Iron Balls International Ltd. v. Bull Creek Brewing, LLC

THIS OPINION IS A

PRECEDENT OF THE TTAB

Hearing: February 13, 2024 Mailed: June 4, 2024

UNITED STATES PATENT AND TRADEMARK OFFICE

_____

Trademark Trial and Appeal Board

_____

Iron Balls International Ltd.

v.

Bull Creek Brewing, LLC

_____

Cancellation No. 92079099

_____

Jessica Bromall Sparkman and Rod S. Berman of Jeffer Mangels Butler & Mitchell

LLP, for Iron Balls International Ltd.

John L. DuPré and Daniel A. Fleisher of Hamilton, Brook, Smith & Reynolds, P.C.,

for Bull Creek Brewing, LLC.

_____

Before Greenbaum, Heasley, and English,

Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:1

Respondent Bull Creek Brewing, LLC owns a Principal Register registration for

the mark IRON BALLS, in standard characters, for “beer,” in International Class 32.2

1 As part of an internal Board pilot citation program on broadening acceptable forms of legal

citation in Board cases, this decision varies from the citation form recommended in the

TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 101.03 (2023). This

decision cites decisions of the U.S. Court of Appeals for the Federal Circuit and the U.S. Court

of Customs and Patent Appeals by the page(s) on which they appear in the Federal Reporter

(e.g., F.2d, F.3d, or F.4th). For decisions of the Board and the Director, this decision may cite

to the WESTLAW (WL) or LEXIS legal database. As of the date of this decision, the pilot is

ongoing, using various citation forms. Until further notice, practitioners should continue to

adhere to the citation form recommended in TBMP § 101.03.

2 Registration No. 4565000, issued July 8, 2014; renewed.

Cancellation No. 92079099

Petitioner Iron Balls International Ltd. seeks to partially cancel Respondent’s

registration under Trademark Act Section 18, 15 U.S.C. § 1068, by restricting

Respondent’s identification of goods from “beer” to “micro-brewed craft beer.”3

Petitioner claims that this restriction, if granted, will avoid a likelihood of confusion

between Respondent’s IRON BALLS mark and Petitioner’s applied-for mark,

for “gin” in International Class 33.4

In its Answer, Respondent denied the salient allegations of the petition for partial

cancellation.5 Both parties submitted briefs and appeared at an oral hearing.

I. Entitlement to a Statutory Cause of Action

To establish entitlement to bring a statutory cause of action, a plaintiff must

demonstrate: (i) an interest falling within the zone of interests protected by the

statute and (ii) a reasonable belief in damage proximately caused by the registration

or continued registration of the mark. Corcamore, LLC v. SFM, LLC, 978 F.3d 1298,

1303-05 (Fed. Cir. 2020); Meenaxi Enter., Inc. v. Coca-Cola Co., 38 F.4th 1067, 1070

3 Petition for Partial Cancellation, 1 TTABVUE.

4 App. Ser. No. 97263328, filed February 11, 2022 on the basis of intent to use under Section

1(b), 15 U.S.C. § 1051(b), asserting a bona fide intent to use the mark in commerce. According

to Petitioner’s pending suspended application, “the mark consists of the phrase ‘IRON

BALLS’ above the phrase ‘ENGINERED ALCOHOL,’ with a watermark behind the term

‘IRON’ consisting of a fanciful skull design with a crossed hammer and wrench and the

phrase ‘IRON BALLS ENGINEERED ALCOHOL’ encircling the skull design.” Color is not

claimed as a feature of the mark.

5 Answer, 4 TTABVUE.

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Cancellation No. 92079099

(Fed. Cir. 2022); Advance Mag. Publishers, Inc. v. Fashion Elecs., Inc., 2023 WL

4261426, at *2 (TTAB 2023).

In this case, Petitioner has shown that its first application to register

(with “ENGINEERED ALCOHOL”

disclaimed) for “gin,” filed on January 12, 2017, was refused registration by the

Trademark Examining Attorney based on a likelihood of confusion with Respondent’s

registered IRON BALLS mark for “beer.” Petitioner appealed the refusal to the

Board, which affirmed the refusal under Section 2(d), 15 U.S.C. § 1052(d), in a

decision issued on January 16, 2019.6

Five years later, on Feb. 11, 2022, Petitioner filed its current pending application

to register the same mark,

, for the same goods, “gin.”7 This

application encountered the same initial refusal based on likelihood of confusion with

Respondent’s IRON BALLS mark for “beer,”8 but was suspended due to Petitioner’s

Section 18 petition for partial cancellation, which Petitioner filed four days after its

application, on February 15, 2022.9

6 In re Iron Balls Int’l, Serial No. 87299536, 2019 WL 646091 (TTAB 2019) (nonprecedential),

17 TTABVUE 3-17.

7 App. Ser. No. 97263328.

8 10 TTABVUE 17-73.

9 May 25, 2023 Office Action suspending Application Ser. No. 97263328, 20 TTABVUE 137-

38.

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Cancellation No. 92079099

Petitioner’s evidence that its pending trademark application has been refused

registration based on Respondent’s registration demonstrates that Petitioner has a

real interest in the proceeding and a reasonable belief that it would be damaged by

the continued unrestricted registration of Respondent’s mark, thus establishing its

entitlement. “A petitioner may demonstrate a real interest and reasonable belief of

damage where the petitioner has filed a trademark application that is refused

registration based on a likelihood of confusion with the mark subject to cancellation.”

Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 1375

(Fed. Cir. 2020); see Covidien LP v. Masimo Corp., 2014 WL 977444, at *2-3 (TTAB

2014) (standing to seek relief under Section 18).

At oral argument, Respondent did not dispute Petitioner’s entitlement to bring

this proceeding under Section 18.

II. The Record

The record consists of the pleadings and, by operation of Trademark Rule 2.122(b),

37 C.F.R. § 2.122(b), the file of the registration sought to be restricted, Reg. No.

4565000 for the mark IRON BALLS for “beer.”

In addition, Petitioner introduced:

• The declarations of Romain Ambrunn, a director and partner of Petitioner, and

Philippe Bramaz, a partner and shareholder of Petitioner (8 TTABVUE, 9

TTABVUE);

● Petitioner’s notice of reliance on: Ser. No. 97263328 for IRON BALLS

ENGINEERED ALCOHOL & design and a portion of the application file associated

therewith (10 TTABVUE 17-73); Third-party registrations identifying craft beers and

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Cancellation No. 92079099

microbrew beers (10 TTABVUE 75-181); Petitioner’s discovery requests and

Respondent’s responses thereto (10 TTABVUE 182-292); Printed publications from

The Brewers Association, containing information about the meaning of craft and

micro-brewed beer, segments of the craft beer industry, and Respondent’s

membership in that association (10 TTABVUE 294-314); Printouts from the current

and prior versions of Respondent’s website (10 TTABVUE 315-317, 321-330);

Information about the Internet Archive (10 TTABVUE 319-320); Articles and

information about Respondent (10 TTABVUE 331-340); Articles relating to the

nature of craft and micro-brewed beer (10 TTABVUE 342-350, 414-443); Dictionary

definitions regarding the meaning of “craft beer,” “craft brewery,” “microbrewery,”

and “micro-brewed beer” (10 TTABVUE 352-412); and Excerpts from The New

Brewer: The Journal of the Brewers Association, (Vol. 39, No. 3, May/June 2022)

about craft brewers and microbreweries (10 TTABVUE 445-459).

Respondent introduced:

• The declaration of Erick Matthys, Respondent’s owner and founder, with

exhibits (16 TTABVUE);

• Respondent’s notice of reliance (15 TTABVUE) on:10 The Board’s decision in In

re Iron Balls Int’l, Serial No. 87299536, 2019 WL 646091 (TTAB 2019) (17 TTABVUE

3-17); Petitioner’s Application Ser. No. 87299536 application file (19 TTABVUE);

Petitioner’s Application Ser. No. 97263328 application file (20 TTABVUE 135-238);

10 Respondent re-introduced some evidence that Petitioner made of record during its trial

period. This was unnecessary and unhelpful. Once evidence is properly introduced it may be

relied on by any party for any purpose permitted under the Federal Rules of Evidence.

Trademark Rule 2.122(a), 37 C.F.R. § 2.122(a).

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Cancellation No. 92079099

Petitioner’s applications to register IRON BALLS for other goods not at issue here

(17 TTABVUE 19-77, 20 TTABVUE 1-133); Anheuser-Busch websites (17 TTABVUE

79-106); Department of Treasury “Number of Brewers by Production Size – CY 2021”

(17 TTABVUE 108); Documents relating to Ser. No. 87299536 and portions of the

application file therefor; websites from or about brewers and distillers (17 TTABVUE

110-130); and website articles about beer, craft beer and micro-brew beer (17

TTABVUE 132-181).

In rebuttal, Petitioner introduced:

• Petitioner’s rebuttal notice of reliance on: USPTO records of third-party

registrations identifying both beer and distilled spirits, but cancelled (22 TTABVUE

6-47); websites and USPTO records relating to third parties purportedly using the

same mark for both beer and distilled spirits (22 TTABVUE 48-394).

III. Discussion

A. Section 18 of the Trademark Act

Section 18 of the Trademark Act provides that “the Director may ... restrict or

rectify with respect to the register the registration of a registered mark....” 15 U.S.C.

§ 1068. This Section “gives the Board the equitable power to, inter alia, restrict the

goods or services identified in an application or registration.” Embarcadero Techs.,

Inc. v. RStudio, Inc., 2013 WL 2365029, at *2 (TTAB 2013) (internal punctuation

omitted). The primary purpose of a Section 18 amendment is to avoid a likelihood of

confusion by restricting a broad identification to the specific type of goods or services

for which the mark is actually used, or by restricting the channels of trade to those

in which the goods or services actually travel. See generally Eurostar v. “Euro-Star”

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Cancellation No. 92079099

Reitmoden GmbH & Co. KG, 1995 WL 231387 (TTAB 1994). A party seeking to

restrict a registrant’s broadly worded identification of goods under Section 18 must

plead and prove “(1) that the registrant is not using its mark on goods or services that

would be excluded by the limitation, and (2) that the limitation would result in the

avoidance of a finding of a likelihood of confusion.” Wellcome Found. Ltd. v. Merck &

Co., 1998 WL 239299, at *2 (TTAB 1998) (citing Eurostar, 1995 WL 231387), cited in

Orange Bang, Inc. v. Ole Mexican Foods, Inc., 2015 WL 5675641, at *9 (TTAB 2015);

Sage Therapeutics, Inc. v. SageForth Psych. Servs., LLC, 2024 WL 1638376, at *15-

17 (TTAB 2024); see generally TBMP § 309.03(d).

