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COMPLAINT - 1 -
DANIEL R. FOSTER (Cal. Bar. No. 179753)McDERMOTT WILL & EMERY LLP 4 Park Plaza, Suite 1700 Irvine, CA 92614-2559 Telephone: (949) 757-7103 Facsimile: (949) 851-9348 [email protected] JOHN J. DABNEY (to file pro hac vice application) KATIE BUKRINSKY (to file pro hac vice application) McDERMOTT WILL & EMERY LLP 500 North Capitol Street NW Washington, D.C. 20001 Telephone: (202) 756-8000 Facsimile: (202) 756-8087 [email protected], [email protected]
Attorneys for Plaintiff The Brooklyn Brewery Corporation
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF CALIFORNIA
FRESNO DIVISION
THE BROOKLYN BREWERY CORPORATION, a New York Corporation,
Plaintiff,
v.
BLACK OPS BREWING, INC., a California Corporation,
Defendant.
CASE NO.
COMPLAINT FOR TRADEMARK INFRINGEMENT, FALSE DESIGNATION OF ORIGIN, UNFAIR COMPETITION, AND PASSING OFF
COMPLAINT
Plaintiff The Brooklyn Brewery Corporation (“Plaintiff”) files this Complaint
against Defendant Black Ops Brewing, Inc. (“Defendant”), and alleges as follows:
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COMPLAINT - 2 -
INTRODUCTION
1. Founded in 1987, Plaintiff is the largest brewer in New York and
among the twenty largest brewers in the United States. One of Plaintiff’s most
popular beers is BROOKLYN BLACK OPS, a stout that Plaintiff has marketed
since at least as early as 2007. Plaintiff, consumers and others in the trade
commonly refer to the beer as BLACK OPS and Plaintiff has continuously
advertised, promoted and sold the beer as BLACK OPS for over eight years.
Plaintiff has sold tens of thousands of cases of beer under the marks BROOKLYN
BLACK OPS and BLACK OPS, and millions of customers throughout the United
States, including California, have been exposed to the brands. Plaintiff owns a
federal trademark registration for BROOKLYN BLACK OPS for beer. Plaintiff
owns common law rights to the marks BROOKLYN BLACK OPS and BLACK
OPS for beer.
2. This year, Defendant opened a brewery called BLACK OPS
BREWING. Defendant applied to the U.S. Patent and Trademark Office (“PTO”)
to register the mark BLACK OPS BREWING for beer and taproom services. On
July 1, 2015, the PTO rejected Defendant’s application because Defendant’s use of
BLACK OPS BREWING is likely to cause confusion with Plaintiff’s registered
mark BROOKLYN BLACK OPS.
3. Nevertheless, Defendant continues to market and sell beer under the
marks BLACK OPS and BLACK OPS BREWING. In mid-July and late August
2015, Plaintiff demanded that Defendant cease use of the marks. But Defendant
refused unless Plaintiff paid an exorbitant sum and thus forced Plaintiff to
commence this action.
THE PARTIES
4. Plaintiff is a New York corporation with a primary place of business at
79 North 11th St., Brooklyn, New York 11211. Plaintiff owns a federal registration
for BROOKLYN BLACK OPS for beer and common law marks for BLACK OPS
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COMPLAINT - 3 -
for beer and has used those marks in United States commerce continuously since at
least as early as 2007.
5. Defendant is a California corporation with its primary place of
business at 2985 N. Burl, Suite 102, Fresno, California 93727. Defendant
advertises and sells beer, taproom services and related goods under the marks
BLACK OPS and BLACK OPS BREWING.
JURISDICTION AND VENUE
6. The Court has jurisdiction over the federal claims under 28 U.S.C. §
1331 and 28 U.S.C. §1338(a). The Court has jurisdiction over the state law claims
under 28 U.S.C. § 1338(b) and 28 U.S.C. §1367(a).
7. The Court has personal jurisdiction over Defendant because it is
incorporated in this District, has its primary place of business in this District, and is
selling infringing goods and services in this District.
8. Venue is proper in this judicial district under 28 U.S.C. §§1391(b)(1)
and (2).
PLAINTIFF AND ITS TRADEMARKS
9. Founded in 1987, Plaintiff is the largest brewer of beer in New York,
and the 20th largest in the United States. Plaintiff’s beer advertised under
BROOKLYN BLACK OPS and BLACK OPS is sold in 27 states including
Nevada.
10. Plaintiff is negotiating with distributors to commence distribution of
beer under the marks BROOKLYN BLACK OPS and BLACK OPS in California
and sales will commence in 2016.
