Bells Brewery, Inc. v. Innovation Brewing

This Opinion Is a

Precedent of the TTAB

Mailed: December 20, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE

_____

Trademark Trial and Appeal Board

_____

Bell’s Brewery, Inc.

v.

Innovation Brewing

_____

Opposition No. 91215896

_____

Sarah M. Robertson, Susan Progoff, and Fara S. Sunderji of Dorsey & Whitney LLP

and G. Patrick Sage and Joanna T. French of The Firm of Hueschen and Sage,

for Bell’s Brewery, Inc.

Ian D. Gates of Dascenzo Intellectual Property Law, P.C.,

for Innovation Brewing.

_____

Before Kuczma, Hightower, and Coggins,

Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:

Innovation Brewing (“Applicant”) seeks to register the mark INNOVATION

BREWING, in standard characters and with “BREWING” disclaimed, on the

Principal Register for “beer” in International Class 32.1 Bell’s Brewery, Inc.

(“Opposer”) opposes registration under Section 2(d) of the Trademark Act, 15 U.S.C.

1 Application Serial No. 85929587 was filed May 12, 2013, based on Applicant’s allegation of

a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act,

15 U.S.C. § 1051(b).

Opposition No. 91215896

§ 1052(d), asserting priority and a likelihood of confusion with its mark INSPIRED

BREWING, registered on the Principal Register in standard characters and with

“BREWING” disclaimed, and its common-law mark BOTTLING INNOVATION

SINCE 1985. We dismiss the opposition.

I. Evidentiary Objections

Opposer objects to two pieces of evidence: a response to a request for admission,

and a copy of a settlement agreement. We address each in turn.2

A. Opposer’s Response to Applicant’s Request for Admission No. 67

The parties agree that, pursuant to Trademark Rule 2.120(j)(3)(i), 37 C.F.R.

§ 2.120(j)(3)(i), only admissions to requests for admission may be made of record by

notice of reliance. Where they disagree is whether the response Opposer seeks to

strike from the record is an admission or a denial. The request and response state:

Request for Admission No. 67: The word “inspired” has the

same meaning as the word “innovation.”

Response: Bell’s objects to Request 67 on the ground that it

is vague and indefinite. Subject to the foregoing objections,

Bell’s denies that the word “inspired” has the identical

meaning as the word “innovation,” but the terms “inspired”

and “innovation” have similar meanings.

Exhibit 5 to Applicant’s Notice of Reliance, Opposer’s Responses to Applicant’s Second

Set of Requests for Admissions, 39 TTABVUE 109. We read the response in its

entirety as a properly introduced admission and consider it for whatever probative

value it may have.

2 Trial of this proceeding concluded before the Trademark Rules of Practice were amended

effective January 14, 2017. Except where otherwise specified, therefore, citations to the rules

are to the rules that were in effect in 2016, at the time of trial.

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Opposition No. 91215896

B. Settlement Agreement

Opposer also objects to admission of a confidential settlement agreement between

it and a nonparty that Applicant submitted under seal as Exhibit 6 to Applicant’s

Notice of Reliance, 38 TTABVUE 113-18.3 Applicant responds that this document

may be submitted by notice of reliance because it was produced by Opposer, which

admitted in response to a request for admission that: “All of the documents produced

by Opposer in response to Applicant’s First Set of Requests for Production are

genuine, authentic, true, accurate, and were in the possession, custody, and/or control

of Opposer.” Response to Request for Admission No. 50, Exhibit 3 to Applicant’s

Notice of Reliance, Opposer’s Responses to Applicant’s First Set of Requests for

Admissions, 39 TTABVUE 36.

We agree with Applicant. In Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d

1100, 1103-04 (TTAB 2007), the Board made clear that because the respondent

produced documents in responding to the petitioner’s interrogatories and admitted in

responses to requests for admissions that the documents it produced were true and

correct copies of authentic documents, the documents were admissible by notice of

reliance. This is a longstanding practice well known to practitioners. See, e.g., TBMP

§ 711, 700-42 (1st ed. 1995) (“A party which has obtained documents under FRCP 34

may serve upon its adversary requests for admission of the authenticity of the

3 Without divulging the contents of the confidential settlement agreement, Applicant argued

in its confidential brief that the agreement is evidence of weakness of the INSPIRED

BREWING mark. See Applicant’s Brief at 11, 24-25, 45 TTABVUE 17, 30-31. The strength of

Opposer’s marks is discussed in Section IV(C) infra.

