May 2011 Issue

TTAB Cases

In re Kysela Pere et Fils, Ltd.,
Ser. No. 77686637 (TTAB Mar. 24, 2011)

ABSTRACT
The TTAB affirmed the Examining Attorney’s refusal to register the mark HB in standard characters for wine based on a likelihood of confusion with prior registrations for the mark HB with a crown design for beer.  The TTAB held that the marks were similar, and that the parties’ goods were related, sold in the same channels of trade, and included inexpensive consumer goods that may be purchased by unsophisticated members of the general public who may purchase them on impulse.

CASE SUMMARY

FACTS
Kysela Pere et Fils, Ltd. (“Applicant”) appealed the Examining Attorney’s final refusal to register the mark HB in standard characters for wine on the ground that Applicant’s mark so resembled the registered marks shown below for beer, among other goods, that it was likely to cause confusion.

ANALYSIS
The TTAB applied the DuPont likelihood-of-confusion factors and ultimately affirmed the Examining Attorney’s refusal to register.  Regarding the relatedness of the goods, the Examining Attorney initially relied on evidence of registrations showing that various entities had registered a single mark for both beer and wine.  On appeal, Applicant noted that the Examining Attorney had submitted only about 30 third-party registrations and, because there are many thousands of applications and registrations in the USPTO database that included the terms “wine” or “beer,” the 30 submitted were only a negligible percentage (.00025-.00053).  Applicant argued that these 30 registrations were not nearly enough to establish a relationship between the goods sufficient to establish a likelihood of confusion.

The TTAB rejected Applicant’s argument for several reasons.  First, the TTAB explained that the fact that an application or registration contained the term “beer” and was retrieved by one search did not mean that the same application or registration did not contain “wine” as well.  Second, the evidence submitted by Applicant consisted of a search printout from the USPTO database, but did not include TESS/TARR printouts showing the identifications for the applications and registrations.  Accordingly, there was no way of telling whether the use of “wine” and “beer” in the identifications was for those particular beverages or for other goods, such as “root beer” or “wine glasses.”  Third, the fact that the Examining Attorney effectively submitted approximately 20 probative third-party registrations (the TTAB refused to give any weight to some of the registrations submitted by the Examining Attorney) listing beer and wine did not mean that they were the only registrations that included those goods.  The TTAB noted that there was no requirement that the Examining Attorney submit all of the evidence that supported the Examining Attorney’s position.  Thus, the TTAB found the third-party registrations sufficient to establish the relatedness of the goods.

Moreover, the TTAB noted that the Examining Attorney had also submitted website printouts showing that companies made and sold both wine and beer.  It found that this evidence further supported that the goods were related because the websites showed that consumers had been exposed to the concept that wineries also make and sell beer.  Consequently, the TTAB found that the third-party registration evidence and the website evidence together amply demonstrated the relatedness of beer and wine, and showed that consumers, if they encountered both goods sold under confusingly similar marks, were likely to believe that they emanated from the same source.

Finally, the TTAB rejected the Examining Attorney’s argument that Applicant’s goods or services were in the natural zone of expansion of the goods and services of the registrant, and Applicant’s argument that it was not likely that the particular registrant that owned the cited marks would expand its use of the mark as inappropriate in the context of an ex parte proceeding.  The TTAB explained that whether the owner of the cited registration had or was likely to expand its particular business to include the goods of the Applicant is not a proper analysis for an ex parte proceeding.  Rather, the proper inquiry is whether consumers are likely to believe that the goods emanated from a single source.

Regarding the remaining factors, the TTAB found that the channels-of-trade, conditions-of-purchase, and similarities-of-marks factors weighed in favor of a likelihood of confusion.  The TTAB found that wine and beer were general consumer goods sold to adult members of the general public, that both products could be purchased at liquor stores and, in some cases, supermarkets and other retail outlets, and that Applicant’s own website showed that it offered both beer and wine.  In addition, the TTAB reasoned that less expensive beer and wine would not necessarily be purchased with any degree of care or with knowledge by sophisticated purchasers, and could be purchased on impulse.

With respect to the similarities between the marks, the TTAB rejected Applicant’s argument that the crown design in the registered marks was sufficient to distinguish them from Applicant’s mark because it indicated the royal pedigree of the brewery associated with the mark.  The TTAB found that, although the royal pedigree information appeared on the registrant’s website, it could not assume that ordinary purchasers encountering the beer on a store shelf would be aware of the history.  Rather, the TTAB found that consumers were more likely to view the design merely as indicating that the goods are superior or “fit for a king” and laudatory.  The TTAB thus found that “HB” was the dominant element of the registered mark. 

The TTAB also found unpersuasive a number of other arguments by Applicant regarding dissimilarities between the marks in appearance, pronunciation, and meaning, including that consumers would read the registrant’s mark as including the verbal description of the crown as royal or royalty, that consumers would view HB as referring to “hofbrauhaus” and would pronounce it as HOFBRAUHAUS, or that consumers would treat registrant’s marks as having the meaning HOFBRAUHAUS.  The TTAB found instead that consumers would understand the HB marks as merely the letters HB with a laudatory suggestiveness as to the superior or special nature of the goods due to the crown design.  For these reasons, when compared in their entireties, the TTAB held that the marks engendered the same commercial impression.

In sum, The TTAB held that the marks were similar, and that the goods were related, sold in the same channels of trade, and included inexpensive consumer goods that could be purchased by members of the general public who may not be particularly sophisticated and may purchase on impulse.  The TTAB affirmed the Examining Attorney’s refusal based on a likelihood of confusion.

CONCLUSION
In an ex parte context, as few as 20 third-party registrations covering both wine and beer, together with Internet evidence showing that such goods may be made and sold by the same entity, might be sufficient evidence to show that such goods are related for purposes of a likelihood-of-confusion analysis by the Board.