IP Law Daily, TRADEMARK—TTAB: BJ HOOKER’S marks for vodka likely to be confused with registered BJ’S mark for alcoholic beverages, (Jun 17, 2025)

By Carolin Dennis, B.Sc., LL.B., LL.M.

The TTAB found a likelihood of confusion between the applicant’s BJ HOOKER’S marks for vodka and the opposer’s BJ’S mark in connection with alcoholic beverages because the goods were legally identical, and the trade channels and classes of consumers overlapped.

In a nonprecedential decision, the Trademark Trial and Appeal Board (TTAB) sustained the opposition to registration of applicant’s BJ HOOKER’S marks on the ground of priority and likelihood of confusion under Section 2(d) of the Trademark Act with the opposer’s registered BJ’s mark. The TTAB concluded that the parties’ goods were legally identical and the parties alcoholic beverages were offered in the same trade channels to the same classes of consumers. Additionally, the opposer’s BJ’S mark was inherently distinctive and demonstrated commercial strength in connection with alcoholic beverages (BJ’s Restaurants, Inc. v. Buffalo Bayou Distilleries, LLC, No. 91283165 (T.T.A.B. May 29, 2025)).

Background. The applicant, Buffalo Bayou Distilleries, LLC sought registration on the principal register of two BJ HOOKER’S marks (Application Serial Nos. 97461492 and 97461498) for “vodka” in International Class 33. BJ’s Restaurants, Inc. (opposer) opposed the registration of the applicant’s marks under Section 2(d) of the Trademark Act based on a likelihood of confusion with its common law use and registration of marks containing the term BJ’S, by itself or with other wording and designs, for restaurant and bar services, as well as various alcoholic and non-alcoholic beverages. The opposer’s pleaded registrations included BJ’S (in standard characters) for alcoholic beverages except beers; alcoholic beverages, namely, margaritas; alcoholic beverages, namely, mojitos; alcoholic mixed beverages except beers; prepared alcoholic cocktails, in International Class 33. Although the opposer asserted various BJ’S-formative marks as bases for its likelihood of confusion claim, the TTAB’s determination centered on the opposer’s registered BJ’S mark, Reg. No. 4895424 (Reg. ’424), because this mark and the goods covered by that registration were most similar to the applicant’s two applied-for marks and the goods identified in the opposed applications.

Entitlement to a statutory cause of action. The opposer demonstrated a reasonable belief in damage proximately caused by the registration of the applicant’s marks that include the wording BJ HOOKER’S through opposer’s pleaded ownership of registrations for marks containing the term BJ’S, for which current status and title in opposer are established. The registrations supported a plausible likelihood of confusion claim against the involved applications, thereby showing the opposer’s real interest in this proceeding and a reasonable basis for its belief of damage. Thus, the opposer demonstrated a statutory entitlement to oppose.

Priority. The TTAB found that because the opposer’s pleaded registrations are of record, priority is not in issue with respect to these registered marks, and the goods or services listed in the registrations, vis-à-vis the involved applications.

Likelihood of confusion claim. The TTAB noted that in a final decision issued in Opposition No. 91241877 (Prior Decision), the TTAB had determined that there was a likelihood of confusion between the opposer’s BJ’S mark, subject of Reg. ’424, and the applicant’s mark BJ HOOKER’S, in standard characters for vodka. In reaching that determination, the TTAB weighed the parties’ evidence and argument regarding the relevant DuPont factors in that proceeding.

In the Prior Decision, the TTAB found the goods to be “legally identical” and there is thus a “presumption that the normal channels of trade and classes of purchasers for these identical goods also overlap,” and therefore these factors “weigh strongly in favor of finding confusion likely.” With respect to the DuPont factor involving length of time of concurrent use of the parties’ marks without actual confusion, the TTAB found in the Prior Decision that there was insufficient evidence to make a determination and this factor was deemed “neutral” in the likelihood of confusion analysis. Finally, as to the standard of purchasing care, the TTAB concluded that the involved goods are relatively low-priced and subject to impulse buying leading to a lesser standard of purchasing care. In sum, all of the aforementioned DuPont factors weighed in favor of finding a likelihood of confusion in the Prior Decision, with the exception of the coexistence factor which was neutral. The TTAB noted that because issue preclusion bars relitigation of these DuPont factors, it will accord each factor the same degree of weight in this proceeding as was given in the Prior Decision.

Therefore, the TTAB was left solely with a determination as to first DuPont factor, which considers the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. The TTAB compared the applicant’s two marks individually vis-à-vis the opposer’s BJ’S mark.

The TTAB noted that the most prominent feature of the mark in Application Serial No. 97461492 is the wording BJ HOOKER’S because it is placed horizontally in a very large font and extends nearly the entire length of the bottle. In comparing the applicant’s mark with the opposer’s BJ’S mark in terms of sound and appearance, the TTAB found the marks are similar because consumers with verbalize and view them as beginning with the same initialism “BJ.” Further, as to connotation and commercial impression, the marks are likely to be understood as an individual’s name and are similar inasmuch both use the possessive form. The TTAB also noted that consumers of BJ HOOKER’S alcoholic beverages are likely to call for the goods by merely using the first two initials. Thus, because both marks are suggestive of a person’s name with the same first initials, the overall commercial impression of the marks is similar.

The dominant element of the applicant’s mark in Application Serial No. 974561498 is, again, the term BJ HOOKER’S as it appears in much larger and darker letters set against a background of what is likely to be viewed as a “wallpaper” background of extraneous phrases and images. Thus, in terms of sound, the marks are similar because consumers with verbalize and view them as beginning with the same initialism “BJ.” Here, too, the marks share a similar connotation and commercial impression inasmuch as they are likely to be understood as referring to an individual, fictitious or not, with the initials BJ. The TTAB also noted that consumers may understand the person with the initials as being affiliated with the beverages, e.g., founder or owner. Additionally, it is difficult to imagine consumers identifying the applicant’s product by the background, given the diverse images presented and no apparent uses of the BJ HOOKER’S wording in the background. Therefore, the first DuPont factor weighs in favor of finding confusion likely with respect to both of the applicant’s marks in application Serial Nos. 97461492 and 974561498.

Accordingly, the TTAB sustained the opposition to registration of both of the applicant’s marks on the ground of priority and likelihood of confusion.

The Case is Opposition No. 91283165.

Judge: Wellington, T.

Attorneys: Jonathan A. Hyman (Knobbe, Martens, Olson & Bear, LLP) for BJ’s Restaurants, Inc. Jason P. Bloom (Haynes and Boone, LLP) for Buffalo Bayou Distilleries, LLC.

Companies: BJ’s Restaurants, Inc.; Buffalo Bayou Distilleries, LLC

Cases: Trademark USPTO