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Opposition No. 91215896

documents, and then, during its testimony period, file a notice of reliance, under 37

CFR § 2.120(j)(3)(i), on the requests for admission, the exhibits thereto, and its

adversary’s admissions (or a statement that its adversary failed to respond to the

requests for admission.)”).4 This existing practice is codified in the amendments to

the Trademark Rules that took effect after trial in this proceeding. See Rule

2.120(k)(3)(ii), 37 C.F.R. § 2.120(k)(3)(ii), as amended effective January 14, 2017 (“A

party that has obtained documents from another party through disclosure or under

Rule 34 of the Federal Rules of Civil Procedure may not make the documents of record

by notice of reliance alone, except to the extent that they are admissible by notice of

reliance under the provisions of § 2.122(e), or the party has obtained an admission or

stipulation from the producing party that authenticates the documents.”); see also

Miscellaneous Changes to Trademark Trial and Appeal Board Rules of Practice, 81

Fed. Reg. 19296, 19297 (April 4, 2016) (Notice of Proposed Rulemaking) (stating that

the proposed rule permitting a party to serve a request for admission whereby the

producing party would authenticate all produced documents “recognize[s] general

practice”). Opposer’s objection therefore is overruled, and we consider the settlement

agreement for whatever probative value it may have.

We hasten to add that consideration of the two challenged pieces of evidence,

individually or together, does not alter the outcome of this proceeding.

4 The first edition of the TBMP is archived on the USPTO website at uspto.gov/sites/default/

files/documents/tbmp_1stedition.pdf.

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Opposition No. 91215896

II. Record

The record consists of the pleadings and, without any action by the parties, the

file of the involved application. Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1).

The record also comprises the evidence summarized below.

A. Opposer’s Evidence

Opposer made the following evidence of record:

• Copies of its two pleaded registrations for INSPIRED BREWING, which

were submitted via current printouts from the USPTO’s Trademark Status

& Document Retrieval (TSDR) electronic database attached as exhibits to

the Notice of Opposition pursuant to Trademark Rule 2.122(d)(1), 37 C.F.R.

§ 2.122(d)(1), as follows:

o Registration No. 3122464 for “beer, porter, ale, stout and malt liquor”

in International Class 32;5 and

o Registration No. 4098319 for “beer; ale; stout; porter; malt liquor” in

International Class 32, as well as collateral goods in several classes

that are not at issue in this proceeding;6

• Opposer’s Notice of Reliance with Exhibits 1-18, including certain of

Applicant’s responses to Opposer’s discovery requests, dictionary

definitions, and excerpts from the discovery deposition of Applicant’s

witness designated under FED. R. CIV. P. 30(b)(6), Nicole Dexter, 36 and

37 (confidential) TTABVUE;

• Opposer’s Rebuttal Notice of Reliance with Exhibits 19-26, which are

Internet printouts, 40 TTABVUE; and

• A transcript of the trial testimony of Laura Bell, Opposer’s vice president

of marketing and sales, with Exhibits 1-47, 41 (confidential) and 42

TTABVUE.

B. Applicant’s Evidence

Applicant submitted a Notice of Reliance with Exhibits 1-41, consisting of certain

of Opposer’s responses to Applicant’s discovery requests, authenticated produced

5 Issued August 1, 2006; renewed.

6 Issued February 14, 2012.

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Opposition No. 91215896

documents, third-party registrations, and Internet printouts, 38 (confidential) and

39 TTABVUE.

As noted, some of the evidence proffered by both parties has been designated

confidential and filed under seal. We have discussed only in general terms the

relevant evidence submitted under seal.

III. Opposer’s Standing and Priority

Standing is a threshold issue that must be proven by the plaintiff 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); John W. Carson Found. v. Toilets.com Inc., 94

USPQ2d 1942, 1945 (TTAB 2010). Opposer’s standing to oppose registration of

Applicant’s mark is established by its two pleaded registrations, which the record

shows to be valid and subsisting, and owned by Opposer. See, e.g., Cunningham v.

Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); N.Y. Yankees

P’ship v. IET Prods. & Servs., Inc., 114 USPQ2d 1497, 1501 (TTAB 2015).

Under Trademark Act Section 7(c), 15 U.S.C. § 1057(c), Applicant’s constructive

use date for purposes of priority in the INNOVATION BREWING mark is May 12,

2013, the day it filed its application pursuant to Trademark Act Section 1(b). See

Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1119 (TTAB 2009).

Because Opposer’s pleaded registrations are of record, priority is not at issue with

respect to the goods identified in Opposer’s pleaded registrations for the mark

INSPIRED BREWING, including beer. 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)). In addition, Opposer

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Opposition No. 91215896

submitted evidence that it has used its pleaded common-law mark BOTTLING

INNOVATION SINCE 1985 (which Applicant calls Opposer’s “Advertising Slogan”)

since 2009. Laura Bell Tr. at 27:25-28:14, 42 TTABVUE 29-30. Although Applicant

questions the strength of Opposer’s common-law mark, it “cannot dispute that

Opposer’s initial use of Opposer’s Advertising Slogan predates Applicant’s filing

date.” Applicant’s Brief at 15, 46 TTABVUE 21. We find that Opposer has established

prior proprietary rights in BOTTLING INNOVATION SINCE 1985.

Because Opposer has established its standing and priority as to both of its pleaded

marks, we turn to the question of likelihood of confusion.

