Tap It Brewing Co., LLCv.Tap or Nap LLC

Trademark Trial and Appeal Board

Nov 4, 2016

No. 91208370 (T.T.A.B. Nov. 4, 2016)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: November 4, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Tap It Brewing Co., LLC

v.

Tap or Nap LLC
___

Opposition No. 91208370
___

David A. Juhnke of Sinsheimer Juhnke McIvor & Stroh, LLP
for Tap It Brewing Co., LLC.

Wendy Peterson of Not Just Patents LLC for Tap or Nap LLC.
______

Before Quinn, Cataldo and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Tap or Nap LLC (“Applicant”) seeks registration of TAP IT, in standard
characters, for “Energy drinks, energy drinks with electrolytes, sports drink, non-
alcoholic energy drinks, namely, energy shots, bottled water with vitamins sodas.”1

1 Application Serial No. 85288441, filed April 7, 2011 under Section 1(b) of the Trademark
Act, based on Applicant’s alleged bona fide intent to use the mark. Applicant’s identification
of goods originally included beer as well, but during prosecution Applicant amended the
identification to delete beer.
Opposition No. 91208370

2

In its notice of opposition, Tap It Brewing Co., LLC (“Opposer”) alleges prior
registration of an identical mark for “beer,”2 and that use of Applicant’s mark would
be likely to cause confusion with Opposer’s mark.3 In its amended answer, Applicant
admits that Opposer owns its pleaded registration, that Opposer has not abandoned
its mark and that the parties’ marks are identical, but otherwise denies the salient
allegations in the notice of opposition. Applicant also counterclaims to cancel
Opposer’s pleaded registration on the ground of mere descriptiveness.4 Opposer
denies the salient allegations in the counterclaim.5
The Record and Evidentiary Objections
The record consists of the pleadings and, by operation of Trademark Rule 2.122(b),
the files of Applicant’s involved application (subject to the opposition) and Opposer’s
pleaded registration (subject to Applicant’s counterclaim). In addition, Opposer
introduced the following trial evidence:
Opposer’s First Notice of Reliance on third-party
registrations.6 47 TTABVue.

2 Registration No. 3986811, issued June 28, 2011.
3 Opposer also alleged false suggestion of a connection but later withdrew this claim in its
motion for summary judgment.
4 Applicant also counterclaimed on other grounds, but it expressly declined to pursue its
claim that Opposer “misused” the federal registration symbol and its other counterclaims
were dismissed in the Board’s order of July 31, 2015.
5 Opposer’s counter-counterclaim was dismissed as moot in the Board’s order of July 31,
2015. Some of Opposer’s “affirmative defenses” to Applicant’s counterclaim are merely
amplifications of Opposer’s denials, and Opposer did not pursue the other, true affirmative
defenses at trial, which are accordingly waived. Miller v. Miller, 105 USPQ2d 1615, 1616 n.3
(TTAB 2013); Baroness Small Estates Inc. v. American Wine Trade Inc., 104 USPQ2d 1224,
1225 n.2 (TTAB 2012).
6 Citations to the record reference TTABVue, the Board’s online docketing system.
Specifically, the number preceding “TTABVue” corresponds to the docket entry number(s),
Opposition No. 91208370

3

Opposer’s Second Notice of Reliance on Internet printouts.
48 TTABVue.

Opposer’s Third Notice of Reliance on Internet printouts.
49 TTABVue.

Opposer’s Fourth Notice of Reliance on Applicant’s
response to one of Opposer’s Requests for Admission. 50
TTABVue.

Opposer’s Fifth Notice of Reliance on Applicant’s responses
to some of Opposer’s written discovery requests. 77
TTABVue.

Opposer’s Sixth Notice of Reliance on dictionary
definitions. 78 TTABVue.

Opposer’s Seventh Notice of Reliance on Internet
printouts. 79 TTABVue.

Opposer’s Eighth Notice of Reliance on third-party
registrations. 80 TTABVue.

Opposer’s testimonial deposition of John Gordon, its
founder, managing member and chief executive officer, and
the exhibits thereto. 60 TTABVue.

Opposer’s testimonial deposition of Miles Gordon, its
operations director, and the exhibits thereto. 61-62
TTABVue.

Opposer’s testimonial deposition of Katelyn Egger, its tap
room events and tasting room and marketing manager,
and the exhibits thereto. 63 TTABVue.

Opposer’s testimonial deposition of its purported expert
witness Mike Kallenberger, senior advisor in the
Commercial Strategy Group of First Key Consulting, and
the exhibits thereto. 64 TTABVue.

and any number(s) following “TTABVue” refer to the page number(s) of the docket entry
where the cited materials appear.
Opposition No. 91208370

4

Applicant introduced the following trial evidence:

Applicant’s First Notice of Reliance on official records,
Internet printouts, third-party registrations and Opposer’s
responses to some of Applicant’s written discovery
requests. 51-56 and 73-75 TTABVue.

