Surly Brewing Companyv.Christopher Olshan

Trademark Trial and Appeal Board

Apr 26, 2019

91230831 (T.T.A.B. Apr. 26, 2019)

Mailed: April 26, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Surly Brewing Company
v.
Christopher Olshan
_____

Opposition No. 91230831
_____

Bradley J. Walz and Timothy D. Sitzmann of Winthrop & Weinstine, P.A.,
for Surly Brewing Company.

Elaine D. Papas of the Law Office of Elaine D. Papas,
for Christopher Olshan.
_____

Before Bergsman, Wolfson and Kuczma, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Christopher Olshan (Applicant) filed an application on the Principal Register for
the mark SURLY PENGUIN and design, shown below, for “alcoholic beverages except
beer,” in Class 33.1

1 Application Serial No. 86893521, filed February 1, 2016, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s bona fide intent to use the mark in
commerce.
This Opinion Is Not a
Precedent of the TTAB
Opposition No. 91230831

- 2 -

The description of the mark in the application reads as follows:
The mark consists of top half of a black and white penguin
with gold eyebrows and beak with arms crossed and with a
red circle with “Surly Penguin” written in black inside the
circle, and gold sunburst rays.
The color(s) black, white, gold, and red is/are claimed as a
feature of the mark.
Surly Brewing Company (Opposer) filed a Notice of Opposition against the
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 so resembles Opposer’s registered
SURLY marks for beer, and for bar and restaurant services, as to be likely to cause
confusion. Specifically, Opposer alleged ownership of, inter alia, the registered marks
listed below:
1. Registration No. 4675141 for the mark SURLY (in standard character form)
for “beer,” in Class 32;2 and
2. Registration No. 476868 for the mark SURLY (in standard character form) for
“bar and restaurant services; providing pavilion facilities for concerts and
other functions,” in Class 43.3

2 Registered January 30, 2015.
3 Registered June 30, 2015.
Opposition No. 91230831

- 3 -

Applicant, in his Answer, denied the salient allegations in the Notice of
Opposition.
I. Evidentiary Issues
A. Internet evidence
Applicant, in his Notice of Reliance, introduced as Exhibit B images of bottles of
spirits, wine, and beer purportedly from the Internet.4 Following the excerpts from
the Internet webpages, Applicant presented the URLs for the webpages stating that
the webpages were printed on June 30, 2017.5
Trademark Rule 2.122(e)(2), 37 C.F.R. § 2.122(e)(2), provides that a copy of the
relevant portion of a webpage may be introduced into evidence through a notice of
reliance provided that the propounding party includes the URL (source) and the date
the webpages were accessed.
(2) Internet materials may be admitted into evidence under
a notice of reliance in accordance with paragraph (g) of this
section, in the same manner as a printed publication in
general circulation, so long as the date the internet
materials were accessed and their source (e.g., URL) are
provided.
Trademark Rule 2.122(e)(2).6

4 32 TTABVUE 7-23.
5 32 TTABVUE 24-26.
6 The amendment to Trademark Rule 2.122(e)(2) permitting the introduction of webpages
through a notice of reliance was effective January 14, 2017. This amendment codified the
Board’s holding in Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d 1031, 1039 (TTAB 2010)
permitting the introduction of a document obtained from the Internet if it identifies its date
of publication or date that it was accessed and printed, and its source (e.g., the URL).
Opposition No. 91230831

- 4 -

Opposer objects to Applicant’s Notice of Reliance on the grounds that the images
introduced by Applicant (i) “do not constitute printed publications from the internet,”
(ii) Applicant “has not provided the required URLs to introduce images under Safer,”
(iii) “Applicant did not even provide URLs for at least eleven of the images,” and (iv)
“there are many other URLs that revert to ‘page not found’ or do not display the image
provided by Applicant in the Notice of Reliance.”7
As noted above, Trademark Rule 2.122(e)(2) provides that “Internet materials
may be introduced under notice of reliance.” The rule does not limit Internet
materials to printed publications.
Internet documents that may be introduced by notice of
reliance include websites, advertising, business
publications, annual reports, and studies or reports
prepared for or by a party or non-party, as long as they can
be obtained through the Internet as publicly available
documents. This expands the types of documents that can
be introduced by notice of reliance beyond printed
publications in general circulation, and means that some
Internet documents, such as annual reports that are
publicly available, can be made of record by notice of
reliance when paper versions of the annual reports are not
acceptable as printed publications.
TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 704.08(b)
(2018).
While it is preferable and the better practice for the URL and date to appear on
the webpage itself, in an ex parte setting, the Board has accepted webpages where
the Examining Attorney or applicant has provided the URL and date in an Office

7 Opposer’s Objection to Applicant’s Evidence, p. 3 (36 TTABVUE 39).
Opposition No. 91230831

- 5 -

Action or response to an Office Action. See In re Mueller Sports Med., Inc.,
126 USPQ2d 1584, 1586 (TTAB 2018) (quoting In re Max Capital Grp. Ltd.,
93 USPQ2d 1243, 1246 n.6 (TTAB 2010)). Accordingly, it is not fatal to the
admissibility of an Internet document if it fails to display the URL or date it was
printed, if that information is otherwise clearly provided.
However, Applicant omitted the URLs for the Domaine wine images,8 the Don
Pedro Brandy image,9 the Don Cornelius Beer image,10 the Mad Jack Apple Lager
image,11 the Ogden’s Fire Whiskey image,12 the Fire God Jalapeno Liqueur image,13
the Red Heart Rum image,14 and the Red Flag Vodka image.15 Accordingly, Opposer’s
objection is sustained with respect to the Internet evidence regarding those products.
Although Applicant provided a URL and access date for information from the Blue
Feather Vodka website, Applicant stated that the “website expired 1/23/2018.”16
Because the website was not available at the time of trial, Opposer’s objection is
sustained with respect to the Internet evidence regarding this product.

