Cerveceria Primus, S.A. de C.V.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: March 19, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Cerveceria Primus, S.A. de C.V.
_____

Serial No. 87460794
_____

John M. Murphy of Arochi Marroquin & Lindner SC,
for Cerveceria Primus, S.A. de C.V.

Katherine S. Chang, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.

_____

Before Goodman, Pologeorgis, and Coggins,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:

Cerveceria Primus, S.A. de C.V. (“Applicant”) seeks registration on the Principal

Register of the stylized mark TEMPUS, as displayed below, for “beer” in

International Class 32.1

1 Application Serial No. 87460794, filed on May 23, 2017, under Section 44(e) of the
Trademark Act, 15 U.S.C. § 1126(e), based on Mexican Registration No. 1015280 issued on
November 30, 2007. The application includes a translation statement which reads as follows:
“The English translation of ‘tempus’ in the mark is ‘time.’” The colors white, black and dull
gold are claimed as a feature of the mark.
Serial No. 87460794

The Trademark Examining Attorney refused registration of Applicant’s mark

under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of

likelihood of confusion with the registered mark TEMPUS TWO (in standard

characters) for “wines” in International Class 33.2

When the refusal was made final, Applicant appealed and requested

reconsideration. After the Examining Attorney denied the request for

reconsideration, the appeal resumed. We affirm the refusal to register.3

I. Preliminary Matter – Evidentiary Objections

We first turn to evidentiary objections lodged by both the Examining Attorney and

Applicant. The Examining Attorney objects to the inclusion of the information found

at the webpage link https://www.uspto.gov/trademark/trademark-updates-and-

announcements/recent-postings that is referenced in footnotes 1 and 4 in Applicant’s

2 Registration No. 3188141, registered on December 19, 2006; renewed. The registration
includes the following translation statement: “The English translation of the word TEMPUS
in the mark is TIME.”
3The TTABVUE and Trademark Status and Document Retrieval (“TSDR”) citations refer to
the docket and electronic file database for the involved application. All citations to the TSDR
database are to the downloadable .PDF version of the documents.

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Serial No. 87460794

Appeal Brief.4 The Examining Attorney argues that the inclusion of hyperlinks is not

sufficient to introduce the underlying information into the record.5

We agree. Because Applicant did not attach any webpages from this website link

prior to filing its appeal, merely providing a link to an Internet site cannot guarantee

its authenticity because the nature of a web site is dynamic, not static. See In re

Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1195 n.21 (TTAB 2018) (“we do not

consider websites for which only links are provided); In re Olin Corp., 124 USPQ2d

1327, 1332 n.15 (TTAB 2017) (“Because the information displayed at a link’s Internet

address can be changed or deleted, merely providing a link to a website is insufficient

to make information from that site of record.”); In re HSB Solomon Assocs., LLC, 102

USPQ2d 1269, 1274 (TTAB 2012) (the Board will not utilize a link or reference to a

website’s internet address to access the site to consider whatever content may appear

therein); In re Planalytics Inc., 70 USPQ2d 1453, 1458 (TTAB 2004) (links are not

enough to make websites of record). Accordingly, inasmuch as the record in an

application must be complete prior to appeal, see Trademark Rule 2.142(d), 37 C.F.R.

§ 2.142(d), and because Applicant did not submit the contents of the information

found at the referenced hyperlink prior to filing its appeal, we sustain the Examining

Attorney’s objection and will give no consideration to the webpage link or the contents

of the webpage in our determination herein.

4 Examining Attorney’s Appeal Brief, p. 2; 13 TTABVUE 3.
5 Id.

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Serial No. 87460794

Applicant objects to the additional evidence submitted by the Examining Attorney

in her denial of Applicant’s request for reconsideration.6 As background, on July 9,

2018, Applicant filed a combined request to remand its involved application to the

Examining Attorney to consider additional evidence and for reconsideration of the

Examining Attorney’s final refusal to registration based on this additional evidence.7

By order dated August 1, 2018, the Board granted Applicant’s request for remand.8

By the same order, the Board expressly stated “[i]f the refusal of registration is

maintained, the examining attorney should issue an Office action to that effect,

which may include additional evidence.” (emphasis added).9 The Board’s August

1, 2018 order follows the Board’s practice and procedure under these particular

circumstances. Indeed, if a request to remand for additional evidence is granted, as

is the case here, the nonrequesting party (the Examining Attorney, in this instance)

may submit additional evidence in response to the evidence submitted with the

request. See In re Northland Aluminum Prods., Inc., 221 USPQ 1110, 1112 (TTAB

1984), aff’d, 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985); TRADEMARK TRIAL AND

APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 1207.02 (2018). Accordingly,

Applicant’s objection to the additional evidence submitted by the Examining Attorney

in her denial of Applicant’s request for reconsideration is without merit and is

accordingly overruled.