Applicant’s Second Notice of Reliance on Internet
printouts, Opposer’s responses to some of Applicant’s
written discovery requests and third-party registrations.
57-59 TTABVue.

Notwithstanding Applicant’s argument to the contrary, Opposer’s evidentiary
objections were timely filed “before the opening of the next testimony period following
that in which the [objected to] material was offered into the record.” TBMP
§ 704.08(b) (2016). Nevertheless, Opposer’s substantive objections and motions to
strike are for the most part overruled, because Applicant cured the majority of the
alleged defects.
However, to the extent Applicant’s evidence consists of Internet printouts which
do not bear the url and date of printing, that evidence is inadmissible and has been
given no consideration. Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031, 1039
(TTAB 2010). Furthermore, as Opposer points out, we consider Internet printouts
and other materials introduced under a notice of reliance without supporting
testimony only for what they show on their face, rather than the truth of the matters
asserted therein. Id. at 1039.
We have considered Applicant’s Google image search results, which do not
implicate the concerns with textual search summaries. Cf. Miller v. Miller, 105
USPQ2d at 1617-18 and Calypso Technology Inc. v. Calypso Capital Management LP,
Opposition No. 91208370

5

100 USPQ2d 1213, 1219 (TTAB 2011). In addition, Applicant sufficiently set forth the
relevance of its evidence, which is in any event obvious given the single remaining
claim and single remaining counterclaim in this proceeding.
Applicant’s Descriptiveness Counterclaim7
“Because a trademark owner’s certificate of registration is ‘prima facie evidence of
the validity of the registration,’” the petitioner seeking cancellation of the
registration, in this case Applicant by way of its counterclaim, bears the burden of
proof, and must establish its grounds for cancellation by a preponderance of the
evidence. Cerveceria Centroamericana S.A. v. Cerveceria India Inc., 892 F.2d 1021,
13 USPQ2d 1307, 1309 (Fed. Cir. 1989); see also, On-line Careline Inc. v. America
Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1476 (Fed. Cir. 2000); 7-11 Sales, Inc.
v. Perma, S.A., 225 USPQ 170 (TTAB 1984).
A mark is deemed to be merely descriptive, within the meaning of Section 2(e)(1),
if it immediately conveys knowledge of a quality, feature, function, characteristic or
purpose of the goods for which it is used. In re Bayer Aktiengesellschaft, 488 F.3d 960,
82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (quoting In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987); and In re Abcor Development, 588 F.2d 811, 200 USPQ
215, 217-18 (CCPA 1978). A mark need not immediately convey an idea of each and

7 Applicant has standing to seek cancellation of Opposer’s pleaded registration because it is
the defendant in the opposition (in which Opposer relies on its registration). Bd. Of Regents,
Univ. of Tex. Sys. v. S. Ill. Miners, LLC, 110 USPQ2d 1182, 1196-97 (TTAB 2014).

Opposition No. 91208370

6

every specific feature of the goods in order to be considered merely descriptive; rather,
it is sufficient that the mark describes one significant attribute, function or property
of the goods. In re Chamber of Commerce of the United States of America, 675 F.3d
1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re H.U.D.D.L.E., 216 USPQ 358
(TTAB 1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Applicant relies on the following Wikipedia entry for “beer tap,” which includes a
depiction of “draught beers served by taps”:

55 TTABVue 19. This evidence establishes that in the context of beer, a “tap” is a
valve “for controlling the release of beer.” Id.
Applicant also relies on other evidence that “tap” refers to the device that controls
the flow of and transfers beer from kegs, or the process of drawing beer from kegs.
Examples where “tap” is used as a verb include the following:
a portion of an online article entitled “Build a Kegerator”8
states “Sankey kegs are the ones we all remember from
college, the same kind that countless college guys stood
around while shouting instructions at one another on how

8 A kegerator stores kegs, preserves the beer inside the kegs and allows it to be served cold.
52 TTABVue 3-20.
Opposition No. 91208370

7

to tap it (‘Nah bro, you’ve gotta turn it topwise … no,
topwise!’);”

an ARS Technica message board posting entitled “ARS
Beer Drinkers: Learn me about kegerators” includes this
question: “By the way, how fast will a keg go flat once you
tap it?);

the “Buyers Guide: Kegerator FAQ” on
“compactappliance.com” states “It’s best to let the keg sit
for an hour or so before you tap it;”

a kegerator listing on “overstock.com” includes a product
description which states “Add one of a variety of keg sizes
into the refrigerated storage cabinet, tap it and call your
friends for an instant party;” and

a response to the question “How long does beer last in a
kegerator” on “quora.com” states “As long as you do not tap
it, and the brewery maintains proper cleanliness, the beer
will not ‘go bad,’ but the flavor and aroma will change over
time.”