11. Plaintiff has sold beer under the marks BROOKLYN BLACK OPS
and BLACK OPS since at least as early 2007. Tens of thousands of cases of beer
branded with the marks BROOKLYN BLACK OPS and BLACK OPS has been
sold throughout much of the United States, and millions of customers have been
exposed to the brands, including customers in California. For over eight years,
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COMPLAINT - 4 -
Plaintiff has promoted its beer under the marks BROOKLYN BLACK OPS and
BLACK OPS throughout the United States on its website, through promotional
events and sponsorships, in print media, and via promotions conducted by its
nationwide distributors and retailers. Plaintiff’s beer also receives substantial
unsolicited media coverage by beer-focused websites such as ratebeer.com (where
the beer has a rating of 100), beeradvocate.com (where the beer has a community
rating of 92), and Untapped (with a rating of 4.2/5), as well as nationally-distributed
publications including Men’s Journal, Serious Eats, Gear Patrol, Beer Street
Journal, and Beer Knews. Plaintiff’s beer sold under the marks BROOKLYN
BLACK OPS and BLACK OPS is frequently mentioned by consumers, retailers,
and media outlets on Facebook, Twitter, and Instagram and has been for over five
years.
12. Plaintiff owns a federal trademark registration for BROOKLYN
BLACK OPS, Registration No. 3,636,236, for “beer,” which issued in 2009. (Ex.
1.) Plaintiff’s registration is “incontestable” under the Lanham Act, and thus
“conclusive evidence” of Plaintiff’s “exclusive right” to use this mark for beer in
United States commerce. 15 U.S.C. §§ 1065, 1115(b).
13. Plaintiff also owns common law rights to the marks BROOKLYN
BLACK OPS and BLACK OPS, due to its use of those marks for beer continuously
over eight years. Plaintiff’s customers and others in the trade use the marks
BROOKLYN BLACK OPS and BLACK OPS interchangeably when referring to
Plaintiff’s beer and have done so since 2007.
14. Plaintiff’s BROOKLYN BLACK OPS and BLACK OPS marks are
inherently distinctive, had acquired distinctiveness long before 2014, and are
recognized as designating beer manufactured exclusively by Plaintiff.
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COMPLAINT - 5 -
DEFENDANT’S BLACK OPS BREWING AND BLACK OPS MARKS
15. Defendant opened a brewery earlier this year called BLACK OPS
BREWING and is using the marks BLACKS OPS and BLACK OPS BREWING
on its beer.
16. Defendant applied to register BLACK OPS BREWING for beer and
taproom services in the PTO.
17. The PTO rejected Defendant’s application because it is confusingly
similar to Plaintiff’s previously-registered BROOKLYN BLACK OPS mark. The
PTO found that Defendant’s mark was “highly similar in sound, appearance,
meaning and overall commercial impression to registrant’s mark, BROOKLYN
BLACK OPS.” (Ex. 2. (Emphasis added).) The PTO held that the parties’ goods
were identical (beer), and that taproom services are related to beer. (Id.) The PTO
held that “[i]t is likely that consumers will mistakenly believe the goods and
services emanate from the same source.” (Id.) The PTO observed that “[t]he
overriding concern is not only to prevent buyer confusion as to the source of the
goods and services, but to protect the [Plaintiff] from adverse commercial impact
due to use of a similar mark by a newcomer.” (Id.)
18. Nevertheless, Defendant continues to sell beer and taproom services
under the marks BLACK OPS and BLACK OPS BREWING and advertises its beer
and services on its web site at blackopsbrewing.com and on its Facebook page,
facebook.com/Black-Ops-Brewing-701459649969112.
19. On July 20, 2015, Plaintiff sent Defendant a letter demanding that it
cease all use of BLACKS OPS and BLACK OPS BREWING. Defendant refuses
to stop unless Plaintiff pays an exorbitant sum of money.
20. Plaintiff renewed its demand on August 27, 2015. Defendant did not
respond.
21. Plaintiff’s marks BROOKLYN BLACK OPS and BLACK OPS and
Defendants’ marks BLACK OPS and BLACK OPS BREWERY are substantially
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COMPLAINT - 6 -
similar in sight, sound, meaning and commercial impression. The parties’ goods
and services are identical with respect to Defendant’s beer and highly related with
respect to Defendant’s tap room services. Defendant’s use of BLACK OPS and
BLACK OPS BREWING for beer and taproom services is likely to cause consumer
confusion, deception and mistake with regard to Plaintiff and Plaintiff’s
BROOKLYN BLACK OPS and BLACK OPS marks. The public is likely to
believe that Defendant’s goods and services are affiliated or connected with, or
endorsed, sponsored, approved, licensed or manufactured by, Plaintiff and
Plaintiff’s beer sold under the mark BROOKLYN BLACK OPS and BLACK OPS.
22. Defendant has actual knowledge of Plaintiff’s mark, and of the
likelihood of confusion between the parties’ marks, by virtue of the PTO’s refusal
to register Defendant’s mark. But Defendant continues to use the marks BLACK
OPS BREWING and BLACK OPS and plans to expand such use. Defendant is
deliberately infringing Plaintiff’s marks.
23. Plaintiff is being irreparably injured by Defendant’s unlawful conduct.
COUNT I
Trademark Infringement, Unfair Competition, False Designation of Origin
and Passing Off Under the Federal Lanham Act (15 U.S.C. § 1114)
24. Plaintiff re-alleges paragraphs 1 through 23 of the Complaint as if set
forth herein.