8 32 TTABVUE 14-15 and 24-26.
9 32 TTABVUE 13 and 25.
10 32 TTABVUE 13 and 25. Also, we note that Applicant stated that the Don Cornelius Beer
is no longer brewed. Id. at 32. Because this product is no longer available, the Internet
evidence would have had little, if any, probative value.
11 32 TTABVUE 18 and 25.
12 32 TTABVUE 19 and 26.
13 32 TTABVUE 20 and 26.
14 32 TTABVUE 21 and 26.
15 32 TTABVUE 21 and 26.
16 32 TTABVUE 8 and 24.
Opposition No. 91230831

- 6 -

With respect to Opposer’s objection that “there are many other URLs that revert
to ‘page not found’ or do not display the image provided by Applicant in the Notice of
Reliance,” Opposer, in its objections to Applicant’s evidence, provided a footnote
listing five websites.17 Providing only a website address or hyperlink to Internet
materials is insufficient to make such materials of record. Cf. In re Olin Corp., 124
USPQ2d 1327, 1332 n.15 (TTAB 2017); In re Powermat Inc., 105 USPQ2d 1789, 1791
(TTAB 2013); In re HSB Solomon Assocs. LLC, 102 USPQ2d 1269, 1274 (TTAB 2012).
Because of the transitory nature of Internet postings, websites referenced only by
address or hyperlinks may be modified or deleted at a later date without notification.
See Safer Inc., 94 USPQ2d 1039. Thus, information identified only by website address
or hyperlink is not subject to verification by the adverse party to corroborate or refute.
See In re HSB Solomon Assocs. LLC, 102 USPQ2d at 12. Accordingly, to be of record,
Opposer must have introduced a copy of the webpage showing that Applicant’s
purported evidence is not available.
Opposer’s objection to Applicant’s Internet evidence that purportedly could not be
found is overruled.
B. Labels
Applicant, in his notice of reliance, introduced as Exhibit 4 Applicant’s label and
Opposer’s label.18 Opposer objects to Applicant’s Exhibit 4 on the ground that “to the
extent these labels constituted printed publications,” they do not include the source,

17 Opposer’s Objection to Applicant’s Evidence, p. 3 n.1 (36 TTABVUE 39).
18 32 TTABVUE 35.
Opposition No. 91230831

- 7 -

date, or other identifying or authenticating information.”19 Labels are not the type of
evidence that may be introduced through a notice of reliance as they are not printed
publications, such as books or periodicals, and they are not Internet materials.
Trademark Rule 2.122(e)(1) and (2), 37 C.F.R. §§ 2.122(e)(1) and (2); see also Hiraga
v. Arena, 90 USPQ2d 1102, 1104 (TTAB 2009) (invoices and annual catalogs are not
admissible through a notice of reliance); Life Zone Inc. v. Middleman Grp. Inc.,
87 USPQ2d 1953, 1956-59 (TTAB 2008) (brochures, periodic newsletters, materials
used in seminars and conferences showing topics of discussion, recently created
marketing materials, materials used in radio ads and interviews are not admissible
through a notice of reliance); L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883, 1886,
n.6 (TTAB 2008) (letters and emails are not admissible through a notice of reliance);
Original Appalachian Artworks Inc. v. Streeter, 3 USPQ2d 1717, 1717 n.3 (TTAB
1987) (printed advertisement not identified with the specificity required to be
considered a printed publication); Glamorene Prods. Corp. v. Earl Grissmer Co., 203
USPQ 1090, 1092 n.5 (TTAB 1979) (private promotional literature is not presumed
to be publicly available within the meaning of the rule). Accordingly, Opposer’s
objection to the labels is sustained.
C. Exhibit attached to Applicant’s brief
Applicant attached an exhibit to its brief. Exhibits to briefs are unnecessary and
discouraged. See Life Zone Inc. v. Middleman Grp. Inc., 87 USPQ2d at 1955 (“while
exhibits to briefs are not explicitly prohibited by the Trademark Rules, the Board will

19 Opposer’s Objection to Applicant’s Evidence, p. 4 (36 TTABVUE 40).
Opposition No. 91230831

- 8 -

usually ignore them, because they comprise either untimely evidence or unnecessary
copies of timely evidence”); ITC Entertainment Grp. Ltd. v. Nintendo of Am. Inc.,
45 USPQ2d 2021, 2022-23 (TTAB 1998) (filing duplicative submissions is a waste of
time and resources, and is a burden on the Board). We do not consider any exhibit
attached to Applicant’s brief unless it has been properly introduced during
Applicant’s testimony period.
II. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), Applicant’s application file. The parties introduced the following
testimony and evidence.
A. Opposer’s testimony and evidence
1. Testimony declaration of Omar Ansari, Opposer’s founder and Chief
Executive Officer;20
2. Notice of reliance on the following items:
a. Copies of Opposer’s pleaded registrations printed from the USPTO
electronic database showing the current status of and title to the
registrations;21
b. Applicant’s responses to Opposer’s interrogatory Nos. 1, 9 and 12;22

20 28 TTABVUE. The portions of the Ansari Testimony Declaration designated confidential
are posted at 29 TTABVUE which allows access only by the Board.
21 34 TTABVUE 26-53.
22 34 TTABVUE 55-61.
Opposition No. 91230831

- 9 -

c. A copy of Opposer’s website;23
d. A copy of a search from the USPTO electronic database;24
e. Copies of articles from websites purportedly to show that breweries are
distilling spirits;25
f. Copies of articles from websites purportedly to show that distillers of
spirits collaborate with brewers to create products incorporating both
manufacturing techniques;26
g. Copies of third-party registrations for spirits and restaurant or bar
services;27
h. Copies of third-party registrations for both beer and spirits;28
i. Excerpts from websites regarding 50 entities that purportedly produce
spirits and beer under the same marks;29
j. Articles from websites purportedly regarding spirits that may be
considered beer;30

23 34 TTABVUE 63-123.
24 34 TTABVUE 125.
25 34 TTABVUE 127-250.
26 34 TTABVUE 252-412.
27 34 TTABVUE 412-467.
28 34 TTABVUE 469-673.
29 30 TTABVUE 3-330.
30 30 TTABVUE 332-357.
Opposition No. 91230831

- 10 -

k. Articles from websites purportedly regarding cocktails consisting of beer
and spirits;31
l. Articles from websites purportedly regarding beer and spirits that are
sold in a similar manner;32
m. Copies of websites advertising the sale of beer and spirits;33
n. Excerpts from Applicant’s Facebook page;34
o. Excerpts from RateBeer.com;35
p. Excerpts from the Untapped and Homebrewers’ Association websites
regarding Opposer;36
q. Articles from websites regarding Opposer;37
r. Excerpts from Opposer’s website purportedly offering items other than
beer for sale;38 and
s. Excerpts from articles from printed publications purportedly regarding
the size of the beer market;39 and
3. Rebuttal notice of reliance on the following items:

31 30 TTABVUE 359-422.
32 31 TTABVUE 3-50.
33 31 TTABVUE 52-111.
34 31 TTABVUE 113-115.
35 31 TTABVUE 117-195.
36 31 TTABVUE 197-230.
37 31 TTABVUE 232-280.
38 31 TTABVUE 282-302.
39 31 TTABVUE 304-310.
Opposition No. 91230831