52 TTABVue 4, 5, 9, 12, 15 (emphasis added). Similarly, companies which sell beer
in kegs explain “keg tapping procedures” to their customers, answer questions such
as “how do I tap a keg?” and express excitement about new offerings by indicating
they “are a bit anxious to finally tap it and taste the result.” 53 TTABVue 36, 41. Beer
retailers which offer kegs of beer will often require deposits for the “tap” device used
to draw beer from the keg. See e.g. 79 TTABVue 81. Sometimes, hammers are used
to “tap” a keg, and Opposer sometimes uses its mark with a logo depicting a hand
holding a hammer. 55 TTABVue 3-7; 54 TTABVue 26-27; 61 TTABVue 46.
Applicant introduced evidence of “tap” also being used as a noun or otherwise. For
example, an article about a “beer dispenser” is entitled “SYNEK Draft System Brings
Tap-Fresh Beer To The Kitchen.” 53 TTABVue 48. Opposer concedes that “some
Opposition No. 91208370

8

customers may refer to beer as being ‘on tap,’” and that in its Tap Room “draft beer
is dispensed through a tap.” 54 TTABVue 10-11, 14. An article about “craft” beer
states “From a restaurateur’s standpoint there are seemingly unlimited options out
there in regards of what to offer via tap and bottle.” 57 TTABVue 10.
The term TAP is also used as part of trademarks. For example, Sturman BG
developed a product “to maintain and dispense carbonated beverages” which is called
TAP-A-DRAFT. 79 TTABVue 87.
Applicant introduced third-party registrations in which the term “tap” is
disclaimed for beer-related products and services, as follows:
, with “FRESH FOODS,” “BEER” and “FINE
CRAFTED BEER ON TAP” disclaimed, Reg. No. 4323292,
for “beer.”

, with “DRAUGHT,” “CRAFT BEERS,” “ON
TAP” and “TO GO” disclaimed, Reg. No. 4303958, for
“retail store services featuring beer.”

JUST TAP’D, in standard characters, with “TAPPED”
disclaimed, Reg. No. 4803219, for “growlers for draft beer
being jugs, sold empty; drinking glasses” and “retail store
services featuring beer and wine sold in various sized
containers and in bottles … beer making equipment and
supplies ….”

QUICK TAP CRAFT BEER, in standard characters, with
“TAP CRAFT BEER” disclaimed, Reg. No. 4545067, for
“retail store services featuring beer.”

Opposition No. 91208370

9

TAP BOARDS, in standard characters, with “TAP”
disclaimed, Reg. No. 3691996, for “wood handles for beer
taps.”

TAP HUNTER, in standard characters, with “TAP”
disclaimed, Reg. No. 3787133, for “computer application
software for mobile phones” and “providing a searchable
website featuring the goods and services of other vendors,
namely, providing a searchable website that helps
consumer (sic) search for their favorite craft beer on tap via
a global computer network.”

TAP WAGON, in standard characters, with “TAP”
disclaimed, Reg. No. 4640708, for “bar services featuring
beer … taproom services featuring beer provided at
customer directed premises.”

TAPLISTER, in standard characters, with “TAP”
disclaimed, Supplemental Register Registration No.
4273638, for “computer application software … namely,
software for search engine providing crowd-sourced data
about locations, breweries and beers.”

THE COMMUNITY TAP, in standard characters, with
“TAP” disclaimed, Supplemental Register Reg. No.
4068867, for “retail store services featuring beer, wine,
refillable growlers and bottles ….”

TRI TAP, in typed form, with “TAP” disclaimed, Reg. No.
1150783, for “beer barrel tapping equipment, comprising
metal dispensing heads ….”

TRUE TEXAS BREWS ON TAP, in standard characters,
with “TEXAS BREWS ON TAP” disclaimed, Reg. No.
4444983, for “… retail store services featuring fill-on
demand beer growlers and beverage containers; retail store
services featuring beer taps from which customers can
have a beer growler filled for consumption off the
premises.”

TAP THAT, in standard characters, with “TAP”
disclaimed, Reg. No. 3925255, for “refrigerator rental” and
“rental of bar equipment; rental of drink dispensing
machines.”
Opposition No. 91208370

10

52 TTABVue 22-56; 56 TTABVue 3-20.
Furthermore, Applicant points out that a large number of breweries, bars and
restaurants that offer beer include the word “tap” in their names. For example, some
brewery names appear to use “tap” to identify or suggest the keg apparatus, such as
“4th Tap Brewing Cooperative,” “Cedar Grove Brewery and Tap, LLC,” “Coal Creek
Tap,” “The Open Tap Brewpub & Eatery,” “Tap and Screw Brewery,” “Taps Fish
House and Brewery,” “The Tap Beer Company” and “Twain’s Billiards and Tap,”
while others use “tap” to identify a place where beer is served, such as “Abbey Ridge
Brewery & Tap Room,” “Atwater in the Park Biergarten and Tap House,” “The Brew
Kettle, Taproom and Smokehouse” and “Virginia City Brewery and Taphouse.” 53
TTABVue 6-10.
In addition, TAP (and variations thereof) is currently used as a mark for other
beer-related services. For example, Tap That Draft Beer Services, the owner of
Registration No. 3925255, promotes its “Tap That Tap Room,” and its website
indicates which beers are currently “on tap” in its Tap Room. 56 TTABVue 6-14. I’d
Tap That, LLC, the owner of Registration No. 4640708, uses the slogan TAP INTO
THE FUN! and depicts its TAP WAGON trailers which “feature 6 beer taps and
electric refrigeration”:
Opposition No. 91208370