B. Summary of the Parties’ Arguments

Petitioner contends that restricting Respondent’s identification of goods from

“beer” to “micro-brewed craft beer” accurately identifies Respondent’s goods and

avoids a likelihood of confusion with Respondent’s IRON BALLS mark:

Micro-brewed craft beers come from breweries with very limited

production, and only a handful of the nearly 9,000 such breweries in the

United States are also offering gin. Even though both parties’ marks

include the term IRON BALLS, [because of] the differences in the parties’

goods, channels of trade and distribution, and the limited strength of

Respondent’s Mark, consumers are simply not likely to believe that a craft

micro-brewery is also producing “gin.”11

Respondent counters with three arguments. First, it maintains, the petition to

restrict Respondent’s identification of goods is barred by collateral estoppel. When

Petitioner’s first application was finally refused registration, it appealed to the Board,

which affirmed the refusal, and Petitioner did not seek further court review of that

Board decision. Respondent concludes that this satisfies the elements of collateral

11 Petitioner’s brief, 24 TTABVUE 5.

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Cancellation No. 92079099

estoppel, or issue preclusion, as the issue of likelihood of confusion was raised,

litigated, and necessarily determined in the prior Board proceeding, at which

Petitioner had a full and fair opportunity to litigate the issue. As the issue “has

already been adjudicated by the TTAB, Petitioner may not further pursue the matter

by a separate action arising out of a duplicative trademark application,” Respondent

concludes. “Accordingly, allegations in the present Petition for Partial Cancellation

are barred by the doctrine of collateral estoppel.”12

Second, Respondent argues:

Registrant’s goods are properly described as “beer.” The modifiers sought

to be added to the description of goods for the [subject Registration] include

a term (i.e., “micro-brewed”) that is erroneous with respect to Registrant’s

goods, and a term (i.e., “craft”) that has no meaningful definition, imparts

no commonly-accepted standard, and is quickly falling out of use in the

industry.13

Third, Respondent maintains, Petitioner’s proposed limitation does not avoid a

finding of likelihood of confusion, as the marks, channels of trade, and purchasers

would still be similar, and Respondent’s mark would remain strong.14 For these

reasons, Respondent concludes that the Petition to restrict its identification of goods

should be denied.

C. Whether Petitioner’s Claim is Barred by Collateral Estoppel (i.e.,

Issue Preclusion)

Sometimes two different tribunals are asked to decide the same issue.

When that happens, the decision of the first tribunal usually must be

followed by the second, at least if the issue is really the same. Allowing the

same issue to be decided more than once wastes litigants’ resources and

adjudicators’ time, and it encourages parties who lose before one tribunal

12 Respondent’s brief, 25 TTABVUE 11.

13 Respondent’s brief, 25 TTABVUE 19.

14 Respondent’s brief, 25 TTABVUE 12-17.

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Cancellation No. 92079099

to shop around for another. The doctrine of collateral estoppel or issue

preclusion is designed to prevent this from occurring.

B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 140 (2015).

The Trademark Act provides that estoppel, like other equitable principles, may be

considered and applied where applicable. 15 U.S.C. § 1069. “Agency adjudications at

the USPTO are entitled to res judicata and collateral estoppel effect.” In re Vox Populi

Registry Ltd., 25 F.4th 1348, 1352 n.2 (Fed. Cir. 2022) (citing B&B v. Hargis, 575 U.S.

at 160). The Board has accordingly applied res judicata based on a prior ex parte

decision to prevent an applicant from registering the same mark for the same goods

or services where there was no change in circumstances. In re Solarwindow Tech.,

Inc., 2021 WL 877769 (TTAB 2021).

More to the point, the Board has applied the doctrine of issue preclusion in an

inter partes proceeding following an ex parte proceeding in which a refusal of the

applicant’s prior application for the same mark and goods or services was affirmed.

Lukens Inc. v. Vesper Corp., 1986 WL 83308, at *2 (TTAB 1986) (“The underlying

rationale is that a party who has litigated an issue and lost should be bound by that

decision and cannot demand that the issue be decided over again.”). In that case, as

in this, the Board noted that:

the prior proceedings were ex parte in nature. We do not believe, however,

that this fact negates the preclusive effect of the prior judgment under the

circumstances of this case. Although opposer was a stranger to the prior ex

parte proceedings, opposer should be permitted to offensively plead issue

preclusion as to functionality since, in our mind, applicant had a “full and

fair opportunity” to litigate the issue of functionality in the ex parte

proceedings. See Blonder-Tongue Laboratories, Inc. v. University of Illinois

Foundation, 402 U.S. 313 … (1971); Parklane Hosiery Co. v. Shore, 439

U.S. 322 (1979); and State of Montana v. United States, 440 U.S. 147

(1979).

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Cancellation No. 92079099

Id. at *3, cited in In re Anderson, 2012 WL 680264, at *4 (TTAB 2012). McCarthy

agrees that “Under the modern view even a defendant not a party to the first case

can invoke collateral estoppel as a defense.” 6 J. MCCARTHY, MCCARTHY ON

TRADEMARKS AND UNFAIR COMPETITION § 32:83 (5th ed. Dec. 2023).

The doctrine of issue preclusion is applicable in the present case with respect to

one issue: the comparison of the marks. The prior ex parte appeal (1) presented an

identical issue of confusingly similar marks, which was (2) actually litigated and (3)

necessarily determined, and (4) the party defending against preclusion, Petitioner,

had a full and fair opportunity to litigate the issue. See Montana v. United States, 440

U.S. 147, 153-55 (1979); Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719

F.3d 1367, 1371 (Fed. Cir. 2013); Stephen Slesinger Inc. v. Disney Enters. Inc., 702

F.3d 640, 644 (Fed. Cir. 2012); Valvoline Licensing & Intell. Prop. LLC v. Sunpoint

Int’l Grp. USA Corp., 2021 WL 3164036, at *3 (TTAB 2021).

The doctrine must, however, be applied with caution. “Caution is warranted in the

application of preclusion by the PTO, for the purposes of administrative trademark

procedures include protecting both the consuming public and the purveyors.”

Mayer/Berkshire Corp. v. Berkshire Fashions Inc., 424 F.3d 1229, 1234 (Fed. Cir.

2005). Issue preclusion “serves, in certain circumstances, to bar the revisiting of

‘issues’ that have been already fully litigated.” Levi Strauss v. Abercrombie & Fitch,

719 F.3d at 1371 (internal citation and punctuation omitted). It does not bar issues

of fact and law that were not litigated and determined in the prior proceeding. Id.

Here, while the prior comparison of marks remains the same, the Petition for

partial cancellation of Respondent’s registration raises new issues that were neither

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Cancellation No. 92079099

litigated nor determined in the prior ex parte appeal: whether restricting

Respondent’s identification of goods from “beer” to “micro-brewed craft beer”

accurately describes Respondent’s goods, and whether this restriction would avoid a

likelihood of confusion between the parties’ marks.

The restriction would not affect the first DuPont factor, comparison of the parties’

marks, as they are the same marks addressed in the prior ex parte Board decision,

and there is no evidence that the proposed restriction would affect the relevant

public’s perception of the marks themselves.15 The doctrine of issue preclusion applies

to bar relitigation of the similarity of the marks.

However, Petitioner’s proposed restriction of goods raises new issues as to other

DuPont factors. In the prior ex parte decision, the Board considered the relatedness

of Petitioner’s “gin” and Respondent’s “beer,” explaining that “Registrant’s

identification is not limited to craft beer; registrant’s goods are considered to include

all types of beer sold through all normal channels of trade.”16 In assessing Petitioner’s

Section 18 claim, we must consider precisely the issue we did not decide in the ex

parte proceeding, namely, whether “gin” is related to “micro-brewed craft beer.” As

Petitioner argues, its proposed restriction from “beer” to “micro-brewed craft beer”

could also affect other DuPont factors, such as the channels of trade, the relevant

consumers’ sophistication and care, the commercial strength of Respondent’s mark,

and the extent of potential confusion. The doctrine of issue preclusion does not bar

litigation of these issues.

15 In re Iron Balls Int’l, 2019 WL 646091, 17 TTABVUE 6-9.

16 Id., 17 TTABVUE 15.

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Cancellation No. 92079099

In sum, we find that issue preclusion bars relitigation of the first DuPont factor

(although, for the sake of completeness, we will go over the Board’s previous decision

on this issue), but does not bar litigation of whether Respondent’s goods are “micro-

brewed craft beer” and whether this proposed restriction would affect other DuPont

factors, thereby avoiding a likelihood of confusion.

D. Whether Respondent’s Goods are “micro-brewed craft beer”

To show that its proposed restriction, “micro-brewed craft beer,” is an accepted

term for a type of beer, recognized by the USPTO, Petitioner submits printouts of 34

Principal Register registrations identifying “craft beer” and “micro-brewed beer.”17

Craft Beer

To show that Respondent Bull Creek Brewing is a craft brewery, brewing craft

beer, Petitioner submits the following evidence: Respondent sought certification as

an independent craft brewery from the Brewers Association, a nonprofit trade

association for the beer brewing industry.18 Respondent met the Brewers

Association’s definition of a “craft brewer”: it is (1) small, producing less than six

million barrels of beer a year, (2) independent, and (3) a brewer that has received a

Brewer’s Notice from the Alcohol and Tobacco Tax and Trade Bureau.19 It thus

obtained the right to use the Brewers Association’s Independent Craft Brewer Seal:

17 Petitioner’s notice of reliance (NOR), exs. 2-34, 10 TTABVUE 74-181; ex. 36, Respondent

admits that the Trademark Office accepts “craft beer” as an acceptable identification of goods.

Respondent’s Response to Request for Admission no. 23, 10 TTABVUE 195.

18 Petitioner’s NOR ex. 41, Brewers Association website, 10 TTABVUE 294.

19 Petitioner’s NOR ex. 42, Brewers Association website (brewersassociation.org), 10

TTABVUE 298, ex. 50, 10 TTABVUE 348; “What is a Craft Brewery?” (CraftBeer.com) ex.

64, 10 TTABVUE 442.

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Cancellation No. 92079099

20

According to The Brewers Association website, “[t]he independent craft brewer

seal is a certification mark confirming your brewery has a valid TTB Brewer’s Notice

and meets the Brewers Association’s definition of a U.S. craft brewer.” 21 “The seal

sends a ‘clear message to the beer drinker’ that a beer is made by a small and

independent brewer, explains Brewers Association Director Paul Gatza.”22

Respondent paid dues as a member of the Brewers Association’s smallest beer

production category: zero to 500 barrels per year.23 And it received the Brewers

Association’s license to use the independent craft brewer seal,24 which it displays on

its products.25 For example:

20Petitioner’s NOR ex. 41, Brewers Association website (brewersassociation.org), 10

TTABVUE 304.

