Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 THE WEST END BREWING COMPANY OF UTICA, NY
THE SOUTH AUSTRALIAN BREWING COMPANY LIMITED
March 20, 1987
Hearing: November 18, 1986
Opposition No. 65,340 to application Serial No. 239,136 filed November 14, 1979
Boynton P. Livingston and Mason, Fenwick & Lawrence, for The West End Brewing Company of Utica, N.Y.
Burns, Lobato & Adams, P.C., for The South Australian Brewing Company Limited
Before Rice, Rooney, and Krugman
Opinion by Rice
An application has been filed by The South Australian Brewing Company Limited to register the mark shown below
for beer, ale and porter. [FN1] The application is based upon use of applicant's mark in commerce between Australia and the United States since November 5, 1979, as well as applicant's ownership of an Australian registration of the mark issued March 16, 1961.
Registration has been opposed by The West End Brewing Company of Utica, N.Y. on the ground that applicant's mark 'WEST END' and design, as applied to the goods specified in applicant's application, so resembles the trade names The West End Brewing Company and The West End Brewing Co., previously used by opposer in connection with beer, as to be likely to cause confusion, mistake, or deception.
Applicant, in its answer to the notice of opposition, has denied the salient allegations contained therein, and has asserted affirmatively that opposer's alleged trade names 'are so highly descriptive, as applied to opposer's goods, as to be incapable of establishing in opposer any protectable or enforceable right superior to' applicant's rights in its mark sought to be registered.
The record consists of the pleadings; the file of applicant's involved application; opposer's responses to applicant's interrogatories Nos. 14, 17, 28, 29, and 30 and requests for admissions Nos. 1, 7, and 8, relied upon by applicant; and testimony in behalf of each party. Both parties briefed the case and were represented at the oral hearing requested by applicant.
It should be noted at the outset that Section 2(d) of the Trademark Act of 1946, 15 U.S.C. 1052(d), prohibits the registration of a mark which, inter alia, so resembles a 'trade name previously used in the United States by another and not abandoned, as to be likely, when applied to the goods of the applicant, to cause confusion, or to cause mistake, or to deceive . . .' The term 'trade name' is defined in Section 45 of the Act, 15 U.S.C. 1127, as including
individual names and surnames, firm names and trade names used by manufacturers, industrialists, merchants, agriculturists, and others to identify their businesses, vocations, or occupations; the names of titles lawfully adopted and used by persons, firms, associations, corporations, companies, unions, and any manufacturing, industrial, commercial, agricultural or other organizations engaged in trade or commerce and capable of suing and being sued in a court of law.
*2 Thus while a trademark for goods serves to identify and distinguish the product of one, albeit anonymous, source from the like goods of others, and for this reason is generally used on the product in a rather conspicuous manner, a trade name serves to identify the business entity which is the source of the product, and is generally used on the side or the back of the product or the labeling or packaging therefor, where it is much less conspicuous but may nevertheless be found by a purchaser who wants to know the name of the source of the product. Moreover, as we stated in Weldon Farm Products, Inc. v. Packaging Enterprises, Inc., 197 USPQ 584 (TTAB 1977), at page 589,
. . . nowhere does the Act require that a trade name must be actually used on goods, much less in a prominent manner on goods, in order to serve as the basis for a refusal to register under Section 2(d); all that is required is that the designation in question be a name or title which has been lawfully adopted and previously used in the United States by any entity engaged in trade or commerce and capable of suing or being sued, and not abandoned.
In the present case, the evidence offered by opposer clearly establishes its use of the trade name 'THE WEST END BREWING COMPANY' [or 'CO.'] on bottles and cans of beer (identified by the trademark 'UTICA CLUB') sold in substantial quantities since prior to applicant's first use of its mark sought to be registered in commerce between Australia and the United States. Three bottle labels, and the side of one can, on which opposer's trade name has been so used, since prior to applicant's said date of first use, are shown below:
This use is sufficient, in and of itself, to support opposer's claim of prior use of the designation 'THE WEST END BREWING COMPANY' [or 'CO.'] as a trade name within the meaning of the Statute. See: Weldon Farm Products, Inc. v. Packaging Enterprises, Inc., supra. See also: Dynamet Technology, Inc. v. Dynamet Inc., 593 F.2d 1007, 201 USPQ 129 (CCPA 1979).
