Wednesday, January 21, 2009

Outback Steakhouse Fails to Prove Relatedness of Bottled Water and Beer; TTAB Dismisses 2(d) Opposition

A half-baked, watered-down effort by Outback Steakhouse led to a Section 2(d) setback as the Board dismissed an opposition to registration of the mark AUSTRALIAN OUTBACK RAIN & Design (shown below left) for "bottled drinking water" [AUSTRALIAN OUTBACK disclaimed], finding it not likely to cause confusion with the registered marks OUTBACK for beer and baked goods and OUTBACK STEAKHOUSE & Design (below right) for beer. Outback Steakhouse of Florida, Inc. and OS Asset, Inc. v. Waterworldwide Pty Ltd., Opposition No. 91161384 (January 7, 2009) [not precedential].

Opposers' problems began when they pleaded 25 registrations but properly introduced only three into the record. They claimed that their marks are "commercially strong" and have "extensive recognition and renown," but they relied solely on "purported facts and anecdotal evidence gleaned from the news articles submitted via their notice of reliance." The Board, however, cannot accept such printed publications as proof of the facts stated therein: the articles are hearsay and serve merely as evidence that the content appeared and the public was exposed to that content. Therefore, the Board was unable to find that Opposers' marks are famous for purposes of Section 2(d).

Comparing the parties' marks, the Board found that, with respect to Opposers' OUTBACK mark, the similarities of the marks slightly favored Opposers. However, as to Opposers' logo mark, the parties' marks have different commercial impressions and overall are not similar.

As to the goods, the Board noted that it "would be remiss if [it] did not point out that there is absolutely no evidence in the record on this subject." Instead, Opposer relied on previous Board decisions finding a likelihood of confusion between either restaurant services and beverages, or alcoholic and non-alcoholic beverages. "Such reliance is misplaced. First, restaurant services are not at issue in this case. Second, it is well-settled that each case must be decided on its own set of facts of record."

Nonetheless, the Board took notice that "both beer and bottled drinking water are beverages which may be sold in the same retail stores to the general consuming public." However, there is no per se rule that alcoholic and non-alcoholic products are related products. The goods are "very different inasmuch as beer is an alcoholic beverage (sold in controlled circumstances to those of legal age) and bottled water is more akin to soft drinks or health beverages." There was no evidence of record that these products emanate from the same source, nor that consumers would expect them to.

As to Opposers' baked goods, the differences between those goods and bottled water "are too great to find a likelihood of confusion in the absence of any evidence to support such a conclusion."

And so this du Pont factor weighed in favor of Applicant.

Finally, as to channels of trade, the goods of both parties may be found in the same retail stores, but "our cases caution that little can be concluded merely from the fact that two items can both be found in retail outlets such as a grocery store or served in a restaurant. *** Should we follow that reasoning, we would come to the same conclusion in nearly every case involving food items and/or beverages." The Board concluded that this factor is neutral or slightly favors Opposers.

Balancing all the relevant du Pont factors, the Board ruled that Opposers had failed to demonstrate that Applicant's bottled water is sufficiently related to Opposers' beer (let alone baked goods) that confusion is likely. And so it dismissed the opposition.

Text Copyright John L. Welch 2009.


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