Bootstrap Brewing v. Bootstrap Kombucha, LLC

This Opinion is Not a
Precedent of the TTAB

Mailed: June 29, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Bootstrap Brewing
v.
Bootstrap Kombucha, LLC
_____

Opposition No. 91232950
_____

Bootstrap Brewing, LLC, pro se,
represented by its owner Leslie Kaczeus.

Bootstrap Kombucha LLP, pro se,
represented by James Farnworth, member.

_____

Before Kuhlke, Cataldo and Taylor,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Bootstrap Kombucha LLC (“Applicant”) has filed an application seeking

registration on the Principal Register for the standard character mark BOOTSTRAP

KOMBUCHA (KOMBUCHA disclaimed) for “Kombucha tea” in International Class

30.1

1Application Serial No. 87175679 was filed on September 19, 2016, and is based upon
Applicant’s claim of first use of the mark anywhere on September 1, 2015 and first use in
Opposition No. 91232950

Bootstrap Brewing (“Opposer”) has opposed registration of Applicant’s mark on

the ground of likelihood of confusion under Section 2(d) of the Trademark Act, 15

U.S.C. § 1052(d), based on its claim of priority of use and likelihood of confusion with

the mark in Registration No. 4191107, BOOTSTRAP (in standard characters), for

“beer, ale, lager, stout and porter” in International Class 32.2 1 TTABVUE. Opposer

submitted with its Notice of Opposition a copy of its pleaded registration from the

Trademark Electronic Search System (“TESS”) database of the USPTO showing the

then-current status and title of the registration.3

Applicant, in its answer, has denied the salient allegations in the notice of

opposition.4

I. The Record

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

file of Applicant’s involved application. Trademark Rule 2.122(b)(1), 37 C.F.R.

§ 2.122(b)(1).

commerce since at least as early as January 1, 2016 under Section 1(a) of the Trademark Act,
15 U.S.C. § 1051(a).
2 Issued August 14, 2012. Section 8 & 15 Affidavits, accepted and acknowledged. 1
TTABVUE. Citations in this opinion are to the TTABVUE docket entry number and, where
applicable, the electronic page number where the document or testimony appears.
3 1 TTABVUE 5. Opposer also attached as exhibits to its Notice of Opposition copies of
screenshots from the Unity Vibration Kombucha website. These materials were not properly
introduced into evidence and therefore cannot be considered. See Trademark Rule 2.122(c),
37 C.F.R. § 2.122(c) (exhibits to pleadings are not in evidence and instead “must be identified
and introduced in evidence as an exhibit during the period for the taking of testimony”). See
also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) Section
704.05(a) (2019) (and cases cited therein).
4In addition, Applicant asserted various “affirmative defenses” that are more in the nature
of amplifications of its denials and have been treated as such.

-2-
Opposition No. 91232950

Neither Opposer nor Applicant submitted any evidence or testimony during their

assigned testimony periods.

In a decision issued March 25, 2019, Opposer was advised that the only evidence

properly of record is the TESS printout of the pleaded registration.5

Because Opposer’s main brief was found untimely, the briefs of record are

Applicant’s brief and Opposer’s rebuttal brief.

II. Discussion

To prevail on the ground of likelihood of confusion under Section 2(d) of the

Trademark Act, based on a previously used mark, it is the opposer’s burden to prove

by a preponderance of the evidence both priority of use and likelihood of confusion.

Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir.

2000); Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43

(CCPA 1981); WeaponX Performance Prods. Ltd. v. Weapon X Motorsports, Inc., 126

USPQ2d 1034, 1040 (TTAB 2018).

Also, a threshold issue in every inter partes case is the plaintiff’s standing to

challenge registration. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d

1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Ritchie v. Simpson, 170 F.3d 1092, 50

USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina Co., 670

F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). To establish standing in an opposition,

5 The decision also found Opposer’s filing captioned “Plaintiff’s Rebuttal to Applicant’s
Answer to Original Notice of Opposition,” even if considered Opposer’s brief, untimely in the
absence of a showing of excusable neglect, and that any evidence attached thereto was not
properly of record.

-3-
Opposition No. 91232950

a plaintiff must show both a real interest in the proceeding as well as a reasonable

belief of damage. Empresa Cubana Del Tabaco v. Gen. Cigar, 111 USPQ2d at 1062;

Ritchie v. Simpson, 50 USPQ2d at 1025.