21 Petitioner’s NOR ex. 41, Brewers Association website, 10 TTABVUE 304.

22 Petitioner’s NOR ex. 64, “What is a Craft Brewery?” (Craftbeer.com), 10 TTABVUE 443.

23 Petitioner’s NOR ex. 43, Brewers Association website, 10 TTABVUE 312.

24 Petitioner’s NOR ex. 43, 10 TTABVUE 307-311.

25 “Bull Creek Brewing is a member of the Brewers Association and carries the association’s

Independent Craft Brewers seal on its products.” Matthys decl. ¶ 30, 16 TTABVUE 9.

“Registrant responds that it has used the Brewers Association Independent Craft Brewer

Seal.” Petitioner’s NOR, ex. 40, Respondent’s Ans. to Int. 30, 10 TTABVUE 274.

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Cancellation No. 92079099

26 27

In its discovery responses, Respondent states that it meets the Brewers

Association requirements for being a ‘craft brewer,’ and that it has obtained the right

to use the Brewers Association Independent Craft Brewer Seal.28

Nonetheless, Respondent takes the position that:

while the Brewers Association sets forth a definition of a “craft brewer” for

the purposes of membership in its organization, there is no standard

definition of a “craft beer” in the industry. The term “craft” with respect to

beer had initially been adopted to indicate that the beer was produced

using higher-quality ingredients and/or in small batches. However, given

26 Matthys decl. ex. 14, 16 TTABVUE 83.

27 Matthys decl. ex. 3, 16 TTABVUE 26.

28 Petitioner’s NOR, Respondent’s Ans. to Int. 29, 32, 10 TTABVUE 273, 275.

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Cancellation No. 92079099

the ubiquity of the term “craft” with respect to beer on the market today,

the term is now antiquated.29

Respondent points to the multiplicity of diverging dictionary definitions of “craft

beer” proffered by Petitioner:30

• “A distinctively flavored beer that is brewed and distributed regionally. Also

called craft brew, microbrew.” —American Heritage Dictionary.31

• “An all-malt or nearly all-malt specialty beer usually brewed in a small,

regional brewery.” —Dictionary.com.32

• “A specialty beer produced in limited quantities: microbrew.” —Merriam-

Webster Dictionary.33

• “A beer made in a traditional or non-mechanized way by a small brewery” —

Lexico.com.34

• “Craft beer is a beer that has been made by craft breweries. They produce

smaller amounts of beer, typically less than large breweries, and are often

independently owned. … . The definition is not entirely consistent but typically

applies to relatively small, independently owned commercial breweries that

employ traditional brewing methods and emphasize flavor and quality.” —

29 Matthys decl. ¶ 33, 16 TTABVUE 9-10. See Respondent’s Notice of Reliance (NOR) ex. 15,

What is the Definition Of Craft Beer? Vinepair.com, “[D]efining craft beer is hard to do.” 17

TTABVUE 148; ex. 16, Why Did People Stop Saying ‘Microbrew’ And Start Calling it ‘Craft

Beer’? FoodRepublic.com, “It’s the same fate that befell ‘micro-brewery.’ Smaller breweries in

the U.S. make such a wide variety of beers in myriad styles with an unprecedented array of

ingredients and techniques that ‘craft’ just doesn’t do it anymore — or, at least, it does it

better than ‘micro,’ but it’s just kind of pointless given the diversity out there.” 17 TTABVUE

158; ex. 17, How Craft Became Craft, AllAboutBeer.net, “When consumers tour the Dogfish

Head brewery, one of the first things they hear is the Brewers Association definition of craft

beer.” 17 TTABVUE 169; ex. 18, What is craft Beer, Really? WineMag.com, (addressing the

evolution of the term “craft beer”).

30 Respondent’s brief, 25 TTABVUE 18.

31 Petitioner’s NOR, AHDictionary.com, ex. 51, 10 TTABVUE 353.

32 Petitioner’s NOR, Dictionary.com, ex. 54, 10 TTABVUE 360.

33 Petitioner’s NOR, Merriam-Webster.com, ex. 55, 10 TTABVUE 368.

34 Petitioner’s NOR, Lexico.com, ex. 57, 10 TTABVUE 381.

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Cancellation No. 92079099

Wikipedia.35

Indeed, a site Petitioner quotes notes that:

Craft brewing is the pursuit of small, independent commercial breweries,

making beer by largely traditional means and with largely traditional

ingredients, with the goal of making beer that is far more flavorful than

the common brands made by large international breweries. As is often the

case with cultural movements, there is no single definition of the

terminology upon which everyone will agree.36

Petitioner correctly observes, however, that “[a]lthough the definitions are not

identical, and although they use different language to do so, they all define ‘craft beer’

as coming from … small regional or limited production breweries. … And the evidence

also establishes that Respondent fits squarely within all of the definitions of ‘craft

beer’ and ‘craft brewing’ reflected in the record.”37 “[A]ny argument that Respondent

is not a craft brewery – and that its beer is not ‘craft beer’ – is foreclosed by

Respondent’s representations that it is a craft brewery and its use of the Independent

Craft Brewer Seal.”38 On consideration of all the evidence, we agree with this

analysis, and find that Respondent’s beer is craft beer.

Microbrewed Beer

Petitioner’s contention that Respondent’s beer is “microbrewed” is also correct—

insofar as Respondent produces a small, limited output of beer.

The Brewers Association treats microbreweries as a subset of craft brewers:

35 Petitioner’s NOR, ex. 61 en.wikipedia.org, 10 TTABVUE 394-95.

36 Petitioner’s NOR, BeerAndBrewing.com/dictionary ex. 59, 10 TTABVUE 385 (emphasis

added).

37 Petitioner’s reply brief, 26 TTABVUE 7-8.

38 Petitioner’s brief, 24 TTABVUE 9.

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Cancellation No. 92079099

39

The Brewers Association defines a “microbrewery” as “[a] brewery that produces

less than 15,000 barrels of beer per year and sells 75 percent or more of its beer off

site.”40 This dual qualification has been recognized in some articles about the

industry. For example: “A microbrewery is classified by the number of beer barrels it

produces in a year, which is a limit of 15,000 barrels of beer per year, and at least 75

percent of that beer must be sold outside of the brewery.”— CraftBeerClub.com.41

Respondent admits that it produces fewer than 15,000 barrels of beer per year.42

In fact, as noted, it paid dues to the Brewers Association commensurate to its limited

production: 0 to 500 barrels per year.43 However, Respondent sells less than 75% of

its beer off site. In its discovery responses, it declares that “For the current year the

39 Petitioner’s NOR, ex. 49, 10 TTABVUE 343 (brewersassociation.org/statistics-and-

data/national-beer-stats/).

40 Petitioner’s NOR, ex. 50, (brewersassociation.org) 10 TTABVUE 349.

41Petitioner’s NOR, ex. 62, “What is the Difference Between a Craft Brewery and a

Microbrewery?” (craftbeerclub.com/blog) 10 TTABVUE 414.

42 Petitioner’s NOR, Respondent’s Ans. to Int. 8: “Registrant does produce less than 15,000

barrels of beer per year,” 10 TTABVUE 265; Respondent’s Response to Request for Admission

no. 12, admitting that Respondent produces fewer than 15,000 barrels of beer per year. 10

TTABVUE 193.

43 Petitioner’s NOR, ex. 43, 10 TTABVUE 312.

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percentage of Registrant’s beer that is sold ‘off-site’ to retailers or sold ‘onsite’ for off-

site consumption is 53%.”44

For this sole reason—its low percentage of beer sales off-site—Respondent

maintains that it is not a microbrewery.45 As it states in answer to one of Petitioner’s

interrogatories:

INTERROGATORY NO. 34: The Brewers Association defines a

“microbrewery” as a brewery that produces fewer than 15,000 barrels of

beer per year and sells 75 percent or more of its beer off-site. If you contend

that Respondent does not meet this definition of “microbrewery,” state the

facts that support such contention.

RESPONSE TO INTERROGATORY NO. 34: Registrant objects to this

Interrogatory as irrelevant and not likely to lead to the discovery of

relevant information. Subject to the General Objections and Qualifications

listed above, Registrant responds that it does not meet the requirements

for being considered a “microbrewery” by the Brewers Association, at least

because it does not sell 75% or more of its beer off-site.46

Before Petitioner initiated this proceeding, Respondent’s website stated that it

was a microbrewery: “Bull Creek is a production micro-brewery and not a brewpub

44 Respondent’s Ans. to Int. 10, 10 TTABVUE 266.

45 “Registrant does not qualify as a microbrewery. In particular, Registrant does not sell 75%

or more of its beer off site. Thus, an application of the modifier ‘micro-brewed’ to Registrant’s

goods would be an incorrect description of Registrant and Registrant’s beer and is erroneous

under Petitioner’s own adopted definition for the term.” Respondent’s brief, 25 TTABVUE

17-18.

46 Respondent’s Ans. to Int. 34, 10 TTABVUE 276. See also Matthys decl. ¶ 31, 16 TTABVUE

9 (“Under the paradigm set forth by the Brewers Association, Bull Creek Brewing does not

qualify as a Microbrewery. ln particular, Bull Creek Brewing does not sell 75 percent or more

of its beer off-site.”).

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Cancellation No. 92079099

as distinguished by Texas State law.”47 Respondent admits that “at the time the

Petition in this matter was filed, the website at bullcreekbrewing.com identified

Respondent as a ‘micro-brewery.’”48 Petitioner further avers that “Respondent

continued to identify itself as a ‘micro-brewery’ until well after this proceeding was

filed” on February 15, 2022.49

Respondent protests that “the contents of the website at bullcreekbrewing.com

were edited to remove reference to a ‘micro-brewery’ as Registrant’s brewery no

longer qualified as a ‘micro-brewery’ according to the definition of a ‘microbrewery’ as

set forth by the Brewers Association.”50 Moreover, Respondent insists, “there is no

standard definition in the field of a ‘micro-brewery.’”51

Petitioner answers that the Brewers Association “definition is an outlier and the

off-site sales requirement does not reflect consumers’ understanding of the meaning

of ‘micro-brewery’ but rather reflects an industry technicality with [which] consumers

are not likely to be familiar.”52

47 Ex. 45, 10 TTABVUE 316-17 (June 18, 2021 webpage capture retrieved via Archive.org).

Petitioner’s NOR, ex. 36, Respondent’s Response to Request for Admission no. 7, 10

TTABVUE 192.

48Petitioner’s NOR, ex. 36, Respondent’s Response to Request for Admission no. 6, 10

TTABVUE 192.

