TTABlog Test: Are Beer and Restaurant Services Related for Section 2(d) Purposes?

The USPTO refused to register the mark CHICKEN SCRATCH for "beer" on the ground of likely confusion with the identical mark registered for "restaurant services." Applicant R.S. Lipman argued that the cited mark is weak because it describes registrant's services, which provide "chicken dishes made from scratch." The Board pooh-poohed that argument, but what about the "something more" requirement? Did the USPTO clear that hurdle? In re R.S. Lipman Brewing Company, LLC, Serial No. 88209633 (May 3, 2023) [not precedential] (Opinion by Judge Michael B. Adlin).

As to the marks, the Board noted that the cited mark is presumably inherently distinctive, since it was registered without a Section 2(f) claim. Applicant, relying on the registrant's webpage ("Chicken made from scratch with a nostalgic flavor  profile"), argued that the cited mark is descriptive and conceptually weak. The Board disagreed: "'CHICKEN SCRATCH' (bad handwriting) has a different connotation and commercial impression than chicken 'made from scratch' (meaning 'to use only the most basic ingredients, with nothing premade')." Moreover, the cited mark is presumed to be at least suggestive of the services.

It takes a long stretch of a consumer’s imagination to say that CHICKEN SCRATCH calls to mind or suggests chicken entrees made from scratch. Thus as a whole CHICKEN SCRATCH has some suggestion of “chicken” because this term is contained within the mark, but inclusion of the term “scratch” in the mark makes it less suggestive of restaurant services. “A mark that is only somewhat suggestive is entitled to greater protection than a more highly suggestive mark.”

Applicant did not offer any proof of third-party use of the mark CHICKEN SCRATCH. The Board concluded that the cited mark is not a conceptually weak when used in connection with Registrant’s identified restaurant services, and so it accorded the mark "the normal scope of protection afforded a registered mark."

Applicant argued that the marks, although identical, have different connotations, since the cited mark "conveys a strong commercial impression of a restaurant focused primarily on ‘chicken’ entrees made from ‘scratch.’" The Board noted the lack of evidence to support that assertion, but in any case,

we are left with (according to Applicant) Registrant’s CHICKEN SCRATCH mark being associated with chicken dishes and Applicant’s CHICKEN SCRATCH mark being associated with the commonality of the ingredients of Applicant’s beer and chicken feed. Thus, even according to Applicant, the respective marks have similar (or at least related) commercial impressions given their connection to “chicken.”

Turning to the goods and services, both applicant and the examining attorney placed heavy reliance on the CAFC's decision in In re Coors (wherein the CAFC reversed a Section 2(d) refusal to register the mark BLUE MOON & Design for beer in light of a registration for another BLUE MOON Design for restaurant services.). The Board closely compared the record in that case with the record in this case. It noted the "additional wording in the applicant’s mark as well as significant differences in the design and coloring elements between the two marks." and the evidence of numerous third-party uses of "Blue Moon” for restaurant services and its appearance in many registered marks for food and beverages.

Furthermore, in Coors, the applicant submitted evidence regarding the relatively small number of breweries in the United States selling beer and rendering restaurant services under the same mark, as compared to the number of United States restaurants as a whole. Here, there was no such comparative evidence. Examining Attorney Sharon A. Meier made of record 21 registrations covering beer and restaurant services, as well as excerpts from 18 active website of third-party restaurants that serve their own beer under the same mark as their restaurant establishment; either by way of on-premise brewing or under private label production.

The Board concluded that "the evidence provided in the present appeal shows a much closer relationship between beer and restaurant services as compared to the record described by the Federal Circuit 20 years ago in In re Coors," and it found the evidence sufficient to show the relatedness of applicant’s goods and registrant’s services.

Finally, the Board found that beer and restaurant services "travel in overlapping trade channels, and are promoted for sale to the same general class of consumers."

The Examining Attorney’s evidence shows “something more” than that beer is sold in restaurants, and thus Applicant’s goods and Registrant’s services are related, travel in overlapping trade channels, and are offered to overlapping target consumers. With the relatively recent growth of the “brewpub” market segment, consumers would expect that beer and restaurant services marketed and sold under the same mark would originate from the same source.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: Seems like the applicant put its eggs in the wrong basket in this appeal. Do you think the USPTO should have to prove that it is "common" for an entity to offer restaurants services and beer under the same mark? Should the USPTO have the burden to submit the "comparative evidence" that the applicant submitted in Coors?

Text Copyright John L. Welch 2023.