6 Applicant’s Appeal Brief p. 6 n.5, 11 TTABVUE 7.
7 Applicant’s Request for Remand and Reconsideration, 4-7 TTABVUE.
8 8 TTABVUE.
9 Id.

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Serial No. 87460794

II. Likelihood of Confusion

Our determination under Section 2(d) is based on an analysis of all probative facts

in evidence that are relevant to the factors bearing on the issue of likelihood of

confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567

(CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,

1203 (Fed. Cir. 2003). We have considered each du Pont factor that is relevant and

all evidence and arguments of record. See M2 Software, Inc. v. M2 Commc’ns, Inc.,

450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA

Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each

factor for which we have evidence, we focus our analysis on those factors we find to

be relevant.”). In any likelihood of confusion analysis, however, two key

considerations are the similarities between the marks and the similarities between

the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192

USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the

cumulative effect of differences in the essential characteristics of the goods and

differences in the marks.”).

A. Strength/Weakness of Cited TEMPUS TWO mark

We first address the du Pont factors that concern the strength of the cited mark.

The fifth du Pont factor, the fame of the prior mark, 10 and the sixth du Pont factor,

10The Federal Circuit has reiterated that “‘[w]hile dilution fame is an either/or proposition—
fame either does or does not exist—likelihood of confusion fame varies along a spectrum from
very strong to very weak.’” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857
F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (quoting Palm Bay Imps., Inc. v. Veuve

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Serial No. 87460794

the number and nature of similar marks in use for similar goods or services, du Pont,

177 USPQ at 567, may be considered in tandem to determine the strength of the cited

mark and the scope of protection to which it is entitled. Bell’s Brewery, Inc. v.

Innovation Brewing, 125 USPQ2d 1340, 1345 (TTAB 2017). “In determining strength

of a mark, we consider both inherent strength, based on the nature of the mark itself,

and commercial strength or recognition.” Bell’s Brewery, 125 USPQ2d at 1345 (citing

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

(TTAB 2014)); see also In re Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681,

1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual strength

(distinctiveness) and its marketplace strength (secondary meaning).”).

In an ex parte appeal such as this, the owner of the cited registration is not a

party, and the Examining Attorney is under no obligation to demonstrate the

exposure or recognition of the cited mark in the marketplace. In re Integrated

Embedded, 120 USPQ2d 1504, 1512 (TTAB 2016). For that reason, “in an ex parte

analysis of the du Pont factors for determining likelihood of confusion …, the ‘fame of

the mark’ [fifth] factor is normally treated as neutral when no evidence as to fame

has been provided.” TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”)

§ 1207.01(d)(ix) (Oct. 2018). Thus, because there is no evidence of record regarding

the fame of the cited mark, the fifth du Pont factor is neutral.

Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir.
2005) (internal quotation omitted)).

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Serial No. 87460794

The sixth du Pont factor requires us to consider the number and nature of similar

marks in use on similar goods. du Pont, 177 USPQ at 567; Primrose Ret. Cmtys., LLC

v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1033 (TTAB 2016). Applicant

contends that the cited mark TEMPUS TWO is comprised of a weak, commonly used

element and that consumers will look to the other features in Applicant’s mark to

differentiate the marks in appearance, sound, meaning and commercial impression.

Specifically, Applicant maintains that the designation TEMPUS is diluted when used

in association with goods similar to those identified in the cited registration. To

demonstrate such weakness, Applicant has submitted the following evidence

purportedly showing third-party uses of the wording TEMPUS as a source indicator

for wines:

• Tempus Cellars, a winery in the state of Washington, is selling wine under its
TEMPUS CELLARS house mark;11

• Aldo Luis Biondollilo & Asociados, S.A., an Argentine winery doing business
as Finca El Retorno, is selling wines in the United States under the marks
TEMPUS and TEMPUS ALBA.12

• Almodi, a Spanish winery doing business as Altavins, is selling wine in the
United States under the mark TEMPUS;13 and

• Urla ?arapçilik, a Turkish winery, is selling wine under the mark TEMPUS.
Urla has at least one distributor in the United States.14

11 Applicant’s September 27, 2017 Response to Office Action, Exh. 3; TSDR pp. 29-40.
12 Id., Exh. 2; TSDR pp. 13-28.
13Id., Exh. 4; TSDR pp. 41-42; Applicant’s July 9, 2018 Request for Reconsideration Exh. 9,
5 TTABVUE 55-91.
14Id., Exh. 10; 5 TTABVUE 99-104. Applicant also submitted Internet evidence showing use
of the mark TEMPUS FUGIT SPIRITS for a line of liqueurs by an entity known as Tempus
Fugit LLC. Id., 5 TTABVUE. This third-party use evidence, however, does not demonstrate
any weakness of the term TEMPUS when used in association with wine and, therefore, has
limited probative value in our analysis regarding the commercial strength of the cited mark.