25. Plaintiff owns a federal registration for BROOKLYN BLACK OPS for
beer.
26. Defendant’s promotion and sale of beer, tap room services and related
goods under the marks BLACK OPS and BLACK OPS BREWING causes a
likelihood of confusion, mistake, and deception with Plaintiff and Plaintiff’s
BROOKLYN BLACK OPS mark and thus constitutes trademark infringement,
unfair competition, false designation of origin, and passing off under 15 U.S.C. §
1114(1).
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COMPLAINT - 7 -
27. Defendant’s conduct is irreparably injuring Plaintiff. Plaintiff has no
adequate remedy at law.
COUNT II
Trademark Infringement, Unfair Competition, False Designation of Origin
and Passing Off Under the Federal Lanham Act (15 U.S.C. § 1125)
28. Plaintiff re-alleges paragraphs 1 through 23 of the Complaint as if set
forth herein.
29. Plaintiff owns common law marks for BROOKLYN BLACK OPS and
BLACK OPS for beer.
30. Defendant’s promotion and sale of beer, tap room services and related
goods under the marks BLACK OPS and BLACK OPS BREWING causes a
likelihood of confusion, mistake, and deception with Plaintiff and Plaintiff’s
BROOKLYN BLACK OPS and BLACK OPS marks and thus constitutes
trademark infringement, unfair competition, false designation of origin, and passing
off under 15 U.S.C. § 1125(a).
31. Defendant’s conduct is irreparably injuring Plaintiff. Plaintiff has no
adequate remedy at law.
COUNT III
Trademark Infringement, Unfair Competition False Designation of Origin and
Passing Off Under California Common Law
32. Plaintiff re-alleges paragraphs 1 through 23 of the Complaint as if set
forth herein.
33. Plaintiff owns a common law and federally registered mark for
BROOKLYN BLACK OPS for beer. Plaintiff also owns a common law mark for
BLACK OPS
34. Defendants’ promotion and sale of beer, tap room services and related
goods under the marks BLACK OPS and BLACK OPS BREWING causes a
likelihood of confusion, mistake, and deception with Plaintiff and Plaintiff’s
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COMPLAINT - 8 -
BROOKLYN BLACK OPS and BLACK OPS marks and thus constitutes
trademark infringement, unfair competition, false designation of origin and passing
off under California common law.
35. Defendant’s conduct is irreparably injuring Plaintiff. Plaintiff has no
adequate remedy at law.
COUNT IV
Unfair Competition Under Cal. Bus. & Prof. Code § 17200
36. Plaintiff re-alleges paragraphs 1 through 23 of the Complaint as if set
forth herein.
37. Defendant’s use of the marks BLACK OPS and BLACK OPS
BREWING in connection with the advertising, promotion and sale of beer, taproom
services and related goods is likely to cause confusion, deception and mistake, and
thus constitutes unfair competition under Cal. Bus. & Prof. Code §17200.
38. Defendant’s conduct is irreparably injuring Plaintiff. Plaintiff is
suffering damage to its business reputation and goodwill. Plaintiff has no adequate
remedy at law.
RELIEF REQUESTED
Plaintiff respectfully requests that this Court award:
a. An injunction preliminarily and permanently enjoining
Defendant, its directors, officers, partners, owners, employees, agents, affiliated or
otherwise related companies, suppliers, customers, successors and assigns, and all
those in active concert or having knowledge of the causes of action, from using
BLACK OPS, BLACK OPS BREWING, blackopsbrewery.com or any
confusingly similar mark;
b. An injunction directing Defendant to deliver to Plaintiff for
destruction all products, literature, signs, billboards, labels, prints, packages,
wrappers, containers, advertising materials, stationery, and other items in its
possession, custody or control bearing Defendant’s infringing marks pursuant to 15
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COMPLAINT - 9 -
U.S.C. § 1118;
c. Plaintiff's reasonable attorneys' fees and costs; and
d. Such other and further relief as the Court deems just and proper.
