TTAB Test: Is THE CANNIBAL for Beer Confusable with THE CANNIBAL for Restaurant Services?

The USPTO refused registration of THE CANNIBAL for beer, finding a likelihood of confusion with the identical mark registered for "Restaurant services; Restaurant services, namely, providing of food and beverages for consumption on and off the premises." Applicant Iron Hill Brewery appealed, arguing that consumers would not believe that restaurant services and beer are related, since the vast majority of breweries do not offer restaurant services because of regulatory restrictions. How do you think this came out? In re Iron Hill Brewery, LLC, Serial No. 86682532 (July 28, 2017) [not precedential] (Opinion by Judge Marc A. Bergsman).

The Board pointed out that the Examining Attorney is required to show "something more" than that identical marks are used for food products and for restaurant services. In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003) (quoting Jacobs v. Int'l Multifoods Corp., 668 F.2d 1234, 212 USPQ 641, 642 (CCPA 1982). "In other words, there is no per se rule that certain goods and services are related."

The Examining Attorney introduced 13 use-based, third-party registrations covering both beer and restaurant services, as well as excerpts from third-party websites purportedly showing the same mark referring to beer and restaurant services.

Taking the Examining Attorney’s position to its logical extreme, not only would a senior user of a mark for restaurant services have prior rights for that mark for beer, but the senior user of a mark for restaurant services could have prior rights for that mark for other food, beverages and condiments (e.g., wine or spirits, salsa or mustard, and chips or desserts, etc.) and a variety of broadly described promotional items (e.g., clothing, glassware, toys, jewelry, sunglasses, paper products, etc.).

The Board listed several circumstance in which it found the "something more" requirement had been satisfied:

- Applicant’s mark made clear that its restaurant specialized in registrant’s type of goods.
- The record showed that registrant's wines were actually sold in applicant's restaurant.
- Registrant’s mark was found to be a "very unique, strong mark."

The Board found the registered mark to be inherently strong, but there was no evidence of any marketplace strength, and so there was no basis for finding that THE CANNIBAL is a "very strong, unique" mark.

Applicant maintained that only a small percentage of restaurants brew their own beer:

Due [to] state and federal regulations, the vast majority of restaurants do not brew their own beer. According to the United States National Restaurant Association, there are more than 1,000,000 restaurants in the United States. See http://www.restaurant.org/News-Research/Research/Facts-at-a-Glance. In contrast, according to the National Brewers Association, there are approximately 4,000 licensed brewers in the United States. See https://www.brewersassocation.org/insights/4000-breweries/.

The Board concluded that the "something more" requirement had not been met:

In light of the large number of restaurants in the United States, the facts that a single mark is sometimes used to identify restaurant services and beer, that some restaurants are associated with breweries, and that restaurants may sell beer are not sufficient to establish a relationship between restaurant services in general and beer.

And so the Board reversed the refusal to register.

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TTABlog comment: Note that generally, providing only an Internet link without the material attached is not sufficient to introduce evidence into the record because of the evanescent nature of web content. However, since the Examining Attorney did not object, the Board considered this evidence.

Text Copyright John L. Welch 2017.