Twin Restaurant IP LLC

Trademark Trial and Appeal Board

Jun 24, 2015

No. 85934428 (T.T.A.B. Jun. 24, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 24, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Twin Restaurant IP LLC
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Serial No. 85934428
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Elisabeth A. Evert of Hitchcock Evert LLP,
for Twin Restaurant IP LLC.
Esther Queen, Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.
_____

Before Bucher, Lykos and Greenbaum,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
Twin Restaurant IP LLC (“Applicant”) seeks registration on the Principal
Register of the mark KNOTTY BRUNETTE in standard character format for
“Beer, ale and lager” in International Class 32.1
Registration was refused under Section 2(d) of the Trademark Act of 1946,
15 U.S.C. § 1052(d), on the ground that Applicant’s applied-for mark so resembles

1 Application Serial No. 85934428, filed May 16, 2013, under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a). The application alleges July 1, 2009, as the date of first use
anywhere and in commerce.
Serial No. 85934428
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the registered mark NUTTY BREWNETTE for “beer” in International Class 32
that, when used on or in connection with Applicant’s identified goods, it is likely to
cause confusion or mistake or to deceive.2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Trademark Examining Attorney denied the Request for
Reconsideration, the appeal was resumed.
I. Evidentiary Objection
Before addressing the substance of this appeal, we will consider first the
Examining Attorney’s objection to Applicant’s submission of the evidence contained
in Exhibits Nos. 1-8, 10, and 12-13 with its appeal brief as untimely.3 With the
exception of Exhibit No. 7, none of these exhibits previously were of record.
Trademark Rule 2.142(d) provides in relevant part that “[t]he record in the
application should be complete prior to the filing of an appeal. The Trademark Trial
and Appeal Board will ordinarily not consider additional evidence filed with the
Board by the appellant or by the examiner after the appeal is filed.”
With regard to Exhibit Nos. 1-6, 8, 10, and 12-13, insofar as the Examining
Attorney has timely interposed an objection to Applicant’s late-filed evidence with
its brief, the objection is sustained, and we have given this evidence no

