Trademark law in the United States is not only designed to protect the rights of the trademark owner but, significantly, to protect the rights of the consumer from being confused as to the source of the mark.  In this regard, the standard used by courts to determine if one mark (i.e. the “junior” mark) is going to be deemed to be an infringement on the rights of another mark (i.e. the “senior” mark) or whether, as in this article, the junior mark is going to be denied registration, is whether or not the junior mark is deemed to be confusingly similar to the senior mark and therefore likely to be confused with the senior mark as to source.

        So the issue about confusion involves a discussion not only about the similarity of the marks but additionally how those marks are being or intended to be used.  Since there can be many uses of the same or similar marks in unrelated areas of commerce, if the manner of use of the junior mark is in the same or similar areas as that of the senior mark, “related” as discussed below,  junior mark can thus lead to a likelihood of confusion in the minds of the public.

        The courts have enunciated numerous “tests” about how this analysis is to be done with regard to confusion of 2 such marks when it comes to trademark infringement.  However, one recent case deals with this issue in regard to whether or not registration of the junior mark is to be allowed.  In the case of In Re Coors Brewery Company, the United States Court of Appeals for the Federal Circuit was called upon to decide whether or not a mark sought to be registered by Coors for its “Blue Moon” brand of beer was likely to confuse potential consumers since there was another mark for a “Blue Moon” word and design in regard to restaurant services and 2 other such marks for wine.  This case was an appeal from a ruling by the Trademark Trial and Appeal Board (“TTAB” and “Board” in the Court’s discussion below).

        The Court stated:

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 senior 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. [emphases added]
        However, as the Court further stated:
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. [emphasis added]

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 Court discussed the opinion of the dissenting judge at the TTAB as follows:
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. [emphasis added]
        Therefore the issue on appeal was whether the use of the junior mark was likely to confuse since beer and restaurant services were related. There was no issue in this appeal as to confusion with wine.

The Court’s Decision

        The Court stated the issue as follows:

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.
        The actual case as cited on the Internet did not contain a depiction of the marks in issue so we are left with the text of the Court’s opinion in regard to the marks as follows:
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 consisting of a forest scene and stars, while the features of the '568 mark, other than the words "Blue Moon" and the moon wearing sunglasses, consist of a simple abstract design.

Although we uphold the Board's finding that the two marks are generally similar, principally because they both use the term "Blue Moon," we note that similarity is not a binary factor but is a matter of degree. Because there are significant differences in the design of the two marks, the finding of similarity is a less important factor in establishing a likelihood of confusion than it would be if the two marks had been identical in design or nearly indistinguishable to a casual observer. [emphasis added]

        The above quote is the gist of the issue since a trier of fact must determine, in each instance, what this “matter of degree” involves.  That the decision is not a “binary” one (i.e. is not given to a simple “yes” or “no”), is where those decisions go from simple and objective to complex and somewhat subjective.

        Coors argued that the mark “Blue Moon” is a “weak” mark in that there are many, many uses of such a mark.  The Court stated:

As with the issue of similarity, however, we note that the strength of a mark is not a binary factor, but varies along a spectrum from very strong to very weak.
        And while the Court agreed that the '568 mark also cannot be regarded as a particularly strong mark that is entitled to broad protection, the Court foundthat the mark was not legally “weak.”

        Instead, the Court summarized the essence of the TTAB’s position as follows:

The pivotal portion of the Board's decision was its conclusion that beer and restaurant services are related and that, as a result, consumers would be likely to assume from the similarity of the two marks that Coors' beer and the registrant's restaurant services had the same source. In light of the Board's ruling that there is no likelihood of confusion between the registered "Blue Moon" marks for wine and Coors' "Blue Moon and design" mark for beer, it is clear that the Board's decision turned on its conclusion that beer and restaurant services are sufficiently related that the use of a similar mark for each would suggest to consumers that the two had a common source.