Respectfully submitted,
McDERMOTT WILL & EMERY LLP Dated: November 2, 2015 By: /s/ Daniel R. Foster
DANIEL R. FOSTER (Cal. Bar. No. 179753) McDERMOTT WILL & EMERY LLP 4 Park Plaza, Suite 1700 Irvine, CA 92614-2559 Telephone: (949) 757-7103 Facsimile: (949) 851-9348 [email protected]
McDERMOTT WILL & EMERY LLP John J. Dabney (to apply for admission pro hac vice) Katie Bukrinsky (to apply for admission pro hac vice) McDERMOTT WILL & EMERY LLP 500 North Capitol Street NW Washington, D.C. 20005 Telephone: (202) 756-8000 Facsimile: (202) 756-8087 [email protected]; [email protected] Attorneys for Plaintiff The Brooklyn Brewery Corporation
Case 1:15-cv-01656-JAM-EPG Document 1 Filed 11/02/15 Page 9 of 9
COMPLAINT EXHIBIT 1
Case 1:15-cv-01656-JAM-EPG Document 1-1 Filed 11/02/15 Page 1 of 2
Ex. 1, Pg. 1
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COMPLAINT EXHIBIT 2
Case 1:15-cv-01656-JAM-EPG Document 1-2 Filed 11/02/15 Page 1 of 59
To: Black Ops Brewing, Inc. ([email protected])
Subject: U.S. TRADEMARK APPLICATION NO. 86574511 - BLACK OPSBREWING - N/A
Sent: 7/1/2015 11:05:37 AM
Sent As: [email protected]
Attachments: Attachment - 1Attachment - 2Attachment - 3Attachment - 4Attachment - 5Attachment - 6Attachment - 7Attachment - 8Attachment - 9Attachment - 10Attachment - 11Attachment - 12Attachment - 13Attachment - 14Attachment - 15Attachment - 16Attachment - 17Attachment - 18Attachment - 19Attachment - 20Attachment - 21Attachment - 22Attachment - 23Attachment - 24Attachment - 25Attachment - 26Attachment - 27Attachment - 28Attachment - 29Attachment - 30Attachment - 31Attachment - 32Attachment - 33Attachment - 34
Ex. 2, Pg. 1
Case 1:15-cv-01656-JAM-EPG Document 1-2 Filed 11/02/15 Page 2 of 59
Attachment - 35Attachment - 36Attachment - 37Attachment - 38Attachment - 39Attachment - 40Attachment - 41Attachment - 42Attachment - 43Attachment - 44Attachment - 45Attachment - 46Attachment - 47
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86574511 MARK: BLACK OPS BREWING
*86574511*CORRESPONDENT ADDRESS: JUSTIN CAMPAGNE Campagne Campagne & Lerner 1685 N Helm Ave Fresno, CA 93727-1637
CLICK HERE TO RESPOND TO THIS LETTER:http://www.uspto.gov/trademarks/teas/response_forms.jsp
VIEW YOUR APPLICATION FILE
APPLICANT: Black Ops Brewing, Inc.
CORRESPONDENT’S REFERENCE/DOCKET NO : N/ACORRESPONDENT E-MAIL ADDRESS: [email protected]
OFFICE ACTION
STRICT DEADLINE TO RESPOND TO THIS LETTERTO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTOMUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHSOF THE ISSUE/MAILING DATE BELOW. ISSUE/MAILING DATE: 7/1/2015 The referenced application has been reviewed by the assigned trademark examining attorney. Applicantmust respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a),2.65(a); TMEP §§711, 718.03.
Ex. 2, Pg. 2
Case 1:15-cv-01656-JAM-EPG Document 1-2 Filed 11/02/15 Page 3 of 59
SUMMARY OF ISSUES that applicant must address:
Section 2(d) Refusal – Likelihood of ConfusionPrior-Filed ApplicationSpecimen Refused – Advertising for GoodsSpecimen Refused – Mark Not in Connection with ServicesDisclaimer
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S.Registration No. 3636236. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration. Applicant’s mark is BLACK OPS BREWING (in standard character form) for “beer” in InternationalClass 032 and “Taproom services featuring craft beer” in International Class 043. Registrant’s mark isBROOKLYN BLACK OPS (also in standard character form) for “beer” in International Class 032. Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered markthat it is likely a potential consumer would be confused, mistaken, or deceived as to the source of thegoods and services of the applicant and registrant. See 15 U.S.C. §1052(d). A determination of likelihoodof confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir.2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474(Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, andany one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc.v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476F.2d at 1361-62, 177 USPQ at 567. In this case, the following factors are the most relevant: similarity of the marks, similarity and nature ofthe goods and services, and similarity of the trade channels of the goods and services. See In re ViterraInc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc. ,59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq. Comparison of the Marks Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercialimpression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison FondeeEn 1772, 396 F. 3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In reDavia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re White Swan Ltd., 8 USPQ2d 1534, 1535(TTAB 1988); In re 1st USA Realty Prof’ls , Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); TMEP§1207.01(b). When comparing marks, the test is not whether the marks can be distinguished in a side-by-side
Ex. 2, Pg. 3
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comparison, but rather whether the marks are sufficiently similar in terms of their overall commercialimpression that confusion as to the source of the goods and services offered under the respective marks islikely to result. Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103USPQ2d 1435, 1440 (Fed. Cir. 2012); In re Davia, 110 USPQ2d 1810, 1813 (TTAB 2014); TMEP§1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a generalrather than specific impression of trademarks. United Global Media Grp., Inc. v. Tseng, 112 USPQ2d1039, 1049, (TTAB 2014); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); TMEP§1207.01(b). In this case, applicant’s mark, BLACK OPS BREWING, is highly similar in sound, appearance, meaningand overall commercial impression to registrant’s mark, BROOKLYN BLACK OPS. Both marks containthe identical wording BLACK OPS. Marks may be confusingly similar in appearance where similar termsor phrases or similar parts of terms or phrases appear in the compared marks and create a similar overallcommercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce , 228 USPQ689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank,Nat’l Ass’n , 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH andCOMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985)(finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP§1207.01(b)(ii)-(iii). Comparison of the Goods and Services When analyzing an applicant’s and registrant’s goods and services for similarity and relatedness, thatdetermination is based on the description of the goods and services stated in the application andregistration at issue, not on extrinsic evidence of actual use. See Octocom Sys. Inc. v. Hous. ComputersServs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); see also Hewlett-Packard Co. v.Packard Press Inc., 281 F.3d 1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002). Absent restrictions in an application and/or registration, the identified goods and services are presumed totravel in the same channels of trade to the same class of purchasers. Citigroup Inc. v. Capital City BankGrp., Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); Hewlett-Packard Co. v.Packard Press Inc., 281 F.3d at 1268, 62 USPQ2d at 1005. Additionally, unrestricted and broadidentifications are presumed to encompass all goods and services of the type described. See In re JumpDesigns, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB1992). The registrant’s goods are identified as “beer” in International Class 032. The applicant’s goods andservices are identified as “beer” in International Class 032 and “Taproom services featuring craft beer”in International Class 043. In this case, both applicant and registrant provide beer. The identifications set forth in the application andregistration are identical in part and have no restrictions as to nature, type, channels of trade, or classes ofpurchasers. Therefore, it is presumed that these goods travel in all normal channels of trade, and areavailable to the same class of purchasers. See Midwestern Pet Foods, Inc. v. Societe des Produits NestleS.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012). Accordingly, the goods andservices of applicant and the registrant are considered related for purposes of the likelihood of confusionanalysis. In addition, the attached Internet evidence demonstrates the relatedness of applicant’s goods andservices to registrant’s goods.
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The trademark examining attorney has attached evidence from the USPTO’s X-Search databaseconsisting of a number of third-party marks registered for use in connection with the same or similargoods and services as those of both applicant and registrant in this case. This evidence shows that thegoods and services listed therein, namely beer and taproom services, are of a kind that may emanate froma single source under a single mark. See In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012); In reAlbert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii). The marks are similar in sound, appearance, meaning, and overall commercial impression and the goodsand services are identical in part. It is likely that consumers will mistakenly believe the goods and servicesemanate from the same source. The overriding concern is not only to prevent buyer confusion as to thesource of the goods and services, but to protect the registrant from adverse commercial impact due to useof a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690(Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved infavor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463,464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988). Accordingly, registration is refused pursuant to Section2(d) of the Trademark Act. Although applicant’s mark has been refused registration, applicant may respond to the refusal bysubmitting evidence and arguments in support of registration. Applicant should note the following potential ground for refusal. PRIOR-FILED APPLICATION The filing date of pending U.S. Application Serial No. 86478611 precedes applicant’s filing date. Seeattached referenced application. If the mark in the referenced application registers, applicant’s mark maybe refused registration under Trademark Act Section 2(d) because of a likelihood of confusion betweenthe two marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receiptof applicant’s response to this Office action, action on this application may be suspended pending finaldisposition of the earlier-filed referenced application. In response to this Office action, applicant may present arguments in support of registration by addressingthe issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address thisissue later if a refusal under Section 2(d) issues. If applicant responds to the refusals, applicant must also respond to the requirements set forth below. SPECIMEN REFUSED – ADVERTISING FOR GOODS Registration is refused because the specimen in International Class 032 consists of advertising materialand thus does not show the applied-for mark in use in commerce for the identified goods for eachinternational class. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R.§§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). Advertising materials are generally not acceptable asspecimens to show use in commerce for goods. See In re MediaShare Corp., 43 USPQ2d 1304, 1307(TTAB 1997); In re Schiapparelli Searle, 26 USPQ2d 1520, 1522 (TTAB 1993); TMEP §904.04(b), (c).
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An application based on Trademark Act Section 1(a) must include a specimen showing the applied-formark in use in commerce for each international class of goods identified in the application or amendmentto allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs thatshow the mark on the actual goods or packaging, and displays associated with the actual goods at theirpoint of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they includea picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i). Applicant may respond to this refusal by satisfying one of the following for each applicable internationalclass:
(1) Submit a different specimen (a verified “substitute” specimen ) that (a) was in actual use incommerce at least as early as the filing date of the application or prior to the filing of anamendment to allege use and (b) shows the mark in actual use in commerce for the goodsidentified in the application or amendment to allege use.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing aspecimen.
