Chapman*
Grendel
Zervas
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 MOTHERS MILK MAIBOCK for beer in International
Class 32.1
1
Application Serial No. 78187867, filed November 22, 2002, is
based on applicants 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 MOTHERS 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 MOTHERS MILK, for herb tea and
dietary and nutritional supplements in the nature of
her[b]al teas, respectively;2 and that applicants mark,
when used on its goods, so resembles opposers 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 MOTHERS 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 opposers pleaded
registrations. See Trademark Rules 2.106(b)(2)(i) and (ii). As
applicant did not file a counterclaim to cancel either of
opposers 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 applicants denial of opposers likelihood of
confusion claim.
2
Opposition No. 91159010
The Record
The record consists of the pleadings; the file of
applicants involved application; the testimony, with
exhibits, of Drake Sadler, opposers CEO;4 opposers notice
of reliance on third-party registrations; and applicants
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 opposers deposition of Drake Sadler, and (vi)
a reference that applicant will rely on the documents in
opposers 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 applicants notice of reliance on the
basis that the third-party applications and registrations
have no probative value or have very limited probative
value (opposers 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 (opposers 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 applicants notice of reliance on opposers Sadler
deposition transcript should be stricken as it is already in
the record.
Applicant responded to opposers evidentiary
objections, and opposer argued in reply thereto that
applicant stated the Board may disregard [applicants]
Notice of Reliance (applicants brief, p. 6) and thus the
Board should accede to Applicants request (opposers
reply brief, p. 2) and strike all of applicants notice of
reliance.
However, applicants complete statement was while
Applicant believes the Board should take Applicants 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. (Applicants brief, p. 6). Applicant
then argued the merits of opposers objections to
applicants evidence.
The Board does not construe applicants approach as
applicants concession of opposers objections to
applicants notice of reliance. Therefore, we will decide
opposers objections on the merits.
Opposers 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 opposers objections thereto are overruled.
Opposers 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).
Applicants notice of reliance on opposers
deposition of Drake Sadler and applicants statement in its
notice of reliance that it intends to rely on the documents
in opposers 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, applicants 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.
5
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). Applicants 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 governments
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. Opposers MOTHERS MILK tea is a
traditional herbal formula for nursing women to increase
lactation. Opposer first used the mark MOTHERS 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 opposers sales of its MOTHERS MILK tea totaled
approximately $2,686,000 (Sadler dep., Exhibit I).
Opposers 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
7
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
Applicants 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 defendants 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 MOTHERS
MILK MAIBOCK for beer claiming a bona fide intention to use
the mark in commerce. Opposer uses the mark MOTHERS 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 MOTHERS
MILK for those goods. These facts establish opposers
direct commercial interest and its standing to oppose
registration of applicants mark. See Cunningham v. Laser
Golf Corp., supra.
Priority
In view of opposers pleaded registrations for its
MOTHERS MILK mark being of record herein, the issue of
priority does not arise in this opposition proceeding. See
King Candy Co. v. Eunice Kings 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 opposers
continuous use of its mark MOTHERS MILK for herb tea since
the late 1970s, well prior to the November 22, 2002 filing
date of applicants application.
9
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 opposers mark is
MOTHERS MILK and applicants mark is MOTHERS MILK MAIBOCK.
Obviously, the only difference in the marks is applicants
addition of the word MAIBOCK, which is defined in the
thirstbusters.com glossary (of record in applicants
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.
MOTHERS MILK is the dominant (and beginning) element
in applicants 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).
Applicants arguments that the marks are distinctly
dissimilar in sight, sound and commercial impression
(brief, p. 8) are not persuasive. Applicants mark is
identical to opposers mark except for applicants addition
of the highly descriptive term Maibock. The addition of
such a word to anothers mark does not offer a sufficient
difference to create a separate commercial impression. See
In re Dixie Restaurants Inc., supra. It is the words
MOTHERS MILK, not the descriptive word Maibock, which
dominate the commercial impression created by applicants
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 opposers 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 Martins 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).
