Turning to the marks, Applicant Mystic Mountain relied on five third-party registrations and eight third-party uses of the term “OUTLAW” in connection with whiskey and other alcoholic beverages. However, the list of third-party uses appeared for the first time in Applicant’s brief and so the Board refused to consider them, observing: “Applicant has the responsibility to make sure that the record is complete prior to filing a notice of appeal.”
As to the five registrations, three were for marks the referred to historical figures or notable individuals – SHERIFF HENRY PLUMMER’S OUTLAW BREWING, JESSE JAMES AMERICA’S OUTLAW BOURBON WHISKEY, and JESSE JAMES AMERICA’S OUTLAW BEER – and therefore those marks created different commercial impressions than Mystic Mountain’s mark. The other two registrations fell “well short of the ‘voluminous’ and ‘extensive’ evidence that was found probative in Jack Wolfskin or in Juice Generation. The Board therefore found this factor to be neutral.
Comparing the marks, the Board noted that for word+design marks, the words are normally accorded greater weight “because the words are likely to make an impression upon purchasers, would be remembered by them, and would be used by them to request the goods and/or services.”
Mystic Mountain argued that the design is the dominant portion of its mark, but the Board disagreed. Although the design features are prominently displayed, the Board found that the literal portion of the mark is entitled to greater weight. Moreover, lesser weight is given to the generic or descriptive words WHISKEY and HANDCRAFTED SMALL BATCH, which have been disclaimed.
Thus the distinctive portion of Applicant’s mark is comprised of the words MYSTIC MOUNTAIN, BRAD LEE SCHROEDER, and OUTLAW. The Board concluded that the term OUTLAW “is the most dominant, given that it is the wording that is most prominently displayed, MYSTIC MOUNTAIN is a house mark, and BRAD LEE SCHROEDER, in even smaller type, appears to identify a person that is endorsing or is in some way associated with Applicant’s product.”
The presence of the house mark does not suffice to distinguish two otherwise similar product marks, “unless there are recognizable differences in the shared product marks, or unless the product mark is descriptive or highly suggestive as applied to the parties’ goods and/or services.” The Board found neither exception applicable here.
The Board concluded that the design in Applicant’s mark “simply reinforces the term OUTLAW,” and the disclaimed terms are entitled to little weight. The term OUTLAW is not so weak that the addition of the house MYSTIC MOUNTAIN or the name BRAD LEE SCHROEDER suffices to avoid confusion.
In sum, the Board found the involved marks to be similar, albeit not identical, in sound, appearance, and meaning, and in overall commercial impression. Therefore, this du Pont factor supported a finding of likelihood of confusion.
Finally, although Mystic Mountain contended that consumers of alcohol, especially whiskey, are “particular in their choices,” there was no evidence to support that contention. Moreover, there were no restrictions in the application or cited registration as to price point or consumers, and so the Board must assume that the goods will be sold to all consumers, including those exercising only ordinary care, at all price points. The Board must consider the degree of care that would be exercised by the least sophisticated consumer.
Balancing the relevant du Pont factors, the Board found confusion likely and it affirmed the refusal.
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Text Copyright John L. Welch 2019.