Moreover, the record shows that opposer was incorporated as 'The West End Brewing Company of Utica, N.Y.' in 1888; that that is still opposer's corporate name; and that this name, and/or the shortened name 'THE WEST END BREWING COMPANY' [or 'CO.'], has been consistently used by opposer, since long prior to applicant's use of its mark in the U.S., in carrying out its business activities. Examples of such use include use on opposer's letterhead, as the name of opposer's branch offices, on opposer's 'UTICA CLUB' goods as shown above, in the advertising of such goods, and on opposer's stock certificates. Insofar as the advertising of opposer's 'UTICA CLUB' beer is concerned, opposer has offered evidence showing use of its trade name therein (albeit not prominently) during the 1970's (i.e., during the years immediately prior to applicant's first use of its mark in this country), at the end of 'UTICA CLUB' television commercials run in upstate New York and western Vermont (opposer's trading area includes New York, Pennsylvania, Massachusetts, Connecticut, Rhode Island, Vermont, New Hampshire, Maine, and New Jersey), in radio advertising, in newspaper advertising, and in point of sale materials. [FN2] Opposer's sales of 'UTICA CLUB' products bearing its trade name were in the range of twenty million dollars a year during the 1960's, fifteen million dollars a year during most of the 1970's, and ten million dollars a year during the late 1970's and early 1980's. [FN3] Opposer's expenditures for advertising and promotional efforts that involved its trade name (albeit not prominently) ranged between one and two million dollars per year during the late 1960's and early 1970's; gradually dropped during the 1970's to slightly over one hundred thousand dollars in 1979, and then to just under twenty thousand dollars in 1980 and 1981; and thereafter rose somewhat to nearly forty-five thousand dollars by 1983.
*3 The foregoing evidence is more than sufficient to persuade us that opposer has prior rights in its trade name which it is entitled to assert under Section 2(d) of the Act. [FN4] Thus, the only issue remaining to be determined is the issue of likelihood of confusion.
The goods of opposer and applicant are identical for purposes herein. In view thereof, and since the words 'WEST END' are the salient portion of opposer's trade name, we have no doubt that purchasers familiar with opposer's trade name, as used in connection with its beer business, who encounter applicant's beer bearing the mark sought to be registered herein, are likely to assume that such beer emanates from or is approved by or in some other way associated with opposer. Accordingly, we are of the opinion that there is a likelihood of confusion.
The lack of evidence of actual confusion is not persuasive of a different result in this case. In this regard, we note that applicant's evidence indicates that from October of 1979 until June of 1981, applicant exported 63,000 dozen cans of its beer to the United States; since that time, applicant has exported only 9,000 dozen cans of 'WEST END' beer to the United States. Further, the record shows that applicant's beer has been sold in California, Indiana, Missouri, Rhode Island, and Washington, D.C. Only one of these states, Rhode Island, is within opposer's trading area. Opposer's sales, advertising, and promotional activities have been limited to its trading area (with the exception of a limited amount of activity in Ohio and Florida, which activity terminated some years back), and we do not know the length and extent of applicant's activites in Rhode Island, the only place where there is a geographic overlap in the involved activites of the parties. Under the circumstances, we cannot judge whether there has been ample opportunity for confusion to arise. Moreover, it must be recognized that evidence of actual confusion is difficult to come by and is unnecessary since the test under Section 2(d) is not actual confusion but likelihood of confusion.
For the foregoing reasons, we conclude that the opposition is well taken. [FN5]
J. E. Rice
L. E. Rooney
G. D. Krugman
Members, Trademark Trial and Appeal Board
FN1. Serial No. 239,136, filed November 14, 1979. It is stated in the application that the drawing is lined for the color red.