- 11 -

a. Excerpt from Opposer’s website purportedly advertising the sale of an
alcoholic beverage;40
b. Excerpt from third-party website purportedly about Opposer’s beer-
wine crossover;41 and
c. Printout from the USPTO electronic database showing that Registration
No. 3208791 relied on by Applicant has been cancelled.42
B. Applicant’s testimony and evidence
1. Notice of reliance on copies of third-party websites for spirits and beers with
purportedly similar marks (discussed in the Evidentiary Issues section);43
2. Notice of reliance on USPTO electronic database search results for marks
containing the word “Surly”;44
3. Notice of reliance on documents purportedly from Cancellation
No. 92056815;45 and
4. Applicant’s testimony declaration.46
III. Standing
Standing is a threshold issue in every inter partes case. See Empresa Cubana Del
Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014);

40 33 TTABVUE 6-11.
41 33 TTABVUE 13-14.
42 33 TTABVUE 16.
43 32 TTABVUE 8-26.
44 32 TTABVUE 37-51.
45 32 TTABVUE 53-61.
46 32 TTABVUE 62-75.
Opposition No. 91230831

- 12 -

John W. Carson Found. v. Toilets.com Inc., 94 USPQ2d 1942, 1945 (TTAB 2010). To
establish standing in an opposition or cancellation proceeding, a plaintiff must prove
that it has “both a ‘real interest’ in the proceedings as well as a ‘reasonable’ basis for
its belief of damage.” See Empresa Cubana, 111 USPQ2d at 1062; Ritchie v. Simpson,
170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (TTAB 1982).
Opposer has established its standing for its likelihood of confusion claim by
properly introducing into evidence its pleaded registrations.47 See, e.g., Cunningham
v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000) (plaintiff’s
two prior registrations suffice to establish plaintiff’s direct commercial interest and
its standing); N.Y. Yankees P’ship v. IET Prods. & Servs., Inc., 114 USPQ2d 1497,
1501 (TTAB 2015).
IV. Priority
Because Opposer’s pleaded registrations are of record, priority in the opposition
proceeding is not at issue with respect to the goods and services identified therein.
Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1469 (TTAB 2016)
(citing King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108,
110 (CCPA 1974)). The King Candy Co. court explained that Section 2(d) of the
Trademark Act prevents the registration of a mark that is likely to cause confusion
with a registered mark. Because Applicant did not file a counterclaim to cancel
Opposer’s pleaded registrations, and because Applicant may not attack the validity

47 34 TTABVUE 26-53.
Opposition No. 91230831

- 13 -

of Opposer’s pleaded registrations without filing a counterclaim or petition to cancel,
Trademark Rule 2.106(b)(3)(i) and (ii), 37 C.F.R. §§ 2.106(b)(3)(i) and (ii), priority is
not at issue with respect to the marks involved in this opposition.
Nevertheless, Applicant argues that he has priority because he filed his
application on February 1, 2016 and sold his first bottle of spirits on August 6, 2016.48
However, six of Opposer’s eight pleaded registrations, including the two registrations
noted above, issued prior to February 1, 2016, the earliest date on which Applicant
relies.
V. Likelihood of confusion
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. 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 Indus., 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 or 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.”). “[E]ach case must be decided on its

48 Applicant’s Brief, p. 7 (37 TTABVUE 10); Applicant’s Testimony Decl. ¶3 (32 TTABVUE
63).
Opposition No. 91230831

- 14 -

own facts and the differences are often subtle ones.” Indus. Nucleonics Corp. v. Hinde,
475 F.2d 1197, 177 USPQ 386, 387 (CCPA 1973) (internal citations removed). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the similarities between the goods or services. See In re Chatam Int’l
Inc., 380 F.3d 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, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017)
(“The likelihood of confusion analysis considers all DuPont factors for which there is
record evidence but ‘may focus … on dispositive factors, such as similarity of the
marks and relatedness of the goods’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc.,
308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
A. Strength of Opposer’s mark SURLY, including the number and nature of
similar marks in use on similar goods and in connection with similar
services.
In determining the strength of a mark, we consider both its inherent strength
based on the nature of the mark itself and its commercial strength, based on the
marketplace recognition value of the mark. See In re Chippendales USA, Inc.,
622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is
measured both by its conceptual strength (distinctiveness) and its marketplace
strength (secondary meaning).”); Top Tobacco, L.P. v. North Atlantic Operating Co.,
Inc., 101 USPQ2d 1163, 1171-72 (TTAB 2011) (the strength of a mark is determined
by assessing its inherent strength and its commercial strength); Tea Bd. of India v.
Opposition No. 91230831

- 15 -

Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006); MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION § 11:83 (5th ed. 2019) (“The first enquiry
focuses on the inherent potential of the term at the time of its first use. The second
evaluates the actual customer recognition value of the mark at the time registration
is sought or at the time the mark is asserted in litigation to prevent another’s use.”).
Market strength is the extent to which the relevant public recognizes a mark as
denoting a single source. Tea Bd. of India v. Republic of Tea Inc., 80 USPQ2d at 1899.
In other words, it is similar to acquired distinctiveness. For purposes of analysis of
likelihood of confusion, a mark’s renown may “var[y] along a spectrum from very
strong to very weak.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC,
857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (internal quotations
omitted).
The word “Surly” used in connection with beer or “bar and restaurant services;
providing pavilion facilities for concerts and other functions” is an arbitrary term
because it does not describe, nor suggest, any quality or characteristic of those goods
or services. See Alberto-Culver Co. v. Helene Curtis Indus., Inc., 167 USPQ 365, 370
(TTAB 1970).
The fact that a word or term may be found in a dictionary
does not indicate that the word is lacking in trademark
significance unless the dictionary meaning of the word is
descriptive of the goods in connection with which it is used.
That is, the capability of a dictionary word to function as a
trademark must be determined by the simple expedient of
exploring what meaning, if any, does it possess as applied
to a particular product. In this regard, it must be
recognized that while a word may have a meaning or
descriptive significance as applied to one product, it may
Opposition No. 91230831

- 16 -

not have such a significance as applied to a different
product. Insofar as “COMMAND” is concerned, although it
may in a round about manner possess some suggestive
characteristics of hair care products, it is, in essence, an
arbitrary mark as applied to such goods.
Id. Accordingly, Opposer’s mark SURLY, when used in connection with beer and “bar
and restaurant services; providing pavilion facilities for concerts and other
functions,” is inherently strong.
With respect to the commercial strength of Opposer’s SURLY mark, Opposer
introduced the following evidence:
1. In the summer of 2007, Beer Advocate magazine named Opposer’s brewery
“the Best Brewery in America” and Opposer’s SURLY DARKNESS as the best
American beer in the world.49 Opposer’s trade name is Surly Brewing Co.;50
2. Each year since 2007, the RateBeer.com website has ranked Opposer’s brewery
as one of the Top 100 Breweries in the world;51
3. “As of March 29, 2018, the website RateBeer listed 10 of Surly’s beers as
receiving a perfect score of 100 for the beer’s style category, another 12 beers
with a near-perfect style score of 99, and another 33 beers with a style score of
90 – 97.”;52