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Serial No. 87460794

In further support of its contention that the designation TEMPUS is diluted or

weak when used in association with wines, Applicant submitted the following three

active third-party registrations for marks including the term TEMPUS: 15

• Registration No. 4370351 for the mark for “sparkling wines;
wines”;

• Registration No. 3745071 for the mark TEMPUS FUGIT SPIRITS (in
standard characters; SPIRITS disclaimed) for “distilled spirits”; and

• Registration No. 3713196 for the mark (SPIRITS disclaimed)
for “potable spirits” in International Class 33 and “import and export
services featuring wine; wholesale distributorships featuring wine” in
International Class 35.

The Federal Circuit has stated that evidence of the extensive registration and use

of a term by others can be “powerful” evidence of weakness. See Jack Wolfskin

Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797

F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS

Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). As noted, under

the sixth du Pont factor, the Board must consider evidence of “[t]he number and

nature of similar marks in use on similar goods.” du Pont, 177 USPQ at 567. The type

of strength (or its inverse, weakness) addressed by the sixth du Pont factor is

Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686,
1693-94 (Fed. Cir. 2018).
15See Applicant’s April 6, 2018 Request for Reconsideration, Exhibit A; TSDR, pp. 9-12;
Registration No. 4473421, issued on January 28, 2014.

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Serial No. 87460794

sometimes referred to as market or commercial strength. This is the degree of

association in the mind of the consumer of the branded goods or services with the

source of the goods or services based on the exclusivity (and sometimes renown) of

the mark in the relevant market. See In re Chippendales USA Inc., 96 USPQ2d at

1686; Couch/Braunsdorf Affinity, Inc., 110 USPQ2d at 1476; Tea Board of India v.

Republic of Tea Inc., 80 USPQ2d 1881, 1898-1900 (TTAB 2006).

With regard to Applicant’s third-party use evidence, we conclude that four third

parties have adopted and use the term “TEMPUS,” alone or with other wording, as a

source indicator for wine. However, this evidence is insufficient (and certainly does

not rise to the level of “powerful” evidence) to show widespread use of the term to

establish that Registrant’s mark is weak in relation to wine, or that the public is so

familiar with marks containing the word TEMPUS that they will rely on other

portions of the marks to distinguish them. By comparison, in Juice Generation, there

were at least twenty-six relevant third-party uses or registrations of record, see 115

USPQ2d at 1672 n.1, and in Jack Wolfskin, there were at least fourteen, see 116

USPQ2d at 1136 n.2. In addition, there is no information as to how extensive the four

third-party uses are or the extent of public exposure to any advertising of these wines

under such marks.

We next turn to Applicant’s third-party registration evidence. With regard to

Registration No. 4370351 for the mark , we note that this registration

is based on Section 44 of the Trademark Act with no claim of use in commerce. This

registration, therefore, does not demonstrate exposure of the mark to U.S. consumers

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Serial No. 87460794

and accordingly has no probative value to show that the term TEMPUS is weak when

used in association with “wine.” See In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d

1581, 1583 (TTAB 2007); In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB

1993). With regard to the remaining two third-party registrations, we initially note

that both of these registrations are owned by the same registrant and contain a

statement that the foreign wording in the mark (i.e., TEMPUS FUGIT) translates

into English as “time flies.” We further note that one of the registrations is for

“distilled spirits,” not wine. “Spirits” is defined as “an alcoholic beverage, especially

distilled liquor.”16 It is common knowledge that wine is not distilled, it is fermented.17

Accordingly, this particular registration has limited probative value in showing that

the term TEMPUS is weak when used in conjunction with wine. The other

registration is for “potable spirits,” as well as import and export services and

wholesale distributorship services for wine. Even assuming that wine and spirits or

wine and the import/export services for wine and the wholesale distributorship of

wine are related goods and services, submission of two registrations for marks owned

by a single source is hardly sufficient to show common use or registration of the word

TEMPUS for wine. Furthermore, as a general proposition, use-based third-party

16www.thefreedictionary.com from the AMERICAN HERITAGE DICTIONARY OF THE ENGLISH
LANGUAGE (5th edition). The Board may take judicial notice of dictionary definitions,
including online dictionaries that exist in printed format. In re Cordua Rests. LP,
110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir.
2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB
2010).
17“Wine” is defined as “the alcoholic fermented juice of fresh grapes used as a beverage.”
(www.merriam-webster.com) (emphasis added).

