TTABlog Test: Is BUFFALO CITY for Alcoholic Beverages Confusable with BUFFALO TRACE for Bourbon?

Sazerac Brands petitioned for cancellation of a registration for the mark BUFFALO CITY for "alcoholic beverages except beers; distilled spirits," claiming a likelihood of confusion with its registered mark BUFFALO TRACE for "bourbon." The Board found that the goods are legally identical, are presumably sold through the same trade channels to the same classes of consumers, and would be purchased on impulse by the least sophisticated buyer. But what about the marks? Sazerac Brands, LLC v. Buffalo City Distillery, LLC, Cancellation No. 92079064 (July 31, 2025) [not precedential] (Opinion by Judge Christen M. English).

This blog post will attempt to hit some of the highlights of the 78-page opinion. Petitioner Sazerac adopted the name BUFFALO TRACE in 1999 and has won various awards since 2009. Respondent more recently chose the mark BUFFALO CITY to refer to "a ghost town … that once existed in the Outer Banks region and was at one time called 'the Moonshine Capital of North Carolina.'"

Strength of the BUFFALO TRACE mark: The Board found BUFFALO TRACE to be well-known for bourbon, based on Sazerac's "considerable advertising expenditures and sales revenue, its advertising through a number of different media, as well as experiential marketing, and the unsolicited and third-party coverage of the BUFFALO TRACE brand." Furthermore, Respondent’s manager admitted that BUFFALO TRACE is well-known. 

The Board found that the market is "saturated" with BUFFALO-formative marks for beer and breweries – goods that are related to bourbon. "[H]owever, Petitioner has carved out a space of relative exclusive use of the term BUFFALO for bourbon specifically." Thus, the BUFFALO term in Petitioner’s mark BUFFALO TRACE retains some commercial strength for bourbon.

The Marks: The Board found that the similarities in appearance of the marks (two-word marks led by the word BUFFALO) outweighed the differences. As to sound, the Board perceptively observed that the marks are "similar to the extent they are comprised of two words and start with the word BUFFALO, but there are differences in pronunciation because the second words in the marks are different." As to connotation and commercial impression:

Even though the meaning of a "path” or “minute amount” is absent from Respondent’s mark, and the connotation of a “city” is absent from Sazerac's mark, "by Respondent’s own argument and evidence, for some consumers, the parties’ marks will evoke similar general commercial impressions of buffalo and the frontier."

Petitioner's Survey Evidence: Sazerac submitted the results of a Squirt-type survey purporting to show a 30.5% rate of confusion. Respondent's expert attacked the survey on various grounds, several of which hit the mark. First the Board was "troubled by the leading question format of the survey questions, which likely created a demand effect and 'best-fit' exercise." [The survey asked "Q. Do you think any of these brands are made or put out by the same company that makes or puts out the brand you saw first?"].

The survey questions used were framed in the affirmative and are “a classic form of leading question” and “should not be used in surveys conducted for the purpose of being proffered as evidence in litigated matters.” * * * The positive form in which the questions were asked likely encouraged respondents to select the answer “yes.”

Furthermore, the Board agreed with Respondent that "false positives" were encouraged because survey respondents were not specifically informed that it was possible that none of the listed brands were related to the BUFFALO TRACE mark. It found "some merit in Respondent's argument that the survey "merely shows that the registrant’s BUFFALO CITY mark potentially calls to mind the petitioner’s BUFFALO TRACE mark ostensibly because both marks use the common word 'buffalo.'"

Because of these flaws, the Board gave the survey little weight.

Conclusion: Balancing the DuPont factors, the Board found that the first, second, third, fourth, fifth, and thirteenth factors outweighed the sixth factor, the only factor favoring Respondent. "Ultimately, should the ordinary unsophisticated consumer with a fallible memory encounter the parties’ similar marks in use on legally identical, in part, goods and in the same trade channels, there is a likelihood of confusion."

And so, the Board sustained the opposition, noting that it resolved "any reasonable doubt as to whether there is a likelihood of confusion" against Respondent as the newcomer.

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TTABlogger comment: Do you think there's any likelihood of confusion in the real world?

Text Copyright John L. Welch 2025.