The Board affirmed Section 2(d) refusals to register the mark DEAD BIRD BREWING COMPANY (standard characters) [BREWING COMPANY disclaimed] and the design mark shown below, for beer, in view of the registered mark DEADBIRD for wines. Applicant submitted evidence of several dozen registrations and uses of mark for beer owned by one entity and for wine by a different entity, but the Board was unmoved. In re Dead Bird Brewing, LLC, Serial Nos. 87140389 and 87140417 (June 13, 2018) ]not precedential] (Opinion by Judge Thomas W. Wellington).

The Marks: Not surprisingly, the Board found the words DEAD BIRD to be the dominant portion of applicant’s mark DEAD BIRD BREWING COMPANY, since BREWING COMPANY is disclaimed and since DEAD BIRD is located as the first part of the mark. The word marks at issue both connote a “dead bird,” and the term has no significance in connection with beer or wine. In sum, the marks are “extremely similar.” Consumers may believe that the added term BREWING COMPANY “is simply being used in connection with a variant mark to designate Registrant’s attempt at brewing beer, a concept that would be plausible in the minds of the relevant consumers.”

As to applicant’s design mark, it is the pictorial equivalent of the words “dead bird.” Under the doctrine of legal equivalents, a pictorial depiction and equivalent wording are likely to make the same mental impression on purchasers. Applicant described the mark as an “upside down dead bird.” Consumers are likely to use the words “the dead bird design (or mark or logo)” when describing applicant’s mark, and are likely to ask for “dead bird beer” when ordering the product. The Board therefore found the similarity between this mark and the cited mark to be “very strong.”

The Goods: In demonstrating the relatedness of beer and wine, Examining Attorney Amy E. Thomas relied on 24 use-based registrations covering both, on websites showing beer and wine featured in festivals, on websites showing beer and wind made and offered by a single entity under the same mark, and on websites advertising retail establishments that feature beer and wine.

Applicant acknowledged that the Board has often found beer and wine to be related for purposes of its likelihood of confusion analysis. However, applicant argued that the record here demonstrates that the goods are not related. It relied primarily on the contention that the same, or very similar, mark is used or registered by one entity for beer and by a different entity for wine (including some 60 pairs of registered marks and approximately 30 websites).

Applicant asserted that its evidence showed that the USPTO has treated inconsistently the beer-versus-wine issue, that consumers are accustomed to seeing the same mark used to indicate different sources of beer and wine, and that beer and wine makers do not view their products as creating potential trademark conflicts.

The Board found that applicant’s pairs of existing registration have some probative value in that they “may reflect the views of coexisting registration owners.” As to the USPTO’s inconsistency, the Board again acknowledged that consistency is desirable, but nonetheless “prior decision and actions of other examining attorneys in registering other marks or approving marks for registration have little evidentiary value and are not binding on the Board.” The Board’s own case law suggests that the relatedness of beer and wine typically has resulted in a finding of likely confusion.

The Examining Attorney’s evidence showed that there are a significant number of examples of third-party use of a single mark by the same entity for beer and wine, including several businesses that call themselves “winery and brewery.” Third-party registration evidence helps corroborate that beer and wine are the type of goods that may emanate from a common source under the same mark. The evidence also showed that beer and wine may be sold together to the same consumers, including at stores, restaurants, and festivals.

We have considered the entire record and, to be clear, our determination regarding the relatedness of the involved goods is not based upon who has submitted the most third-party registrations or examples of use to support their arguments. Rather, our determination is based on finding that the respective goods are “related in some manner and/or the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the respective goods] emanate from the same source.”

Consumers may be aware of coexisting marks, but that does not mean that they may not also be aware of the same mark being used in connection with beer and wine by the same entity.