Spoetzl Brewery, Inc.

Trademark Trial and Appeal Board

Apr 8, 2016

No. 86129909 (T.T.A.B. Apr. 8, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: April 8, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Spoetzl Brewery, Inc.
_____

Serial No. 86129909
_____

Cline H. White of Jackson Walker LLP,
for Spoetzl Brewery, Inc.
Midge Fae Butler, Trademark Examining Attorney, Law Office 107,
Leslie Bishop, Managing Attorney.
_____

Before Cataldo, Greenbaum and Goodman,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
Spoetzl Brewery, Inc. (“Applicant”) seeks registration on the Principal Register of
the mark:

Serial No. 86129909
- 2 -
for “Ale; Beer” in International Class 32.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Trademark Act Section 2(d), 15 U.S.C. §1052(d), on the ground that Applicant’s
mark, when used in connection with Applicant’s goods, so resembles the previously
registered marks, REDBIRD ALE (ALE disclaimed) (in typed form), for “beer (ale),”
and RUBY (in typed form) for “draft microbrewed ale sold through pubs and
brewpubs,” each in International Class 32.2 The marks are owned by two different
entities.
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 with
regard to the ‘729 Registration, and reverse the refusal to register with regard to the
‘470 Registration.

1 Application Serial No. 86129909 was filed on November 26, 2013, based upon Applicant’s
claim of first use anywhere and use in commerce on March 31, 2011. The mark is described
as follows: “The mark consists of [t]hree lines of words; the word ‘SHINER’ in old English
font larger sized letters that are slightly tilted upwards on the right side, above the word
‘RUBY’ that has two short lines on either side of the word, followed on the next line by the
word ‘REDBIRD’ in different font just below the word ‘RUBY.’” Color is not claimed as a
feature of the mark.

2 Respectively, Registration No. 2133729, issued February 3, 1998, renewed (‘729
Registration), and Registration No. 1986470, issued July 16, 1996, renewed (‘470
Registration). Effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R. § 2.52, was
amended to replace the term “typed” drawing with “standard character” drawing. A mark
depicted as a typed drawing is the legal equivalent of a standard character mark. ProMark
Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1236 n.5 (TTAB 2015) (citing Trademark
Manual of Examining Procedure § 807.03(i)).
Serial No. 86129909
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I. Evidentiary Issue
Before proceeding to the merits of the refusal, we address an evidentiary matter.
In an attempt to demonstrate that the marks in the cited registrations are weak,
Applicant listed, in the body of its November 5, 2014 Response to Office Action,
several third-party registrations and applications for marks that include the words
BIRD or RUBY.3 However, Applicant did not provide status and title copies or
printouts from the USPTO electronic database showing current status and title of
these registrations or applications. Generally, a mere listing is insufficient to make
such registrations of record. In re Dos Padres Inc., 49 USPQ2d 1860, 1861 n.2 (TTAB
1998). The Examining Attorney, however, did not object to this evidence, but rather
treated the registrations and applications as if properly made of record. In her brief,4
the Examining Attorney recognizes that she waived any objection, and we will treat