11

56 TTABVue 18-20.
For its part, Opposer points out that TAP and TAP IT are used not only in
connection with beer served from kegs, but also in connection with other beverages
served from kegs or similar containers, or beverage-related services. For example,
THE RUBY TAP is a “self-serve wine bar,” which serves 32 wines “available by wine
machine,” with a “handful” of other wines “on tap.” 79 TTABVue 10-12. Similarly, an
article in WineIndustryInsight states that “Wine on Tap is back,” and that “on-
premise operators are installing dedicated, quality draft wine systems to serve their
customers wine-by-the-glass and carafe from this reusable, well proven bulk format.”
Id. at 13-14. There are a number of products, including “tapping equipment,” offered
to those intending to serve “wine on tap.” Id. at 15-22. Other types of alcoholic
beverages, including margaritas and other cocktails are also offered “on tap.” Id. at
24-37. However, it is not only alcoholic beverages, but also soft drinks, coffee, tea,
water and other beverages which are offered “on tap.” Id. at 39-80, 96. In fact, the
term TAP is also used in connection with “tapping” sap from trees for the purpose of
making maple syrup, including by Tap My Trees, which claims to be “the #1 supplier
of maple sugaring supplies for the hobbyist.” 79 TTABVue 89-94.
Opposition No. 91208370

12

Furthermore, TAP IT (and variations thereof) is used by third-parties in other
contexts. For example, an app called TAP-IT is intended to keep users “in touch with
friends, relatives, parents and children, letting them know where you are and alerting
them if you need assistance,” and claims to be “putting you one tap away from your
friends and family.” 79 TTABVue 98-100. There is also a TAPIT software system
focused on call accounting and reporting, as well as TAP-IT tapping fluid, Id. at 102-
105. Opposer also points out that TAP IT and variations thereof is registered for a
wide variety of products, including “expansion-type anchors and mechanical, non-
electric fasteners” (Reg. No. 731040); “kits composed primarily of agents to prime
mice for ascites production and a de-lipidizing reagent” (Reg. No. 2201910); “reusable
metal water bottles sold empty” (Reg. No. 3772252); “computer software applications
for mobile phones for finding locations with access to drinking water” and “providing
a database of locations with access to drinking water” (Reg. No. 3736120); “computer
hardware for integrating a computer and a touch panel display surface in order to
allow the user to access and control any computer application displayed on the display
surface by pressing on its touch-sensitive surface for interactive learning stations”
(Reg. No. 3829772); “hats; jackets; shorts; sweaters; sweatshirts; t-shirts; tank tops”
(Reg. No. 4129516); and “advertising and marketing services provided by means of
indirect methods of marketing communications …” (Reg. No. 4148896); Id. at 7-21.
According to the Urban Dictionary, “tap it” has meanings unrelated to beverages.
It can be used “to proclaim that you would get with someone,” as a greeting, to
Opposition No. 91208370

13

indicate that something is “awesome,” to refer “to when two objects come in contact
with one another” or to express “surprise, excitement and awe.” 117-119.
While Opposer has established that “tap it” has multiple meanings, that does not
mean that its mark is not descriptive. In fact, “[t]he question is not whether someone
presented with only the mark could guess what the goods or services are. Rather, the
question is whether someone who knows what the goods or services are will
understand the mark to convey information about them.” In re Tower Tech Inc., 64
USPQ2d 1314, 1316-17 (TTAB 2002). In this case, consumers who know that Opposer
offers beer would likely associate the mark TAP IT with a beer tap, and more
specifically with tapping a keg of beer and thereby serving the beer. Therefore, the
non-beer meanings of TAP and TAP IT are not enough to establish that Opposer’s
mark is inherently distinctive.
On the other hand, Opposer’s evidence that “tap” is used in connection with a
variety of beverages, including non-alcoholic beverages, supports Opposer’s argument
that “tap” and “tap it” refer to kegs and serving beverages (not necessarily beer) from
kegs, rather than beer specifically. In fact, there is no evidence that anyone refers to
beer as “tap,” much less as “tap it,” or that consumers would perceive “tap,” much less
“tap it,” as conveying knowledge of a quality, feature, function, characteristic or
purpose of Opposer’s beer. At most they would perceive the mark as suggesting that
the beer may come from a keg.
Most of the third-party registrations upon which Applicant relies which include
disclaimers of the word “tap” are not for beer itself, but rather for beer-related
Opposition No. 91208370