FN2. While applicant has attempted to denigrate this evidence of opposer's advertising by asserting that it occurred prior to applicant's entry (in late 1979) into the U. S. market, the evidence serves, along with opposer's other evidence, to demonstrate that opposer had well established rights in its trade name at the time when applicant first began to use its mark in the United States. Although opposer's advertising efforts involving its trade name have been considerably scaled back during the 1980's, and opposer uses other trade names in connection with other of its beer brands, there clearly has been no abandonment by opposer of the trade name involved herein, which is still used on the 'UTICA CLUB' goods themselves, on point of sale materials, in newspaper or trade publication advertising, on letterheads, etc. In addition, the trade name is used on some of the items sold at a retail gift souvenir shop operated by opposer at its premises in Utica, New York in conjunction with a public tour of opposer's brewery.
FN3. Applicant has objected to the testimony offered by opposer as to its sales and advertising figures on the grounds that (1) opposer did not produce the underlying business records from which the sales figures were obtained as requested by applicant's interrogatories Nos. 11 and 12 and the accompanying document requests, and (2) opposer's witnesses, in answering testimony questions relating to opposer's sales and advertising figures, read from opposer's answers to applicant's interrogatories (in this regard, applicant argues that only the party who served interrogatories may make the answers thereto of record). As to (1), applicant has not submitted copies of the cited interrogatories and accompanying document requests or of opposer's responses thereto, so we cannot judge whether applicant's complaint is well taken. As to (2), opposer's two witnesses were its Vice-President of Advertising, and its Secretary-Assistant Treasurer. It was apparent from their testimony that these individuals had personal knowledge of the general magnitude of opposer's 'UTICA CLUB' sales and advertising figures. Under the circumstances, there was nothing wrong with their testifying as to the veracity of the figures given in the interrogatory answers, or with their use of the answers to refresh their memories as to exact figures. See: Trademark Rule 2.120(j)(6), which specifically provides that paragraph (j) [which governs, inter alia, the introduction of discovery responses into evidence] will not be interpreted to preclude the reading or the use of a discovery deposition, or an answer to an interrogatory, or admission as part of the examination or cross-examination of any witness during the testimony period of any party.
FN4. Applicant contends that the term 'WEST END' is primarily geographically descriptive as applied to opposer's beer and that opposer has failed to prove secondary meaning. The only evidence offered in support of this contention is that opposer's plant is located in the west side, or 'west end,' of the city of Utica, New York. This evidentiary showing falls far short of what would be necessary, under the case law, to establish that this term, as applied to opposer's beer products, is primarily geographically descriptive of them. See, for example: In re Consolidated Foods Corp., 218 USPQ 184 (TTAB 1983), and In re Norfolk Wallpaper, Inc., 216 USPQ 903 (TTAB 1983).
We also note at this point that applicant objected to testimony by opposer's witnesses that they had heard customers in taverns order beer (since prior to applicant's first use in the United States, at least in the case of one witness) by saying 'Give me a West End' or 'Give me a West End beer.' Applicant asserts, inter alia, that this testimony is hearsay. Applicant's objection is not well taken since the testimony is offered not for the truth of the third party statements but rather for the fact that they were made. See: Finance Co. of America v. BankAmerica Corp., 205 USPQ 1016 (TTAB 1980), affirmed in unpublished opinion, Appeal No. 80-558 (CCPA February 12, 1981), and Bionetics Corp. v. Litton Bionetics, Inc., 218 USPQ 327 (TTAB 1983). Nor do we find other objections raised by applicant, but not specifically mentioned herein, to be persuasive. In any event, the question of whether or not this testimony should be considered is of little importance since other evidence offered by opposer, as described in our opinion above, fully supports opposer's assertion of prior rights in its trade name.
FN5. We note that the Australian registration upon which applicant's application is based (in part) was due for renewal in March of 1982, a time shortly after the commencement of this proceeding. Accordingly, it is recommended under Trademark Rule 2.131 that in the event that applicant ultimately prevails herein, the Examining Attorney should make appropriate inquiry to determine whether the registration was renewed and is still subsisting.