3 Applicant listed the following BIRD-inclusive marks: Reg. No. 2807582, SNOWBIRD for
beer; Reg. No. 2157120, WHITE BIRD WHEAT for beer; Reg. No. 2237359, BIRDMAN for
beer; Reg. No. 2964144, WAR BIRD for beer; Reg. No. 3286597, MOTLEY BIRD for beer;
Reg. No. 4200545, ANGRY BIRDS for alcoholic beverages except beer; Reg. No. 4180255,
BIRDSONG BREWERY for beer, and Reg. No. 2807582 SNOWBIRD for beer, and LISTEN
TO THE BIRD, Application No. 85220712 for malt liquor (allowed). Applicant also listed
cancelled registration, Reg. No. 1859254 for BB BIRDS BREW for beer. Applicant listed the
following RUBY and RUBY inclusive marks: Reg. No. 1043089, ROYAL RUBY RED for
canned fruit juice, Reg. No. 1612266, RUBY for carbonated soft drinks; Reg. No. 1631048,
RUBY KISS for fruit juices; Reg. No. 1863300, RUBY RED SQUIRT for soft drinks; Reg. No.
2158987, RUBY MOUNTAIN for bottled drinking water; Reg. No. 2214712, RUBY RED
GRAPEFRUIT BURST for soft drinks and fruit drinks. Applicant identified cancelled Reg.
No. 2633794, COAST BREWING COMPANY, RUBY RED LAGER and abandoned
Application No. 85775148, RUBY TANGO for beer. The cancelled registrations and
abandoned application are of no probative value. In re Bayer Aktiengesellschaft, 488 F.3d 960,
82 USPQ2d 1828, 1831 n.2 (Fed. Cir. 2007) (Board did not assign any probative value to
abandoned application in affirmance); Action Temporary Servs. Inc. v. Labor Force Inc., 870
F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (“[A] cancelled registration does not
provide constructive notice of anything.”).
4 9 TTABVUE 9.
Serial No. 86129909
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Applicant’s listing of registrations as being of record and considered for “whatever
limited probative value [the listing] may have” In re District of Columbia, 101
USPQ2d 1588, 1592 n.5 (TTAB 2012) quoting In re Broyhill Furniture Industries Inc.,
60 USPQ2d 1511, 1513 n. 3 (TTAB 2001).
With regard to the listing, the intent-to-use application for LISTEN TO THE
BIRD has virtually no probative value on the issue of registrability as it is only
evidence of the fact that the application has been filed. See In re Mr. Recipe, LLC, 118
USPQ2d 1084, 1089 (TTAB 2016) (pending intent-to-use applications are evidence
only that the applications were filed on a certain date; and are not evidence of use of
the mark). Further, the probative value of the submission of a small number of
registrations or applications showing use of the term for beer or ale is limited. Id.
(citing by analogy Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v.
New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1135-36 (Fed. Cir.
2015) and Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d
1671, 1674 (Fed. Cir. 2015)) (“Those decisions highlighted that a “considerable” or
extensive” number of third-party registrations may well have, in the aggregate,
evidentiary value. Here, in stark contrast, we have one registration and one
application and no indication of the impact of its use on consumers.”).
II. Applicable Law
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 likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
Serial No. 86129909
- 5 -
1973). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are
the similarities between the marks and the similarities between the goods. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976). These factors, and the other relevant du Pont factors now before us, are
discussed below.
III. Discussion
A. Relatedness of the Goods, Channels of Trade and Conditions of
Purchase
We begin with the du Pont factors of the relatedness of the goods, channels of
trade and conditions of purchase with regard to both cited registrations. We base our
evaluation on the goods as they are identified in the application and each cited
registration. Stone Lion Capital Partners, LP v. Lion Capital LLP, 76 F.3d 1317, 110
USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Systems, Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir.
2002).
In this case, the “Ale; Beer” identified in the application are legally identical to
the “beer (ale)” identified in the ‘729 Registration. Furthermore, because the goods
are identical, the channels of trade and classes of purchasers for such goods are
presumed to be the same. In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ
721, 723 (CCPA 1968); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB
1994).
Serial No. 86129909
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As to the ‘470 Registration, Registrant’s “draft microbrewed ale” in the cited
registration is encompassed by Applicant’s more broadly identified goods, “ale; Beer.”
In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (broadly identified
goods in application that are unrestricted as to channels of trade and unlimited as to
classes of purchasers are presumed to encompass all of the goods described); In re
Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992) (unrestricted and broad
identifications are presumed to encompass all services of the type described).
Although Registrant in the ‘470 Registration has limited its channels of trade to “pubs
and brewpubs,” there is no such restriction in Applicant’s identification of goods, and
Applicant’s goods must be presumed to move through this same trade channel to the
same end users. In other words, we must presume that Applicant and Registrant sell
their ale and beer through the same “pubs and brewpubs” and to the same classes of
purchasers. See In re Anderson, 101 USPQ2d 1912, 1920 (TTAB 2012).
Applicant does not dispute any of the foregoing. However, Applicant contends that
customers of beer and ale are sophisticated purchasers who are not subject to impulse
purchases, exercise high standards of care, and are “careful loyal customers to specific
brands,” “carefully choos[ing] products based upon their specific qualities.”5
Although Applicant did not submit evidence to support this contention, we
recognize that some of the prospective consumers of Applicant’s and Registrants’
goods may indeed be highly discerning and relatively knowledgeable about beer and
ale and exercise some degree of care in their purchasing decisions. However, this does