14

products or services, such as retail stores offering beer, including retail stores which
dispense beer into customers’ growlers, presumably from a keg or similar vessel.
Others are for goods and services more directly related to kegs and tapping kegs, such
as “wood handles for beer taps,” “providing a searchable website that helps [a]
consumer search for their favorite craft beer on tap,” “beer barrel tapping equipment,”
refrigerator and drink dispensing machine rental and beer trucks which dispense
beer. There is only one third-party registration of record in which the term “tap” is
disclaimed for beer itself, but in that registration, the disclaimed term is not “TAP”
alone but rather “FINE CRAFTED BEER ON TAP,” which is obviously descriptive of
a type of beer and how it is stored and delivered. In short, in the context of Opposer’s
goods, the evidence makes clear that “on tap” refers to beer stored in and accessed
from kegs.
Neither the word TAP nor the full composite term TAP IT which comprises
Opposer’s mark immediately conveys anything about Opposer’s beer itself. At most,
TAP and TAP IT convey a vessel which contains Opposer’s goods, and from which
Opposer’s goods may be served, but they do so much less directly and immediately
than the term “on tap” disclaimed in Registration No. 4323292, which is one way
sellers and consumers refer to beer in kegs. Because there is no evidence that sellers,
consumers or others refer to beer as “tap” or “tap it,” multi-stage reasoning would be
required for consumers to associate the keg or other vessel conveyed by TAP or TAP
IT with Opposer’s beer itself. See In re Majestic Distilling Co., Inc., 420 F.2d 386, 164
USPQ 386 (CCPA 1970). In Majestic Distilling, the predecessor to our primary
Opposition No. 91208370

15

reviewing court found CHARRED KEG suggestive rather than descriptive for
whiskey, even though a dictionary definition of and federal regulation concerning one
type of whiskey specifically stated that it is “aged in … charred oak containers.”
While Applicant’s evidence reveals that a number of establishments which
produce or serve beer have names which include the word TAP, this does not establish
that TAP, much less TAP IT, is descriptive for beer. In fact, in some of these names
TAP appears to suggest serving beer from a keg, or is used as part of a composite
term meaning brewery, brewpub, bar or the equivalent, such as “tap room” or
“taphouse.” If the term “tap” in these names (for establishments which serve beer)
was merely descriptive of beer, there would presumably be no need to also include
terms such as “brewery,” “beer” or “biergarten” in the names, such as in “Cedar Grove
Brewery and Tap,” “The Open Tap Brewpub & Eatery,” “The Tap Beer Company” or
“Atwater in the Park Biergarten and Tap House.”
In short, the record establishes that consumers who know that Opposer offers beer
may very well associate the mark TAP IT with a beer tap, or with tapping a keg. That
does not render the mark merely descriptive for beer, however. Instead, we find that
the mark is suggestive, because of the indirect connection between a beer tap or
tapping a keg on the one hand and the beer itself on the other. See e.g., Bose Corp. v.
International Jensen Inc., 963 F.2d 1517, 22 USPQ2d 1704 (Fed. Cir. 1992). In Bose,
the Court found ACOUSTIC RESEARCH with ACOUSTIC disclaimed9 to be

9 Applicant’s argument, presented for the first time in its Trial Brief, that Opposer should
be required to disclaim TAP apart from the mark as shown, is untimely and unpleaded and
will therefore be given no consideration. Demon International LC v. Lynch, 86 USPQ2d 1058,
1060 n.5 (TTAB 2008) (“To the extent opposer intended this allegation in its brief as a claim
Opposition No. 91208370

16

suggestive rather than merely descriptive for speaker units and turntables for
phonographs, even though the applicant’s advertising stated that its products were
the result of acoustic research. Specifically, “[t]he words ‘acoustic research’ describe
the engineering activity that preceded the development of speaker units and
turntables for phonographs. The mark ACOUSTIC RESEARCH does not describe a
feature of the goods produced by [applicant].” Id. at 1706 (emphasis in original); see
also In re Majestic Distilling, 164 USPQ at 386 and Audio Fidelity, Inc. v. London
Records, Inc., 332 F.2d 577, 141 USPQ 792 (CCPA 1964) (finding AUDIO FIDELITY
suggestive rather than merely descriptive of mechanically grooved phonograph
records, stating that the mark “means sound faithfulness and as used in connection
with phonograph records suggests that the sounds produced by the records very
accurately represent the sounds recorded. The trademark is not merely descriptive of
phonograph records.”). Similarly, we found PHONE FORWARD with PHONE
disclaimed for automatic telephone call diverters to be suggestive rather than merely
descriptive, in part because the mark “requires a modicum of imagination or thought
before one is able to determine the nature of applicant’s product. That is to say
because there is no evidence that purchasers or users refer to applicant’s devices as
‘phone forwards’ or that the words ‘phone forward’ are used, otherwise, in a
descriptive sense by the trade or by customers, we believe that a multistage reasoning

that applicant’s mark is not entitled to registration in the absence of a disclaimer, we have
not considered it because such matter was not pleaded in the notice of opposition.”). In any
event, a disclaimer does not remove the disclaimed matter from the mark, and would not
assist Applicant in defending Opposer’s likelihood of confusion claim in this case.
Opposition No. 91208370

