment
services in the nature of live entertainment festivals featuring live music”;
and

•Registration No. 3278189 “AMERICAN HOMEBREW CONTEST” for
“ale; beer” and “entertainment services, namely, conducting contests.”

In addition, the Examining Attorney submitted printouts of several web pages to
demonstrate that a single entity offers the same goods and services under the same
mark, as those set forth in the application and registration.
We have carefully reviewed the Examining Attorney’s registration and website
evidence and find that none of it concerns the services set forth in the cited
registration. The cited registration recites not the live music shows reflected in most
of the Examining Attorney’s registration and website evidence,3 but entertainment
that is “in non-downloadable multimedia presentations for broadcast, on television,
cable, satellite, the Internet, mobile web, cell phones, smartphones and other
handheld wireless devices.” Moreover, Registrant’s series “recap[s], details and
exhibit[s] … creative or skillful animation of talent shows and its participants.” The

3 See, e.g., www.bruisecruisefestival.com/about/ stating, “Bruise Cruise is a three-day
tropical rock extravaganza. … Bands on Board will include … King Khan & The Shrines,
The Soft Pack, The Dirtbombs …”; and www.theannapoliscraftbeerand musicfestival.com
stating, “The Annapolis Craft Beer and Music Festival is the premier event in the state’s
capital where you can combine the best of all worlds: sample beer from regional and
national craft breweries --- listen to music all day long --- enjoy fine cuisine --- make a
purchase at The Shops Village. … Listen to live music on two stages; smooth jazz, island
music; rock and roll; classics; R & B; country; and more.” November 8, 2012 Office Action.
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evidence set forth by the Examining Attorney does not pertain to the services
described in the cited registration.
Inasmuch as the evidence set forth by the Examining Attorney does not
establish a relationship between the goods and services, even if the marks are
substantially identical, as they are, the Examining Attorney has not carried her
burden of establishing a prima facie case of likelihood of confusion. The refusal to
register Applicant’s mark under Section 2(d) of the Trademark Act is reversed.
Material Alteration of Mark
Trademark Rule 2.72(b)(2), 37 C.F.R. § 2.72(b)(2), provides that in an application
based on a bona fide intention to use a mark in commerce under Section 1(b) of the
Act, an applicant may amend the drawing of the mark if
“[t]he proposed amendment does not materially alter the mark. The Office will
determine whether a proposed amendment materially alters a mark by comparing
the proposed amendment with the description or drawing of the mark filed with the
original application.”
The test for determining whether a proposed amendment is a material alteration
has been articulated as follows:
The modified mark must contain what is the essence of the original
mark, and the new form must create the impression of being
essentially the same mark. The general test of whether an alteration is
material is whether the mark would have to be republished after the
alteration in order to fairly present the mark for purposes of
opposition. If one mark is sufficiently different from another mark as
to require republication, it would be tantamount to a new mark
appropriate for a new application.

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In re Hacot-Colombier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997),
quoting Visa Int’l Service Ass’n v. Life-Code Systems, Inc., 220 USPQ 740, 743-44
(TTAB 1983). Also, as has often been stated, the addition of any element that would
require a further search generally will constitute a material alteration. In re Pierce
Foods Corp., 230 USPQ 307 (TTAB 1986). The crucial questions are whether the
proposed amendment retains “the essence of the original mark” and whether it
creates “the impression of being essentially the same mark.” In re Who? Vision
Systems, Inc., 57 USPQ2d 1211, 1218 (TTAB 2000). That is, “the new and old forms
of the mark must create essentially the same commercial impression.” Id., quoting
In re Nationwide Industries Inc., 6 USPQ2d 1882, 1885 (TTAB 1988). See also In Re
Guitar Straps Online, 103 USPQ2d 1745 (TTAB 2012).
With the above in mind and after careful consideration, we find that each of the
three different attempts by Applicant to amend the proposed mark, as originally
filed, constitutes a material alteration by altering the original mark to diminish the
prominence of the helmet and enhance the prominence of the crosses swords. In
addition, in the case of the first amended mark the proposed mark changes the
background from a circular design to a shield design. These features create a new
commercial impression different from that of the mark in the original drawing page
that would necessarily involve a new search by the Examining Attorney to
determine if there is a conflict with any registration or prior-filed application with a
similar configuration.
Serial No. 85578578

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Accordingly, each of Applicant’s attempts to amend the drawing would result in
material alterations to the proposed mark, as originally filed, and thus are
prohibited under Trademark Rule 2.72.
Decision: The refusal to register Applicant’s mark under Section 2(d) of the
Trademark Act is reversed and the Examining Attorney’s refusal to enter the
proposed drawing amendments is affirmed. The application will proceed in due
course to publication. The mark which is the subject of this application is the mark
depicted in the drawing page filed with the original trademark application.