5 7 TTABVUE 8.
Serial No. 86129909
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not mean that all customers for beer and ale are knowledgeable and careful. Because
these items, as identified, may be inexpensive and purchased by the public at large,
we must assume that the purchasers include casual consumers purchasing relatively
inexpensive items. See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1413 (TTAB 2015)
(if the identification of goods is not limited to a particular price point we must treat
the goods as being both inexpensive and high end, and presume purchasers would
include both sophisticated and ordinary purchasers). See also In re Bay State Brewing
Co., 117 USPQ2d 1958, 1960 (TTAB 2016). (“[B]eer is often relatively inexpensive,
subject to impulse purchase, and often ordered orally in a bar or restaurant.”).
As to each of the cited registrations, we find that the goods, channels of trade, and
classes of purchasers favor a finding of likelihood of confusion, and the factor of
purchasing conditions, i.e., consumer sophistication, is neutral.
B. Comparison of the Marks
We next compare the marks “in their entireties as to appearance, sound,
connotation and commercial impression” to determine the similarity or dissimilarity
between them. Palm Bay Imports, 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 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). The focus is on the recollection
Serial No. 86129909
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of the average purchaser, who normally retains a general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106,
108 (TTAB 1975).
Our analysis cannot be predicated on dissection of the involved marks. Stone Lion,
110 USPQ2d at 1161. Rather, we consider the marks in their entireties. Id. 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.”).
Nonetheless, 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. Stone Lion, 110
USPQ2d at 1161. For instance, as our principal reviewing court has observed, “[t]hat
a particular feature is descriptive or generic with respect to the involved goods or
services is one commonly accepted rationale for giving less weight to a portion of the
mark.” See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985).
Applicant argues that its six-syllable mark is different in appearance
and vocalized differently from each of the cited registrations because Applicant’s
mark is three separate words and contains “unique fonts, [of] varying size, varying
tilt orientation, and horizontal line accents.” In addition, Applicant contends that the
term RUBY in its mark “comes from the Texas Ruby Red Grapefruit (which is an
Serial No. 86129909
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ingredient in the beer)[,]”6 and that REDBIRD refers to “the nickname of a long-term
custodian at the brewery.”7 Applicant argues that its mark connotes an “old-fashioned
beer coming from an old, rural Texas brewery”8 and points to the “non-common”
SHINER portion of its mark as the most dominant,9 given its size, placement and
“top position,” and Applicant’s use of SHINER on “multiple different beers” as well as
its ownership of multiple trademark applications and registrations for SHINER and
SHINER composite marks.10 Applicant argues that RUBY and REDBIRD are weak
because they “refer to [the] color” of the beer or ale and “there are actual uses in the
marketplace of the term RUBY” as well as the term RED BIRD in connection with
beer and ale.11 Applicant further argues that the weakness of REDBIRD is “evidenced
by the PTO’s practice of allowing multiple ‘BIRD’ marks, regardless of the goods,”