IV. Likelihood of Confusion

Our determination under Trademark Act Section 2(d) is based on an analysis of

all probative facts in evidence that are relevant to the factors bearing on the issue of

likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177

USPQ 563, 567 (CCPA 1973); see also In re Majestic Distilling Co., 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 or services, the first two du Pont factors. See 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.”). Opposer

bears the burden of proving its claim of likelihood of confusion by a preponderance of

the evidence. Cunningham, 55 USPQ2d at 1848.

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Opposition No. 91215896

We address in turn each of the du Pont factors for which the parties submitted

evidence or argument.

A. Similarity of the Goods, Customers, and Channels of Trade

We begin with the second and third du Pont factors, assessing the similarity or

dissimilarity of the parties’ goods and their established, likely-to-continue trade

channels. Id., 177 USPQ at 567.

Both parties are brewers. The goods identified in the subject application are

“beer,” which is among the goods identified in Opposer’s pleaded registrations.

Opposer also has established use of its common-law mark on beer. We find under the

second du Pont factor that the parties’ goods are identical in part.

Turning to the third du Pont factor, because Applicant’s goods and the goods

identified in Opposer’s registrations are identical in part, we must presume that those

goods move in the same channels of trade and are available to the same classes of

customers. See Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419,

1437 (TTAB 2014); see also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908

(Fed. Cir. 2012) (finding Board entitled to rely on this presumption).

No presumptions attach to Opposer’s mark BOTTLING INNOVATION SINCE

1985 because it is not registered. However, because there are no restrictions or

limitations in Applicant’s description of goods, we presume that Applicant’s beer will

move in all channels of trade normal for such goods and be purchased by all potential

customers, including Opposer’s trade channels and Opposer’s customers and

potential customers. Viterra, 101 USPQ2d at 1908; CBS Inc. v. Morrow, 708 F.2d

1579, 218 USPQ 198, 199 (Fed. Cir. 1983).

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Opposition No. 91215896

The second and third du Pont factors weigh heavily in support of a finding that

confusion is likely.

B. Conditions of Purchase and Consumer Sophistication

The fourth du Pont factor assesses the “conditions under which and buyers to

whom sales are made i.e., ‘impulse’ vs. careful, sophisticated purchasing.” Id., 177

USPQ at 567. The goods at issue, beer, are often relatively inexpensive and subject

to impulse purchase. See In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB

2016) (taking judicial notice of these facts). Record evidence shows that pints of each

party’s beer are priced between $3 and $8. Response to Interrogatory No. 13,

Applicant’s Third Amended Responses to Opposer’s First Set of Interrogatories,

Exhibit 3 to Opposer’s Notice of Reliance, 36 TTABVUE 20; Laura Bell Tr. at 84:17-

21, 42 TTABVUE 86.

“When products are relatively low-priced and subject to impulse buying, the risk

of likelihood of confusion is increased because purchasers of such products are held

to a lesser standard of purchasing care.” Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54

USPQ2d 1894, 1899 (Fed. Cir. 2000). We find that the fourth du Pont factor also

weighs in favor of a likelihood of confusion.

C. Strength of Opposer’s Marks

The fifth du Pont factor is the fame of the prior mark, and the sixth factor is the

number and nature of similar marks in use for similar goods or services. Id., 177

USPQ at 567. In determining strength of a mark, we consider both inherent strength,

based on the nature of the mark itself, and commercial strength or recognition.

Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1476

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Opposition No. 91215896

(TTAB 2014); see also 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).”).

As discussed further infra, Applicant argues that both of Opposer’s marks have

been weakened and diluted by third-party use of similar marks for beer and related

goods. Applicant also contends that Opposer’s mark BOTTLING INNOVATION

SINCE 1985 is inherently weak because (1) it is merely informational in nature, given

that Opposer has been bottling and selling beer since 1985, and (2) it is not used on

beer labels or packaging but rather on bumper stickers and other customer “swag,”

and therefore the public will not perceive it as a source-identifier. See Applicant’s

Brief at 15, 46 TTABVUE 21.

Concerning conceptual strength, we find that Opposer’s pleaded marks

INSPIRED BREWING and BOTTLING INNOVATION SINCE 1985 both are

inherently distinctive. There is no evidence that the phrase constituting the latter

mark is used in everyday parlance or is used by other providers in conjunction with

similar goods or services to impart the same kind of information.7 See In re Eagle

7 Trademark Manual of Examining Procedure (TMEP) § 1202.04(a) (Oct. 2017) explains that

matter that only conveys general information about an applicant’s identified goods, including

highly laudatory claims of superiority, fails to function as a mark. “Any evidence

demonstrating that the public perception of the matter is merely to convey general

information about the goods or services supports this refusal. In addition to dictionary or

encyclopedia entries showing the meaning or significance of wording, supporting evidence

may include materials (e.g., website pages, social-media pages, product fact sheets, and other

promotional materials) showing the wording listed with other features of the goods/services,

showing the wording being used in a manner that does not stand out from other informational

text, or showing the same or similar wording commonly used in business or by other providers

of similar goods or services to impart the same kind of general information.” Id.