2 Registration No. 3344183, registered November 27, 2007, alleging December 1997 as the
date of first use anywhere and in commerce; Sections 8 and 15 affidavits accepted and
acknowledged.
3 Ex. No. 1 consists of a news article about Applicant’s restaurants; Exs. Nos. 2-8 consist of
TSDR printouts of trademark registrations and applications owned by Applicant; Ex. No.
10 consists of a menu from Applicant’s Twin Peaks restaurant establishment; and Exs. Nos.
12-13 consist of web site excerpts concerning Registrant’s NUTTY BREWNETTE branded
beer.
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consideration. See e.g., In re Fiat Group Marketing & Corporate Communications
S.p.A., 109 USPQ2d 1593, 1596 (TTAB 2014) (examining attorney’s objection to
applicant’s submission of registrations with appeal brief sustained); In re Genitope
Corp., 78 USPQ2d 1819 n.3 (TTAB 2006) (materials from applicant’s website
submitted for first time with examining attorney’s brief not considered). However,
inasmuch as Exhibit No. 7 consists of a printout from the USPTO Trademark
Status and Document Retrieval (“TSDR”) database showing the status and
docketing history of the application which is the subject of this appeal, it is
automatically of record, and therefore the objection is overruled as to that exhibit.
II. Likelihood of Confusion
We now turn to the substantive refusal before us. We base our determination
under Section 2(d) on an analysis of all of the probative evidence of record bearing
on a likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See also, In re Majestic Distilling
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any
likelihood of confusion analysis, however, two key considerations are the
similarities between the marks and the similarities between the goods. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976). These factors, and the other relevant du Pont factors, are discussed
below.
We turn first to the goods. It is undisputed, and Applicant concedes, that both
the application and registration include “beer.” See Stone Lion Capital Partners, LP
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v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014);
Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). Applicant argues that because its KNOTTY
BRUNETTE beer will only be purchased in Applicant’s Twin Peaks restaurant
establishments, which feature “sexy wait staff” (Applicant’s Brief, 7 TTABVUE 8),
consumers will understand the mark to be a homophone for “naughty brunette.” In
support thereof, Applicant submitted an excerpt from its website promoting its
restaurant chain as “the ultimate man cave” with “friendly and attentive Twin
Peaks Girls, offering their signature ‘Girl Next Door’ charisma and playful
personalities.” Office Action Response dated March 5, 2014. However, because the
goods are identical in part, we must presume that these goods travel in the same
channels of trade to the same classes of consumers. See In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). In other words, we must assume
that both Applicant’s and Registrant’s beers are sold not only in the same typical
trade channels such as grocery stores and liquor stores, but also in all restaurants
and bars, not just those owned by Applicant. Thus, the second and third du Pont
factors weigh in favor of finding a likelihood of confusion.
That being said, a single du Pont factor may be dispositive, and when we
compare the marks, we find that to be the case here. See Kellogg Co. v. Pack'em
Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991). The first du Pont
likelihood of confusion factor involves an analysis of the similarity or dissimilarity
of the marks in their entireties as to appearance, sound, connotation and
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commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). “The
proper test is not a side-by-side comparison of the marks, but instead ‘whether the
marks are sufficiently similar in terms of their commercial impression’ such that
persons who encounter the marks would be likely to assume a connection between
the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012).
The Examining Attorney, relying on the proposition that similarity in sound
alone may be sufficient to support a finding that the marks are confusingly similar,
contends that the marks KNOTTY BRUNETTE and NUTTY BREWNETTE
essentially are phonetic equivalents. See e.g., In re White Swan Ltd., 8 USPQ2d
1534, 1535 (TTAB 1988). Applicant concedes that the terms BRUNETTE and
BREWNETTE are likely to be pronounced identically and we do not disagree.
Applicant however maintains that words “knotty” and “nutty” when correctly
pronounced are readily distinguishable to the ear of a speaker of English in the
United States. We agree, insofar as the short vowel sound for the letter “o” is
pronounced differently than the short vowel sound for the letter “u.” As a result, the
marks have slight differences in sound. Nonetheless, while the marks have phonetic
distinctions when pronounced correctly, because “there is no correct pronunciation
of a mark” and because “it is impossible to predict how the public will pronounce a
particular mark,” we must assume that the marks could be pronounced in the same
manner by consumers. See Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d
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1825, 1835 (TTAB 2013) (quoting In re Viterra Inc., 671 F.3d 1358, 1367, 101
USPQ2d 1905, 1912 (Fed. Cir. 2012)); In re The Belgrade Shoe Co., 411 F.2d 1352,
1353, 162 USPQ 227, 227 (CCPA 1969).
Nonetheless, here we find critical the obvious distinctions between the marks in
appearance, connotation and commercial impression. The primary connotation of
Registrant’s mark NUTTY BREWNETTE is the flavor of Registrant’s beer.
Registrant’s mark commences with the adjective “nutty” meaning “tasting or
smelling like nuts” or “containing nuts.”4 Registrant’s website describes its beer as
having “a flavor profile that is sweet with ‘nutty’ notes.” The record further shows
that “nutty” is a commonly-used adjective to describe certain brown ales. See
excerpt for “Brown Ale” from Wikipedia (Applicant’s Request for Reconsideration
dated October 1, 2014). In lieu of the correct spelling of “brunette” which denotes a
female with brown or black hair, the second component of Registrant’s mark
contains the letter string “b” “r” “e” “w,” calling immediately to mind the word
“brew,” a synonym for beer. “Brew” is defined as “a drink (such as beer or ale) that
is made by brewing.” Thus the words taken together project the connotation of a
“nutty brew” or nutty flavored beer. Because Registrant’s identification of goods is
unrestricted, it is sufficiently broad to cover all types of beer, including those nutty
in flavor or containing nuts.