6 7 TTABVUE 4; November 5, 2014 Response to Office Action.
7 7 TTABVUE 4.
8 Id.
9 7 TTABVUE 3.
10 November 5, 2014 Response to Office Action.
Applicant states in its brief that it is not “just relying on a ‘family-of-marks’ argument.” 7
TTABVUE 6. We note in any event that “[a] family of marks argument is not available to an
applicant seeking to overcome a likelihood-of-confusion refusal.” In re Cynosure Inc., 90
USPQ2d 1644, 1645 (TTAB 2009).
11 7 TTABVUE 6. In its brief, and in its June 3, 2015 Request for Reconsideration, Applicant
mentions third-party marketplace use of RUBY and RED BIRD in connection with beer and
ale; however, Applicant did not put any evidence in the record to reflect this use. We note
that the Examining Attorney provided in her May 7, 2014 Office Action a webpage listing for
Samuel Adams “Ruby Mild” beer. However, we do not find this single reference to support a
finding that the terms “RUBY” and “REDBIRD” or “RED BIRD” are weak as applied to the
goods identified in the involved application and cited registrations.
Serial No. 86129909
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referencing the list of BIRD composite registrations Applicant provided with its
November 5, 2014 Response to Office Action.12
The Examining Attorney argues, on the other hand, that Applicant’s mark and
the cited marks are identical in part, in that Applicant’s mark shares one term with
each of the cited marks, and that the additional terms in Applicant’s mark do not
avoid confusion with either registered mark.13
To the extent that Applicant argues the stylization sufficiently distinguishes its
mark from those of the cited registrations, we do not find the stylized lettering of
Applicant's mark to be so distinctive that Applicant’s mark is distinguishable from
either of the registered marks on this basis. Because the cited marks are both
presented in standard characters (or the typed equivalent), neither Registrant is
limited to any particular depiction of its mark. Thus, each Registrant is entitled to
all depictions of its mark regardless of the font style, size, or color; each of the
registered marks could at any time be displayed in a manner similar to Applicant’s
mark, that is, the words RUBY and REDBIRD could be displayed in the same font
style, size and depiction amid horizontal lines as those words appear in Applicant’s
mark. In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1909-10 (Fed. Cir. 2012);
Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253,

12 7 TTABVUE 6.
13 We note that on appeal, the Examining Attorney has argued several other factors or
responded to points that were raised during prosecution but where not pursued by Applicant
on appeal. We have not addressed these factors or arguments as we consider them waived by
Applicant. In re Gibson Guitar Corp., 61 USPQ2d 1948, 1950 n.2 (TTAB 2001) (Applicant’s
arguments during prosecution regarding the inherent distinctiveness of its mark were not
pursued at the appeal stage, and the Board noted that it need not consider them).
Serial No. 86129909
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1259 (Fed. Cir. 2011). See also Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937,
939 (Fed. Cir. 1983) (rejecting argument that a mark in standard character format
(typed) is distinct from a mark in a logo format; “[b]y presenting its mark in a typed
drawing, a difference cannot legally be asserted by that party”) (emphasis in original).
Because the marks in the cited registrations are different from each other, we
address each registration separately.
1. REDBIRD ALE – the ‘729 Registration
We first consider the similarity or dissimilarity of the marks and
REDBIRD ALE in their entireties. See Stone Lion, 110 USPQ2d at 1160; Palm Bay,
73 USPQ2d at 1691. Moreover, in comparing the marks, we are mindful that where,
as here, the goods are legally identical, the degree of similarity necessary to find
likelihood of confusion need not be as great as where there is a recognizable disparity
between the goods. Coach Servs., 101 USPQ2d at 1721; Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
The marks are similar because they both contain the word REDBIRD, which
appears to have no meaning or significance with respect to the identified goods. The
word REDBIRD is the dominant element in the cited registration because it is the
word that consumers will use to identify the “beer (ale)” covered in the registration
and to distinguish it from other beers/ales. While we do not ignore the word ALE in
Registrant’s mark, there is no question that word is generic for the identified goods,
and indeed has been disclaimed. The word ALE therefore is less significant than the
Serial No. 86129909
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word REDBIRD in creating the mark’s commercial impression. In re National Data
Corp., 224 USPQ at 751 (it is not improper to give more or less weight to a particular
feature of a mark). The placement of REDBIRD in the initial position of Registrant’s
mark further persuades us that REDBIRD is the dominant term in the mark
REDBIRD ALE. See Palm Bay, 73 USPQ2d at 1692; Presto Prods. Inc. v. Nice-Pak
Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (noting that “it is often the first part
of a mark which is most likely to be impressed upon the mind of a purchaser and
remembered.”). See also In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944,
1946 (Fed. Cir. 2004) (finding JOSE GASPAR GOLD “nearly identical” to GASPAR
ALE once the commercial significance of the descriptive and otherwise non-dominant
terms JOSE, GOLD and ALE are properly discounted).
Applicant asserts in its brief that the term REDBIRD in its mark refers to the
long-term custodian of Applicant’s brewery as featured in a TV commercial and
YouTube clip and on page 184 of the book “Shine On One Hundred Years Shiner Beer,
1909-2009, Spoetzl Brewery Shiner, Texas” by Mike Renfro, none of which was made
of record.14 Nor is there any indication or evidence to support Applicant’s contention
that the term REDBIRD would be understood or so perceived by consumers
encountering Applicant’s mark. Further, although Applicant maintains REDBIRD is
a weak term, nothing in the record establishes that REDBIRD is a weak or suggestive
term as used in connection with beer or ale. Again, Applicant’s list of third-party

