Traditional Medicinals, Inc. v. Heartland Brewery, Inc.

THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB

Mailed: September 20, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Traditional Medicinals, Inc.
v.
Heartland Brewery, Inc.
________

Opposition No. 91159010
to application Serial No. 78187867
filed on November 22, 2002
_______

Jay H. Geller of Jay H. Geller, a Professional Corporation,
for Traditional Medicinals, Inc.

Marc A. Lieberstein of Pitney Hardin LLP for Heartland
Brewery, Inc.
_______

Before Chapman, Grendel and Zervas, Administrative Trademark
Judges.

Opinion by Chapman, Administrative Trademark Judge:

Traditional Medicinals, Inc. (a California corporation)

has opposed the application of Heartland Brewery, Inc. (a

New York corporation) to register on the Principal Register

the mark MOTHER’S MILK MAIBOCK for “beer” in International

Class 32.1

1
Application Serial No. 78187867, filed November 22, 2002, is
based on applicant’s assertion of a bona fide intention to use
the mark in commerce on the identified goods. Upon request of
the Examining Attorney, applicant disclaimed the word “Maibock.”
Opposition No. 91159010

Opposer asserts as grounds for opposition that since

1980 opposer has used the mark MOTHER’S MILK for herb teas

and for dietary and nutritional supplements in the nature of

herb teas; that opposer owns Registration Nos. 1265889 and

2176476, both for the mark MOTHER’S MILK, for “herb tea” and

“dietary and nutritional supplements in the nature of

her[b]al teas,” respectively;2 and that applicant’s mark,

when used on its goods, so resembles opposer’s previously

used and registered mark, as to be likely to cause

confusion, mistake, or deception.

In its answer applicant denies the salient allegations

of the notice of opposition.3

2
Registration No. 1265889, issued January 31, 1984, Section 8
affidavit accepted, Section 15 affidavit acknowledged, renewed.
Registration No. 2176476, issued July 28, 1998, Section 8
affidavit accepted, Section 15 affidavit acknowledged.
3
Applicant pleaded, as a putative “affirmative defense,” that
“the term MOTHER’S MILK as it appears in the alleged marks
asserted by Opposer is non-distinctive, descriptive and/or
generic in connection with its goods pursuant to [Section 14(3)
of the Trademark Act] 15 U.S.C. §1064(3).” This is an
impermissible collateral attack on opposer’s pleaded
registrations. See Trademark Rules 2.106(b)(2)(i) and (ii). As
applicant did not file a counterclaim to cancel either of
opposer’s pleaded registrations, this “affirmative defense” will
not be further considered. See Food Specialty Co., Inc. v.
Standard Products Company, Inc., 406 F.2d 1397, 161 USPQ 46 (CCPA
1969). See also, TBMP §311.02(b) (2d ed. rev. 2004). In any
event, applicant neither pursued this defense at trial nor argued
it in its brief.
The second sentence of the first “affirmative defense,” as well
as the second “affirmative defense,” are likewise not
“affirmative defenses” under Fed. R. Civ. P. 8(c), but are
acceptable pleadings as they constitute further information
relating to applicant’s denial of opposer’s likelihood of
confusion claim.

2
Opposition No. 91159010

The Record

The record consists of the pleadings; the file of

applicant’s involved application; the testimony, with

exhibits, of Drake Sadler, opposer’s CEO;4 opposer’s notice

of reliance on third-party registrations; and applicant’s

notice of reliance on (i) third-party registrations, (ii)

third-party applications, (iii) printouts of pages from

online publications, (iv) printouts from various websites,

(v) a copy of opposer’s deposition of Drake Sadler, and (vi)

a reference that applicant will rely on the documents in

opposer’s notice of reliance.

Both parties filed briefs on the case. Neither party

requested an oral hearing.

There are evidentiary matters we decide at the outset.

Opposer objected to applicant’s notice of reliance on the

basis that the third-party applications and registrations

“have no probative value” or “have very limited probative

value” (opposer’s objections to evidence, pp. 1 and 2); that

the printouts from online publications are “hearsay, have no

foundation and are totally unreliable” and are not self-

authenticating (opposer’s objections to evidence, p. 2);

that the printouts from websites are also hearsay, have no

foundation, are unreliable and are not self-authenticating;

4
Applicant did not attend the deposition of, nor cross-examine,
Mr. Sadler.

3
Opposition No. 91159010

and that applicant’s notice of reliance on opposer’s Sadler

deposition transcript should be stricken as it is already in

the record.

