315 F.3d 1311 (Fed. Cir. 2003), 02-1243, In re Majestic Distilling Co. Inc.

Docket Nº:02-1243, 74,622,781.
Citation:315 F.3d 1311
Party Name:In re MAJESTIC DISTILLING COMPANY, INC.
Case Date:January 02, 2003
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit
 
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315 F.3d 1311 (Fed. Cir. 2003)

In re MAJESTIC DISTILLING COMPANY, INC.

Nos. 02-1243, 74,622,781.

United States Court of Appeals, Federal Circuit

January 2, 2003

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

Linda Moneys 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,

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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 asume

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that the applicant's goods originate...

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