49 Ansari Testimony Decl. ¶8 (28 TTABVUE 4). In 2007, RateBeer.com ranked SURLY
STOUT as the number one stout and SURLY BENDER as the number three American Brown
Ale. 31 TTABVUE 150. Since 2007, RateBeer.com has ranked several of Opposer’s beers very
high. 31 TTABVUE 150-181.
50 Id. at ¶1 and Exhibits A, B, C, and F (28 TTABVUE 2, 16, 19, 22, and 37-73).
51 Id. at ¶43 (28 TTABVUE 11); see also 31 TTABVUE 117-147.
52 Id.
Opposition No. 91230831

- 17 -

4. In 2014, Orbitz.com, the travel publication website, ranked Opposer’s SURLY
DARKNESS as “one of the 10 Most Travelled-For Beers in America”;53
5. Opposer has received multiple medals from the Great American Beer Festival,
including a Gold Medal for its SURLY DARKNESS beer in 2016, a bronze
medal for SURLY PENTAGRAM in 2013, a bronze medal for SURLY BENDER
in 2009, and a gold medal for SURLY BENDER in 2007;54
6. Opposer’s flagship beer, SURLY FURIOUS, has been ranked as one of the best
IPA’s in the United States by the Homebrewers Association and
Ratebeer.com;55
7. Opposer’s brewery and restaurant has been featured on the Food Network’s
show DINERS, DRIVE-INS & DIVES, it was named as one of 2015’s “10 Most
Exciting Places to Eat in America” by FOOD AND WINE magazine, and ESQUIRE
magazine named SURLY CYNICALE as one of the “Best Canned Beers to
Drink Now” in a February 2012 article;56
8. In 2011, Opposer encouraged its customers and fans to contact their state
legislators in Minnesota to pass legislation permitting breweries to operate
taprooms at their production facilities. The proposed legislation became known
as the “Surly Bill” and was passed on May 24, 2011;57

53 Id. at ¶9 (28 TTABVUE 4); see also 31 TTABVUE 244.
54 Id. at ¶44 (28 TTABVUE 12).
55 Id. at ¶44 (28 TTABVUE 12).
56 Id. at ¶45 (28 TTABVUE 12).
57 Id. at ¶¶10-11 (28 TTABVUE 4-5).
Opposition No. 91230831

- 18 -

9. SURLY beer is distributed in Minnesota, Wisconsin, Iowa, Illinois, North and
South Dakota, Colorado and Nebraska;58
10. Opposer has promoted its SURLY beers at festivals, conferences, and tastings
throughout the United States, including Pennsylvania, Washington D.C.,
Arizona, and Texas;59
11. Opposer’s sales have been substantial and they are growing;60
12. Likewise, Opposer’s advertising expenditures have been substantial and they
are increasing;61
13. “Because of the importance and consumer recognition of the SURLY® brand,
[Opposer] made a conscious decision to frequently use a similar naming
pattern for many of [Opposer’s] beers. Specifically, the naming pattern is
“SURLY” plus another word. Examples of these beers include SURLY
FURIOUS, SURLY TODD THE AXE MAN, SURLY DAMIEN, SURLY GOSE,
SURLY VIKING, SURLY PENTAGRAM, SURLY SMOKE, SURLY
ABRASIVE, SURLY XTRA-CITRA, SURLY CYNICALE, SURLY

58 Id. at ¶16 (28 TTABVUE 5).
59 Id. at ¶17 (28 TTABVUE 6).
60 Id. at ¶19 (29 TTABVUE 6). Because Opposer has designated its sales as confidential, we
refer to its sales figures in general terms. Nevertheless, Opposer’s sales pale in comparison
to the sales by the major brewers such as Anheuser-Busch (Budweiser, Bud Light, Beck’s,
Stella Artois, etc.), MillerCoors (Miller, Coors, Blue Moon, etc.), and Boston Beer Co.
31 TTABVUE 304-310. According to IBISWorld Industry Report 31212 Breweries in the
United States (IBISWORLD.com) (June 2016), The Boston Beer Co. is “one of the most well-
known brewers of craft beers in the United States” with an estimated market share of 2.9%
based on revenues of approximately $1.1 billion. 31 TTABVUE 309.
61 Id. at ¶20 (29 TTABVUE 6-7). Because Opposer has designated its advertising
expenditures as confidential, we refer to its advertising figures in general terms.
Opposition No. 91230831

- 19 -

OVERRATED!, SURLY SCHADENFREUDE, SURLY DARKNESS, and
others.”62
We find that Opposer’s mark SURLY is commercially strong.
Finally, Applicant introduced 14 SURLY registrations purporting to show that
SURLY is a weak mark.63 Four of the registrations are owned by Opposer.64 Nine of
the registrations are for products far removed from the goods and services at issue
and, therefore, are not probative.65 See In re i.am.symbolic, LLC, 123 USPQ2d at 1751
(disregarding third-party registrations for other types of goods where the proffering
party had neither proven nor explained that they were related to the goods in the
cited registration); Key Chem., Inc. v. Kelite Chem. Corp., 464 F.2d 1040, 175 USPQ
99, 101 (CCPA 1972) (“Nor is our conclusion altered by the presence in the record of
about 40 third-party registrations which embody the word ‘KEY’. The great majority
of those registered marks are for goods unrelated to those in issue, and there is no
evidence that they are in continued use. We, therefore, can give them but little weight
in the circumstances present here.”); In re Thor Tech Inc., 90 USPQ2d 1634, 1639
(TTAB 2009) (the third-party registrations are of limited probative value because the
goods identified in the registrations appear to be in fields which are far removed from
the goods at issue).