17

process … is necessary in order to ascertain the nature or function of applicant’s
goods.” BellSouth Corp. v. Planum Technology Corp., 14 USPQ2d 1555, 1556 (TTAB
1988); see also Entex Industries, Inc. v. Milton Bradley Co., 213 USPQ 1116 (TTAB
1982) (finding SIMON for equipment sold as a unit for playing an electronic type
parlor game, specifically a “Simon Says”-type game, suggestive rather than merely
descriptive).
The counterclaim is dismissed.
Opposer’s Likelihood of Confusion Claim
Because we have dismissed Applicant’s counterclaim, Opposer is entitled to rely
on its pleaded Registration.
Standing and Priority
Opposer’s pleaded registration10 establishes Opposer’s standing. See Empresa
Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed.
Cir. 2014); Cunningham v. Laser Golf Corp., 222 F.3d 943, 945, 55 USPQ2d 1842,
1844 (Fed. Cir. 2000). And priority is not at issue with respect to the goods identified
in the registration. King Candy Company v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108, 110 (CCPA 1974).

10 Applicant’s argument that Opposer’s registration is not of record is incorrect. As stated, it
is automatically of record by virtue of Applicant’s counterclaim. Trademark Rule 2.122(b). In
any event, Applicant’s reliance on Hard Rock Café International (USA) Inc. v. Elsea, 56
USPQ2d 1504, 1511 (TTAB 2000) is entirely misplaced, because in that case the status and
title copies of the registrations were prepared years prior to the filing of the notice of
opposition. Here, the printout of Opposer’s registration showing its status and title is dated
the very same day Opposer filed its notice of opposition and attached thereto. Moreover,
Applicant admitted in its April 16, 2013 amended answer and counterclaim that Opposer
owns its pleaded registration and that as of April 16, 2013 the registration was valid.
Opposition No. 91208370

18

Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 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).
Opposer bears the burden of establishing that there is a likelihood of confusion by a
preponderance of the evidence. Cunningham, 55 USPQ2d at 1848. We consider the
likelihood of confusion factors about which the parties introduced evidence or
presented argument, and treat the remaining factors as neutral.
The Marks
The marks are identical. This factor not only weighs heavily in favor of a finding
of likelihood of confusion, but also reduces the degree of similarity between the goods
that is required to support a finding of likelihood of confusion. In re Shell Oil Co., 992
F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); Time Warner Entertainment Co.
v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002); and In re Opus One Inc., 60 USPQ2d
1812, 1815 (TTAB 2001).11

11 Applicant attempts to make much of Opposer’s use of TAP IT BREWING CO. These usages
are essentially irrelevant here, both because Opposer relies on its registration for TAP IT
alone, and because BREWING CO. is generic for beer, such that TAP IT is the source
identifier for Opposer’s goods.
Opposition No. 91208370

19

The Goods and Channels of Trade
As Opposer points out, the involved application itself seems to have revealed a
relationship between the parties’ goods, as Applicant originally sought registration of
its mark for not only energy and sports drinks, bottled water and soda, but “beer” as
well. See Octocom Systems Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1786 (Fed. Cir. 1990) (finding a relationship between the applicant’s
“modems” and the opposer’s “computer programs,” finding that the relationship
between the goods “is shown,” in part, “by [applicant’s] original application, which
indicates [applicant] itself used the mark OCTOCOM for both modems and computer
programs”).
Opposer has introduced additional evidence that beer is related to Applicant’s
goods. Specifically, Opposer relies on a number of third-party use-based registrations
showing that a single mark has been registered for beer or beer-related products and
services on the one hand and energy or sports drinks, or soda, on the other, including
the following:
3 STARS BREWING COMPANY in standard characters
(Reg. No. 4580389) is registered for “beer; ale; lager” on the
one hand and “concentrates, syrups and powders for
making sports drinks …” on the other.

LOST RHINO BREWING COMPANY in standard
characters (Reg. No. 4147496) is registered for “beer” on
the one hand and “soft drinks, namely, sodas” on the other.

CROWN VALLEY BREWING in standard characters (Reg.
No. 4654857) is registered for “beer” on the one hand and
“soft drinks, namely, sodas” on the other.

Opposition No. 91208370

20

SUSTAINABLE BEVERAGE TECHNOLOGIES in
standard characters (Reg. No. 4762148) is registered on the
Supplemental Register for “alcohol-free beers; beer; beer
making kit; beer, ale and lager; beer, ale and porter; beer,
ale lager, stout and porter; beer, ale, lager, stout, porter,
shandy” on the one hand and “soda pops; soda water; soft
drinks, namely, sodas” on the other.

PAT’S BACKCOUNTRY in standard characters (Reg. No.
4115220) is registered for “beer; beer wort; beer, ale and
lager; beer, ale and porter; beer, ale, lager, stout and
porter; beer, ale, lager, stout, porter, shandy” on the one
and “concentrates, syrups or powders used in the
preparation of soft drinks,” “seltzer water; soda pops; soda
water; soft drinks” on the other.