If an opposer has submitted status and title copies of its federal trademark

registrations, we would find that the opposer has established its standing to oppose.

See, e.g., Cunningham v. Laser Golf Corp., 55 USPQ2d at 1844; Fort James Operating

Co. v. Royal Paper Converting Inc., 83 USPQ2d 1624, 1626 (TTAB 2007). Also, in view

of an opposer’s ownership of a registration, priority would not be an issue in the

opposition. See King Candy Co. v. Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ

108, 110 (CCPA 1974).

However, after a careful review of the proceeding records and the TESS printout

of Registration No. 4191107, we note a discrepancy between the named Opposer,

Bootstrap Brewing, whose entity designation is an LLC (“Limited Liability

Company”), and owner of the pleaded registration who is identified as Leslie Kaczeus,

an individual.

While neither party has addressed this discrepancy, in the event there was a

mistake in identifying Opposer, we look to Trademark Rule 2.102(b), 37 C.F.R.

§ 2.102(b) for guidance. “Misidentified through mistake,” as used in Rule 2.102(b),

means a mistake in the form of the potential opposer’s [or opposer’s] name or its entity

type, not the naming of a different existing legal entity that should have been named.

See e.g. Custom Computer Services, Inc. v. Paychex Properties, Inc., 337 F.3d 1334, 67

USPQ2d 1638, 1640 (Fed. Cir. 2003) (entity named in extensions was not a “different

-4-
Opposition No. 91232950

existing legal entity” from entity that filed opposition); Warren Distribution, Inc. v.

Royal Purple, LLC, 115 USPQ2d 1667, 1670-71 (TTAB 2015) (individual employee

who filed extension request a different legal entity than employer who filed notice of

opposition and, thus, cannot be considered identified through mistake); Cass Logistics

Inc. v. McKesson Corp., 27 USPQ2d 1075, 1077 (TTAB 1993) (word processing error

resulting in identification of different legal entity was not a “mistake” within the

meaning of the rule), See also TBMP § 303.05(c) (2019); cf. also TMEP § 803.03.

Because the record clearly shows that Bootstrap Brewing is a distinct legal entity,

namely an LLC, from that of Leslie Kaczeus, an individual, Ms. Kaczeus could not be

substituted as opposer.

It therefore follows that because Bootstrap Brewing is not the owner of pleaded

Registration No. 4191107, it is not entitled to rely on the registration’s Section 7(b)

presumptions accorded an owner of the mark, i.e., that registrant is the owner of the

registered mark, that the registration is valid and subsisting, and that the registrant

has the exclusive right to use the subject mark in commerce. See 15 U.S.C. § 1057(b).

(Section 7(b) presumptions accorded to a registration on the Principal Register accrue

only to the benefit of the owner of the registration, and hence come into play only

when the registration is made of record by its “owner”). See, e.g., Fuld Bros., Inc. v.

Carpet Technical Service Institute, Inc., 174 USPQ 473, 475-76 (TTAB 1972)

(“Notwithstanding the relationship of Associated Just Distributors, Inc. to petitioner,

it is nevertheless a separate legal entity, it is the record owner of the registration,

and, in view of the express language of Section 5 of the Statute, only the registrant

-5-
Opposition No. 91232950

can rely upon the prima facie presumptions afforded a registration under Section

7(b)”).

Because Opposer failed to introduce any other testimony or evidence, Opposer

failed to meet its burden to show both a real interest in the proceeding as well as a

reasonable belief of damage. Accordingly, Opposer has not established its standing

and the opposition must be dismissed. Furthermore, because Opposer has not

demonstrated that it is the owner of Registration No. 4191107, Opposer cannot rely

upon the Section 7(b) presumptions afforded to the owner of that pleaded registration,

and may not rely upon Registration No. 4191107 for purposes of priority.

Even assuming Opposer could rely on the pleaded registration to establish its

standing and priority, it would not prevail on its Section 2(d) claim. In any likelihood

of confusion analysis, two key considerations are the similarities between the marks

and the similarities between the goods. See Federated Foods, Inc. v. Fort Howard

Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). While the marks themselves

are substantially similar, because a relationship between the parties’ goods is not

apparent from the face of the respective identifications, Opposer had the burden to

prove they were commercially related. It is obvious that in the absence of any

evidence whatsoever, Opposer failed to do so.

Decision: The opposition is dismissed.

-6-