62 Id. at ¶21 (28 TTABVUE 7).
63 32 TTABVUE 38-51.
64 32 TTABVUE 48-51.
65 32 TTABVUE 39-47.
Opposition No. 91230831

- 20 -

The remaining registration, Registration No. 3208791 for the mark SURLY
WENCH PUB for bar services66 was cancelled effective September 15, 2017.67 A
cancelled or expired registration has no probative value other than to show that it
once issued and it is not entitled to any of the statutory presumptions of Section 7(b)
of the Trademark Act. See Action Temp. 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.”); In Re Ginc UK Ltd., 90 USPQ2d 1472, 1480 (TTAB
2007); Sunnen Prods. Co. v. Sunex Int’l Inc., 1 USPQ2d 1744, 1747 (TTAB 1987).
Considering the record as a whole, including evidence pertaining to both inherent
and commercial strength, we find that Opposer’s mark SURLY is appropriately
placed on the “strong” side of the “‘spectrum from very strong to very weak.’” Joseph
Phelps Vineyards, 122 USPQ2d at 1734 (quoting In re Coors Brewing Co., 343 F.3d
1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003)); Tao Licensing, LLC v. Bender
Consulting Ltd., 125 USPQ2d 1043, 1059 (TTAB 2017) (“The commercial strength of
Petitioner’s TAO mark outweighs any conceptual weakness.”). Accordingly, Opposer’s
SURLY trademark is entitled to a broad scope of protection.
B. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression.
We now turn 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. du Pont, 177 USPQ at 567. “Similarity in any one of

66 32 TTABVUE 38.
67 33 TTABVUE 16.
Opposition No. 91230831

- 21 -

these elements may be sufficient to find the marks confusingly similar.” In re Davia,
110 USPQ2d 1810, 1812 (TTAB 2014); accord Krim-Ko Corp. v. Coca-Cola Bottling
Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity
in either form, spelling or sound alone is likely to cause confusion.”) (citation omitted).
“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); see also Midwestern Pet Foods, Inc. v.
Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir.
2012); San Fernando Elec. Mfg. Co. v. JFD Elec. Components Corp., 565 F.2d 683,
196 USPQ 1, 3 (CCPA 1977); Spoons Rests. 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 & Winston, Inc., 207 USPQ 335, 344
(TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Because the goods at issue are beer and alcoholic beverages except beer, as well as
bar and restaurant services, the average customer is an ordinary consumer.
Applicant is seeking to register the mark SURLY PENGUIN and design. Where,
as here, Applicant’s mark consists of words and a design, the words are normally
Opposition No. 91230831

- 22 -

accorded greater weight because the words are likely to make a greater impression
upon purchasers, would be remembered by them, and would be used by them to
request the goods. See Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA
v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1134 (Fed. Cir.
2015), cert. denied, 136 S. Ct. 982 (2016); In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F. 2d 1579, 218
USPQ 198, 200 (Fed. Cir 1983)). 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. See In re Nat’l Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985); Viterra, 101 USPQ2d at 1908.
While there is no explicit rule that marks are automatically similar where the
junior mark (SURLY PENGUIN and design) contains Opposer’s entire mark
(SURLY), where, as here, Opposer’s SURLY mark is both inherently and
commercially strong and, therefore, entitled to a broad scope of protection, the fact
that Opposer’s mark is subsumed by Applicant’s mark increases the similarity
between them. See, e.g., China Healthways Inst. Inc. v. Xiaoming Wang, 491 F.3d
1337, 83 USPQ2d 1123, 1125 (Fed. Cir. 2007) (applicant’s mark CHI PLUS is similar
to opposer’s mark CHI both for electric massagers); Coca-Cola Bottling Co. of
Memphis, Tenn., Inc. v. Joseph E. Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ
105 (CCPA 1975) (applicant’s mark BENGAL LANCER for club soda, quinine water
and ginger ale is likely to cause confusion with BENGAL for gin); In re Toshiba Med.
Opposition No. 91230831

- 23 -

Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (applicant’s mark VANTAGE TITAN
for medical magnetic resonance imaging diagnostic apparatus is similar to TITAN for
medical ultrasound diagnostic apparatus); Broadcasting Network Inc. v. ABS-CBN
Int’l, 84 USPQ2d 1560, 1568 (TTAB 2007) (respondent’s mark ABS-CBN is similar to
petitioner’s mark CBN both for television broadcasting services); In re El Torito
Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (applicant’s mark MACHO COMBOS
for food items is similar to MACHO for restaurant entrees).
The marks are similar in appearance and sound because they share the word
SURLY. SURLY is defined as “churlishly rude or bad-tempered” or “unfriendly or
hostile; menacingly irritable.”68 Applicant testified that he uses the word “Surly” to
express the mood of the penguin found on the logo with a scowling countenance.69
Likewise, Opposer’s label, properly introduced by Opposer, features a scowling man.70
Thus, the connotation and commercial impression engendered by the marks are
similar. Consumers familiar with Opposer’s SURLY marks may view the SURLY
PENGUIN mark as a new mark identifying a line of SURLY spirits.
We find that the marks are similar in appearance, sound, connotation and
commercial impression.

68 Dictionary.com/browse/surly# based on the RANDOM HOUSE UNABRIDGED DICTIONARY
(2019). The Board may take judicial notice of dictionary definitions, including online
dictionaries that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4
(TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v.
Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010); In re Red Bull GmbH,
78 USPQ2d 1375, 1378 (TTAB 2006).
69 Applicant’s Testimony Decl. ¶23 (32 TTABVUE 73).
70 Opposer’s Notice of Reliance 34 Exhibit 12 (TTABVUE 63.
Opposition No. 91230831

- 24 -

C. The similarity or dissimilarity of the goods.
Applicant is seeking to register its mark SURLY PENGUIN and design for
“alcoholic beverages except beer.” Opposer is the owner of the SURLY trademark for
“beer” and for “bar and restaurant services; providing pavilion facilities for concerts
and other functions.” Alcoholic beverages include “whiskey, gin, vodka, or any other
intoxicating liquor.”71 We must consider the goods and services as they are described
in the application and registration. See Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys,
Inc. v. Houston Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990) (“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 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.”).
1. Beer and alcoholic beverages except beer
Omar Ansari testified that craft beer brewers are also distilling spirits.
Based on my personal experience both as a brewer and a
purchaser of alcoholic beverages, I have always been aware
of some companies that sell both beer and alcoholic
beverages other than beer. However, I have noticed a
significant increase in this trend over the last decade,
coinciding with the craft beer boom. A number of breweries
have expanded their product line to include non-beer
alcoholic beverages under the same brand as their beer.
For example, breweries such as New Holland, Ballast