Applicant responded to opposer’s evidentiary

objections, and opposer argued in reply thereto that

applicant stated “the Board may disregard [applicant’s]

Notice of Reliance” (applicant’s brief, p. 6) and thus the

Board should “accede to Applicant’s request” (opposer’s

reply brief, p. 2) and strike all of applicant’s notice of

reliance.

However, applicant’s complete statement was “while

Applicant believes the Board should take Applicant’s Notice

of Reliance evidence into consideration, Applicant submits

that the Board may disregard its Notice of Reliance, because

ultimately, the Board need not consider any of the evidence

in order to realize that no likelihood of confusion exists

in this situation.” (Applicant’s brief, p. 6). Applicant

then argued the merits of opposer’s objections to

applicant’s evidence.

The Board does not construe applicant’s approach as

applicant’s concession of opposer’s objections to

applicant’s notice of reliance. Therefore, we will decide

opposer’s objections on the merits.

Opposer’s objections to the third-party applications

and registrations clearly relate not to the admissibility of

4
Opposition No. 91159010

the documents, but rather to the probative value thereof.

This material is admissible under Trademark Rule 2.122(e),

and opposer’s objections thereto are overruled.

Opposer’s objections to the printouts of pages from

various websites, including from online publications, are

well taken and are sustained. As Internet materials are

transitory in nature, they are not self-authenticating and

therefore are not admissible under Trademark Rule 2.122(e)

as printed publications. See Raccioppi v. Apogee Inc., 47

USPQ2d 1368, 1370 (TTAB 1998). See also, TBMP §704.08 (2d

ed. rev. 2004).

Applicant’s “notice of reliance” on opposer’s

deposition of Drake Sadler and applicant’s statement in its

notice of reliance that it intends to rely on the documents

in opposer’s notice of reliance, are both totally

unnecessary. Evidence put into the record by one party is

in the record for all purposes and the adverse party need

not (and should not) enter the identical material into the

record.

In sum, applicant’s notice of reliance Exhibit Nos. 1-

12 (third-party applications and registrations) have been

considered herein for whatever limited probative value they

have; and its notice of reliance Exhibit Nos. 13-52 have not

been considered.

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Opposition No. 91159010

Next, we determine the requests of the parties for

judicial notice of certain matters. Applicant requests that

the Board take judicial notice that: (i) “Applicant is a

brew-pub restaurant which brews beers for distribution

exclusively through its restaurants” (brief, p. 19), and

(ii) “dietary supplements and herbal teas designed to foster

lactation for nursing mothers are not going to be sold in

brew-pubs” (brief, p. 20). Applicant’s requests for

judicial notice are denied because neither of these are the

kind of facts that are appropriate for judicial notice. See

TBMP §704.12(a) (2d ed. rev. 2004).

Opposer requests that the Board take judicial notice of

“16 CFR 16.21 which sets forth the Federal government’s

alcohol warning: [regarding drinking alcoholic beverages

during pregnancy]” (brief, p. 6). However, opposer did not

provide a copy of the regulation, and thus, the Board will

not take judicial notice thereof. See The Quaker Oats

Company v. Acme Feed Mills, Inc., 192 USPQ 653, footnote 9

(TTAB 1976); and Litton Business Systems, Inc. v. J.G.

Furniture Co., Inc., 190 USPQ 431, 433 (TTAB 1976).

In its brief (p. 11), applicant cited to a few Board

decisions which were designated by the Board as

nonprecedential. Citation to nonprecedential decisions is

improper. See General Mills Inc. v. Health Valley Foods, 24

6
Opposition No. 91159010

USPQ2d 1270, footnote 9 (TTAB 1992); and In re American

Olean Tile Company Inc., 1 USPQ2d 1823, 1825 (TTAB 1986).

The Parties

Opposer, Traditional Medicinals, Inc., was founded in

1974 and Drake Sadler was one of the founders. Opposer

imports and blends tea, packages it, and sells it at retail

throughout the United States. Opposer sells all varieties

of beverage teas and medicinal teas, including herbal teas,

green teas and black teas. Opposer’s MOTHER’S MILK tea is a

traditional herbal formula for nursing women to increase

lactation. Opposer first used the mark MOTHER’S MILK for

herbal teas in the late 1970s and it has continuously used

the mark since that time.