Applicants goods are identified as beer and
opposers identified goods are herb tea and dietary and
nutritional supplements in the nature of her[b]al teas.
Both parties sell beverages. Although applicants
product is alcoholic and opposers 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 Opposers 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
applicants identified goods and opposers 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 applicants and opposers 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
applicants or opposers identifications of goods as to
trade channels and/or purchasers. Thus, in this proceeding
involving the registrability of applicants 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
16
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
applicants goods are alcoholic and sale is restricted by
age. In any event, both parties goods are sold to the
general public, with applicants, 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 MOTHERS 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
17
Opposition No. 91159010
between them. See Olde Tyme Foods Inc. v. Roundys 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 MOTHERS
MILK for the same or related goods.
Looking next at the du Pont factor of the fame of
opposers 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 Opposers MOTHERS MILK mark.
Opposers sales literature, advertisements, and promotional
materials include frequent and prominent references to its
MOTHERS MILK tea. Applicant argues that opposer has not
established that its mark is famous; and that opposers 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. Opposers sales and advertising figures for its
MOTHERS 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
opposers MOTHERS MILK mark is strong for its herb teas and
18
Opposition No. 91159010
dietary and nutritional supplements in the nature of herbal
teas.
Applicant argues that opposers MOTHERS 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
MOTHERS 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 opposers
MOTHERS 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 opposers MOTHERS MILK mark is famous, and
it does not support a finding that it is a weak mark, we
therefore accord opposers MOTHERS MILK mark the normal
scope of protection otherwise afforded to registered marks.
We specifically note that opposers two registrations for
the mark MOTHERS 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;
19
Opposition No. 91159010
and opposers 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 opposers MOTHERS MILK
herbal teas and dietary and nutritional supplements in the
nature of herbal teas, who then encounter applicants
MOTHERS MILK MAIBOCK beer, are likely to believe that
applicants 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).
20
Opposition No. 91159010
Decision: The opposition is sustained and registration
to applicant is refused.
21
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 MOTHERS MILK MAIBOCK for beer in International
Class 32.1
1
Application Serial No. 78187867, filed November 22, 2002, is
based on applicants 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 MOTHERS 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 MOTHERS MILK, for herb tea and
dietary and nutritional supplements in the nature of
her[b]al teas, respectively;2 and that applicants mark,
when used on its goods, so resembles opposers 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 MOTHERS 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 opposers pleaded
registrations. See Trademark Rules 2.106(b)(2)(i) and (ii). As
applicant did not file a counterclaim to cancel either of
opposers 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 applicants denial of opposers likelihood of
confusion claim.
2
Opposition No. 91159010
The Record
The record consists of the pleadings; the file of
applicants involved application; the testimony, with
exhibits, of Drake Sadler, opposers CEO;4 opposers notice
of reliance on third-party registrations; and applicants
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 opposers deposition of Drake Sadler, and (vi)
a reference that applicant will rely on the documents in
opposers 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 applicants notice of reliance on the
basis that the third-party applications and registrations
have no probative value or have very limited probative
value (opposers 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 (opposers 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 applicants notice of reliance on opposers Sadler
deposition transcript should be stricken as it is already in
the record.
Applicant responded to opposers evidentiary
objections, and opposer argued in reply thereto that
applicant stated the Board may disregard [applicants]
Notice of Reliance (applicants brief, p. 6) and thus the
Board should accede to Applicants request (opposers
reply brief, p. 2) and strike all of applicants notice of
reliance.
However, applicants complete statement was while
Applicant believes the Board should take Applicants 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. (Applicants brief, p. 6). Applicant
then argued the merits of opposers objections to
applicants evidence.
The Board does not construe applicants approach as
applicants concession of opposers objections to
applicants notice of reliance. Therefore, we will decide
opposers objections on the merits.
Opposers 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 opposers objections thereto are overruled.
Opposers 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).