49 Petitioner’s reply brief, 26 TTABVUE 11.

50 Respondent’s Ans. to Int. 27, 10 TTABVUE 273.

51 Respondent’s Ans. to Int. 24, 10 TTABVUE 272.

52 Petitioner’s reply brief, 26 TTABVUE 11.

Petitioner adds: “The Brewers Association now defines Respondent as a ‘taproom brewery,’

as shown on Respondent’s listing in The Brewers Association member directory. See NOR,

Exh. 44 (10 TTABVUE 314). The Brewers Association defines a ‘taproom brewery’ as a

‘professional brewery that sells 25% or more of this beer on-site and does not operate

significant food services. The beer is brewed primarily for sale in the taproom, and is often

dispensed directly from the brewery’s storage tanks. Where allowed by law, taproom

breweries often sell beer to-go and/or distribute to off-site accounts.’ Petitioner submits that

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Cancellation No. 92079099

Instead, Petitioner maintains, the question is whether relevant consumers have

an understanding of what a term means; the Board has routinely found that

dictionary definitions, journals, newspapers, and other publications suffice to show

the relevant purchasing public’s understanding of a particular term.53 To this end,

Petitioner cites dictionaries and other sources, most of which primarily define a

“microbrewery” in terms of its limited output:

• “A small brewery, generally producing fewer than 15,000 barrels of beer and

ale a year and frequently selling its products on the premises.”—American

Heritage Dictionary.54

limiting the [4565000] Reg. to “taproom brewed craft beer” would avoid a likelihood of

confusion for the same reasons that limiting the [4565000] Reg. to “micro-brewed craft beer”

would avoid a likelihood of confusion.” Petitioner’s brief, 24 TTABVUE 11 n.34.

Respondent responds: “Bull Creek Brewing appears categorized as a Taproom Brewery in the

Brewers Association publications; however, Bull Creek Brewing does not qualify as a

Taproom Brewery as defined, because it does not dispense beer directly from storage tanks

for consumption in the taproom.” Matthys decl. ¶ 31, 16 TTABVUE 9.

The issue framed by the pleadings and the record is whether Respondent’s goods can be

characterized as “micro-brewed craft beer,” not whether Respondent could be characterized

as a “taproom.” See Petition for Partial Cancellation, 1 TTABVUE. Nor do we regard this

issue as having been tried by implied consent under Fed. R. Civ. P. 15(a)(2). Implied consent

to the trial of an unpleaded issue can be found only where the nonoffering party (1) raised no

objection to the introduction of evidence on the issue, and (2) was fairly apprised that the

evidence was being offered in support of the issue. Fairness considerations are paramount in

assessing whether an issue has been tried by implied consent -- there must be an absence of

doubt that the non-offering party is aware that the issue is being tried. Productos Lacteos

Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 2011 WL 2161071, at *3 (TTAB 2011),

aff’d, 188 F. Supp. 3d 22 (D.D.C. 2016), aff’d, 743 F. App’x 457 (D.C. Cir. 2018); see TBMP

§ 507.03(b). Here, Petitioner did not move to amend its Petition for Partial Cancellation to

plead that Respondent operates a taproom, and gave no indication that this evidence would

be used in support of such a claim until it submitted its brief. For these reasons, we do not

address this unpleaded issue.

53 Petitioner’s reply brief, 16 TTABVUE 7 (citing In re Dial-A-Mattress Operating Corp., 240

F.3d 1341 (Fed. Cir. 2001)).

54 Petitioner’s NOR, ex. 52, AHDictionary.com, 10 TTABVUE 357.

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Cancellation No. 92079099

• “A brewery producing less than 15,000 barrels per year and usually

concentrating on exotic or high quality beer.”—Dictionary.com.55

• “a small brewery making specialty beer in limited quantities”—Merriam-

Webster.56

• “A limited-production brewery, typically producing specialty beers and often

selling its products only locally” —Lexico.com.57

• “The term [microbrewery] and trend spread to the US in the 1980s and was

eventually used as a designation of breweries that produce fewer than 15,000

U.S. beer barrels (1,800,000 liters; 460,000 U.S. gallons) annually.”—

Wikipedia.58

• “Although the term is fading from use, the Brewers Association in the United

States continues to define a microbrewery as a brewery producing less than

17,600 hi (15,000 US barrels) per year.”—BeerAndBrewing.com.59

We acknowledge that those in the beer industry—brewers, distributors, and

retailers—would be cognizant of the Brewers Association definition. The pertinent

question, however, is how the relevant public, adults who purchase and consume

alcoholic beverages, would perceive Respondent. This relevant public could include

some aficionados familiar with industry standards, but it would also include

consumers who are not particularly sophisticated. See Somerset Distilling Inc. v.

Speymalt Whisky Dist. Ltd., 1989 WL 274426, at *3 (TTAB 1989). These consumers

would tend to see Respondent as it is: a brewer with an admittedly limited, small

batch output. Under the dictionary definitions, that is the epitome of a microbrewery.

55 Petitioner’s NOR, ex. 54, Dictionary.com 10 TTABVUE 364.

56 Petitioner’s NOR, ex. 56, Merriam-Webster.com, 10 TTABVUE 374.

57 Petitioner’s NOR, ex. 58, Lexico.com,10 TTABVUE 383.

58 Petitioner’s NOR, ex. 61 wikipedia.org, 10 TTABVUE 395.

59 Petitioner’s NOR, ex. 60, BeerAndBrewing.com/dictionary 10 TTABVUE 392.

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Cancellation No. 92079099

The issue to most of the relevant public is not the quality or craftsmanship of

Respondent’s beer, or the extent to which its beer is sold on-site or off-site, but rather

its limited production, a fact Respondent concedes. Petitioner claims that this limited

production is inconsistent with also offering distilled spirits. That is the gravamen of

Petitioner’s Section 18 claim, and the necessary focus of this case.

In the final analysis, based on the definitions of record, we find that members of

the consuming public would tend to regard Respondent, in common parlance, as a

craft microbrewery, and its goods as “micro-brewed craft beer.” The central issue is

whether this proposed restriction would avert a likelihood of confusion.

E. Whether Petitioner’s Proposed Restriction to “micro-brewed

craft beer” Would Avoid a Likelihood of Confusion

“In order to succeed in restricting a registration by using the provisions of Section

18, the plaintiff or counterclaim plaintiff must show that the entry of the proposed

restriction to the goods in the defendant’s registration will avoid a finding of

likelihood of confusion….” Orange Bang v. Ole Mexican Foods, 2015 WL 5675641, at

*9.

To determine whether the proposed modification in this case would avoid a

likelihood of confusion under Section 2(d), 15 U.S.C. § 1052(d), we analyze the

evidence and arguments under the DuPont factors. In re E. I. du Pont de Nemours &

Co., 476 F.2d 1357, 1361 (CCPA 1973), cited in B&B Hardware, v. Hargis, 575 U.S.

at 144. In so doing, we consider each DuPont factor for which there is evidence and

argument. In re Guild Mortg. Co., 912 F.3d 1376, 1379 (Fed. Cir. 2019). Only the

DuPont factors of significance to the particular case need be considered in the

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Cancellation No. 92079099

likelihood of confusion analysis. Naterra Int’l, Inc. v. Bensalem, 92 F.4th 1113, 1119

(Fed. Cir. 2024).

1. Similarity of The Marks

Under the first DuPont factor, we consider “[t]he similarity or dissimilarity of the

marks in their entireties as to appearance, sound, connotation and commercial

impression.” DuPont, 476 F.2d at 1361.

Respondent’s registered mark is IRON BALLS, and Petitioner’s applied-for mark

is . Petitioner argues that its added words

“ENGINEERED ALCOHOL” and design element suffice to distinguish the marks.60

The marks, however, are the same as they were when the Board affirmed the refusal

to register Petitioner’s mark in In re Iron Balls Int’l, Serial No. 87299536, 2019 WL

646091 (TTAB 2019), 17 TTABVUE 3-17. And there is no evidence that the proposed

restriction would affect the relevant public’s perception of the marks. Consequently,

as we have noted, issue preclusion bars relitigation of the first DuPont factor. Still,

for the sake of completeness, we go over the Board’s prior decision on this factor.

As the Board correctly observed, Respondent’s entire mark is IRON BALLS. “The

most notable part of Applicant’s [Petitioner’s] mark is the wording IRON BALLS,

which dominates Applicant’s mark by standing out in very large lettering.” Id. at *2.

Likelihood of confusion has been found where the entirety of one mark is

encompassed by another. Id. (citing, inter alia, Wella Corp. v. Calif. Concept Corp.,

558 F.2d 1019 (CCPA 1977) (CALIFORNIA CONCEPT and surfer design for men’s

60 Petitioner’s brief, 24 TTABVUE 16; Petitioner’s reply brief, 26 TTABVUE 22.

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Cancellation No. 92079099

cologne, hair spray, conditioner and shampoo likely to cause confusion with the mark

CONCEPT for cold permanent wave lotion and neutralizer)). See also Coca-Cola

Bottling Co. v. Joseph E. Seagram and Sons, Inc., 526 F.2d 556, 557-58 (CCPA 1975)

(applicant’s mark BENGAL LANCER for club soda, quinine water and ginger ale

similar to BENGAL for gin).

Moreover, the Board noted, “[t]he marks are similar in that both marks contain

the wording IRON BALLS, which is the first term (and most prominent in size) in

Applicant’s mark. The first term in a mark often dominates its overall impression.”

2019 WL 646091 at *3 (citing inter alia Palm Bay Imps., Inc. v. Veuve Clicquot

Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372-73 (Fed. Cir. 2005) (“The

presence of this strong distinctive term as the first word in both parties’ marks

renders the marks similar, especially in light of the largely laudatory (and hence non-

source identifying) significance of ROYALE.”)); see also In re Detroit Athl. Co., 903

F.3d 1297, 1303 (Fed. Cir. 2018) (“The identity of the marks’ initial two words is

particularly significant because consumers typically notice those words first.”). In

addition, the Board found, IRON BALLS is a standard character mark, which may

be displayed in the same lettering style as in Petitioner’s mark. 2019 WL 646091, at

*3. See Trademark Rule 2.52(a), 37 C.F.R. § 2.52(a).

The Board’s reasoning in the prior decision anticipates Petitioner’s attempts to

distinguish the marks here:

While we must consider the marks in their entireties, it is entirely

appropriate to accord greater importance to the more distinctive elements

in the marks than to the less distinctive elements in determining whether

the marks are similar. In re Nat’l Data Corp., 753 F.2d 1056, [1058] (Fed.

Cir. 1985) (“[T]here is nothing improper in stating that, for rational

reasons, more or less weight has been given to a particular feature of a

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Cancellation No. 92079099

mark, provided the ultimate conclusion rests on consideration of the marks

in their entireties.”). When a mark comprises both words and a design, the

words are normally accorded greater weight because they are more likely

to be impressed upon a purchaser’s memory and would typically be used

by purchasers to request the goods or services. See In re Viterra, 671 F.3d

1358, [1362] (Fed. Cir. 2012).