71 Dictionary.com/browse/alcoholic?s=t based on the RANDOM HOUSE UNABRIDGED
DICTIONARY (2019).
Opposition No. 91230831

- 25 -

Point, Rogue, Dogfish Head, Anchor and others have all
opened distilleries under the same brand name as the
company’s beer.72
Mr. Ansari’s testimony is corroborated by excerpts from websites of 50 third-party
entities that produce beer and other alcoholic beverages under the same marks,73 and
21 news articles regarding breweries that have expanded their operations to include
spirits, wine or cider.74 The excerpts from the following third-party producers of beer
and other alcoholic beverages are representative:
1. Dogfish Head craft beers and ales75 and Dogfish Head rum, gin, and vodka;76
2. Rogue ales and lagers77 and Rogue whiskey and gin;78 and
3. Anchor Steam Beer79 and Anchor Old Tom Gin.80
The excerpts from the following articles regarding breweries that have expanded
their operations to include spirits, wine or cider are representative:
1. QZ.com
Breweries are cranking out distilled spirits like it’s going
out of style – and it isn’t (February 22, 2016)
Never ones to stop innovating, more and more brewers are
capitalizing on brand interest, making use of surplus raw

72 Ansari Testimony Decl. ¶29 (28 TTABVUE 8).
73 30 TTABVUE 3-330.
74 34 TTABVUE 127-320.
75 30 TTABVUE 3-6.
76 30 TTABVUE 8.
77 30 TTABVUE 10-17.
78 30 TTABVUE 19-21.
79 30 TTABVUE 23.
80 30 TTABVUE 25.
Opposition No. 91230831

- 26 -

materials, and scratching a persistent creative itch by
distilling craft spirits – and it’s no passing fad.
In fact, Anchor Brewing Co. of San Francisco, CA, has been
distilling since as far back as 1993. …
Joseph describes Maytag’s progression from interest in
beer to rye whisky as “natural,” concluding that, “if you’re
in the beer world, and you enjoy real flavorful beers, then
you might have some interest in whiskey.”81
2. BeerAdvocate.com
Distilling Like a Brewer (April 2012)
There might be a major expansion going on at the Ballast
Point Brewing & Spirits warehouse in San Diego, Calif.,
but head brewer Yuseff Cherney is still dedicated to his
craft – or, should we say crafts. In addition, to being the
company’s head brewer … Cherney is also Ballast Point’s
head distiller, …
Distilling wasn’t a huge leap from brewing; the two
processes require much of the same equipment and
chemistry knowledge. Because every type of hard liquor
starts off as some sort of fermented sugar, brewers who
spend their days turning malted barley into beer are that
much closer to making distilled beverages. All that’s
needed is the still itself. …
Today, out of the roughly 235 craft distilleries in America,
18 are operated by craft breweries, according to a
forthcoming white paper on the subject by Michel
Kinstlick, co-owner of Coppersea Distilling in New York –
and that number is expected to rise as these once-mutually
exclusive industries slowly recognize just how much they
have in common.82

81 34 TTABVUE 127-128.
82 34 TTABVUE 135-136.
Opposition No. 91230831

- 27 -

3. Fortune.com
Now, top craft brewers are selling their own liquor (August
15, 2015)
Craft Brewer Dogfish Head has made its reputation by
coming up with beers that burst through traditional
expectations. So, in hindsight, it’s not surprising that when
the brewer launched its spirits division 13 years ago, it
blazed new paths – using ingredients like local honey in its
rum and hops in its gin. …
While beer remains the star of the show for craft brewers,
several operations, including many well-known names, are
also dabbling in the up and coming field of craft distilling.
…
Brewers note that there’s at least a dotted line between
brewing beer and distilling spirits. The beer and whiskey
making process are related (beer is the base for whiskey,
notes Brett Joyce, president Rogue Brewing) – but the
similarity ends there. …
“Having a great name in the brewing industry definitely
helps push the name of the spirits to the forefront – and
we’ve had a lot of comments when were [sic] about to
release a product from people who say ‘if this spirit is
anything like the beer that Ballast Point makes, I’m going
to purchase it’,” says Cherney.83
Opposer also introduced copies of 48 sets of third-party registrations for spirits,
wine or cider and beer. Third-party registrations based on use in commerce that
individually cover a number of different goods and services may have probative value
to the extent that they serve to suggest that the listed goods and services are of a type
that may emanate from the same source. See In re Albert Trostel & Sons Co.,
29 USPQ2d 1783, 1785-1786 (TTAB 1993); In re Mucky Duck Mustard Co. Inc.,

83 34 TTABVUE 140-141
Opposition No. 91230831

- 28 -

6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d mem. 864 F.2d 149 (Fed. Cir. 1988).
Representative registrations, owned by the same third party (named in the marks),
with relevant portions of the identifications, are listed below.84
MARK Registration No. Goods and Services
DOGFISH HEAD 4164234 Beers
DOGFISH HEAD 4164232 Alcoholic beverages except beers
ROGUE 3773029 Beer
ROGUE 5372403 Hard cider
ROGUE 3814477 Distilled spirits
ANCHOR 1559186 Beer, porter, ale
ANCHOR
DISTILLING
1982777 Distilled spirits made of grains, fruits, or
other fermentable materials
NEW HOLLAND
BREWING
4095799 Beer
NEW HOLLAND
ARTISAN
SPIRITS
4111584 Distilled spirits
BENT
BREWSTILLERY
4731969 Beer; liquor

Mr. Ansari also testified that brewers are mixing their craft beer with wine and
spirits to blend hybrids.
In the beer industry, many breweries, including [Opposer],
utilize distilled spirts or related products in the production
of beer, whether as an ingredient or as part of the brewing
process, such as aging a beer in a barrel used for a
particular type of distilled spirit, or a particular brand of
distilled spirit.85
* * *
I have personal knowledge of many breweries that have
collaborated with distilleries to create a distilled spirit
from a particular beer. These collaborations have become a
trend in the industry, allowing breweries and distilleries to
capitalize on the name recognition of beer brands to help

84 34 TTABVUE 469-673.
85 Ansari Testimony Decl. ¶30 (28 TTABVUE 8).
Opposition No. 91230831

- 29 -

sell other types of alcoholic beverages. One local distillery,
Tattersall Distillery, has been working with other local
breweries and cideries to create whiskeys, liqueurs, and
other distilled spirits from beer or cider.86
Mr. Ansari’s testimony is corroborated by 26 news articles regarding hybrid
beverages that are made with a combination of beer and spirits, wine, or cider.87 The
excerpts from the following articles are representative:
1. The Wall Street Journal (wsj.com)
Beer and Wine in the Same Glass? It’s Actually Delicious
(July 20, 2017)
Summer is about wild combinations: sandals with a suit,
books on the beach. ‘Tis the season of ice cubes in your wine
glass and iced tea in your lemonade – and now, in your beer
glass, a new breed of hybrid news. These cross-genre
blends of beer, wine, booze and soda bring playful
irreverence to summer refreshment.
Experimenting with wild yeasts and natural fermentation,
brewers have found common ground with winemakers.
Once the staff at Texas’s Jester King Brewery saw
neighboring Hill Country wineries using the same natural-
fermentation tricks they did – barrels, open tanks, local
microbes – borrowing fruit from them seems a logical next
step.
Jester King SPON Albariño & Blanc du Bois is a Belgian-
style lambic [sic] beer refermented with wine grapes.88
2. Food and Wine (foodandwine.com)
Our New Favorite Booze Trend Brings Beer and Wine
Together in Category-Defying Hybrids (March 13, 2018)