Applicants notice of reliance on opposers
deposition of Drake Sadler and applicants statement in its
notice of reliance that it intends to rely on the documents
in opposers 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, applicants 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.
5
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). Applicants 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 governments
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. Opposers MOTHERS MILK tea is a
traditional herbal formula for nursing women to increase
lactation. Opposer first used the mark MOTHERS 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 opposers sales of its MOTHERS MILK tea totaled
approximately $2,686,000 (Sadler dep., Exhibit I).
Opposers 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
7
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
Applicants 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 defendants 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 MOTHERS
MILK MAIBOCK for beer claiming a bona fide intention to use
the mark in commerce. Opposer uses the mark MOTHERS 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 MOTHERS
MILK for those goods. These facts establish opposers
direct commercial interest and its standing to oppose
registration of applicants mark. See Cunningham v. Laser
Golf Corp., supra.
Priority
In view of opposers pleaded registrations for its
MOTHERS MILK mark being of record herein, the issue of
priority does not arise in this opposition proceeding. See
King Candy Co. v. Eunice Kings 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 opposers
continuous use of its mark MOTHERS MILK for herb tea since
the late 1970s, well prior to the November 22, 2002 filing
date of applicants application.
9
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 opposers mark is
MOTHERS MILK and applicants mark is MOTHERS MILK MAIBOCK.
Obviously, the only difference in the marks is applicants
addition of the word MAIBOCK, which is defined in the
thirstbusters.com glossary (of record in applicants
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.
MOTHERS MILK is the dominant (and beginning) element
in applicants 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).
Applicants arguments that the marks are distinctly
dissimilar in sight, sound and commercial impression
(brief, p. 8) are not persuasive. Applicants mark is
identical to opposers mark except for applicants addition
of the highly descriptive term Maibock. The addition of
such a word to anothers mark does not offer a sufficient
difference to create a separate commercial impression. See
In re Dixie Restaurants Inc., supra. It is the words
MOTHERS MILK, not the descriptive word Maibock, which
dominate the commercial impression created by applicants
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 opposers 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 Martins 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).
Applicants goods are identified as beer and
opposers identified goods are herb tea and dietary and
nutritional supplements in the nature of her[b]al teas.
Both parties sell beverages. Although applicants
product is alcoholic and opposers 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 Opposers 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
applicants identified goods and opposers 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 applicants and opposers 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
applicants or opposers identifications of goods as to
trade channels and/or purchasers. Thus, in this proceeding
involving the registrability of applicants 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
16
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
applicants goods are alcoholic and sale is restricted by
age. In any event, both parties goods are sold to the
general public, with applicants, 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 MOTHERS 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
17
Opposition No. 91159010
between them. See Olde Tyme Foods Inc. v. Roundys 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 MOTHERS
MILK for the same or related goods.
Looking next at the du Pont factor of the fame of
opposers 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 Opposers MOTHERS MILK mark.
Opposers sales literature, advertisements, and promotional
materials include frequent and prominent references to its
MOTHERS MILK tea. Applicant argues that opposer has not
established that its mark is famous; and that opposers 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. Opposers sales and advertising figures for its
MOTHERS 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
opposers MOTHERS MILK mark is strong for its herb teas and
18
Opposition No. 91159010
dietary and nutritional supplements in the nature of herbal
teas.
Applicant argues that opposers MOTHERS 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
MOTHERS 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 opposers
MOTHERS 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 opposers MOTHERS MILK mark is famous, and
it does not support a finding that it is a weak mark, we
therefore accord opposers MOTHERS MILK mark the normal
scope of protection otherwise afforded to registered marks.
We specifically note that opposers two registrations for
the mark MOTHERS 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;
19
Opposition No. 91159010
and opposers 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 opposers MOTHERS MILK
herbal teas and dietary and nutritional supplements in the
nature of herbal teas, who then encounter applicants
MOTHERS MILK MAIBOCK beer, are likely to believe that
applicants 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).
20
Opposition No. 91159010
Decision: The opposition is sustained and registration
to applicant is refused.
21