In re Majestic Distilling Co., Inc.

• Decision Date: 02 January 2003
• Docket Number: No. 74,622,781.,No. 02-1243.,02-1243.,74,622,781.
• Citation: 315 F.3d 1311
• Parties: In re MAJESTIC DISTILLING COMPANY, INC.
• Court: U.S. Court of Appeals — Federal Circuit

315 F.3d 1311

In re MAJESTIC DISTILLING COMPANY, INC.

No. 02-1243.

No. 74,622,781.

United States Court of Appeals, Federal Circuit.

January 2, 2003.

COPYRIGHT MATERIAL OMITTED

William G. Pecau, Pennie & Edmonds LLP, of New York, NY, argued for appellant. With him on the brief was Carol M. Wilhelm.

Linda Moncys Isacson, Associate Solicitor, Office of the Solicitor, United States Patent and Trademark Office, of Arlington, VA, argued for appellee. With her on the brief were John M. Whealan, Solicitor; and Cynthia C. Lynch, Associate Solicitor.

Before NEWMAN, LOURIE, and SCHALL, Circuit Judges.

LOURIE, Circuit Judge.

Majestic Distilling Company, Inc. appeals from the decision of the United States Patent and Trademark Office ("PTO") Trademark Trial and Appeal Board ("TTAB" or "Board") affirming the examining attorney's refusal to register the mark "RED BULL" for tequila. In re Majestic Distilling Co., Serial No. 74/622,781, Paper No. 22 (TTAB Nov. 29, 2001). The Board held that the examining attorney correctly refused registration on the basis of likelihood of confusion with previously registered "RED BULL" marks for malt liquor. We affirm.

BACKGROUND

Majestic seeks to register the mark "RED BULL" for tequila. Despite having asserted use in commerce since November 1, 1984, Majestic did not file its application for registration until January 18, 1995. In a first Office Action mailed August 10, 1995, the examining attorney refused registration of the mark under § 2(d) of the Lanham Act, 15 U.S.C. § 1052(d) (2000), on the ground of likelihood of confusion with Registration No. 1,071,580 ("RED BULL" for Scotch whiskey), issued August 16, 1977, to George Willsher & Co., Ltd.; Registration No. 1,542,792 ("RED BULL A SCHLITZ MALT LIQUOR BRAND" for malt liquor), issued June 6, 1989, to The Stroh Brewery Company; and Registration No. 1,541,794 (stylized "RED BULL" for malt liquor), issued May 30, 1989, also to Stroh. Office Action, Serial No. 74/622,781 (Aug. 10, 1995). The examining attorney also cited four of Stroh's pending applications for registration, Serial Nos. 74/541,371, 74/541,372 74/589,654, and 74/589,656, against Majestic's application. Id.

After petitioning to cancel Willsher's mark for Scotch whiskey on the ground of abandonment, Majestic responded to the Office Action. Finding Majestic's response unpersuasive, however, the examining attorney made his refusal final. Office Action, Serial No. 74/622,781 (June 6, 1996). Majestic then appealed to the Board. In re Majestic Distilling Co., Serial No. 74/622,781 (TTAB Apr. 15, 1997).

While Majestic's appeal was pending, Willsher's mark was canceled and Stroh's four pending applications matured into registrations. At the examining attorney's request, the Board remanded the case to him. Id., slip op. at 1. He then issued another non-final Office Action, in which he refused registration of Majestic's mark not only over the '580, '792, and '794 registrations, but also over Stroh's newly matured registrations: Registration No. 1,923,974 ("RED BULL" with design for malt liquor), issued from Serial No. 74/589,656 on October 3, 1995; Registration No. 1,935,272 ("RED BULL" for malt liquor), issued from Serial No. 74/589,654 on November 14, 1995; Registration No. 2,046,277 ("RED BULL REPRESENTIN' THE REAL" for brewed malt liquor), issued from Serial No. 74/541,371 on March 18, 1997; and Registration No. 2,046,278 ("RED BULL REPRESENTIN'" for brewed malt liquor), issued from Serial No. 74/541,372 on March 18, 1997. Office Action, Serial No. 74/622,781 (Apr. 23, 1997).

Majestic made several unsuccessful attempts to traverse the examining attorney's refusal to register its mark, but the examining attorney again made his refusal final. Office Action, Serial No. 74/622,781 (Mar. 15, 2000). Majestic again appealed to the Board, which affirmed the examining attorney's second final refusal. In re Majestic Distilling Co., Serial No. 74/622,781 (TTAB Nov. 29, 2001). Majestic now appeals to this court. We have jurisdiction pursuant to 15 U.S.C. § 1071 and 28 U.S.C. § 1295(a)(4)(B).