For an overview of both response options referenced above and instructions on how to satisfy either optiononline using the Trademark Electronic Application System (TEAS) form, please go tohttp://www.uspto.gov/trademarks/law/specimen.jsp. SPECIMEN REFUSED – MARK NOT IN CONNECTION WITH SERVICES Registration is refused because the specimen does not show the applied-for mark in use in commerce inconnection with any of the services specified in International Class 043 in the application or amendment toallege use. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv),2.56(a); In re Chengdu AOBI Info. Tech. Co., 111 USPQ2d 2080, 2081-82 (TTAB 2011); TMEP §§904,904.07(a), 1301.04(d), (g)(i). Specifically, the specimen shows applicant’s mark in connection with craftbeer and brewing, without reference to taproom services featuring craft beer. An application based on Trademark Act Section 1(a) must include a specimen showing the applied-formark in use in commerce for each international class of services identified in the application oramendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904,904.07(a). Examples of specimens for services include advertising and marketing materials, brochures, photographsof business signage and billboards, and webpages that show the mark used in the actual sale, rendering, oradvertising of the services. See TMEP §1301.04(a), (h)(iv)(C). Applicant may respond to this refusal by satisfying one of the following for each applicable internationalclass:
(1) Submit a different specimen (a verified “substitute” specimen ) that (a) was in actual use incommerce at least as early as the filing date of the application or prior to the filing of an
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amendment to allege use and (b) shows the mark in actual use in commerce for the servicesidentified in the application or amendment to allege use.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing aspecimen.
For an overview of both response options referenced above and instructions on how to satisfy either optiononline using the Trademark Electronic Application System (TEAS) form, please go tohttp://www.uspto.gov/trademarks/law/specimen.jsp. DISCLAIMER Applicant must disclaim the wording “BREWING” because it merely describes an ingredient, quality,characteristic, function, feature, purpose, or use of applicant’s goods and services, and thus is anunregistrable component of the mark. See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v.Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In reOppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213,1213.03(a). The attached evidence shows this wording means “the production of malt beverages (as beer or ale) frommalt and hops by grinding and boiling them and fermenting the result with yeast.” Therefore, the wordingmerely describes a feature of applicant’s goods and services. Specifically, applicant brews beer andprovides a taproom featuring brewed beer. An applicant may not claim exclusive rights to terms that others may need to use to describe their goodsand/or services in the marketplace. See Dena Corp. v. Belvedere Int’l, Inc. , 950 F.2d 1555, 1560, 21USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983). Adisclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does notphysically remove the disclaimed matter from the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213. If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark. See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP§1213.01(b). Applicant should submit a disclaimer in the following standardized format:
No claim is made to the exclusive right to use “BREWING” apart from the mark as shown. For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online usingthe Trademark Electronic Application System (TEAS) form, please go tohttp://www.uspto.gov/trademarks/law/disclaimer.jsp. TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWERFEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTINGDOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plusor TEAS RF application form must (1) file certain documents online using TEAS, including responses toOffice actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a
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valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mailthroughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additionalprocessing fee of $50 per international class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c),2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants mayrespond to an Office action by authorizing an examiner’s amendment by telephone without incurring thisadditional fee. RESPONSE GUIDELINES For this application to proceed toward registration, applicant must explicitly address each refusal and/orrequirement raised in this Office action. If the action includes a refusal, applicant may provide argumentsand/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant mayalso have other options for responding to a refusal and should consider such options carefully. To respondto requirements and certain refusal response options, applicant should set forth in writing the requiredchanges or statements. If applicant does not respond to this Office action within six months of the issue/mailing date, or respondsby expressly abandoning the application, the application process will end, the trademark will fail toregister, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a),2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failureto respond to an Office action, applicant’s only option would be to file a timely petition to revive theapplication, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66;TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1). If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademarkexamining attorney. All relevant e-mail communications will be placed in the official application record;however, an e-mail communication will not be accepted as a response to this Office action and will notextend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02,709.04-.05. Further, although the trademark examining attorney may provide additional explanationpertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorneymay not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
/Alison F. Pollack/Alison F. PollackTrademark Examining AttorneyLaw Office [email protected]
TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp. Pleasewait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System(TEAS), to allow for necessary system updates of the application. For technical assistance with onlineforms, e-mail [email protected]. For questions about the Office action itself, please contact the assignedtrademark examining attorney. E-mail communications will not be accepted as responses to Officeactions; therefore, do not respond to this Office action by e-mail. All informal e-mail communications relevant to this application will be placed in the officialapplication record.
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WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant orsomeone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all jointapplicants). If an applicant is represented by an attorney, the attorney must sign the response. PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant doesnot miss crucial deadlines or official notices, check the status of the application every three to four monthsusing the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/. Please keepa copy of the TSDR status screen. If the status shows no change for more than six months, contact theTrademark Assistance Center by e-mail at [email protected] or call 1-800-786-9199. For more information on checking status, see http://www.uspto.gov/trademarks/process/status/. TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form athttp://www.uspto.gov/trademarks/teas/correspondence.jsp.