The Board acknowledged that, in Jacobs v. International Multifoods Corp., 668 F.2d 1234, 1236 (CCPA 1982), our predecessor court held that the fact that restaurants serve food and beverages is not enough to render food and beverages related to restaurant services for purposes of determining the likelihood of confusion. Instead, as the Board noted, Jacobs provides that "[t]o establish likelihood of confusion a party must show something more than that similar or even identical marks are used for food products and for restaurant services." Id. (emphasis added).

        The Court stated:
In light of the requirement that "something more" be shown to establish the relatedness of food and restaurant products for purposes of demonstrating a likelihood of confusion, the Board's finding that beer and restaurant services are related is not supported by substantial evidence. While the evidence produced by the examining attorney shows that some restaurants brew or serve their own private label beer, that evidence does not support the Board's conclusion that consumers are likely to conclude that beer and restaurant services with similar marks emanate from the same source. Coors introduced evidence that there are about 1,450 brewpubs, microbreweries, and regional specialty breweries in the United States, while there are approximately 815,000 restaurants. There was no contrary evidence introduced on those points. That means that even if all brewpubs, microbreweries, and regional specialty breweries featured restaurant services, those establishments would constitute only about 18 one-hundredths of one percent of all restaurants, or fewer than one in 500. While there was evidence that some restaurants sell private label beer, that evidence did not suggest that such restaurants are numerous. And although the Board had before it a few registrations for both restaurant services and beer, the very small number of such dual use registrations does nothing to counter Coors' showing that only a very small percentage of restaurants actually brew their own beer or sell house brands of beer; instead, the small number of such registrations suggests that it is quite uncommon for restaurants and beer to share the same trademark. Thus, the evidence before the Board indicates not that there is a substantial overlap between restaurant services and beer with respect to source, but rather that the degree of overlap between the sources of restaurant services and the sources of beer is de minimis. We therefore disagree with the Board's legal conclusion that Coors' beer and the registrant's restaurant services are sufficiently related to support a finding of a likelihood of confusion. [citing cases] The evidence of overlap between beer and restaurant services is so limited that to uphold the Board's finding of relatedness would effectively overturn the requirement of Jacobs that a finding of relatedness between food and restaurant services requires "something more" than the fact that restaurants serve food. [emphasis added]

It is not unusual for restaurants to be identified with particular food or beverage items that are produced by the same entity that provides the restaurant services or are sold by the same entity under a private label. Thus, for example, some restaurants sell their own private label ice cream, while others sell their own private label coffee. But that does not mean that any time a brand of ice cream or coffee has a trademark that is similar to the registered trademark of some restaurant, consumers are likely to assume that the coffee or ice cream is associated with that restaurant. The Jacobs case stands for the contrary proposition, and in light of the very large number of restaurants in this country and the great variety in the names associated with those restaurants, the potential consequences of adopting such a principle would be to limit dramatically the number of marks that could be used by producers of foods and beverages. [emphasis added]

        Thus the Court ruled that, in this instance, the relationship between beer and restaurant services was not sufficiently related to as to create a likelihood of confusion as to source.


        Thus, the conclusion to be drawn here is that although “objective” criteria are often used to discuss these as well as issues of infringement, in fact much of the analysis often turns on subjective points of view (i.e. the decision is not a “binary” one).  Any 2 or more parties viewing a particular situation can, both being reasonable, come away with diametrically opposed conclusions.  That is the nature, in this case, of the opinion of the dissenting judge at the TTAB.

        Thus in a given instance, it is hard to predict any outcome with any certainty.

        Being an attorney requires an agile mind, one given to understanding the finesses and subtleties, and the consequent beauty, of the law.

        I know some would like the law to be easy.

        It is not easy.

Copyright © 2003 Ivan Hoffman.  All Rights Reserved.


This article is not intended as legal advice and is not legal advice.  This article is intended to provide only general, non-specific legal information.  This article is not intended to cover all the issues related to the topic discussed.  The specific facts that apply to your matter may make the outcome different than would be anticipated by you.  This article is based on United States law.  You should consult with an attorney familiar with the issues and the laws of your country.  This article does not create any attorney client relationship and is not a solicitation.


No portion of this article may be copied, retransmitted, reposted, duplicated or otherwise used without the express written approval of the author.




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