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Serial No. 87460794

registrations alone are not evidence that the marks shown therein are in use, or that

the public is familiar with them. Conde Naste Publ’ns, Inc. v. Miss Quality, Inc., 507

F.2d 1404, 184 USPQ 422, 424-25 (CCPA 1975); Jansen Enters. Inc. v. Rind, 85

USPQ2d 1104, 1110 (TTAB 2007). Thus, merely because a single entity owns two

registrations containing the term TEMPUS does not mean the public could

distinguish the two marks at issue here.

As to conceptual strength, there is no evidence of record that TEMPUS has any

non-source identifying meaning with respect to wine. Moreover, Applicant offers no

comment regarding any inherent weakness of the cited TEMPUS TWO mark in its

brief. As such, we find the designation inherently distinctive.

In sum, we find that although Applicant has submitted a very modest amount of

third-party uses of marks containing the term TEMPUS for wine and third-party

registrations of marks owned by the same registrant that include the term TEMPUS

for distilled or potable spirits, this evidence is not sufficient to demonstrate that

Registrant’s mark is commercially weak in relation to wine. Moreover, there is no

evidence of record concerning the inherent weakness of the term TEMPUS or

TEMPUS TWO for wine. In view thereof, Registrant’s TEMPUS TWO mark is

entitled to at least a normal scope of protection afforded an inherently distinctive or

arbitrary mark. The sixth du Pont factor regarding the number and nature of similar

marks in use on similar goods is therefore neutral in our analysis.

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Serial No. 87460794

B. Similarity of the Marks

We turn next to the du Pont likelihood of confusion factor focusing on the

similarity or dissimilarity of the marks in their entireties as to appearance, sound,

connotation and commercial impression. du Pont, 177 USPQ at 567. Similarity in any

one of these elements may be sufficient to find the marks similar. In re Thor Tech

Inc., 90 USPQ2d 1634, 1635 (TTAB 2009); In re 1st USA Realty Prof’ls, Inc., 84

USPQ2d at 1586; In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988).

“The proper test is not a side-by-side comparison of the marks, but instead

whether the marks are sufficiently similar in terms of their commercial impression

such that persons who encounter the marks would be likely to assume a connection

between the [owners].” Coach Servs. Inc. v. Triumph Learning LLC, 668 F3d 1356,

101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (internal quotation marks omitted). The

proper focus is on the recollection of the average customer, who retains a general

rather than specific impression of the marks. Geigy Chem. Corp. v. Atlas Chem.

Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A. v. Marcon,

102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Indus., Inc. v. Oliver & Winston,

Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ

106, 108 (TTAB 1975).

Applicant’s mark is . The cited mark is TEMPUS TWO in standard

characters. We observe that Applicant’s and Registrant’s marks are comprised, either

in whole or in part, of the arbitrary term “TEMPUS.” Moreover, the entirety of the

literal portion of Applicant’s mark is encompassed within the cited mark; in such

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Serial No. 87460794

cases, confusing similarity has often been found. See In re Mighty Leaf Tea, 601 F.3d

1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (ML similar to ML MARK LEES); Coca-

Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106

(CCPA 1975) (BENGAL and BENGAL LANCER and design found to be similar); Lilly

Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406, 407 (CCPA 1967) (THE

LILLY similar to LILLI ANN); In re U.S. Shoe Corp., 229 USPQ 707, 709 (TTAB

1985) (CAREER IMAGE similar to CREST CAREER IMAGES). In addition, the term

TEMPUS (which comprises the entire literal portion of Applicant’s mark) is the first

element in Registrant’s mark. Consumers are also generally more inclined to focus

on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay

Imps., 73 USPQ2d at 1692; Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d

1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to

be impressed upon the mind of a purchaser and remembered” when making

purchasing decisions). Furthermore, the inclusion of the term “TWO” in the cited

mark is not sufficient to distinguish the marks at issue. The record includes a

definition of the phrase “TWO” which is defined as “being the second.”18 As such,

consumers are likely to believe that Applicant’s TEMPUS goods are the first in a

product line and that the goods offered under Registrant’s TEMPUS TWO mark are

the second product in the same line or constitute a new line of goods. It is therefore

likely that the goods sold under Registrant’s and Applicant’s marks would be

attributed to the same source by consumers. Accordingly, we find that the dominant

18 May 3, 2018 Office Action; TSDR p. 7 (www.merriam-webster.com).

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Serial No. 87460794

portion of the cited mark is the arbitrary term “TEMPUS” which is identical to the

literal portion of Applicant’s mark in sound, connotation and commercial

impression.19

Moreover, while Applicant’s mark appears in a particular stylization, this is also

insufficient to distinguish the marks. The cited mark is a standard character mark,

and marks appearing in standard character form may be displayed in any stylization,

font, color and size, including the identical stylization of Applicant’s mark, because

the rights reside in the wording and not in any particular display or rendition. See

Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1256

(Fed. Cir. 2011) (“‘Standard character’ or ‘typed’ registrations are federal mark

registrations that make no claim to any particular font style, color, or size of display

and, thus, are not limited to any particular presentation.”); see also Squirtco v. Tomy

Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983) (“[T]he argument

concerning a difference in type style is not viable where one party asserts rights in

no particular display. By presenting its mark merely in a typed drawing, a difference

cannot legally be asserted by that party.”). Thus, because the font style of the cited

mark may be displayed in the identical manner as Applicant’s mark, the stylization

of Applicant’s mark is insufficient to distinguish the respective marks.