Id. at *2.

As the Board found in the prior decision, the wording “ENGINEERED

ALCOHOL” in Petitioner’s mark is subordinate to IRON BALLS—subordinate in

placement, subordinate in size, and subordinate in meaning, as the wording merely

describes a feature of Petitioner’s gin.61 “Merely descriptive terms in a mark do little

to distinguish one mark from the other. Thus, while we may not ignore

ENGINEERED ALCOHOL in Applicant’s mark, we find this wording to be

subordinate to IRON BALLS.” Id. at *3. See Nat’l Data, 753 F.2d at 1058 (“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 . . . .”).

As the Board concluded in the prior decision, Petitioner’s and Respondent’s marks

are “similar in appearance, sound, meaning and commercial impression when the

marks are considered in their entireties. The dominant wording of [Petitioner’s] mark

is the entirety of [Respondent’s] mark and the additional characteristics of

61 In Petitioner’s pending suspended application, as in its prior appealed application, the

Examining Attorney required Petitioner to disclaim “ENGINEERED ALCOHOL” as merely

descriptive. Application Serial No. 97263328, Nov. 28, 2022 Office Action, Petitioner’s NOR

ex. 1, 10 TTABVUE 25. Before responding to that disclaimer requirement, Petitioner

requested suspension of its current application pending disposition of this proceeding for

partial cancellation. Application Serial No. 97263328, April 26, 2023 Response to Office

Action. Nonetheless, as we determined in the prior appeal, the subject phrase is merely

descriptive and subordinate to the dominant component of Petitioner’s mark, IRON BALLS.

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Cancellation No. 92079099

[Petitioner’s] mark do little to change the similar appearance, sound, meaning and

commercial impression caused by this shared wording.” Id. at *4. The first DuPont

factor weighs in favor of a likelihood of confusion.

2. Strength or Weakness of Respondent’s IRON BALLS Mark

Under the fifth DuPont factor, we consider the fame or strength of Respondent’s

registered mark, and under the sixth DuPont factor we consider the extent to which

that strength may be attenuated by “[t]he number and nature of similar marks in use

on similar goods.” DuPont, 476 F.2d at 1361.62 A mark’s strength varies along a

spectrum from very strong to very weak. Joseph Phelps Vineyards, LLC v. Fairmont

Holdings, LLC, 857 F.3d 1323, 1325 (Fed. Cir. 2017). The mark’s placement along

that spectrum affects the scope of protection to which it is entitled. Monster Energy

Co. v. Lo, 2023 WL 417620, at *9 (TTAB 2023), civ. action filed, No. 5:23-cv-00549-

GW-PVC (C.D. Cal. Mar. 28, 2023).

“There are two prongs of analysis for a mark’s strength …: conceptual strength

and commercial strength.” Spireon, Inc. v. Flex Ltd., 71 F.4th 1355, 1362 (Fed. Cir.

2023). “Conceptual strength is a measure of a mark’s distinctiveness, and

distinctiveness is often classified in categories of generally increasing

distinctiveness[:] … (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or

(5) fanciful.” Id. (cleaned up). “Commercial strength, on the other hand, is the

62 Generally, under the fifth and sixth DuPont factors, we consider the strength or weakness

of the plaintiff’s mark. In this case, though, where the plaintiff/Petitioner seeks to avoid a

likelihood of confusion by restricting defendant/Respondent’s goods under Section 18, we

focus on the defendant’s mark.

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Cancellation No. 92079099

marketplace recognition value of the mark.” Id. at 1363 (internal citation and

punctuation omitted).

Petitioner argues that Respondent’s admittedly limited production of “micro-

brewed craft” beer renders its IRON BALLS mark commercially weak. Specifically,

Petitioner argues that Respondent “produces only approximately 200 barrels of beer

a year, of which only a fraction bears Respondent’s Mark. It has never been sold

outside of Texas.”63 This argument is unpersuasive. Under the fifth DuPont factor,

“the fame of a registered mark is relevant to likelihood of confusion, DuPont, 476 F.2d

at 1361… (factor five).” In re Majestic Distilling Co., 315 F.3d 1311, 1317 (Fed. Cir.

2003). The Federal Circuit, however, has expressly declined to “establish the converse

rule that likelihood of confusion is precluded by a registered mark’s not being

famous.” Id. Accordingly, even if the distribution of Respondent’s beer has not been

widespread, that has “little probative value” in the strength analysis.

Respondent points out that it obtained its registration for IRON BALLS “on July

8, 2014, and has used its mark in commerce in connection with beer since at least

May 20, 2014, or for over nine years. Registrant’s mark is incontestable.”64 But

Petitioner correctly responds that the registered mark’s incontestable status does not

render it commercially strong. See In re Fat Boys Water Sports LLC, 2016 WL

3915986, at *9 n.25 (TTAB 2016).

On the other hand, Petitioner has not introduced evidence of third-party

registrations or use of similar marks for similar goods. See Monarch Wine Co. v. Hood

63Petitioner’s brief, 24 TTABVUE 15. See Petitioner’s NOR ex. 65, 10 TTABVUE 459,

Respondent’s Ans. to Int. 11, 13, 10 TTABVUE 266-67.

64 Respondent’s brief, 25 TTABVUE 16-17.

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Cancellation No. 92079099

River Dist., Inc., 1977 WL 22627, at *2 (TTAB 1977) (“While applicant contends that

‘MONARCH’ is a weak mark, and, therefore, can be afforded only a limited or narrow

scope of protection, there is no evidence of record to indicate that the designation

‘MONARCH’ is a common or ‘weak’ term as far as its use in association with products

in the alcoholic beverage field is concerned.”). Consequently, Petitioner has not shown

that Respondent’s mark is “weak” in the sense used in the sixth DuPont factor—that

is, showing that similar marks in use on similar goods have diffused its

distinctiveness and enabled the relevant consuming public to distinguish it from

other marks based on minute differences. Palm Bay, 396 F.3d at 1374 (“The purpose

of a defendant introducing third party uses is to show that customers have become so

conditioned by a plethora of such similar marks that customers have been educated

to distinguish between different such marks on the bases of minute distinctions.”),

quoted in Syndicat Des Proprietaires Viticulteurs De Chateauneuf-Du-Pape v.

Pasquier DesVignes, 2013 WL 5407284, at *11 (TTAB 2013).

Conceptually, we find that IRON BALLS is arbitrary as used on beer. Palm Bay,

396 F.3d at 1372 (arbitrary terms are conceptually strong trademarks). See, e.g., In

re Bercut-Vandervoort & Co., 1986 WL 83681, at *3 (TTAB 1986) (PETRUS arbitrary

for wine). The mark registered without a claim of acquired distinctiveness under

Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), so it is entitled to all of the

presumptions under Section 7(b), 15 U.S.C. § 1057(b), including the presumption of

inherent distinctiveness, i.e., that consumers will inherently associate it with a

unique source. See, e.g., Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, 17

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Cancellation No. 92079099

F.4th 129, 146 (Fed. Cir. 2021). Its status as “micro-brewed craft” beer does not affect

its conceptual strength.

In sum, given the arbitrary nature of IRON BALLS, Respondent’s mark is

conceptually strong, pointing to a unique source. Palm Bay, 396 F.3d at 1372.

Petitioner has failed to establish that Respondent’s mark is commercially weak, but

even if the mark is not commercially strong, that does not appreciably affect the

likelihood-of-confusion calculus. We find that Respondent’s mark is entitled to the

normal scope of protection to which inherently distinctive marks are entitled.

Sabhnani v. Mirage Brands, LLC, 2021 WL 6072822, at *13 (TTAB 2021).

3. Similarity of the Parties’ Goods

The second DuPont factor concerns the “similarity or dissimilarity and nature

of the goods or services as described in an application or registration,” DuPont, 476

F.2d at 1361. In Section 2(d) cases, we usually compare the goods as they are

identified in the parties’ respective identifications. Anheuser-Busch, LLC v. Innvopak

Sys. Pty Ltd., 2015 WL 5316485, at *11 (TTAB 2015). But where, as here, a plaintiff

seeks a restriction to the defendant’s goods under Section 18 of the Trademark Act,

we consider whether plaintiff’s identified goods are related to the proposed restricted

goods. Orange Bang v. Ole Mexican Foods, 2015 WL 5675641, at * 9.

In the prior decision, the Board stated that “Registrant’s identification is not

limited to craft beer; registrant’s goods are considered to include all types of beer,”

and found those goods related to Petitioner’s “gin.” 2019 WL 646091 at *6, 17

TTABVUE 15. Petitioner contends that restricting Respondent’s identification to

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Cancellation No. 92079099

“micro-brewed craft beer” would render the parties’ goods more dissimilar in the eyes

of the purchasing public, thereby avoiding a likelihood of confusion.

Petitioner starts with the proposition that “[t]here is no per se rule that holds that

all alcoholic beverages are related.”65 To the contrary, its witnesses maintain, “the

alcoholic beverage industry is typically broken down into three primary … segments

– beer, wine, and spirits – which typically remain quite separate.”66 “Beer and

distilled spirits such as gin are also produced by different processes and methods,”

they declare.67 “The equipment used to brew beer is different from the equipment

used to distill spirits. Among other things, distillation requires a still that can be used

to heat the fermented liquid and capture, separate, and condense the vapor.”68

Petitioner’s witnesses conclude that:

[T]he effort put into developing a beer often does not translate to

developing a spirit. Different vendors and suppliers are often required.

Recipes and production methods are entirely different. A different

distributor usually must be located. In short, it is an entirely different

enterprise. For this reason, it is unusual for producers of beer to also get

into the business of producing spirits.69

The prior Board decision found beer and gin commercially related based on third-

party trademark registrations and websites adduced by the Examining Attorney

showing both alcoholic beverages purveyed from the same source under the same

65Petitioner’s brief, 24 TTABVUE 15 (citing In re White Rock Distilleries Inc., 2009 WL

3401827, at *2 (TTAB 2009)).