ILLUMINATI in standard characters (Reg. No. 4717142) is
registered for “beer; ale; lager” on the one hand and “fruit
drinks and fruit juices; mineral and aerated waters and
other non-alcoholic drinks, namely, carbonated beverages,
cider” on the other.

(Reg. No. 4584896) is registered for “beer; beer, ale,
lager, stout and porter” on the one hand and “soft drinks,
namely, sodas” on the other.

GSP CRAFT BREWING in standard characters (“Reg. No.
4518925) is registered for “beers and soft drinks, namely,
sodas.”

(Reg. No. 4316201) is registered for “beer;
beer, ale lager, stout, porter, shandy” on the one hand and
“soda water; soft drinks, namely, sodas” on the other.

Opposition No. 91208370

21

(Reg. No. 4420511) is registered for “beer
and soda.”

DuBe Hemp in standard characters (Reg. No. 4429132) is
registered for “beers” on the one hand and “energy drinks”
on the other.

INGREDIENTS OF CHAMPIONS in standard characters
(Reg. No. 4672011) is registered for “beverages, namely,
beer and sports drinks.”

(Reg. No. 4433961) is registered for “beer, malt
beer, wheat beer, porter, ale, stout and lager” on the one
hand and “concentrates and powders used in the
preparation of energy drinks and fruit-flavored beverages”
and “concentrates, syrups or powders used in the
preparation of sports and energy drinks; energy drinks;
non alcoholic beverages, namely, energy drink …” on the
other.

THE PARTY STARTS HERE in standard characters (Reg.
No. 4577168) is registered for “beers” on the one hand and
“energy drinks” on the other.

GO N’SYDE in standard characters (Reg. No. 4539077) is
registered for “beer, ale and lager” on the one hand and
“energy drinks” on the other.

47 TTABVue 9-39. “Third-party registrations which cover a number of differing goods
and/or services, and which are based on use in commerce, although not evidence that
the marks shown therein are in use on a commercial scale or that the public is
familiar with them, may nevertheless have some probative value to the extent that
they may serve to suggest that such goods or services are of a type which may
emanate from a single source.” See In re Mucky Duck Mustard Co., 6 USPQ2d 1467,
Opposition No. 91208370

22

1470 n.6 (TTAB 1998); see also In re Davey Prods. Pty. Ltd., 92 USPQ2d 1198, 1203
(TTAB 2009).
Opposer also relies on Internet printouts which show on their face that:
Radler, a “mix of fruit soda and beer,” is considered by some
“a really hot beverage right now,” and several breweries in
the Washington DC area are reported as offering the
beverage. 48 TTABVue 7.

Lost Rhino Brewing Company claims to offer a variety of
beers, as well as root beer. Id. at 14.

Crown Valley Brewery claims to offer various types of beer
on the one hand and root beer on the other. Id. at 21.

Pat’s Backcountry Beverages claims to offer various types
of beer and various types of soda under the mark PAT’S.
Id.at 28-36.

Sprecher claims to offer various types of beer and various
types of soda. Id. at 38-46.

Republic Brewing Company claims to offer various types of
beer and various types of soda. Id. at 48-55.

Warped Wing Brewing Company claims to offer beer, root
beer and a Radler. Id. at 57-63.

Raleigh Brewing Company claims to offer beer, Kombucha
and sodas. Id. at 65-66.

In addition, an October 14, 2015 article in the Wall Street Journal entitled “Not
So Soft Drink: Brewers Add Booze to Root Beer” indicates that Sam Adams, Miller
and other breweries are offering or planning to soon offer “hard” sodas, such as an
alcoholic version of root beer. Id. at 70-74. Similarly, an article in Fortune entitled
“Root beer is the next big thing in craft beer” states “Not Your Father’s Root Beer is
a huge hit this year and may be more than just a fad.” Id. at 76-79.
Opposition No. 91208370

23

In fact, Opposer itself sells third-party bottled water, bottled soda and energy
drinks in its tap room. 60 TTABVue 16; 61 TTABVue 14-15; 63 TTABVue 8. Opposer
has also considered, and had meetings with a soda company to discuss, offering its
own energy and sports drinks and sodas. Opposer’s currently beer-focused personnel,
facilities and equipment could fairly easily transition into also offering these types of
“soft” beverages. 60 TTABVue 11-12, 23-24; 61 TTABVue 11-12.
Opposer further points out that a number of cocktail recipes include as ingredients
beer on the one hand and sports or energy drinks or soda on the other. 49 TTABVue
8-37. This also supports a finding that the parties’ goods are related. See In re Davia,
110 USPQ2d 1810, 1816 (TTAB 2014) (pepper sauce and agave nectar); In re Vienna
Sausage Manufacturing Co., 230 USPQ 799, 799-800 (TTAB 1986) (sausage and
cheese).
We have no difficulty finding the goods related on this record. A relatively large
number of third parties have registered or used the same marks for beer on the one
hand and sports, energy or soft drinks on the other, and Applicant intended to use its
mark for these goods as reflected in its original identification of goods. Moreover,
several large and “craft” brewers appear to have expanded or, like Opposer, hope to
expand their operations to offer soda, so much so that business publications have
identified the practice as a trend. The evidence also reveals that Applicant’s and
Opposer’s goods are complementary, as they are sometimes combined to make
cocktails. This factor also weighs in favor of finding a likelihood of confusion.
Opposition No. 91208370