Opposer sells its teas through grocery stores, drug

stores, supermarkets, health and natural food stores,

nutritional stores (i.e., GNC), and through online or

catalog distributors. It advertises in trade publications

(e.g., “Health Foods Business Magazine”) and consumer

publications (e.g., “Medical Self-Care,” “Mothering”). From

1999-2004 opposer’s sales of its MOTHER’S MILK tea totaled

approximately $2,686,000 (Sadler dep., Exhibit I).

Opposer’s advertising expenses from 1997-2004 totaled

several hundred thousand dollars (Sadler dep., Exhibit F).

The only information of record regarding applicant

essentially comes from its application file, which indicates

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Opposition No. 91159010

that applicant, Heartland Brewery, Inc., is a New York

corporation located in New York City.5

Burden of Proof

In Board proceedings regarding the registrability of

marks, our primary reviewing Court has held that the

plaintiff must establish its pleaded case, as well as its

standing, and must generally do so by a preponderance of the

evidence. See Cunningham v. Laser Golf Corp., 222 F.3d 943,

55 USPQ2d 1842, 1848 (Fed. Cir. 2000); and Cerveceria

Centroamericana, S.A. v. Cerveceria India Inc., 892 F.2d

1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989).

Standing

Standing requires only that a party opposing

registration of a mark have a good faith belief that it is

likely to be damaged by the registration. See Section 13 of

the Trademark Act, 15 U.S.C. §1063. See also, 3 J. Thomas

McCarthy, McCarthy on Trademarks and Unfair Competition,

§20:7 (4th ed. 2005). The belief in damage can be shown by

establishing a direct commercial interest.

5
Applicant’s argument in its brief (p. 19) that opposer did not
submit evidence that applicant sells its beer through retail
outlets is not persuasive. While opposer bears the burden of
proving its claim as plaintiff in the opposition, a plaintiff is
not required to submit evidence regarding the defendant’s mark
and use or intended use thereof. If applicant wished to have
such evidence of record, it could have taken testimony of
applicant.

8
Opposition No. 91159010

Applicant has applied to register the mark MOTHER’S

MILK MAIBOCK for beer claiming a bona fide intention to use

the mark in commerce. Opposer uses the mark MOTHER’S MILK

for herb teas and dietary and nutritional supplements in the

nature of herbal teas; and through the testimony of Drake

Sadler (dep., pp. 10-13, Exhibits A and B), opposer made of

record its two pleaded registrations for the mark MOTHER’S

MILK for those goods. These facts establish opposer’s

direct commercial interest and its standing to oppose

registration of applicant’s mark. See Cunningham v. Laser

Golf Corp., supra.

Priority

In view of opposer’s pleaded registrations for its

MOTHER’S MILK mark being of record herein, the issue of

priority does not arise in this opposition proceeding. See

King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d

1400, 182 USPQ 108, 110 (CCPA 1974); Massey Junior College,

Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 181

USPQ 272, at footnote 6 (CCPA 1972); and Carl Karcher

Enterprises, Inc. v. Stars Restaurants Corp., 35 USPQ2d 1125

(TTAB 1995). Moreover, the record establishes opposer’s

continuous use of its mark MOTHER’S MILK for herb tea since

the late 1970s, well prior to the November 22, 2002 filing

date of applicant’s application.

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Opposition No. 91159010

Likelihood of Confusion

We turn now to consideration of the issue of likelihood

of confusion. Our determination of likelihood of confusion

is based on an analysis of all of the 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 (CCPA 1973). See also, In

re Majestic Distilling Company, Inc., 315 F.3d 1311, 65

USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of

confusion analysis, two key considerations are the

similarities of the marks and the similarities of the goods

and/or services. 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.”). See also, In re

Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed.

Cir. 1997). Based on the record before us, we find that

confusion is likely.