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To: Black Ops Brewing, Inc. ([email protected])
Subject: U.S. TRADEMARK APPLICATION NO. 86574511 - BLACK OPSBREWING - N/A
Sent: 7/1/2015 11:05:40 AM
Sent As: [email protected]
Attachments:
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
IMPORTANT NOTICE REGARDING YOURU.S. TRADEMARK APPLICATION
USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUEDON 7/1/2015 FOR U.S. APPLICATION SERIAL NO. 86574511
Please follow the instructions below: (1) TO READ THE LETTER: Click on this link or go to http://tsdr.uspto.gov, enter the U.S.application serial number, and click on “Documents.” The Office action may not be immediately viewable, to allow for necessary system updates of theapplication, but will be available within 24 hours of this e-mail notification. (2) TIMELY RESPONSE IS REQUIRED: Please carefully review the Office action to determine (1)how to respond, and (2) the applicable response time period. Your response deadline will be calculatedfrom 7/1/2015 (or sooner if specified in the Office action). For information regarding response timeperiods, see http://www.uspto.gov/trademarks/process/status/responsetime.jsp. Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because theUSPTO does NOT accept e-mails as responses to Office actions. Instead, the USPTO recommends thatyou respond online using the Trademark Electronic Application System (TEAS) response form located athttp://www.uspto.gov/trademarks/teas/response_forms.jsp. (3) QUESTIONS: For questions about the contents of the Office action itself, please contact theassigned trademark examining attorney. For technical assistance in accessing or viewing the Office actionin the Trademark Status and Document Retrieval (TSDR) system, please e-mail [email protected].
WARNING
Failure to file the required response by the applicable response deadline will result in the
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ABANDONMENT of your application. For more information regarding abandonment, seehttp://www.uspto.gov/trademarks/basics/abandon.jsp. PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION: Privatecompanies not associated with the USPTO are using information provided in trademark applications tomail or e-mail trademark-related solicitations. These companies often use names that closely resemble theUSPTO and their solicitations may look like an official government document. Many solicitations requirethat you pay “fees.” Please carefully review all correspondence you receive regarding this application to make sure that you areresponding to an official document from the USPTO rather than a private company solicitation. Allofficial USPTO correspondence will be mailed only from the “United States Patent and TrademarkOffice” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.” For more information onhow to handle private company solicitations, seehttp://www.uspto.gov/trademarks/solicitation_warnings.jsp.
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JS 44 (Rev. 12/07) CIVIL COVER SHEETThe JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as providedby local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the purpose of initiatingthe civil docket sheet. (SEE INSTRUCTIONS ON THE REVERSE OF THE FORM.)
I. (a) PLAINTIFFS DEFENDANTS
(b) County of Residence of First Listed Plaintiff County of Residence of First Listed Defendant(EXCEPT IN U.S. PLAINTIFF CASES) (IN U.S. PLAINTIFF CASES ONLY)
NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF THE LAND INVOLVED.
(c) Attorney’s (Firm Name, Address, and Telephone Number) Attorneys (If Known)
II. BASIS OF JURISDICTION (Place an “X” in One Box Only) III. CITIZENSHIP OF PRINCIPAL PARTIES(Place an “X” in One Box for Plaintiff(For Diversity Cases Only) and One Box for Defendant)
1 U.S. Government 3 Federal Question PTF DEF PTF DEFPlaintiff (U.S. Government Not a Party) Citizen of This State 1 1 Incorporated or Principal Place 4 4
of Business In This State
2 U.S. Government 4 Diversity Citizen of Another State 2 2 Incorporated and Principal Place 5 5Defendant (Indicate Citizenship of Parties in Item III) of Business In Another State
Citizen or Subject of a 3 3 Foreign Nation 6 6 Foreign Country
IV. NATURE OF SUIT (Place an “X” in One Box Only)CONTRACT TORTS FORFEITURE/PENALTY BANKRUPTCY OTHER STATUTES
110 Insurance PERSONAL INJURY PERSONAL INJURY 610 Agriculture 422 Appeal 28 USC 158 400 State Reapportionment120 Marine 310 Airplane 362 Personal Injury - 620 Other Food & Drug 423 Withdrawal 410 Antitrust130 Miller Act 315 Airplane Product Med. Malpractice 625 Drug Related Seizure 28 USC 157 430 Banks and Banking140 Negotiable Instrument Liability 365 Personal Injury - of Property 21 USC 881 450 Commerce150 Recovery of Overpayment 320 Assault, Libel & Product Liability 630 Liquor Laws PROPERTY RIGHTS 460 Deportation