14 7 TTABVUE 4; November 5, 2014 Response to Office Action. We note that Applicant only
provided a copy of the cover page of the book.
Serial No. 86129909
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registrations and applications is of limited probative value, and none of the marks
included therein contain the word REDBIRD (or RED BIRD). We find on this record
that REDBIRD is an arbitrary, distinctive term when used in connection with beer
and ale and REDBIRD ALE is a strong mark. Palm Bay, 73 USPQ2d at 1692 (“an
arbitrary mark [is] ‘a known word used in an unexpected or uncommon way’ [as
applied to the goods or services]... such marks are typically strong”) (citation omitted);
In re Ginc UK Ltd., 90 USPQ2d 1472, 1479 (TTAB 2007) (completely unique and
arbitrary, if not coined, nature of mark in relation to goods entitles the registered
mark to a broad scope of protection, and significantly increases the likelihood that
the marks, when used in connection with the identical goods would cause confusion)
(citations omitted).
As to Applicant’s arguments concerning the term RUBY in Applicant’s mark, we
find the term at most suggestive of a type of red grapefruit that has been added as an
ingredient to Applicant’s beer.15 The term RUBY also modifies REDBIRD and further
reinforces the connotation of color, i.e., a red bird and a beer or ale that is deep in
color.
With respect to the term SHINER in Applicant’s mark, in its November 5, 2014
Response to Office Action, Applicant states that SHINER is a geographical reference
to the location of its brewery in Shiner, Texas.16 To the extent Shiner is geographically
descriptive, it is entitled to less weight in the likelihood of confusion analysis. Tea