We consider first the parties’ respective marks. It is

well settled that marks must be considered in their

entireties as to the similarities and dissimilarities

thereof. However, our primary reviewing Court has held that

in articulating reasons for reaching a conclusion on the

question of likelihood of confusion, there is nothing

10
Opposition No. 91159010

improper in stating that, for rational reasons, more or less

weight has been given to a particular feature or portion of

a mark. That is, one feature of a mark may have more

significance than another. See Cunningham v. Laser Golf

Corp., supra; Sweats Fashions Inc. v. Pannill Knitting Co.,

833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987); and In

re National Data Corporation, 753 F.2d 1056, 224 USPQ 749,

752 (Fed. Cir. 1985).

The marks are highly similar in sound, appearance,

connotation and commercial impression as opposer’s mark is

MOTHER’S MILK and applicant’s mark is MOTHER’S MILK MAIBOCK.

Obviously, the only difference in the marks is applicant’s

addition of the word “MAIBOCK,” which is defined in the

thirstbusters.com glossary (of record in applicant’s

application, see Trademark Rule 2.122(b)(1)) as “(German)

Bock beer of super-premium quality, usually pale, made for

the first of May to celebrate spring.” Thus, the term

“maibock” refers to a type of beer and has been disclaimed

by applicant.

MOTHER’S MILK is the dominant (and beginning) element

in applicant’s mark. The word “Maibock,” being a highly

descriptive (possibly generic), term in relation to beer,

while not ignored in our consideration, is nonetheless of

less trademark significance to consumers. See Cunningham v.

11
Opposition No. 91159010

Laser Golf Corp., supra; and In re Code Consultants Inc., 60

USPQ2d 1699 (TTAB 2001).

Applicant’s arguments that the marks are “distinctly

dissimilar in sight, sound and commercial impression”

(brief, p. 8) are not persuasive. Applicant’s mark is

identical to opposer’s mark except for applicant’s addition

of the highly descriptive term “Maibock.” The addition of

such a word to another’s mark does not offer a sufficient

difference to create a separate commercial impression. See

In re Dixie Restaurants Inc., supra. It is the words

MOTHER’S MILK, not the descriptive word “Maibock,” which

dominate the commercial impression created by applicant’s

mark.

When considered in their entireties, we find that the

respective marks are similar in sound, appearance,

connotation and commercial impression. See Palm Bay Imports

Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d

1689 (Fed. Cir. 2005); and In re Azteca Restaurant

Enterprises Inc., 50 USPQ2d 1209 (TTAB 1999).

The next du Pont factor is the similarity or

dissimilarity in the nature of the parties’ goods, as

identified in the application, and in opposer’s proven

registrations. It is well settled that goods need not be

identical or even competitive to support a finding of

likelihood of confusion, it being sufficient instead that

12
Opposition No. 91159010

the goods are related in some manner or that the

circumstances surrounding their marketing are such that they

would likely be encountered by the same persons under

circumstances that could give rise to the mistaken belief

that they emanate from or are associated with the same

source. See In re Martin’s Famous Pastry Shoppe, Inc., 748

F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Opus One

Inc., 60 USPQ2d 1812 (TTAB 2001); and Chemical New York

Corp. v. Conmar Form Systems Inc., 1 USPQ2d 1139 (TTAB

1986).

Applicant’s goods are identified as “beer” and

opposer’s identified goods are “herb tea” and “dietary and

nutritional supplements in the nature of her[b]al teas.”

Both parties sell beverages. Although applicant’s

product is alcoholic and opposer’s products are not, opposer

has made of record copies of several third-party

registrations, all based on use in commerce, as evidence

showing that several companies manufacture and sell both

alcoholic and non-alcoholic beverages (specifically beer and

tea),6 under the same marks. See, for example, Registration

No. 2471817, with goods in International Classes 29, 30 and

6
Applicant argues that if the third-party registrations
submitted by opposer are considered, they “simply indicate that
teas and beer could be related, not that specialized herb teas
(such as Opposer’s lactation-aiding herbal tea) are related to
beer.” (Brief, footnote 1.) This is not correct because in the
third-party registrations the broad term “tea” encompasses all
types of “tea” including “herb tea.”

13
Opposition No. 91159010

32, for, inter alia, “…herbal tea…” and “…beer…”;

Registration No. 2507279, with goods in International

Classes 30 and 32, for, inter alia, “…tea…” and “…beer…”;

Registration No. 2240995, with goods in International

Classes 5, 30 and 32, for, inter alia, “…tea…” and “…beer…”;

Registration No. 2535175, with goods in International

Classes 29, 30, 31 and 32, for, inter alia, “tea…” and

“beer….”