We recognize that in comparing the marks, we must consider Applicant’s and

Registrant’s marks in their entirety. Thus, we have taken into account all of the

19As noted supra, both Applicant and Registrant provide the identical English translation of
the term TEMPUS, i.e., the English word “time.”

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Serial No. 87460794

differences in appearance, sound, meaning and commercial impression between

them, including the stylization of Applicant’s mark, as well as inclusion of the term

TWO in Registrant’s mark. We nonetheless find that despite these differences, given

the similarities between the marks due to the shared, dominant and arbitrary term

TEMPUS, the marks are similar in appearance, pronunciation, and connotation and

engender very similar overall commercial impressions.

Accordingly, the first du Pont factor favors a finding of likelihood of confusion.

C. Similarity of the Goods

The next step in our analysis is a comparison of the goods identified in Applicant’s

application vis-à-vis the goods identified in the cited registration, the second du Pont

factor. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110

USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Hous. Computs. Servs. Inc.,

918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); see also Hewlett-Packard Co.

v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002). It is

settled that it is not necessary that the respective goods be identical or even

competitive in order to find that they are related for purposes of our likelihood of

confusion analysis. The respective goods need only be “related in some manner and/or

if the circumstances surrounding their marketing [be] such that they could give rise

to the mistaken belief that goods emanate from the same source.” Coach Servs., 101

USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB

2007)); see also In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ

1289, 1290 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).

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Serial No. 87460794

Evidence of relatedness may include news articles and/or evidence from computer

databases showing that the relevant goods are used together or used by the same

purchasers; advertisements showing that the relevant goods are advertised together

or offered by the same manufacturer or dealer; and/or copies of prior use-based

registrations of the same mark for both Applicant’s goods and the goods listed in the

cited registration. In re Davia, 110 USPQ2d 1810, 1817 (TTAB 2014) (finding pepper

sauce and agave related where evidence showed both were used for the same purpose

in the same recipes and thus consumers were likely to purchase the products at the

same time and in the same stores). The issue is not whether purchasers would confuse

the goods, but rather whether there is a likelihood of confusion as to the source of

these goods. L’Oreal S.A., 102 USPQ2d at 1439; In re Rexel Inc., 223 USPQ 830, 832

(TTAB 1984).

The Examining Attorney made of record 24 live third-party, use-based

registrations identifying both beer (i.e., Applicant’s goods) and wine (i.e., Registrant’s

goods).20 Although such registrations are not evidence that the marks shown therein

are in use or that the public is familiar with them, they nonetheless have some

probative value to the extent that they serve to suggest that the goods listed therein

are of a kind which may emanate from a single source under a single mark. See In re

20May 3, 2018 Office Action; TSDR pp. 8-13, 17-77. The Examining Attorney also submitted
a copy of Registration No. 4367607 for the mark WIDOW JANE. Id., TSDR pp. 14-16.
Although wine and beer were recited in the identification of goods in this registration at the
time it was issued, these goods have since been deleted from the identification. Accordingly,
this particular registration has little to no probative value in our analysis.

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Serial No. 87460794

Albert Trostel & Sons Co., 29 USPQ2d 1785-86; and In re Mucky Duck Mustard Co.

Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).

Additionally, the Examining Attorney submitted Internet evidence consisting of

screenshots of numerous third-party websites purportedly showing 21 third parties

offering for sale both beer and wine under the same mark.21

Applicant attempts to discredit the Examining Attorney’s third-party registration

and Internet evidence. With regard to the third-party registration evidence,

Applicant argues that it has little probative value because of a program initiated by

the Office that examines whether registered marks for which Section 8 and 71

affidavits have been filed are currently being used on all the goods or services

identified in these registrations.22 Applicant’s argument is unavailing. While it is true

that the Office has commenced such a program, there is no evidence of record that

any of the beer or wine goods identified in the third-party registrations submitted by

the Examining Attorney have been deleted as a result of the program. See “Changes

in Requirements for Affidavits or Declarations of Use, Continued Use, or Excusable

Nonuse in Trademark Cases,” 82 Fed. Reg. 6259, 6262 (Jan. 19, 2017). Accordingly,

Applicant’s argument is merely speculative in nature and does not diminish the

prima facie validity of the third-party registration evidence submitted by the

Examining Attorney.