4 The Board takes judicial notice of the definition of “nutty” from the online version of
Merriam-Webster Dictionary at www.merriam-webster.com, as well as the definitions for
the words “brunette,” “brew,” “nutty” and “naughty” as discussed below. See In re White
Jasmine LLC, 106 USPQ2d 1385, 1392 n.23 (TTAB 2013) (Board may take judicial notice of
online dictionaries that exist in print format or have regular fixed editions).
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The mark is also a double entendre for “nutty brunette” to denote a dark-haired
female with a “nutty” or “silly, strange, or foolish” personality. The unique spelling
of “brunette” as “brewnette” when used in connection with beer results in a clever
play on words. That being said, the appearance and primary connotation and
commercial impression of the mark projects a nutty flavored type of beer.
By contrast, Applicant’s mark KNOTTY BRUNETTE combines the traditional
spelling of “brunette” with the word “knotty,” a homophone for “naughty.” In this
context, the adjective “naughty” conveys the meaning of “relating to or suggesting
sex in usually a playful way.” Due to its spelling, Applicant’s mark is more likely to
project the connotation of a “naughty brunette,” that is to say, a dark-haired woman
displaying a playful type of sexiness. Moreover, both the adjectives “knotty” as well
as its homophone “naughty” are entirely devoid of any connotation of nut or nut-like
flavoring. Thus, the marks have their own unique humorous play on words that
project separate meanings and distinct commercial impressions. As a result, when
confronted with both marks, prospective consumers are unlikely to assume that
Applicant’s and Registrant’s respective goods originate from the same source.
Any of the du Pont factors may play a dominant role. In re E. I. du Pont
de Nemours & Co., 177 USPQ at 567. In fact, in some cases, a single factor may be
dispositive. Kellogg Co. v. Pack’em Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142
(Fed. Cir. 1991). In the present ex parte appeal, the record evidence shows that the
dissimilarity of the marks in appearance, meaning and commercial impression are
so great as to outweigh the other du Pont factors, discussed above. For that reason,
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we find the first du Pont factor to be pivotal, and the Trademark Examining
Attorney’s Section 2(d) refusal is reversed.
Decision: The Section 2(d) refusal to register Applicant’s mark is reversed.
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Opinion by Bucher, Administrative Trademark Judge, dissenting:
I respectfully disagree with my esteemed colleagues, and would readily affirm
this § 2(d) refusal. Yes, in some cases, a single du Pont
factor may be dispositive – even in the rarified context
of granting a motion for summary judgment. Kellogg
FROO
T
LOOP
S
v
s
.

FROOT
LOOPS vs.

Co. v. Pack’em, 21 USPQ2d at 1145. Despite the majority’s language such as
“obvious distinctions” (majority opinion at 6), “dissimilarity … so great as to
outweigh the other du Pont factors” (Id. at 7) and “the first du Pont factor [being]
pivotal” (Id. at 8), I find that this is not such a case.
Conversely, as argued by the Trademark Examining Attorney, similarity in
sound alone may be sufficient to support a finding that the marks are confusingly
similar. Indeed, the majority concedes that these two marks “could be pronounced
in the same manner by consumers” (Id. at 5). Inside a noisy bar, as the night wears
on, and the bartender and patron trade verbal exchanges of \ˈnä-tē\, \ˈnə-tē\ or
\ˈnȯ-tē\ˈnä-tē\ uttered next to \brü-ˈnet\, any aural differences in the short vowel
sounds of only the first of these four syllables will likely not be readily
distinguishable – and especially to southern ears.
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In addition to the similarities in sound, arguably these respective marks also
have a similar connotation when used in connection with beer. Provided the
consumer perceives miniscule differences in sound, the majority then assumes that
despite having an imperfect recollection of trademarks, the average bar patron will
retain fine connotations from one tavern visit to the next. Yet the majority
acknowledges similar sounding marks, each having one or even several double
entendres! Let’s see, was that dark-haired female of several weeks ago an extremely
difficult personality (“knotty”), strange (“nutty”), or playfully sexy (“naughty”). Or if
the brew has an earthy flavor profile – in a wild, Euell Gibbons kind of way – was it
due to the (knotty) bark or nuts?
Moreover, in the context of the overall commercial impressions of the marks, the
majority fails to note that with legally identical goods, as we have herein, the degree
of similarity between the marks
necessary to support a finding of
likely confusion declines. Jansen
Enters. Inc. v. Rind, 85 USPQ2d
1104, 1108 (TTAB 2007).

vs.

And finally, to the extent that any jurist finds this to be a close case, in the event
of a § 2(d) tie, the win belongs to Registrant – represented in this ex parte case by
the position of the Trademark Examining Attorney.