Tap It Brewing opposed an application to register the mark TAP IT for energy drinks, claiming a likelihood of confusion with the identical mark registered for beer. Applicant Tap or Nap filed a counterclaim seeking cancellation of opposer's registration, asserting that TAP IT is merely descriptive of beer. How do you think this came out? Tap It Brewing Co., LLC v. Tap or Nap LLC, Opposition No. 91208370 (November 4, 2016) [not precedential].

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Mere Descriptiveness: Of course, applicant bore the burden of proof on its Section 2(e)(1) counterclaim. Applicant relied on a Wikipedia entry indicating that a "beer tap" or “tap” is a valve "for controlling the release of beer," and on other evidence showing use of "tap" as a verb referring to the process of drawing beer from a keg. Applicant also supplied third-party registrations for marks containing the word "tap" and pointed out that many breweries, bars and restaurants use "tap" in their names. None of the registrations, however, were for beer.

Opposer’s evidence showed that tap is used in connection with a variety of beverages, including non-alcoholic, supporting its argument that "tap" and "tap it" refer to kegs and serving beverages from kegs, rather than beer specifically. There was no evidence that anyone would perceive "tap" or "tap it" as providing information as to a quality, feature, function, characteristic or purpose of Opposer’s beer.

Because there is no evidence that sellers, consumers or others refer to beer as “tap” or “tap it,” multi-stage reasoning would be required for consumers to associate the keg or other vessel conveyed by TAP or TAP IT with Opposer’s beer itself.

The Board therefore found that, "because of the indirect connection between a beer tap or tapping a keg on the one hand and the beer itself on the other," opposer's mark is merely suggestive. And so the Board dismissed the counterclaim.

Likelihood of Confusion: Because the marks are identical, a lesser degree of similarity between the involved goods is necessary to support a finding of likely confusion.

Applicant originally included "beer" in its application, seemingly revealing a relationship between the involved goods. Opposer relied on numerous third-party use-based registrations showing that a single mark has been registered for beer and for and energy or sports drinks. Brewers such as Sam Adams and Miller offer or plan to offer "hard" sodas, such as an alcoholic version of root beer.

We have no difficulty finding the goods related on this record. A relatively large number of third parties have registered or used the same marks for beer on the one hand and sports, energy or soft drinks on the other, and Applicant intended to use its mark for these goods as reflected in its original identification of goods. Moreover, several large and “craft” brewers appear to have expanded or, like Opposer, hope to expand their operations to offer soda, so much so that business publications have identified the practice as a trend. The evidence also reveals that Applicant’s and Opposer’s goods are complementary, as they are sometimes combined to make cocktails. This factor also weighs in favor of finding a likelihood of confusion.

Applicant' identification of goods is unlimited as to channels of trade, and the Board must presume that applicant's goods could be offered through grocery and liquor stores and bars and restaurants, possibly including the same ones that offer opposer's beer.

Because opposer's mark is suggestive, it is not inherently entitled to a broad scope of protection. Moreover, because a number of bars and restaurants that serve beer, as well as a number of breweries, use TAP or TAPS in their names, opposer’s mark is commercially weak. "However, while Opposer’s mark is weak, 'the evidence does not show that it is entitled to such a narrow scope of protection as to permit registration of a confusingly similar mark for related' goods."

The Board concluded that confusion is likely because the parties use identical marks on related beverages that travel in the same channels of trade. And so it sustained the opposition.