In re Coors Brewing Co.

• Decision Date: 08 September 2003
• Docket Number: No. 03-1050.,03-1050.
• Parties: In re COORS BREWING COMPANY.
• Court: U.S. Court of Appeals — Federal Circuit

343 F.3d 1340

In re COORS BREWING COMPANY.

No. 03-1050.

United States Court of Appeals, Federal Circuit.

DECIDED: September 8, 2003.

Corrected September 8, 2003.

Sabrina C. Stavish, Sheridan Ross, P.C., of Denver, Colorado, argued for appellant. With her on the brief was Miriam D. Trudell.

William LaMarca, Associate Solicitor, United States Patent and Trademark Office, of Arlington, Virginia, argued for the Director of the Patent and Trademark Office. With him on the brief were John M. Whealan, Solicitor, and Cynthia C. Lynch, Associate Solicitor.

Before MAYER, Chief Judge, BRYSON, and LINN, Circuit Judges.

BRYSON, Circuit Judge.

In this trademark case, the Coors Brewing Company seeks to register the words "Blue Moon" and an associated design for a brand of beer. The examining attorney in the Patent and Trademark Office rejected Coors' application on the ground that the mark is likely to be confused with the registered mark "Blue Moon and design" for restaurant services. The Trademark Trial and Appeal Board upheld the examining attorney's rejection based on its findings that the two marks are similar and that restaurant services and beer are related goods and services. We uphold the Board's conclusion that the two marks are similar, but we hold that the Board erred in concluding that restaurant services and beer are related. We therefore reverse the Board's decision and remand for further proceedings.

I

Before filing the application at issue in this case, Coors submitted an application seeking to register the word mark "Blue Moon" for beer. The examining attorney refused registration under section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that the proposed mark was likely to be confused with the mark "Blue Moon and design" for restaurant services, which was registered on May 11, 1993, as Reg. No. 1,770,568 ("the '568 mark"). Coors appealed the examining attorney's rejection to the Trademark Trial and Appeal Board, but the Board affirmed.

Rather than pursuing further review of that ruling, Coors filed a new application in 1998, seeking to register the mark "Blue Moon and design" for use with beer. Coors alleged that it had first used the mark in commerce in February 1997. The specimen of use submitted with the application was a color image of a beer label displaying the mark, which included the words "Blue Moon" and a representation of a full moon rising over a forest scene.

The examining attorney initially refused to register Coors' mark under section 1052(d) on the ground that the proposed mark would be likely to be confused with three registrations, including the '568 mark and two registered marks for wine that contained the words "Blue Moon." In making the refusal final, the examining attorney cited the Board's previous decision refusing to register Coors' application for the word mark "Blue Moon." As to the similarity of the marks, the examining attorney found that Coors' mark was similar to the three registered marks in sound, appearance, and commercial impression. As to the relationship between the goods and services represented by Coors' mark and the '568 mark, the examining attorney found that beer and restaurant services are "closely related." In support of that finding, the examining attorney cited evidence that brewpubs, which brew and serve their own beer, often provide restaurant services, and that some restaurants serve their own private label beer. The examining attorney also cited third-party registrations of marks for brewpub restaurants and marks for beer and restaurant services. Based on that evidence, the examining attorney concluded that the use of similar marks in connection with restaurant services and beer would be likely to cause confusion as to the source or sponsorship of the goods or services. As to the relationship between beer and wine, the examining attorney found that both beverages are sold to the same classes of purchasers through the same retail outlets for off-premises consumption and through bars and taverns for over-the-counter consumption.

On appeal, the Board disagreed with the examining attorney's ruling with respect to the two registered "Blue Moon" marks for wine. The Board concluded that even though beer and wine are sometimes sold by the same party under the same mark, the two beverages are not sufficiently related that the contemporaneous use of similar marks on the two products is likely to cause confusion as to source.

With respect to the registered "Blue Moon" mark for restaurant services, however, the Board took a different view. By a divided vote, the Board upheld the examining attorney's refusal to register Coors' mark on the ground that it was likely to cause confusion with the '568 mark. The Board majority first held that Coors' mark and the '568 mark convey a similar commercial impression because both contain the words "Blue Moon" and both contain a moon design. In addition, the Board majority found that beer and restaurant services are related, based on the evidence submitted by the examining attorney showing that (1) a number of brewpubs are also restaurants, (2) some restaurants that are not brewpubs nonetheless sell their own private label beer, and (3) some businesses have obtained registrations for beer and restaurant services under the same mark. The Board majority concluded that because beer and restaurant services are related, the examining attorney was correct to conclude that consumers were likely to assume that Coors' beer and the restaurant services offered by the '568 registrant emanated from the same source, even though there was no evidence that the '568 registrant brewed or served its own beer.

The dissenting judge concluded that the two marks at issue are significantly different and that beer and restaurant services were not shown to be sufficiently related to give rise to a likelihood of confusion between the two marks. The dissenting judge pointed out that the term "Blue Moon" is a common term and that the applicant had introduced evidence that there are more than 100 restaurants in the United States whose names incorporate that term. In addition, the dissenting judge noted that the mere fact that restaurants sometimes serve beer is not sufficient to establish a relationship between the two, and that nothing else in the record supported the conclusion that the use of the "Blue Moon" mark in connection with beer would be likely to lead consumers to assume that the beer was related to the registrant's "Blue Moon" restaurant. The dissenting judge pointed out that, unlike in other Board cases, there was nothing unique about the use of the term "Blue Moon" in the registered mark, and there was no suggestion that the registrant's restaurant was a brewpub or offered its own private label beer. Given the "extremely tiny number of brewpubs and restaurants that distribute private label beers," the dissenting judge concluded, the relationship between restaurants and beer is not sufficient to lead consumers to assume, without more, that the registrant's restaurant was the source of the applicant's beer.

II

The question whether there is a likelihood of confusion between a registered mark and a mark for which a registration application has been filed is an issue of law based on underlying facts. On Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1084 (Fed.Cir.2000). The legal conclusions of the Trademark Trial and Appeal Board are subject to de novo review, while the Board's factual findings must be sustained if they are supported by substantial evidence. See In re Save Venice N.Y., Inc., 259 F.3d 1346, 1351 (Fed.Cir.2001). To decide whether a likelihood of confusion has been shown in a particular case requires us to consider the factors summarized in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (CCPA 1973). The two DuPont factors at issue in this appeal are (1) the similarity of the marks, and (2) the similarity of the goods and services.

A

Evaluating the similarity between a registered mark and an applicant's mark requires examination of the appearance, sound, connotation, and commercial impression of the two marks. See In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566 (Fed.Cir.1984). Applying those criteria in this case, we conclude that the Board's determination that Coors' mark and the registered '568 mark are similar is supported by substantial evidence.

The two marks are depicted below. The '568 is as follows:

NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

The Coors' mark appears below:

NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Both marks contain the words "Blue Moon" in all capital letters, and those words are prominent in each mark. The Coors mark contains the disclaimed words "Brewing Co.," but because those words appear at the bottom of the mark in significantly smaller font, it was reasonable for the Board to find that those words do not significantly contribute to distinguishing the two marks.

Although both marks prominently display a full moon in conjunction with the words "Blue Moon," the two moon figures are quite different. The registered mark contains a cartoon-type design of a moon with a face and wearing sunglasses, while the Coors mark features a large circular arc suggestive of a full moon rising over a forest scene. Moreover, the other aspects of the Coors' design are quite different from the design of the '568 mark. The Coors mark features a background...