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Opposition No. 91215896

Crest, Inc., 96 USPQ2d 1227, 1129-30 (TTAB 2010) (discussing exclusive rights in

common phrases or slogans). In addition, some evidence showing the display of

BOTTLING INNOVATION SINCE 1985, including its use on truck wraps as seen

below, supports a finding that consumers would perceive it as a source indicator:8

See D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (TTAB 2016) (“The

critical inquiry in determining whether a designation functions as a mark is how the

designation would be perceived by the relevant public.”).

8 Exhibit 39 to Laura Bell Tr. and testimony at 69:1-16, 42 TTABVUE 71, 215. A non-

comprehensive list showing the number and cost of Opposer’s vehicle wraps is designated

confidential. Id., Exhibit 40 and testimony at 69:19-70:10, 41 TTABVUE 71-72, 221.

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Opposition No. 91215896

Third-party registrations may be relevant to show the sense in which a mark is

used in ordinary parlance; that is, an element common to both parties’ marks may

have a normally understood and well-recognized descriptive or suggestive meaning,

leading to the conclusion that that segment is inherently relatively weak. Jack

Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports,

S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015), cert. denied, 136 S.

Ct. 982 (2016); see also In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738,

1745 (TTAB 2016) (“[T]hird-party registrations are relevant evidence of the inherent

or conceptual strength of a mark or term because they are probative of how terms are

used in connection with the goods or services identified in the registrations.”).

Evidence of use of similar marks by third parties for similar or related goods or

services, in turn, is relevant to a mark’s commercial strength. Juice Generation, Inc.

v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015).

Through its notice of reliance, Applicant introduced evidence that third parties

have both registered and used marks incorporating the terms INSPIRED and

INNOVATION in association with beer and related goods and services. The more

probative evidence9 is summarized in the following tables, beginning with Applicant’s

evidence of registration or use of INSPIRE-formative marks.

9 Pending applications, cancelled registrations, and registrations for alcoholic beverages

excluding beers are omitted. Certain of the listed registrations include disclaimers, which

also are omitted.

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Opposition No. 91215896

Most Relevant 39

Mark Reference

Goods/Services TTABVUE

Beer Reg. No. 152-57

4536208 (Exh. 16)

INSPIRED BY THE VINE. Beer Reg. No. 143-47

PERFECTED IN THE BREW 4441119 (Exh. 14)

KETTLE.

Reg. No. 163-67

Beer

4635412 (Exh. 18)

Retail stores featuring

INSPIRED BY TASTE Reg. No. 168-71

alcoholic beverages 4755944 (Exh. 19)

including beer

148-51,

WORLD INSPIRED OHIO Beer Reg. No.

231-39

BREWED 4458079

(Exhs. 15,

35)

Reg. No. 119-24

HEINEKEN INSPIRE Beer

3918086 (Exh. 9)

CHALICE DIVINELY Reg. No. 177-81

Beer

INSPIRED 4998751 (Exh. 21)

THE KIN GROUP – INSPIRE Reg. No. 129-32

Beers

SPIRITS 4017912 (Exh. 11)

AIR ALCOHOL INSPIRED Reg. No. 133-37

Beer

REFRESHER 4227737 (Exh. 12)

NATIVE-INSPIRED FOODS Beer making and Reg. No. 172-76

& SPIRITS brewpub services 4830684 (Exh. 20)

INSPIRATION Common- 215-17

Beer

(Community Beer Co.) law use (Exh. 30)

INSPIRATION Common- 218-24

Beer

(LTS Brewing Company) law use (Exh. 31)

CREATIVELY INSPIRED. Common- 213-14

Beer

ARTFULLY BREWED. law use (Exh. 29)

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Opposition No. 91215896

Applicant’s evidence concerning INNOVATION marks is summarized below.

Most Relevant 39

Mark Reference

Goods/Services TTABVUE

Beers Reg. No. 207-12

4575482 (Exh. 28)

Education in the field Reg. No. 203-06

of beer making 4120237 (Exh. 27)

Common- 251-52

INNOVATION IN TASTE Beer

law use (Exh. 40)

INNOVATION STARTS AND Beer Common- 253-55

ENDS WITH OUR BEER law use (Exh. 41)

DRINKERS.; DEDICATION

TO INNOVATION;

INNOVATION IN MOTION

(Molson Coors Brewing Co.)