66 Ambrunn decl. ¶ 3, 8 TTABVUE 3; Bramaz decl. ¶ 3, 9 TTABVUE 2.

67 Ambrunn decl. ¶ 6, 8 TTABVUE 3.

68 Bramaz decl. ¶ 7, 9 TTABVUE 3; Ambrunn decl. ¶ 7, 8 TTABVUE 4.

69 Ambrunn decl. ¶ 9, 8 TTABVUE 4; Bramaz decl. ¶ 9, 9 TTABVUE 4.

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Cancellation No. 92079099

mark.70 Petitioner targets that third-party evidence, noting that “[o]f the eight third-

party trademark registrations cited in the prior Board decision, six have been

cancelled in their entirety and one has been amended to delete all class 32 goods,

including beer.”71 Furthermore, “[o]f the five websites cited in the prior Board decision

– Treaty Oak, Warfield Distillery & Brewery, Bent Brewstillery, New Holland

Brewing, and Dogfish Head Distilling Co. – at least one (for Treaty Oak Distilling) no

longer references any beer or brewery services, and two are irrelevant because they

do not refer to craft micro-breweries, but instead refer to large, regional craft

breweries, namely, New Holland Brewing and Dogfish Head.”72

Petitioner takes the position that large breweries, unlike small breweries, have

the resources to branch out into distilling, and the consuming public knows that:

“Consumers understand that smaller companies, such as micro-brewers, have less

resources, and, as such, are less likely to expand into entirely different lines of

business.”73

Petitioner supports this position with the following statistics:

As of 2021, the most recent year for which statistics were available, there

were approximately 9,247 breweries in the United States. Of these, 129

were large/non-craft breweries, 223 were regional craft breweries with an

annual production of between 15,000 and 6,000,000 barrels, and the rest—

nearly 8,900—are smaller micro-breweries with production under 15,000

barrels a year.

70 Prior Board decision, 2019 WL 646091 at 4-5, 17 TTABVUE 10-11. Prior Application Serial

No. 87299536, April 10, 2017 Office Action, Respondent’s NOR ex. 2, 19 TTABVUE 119-86.

71 Petitioner’s reply brief, 26 TTABVUE 17 (citing Petitioner’s NOR ex. 66, 22 TTABVUE 7-

10, 19-22, 34-35, 42-43, 46).

72 Petitioner’s reply brief, 26 TTABVUE 17-18 (citing Petitioner’s NOR ex. 67, 22 TTABVUE

49-69; Petitioner’s NOR ex. 65, 10 TTABVUE 454-55, 458).

73 Petitioner’s brief, 24 TTABVUE 14.

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Cancellation No. 92079099

Of the seven third-parties the Trademark Office identified, three are large

regional craft beer producers. The fact that large regional craft beer

producers may also use their mark for “gin,” does not support a finding

that a much smaller micro-brewery would use the same mark for both “gin”

and “beer.”

And, even if each of the four other third-parties that the Trademark Office

identified as using the same mark for both “gin” and “beer” were micro-

breweries, that represents just four out of the approximately 8,900 such

breweries in the United States. Viewed in the full context of the micro-

brewed craft beer market, evidence that four micro-breweries – less than

.05% of micro-breweries – also offer “gin,” does not support a finding that

“gin” and “micro-brewed craft beer” are related for likelihood of confusion

purposes.74

Petitioner’s witnesses attest that they have become aware of at most fifteen (15)

breweries that may also produce distilled spirits, but contend that “[e]ven if 15

breweries are also offering distilled spirits, that number represents fewer than .2%

of breweries in the United States.” 75

Given these statistics, Petitioner argues, “The average consumer is simply not

likely to believe that a craft micro-brewery is also offering gin.”76

Respondent responds that restricting its identification from “beer” to “micro-

brewed craft beer” would not render the parties’ goods more dissimilar in the eyes of

the purchasing public. Respondent notes that almost all of the thousands of breweries

in the United States—over 99 percent—are considered “small” under the definition

74Petitioner’s brief, 24 TTABVUE 12-13. Petitioner’s NOR, ex. 49, Brewers Association

National Beer Sales Production Data, BrewersAssociation.org/statistics-and-data/national-

beer-stats/ 10 TTABVUE 344 (number of breweries by type through 2021). The three

breweries Petitioner characterizes as regional craft breweries are New Holland Brewing,

Dogfish Head, and Rogue. Petitioner’s NOR ex. 65, “The New Brewer” The Journal of the

Brewers Association (statistics on domestic craft brewing companies and regional brewing

companies) 10 TTABVUE 454-55, 458.

75 Ambrunn decl. ¶ 10, 8 TTABVUE 4-5; Bramaz decl. ¶ 10, 9 TTABVUE 4.

76 Petitioner’s reply brief, 26 TTABVUE 23.

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set forth by the Brewers Association.77 The small brewers’ beers, including

Respondent’s, are regularly sold in liquor stores, bars, and restaurants alongside

beers from large-scale producers.78 At these retail sites, Respondent contends:

As a product, a beer produced by a smaller-sized brewer is

indistinguishable from a beer produced by a larger-sized brewer. Beer is

simply, beer, in particular, an alcoholic drink made from yeast-fermented

malt and hops. Producers of any size can and do make beer of varying flavor

profiles based on varying proportions of ingredients, yet the product itself

remains “beer.”79

Respondent’s witness avers that “It is not uncommon in the alcoholic beverage

industry for breweries to also distill spirits….”80 “Furthermore,” he notes, “breweries

already have all equipment necessary to make the mash that can be used to produce

liquor. Liquor production requires only the addition of a still to common brewery

equipment. A still can be easily purchased.”81

The third-party evidence in the prior Board decision did not purport to be

exhaustive of all entities in the United States that produce both beer and gin,

Respondent notes, and “does not account for entities that produce both beer and

spirits other than gin….”82 Respondent posits that “The existence of such entities

contributes to the perception in the marketplace that beer and spirits are produced

by common entities. Furthermore, entities that both brew beer and distill spirits are

77 Matthys decl. ¶ 32, 16 TTABVUE 9 (citing April 26, 2022 Department of the Treasury

report on the “NUMBER OF BREWERS BY PRODUCTION SIZE -CY 2021”, Respondent’s

NOR ex 8, 17 TTABVUE 108.

78 Matthys decl. ¶¶ 6, 14, 16 TTABVUE 3, 5.

79 Matthys decl. ¶ 21, 16 TTABVUE 6.

80 Matthys decl. ¶ 26, 16 TTABVUE 7.

81 Matthys decl. ¶ 28, 16 TTABVUE 8.

82 Respondent’s brief, 25 TTABVUE 15.

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becoming increasingly common. Such entities are referred to as ‘brewstilleries’ and

encompass breweries of all sizes.”83 To illustrate, it points to:

• Schitz Creek Distillery/Brewer—which advertises “a variety of spirits

distilled from grains grown right here in Texas” as well as “10 craft beers on

tap all made on location….”84

• “The Brewstillery Movement” article—which states that “[b]reweries and

distilleries use equipment that is very similar for the production of beverage

alcohol. Fermenters, pumps, hoses, yeast, mash tuns, lauter tuns, and

fermenters are common tools utilized by both distillers and brewers. Some

breweries have capitalized on this opportunity and co-utilize their equipment

and expand into distillery operations.”85

• “Turning Beer Into Whiskey Distiller” Blog—which states that “[a]ll

whiskey is made, in essence, from beer. Distiller’s beer, that is. It is a

fundamental stage of the step-by-step process in which grains are turned into

our beloved water of life. Today, more distillers are using actual beer.

…

In fact, in the craft world today, there’s a growing number of ‘brewstilleries’.

These companies produce both beer and spirits, affording them the opportunity

of using the former to make the latter.

…

Elsewhere, Catoctin Creek Distillery partnered with Virginia neighbor

Heritage Brewing for a limited edition Kings Mountain single malt release.

They started with Heritage’s Kings Mountain Scotch Ale, and then aged the

resulting distillate for a year in barrels that the brewery had already used. The

resulting whiskey was filled with hops, malt, zest, and spice; basically a beer

whittled down to its essence with an added kick. Which is indeed what i[t] was,

and that’s why these experimental releases are so fun when they’re executed

properly.

In New Jersey, Cooper River Distillers has produced an entire lineup of limited

edition whiskeys made from local breweries. This includes half a dozen from

Philadelphia’s Saint Benjamin Brewing, such as their Single Run St.

83 Respondent’s brief, 25 TTABVUE 15-16 (citing Respondent’s NOR, Exs. 9-11, 17 TTABVUE

110-28).

84 ThirstyMule.com, Respondent’s NOR ex. 9. 17 TTABVUE 110.

85 Beverage-Master.com/2022.02/the-brewstillery-movement/, article written by Kris Bohn,

owner of Distillery Now Consulting LLC, “helping folks build distilleries”. Respondent’s NOR

ex. 10. 17 TTABVUE 112-20.

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Benjamin’s IPA, along with collaborations with Tuckahoe Brewing and Flying

Fish Brewing.

With all of the talent toiling away in America’s thousands of craft breweries

and distilleries, and the increasing convergence between those two realms,

expect much more in this realm in the years ahead.”86

Petitioner objects that Respondent’s printout from a website advertising Schitz

Creek Distillery & Brewery is inadmissible, as it lacks a URL and the date the

materials were accessed.87 Respondent, however, provided the URL in its Notice of

Reliance.88 Respondent did not provide the date it downloaded the website, but

Petitioner did not raise this procedural shortcoming earlier, when it could have been

cured, and has thereby waived the objection. See Shenzhen IVPS Tech. Co. v. Fancy

Pants Prods., LLC, 2022 WL 16646840, at *10 n.26 (TTAB 2022). The printout cuts

off both sides of the page, but the relevant content is still legible.89 Petitioner notes

that “the printout does not show a craft micro-brewery that also offers gin; at best it

shows a craft micro-brewery that offers other distilled spirits.”90 We find the printout

relevant to that extent.

Petitioner contends that the Board’s prior decision is inadmissible to the extent it

is being offered to prove the existence of the eight third-party registrations and five

third-party websites showing entities operating both breweries and distilleries.91

86 Distiller.com/articles/beer-distilled-whiskey Sept. 15, 2016, 6/5/2023, Respondent’s NOR

ex. 11, 17 TTABVUE 122-28.

87 Petitioner’s reply brief, 26 TTABVUE 16.

88 Respondent’s NOR ¶ 10, at 15 TTABVUE 4-5.

89 Respondent’s NOR ex. 9. 17 TTABVUE 110.

90 Petitioner’s reply brief, 26 TTABVUE 16.

91 Id. at 16-17.

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However, the third-party registrations and websites that the Board addressed in the

prior decision were also made of record in this case,92 as was Petitioner’s evidence

purporting to show that some of the registrations were cancelled and that one of the

websites, for Treaty Oak, no longer advertises beer.93 Consequently, Petitioner’s

objection is not well-taken, as this evidence shows the change in circumstances, vel

non, between the prior and present decisions.

Petitioner contends that the two articles cited by Respondent, “The Brewstillery

Movement” and “Turning Beer Into Whiskey Distiller Blog,”94 are inadmissible

hearsay to the extent they are offered to prove the truth of the statements therein.95

The articles show on their face that their readers were exposed to articles about

breweries either operating “brewstilleries” themselves or collaborating with

distilleries to produce distilled spirits in addition to beer. They are accordingly

relevant and admissible to that extent. Spiritline Cruises LLC v. Tour Mgmt. Svcs.,

Inc., 2020 WL 636467, at *3 (TTAB 2020).