DISCUSSION

Under § 2(d) of the Lanham Act, the PTO may refuse to register a trademark if it "so resembles" a previously registered mark "as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive." 15 U.S.C. § 1052(d) (2000). We review a determination of likelihood of confusion as a question of law based on findings of relevant underlying facts. Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 671, 223 USPQ 1281, 1282 (Fed.Cir.1984). Although we review the Board's ultimate legal conclusion de novo, In re Int'l Flavors & Fragrances, Inc., 183 F.3d 1361, 1365, 51 USPQ2d 1513, 1515 (Fed.Cir. 1999), we review the Board's underlying findings of fact under the substantial evidence standard. On-Line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed.Cir.2000). Thus, we ask whether a reasonable person might find that the evidentiary record supports the Board's conclusion. Id. at 1085, 229 F.3d 1080, 56 USPQ2d at 1475. When reviewing for substantial evidence, we take the entire record into account, including evidence that detracts from an agency's finding as well as evidence that justifies it. Id. at 1086, 229 F.3d 1080, 56 USPQ2d at 1475. The possibility that inconsistent conclusions may be drawn from the same record does not render a Board's finding unsupported by substantial evidence. Id.; In re Gartside, 203 F.3d 1305, 1312, 53 USPQ2d 1769, 1773 (Fed.Cir.2000).

We determine likelihood of confusion by focusing on the question whether the purchasing public would mistakenly assume that the applicant's goods originate from the same source as, or are associated with, the goods in the cited registrations. Paula Payne Prods. Co. v. Johnson Publ'g Co., 473 F.2d 901, 902, 177 USPQ 76, 77 (CCPA 1973). We make that determination on a case-by-case basis, On-Line Careline, 229 F.3d at 1084, 56 USPQ2d at 1474, aided by the application of the factors set out in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Those factors are:

(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.

(2) The similarity or dissimilarity and nature of the goods ... described in an application or registration or in connection with which a prior mark is in use.

(3) The similarity or dissimilarity of established, likely-to-continue trade channels.

(4) The conditions under which and buyers to whom sales are made, i.e. "impulse" v. careful, sophisticated purchasing.

(5) The fame of the prior mark....

(6) The number and nature of similar marks in use on similar goods.

(7) The nature and extent of any actual confusion.

(8) The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion.

(9) The variety of goods on which a mark is or is not used....

(10) The market interface between the applicant and the owner of a prior mark....

(11) The extent to which applicant has a right to exclude others from use of its mark on its goods.

(12) The extent of potential confusion....

(13) Any other established fact probative of the effect of use.

Id. at 1361, 476 F.2d 1357, 177 USPQ at 567. Not all of the DuPont factors may be relevant or of equal weight in a given case, and "any one of the factors may control a particular case," In re Dixie Rests., Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed.Cir.1997).

Both the examining attorney and the Board applied the relevant DuPont factors to the facts of the present case. With regard to the first factor, they found that one of Stroh's registered marks, Reg. No. 1,935,272, is identical to Majestic's applied-for mark. They also found that a second registration, Reg. No. 1,541,794, is almost identical to Majestic's mark, but for the use of stylized lettering in the former. As pointed out by the examining attorney, because the drawing for Majestic's mark is in typed format and hence can potentially be represented in any manner, that stylized lettering does not provide a significant difference between the marks. We have previously held that, when word marks are identical but neither suggestive nor descriptive of the goods associated with them, the first DuPont factor weighs heavily against the applicant, In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566, 223 USPQ 1289, 1290 (Fed.Cir.1984), and "even when goods or services are not competitive or intrinsically related, the use of identical marks can lead to the assumption that there is a common source," In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed.Cir. 1993).

The Board found that, if marketed under the identical mark, consumers would be likely to believe that malt liquor and tequila emanate from, or are sponsored or endorsed by, the same entity. Majestic argues against the Board's finding, asserting that malt liquor and tequila are unrelated. First, Majestic argues, malt liquor is a brewed product, whereas tequila is distilled. Secondly, the PTO's evidence of a relationship between malt liquor and tequila consists only of (1) articles demonstrating that malt liquor and tequila are occasionally found in some of the same places and (2) articles relating to Anheuser-Busch's Tequiza, a tequila-flavored beer.

The PTO responds, and we agree, that malt liquor and tequila are similar by virtue of the fact that both are alcoholic beverages that are marketed in many of the same channels of trade to many of the same consumers. Although the PTO apparently found no evidence of any manufacturer who both brews malt liquor and distills tequila, Majestic has not shown that the PTO's lack of evidence in that regard is relevant. Unless consumers are aware of the fact, if it is one, that no brewer also manufactures distilled spirits,...