Beer-brewing Common- 240-41

BREWING INNOVATION

equipment law use (Exh. 36)

BREWING INNOVATIVE Beer and brewpub Common- 242-43

ALES IN SMALL BATCHES services law use (Exh. 37)

CLARK BREWING Home beer-brewing Common- 244-45

INNOVATIONS equipment law use (Exh. 38)

Common 246-50

GENUINE INNOVATIONS CO2 chargers for kegs

law use (Exh. 39)

Opposer distinguishes the marks and criticizes this evidence on several grounds,

including that some evidence of use is dated; some marks are for goods in limited

distribution; and some uses are informational rather than as trademarks. Opposer

also submitted evidence with its rebuttal notice of reliance that two of the common-

law marks cited by Applicant are no longer in use: INNOVATION IN TASTE and

CLARK BREWING INNOVATIONS. Exhibits 24 and 25 to Opposer’s Rebuttal Notice

of Reliance, 40 TTABVUE 323-86. All told, Opposer argues, Applicant’s evidence of

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Opposition No. 91215896

third-party use and registration does not affect the marketplace strength of Opposer’s

INSPIRED BREWING or BOTTLING INNOVATION SINCE 1985 marks. See Reply

Brief at 12-13, 48 TTABVUE 18-19.

Applicant’s most relevant evidence comprises some 13 distinct registrations and

uses at common law of marks incorporating formatives of INSPIRE for beer or related

goods, and eight registrations and uses of marks incorporating INNOVATION or, in

one instance, INNOVATIVE.10 We give probative weight to this evidence as

indicating that these terms may be used by some third parties in the beer field. We

do not, however, find the evidence sufficient to establish that the terms either have a

descriptive significance or are in such widespread use that consumers have come to

distinguish marks containing them based on minute differences. See In re

i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017) (stating

that evidence of third-party use “falls short of the ‘ubiquitous’ or ‘considerable’ use of

the mark components present in [applicant’s] cited cases”). Cf. Jack Wolfskin, 116

USPQ2d at 1136 (discussing “voluminous evidence” of registration and use of paw

print design elements); Juice Generation, 115 USPQ2d at 1674 (referencing evidence

of “a fair number” of third-party marks).

Considering the record as a whole, including evidence pertaining to both

conceptual and commercial strength, we find that Opposer’s marks are inherently

distinctive and accord them the normal scope of protection to which inherently

10 Although we find infra that the conjoint use theory does not apply to this case, we note that

none of the evidence of third-party registrations and use included marks incorporating both

INSPIRE and INNOVATION.

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Opposition No. 91215896

distinctive marks are entitled. See Joseph Phelps Vineyards, LLC v. Fairmont

Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (stating that

likelihood of confusion fame varies along a spectrum from very strong to very weak).

D. Similarity of the Marks

Finally, we consider the first du Pont factor, the similarity of the parties’ marks.

Id., 177 USPQ at 567. Opposer argues that Applicant’s INNOVATION BREWING

mark is confusingly similar to Opposer’s INSPIRED BREWING mark. Although

Opposer pleaded that Applicant’s mark also is confusingly similar to its mark

BOTTLING INNOVATION SINCE 1985, it did not make that argument in its brief,

and the claim as to the latter mark standing alone therefore is deemed waived. See

Swatch AG (Swatch SA) (Swatch Ltd.) v. M. Z. Berger & Co., 108 USPQ2d 1463, 1465

n.3 (TTAB 2013), aff’d, 787 F.3d 1368, 114 USPQ2d 1892 (Fed. Cir. 2015). Rather,

Opposer now argues that Applicant’s mark is confusingly similar to the joint

impression created by its two marks, INSPIRED BREWING and BOTTLING

INNOVATION SINCE 1985, considered together. As we discuss infra, we find that

this claim is not properly before us.

1. Opposer Failed to Plead a Conjoint Use Theory

Opposer’s only argument with respect to the BOTTLING INNOVATION SINCE

1985 mark is that it is used together with INSPIRED BREWING and confusion is

likely under a conjoint use analysis, i.e.: “Applicant’s proposed mark INNOVATION

BREWING combines elements of both of Bell’s conjoined trademarks INSPIRED

BREWING and BOTTLING INNOVATION SINCE 1985.” Opposer’s Brief at 22, 44

TTABVUE 29.

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Opposition No. 91215896

Applicant objects that Opposer did not plead a claim of conjoint use and asks us

to strike the argument from Opposer’s brief. In its reply, Opposer contends that it

need not plead conjoint use or, in the alternative, that Applicant has waived any

objection “because Applicant failed to object to the introduction of the evidence of

[Opposer’s] conjoint use at Ms. Bell’s testimony.” Reply Brief at 15, 48 TTABVUE 21.

We agree that Opposer pleaded not a claim of conjoint use, but rather likelihood

of confusion with each of its two marks. In the Notice of Opposition, Opposer first

addressed its INSPIRED BREWING mark in ¶¶ 2-9, alleging priority and a

likelihood of confusion in ¶¶ 8-9, then separately discussed BOTTLING

INNOVATION SINCE 1985 in ¶¶ 10-15, alleging priority and a likelihood of

confusion with that mark in ¶¶ 14-15. In the final ¶ 16, Opposer alleged that

registration of the subject application would violate its rights in its “INSPIRED

BREWING trademarks,” a term that is not defined in the notice. Nowhere in the

notice did Opposer allege that Applicant’s mark would create a likelihood of confusion

with Opposer’s conjoint use of INSPIRED BREWING and BOTTLING

INNOVATION SINCE 1985.

