Standing: In view of the Supreme Court’s ruling in Lexmark, the Board no longer uses the rubric “standing” when analyzing the requirements of Section 13 and 14 of the Trademark Act, but whether a party has established entitlement to a statutory cause of action by demonstrating a real interest in the proceeding and a reasonable belief of damage. See Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020 USPQ2d 10837 at *3 (Fed. Cir. 2020). Here, Opposer satisfied that requirement by pleading ownership of six pertinent registrations.
The Marks: As to the commercial strength of opposer’s marks, the Board rejected the claim that its marks are famous, but found them to be “in the mid-range of the commercial strength spectrum.” As to inherent strength, applicant relied on a number of registrations for marks containing the word BROTHERS for beer, arguing that “the term ‘Brothers’ is simply suggestive of businesses founded and/or operated by brothers or people who consider themselves brothers.” The Board found, nonetheless, that these registrations “do not support the conclusion that the term BROTHERS, alone or combined with nondistinctive matter, is inherently weak.” It found opposer’s marks BROTHERS and BROTHERS BAR & GRILL to be “entitled to the ordinary scope of protection given inherently distinctive marks.”
The Board deemed the word BROTHERS to be the dominant portion of the involved marks, and concluded that they are similar in appearance, sound, connotation and commercial impression due to the shared term BROTHERS.
Goods and Services: As applicant pointed out, the Board previously has required a showing of “something more” for restaurant and bar services, not just restaurant services. In previous cases, the Board has found the “something more” requirement to be met where an applicant’s mark “made clear that its restaurant specialized in registrant’s type of goods.”
The record showed that opposer’s bar and restaurant services feature an extensive beer menu, and further that applicant’s beer, while currently only distributed in Virginia, is sold to distributors for further sale and distribution in trade channels that include restaurants. Thus beer is complementary to bar and restaurants services since it could be sold in opposer’s bar and restaurant.
[T]he record shows the requisite “something more” to establish that beer and bar and restaurant services are related in this case. More particularly, the record confirms that Opposer’s bar services comprise the most significant portion of Opposer’s bar and restaurant services, both in the ratio of bar to restaurant services and in that the bar is a focal point in Applicant’s establishments.
The Board concluded that the involved goods and services are related.
Channels of Trade: The ordinary trade channels for beer include restaurants and bars, and consumers include bar and restaurant patrons.
Conclusion: Confusion is likely, and so the Board sustained the opposition.
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Text Copyright John L. Welch 2020.