Petitioner’s remaining objections go to the weight of the evidence. 96 We

understand that Respondent’s witness, Erick Mathys, is one of Respondent’s co-

founders, just as Petitioner’s witnesses, Messrs. Ambrunn and Bramaz, are two of its

principals.97 “We therefore overrule [the] objections to the testimony, but will weigh

92 Respondent’s NOR ex. 2, 19 TTABVUE 119-86.

93 Petitioner’s NOR exs. 66-67, 22 TTABVUE 7-69.

94 Respondent’s NOR exs. 10-11, 17 TTABVUE 112-28.

95 Petitioner’s reply brief, 26 TTABVUE 17.

96 Petitioner’s reply brief, 26 TTABVUE 19.

97 Ambrunn decl. ¶ 1, 8 TTABVUE 2; Bramaz decl. ¶ 1, 9 TTABVUE 2.

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Cancellation No. 92079099

its relevance, what foundation was laid for the testimony [and other evidence], and

its strength or weakness, including any inherent limitations therein.” Id. at *5.

According all relevant evidence its proper weight, we turn now to the core issue:

whether restricting Respondent’s identification to “micro-brewed craft beer” would

render the parties’ goods dissimilar enough to avoid a likelihood of confusion. The

measure of whether goods are related is determined from the point of view of

consumers of the respective goods. Recot Inc. v. Becton, 214 F.3d 1322, 1329 (Fed. Cir.

2000) (“[E]ven if the goods in question are different from, and thus not related to, one

another in kind, the same goods can be related in the mind of the consuming public

as to the origin of the goods. It is this sense of relatedness that matters in the

likelihood of confusion analysis.”).

Petitioner contends that the restrictive language conforms to Respondent’s actual

use, and that smaller breweries like Respondent are less likely than large breweries

to branch out into distilled spirits. Petitioner’s position presupposes that consumers

(1) view Respondent’s IRON BALLS beer as the product of a small producer, and

(2) would be unlikely to believe that such a small producer would also produce a

similarly-branded distilled spirit, such as gin.

This assumes too much. Despite Petitioner’s statistics, “[t]here is no requirement

for goods to be found related that all or even a majority of the sources of one product

must also be sources of the other product.” In re Kysela Pere et Fils Ltd., 2011 WL

1399224, at *3 (TTAB 2011) (quoting In re G.B.I. Tile and Stone Inc., 2009 WL

3491050, at *6 (TTAB 2009)). “Indeed, goods can be related even if there is no

evidence that any entity, much less the applicant or registrant, is the source of both

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applicant’s and registrant’s goods.” Id. at *7 (citing Majestic Distilling, 315 F.3d at

1315-16).

In Majestic Distilling, the applicant argued that “malt liquor is a brewed product,

whereas tequila is distilled,” but the Federal Circuit Court of Appeals found that:

[M]alt liquor and tequila are similar by virtue of the fact that both are

alcoholic beverages that are marketed in many of the same channels of

trade to many of the same consumers. Although the PTO apparently found

no evidence of any manufacturer who both brews malt liquor and

distills tequila, Majestic has not shown that the PTO’s lack of evidence

in that regard is relevant. Unless consumers are aware of the fact, if

it is one, that no brewer also manufactures distilled spirits, that fact is not

dispositive. … In this case, Majestic has not demonstrated that

consumers distinguish alcoholic beverages by manufacturer

rather than brand name.

Majestic Distilling, 315 F.3d at 1316 (emphasis added).

So too here. Consumers encountering Respondent’s IRON BALLS beer and

Petitioner’s similarly-branded gin in liquor stores or other channels of trade are

unlikely to be aware of the size of the alcoholic beverages’ manufacturers (brewers

and distillers), or of industry statistics demonstrating the frequency with which one

produces the other libation. Nor are they likely to be aware that some companies

making beer and distilled spirits are, in Petitioner’s words, “large, regional craft

breweries” rather than craft microbreweries.98 “Rather, it is sufficient that the goods

are related in some manner, or that the circumstances surrounding their marketing

are such that they would be likely to be encountered by the same persons in situations

that would give rise, because of the marks used thereon, to a mistaken belief that

they originate from or are in some way associated with the same source or that there

98 Petitioner’s reply brief, 26 TTABVUE 18.

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is an association or connection between the sources of the respective goods.” In re

White Rock Distilleries, 2009 WL 3401827, at *2; see also Anheuser-Busch v.

Innvopak, 2015 WL 5316485, at *14 (“The question is whether, under all the

circumstances, consumers encountering the goods sold under these marks would

mistakenly believe that they share or are affiliated with or sponsored by a common

source.”) (wine related to beer); Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 2013

WL 5407313, at *8 (TTAB 2013) (“The goods need only be sufficiently related that

consumers would be likely to assume, upon encountering the goods under similar

marks, that the goods originate from, are sponsored or authorized by, or are otherwise

connected to the same source.”).

Petitioner’s proposed restriction to “micro-brewed craft beer” does not affect the

nature of the beer Respondent produces; it simply means that it is provided by a small

producer. But that does not impose a meaningful limitation for purposes of likelihood

of confusion analysis. See In re i.am.symbolic, llc, 866 F.3d 1315, 1322-23 (Fed. Cir.

2017).

Even with the restriction, an average consumer encountering Petitioner’s and

Respondent’s similarly-branded alcoholic beverages in overlapping channels of trade

could still mistakenly assume that the goods had a common origin. Joel Gott Wines,

2013 WL 5407313 at *10 (“Purchasers of opposer’s GOTT and JOEL GOTT wines are

likely to assume that applicant’s goods, sold under the mark GOTT LIGHT and

design, are merely a line extension of goods emanating from opposer.”). Here, because

Petitioner’s mark adds “engineered alcohol” to IRON BALLS, “[t]hose consumers who

do recognize the differences in the marks may believe that applicant’s mark is a

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Cancellation No. 92079099

variation of opposer’s mark that opposer has adopted for use on a different product.”

Schieffelin & Co. v. The Molson Cos., 1989 WL 277823, at *4 (TTAB 1989).

Alternatively, the average consumer could assume that there was an association

or connection between a brewer and a distiller. Cf. In re Save Venice N.Y., Inc., 259

F.3d 1346, 1355 (Fed. Cir. 2001) (“The related goods test measures whether a

reasonably prudent consumer would believe that noncompetitive but related goods

sold under similar marks derive from the same source, or are affiliated with,

connected with, or sponsored by the same trademark owner”). For example, in a case

involving whiskey and beer producers using similar marks, the Court held:

It is not material whether [the average purchaser] would think that the

makers of the Scotch whisky were actually brewing and bottling this beer,

or whether it was being produced under their supervision or pursuant to

some other arrangement with them. [The average purchaser] would

probably not concern himself about any such detail.

Fleischmann Distilling Corp. v. Maier Brewing Co., 314 F.2d 149, 155 (9th Cir. 1963),

cited in United Rum Merchants Ltd. v. Fregal, Inc., 1982 WL 52025, at *4 (TTAB

1982).

Relatedness may arise from this type of association or connection, even if brewers

may encounter some difficulties branching out into distilling. One of Respondent’s

articles, “The Brewstillery Movement,” describes the different regulatory, licensing,

bookkeeping and tax issues distillers face.99 But another article, “Turning Beer Into

Whiskey,” describes how breweries can collaborate with existing distilleries, thereby

99Beverage-master.com/2022/02/the-brewstillery-movement/ Respondent’s NOR ex. 10, 17

TTABVUE 112-16.

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avoiding those issues.100 So in this case, as in Fleischmann, the average consumer

encountering the parties’ similarly-branded alcoholic beverages in the same channels

of trade could assume, mistakenly, that there was an association or connection

between Respondent, a brewer, and Petitioner a distiller.

In sum, despite Petitioner’s proposed restriction to Respondent’s goods, the second

DuPont factor, relatedness of the goods, weighs in favor of a likelihood of confusion.

4. Trade Channels, Classes of Customers, and Their

Sophistication and Care

The third DuPont factor concerns “[t]he similarity or dissimilarity of established,

likely-to-continue trade channels,” and the fourth factor concerns “[t]he conditions

under which and buyers to whom sales are made, i.e., ‘impulse’ vs. careful,

sophisticated purchasing.” DuPont, 476 F.2d at 1361.

The third factor “must be evaluated with an eye toward the channels specified in

the application and registration, not those as they exist in the real world.” In re

Detroit Athl., 903 F.3d at 1308. The prior Board decision found an overlap in trade

channels and customers for Petitioner’s identified goods, “gin,” and Respondent’s

“beer.” 2019 WL 646091 at *5. The issue before us now is whether restricting

Respondent’s goods to “micro-brewed craft beer” would reduce or negate this overlap.

See Eurostar, 1995 WL 231387, at *6-7.

Petitioner’s proposed restriction would not change the class of customers for the

parties’ goods: adult members of the general public who purchase and consume

alcoholic beverages. The restriction adds the modifier “micro-brewed craft” before

100 Distiller.com/articles/beer-distilled-whiskey Sept. 15, 2016, 6/5/2023, Respondent’s NOR

ex. 11, 17 TTABVUE 122-28.

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“beer,” but sets no further express limitations on Respondent’s trade channels.

Absent express limitations, the parties’ goods are presumed to travel in all normal

and usual channels of trade for those goods. Id. (citing In re i.am.symbolic, 866 F.3d

at 1327); Anheuser-Busch v. Innvopak, 2015 WL 5316485, at *11 (wine and beer);

Schieffelin v. Molson, 1989 WL 277823, at *4.

Petitioner contends:

—That small craft breweries use different distributors than large breweries and

spirits companies.101

—That while micro-brewed craft beer may be sold in some retail stores, it is more

likely to be sold to consumers directly by the brewery and more likely to be limited

to local retailers.102 For example, “Respondent, a craft microbrewery, sells more

than 70% of its beer on its premises, sells IRON BALLS beer in fewer than 175

retailers, sells its beer only in Texas, sells almost entirely within the Austin

metropolitan area, and advertises in local Austin area publications.”103

—That some grocery stores, bars and restaurants are licensed to sell beer but not

spirits.104

—That while they may be sold in some of the same locations, micro-brewed craft

beers and gin are typically located in separate, easily distinguished sections of

stores and are also typically listed in different sections of menus.105

We agree with Respondent, however, that Petitioner’s proposed restriction on

Respondent’s goods would not appreciably reduce the overlap in the parties’ channels

101Petitioner’s brief, 24 TTABVUE 15; Declaration of Romain Ambrunn, Director and

Partner at Petitioner Iron Balls International Ltd., ¶ 7, 8 TTABVUE 4.