21Id.; TSDR pp. 88-113; August 22, 2018 Denial of Request for Reconsideration, 9 TTABVUE
7-22.
22 Applicant’s Appeal Brief, pp. 5-6; 11 TTABVUE 6-7.

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Serial No. 87460794

Applicant also provides a lengthy discussion of the Alcohol and Tobacco Tax and

Trade Bureau’s (“TTB”) procedures regarding labeling of alcoholic beverages.23 In an

attempt to demonstrate that all but one the marks subject to the third-party

registrations submitted by the Examining Attorney are not actually in use in

commerce for both beer and wine, Applicant submitted, inter alia, evidence

purportedly demonstrating that the registrants of these registrations have not

obtained Certificates of Label Approval (“COLA”) from the TTB for both types of

alcoholic beverages.24 Applicant’s submission of this extrinsic evidence constitutes an

impermissible attempt to limit the scope of the identification of goods recited in the

third-party registrations submitted by the Examining Attorney. Cf. In re Dixie Rests.

Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997). The problem with

this type of argument is that the comparison of the goods in our likelihood of confusion

analysis must be based on the goods as identified in the third-party

registrations, and not on evidence of actual use of the marks by third-party

registrants. A trademark registration on the Principal Register is prima facie

evidence of the validity of the registration and the registrant’s exclusive right to use

the mark in commerce in connection with all the specified goods. 15 U.S.C. §

1057(b). While it is true that a prima facie presumption of validity may be rebutted,

see Dan Robbins & Assocs., Inc. v. Questor Corp., 599 F.2d 1009, 202 USPQ 100, 105

(CCPA 1979), the present ex parte proceeding is not the proper forum for such a

23 Id. at pp. 6-8; 11 TTABVUE 7-9.
24Applicant’s Request for Reconsideration, 5 TTABVUE 144-153, 185-189, 257-260, 287-293,
and 306-309; 6 TTABVUE 34-36, 128-129, 146-148, and 187-189.

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Serial No. 87460794

challenge.25 Consequently, we have given no consideration to the extrinsic evidence

based on the COLA searches conducted by Applicant.

With regard to the Examining Attorney’s third-party use Internet evidence,

Applicant argues that many of the third-party uses do not demonstrate use of the

same mark for both beer and wine.26 Again, Applicant relies on, inter alia, extrinsic

evidence purportedly showing that these third-parties have not obtained the requisite

COLA labeling approval to offer both wine and beer in U.S. commerce.27 While this

evidence may demonstrate that some of the third-party business establishments have

not obtained the requisite COLA labeling for both beer and wine, consumers of beer

and wine are not privy to such COLA determinations and, therefore, it would not

affect their understanding that beer and wine are provided by a single source,

particularly since customers have been exposed to websites that show single entities

offering both beer and wine under the same mark.

Notwithstanding the foregoing, and after a careful review of the Examining

Attorney’s third-party use Internet evidence, we agree with Applicant to the extent

that many of the third-party websites do not demonstrate the sale of both beer and

25 Applicant’s arguments based on facts surrounding the third-party registrants’ actual use
is more properly made in the context of an infringement action than in a Board proceeding
determining registrability. See TBMP § 102.01.
26 Applicant’s Appeal Brief; 11 TTABVUE 12.
27 Id. Applicant also argues that the Internet evidence consisting of screenshots from the
websites of the retailers Gilly’s, Capital Beer and Wine, Lighthouse, the Virginia Department
of Beer and Wine, Dominion, Ingles, Atkins Farm, Sprouts, and Jungle Jim’s also does not
demonstrate that these businesses sell beer and wine under the same mark. Applicant’s
Appeal Brief, p. 11; 11 TTABVUE 12. The Examining Attorney, however, submitted
screenshots of these third-party retailer websites not to show that a single entity offers both
beer and wine under the same mark, but rather to demonstrate the similar or identical trade
channels in which beer and wine travel. Examining Attorney’s Brief, 13 TTABVUE 8-9.

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Serial No. 87460794

wine under the same mark. Specifically, approximately half of the third-party

websites do not show use of the same mark as a source indicator for both beer and

wine. For example, the screenshots submitted from the websites

www.gardengrovebrewing.com, www.wagnerbrewing.com, and www.schnelbywinery

.com show that these business establishments offer beer and wine under different

marks. Nevertheless, the remaining half of the websites do demonstrate that these

establishments offer beer and wine under the same mark.