By contrast, in the leading cases in which an opposer pursued a conjoint use claim

before the Board, the claim had been clearly pled. For example, in Schering-Plough

HealthCare Prods. Inc. v. Huang, 84 USPQ2d 1323 (TTAB 2007), in which the Board

refused registration of the mark DR. AIR, Opposer’s amended pleading alleged in

part that:

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Opposition No. 91215896

Since prior to the filing date of [the subject application],

Opposer has used and displayed its trademarks

DR. SCHOLL’S and AIR-PILLO together on packages and

in advertising so that the purchasing public associates the

DR. SCHOLL’S and AIR-PILLO trademarks and

recognizes that they jointly distinguish the products on

which they are used and identify Opposer as the source of

the products.

Applicant’s DR. AIR mark, which draws on two elements

of Opposer’s associated trademarks DR. SCHOLL’S and

AIR-PILLO, is likely to cause confusion or mistake among

ordinary purchasers of the goods identified in the

application concerning the origin, sponsorship, or

association of Applicant’s goods or the possibility that

Applicant’s goods are manufactured and marked pursuant

to authorization from Opposer.

Opposition No. 91117558, 13 TTABVUE 7 at ¶¶ 10-11.

Similarly, Sperry Rand Corp. v. Remvac Sys. Corp., 172 USPQ 415 (TTAB 1971),

refusing registration of REMVAC, states: “Opposer has also pleaded prior use of

‘REMINGTON’ and ‘UNIVAC’ together upon and in connection with the promotion of

data processing and transmission equipment and related goods of its manufacture.”11

Id. at 415; see also Simoniz Co. v. Hysan Prods. Co., 142 USPQ 377, 377 (TTAB 1964)

(“Opposer, in its pleading, alleges that the goods of the parties are closely related and

that applicant’s ‘PERMA LOK’ is confusingly similar to opposer’s trademarks

‘PERMACRYLIC’ and ‘LOCK AND KEY’ because it is ‘a combined portion of each’ of

opposer’s marks.”).

We hold that a likelihood of confusion claim based on the claimant’s use of two

marks conjointly must be pleaded clearly enough to provide fair notice of the claim to

11 See 4 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS & UNFAIR COMPETITION

§ 23:61.25 (5th ed. 2017) (discussing conjoint use and characterizing Schering-Plough and

Sperry Rand as “[t]wo leading examples of where the conjoint use rule has been successful”).

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Opposition No. 91215896

the defendant. Our holding is analogous to our familiar requirement that a plaintiff

must plead reliance on a family of marks. Cf. Wise F&I, LLC v. Allstate Ins. Co., 120

USPQ2d 1103, 1107 (TTAB 2016) (“A plaintiff must plead ownership of a family of

marks in its complaint in order to rely on the marks as a family as a basis for

sustaining the opposition at trial or in a motion for summary judgment.”); Productos

Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1927

(TTAB 2011) (“Petitioner’s reference to a family of marks in its brief will not be

considered because this claim was neither pleaded nor tried by the parties.”); Sunnen

Prods. Co. v. Sunex Int’l Inc., 1 USPQ2d 1744, 1747 n.12 (TTAB 1987) (treating

reference to unpleaded family of marks as if stricken from brief).

2. Conjoint Use Was Not Tried By Consent

We also find that a conjoint use claim was not tried by implied consent through

Applicant’s failure to object to evidence of conjoint use introduced in the trial

testimony of Opposer’s witness and exhibits. The testimony cited by Opposer does not

directly address the specific extent to which the two pleaded marks are used together.

The cited testimony and exhibits do establish use of both marks together, but this

evidence also is relevant to Opposer’s pleaded claim that confusion is likely as to each

of its marks individually. Thus, Opposer’s evidence was insufficient to put Applicant

on notice that Opposer was proffering it in support of a conjoint use claim. See, e.g.,

Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628, 1629 (TTAB 1998); see also

TBMP § 507.03(b) (June 2017) (“Fairness dictates whether an issue has been tried by

consent – there must be an absence of doubt that the nonmoving party is aware that

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Opposition No. 91215896

the issue is being tried.”). Applicant therefore had no obligation to object during

Ms. Bell’s deposition.

3. In the Alternative, Opposer Did Not Prove the Extent of Its

Conjoint Use

Even were we to find that Opposer need not have pleaded the conjoint use claim

it asserted at trial or that such a claim was tried by consent, Opposer did not establish

through record evidence that use of its pleaded marks together has been effective to

qualify them for conjoint analysis. The two prerequisites for this showing are stated

as follows in Schering-Plough, 84 USPQ2d at 1326:

In order that opposer’s marks may be considered together,

two elements must be satisfied before traditional likelihood

of confusion analysis can proceed. First, it must be

established that the marks have been and are being used

together on a single product or in marketing. See H.D.