102 Petitioner’s brief, 24 TTABVUE 15.

103 Petitioner’s reply brief, 26 TTABVUE 20.

104Ambrunn decl. ¶ 4, 8 TTABVUE 3; Declaration of Philippe Bramaz, partner and

shareholder in Petitioner Iron Balls International, ¶ 4, 9 TTABVUE 2-3.

105 Petitioner’s brief, 24 TTABVUE 15; Ambrunn decl. ¶ 5, 8 TTABVUE 3; Bramaz decl. ¶ 5,

9 TTABVUE 3.

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of trade. Even if the parties use different distributors, the normal retail outlets would

continue to overlap in large part.

As Respondent’s co-owner and co-founder avers:

Gin and beer, including Registrant’s beer, are alcoholic beverages that are

sold through multiple, identical channels of trade (e.g., liquor stores,

restaurants, and bars) and purchasers of these products (e.g., members of

the general public who consume alcohol) overlap.106

At present:

Registrant’s beer has been sold in at least 172 retail outlets, including

liquor stores, bars, and restaurants.107 Bull Creek Brewing’s beer,

including its IRON BALLS beer, is regularly sold in liquor stores where

gin and other spirits are also sold….108

Moreover, while Respondent’s beer is limited in production, Respondent’s involved

registration is geographically unrestricted. Giant Food, Inc. v. Nation’s Foodservice,

Inc., 710 F.2d 1565, 1568 (Fed. Cir. 1983) (Section 7(b) of the Trademark Act, 15

U.S.C. § 1057(b), creates a presumption that the registrant has the exclusive right to

use its mark throughout the United States). Petitioner’s proposed restriction would

not prevent Respondent from expanding its channels of trade, adding liquor stores

outside Texas, and advertising through other media. In re Detroit Athl., 903 F.3d at

1308.

Furthermore, Petitioner’s pending application for “gin” is also unrestricted,

geographically or otherwise. So if its application matured into a registration, it could

presumptively sell to the liquor stores, bars, and restaurants that carry Respondent’s

106 Respondent’s brief, 25 TTABVUE 13; declaration of Erick Matthys, ¶ 22, 16 TTABVUE 7.

107 Respondent’s brief, 25 TTABVUE 13; Matthys decl. ¶ 5, 16 TTABVUE 3.

108 Matthys decl. ¶¶ 6, 8-12, 16 TTABVUE 3.

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goods, including those in Texas. See Kangol Ltd. v. KangaROOS U.S.A., Inc., 974 F.2d

161, 164 (Fed. Cir. 1992) (“Yet, in neither the applicant’s application nor the opposer’s

registrations are the trade channels in any way restricted.”); B.V.D. Licensing Corp.

v. Rodriguez, 2007 WL 616036, at *6 (TTAB 2007) (applicant could sell his goods in

the same retail outlets as opposer).

Petitioner’s argument that beer and spirits are segregated in liquor stores would

apply to macro- as well as micro-brewed craft beers. Just as its argument failed in

the prior Board decision, it fails here. An adult member of the consuming public could

seek beer and liquor in a single shopping trip, and encounter both types of alcoholic

beverages on that trip. Schieffelin v. Molson, 1989 WL 277823, at *4. (“A typical

consumer of alcoholic beverages may drink more than one type of beverage and may

shop for different alcoholic beverages in the same liquor store.”). As the Board has

observed, various types of alcoholic beverages travel in the same channels of trade,

even if they are displayed on separate shelves: “We believe that a prospective

purchaser of an alcoholic beverage upon entering and browsing through the various

alcoholic products located or displayed on the various shelves or counters in retail

liquor establishments would, upon encountering a whiskey, rum, brandy or vodka

identified by the term ‘MONARCH’, and then continuing on [the purchaser’s] jaunt

to another counter or section of the same store and seeing a wine or champagne sold

under the identical mark ‘MONARCH’, be likely to believe that both products

originated with the same producer.” Monarch Wine v. Hood River, 1977 WL 22627, at

*3. Even if the types of beverage are separated in liquor stores, they would be close

enough to engender confusion. As Respondent notes, “consumers are exposed to both

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Cancellation No. 92079099

beer and spirits when purchasing alcohol at [liquor] stores, and it is not uncommon

for nonrefrigerated beer to be placed on ‘warm’ shelves for display directly across from

liquor displays.”109

The same holds true for restaurant and bar sales. Respondent states that “[i]n

addition to liquor stores, IRON BALLS beer has been sold at several bars and

restaurants where it is offered on tap or by the bottle among other beers from

producers of varying size including large-scale producers, and which restaurants

often serve other types of alcoholic beverages, such wine and/or spirits.”110 If

Petitioner were granted the geographically unrestricted registration it seeks, it could

expand into these same restaurants and bars, where consumers would tend to order

drinks verbally, without seeing labels, shortening their orders to the first, most

memorable part of Petitioner’s mark: IRON BALLS. Schieffelin v. Molson, 1989 WL

277823, at *4 (“We also take into consideration the fact that the products of the

parties are of the type ordered verbally in bars and restaurants.”); In re Bay State

Brewing Co., 2016 WL 1045677, at *3 (TTAB 2016) (“we also keep in mind the

penchant of consumers to shorten marks.”).

Simply put, Petitioner’s proposed restriction of Respondent’s identification to

“micro-brewed craft beer” would not meaningfully reduce the overlap in the parties’

channels of trade or classes of customers.

Petitioner argues that:

Consumers of micro-brewed craft beers are often sophisticated. Craft-beers

are often promoted to beer enthusiasts, and in particular, to local beer

enthusiasts. These types of consumers are more likely to be more

109 Respondent’s brief, 25 TTABVUE 14; Matthys decl. ¶ 13, 16 TTABVUE 4-5.

110 Matthys decl. ¶¶ 14, 16, 20, 16 TTABVUE 5-6.

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sophisticated and knowledgeable both about craft beer in general, as well

as about their local breweries. As a result, these consumers are less likely

to be confused.111

The relevant public may consist of all types, in all kinds of settings. See Somerset

v. Speymalt, 1989 WL 274426, at *3 (“While we realize that certain purchasers of

alcoholic beverages may be aficionados and know not only ‘their brands’ but which

companies make which trademarked products, we also realize that other consumers

may not be as knowledgeable, and may purchase Scotch whisky, gin or vodka as gifts,

or to stock a bar for their guests.”); see also In re Sailerbrau Franz Sailer, 1992 WL

205049, at *2 (TTAB 1992) (“We do not agree with applicant that purchasers are

necessarily discriminating. While some may have preferred brands, there are just as

likely to be purchasers who delight in trying new taste treats. Furthermore, these are

not expensive items requiring one to exercise careful thought and/or expertise in their

purchase. More often than not they are shelf items which are purchased on a

somewhat casual basis.”).

Because the respective identifications do not set particular price points, we cannot

presume that the consumers of the identified beverages, including micro-brewed craft

beer, will be particularly sophisticated, discriminating, or careful in making their

purchases, Bercut-Vandervoort, 1986 WL 83681, at *3, and the record does not reflect

that the relevant consumers are sophisticated. Cai v. Diamond Hong, Inc., 901 F.3d

1367, 1371 (Fed. Cir. 2018) (“Attorney argument is no substitute for evidence.”)

(quoting Enzo Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005)).

As always, we must base our decision on the least sophisticated potential

111 Petitioner’s brief, 24 TTABVUE 16.

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purchasers. Stone Lion Cap. Partners, LP v. Lion Cap. LLP, 746 F.3d 1317, 1325

(Fed. Cir. 2014).

Hence, the third DuPont factor weighs in favor of finding a likelihood of confusion,

and the fourth DuPont factor is neutral.

5. Remaining DuPont Factors

The ninth DuPont factor considers “[t]he variety of goods on which a mark is or is

not used (house mark, ‘family’ mark, product mark).” DuPont, 476 F.2d at 1361.

Petitioner argues that “Respondent uses its mark only as the name of one of the

numerous varieties of beer it offers under its house mark BULL CREEK BREWING,

and a handful of promotional merchandise type items (e.g., t-shirts, signs, etc.).

Petitioner seeks to register its mark only in connection with gin. Nor is there any

evidence that either party intends to expand into the other’s goods.”112 Respondent

answers that it “has used its IRON BALLS mark in connection with at least two

distinct styles of beer, including its Imperial Stout, flavored Stouts, and flavored

Porters.”113

In some cases, where the goods are not obviously related, the ninth DuPont factor

may favor a finding that confusion is likely. See generally Monster Energy v. Lo, 2023

WL 417620, at *19. But in this case, “[g]iven the relatedness of the parties’ identified

goods, we find it unnecessary to rely on this factor.” Made in Nature, LLC v.

Pharmavite LLC, 2022 WL 2188890, at *32 (TTAB 2022).

We find the ninth DuPont factor to be neutral with respect to a finding of

112 Petitioner’s brief, 24 TTABVUE 16.

113 Respondent’s brief, 25 TTABVUE 13; Matthys Decl., ¶ 3 16 TTABVUE 3.

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likelihood of confusion.

Under the twelfth DuPont factor (whether the potential for confusion is de

minimis or substantial), Petitioner argues that “[b]ecause micro-brewed craft

breweries are smaller, and have more local distribution, the potential for confusion is

reduced.”114 However, “we find that the goods involved here are the type of goods that

would be marketed to and purchased by significant numbers of purchasers [adults

who purchase and consume alcoholic beverages], and that the potential for confusion

therefore cannot be deemed to be de minimis.” In re Davey Prods. Pty Ltd., 2009 WL

2420527, at *9 (TTAB 2009). The twelfth DuPont factor is neutral, at best.

IV. Summary

On consideration of all the relevant DuPont factors, we find that Petitioner’s

proposed restriction of Respondent’s identification of goods from “beer” to “micro-

brewed craft beer” would not avoid a likelihood of confusion.

Respondent’s registered mark, IRON BALLS, is arbitrary and conceptually

strong. Petitioner’s mark comes too close, appropriating IRON BALLS as the most

prominent, dominant part of its mark. As the Board found in the prior ex parte

appeal, the marks are similar, weighing in favor of finding a likelihood of confusion.

Gin and “micro-brewed craft beer” would travel through overlapping channels of

trade to a broad class of customers—some of whom may not be particularly

sophisticated—who could well perceive the parties’ goods as related. This also weighs

in favor of finding a likelihood of confusion. The remaining DuPont factors are

neutral. See generally In re Charger Ventures LLC, 64 F.4th 1375, 1383 (Fed. Cir.

114 Petitioner’s brief, 24 TTABVUE 16.

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Cancellation No. 92079099

2023) (weighing DuPont factors).

For these reasons, even if Respondent’s goods could be characterized as “micro-

brewed craft beer,” and even if its identification of goods were so restricted, the

restriction would not avoid a likelihood of confusion. 15 U.S.C. § 1052(d).

Decision: The Section 18 petition for partial cancellation is denied.

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