Applicant also argues that an extremely small percentage of microbreweries or

nanobreweries sell both beer and wine under the same mark.28 In support of its

argument, Applicant submitted evidence demonstrating that six of the third-party

businesses identified by the Examining Attorney which purportedly sell both beer

and wine under the same mark are approximately 0.1% of the microbreweries in the

United States, and the total production of all microbreweries is less than 2.9% of all

beer production in the U.S.29 In light of this evidence, Applicant maintains that “[t]he

fact that these six businesses sell beer and wine under the same mark does not show

that consumers would expect TEMPUS beer and TEMPUS TWO wine to come from

the same source. If anything, these businesses are exceptions that prove the rule.”30

While this evidence appears to show that only a small percentage of U.S.

microbreweries sell both beer and wine under the same mark, the evidence is far from

28 Applicant’s Appeal Brief, p. 12; 11 TTABVUE 13.
29 Applicant’s Request for Reconsideration; 7 TTABVUE
30 Applicant’s Appeal Brief, p. 12; 11 TTABVUE 13.

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Serial No. 87460794

conclusive that only a small percentage of all breweries (large and small) sell both

beer and wine under the same mark in U.S. commerce. This evidence also does not

rebut the Examining Attorney’s evidence that demonstrates that wineries also sell

beer under the same mark. In other words, Applicant did not submit any evidence to

show that only a minimal amount of wineries sell both wine and beer under the same

mark in the United States. Further, the identification of goods for the subject

application does not limit Applicant’s “beer” to beer produced by a microbrewery.

Finally, in a further attempt to demonstrate that beer and wine are not related

goods, Applicant submitted pairs of third-party registrations for allegedly similar

marks owned by different registrants, the first in the pair identifying beer and the

other identifying wine. Applicant submits that these third-party registrations show

that the Office is willing to approve an application for registration for wine despite

the existence of an earlier registration of the same or similar mark for beer and vice

versa because they are unrelated goods.31 For example, Applicant submitted the

following pairs of third-party registrations owned by different registrants:

• The marks MILLER HIGH LIFE and MILLER LITE are
registered to MillerCoors LLC. Millstone Spirits Group
LLC owns a registration for the mark MELKY MILLER,
covering “alcoholic beverages except beers;”

• The marks CORONA EXTRA and CORONA LIGHT are
registered to Cervecería Modelo de México, S. de R.L. de
C.V. Miguel Torres, S.A. owns registrations for the marks
CORONA and GRAN CORONA, in standard characters
and in composite form, for wine;

31 Applicant’s Appeal Brief p. 12-13; 11 TTABVUE 13-14; Applicant’s Request for
Reconsideration; 7 TTABVUE

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Serial No. 87460794

• The mark STELLA ARTOIS is registered to Anheuser-
Busch In Bev S.A. Other companies have registered
marks containing the word STELLA for wine; and

• The mark STEEL RESERVE is registered to MillerCoors LLC.
Unrelated companies have registered marks containing STEEL
or STEELE for wine.

We find Applicant’s argument unavailing. The nontrivial amount of

countervailing third-party registrations submitted by the Examining Attorney which

identify both beer and wine as listed goods serves to suggest that wine and beer are

related goods since they are types of alcoholic beverages which may emanate from a

single source under a single mark. Moreover, the fact the third-party registrations

submitted by Applicant coexist on the Principal Register does not demonstrate that

the respective goods are unrelated. Here, the sets of registered marks submitted by

Applicant, when viewed in tandem, are clearly not identical. The fact that they may

share a single term does not, in and of itself, demonstrate that the marks are similar.

Because the marks that are subject to the sets of registrations submitted by Applicant

are not identical, and we do not know the history of the registrations or the

commercial relationships between the pairs of parties, we find that these

registrations do not demonstrate that Applicant’s and Registrant’s goods are

unrelated. For these reasons, we give little weight to Applicant’s arguments.

In any event, prior decisions and actions of other trademark examining attorneys

in registering other marks have little evidentiary value and are not binding upon the

USPTO or the Board. TMEP § 1207.01(d)(vi); see In re USA Warriors Ice Hockey

Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017). Each case is decided on its

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Serial No. 87460794

own facts, and each mark stands on its own merits. Id. at 1793 n.10 (quoting In re

Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)).

Although approximately half of the Internet third-party use evidence submitted

by the Examining attorney does not support her contention that beer and wine are

offered under the same mark, we nonetheless find the remaining nontrivial amount

of Internet evidence lends support to a conclusion that “beer” and “wine” are related

goods because the websites show that consumers have been exposed to the concept

that wineries also sell beer or, alternatively, breweries also sell wine, under an

identical designation. Moreover, the third-party registration evidence in this case is

sufficient to demonstrate the relatedness of “beer” and “wines”. See In re Sailerbrau

Franz Sailer, 23 USPQ2d 1719, 1720 (TTAB 1992) (wine and beer found related goods

based on third-party registrations); see also Anheuser-Busch, LLC v. Innvopak Sys.

