Precedential No. 36: Claim of Conjoint Use Not Pleaded and Not Tried by Consent, Says TTAB

The Board dismissed this opposition to registration of the mark INNOVATION BREWING for beer, finding that Opposer Bell's Brewery had failed to prove a likelihood of confusion with the registered mark INSPIRED BREWING, also for beer (the word BREWING being disclaimed in each mark). Opposer Bell's also pled likely confusion with its common law mark BOTTLING INNOVATION SINCE 1985, but it failed to raise that argument in its brief and so the Board deemed that claim to be waived. In its reply brief, Bell's for the first time asserted that confusion is likely under a "conjoint use" analysis: that the opposed mark INNOVATION BREWING combines elements of both of the opposer's marks. The Board, however, found that opposer had failed to plead that claim, and further that the issue of conjoint use had not been tried by consent. In any case, Opposer Bell's failed to prove the extent of any conjoint use. Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340 (TTAB 2017) [precedential] (Opinion by Judge Susan J. Hightower).

The Goods, etc.: Because the involved goods are identical, the Board presumed that they travel through the same, normal channels of trade to the same classes of consumers. The goods are low-priced and subject to impulse purchase, increasing the risk of likelihood of confusion. Opposer's marks, the Board found, are inherently distinctive. Evidence of third-party use and registration of marks containing formatives of INSPIRE or INNOVATION was insufficient to show that the terms "either have a descriptive significance or are in such widespread use that consumers have come to distinguish marks containing them based on minute differences." The Board concluded that opposer's marks are to be accorded to "the normal scope of protection to which inherently distinctive marks are entitled." [Whatever that means - ed.].

Comparing the Marks: As indicated above, the Board found that Opposer Bell's had pled a likelihood of confusion with each of its two marks, but "[n]owhere in the notice did Opposer allege that Applicant's mark would create a likelihood of confusion with Opposer's conjoint use of INSPIRED BREWING and BOTTLING INNOVATION SINCE 1985." In the leading cases on conjoint use, the claim had been clearly pled. See, e.g., Schering-Plough HealthCare Products, Inc. v. Huang, 84 USPQ2d 1323 (TTAB 2007) (finding applicant's mark DR. AIR likely to cause confusion with the jointly used marks DR. SCHOLL'S and AIR-PILLO). [TTABlogged here].

We hold that a likelihood of confusion claim based on the claimant’s use of two marks conjointly must be pleaded clearly enough to provide fair notice of the claim to the defendant. Our holding is analogous to our familiar requirement that a plaintiff must plead reliance on a family of marks.

The Board also found that the issue of conjoint use was not tried by consent. Opposer Bell's claimed that applicant consented because it did not object to evidence of such use, but the Board concluded that the testimony cited by opposer "does not directly address the specific extent to which the two marks are used together." Although the cited evidence does show use of the marks together, "this evidence also is relevant to Opposer's pleaded claim that confusion is likely as to each of its marks individually" and was insufficient to put Applicant on notice of a claim of conjoint use.

In any event, Bell's failed to establish that use of its pleaded marks together "has been effective to qualify them for conjoint analysis." According to Schering-Plough, two elements must be established for conjoint use: (1) the marks have been and are being used together, and (2) the marks "have been used in such a manner and to such an extent in connection with a single product that they have come to be associated together, in the mind of the consuming public, as indications of origin for opposer's product." Opposer satisfied the first element but not the second.

The Board found opposer's use of the two marks together on vehicle wraps, in three magazine issues, on a digital billboard, and at several beer festivals, insufficient to show that the marks "have been used conjointly to such an extent that together they have come to indicate source. Even for the evidence displaying both marks, there is no reason to assume that purchasers would see them as anything other than two distinct marks."

In sum, Opposer Bell's waived its claim of likelihood of confusion as to the mark BOTTLING INNOVATION SINCE 1895, and failed to plead or prove conjoint use.

Turning to opposer's mark INSPIRED BREWING, the Board concluded that it differs from the applied-for mark INNOVATION BREWING in sight, sound, meaning, and overall commercial impression to such an extent that the first du Pont factor is dispositive.

And so the Board dismissed the opposition.

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TTABlog comment: Even if opposer had proven conjoint use, would you find confusion likely?

Text Copyright John L. Welch 2017.