86 Ansari Testimony Decl. ¶32 (28 TTABVUE 9).
87 34 TTABVUE 322-412.
88 34 TTABVUE 322.
Opposition No. 91230831

- 30 -

Brewers and winemakers are reaching across the (liquor
store) aisle to achiever that “trifecta of hazy cider, funky
beer and natural wine that’s so popular now.”
On a recent visit to the Finger Lakes, I came across Wagner
Valley Brewing Company, a Lodi, New York-based craft
brewery that shares a campus with the award-winning
Wagner Vineyards Estate Winery. They were pouring a
fuschia-hued Berliner Weisse called Skin Deep, brewed
with Cabernet Franc grape skins from their neighbor’s
rosé. The first sip was surprising – complex yet crushable,
its lively sour bite balanced with a delicate white wine
fruitiness. It was like Shania Twain of beer, a crossover
that managed to elevate, not muddle.
Luckily from anyone as interested in this hybrid brew as I
was, Wagner Valley Brewing Company is not alone in its
unorthodox pours. Wineries and breweries across the
country – from major players to upstarts – are
experimenting with franken-beverages with great success.
And blurring the line between wine and beer isn’t just a
delicious endeavor; it represents a more innovative,
creative future where both producers and consumers are
free to reach across the (liquor store) aisle.89
3. Bloomberg.com
These Beer-Wine Hybrids Are a Delicious Boon to
Indecisive Drinkers
It’s like that time you played King’s Cup in college, but, you
know, intentional. (February 26, 2018)
“It takes a lot of beer to make great wine.”
Or so the old winemaking chestnut goes. These days, the
inverse is becoming true, with wine making inroads into
beer recipes themselves. (As adjuncts go, wine grapes are
less strange than Lucky Charms, lobster, and actual paper
money …).
“The profile of the beer will usually be tailored to match the
qualities of [grape varieties] involved,” says Brian

89 34 TTABVUE 326.
Opposition No. 91230831

- 31 -

Strumke, who founded Stillwater Artisanal Ales in 2010
with a mission to brew beer unique enough to compete with
wine at the dinner table. “The mash bill, yeast strains,
whether we oak age or dry hop – it’s all dependent upon the
things we’re combining.”
For Stillwater a pinot noir beer was the perfect candidate
for oak-aging, while riesling and sauvignon blanc beers
ended up getting dry-hopped.90
To counter Opposer’s evidence, Applicant introduced examples of marks with
similar features owned by different entities for beer and alcoholic beverages except
beer. The third-party evidence is listed below:
1. BLUE MOON ale and BLUE ICE vodka;91
2. Don De Dieu Beer and Don Agustin Tequila, Don Weber Tequila, Don Julio
Tequila, and Don Eduardo Tequila;92
3. Angry Scotch Ale, Angry Boy Brown Ale, and Angry Orchard Cider;93
4. Mad Elf Beer and Mad River Whiskey;94
5. Fireball Whiskey, Fire Whiskey/Liqueur by Jack Daniels, and Fire Rock Pale
Ale;95 and
6. Red Bush Whiskey, Red Label Scotch, Red Stag Bourbon, Red Stripe Lager,
Red Horse Beer, and Rock Bottom Red Ale;96

90 34 TTABVUE 334-335.
91 32 TTABVUE 9. We do not consider Applicant’s evidence of BLUE CURACAO because
BLUE CURACAO appears to be a type of liqueur rather than a brand.
92 32 TTABVUE 10-13.
93 32 TTABVUE 16-17.
94 32 TTABVUE 18.
95 32 TTABVUE 19-20.
96 32 TTABVUE 21-23.
Opposition No. 91230831

- 32 -

The fact that Applicant was able to find and introduce examples of spirits and beer
produced by different entities that share a common term as part of their marks does
not rebut Opposer’s evidence showing other entities using the same marks to identify
their beer and spirits. While Applicant’s evidence shows that there are some beers
and spirits, offered by separate entities, that share a common term as part of their
marks, it does not prove that spirits and beer are not related. Cf. In re G.B.I. Tile and
Stone, Inc., 92 USPQ2d 1366, 1370 (TTAB 2009) (“The fact that applicant was able to
find and submit for the record these registrations of marks for individual items does
not rebut the examining attorney’s evidence showing the existence of numerous third-
party registrations using the same marks on a variety of items, including applicant’s
and registrant’s goods.”).
Moreover, some of the marks that share a common term are not similar when
considered in their entireties. For example, BLUE MOON and BLUE ICE are not
similar, MAD ELF BEER and MAD RIVER WHISKEY are not similar, FIREBALL
WHISKEY and FIRE WHISKEY are not similar to FIRE ROCK PALE ALE, and RED
BUSH WHISKEY, RED LABEL SCOTCH, RED STAG BOURBON are not similar to
RED STRIPE LAGER, RED HORSE BEER or ROCK BOTTOM RED ALE.
We find that the testimony and evidence regarding the similarity or dissimilarity
of the goods is sufficient to demonstrate that beer and alcoholic beverages except beer
are related products.

Opposition No. 91230831

- 33 -

2. Alcoholic beverages except beer and restaurant or bar services
To show that alcoholic beverages except beer and restaurant or bar services are
related, Opposer introduced copies of 48 third-party registrations for both the goods
and services at issue. Representative registrations, with relevant portions of the
identifications, are listed below.97
MARK Registration No. Goods and Services
TOM’S TOWN
DISTILLING CO
4928115 Distilled spirits; restaurant and bar
services
SHAWNEE
BLUFF
5445926 Wine; restaurant services
LOCKHORN
CIDER
4720784 Alcoholic beverages except beer; bar
services featuring hard cider and wine
MOTOR CITY
BREWING
WORKS and
design
4387348 Wine; liquor; restaurant and bar services
A CRAFTED
EXPERIENCE
5159453 Distilled spirits; wine; restaurant and
bar services