24

As for channels of trade, Opposer sells its beer from kegs in its own tap room, and
distributes bottles of beer through grocery and liquor stores and bars and
restaurants. 60 TTABVue 9-10, 49-50; 61 TTABVue 12, 20-21 and 68-269. Opposer’s
distributors also distribute sports and energy drinks, which are offered by the same
types of retailers that offer Opposer’s beer. 60 TTABVue 12; 61 TTABVue 12.
Opposer’s beer has been promoted next to popular energy drinks:

60 TTABVue 29, 89.
While there is no evidence that Applicant is offering any goods under its mark, its
identification of goods is unlimited with respect to channels of trade. We must
therefore presume that Applicant’s sports, energy and soft drinks could be offered
through grocery and liquor stores and bars and restaurants, perhaps even the same
ones that offer Opposer’s beer. Stone Lion Capital Partners, L.P. v. Lion Capital LLP,
746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Citigroup Inc., 98 USPQ2d
at 1261; In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981). This factor also weighs in favor of a finding
of likelihood of confusion.
Opposition No. 91208370

25

The Strength of Opposer’s Mark
Applicant relies on evidence, such as that discussed above in connection with
Applicant’s counterclaim, that TAP is commercially weak when used for beer-related
products and services. It relies on third-party registrations of TAPS, in standard
characters, for “beer,”12 and , with CRAFT BEERS disclaimed, for
“retail store services featuring beer and beer related products, namely, growlers,
glassware, and beer consumption.”13 59 TTABVue 3-9. It also relies on evidence that
these marks, and the marks TAP IT TUESDAY, TAPS FISH HOUSE & BREWERY
and TAPS BREWERY are actually in use for restaurant and bar services, and
apparently in at least one or perhaps two cases, for beer. Id.at 10-17. A brewer’s
association identifies a large number of breweries which include TAP or variations
thereof (such as TAP HOUSE, TAPROOM, etc.) in their trade names. 53 TTABVue
6-10.14
On the other hand, Opposer has grown every year since it began operating in 2010.
60 TTABvue 7; 61 TTABVue 7; 62 TTABVue 6-12. It advertises on radio and
billboards on major highways, and sponsors mixed martial arts events, music
festivals and race car drivers. 60 TTABVue 22-23, 26-27, 29-30, 85-88; 61 TTABVue

12 Registration No. 4551766.
13 Registration No. 4496050.
14 There is no evidence that these trade names are used in connection with beer, such as on
bottles or kegs, or even that the relevant public is exposed to the listed trade names, as a
source identifier or otherwise.
Opposition No. 91208370

26

22-29, 272-273. Its beer has won awards in competitions between hundreds of beers.
Id. at 32-33; 61 TTABVue 31, 274. Events in its taproom can draw hundreds, and it
“pours,” or serves beer, and promotes itself, at various festivals. 63 TTABVue 11, 14.
Considering the record as a whole, we find that Opposer’s mark is conceptually
and commercially weak. As discussed above, because “tap” and “tap it” call to mind
kegs and serving beer from kegs, the mark is suggestive, and not entitled to as broad
a scope of protection as a more arbitrary mark. Furthermore, because a number of
bars and restaurants which serve beer use TAP or TAPS in their trade names or
service marks, and it appears that a number of breweries may also use variations of
TAP in their trade names or service marks, and one or perhaps two breweries appear
to use TAPS for beer, Opposer’s mark is commercially weak.
However, while Opposer’s mark is weak, “the evidence does not show that it is
entitled to such a narrow scope of protection as to permit registration of a confusingly
similar mark for related” goods. In re Integrated Embedded, __ USPQ2d ___,
Application Serial No. 86140341 (TTAB Sept. 27, 2016). See also King Candy, 182
USPQ at 109 (“The likelihood of confusion is to be avoided, as much between ‘weak’
marks as between ‘strong’ marks, or as between a ‘weak’ and a ‘strong’ mark.”); Top
Tobacco LP v. North Atlantic Operating Co., 101 USPQ2d 1163, 1173 (TTAB 2011).
Furthermore, there is no evidence of third-party use of Opposer’s mark in its entirety,
TAP IT, for beer. This factor weighs slightly against a finding of likelihood of
confusion.

Opposition No. 91208370

27

Balancing the Likelihood of Confusion Factors
While Opposer’s mark is weak, confusion is nonetheless likely because the parties
use identical marks on related beverages which travel in the same channels of trade.

Decision: Applicant’s counterclaim is dismissed. The opposition is sustained and
registration of Applicant’s mark is refused.