Pty Ltd., 115 USPQ2d 1816, 1826-27 (TTAB 2015). The third-party registration

evidence and the probative Internet evidence together amply demonstrate the

relatedness of beer and wine, and show that consumers, if they encountered both

goods sold under similar marks (as is the case here), are likely to believe that they

emanate from the same source.

Based on the Internet and third-party registration evidence of record submitted

by the Examining Attorney, we conclude that Applicant’s and Registrant’s goods are

related and are the types of goods that have been offered under a single mark by a

single entity such that, when identified by similar marks, as is the case here,

confusion as to source is likely. Cf. In re Shell Oil Co., 922 F.2d 1204, 26 USPQ2d

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Serial No. 87460794

1687, 1689 (Fed. Cir. 1993) (“[E]ven when goods or services are not competitive or

intrinsically related, the use of identical marks can lead to the assumption that there

is a common source.”).

This finding is consistent with prior precedent. Although there is no per se rule

that all alcoholic beverages are related, see In re White Rock Distilleries Inc., 92

USPQ2d 1282, 1285 (TTAB 2009), the Board has previously found, albeit on different

records, that beer and wine are related goods for purposes of a Trademark Act Section

2(d) analysis. See In re Kysela Pere et Fils, Ltd., 98 USPQ2d 1261, 1265 (TTAB 2011)

(finding beer related to wine); In re Salierbrau Franz Sailer, 23 USPQ2d 1719, 1720

(TTAB 1992) (holding CHRISTOPHER COLUMBUS for beer likely to be confused

with CRISTOBAL COLON & design for sweet wine). The record in this case also

supports such a finding.

Thus, the second du Pont factor favors a finding of likelihood of confusion.

D. Similarities in Trade Channels and Classes of Purchasers

Next we consider established, likely-to-continue channels of trade, the third du

Pont factor. Because there are no limitations as to channels of trade or classes of

purchasers in either the application or cited registration, we must presume that the

goods identified in Applicant’s application and the cited registration travel through

all normal and usual trade channels for such goods. Stone Lion Capital, 110 USPQ2d

at 1161; see also Coach Servs., 101 USPQ2d at 1723 (absent limitation “goods are

presumed to travel in all normal channels … for the relevant goods”).

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Serial No. 87460794

The Examining Attorney submitted Internet evidence demonstrating that beer

and wine travel in the same channels of trade.32 For example, the Examining

Attorney submitted screenshots from the websites of numerous retail stores that

show that these retail establishments sell both beer and wine, i.e., Norm’s Beer and

Wine, Gilly’s Craft Beer & Fine Wine, Tully’s Beer & Wine, Mac’s Beer and Wine

Midtown Liquor, Capital Beer & Wine, Lighthouse Beer and Wine, Department of

Beer and Wine, and Dominion Beer and Wine.33 Furthermore, regardless of the

channels of trade actually utilized by Applicant and Registrant, it is common

knowledge that the normal trade channels for both beer and wine are liquor stores,

online retailers, bars and restaurants, as well as certain supermarkets. In re Kysela

Pere et Fils, Ltd., 98 USPQ2d at 1267 (“It is also common knowledge that [beer and

wine] can be purchased in liquor stores and, in some cases, supermarkets and other

retail outlets.”). In view thereof, we find that the trade channels for Applicant’s and

Registrant’s goods are overlapping, if not the same.

Moreover, as noted, the goods of Applicant and Registrant (“beer” and “wine,”

respectively) are identified without limitation as to classes of purchasers.

Accordingly, we must consider all potential consumers for such goods which would

include any adult member of the general public who drinks wine or beer or purchases

32August 23, 2017 Office Action; TSDR pp. 7-12; May 3, 2018 Office Action; TSDR pp. 78-
87.
33August 23, 2017 Office Action; TSDR pp. 7-10; May 3, 2018 Office Action; TSDR pp. 79-
83.

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Serial No. 87460794

them for others. Therefore, the classes of consumers for Applicant’s and Registrant’s

goods are also overlapping, if not identical.

Thus, the third du Pont factor also weighs in favor of finding a likelihood of

confusion.

E. Balancing the Factors

We have considered all of the arguments and evidence of record, including those

not specifically discussed herein, and all relevant du Pont factors. Because we have

found that the marks are similar in appearance, sound, connotation and commercial

impression; that Applicant’s goods are related to Registrant’s goods and move in the

same channels of trade to the same or overlapping classes of purchasers; and because

Applicant has not demonstrated that Registrant’s mark is so weak as to allow the

registration of Applicant’s mark, we conclude that Applicant’s mark, as used in

connection with the goods identified in the application, so resembles the cited mark

for the identified goods as to be likely to cause confusion or mistake, or to deceive

under Section 2(d) of the Trademark Act.

Decision: The refusal to register Applicant’s mark under Section

2(d) of the Trademark Act is affirmed.

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