Hudson Manufacturing Co. v. Food Machinery and

Chemical Corp., 230 F.2d 445, 109 USPQ 48 (CCPA 1956);

and Simoniz Company v. Hysan Products Company, 142

USPQ 377 (TTAB 1964). Further, it must be established

that opposer’s marks are used in such a fashion that it

would be proper to combine them for purposes of

comparison, that is, that they have been used and/or

advertised conjointly in such a manner and to such an

extent in connection with a single product that they have

come to be associated together, in the mind of the

purchasing public, as indications of origin for opposer’s

product. (citations omitted).

Opposer satisfied the first element of the test by submitting marketing and

promotional materials displaying both marks, including, for example, the truck wrap

shown supra and the following:

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Opposition No. 91215896

12

13 14

12 Exhibit 11 to Laura Bell Tr. and testimony at 27:3-29:10, 42 TTABVUE 29-31, 133

(promotional material for event at a Hy-Vee grocery store).

13 Id., Exhibit 17 and testimony at 39:15-40:4, 42 TTABVUE 41-42, 151 (ad that ran in August

2009 and August 2010 issues of REVIEW MAGAZINE, distributed in Southwest Michigan).

14 Id., Exhibit 41 and testimony at 72:12-75:6, 42 TTABVUE 74-77, 223 (screen shots showing

promotional stickers from Opposer’s Facebook pages).

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Opposition No. 91215896

Opposer has not, however, met the second element of the test by establishing that

its marks “have been used and/or advertised conjointly in such a manner and to such

an extent in connection with a single product that they have come to be associated

together, in the mind of the purchasing public, as indications of origin for opposer’s

product.” Schering-Plough, 84 USPQ2d at 1326. Apart from its vehicle wraps,

Opposer’s evidence of use of its two pleaded marks together generally represents

discrete instances, comprising ads from three magazine issues;15 a digital billboard

in Alexandria, Michigan;16 and photos and testimony concerning four beer festivals,

although Opposer’s witness did testify that some elements are typical of Opposer’s

use at other beer festivals.17

Missing from Opposer’s proof is sufficient evidence that its two marks have been

used conjointly to such an extent that together they have come to indicate source.

Even for the evidence displaying both marks, there is no reason to assume that

purchasers would see them as anything other than two distinct marks. See, e.g.,

Simoniz Co., 142 USPQ at 378 (declining to assume that a customer would

automatically combine parts of two marks appearing together on a product label). In

contrast, the plaintiff in Sperry Rand showed that it “has consistently displayed

conjointly its marks and trade names ‘REMINGTON’, ‘REMINGTON RAND’ and

15 Id., Exhibit 15 and testimony at 38:7-38:9, 42 TTABVUE 39-40, 144 (ad from October 2009

issue of ENCORE magazine).

16 Id., Exhibit 21 and testimony at 42:12-20, 42 TTABVUE 44, 155 (image from digital

billboard in Alexandria, Michigan).

17 Id., Exhibits 32-34 and testimony at 58:7-62:8, 42 TTABVUE 60-64, 198-205 (pictures of

sailboat turned into beer dispenser displaying both marks that was used at two festivals in

2015 and other uses of both marks at festivals, e.g., on kegs, draft boxes, and token tubs).

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Opposition No. 91215896

‘UNIVAC,’” 172 USPQ at 416, while the plaintiff in Schering-Plough submitted

testimony that it never used its pleaded mark AIR-PILLO without its house mark

DR. SCHOLL’S, 84 USPQ2d at 1327. See also Am. Cyanamid Co. v. J. Josephson,

Inc., 192 USPQ 765, 767 (TTAB 1976) (noting that an estimated 95 percent of

opposer’s advertising and promotional materials jointly featured its pleaded conjoint

marks). More comprehensive evidence of joint use than Opposer submitted would be

necessary to provide supporting context for a successful conjoint use claim.

In sum, we find that Opposer has waived its claim that Applicant’s mark is likely

to cause confusion with its mark BOTTLING INNOVATION SINCE 1895, and that

Opposer failed to plead or, in the alternative, to prove a conjoint use claim. Thus,

under the first du Pont factor, we assess only the similarity of Applicant’s mark

INNOVATION BREWING to Opposer’s mark INSPIRED BREWING.

4. Similarity of INNOVATION BREWING to INSPIRED BREWING

In a likelihood of confusion analysis, we compare the marks in their entireties for

similarities and dissimilarities in appearance, sound, connotation and overall

commercial impression. Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison

Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (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) (quotation omitted).

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Opposition No. 91215896

Where, as here, the marks are used in association with identical goods, the degree

of similarity between the marks necessary to support a determination that confusion

is likely declines. Bridgestone Ams. Tire Operations LLC v. Fed. Corp., 673 F.3d 1330,

102 USPQ2d 1061, 1064 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century

Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).