15 7 TTABVUE 4.
16 November 5, 2014 Response to Office Action.
Serial No. 86129909
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Board of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006)
(“Geographically descriptive terms are generally regarded as inherently weak and
entitled to less protection than arbitrary or suggestive marks.”). As an exception to
this general proposition, the addition of a geographically descriptive term may be
sufficient to distinguish marks containing highly suggestive or descriptive terms.
Compare In re Hartz Hotel Services, Inc., 102 USPQ2d 1150, 1154 (TTAB 2012) (due
to the highly suggestive nature of “Grand Hotel”, the marks GRAND HOTEL and
GRAND HOTEL NYC not confusingly similar due to the addition of NYC, a
geographically descriptive term) with The Chicago Corp. v. North American Chicago
Corp., 20 USPQ2d 1715, 1717 (TTAB 1991) (NORTH AMERICAN CHICAGO CORP.
and design (NA) confusingly similar to THE CHICAGO CORPORATION; addition of
geographical term and design feature insufficient to avoid confusion).
In this case, the addition of the geographically descriptive term SHINER is
insufficient to distinguish Applicant’s mark from the ‘729 registration for REDBIRD
ALE because although ALE is generic, on this record, REDBIRD has no meaning or
significance as used in connection with ale or beer.
The term SHINER also appears to be Applicant’s trade name. The addition of a
house mark or trade name to one of two otherwise confusingly similar marks
generally does not serve to avoid a likelihood of confusion. Menendez v. Holt, 128 U.S.
514, 521 (1888); In re Fiesta Palms LLC, 85 USPQ2d 1360 (TTAB 2007). Exceptions
are made to this general rule if (1) there are some recognizable differences in the
conflicting product marks, or if (2) the product marks are merely descriptive or highly
Serial No. 86129909
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suggestive or play upon commonly used or registered terms, so that the addition of
the house mark or trade name may be sufficient to render the marks as a whole
distinguishable. See In re S. D. Fabrics, Inc., 223 USPQ 54, 55 (TTAB 1984); In re
C.F. Hathaway Company, 190 USPQ 343, 345 (TTAB 1976).
Neither exception applies in this case. The differences between the marks (i.e., the
addition of RUBY in Applicant’s mark and the addition of the generic term ALE in
the registered mark) are not so significant in themselves that the addition of the
SHINER trade name in Applicant’s mark renders the marks as a whole
distinguishable. As mentioned above, on this record REDBIRD has no meaning or
significance as used in connection with ale or beer.
Applicant’s mark incorporates the dominant portion of Registrant’s mark, and
Applicant's addition of the geographic term (or trade name) SHINER and the term
RUBY to this distinctive arbitrary wording does not distinguish the marks as a whole.
In view of the foregoing, we find that, when Applicant’s mark and the mark in the
‘729 Registration are compared in their entireties, they are sufficiently similar in
appearance, sound, connotation and commercial impression that, if used in
connection with related goods, confusion would be likely to occur. As such, this du
Pont factor favors a finding of likelihood of confusion.
Serial No. 86129909
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2. RUBY – the ‘470 Registration
Keeping in mind the aforementioned legal principles, and viewing the marks in
their entireties, we reach the opposite conclusion as to Applicant’s mark
and RUBY, the mark in the ‘470 Registration.
When we compare the marks in their entireties, we find that they are more
different than similar in appearance, sound, connotation, and commercial impression.
Obviously, the additional terms SHINER and REDBIRD in Applicant's mark give the
marks a different appearance and sound. As for the meaning of RUBY, we have
already found that RUBY might be suggestive of the red grapefruit in Applicant’s
mark, or the color of the beer or ale, although we do not know if RUBY has any
meaning in connection with the cited mark. Also, as previously discussed, RUBY
modifies REDBIRD in Applicant’s mark to further connote a red bird. Registrant’s
mark does not have this specific connotation as it consists of RUBY alone. Thus, when
viewed in their entireties, and RUBY convey different connotations and
commercial impressions. Although Applicant incorporates in its entirety the cited
mark, RUBY, the similarity of the shared term RUBY in Applicant’s mark is
outweighed by the differences in appearance, sound, connotation and commercial
impression when combined with the other terms in Applicant’s mark.
Moreover, we find this du Pont factor to be pivotal in that, even considering the
other du Pont factors, this factor of the dissimilarities of the marks outweighs the
Serial No. 86129909
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other du Pont factors making confusion unlikely. See Champagne Louis Roederer S.A.
v. Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d 1459, 1460-61 (Fed. Cir. 1998)
(Federal Circuit affirmed Board finding of no likelihood of confusion between mark
CRYSTAL CREEK for wine and marks CRISTAL for wine and CRISTAL
CHAMPAGNE for champagne, where Board relied solely on dissimilarity of marks);
Kellogg Co. v. Pack'em Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed.
Cir. 1991) (“We know of no reason why, in a particular case, a single du Pont factor
may not be dispositive”).
C. Conclusion
We have carefully considered all evidence of record and Applicant’s arguments,
even if not specifically discussed herein, as they pertain to the relevant du Pont
factors. We treat as neutral any du Pont factors for which there is no evidence or
argument of record.
We find that confusion is likely between Applicant’s mark and the mark
in Reg. No. ‘729, REDBIRD ALE, because when viewed in their entireties, the marks
are more similar than they are different, the goods are identical and the channels of
trade and consumers overlap, and the factor of the sophistication of purchasers is
neutral.
However, we find that confusion is unlikely between Applicant’s mark
and the mark in Reg. No. ‘470, RUBY, because when viewed in their entireties, the
Serial No. 86129909
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similarities are outweighed by the dissimilarities, and this factor is dispositive.
Kellogg Co. v. Pack'em Enterprises Inc., 21 USPQ2d at 1145.
Decision: The refusal to register under Section 2(d) is affirmed as to Registration
No. 2133729 and is reversed as to Registration No. 1986470.