The Federal Circuit has held that there is a requirement that “something more”
be shown to establish the relatedness of food or beverages and restaurant services for
purposes of demonstrating a likelihood of confusion. See Coors Brewing, 68 USPQ2d
at 1063. In Coors Brewing, the Federal Circuit explained why more evidence than
just showing restaurants sell beer is required to prove that those goods and services
are related:
It is not unusual for restaurants to be identified with
particular food or beverage items that are produced by the
same entity that provides the restaurant services or are
sold by the same entity under a private label. Thus, for
example, some restaurants sell their own private label ice
cream, while others sell their own private label coffee. But

97 34 TTABVUE 414-467.
Opposition No. 91230831

- 34 -

that does not mean that any time a brand of ice cream or
coffee has a trademark that is similar to the registered
trademark of some restaurant, consumers are likely to
assume that the coffee or ice cream is associated with that
restaurant. The Jacobs case [Jacobs v. Int’l Multifoods
Corp., 668 F.2d 1234, 212 USPQ 641 (CCPA 1982)] stands
for the contrary proposition, and in light of the very large
number of restaurants in this country and the great variety
in the names associated with those restaurants, the
potential consequences of adopting such a principle would
be to limit dramatically the number of marks that could be
used by producers of foods and beverages.
Coors Brewing, 68 USPQ2d at 1063. In other words, there is no per se rule that
certain goods (e.g., foods) and services (e.g., bar and restaurant services) are related.
Lloyd’s Food Products, Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2030 (Fed.
Cir. 1993) (no per se rule about confusion, where similar marks are used in connection
with restaurant services and food products).
The Federal Circuit recognizes that the diversity and expansion of businesses in
a modern economy is not, in and of itself, sufficient to support an inference that
purchasers are apt to believe that disparate products or services emanate from the
same source. See also In re American Olean Tile Co., 1 USPQ2d 1823, 1826 (TTAB
1986). The Board has found the “something more” requirement to be met under the
following circumstances:
1. Applicant’s mark made clear that its restaurant specialized in registrant’s type
of goods. See In re Golden Griddle Pancake House Ltd., 17 USPQ2d 1074
(TTAB 1990) (GOLDEN GRIDDLE PANCAKE HOUSE for restaurant services
confusingly similar to GOLDEN GRIDDLE for table syrup); In re Azteca
Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999) (AZTECA
Opposition No. 91230831

- 35 -

MEXICAN RESTAURANT for restaurant services confusingly similar to
AZTECA for Mexican food items);
2. The record showed that registrant’s wines were actually sold in applicant’s
restaurant. See In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001) (“the
record in this case reveals that registrant’s OPUS ONE wine is offered and
served by applicant at its OPUS ONE restaurant”); and
3. Registrant’s mark was found to be “a very unique, strong mark.” See In re
Mucky Duck Mustard Co., 6 USPQ2d 1467, 1469 (TTAB 1988) (“the Examining
Attorney has indicated that he has been unable to find, in the records of the
Patent and Trademark Office, any registration, other than the cited
registration, for a mark containing the expression ‘Mucky Duck,’” nor has
applicant offered any evidence of third-party use of marks containing the
expression).
In this case, the “something more” requirement is met because Opposer’s SURLY
mark is inherently and commercially strong. Therefore, Opposer’s evidence is
sufficient to demonstrate that its SURLY restaurant and bar services are related to
alcoholic beverages except beer.98

98 We need not consider whether each of Opposer’s identified services is related to Applicant’s
alcoholic beverages except beer for purposes of a du Pont analysis, it is sufficient if likelihood
of confusion is found with respect to use of an applicant’s mark in connection with any product
or service in a particular International Class. See Tuxedo Monopoly, Inc. v. Gen. Mills Fun
Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple Computer v. TVNET.Net, Inc.,
90 USPQ2d 1393, 1398 (TTAB 2007).

Opposition No. 91230831

- 36 -

D. Established, likely-to-continue channels of trade and classes of consumers.
Because there are no limitations as to channels of trade or classes of purchasers
in the description of goods in the application or pleaded registrations, it is presumed
that the parties’ goods and services move in all channels of trade normal for those
goods and services, and that they are available to all classes of purchasers for those
goods and services. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344,
98 USPQ2d 1253, 1261 (Fed. Cir. 2011); CBS Inc. v. Morrow, 708 F.2d 1579, 218
USPQ 198, 199 (Fed. Cir. 1983); Paula Payne Prods. Co. v. Johnson Publ’g Co., 473
F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
Opposer’s beer is sold in bars, restaurants, liquor stores, convenience stores, other
retail stores, and at special events.99 Applicant’s SURLY PENGUIN alcoholic
beverages are sold in bars, restaurants, liquor stores, festivals and direct to consumer
sales.100
Opposer’s prospective beer purchasers include a variety of consumers, including
consumers that do not have significant knowledge or experience with craft beer.101
Likewise, because Applicant’s description of goods does not include any restrictions
or limitations as to channels of trade or classes of consumers, Applicant’s prospective
purchasers of alcoholic beverages include a variety of consumers, including
consumers that do not have significant knowledge or experience with distilled spirits.
See Stone Lion Capital Partners, LP v. Lion Capital LLP, , 110 USPQ2d at 1163-64

99 Ansari Testimony Decl. ¶23 (28 TTABVUE 7).
100 Applicant’s Testimony Decl. ¶18 (32 TTABVUE 69).
101 Id. at ¶26 (28 TTABVUE 8).
Opposition No. 91230831

- 37 -

(recognizing Board precedent requiring consideration of the “least sophisticated
consumer in the class”); In re Sailerbrau Franz Sailer, 23 USPQ2d 1719, 1720 (TTAB
1992) (finding that all purchasers of wine may not be discriminating because while
some may have preferred brands, “there are just as likely to be purchasers who
delight in trying new taste treats.”) In re Bercut-Vandervoort & Co., 229 USPQ 763,
764 (TTAB 1986) (evidence that relevant goods are expensive wines sold to
discriminating purchasers must be disregarded given the absence of any such
restrictions in the application or registration).
We find that Opposer’s beer and Applicant’s alcoholic beverages are offered in
some of the same channels of trade to some of the same classes of consumers.
E. Summary
Because Opposer’s SURLY mark is inherently and commercially strong and,
therefore, entitled to a broad scope of protection, the parties marks are similar, the
parties’ goods and services are related, and the parties’ goods and services are offered
in some of the same channels of trade and to some of the same classes of consumers,
we find that Applicant’s mark SURLY PENGUIN and design for “alcoholic beverages
except beer” is likely to cause confusion with Opposer’s registered mark SURLY for
“beer” and “bar and restaurant services; providing pavilion facilities for concerts and
other functions.”

Decision: The opposition is sustained and registration to Applicant is refused.