Both marks consist of a lead word starting with IN- followed by the same

disclaimed word, BREWING, which is descriptive or generic in association with beer

and therefore entitled to relatively less weight in our analysis.18 See, e.g., In re Nat’l

Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“That a particular

feature is descriptive or generic with respect to the involved goods or services is one

commonly accepted rationale for giving less weight to a portion of a mark[.]”);

Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030,

1037 (TTAB 2016) (quoting Nat’l Data). Although the initial letters IN- lend some

similarity to the marks, INSPIRED and INNOVATION look and sound different

(INNOVATION is longer than INSPIRED, with no shared phonemes) and convey

different meanings. Opposer submitted the following definitions from the Merriam-

Webster online dictionary:

• inspired adjective

Simple Definition of INSPIRED

: very good or clever

: having a particular cause or influence

18 Generally, consumers are more inclined to focus on the first word in a trademark. See, e.g.,

Palm Bay Imps., 73 USPQ2d at 1692; Century 21, 23 USPQ2d at 1700; Presto Prods. Inc. v.

Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988).

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Opposition No. 91215896

Full Definition of INSPIRED

: outstanding or brilliant in a way or to a degree suggestive of divine

inspiration <gave an inspired performance>19

• innovation noun

Simple Definition of INNOVATION

: a new idea, device, or method

: the act or process of introducing new ideas, devices, or methods

Full Definition of INNOVATION

1 : the introduction of something new

2 : a new idea, method, or device : NOVELTY20

There simply is no overlap in the meanings of these two words. Opposer’s

argument that “[b]oth words have a similar connotation in, at a minimum, denoting

a positive attribute as applied to beer, such that they will be confused and mistaken

by consumers as one for the other or as coming from the same source, particularly

when combined with the identical word BREWING” is insufficient. Reply Brief at 2,

48 TTABVUE 8. Not all marks denoting positive attributes are confusingly similar.

We also disagree with Opposer that “inspired” suggests “a new way of doing things

or something that causes a person to do something new.” Opposer’s Brief at 21, 44

TTABVUE 28. There is no evidence that “inspired,” like “innovation,” conveys a

suggestion of novelty.

Paired with BREWING, the dictionary definitions of record show that INSPIRED

connotes beer that tastes very good, while INNOVATION connotes a new method of

brewing. Thus, the overall commercial impressions made by the marks as a whole are

dissimilar. Even bearing in mind that the required degree of similarity is lower

19 Opposer’s Notice of Reliance, Exhibit 4, 36 TTABVUE 27-33.

20 Id., Exhibit 5, 36 TTABVUE 34-42.

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Opposition No. 91215896

because the marks are used in association with identical goods, we find no support

for a conclusion that persons who encounter the marks would be likely to assume a

connection between the parties.

Considered in their entireties, we find that INSPIRED BREWING and

INNOVATION BREWING differ in sight, sound, meaning, and overall commercial

impression to an extent that the first du Pont factor, the similarity of the marks,

weighs heavily against a finding that confusion is likely.

V. Conclusion

We have carefully considered all arguments and evidence properly of record,

including any not specifically discussed herein, as they pertain to the relevant

likelihood of confusion factors. To the extent that any other du Pont factors for which

no evidence was presented by Applicant or Opposer nonetheless may be applicable,

we treat them as neutral.

Any of the du Pont factors may play a dominant role in our analysis, and in some

cases, a single factor is dispositive. Champagne Louis Roederer S.A. v. Delicato

Vineyards, 148 F.3d 1373, 47 USPQ2d 1459, 1460 (Fed. Cir. 1998) (holding that the

Board did not err in deciding likelihood of confusion based solely on dissimilarity of

marks, noting that “we have previously upheld Board determinations that one

DuPont factor may be dispositive in a likelihood of confusion analysis, especially

when that single factor is the dissimilarity of the marks”); Kellogg Co. v. Pack’em

Enters. Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991). We find this to be

such a case.

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Opposition No. 91215896

We have found that the parties’ goods, customers, and channels of trade are

identical; that beer is inexpensive and subject to impulse purchase; and that

Opposer’s marks are afforded the normal scope of protection to which inherently

distinctive marks are entitled. Nonetheless, on the record before us, we find that the

dissimilarity of the marks INSPIRED BREWING and INNOVATION BREWING in

appearance, sound, connotation, and overall commercial impression outweighs the

other du Pont factors. For that reason, we find the first du Pont factor to be outcome-

determinative.

Considering the record evidence as a whole, we find that Opposer has not carried

its burden to establish by a preponderance of the evidence that Applicant’s mark

INNOVATION BREWING is likely to cause consumer confusion with Opposer’s mark

INSPIRED BREWING in association with beer.

Decision: The opposition to registration of application Serial No. 85929587 is

dismissed.

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