When considering the third-party registrations, we are

mindful that such registrations are not evidence that the

marks shown therein are in use or that the public is

familiar with them. Such third-party registrations

nevertheless have probative value to the extent they serve

to suggest that such goods are of a type which emanate from

the same source. See In re Infinity Broadcasting Corp. of

Dallas, 60 USPQ2d 1214 (TTAB 2001); In re Albert Trostel &

Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993); and In re Mucky

Duck Mustard Co., Inc., 6 USPQ2d 1467, footnote 6 (TTAB

1988). Thus, the third-party registrations show that

applicant’s identified goods and opposer’s identified goods

may emanate from a single source and be sold under a single

mark.

Decisions of this Board and a predecessor Court to our

current primary reviewing Court have made clear that in

appropriate factual contexts, alcoholic beverages and non-

14
Opposition No. 91159010

alcoholic beverages may be so related as to be likely to

cause confusion when similar marks are used thereon. See

Coca-Cola Bottling Co. v. Seagram & Sons, Inc., 526 F.2d

556, 188 USPQ 105 (CCPA 1975)(BENGAL LANCER and design for

club soda, quinine water and ginger ale held confusingly

similar to BENGAL for gin); Pink Lady Corp. v. L.N. Renault

& Sons, Inc., 265 F.2d 951, 121 USPQ 465 (CCPA 1959)(PINK

LADY and design for wines held confusingly similar to PINK

LADY for, inter alia, fruit juices for food purposes and

packaged grapefruit juices for beverage purposes); In re

Modern Development Co., 225 USPQ 695 (TTAB 1985)(THE CANTEEN

in stylized lettering for wine in cans held confusingly

similar to CANTEEN in stylized lettering for, inter alia,

ginger ale and root beer); In re Rola Weinbrennerei Und

Likorfabrik, 223 USPQ 57 (TTAB 1984)(SUN-APPLE in stylized

lettering for apple-flavor alcoholic liqueur held

confusingly similar to SUN APPLE in stylized lettering for

powdered apple flavor soft drink mix); In re Jakob Demmer

KG, 219 USPQ 1199 (TTAB 1983)(GOLDEN HARVEST and design for

wines held confusingly similar to GOLDEN HARVEST in stylized

lettering for apple cider); and American “76” Co. v. The

National Brewing Co., 158 USPQ 417 (TTAB 1968)(FRENCH 76 in

stylized lettering (“FRENCH” disclaimed) for malt liquor

held confusingly similar to 76 for soft drinks).

15
Opposition No. 91159010

We find that applicant’s and opposer’s identified goods

are related products within the meaning of the Trademark

Act. See Hewlett-Packard Company v. Packard Press, Inc.,

281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002)(“even

if the goods and services in question are not identical, the

consuming public may perceive them as related enough to

cause confusion about the source or origin of the goods and

services”); and Recot Inc. v. M.C. Becton, 214 F.3d 1332, 54

USPQ2d 1894, 1898 (Fed. Cir. 2000)(“even 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.”).

Regarding the trade channels and purchasers, applicant

argues that “the commercial realities demonstrate the

different channels of trade used by the two parties.”

(Brief, p. 19.) However, as acknowledged by applicant

(brief, p. 19), there are no limitations in either

applicant’s or opposer’s identifications of goods as to

trade channels and/or purchasers. Thus, in this proceeding

involving the registrability of applicant’s mark, we must

presume that the goods travel in all their normal channels

of trade and that they are purchased by the same classes of

purchasers, which in this case is the public at large. See

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Opposition No. 91159010

Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811

F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).

Opposer has established that its goods are sold, inter

alia, in grocery stores and supermarkets. It is true that

applicant’s goods are alcoholic and sale is restricted by

age. In any event, both parties’ goods are sold to the

general public, with applicant’s, as required by law,

limited to adults. Thus, we find that the goods would be

offered through the same or at least overlapping channels of

trade to the same or at least overlapping consumers.

Turning to the du Pont factor of the number and nature

of similar marks in use on similar goods, applicant argues

that it “submits numerous registrations evidencing the use

of MOTHER’S MILK by various third parties….” In support

thereof, applicant refers to the six third-party

applications and the six third-party registrations that it

made of record through its notice of reliance.

