IP Law Daily, TRADEMARK—TTAB: Identical marks held likely to cause confusion, (May 11, 2023)

By Kevin M. Finson, J.D.

The proposed standard character mark CHICKEN SCRATCH was denied registration for use with beer because it was likely to cause confusion with an identical mark already registered for restaurant services.

A brewery’s proposed mark was likely to cause confusion with an already registered mark, the Trademark Trial and Appeal Board has held. The prior mark was identical and registered for use with restaurant services and the board affirmed the refusal to register. (In re: R.S. Lipman Brewing Co., LLC, May 3, 2023, Hudis, J.).

R.S. Lipman Brewing Company, LLC (Lipman) sought registration on the Principal Register of the standard character mark CHICKEN SCRATCH for use with “beer” in International Class 32. The Examining Attorney refused registration on the ground of likelihood of confusion with the identical registered standard character mark CHICKEN SCRATCH for use with “restaurant services” in International Class 43. Lipman appealed. The Trademark Trial and Appeal Board applied the DuPont factors for which there was evidence of record.

Strength of the registered mark. Lipman argued that the registered mark was conceptually weak because the registrant sold “chicken made from scratch.” The board held that the term chicken scratch alone did not convey this meaning, and that the term was at the very least suggestive, not descriptive. The mark conveyed a meaning more in line with the dictionary definition of “chicken scratch” as cramped or illegible handwriting. The board held that the registered mark was entitled to the normal scope of protection afforded to a registered mark.

Similarity of the marks. The parties agreed that the marks were identical. However, Lipman argued that in the context of their respective services the marks conveyed different commercial impressions, with the registered mark conveyed an impression of chicken, while Lipman’s proposed mark conveyed an impression of the grain mix typical of chicken feed used in production of Lipman’s beer. The board noted that no evidence was presented on this point, only the arguments of counsel, and disregarded it. The identical nature of the marks weighed strongly in favor of a likelihood of confusion.

Similarity of the goods. Lipman argued that under controlling case law, restaurant services and beverage products could not be assumed related without some additional factor. Reviewing numerous third-party registrations for both restaurant services and beer and noting the increasing popularity of brew pub style restaurants, the board held that consumers were used to seeing beer and restaurant services originating from the same source marketed under identical marks. The nature of the goods thus weighed in favor of a finding of confusion.

Channels of trade and classes of consumers. Neither the registration nor the application contained any limitations as to channels of trade or classes of consumers. The third-party registration evidence presented by the Examining Attorney to show the goods and services were frequently sold under the same mark also showed that they traveled in overlapping trade channels. This factor weighed in favor of a likelihood of confusion.

Balancing the factors, the board affirmed the refusal to register.

The Case is Serial No. 88209633.

Attorneys: Timothy L. Capria (Bradley Arant Boult Cummings, LLP) for R.S. Lipman Brewing Co., LLC. Sharon A. Meier for the USPTO.

Companies: R.S. Lipman Brewing Co., LLC

Cases: Trademark USPTO