The USPTO refused registration of the mark MUTT for beers, finding the mark likely to cause confusion with the registered mark LAZY MUTT for beer. On appeal, applicant argued that the beers of applicant and registrant have distinct differences, that the marks suggest different tastes and characteristics of the beer, and that the consumers of craft beers are sophisticated and discriminating. Irrelevant, said the Board. Would you have appealed? In re JWB Wine LLC, Serial No. 86163390 (February 24, 2016) [not precedential].
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Applicant's maintained that that "there are distinct differences within the range of beers categorized as ales." That was, of course, of no consequence because the Board must consider the goods as identified in the application and registration. Since there are no limitations in the identifications of goods, the Board must assume that they include all types of beers. Moreover, it must presume that the goods travel in the same, normal channels of trade to the same, usual classes of consumers.
As to the marks, the Board found the word MUTT to be the dominant portion of the cited mark, since "Lazy" is an adjective modifying "Mutt" (i.e., what kind of mutt? A lazy mutt). "Thus, the word 'Mutt' is [the] part of the registered mark most likely to catch the attention of the average beer drinker and be remembered by the average beer drinker."'
The word “Mutt” is defined as “a mongrel dog.” The word “Lazy” is defined as “not liking to work hard or to be active” and “moving slowly." The marks MUTT and LAZY MUTT have similar meanings and engender similar commercial impressions (e.g., a dog and/or a lazy dog
Applicant argued that the marks "engender different commercial impressions when applied to the taste and character of the beer products they identify." Again, however, the Board pointed out that it cannot consider the taste and character of the beer, since the products as identified are identical (i.e., "beer").
The Board therefore concluded that the marks are similar in their entireties as to appearance, sound, connotation, and commercial impression.
Applicant contended that there are 125 active registrations and applications for marks containing the word "Mutt" for a broad range of goods and services. However, it offered no evidence of same. In any case, third-party marks for products other than beer have little probative value.
Finally, applicant's contention that purchasers of "craft beer" are careful purchasers fell flat. One again the Board pointed out that it must decide this case based on the goods as identified in the application and cited registration, neither of which contains any limitation on the type of beer involved. The identified goods may include less expensive beers sold to ordinary adult consumers "for a variety of reasons, such as parties and the like." Balancing the relevant du Pont factors, the Board found confusion likely, and it affirmed the refusal.