The third-party applications carry no weight as they

are evidence only that the applications were filed on

particular dates. The six third-party registrations are

likewise totally devoid of evidentiary value with regard to

this du Pont factor because third-party registrations do not

establish that the marks shown therein are in use, or that

the public is familiar with them. Thus, we cannot assume

that the public will (presumably) come to distinguish

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Opposition No. 91159010

between them. See Olde Tyme Foods Inc. v. Roundy’s Inc.,

961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992); and

Helene Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d

1618 (TTAB 1989). There is no evidence before us of any use

by any third party of any mark including the words “MOTHER’S

MILK” for the same or related goods.

Looking next at the du Pont factor of the fame of

opposer’s mark, opposer argues (brief, p. 16) as follows:

“…here there is evidence from the Sadler testimony of

extensive sales and advertising expenses since 1977 that

establish the fame of Opposer’s MOTHER’S MILK mark.

Opposer’s sales literature, advertisements, and promotional

materials include frequent and prominent references to its

MOTHER’S MILK tea.” Applicant argues that opposer has not

established that its mark is famous; and that opposer’s mark

is entitled to only a narrow scope of protection.

On this record, we agree with applicant that opposer

has not established that its mark is famous. The mere

length of time a mark has been in use does not establish

fame. Opposer’s sales and advertising figures for its

MOTHER’S MILK herbal teas and supplements covering six years

and eight years respectively are not substantial. Simply

put, the record herein does not support a finding that

opposer’s MOTHER’S MILK mark is strong for its herb teas and

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Opposition No. 91159010

dietary and nutritional supplements in the nature of herbal

teas.

Applicant argues that opposer’s MOTHER’S MILK mark

“…should only be afforded a narrow scope of protection due

to such common usage in various fields.” (Brief, p. 13.)

As mentioned previously herein, applicant introduced

six third-party registrations, all of which include the word

MOTHER’S MILK in the mark. However, the goods and services

identified in those registrations are not relevant in this

case (e.g., “educational services, …”; “breast milk storage

system consisting of storage rack, plastic bottles…”;

“breast simulation apparatus used to teach or demonstrate

breast feeding techniques to expectant mothers”). These

third-party registrations do not establish that opposer’s

MOTHER’S MILK mark is weak for herb teas and/or dietary and

nutritional supplements in the nature of herbal teas.

Because we have found that the record does not support

a finding that opposer’s MOTHER’S MILK mark is famous, and

it does not support a finding that it is a weak mark, we

therefore accord opposer’s MOTHER’S MILK mark the normal

scope of protection otherwise afforded to registered marks.

We specifically note that opposer’s two registrations for

the mark MOTHER’S MILK are both registered on the Principal

Register with no claim of acquired distinctiveness under

Section 2(f) of the Trademark Act in either registration;

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Opposition No. 91159010

and opposer’s two registrations are, of course, entitled to

the statutory presumptions under Section 7(b) of the

Trademark Act.

On balance, and considering all of the evidence on the

relevant du Pont factors, and giving each such factor its

appropriate weight in the circumstances of this case, we

find that purchasers familiar with opposer’s MOTHER’S MILK

herbal teas and dietary and nutritional supplements in the

nature of herbal teas, who then encounter applicant’s

MOTHER’S MILK MAIBOCK beer, are likely to believe that

applicant’s goods emanate from or are associated with or

sponsored by opposer.

To the extent we have doubt as to the presence of

likelihood of confusion, we resolve that doubt against the

newcomer (applicant) and in favor of the prior user and

registrant (opposer). See In re Pneumatiques, Caoutchouc

Manufacture, 487 F.2d 918, 179 USPQ 729 (CCPA 1973)(“If

there be doubt on the issue of likelihood of confusion, the

familiar rule in trademark cases, which this court has

consistently applied since its creation in 1929, is that it

must be resolved against the newcomer or in favor of the

prior user or registrant.”) See also, TBC Corp. v. Holsa

Inc., 126 F.3d 1470, 44 USPQ2d 1315, 1318 (Fed. Cir. 1997);

and In re Hyper Shoppes, 837 F.2d 840, 6 USPQ2d 1025, 1026

(Fed. Cir. 1988).

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Opposition No. 91159010

Decision: The opposition is sustained and registration

to applicant is refused.

21