& Enforcement of Judgment Slander 368 Asbestos Personal 640 R.R. & Truck 820 Copyrights 470 Racketeer Influenced and151 Medicare Act 330 Federal Employers’ Injury Product 650 Airline Regs. 830 Patent Corrupt Organizations152 Recovery of Defaulted Liability Liability 660 Occupational 840 Trademark 480 Consumer Credit
Student Loans 340 Marine PERSONAL PROPERTY Safety/Health 490 Cable/Sat TV (Excl. Veterans) 345 Marine Product 370 Other Fraud 690 Other 810 Selective Service
153 Recovery of Overpayment Liability 371 Truth in Lending LABOR SOCIAL SECURITY 850 Securities/Commodities/ of Veteran’s Benefits 350 Motor Vehicle 380 Other Personal 710 Fair Labor Standards 861 HIA (1395ff) Exchange
160 Stockholders’ Suits 355 Motor Vehicle Property Damage Act 862 Black Lung (923) 875 Customer Challenge190 Other Contract Product Liability 385 Property Damage 720 Labor/Mgmt. Relations 863 DIWC/DIWW (405(g)) 12 USC 3410195 Contract Product Liability 360 Other Personal Product Liability 730 Labor/Mgmt.Reporting 864 SSID Title XVI 890 Other Statutory Actions196 Franchise Injury & Disclosure Act 865 RSI (405(g)) 891 Agricultural Acts
REAL PROPERTY CIVIL RIGHTS PRISONER PETITIONS 740 Railway Labor Act FEDERAL TAX SUITS 892 Economic Stabilization Act210 Land Condemnation 441 Voting 510 Motions to Vacate 790 Other Labor Litigation 870 Taxes (U.S. Plaintiff 893 Environmental Matters220 Foreclosure 442 Employment Sentence 791 Empl. Ret. Inc. or Defendant) 894 Energy Allocation Act230 Rent Lease & Ejectment 443 Housing/ Habeas Corpus: Security Act 871 IRS—Third Party 895 Freedom of Information240 Torts to Land Accommodations 530 General 26 USC 7609 Act245 Tort Product Liability 444 Welfare 535 Death Penalty IMMIGRATION 900Appeal of Fee Determination290 All Other Real Property 445 Amer. w/Disabilities - 540 Mandamus & Other 462 Naturalization Application Under Equal Access
Employment 550 Civil Rights 463 Habeas Corpus - to Justice446 Amer. w/Disabilities - 555 Prison Condition Alien Detainee 950 Constitutionality of
Other 465 Other Immigration State Statutes440 Other Civil Rights Actions
V. ORIGINTransferred fromanother district(specify)
Appeal to DistrictJudge fromMagistrateJudgment
(Place an “X” in One Box Only)1 Original
Proceeding2 Removed from
State Court 3 Remanded from
Appellate Court4 Reinstated or
Reopened 5 6 Multidistrict
Litigation7
VI. CAUSE OF ACTIONCite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
Brief description of cause:
VII. REQUESTED IN COMPLAINT:
CHECK IF THIS IS A CLASS ACTIONUNDER F.R.C.P. 23
DEMAND $ CHECK YES only if demanded in complaint:JURY DEMAND: Yes No
VIII. RELATED CASE(S) IF ANY (See instructions): JUDGE DOCKET NUMBER
DATE SIGNATURE OF ATTORNEY OF RECORD
FOR OFFICE USE ONLY
RECEIPT # AMOUNT APPLYING IFP JUDGE MAG. JUDGE
The Brooklyn Brewery Corporation
Brooklyn, NY
Daniel R. Foster, McDermott Will & Emery LLP, 4 Park Plaza Suite 1700,Irvine, CA, 92614
Black Ops Brewing, Inc.
15 USC 1114 and 1125
trademark infringement, false designation of origin, unfair competition, passing off
✔
/s/ Daniel R. FosterNovember 2, 2015
Case 1:15-cv-01656-JAM-EPG Document 1-3 Filed 11/02/15 Page 1 of 1
AO 120 (Rev. 08/10)
TO: Mail Stop 8Director of the U.S. Patent and Trademark Office
P.O. Box 1450Alexandria, VA 22313-1450
REPORT ON THEFILING OR DETERMINATION OF ANACTION REGARDING A PATENT OR
TRADEMARK
In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has beenfiled in the U.S. District Court on the following
G Trademarks or G Patents. ( G the patent action involves 35 U.S.C. § 292.):
DOCKET NO. DATE FILED U.S. DISTRICT COURT
PLAINTIFF DEFENDANT
PATENT ORTRADEMARK NO.
DATE OF PATENT OR TRADEMARK HOLDER OF PATENT OR TRADEMARK
1
2
3
4
5
In the above—entitled case, the following patent(s)/ trademark(s) have been included:
DATE INCLUDED INCLUDED BYG Amendment G Answer G Cross Bill G Other Pleading
PATENT ORTRADEMARK NO.
DATE OF PATENT OR TRADEMARK HOLDER OF PATENT OR TRADEMARK
1
2
3
4
5
In the above—entitled case, the following decision has been rendered or judgement issued:
DECISION/JUDGEMENT
CLERK (BY) DEPUTY CLERK DATE
Copy 1—Upon initiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to DirectorCopy 2—Upon filing document adding patent(s), mail this copy to Director Copy 4—Case file copy
for the Eastern District of California✔
11/2/2015 for the Eastern District of California
The Brooklyn Brewery Corporation Black Ops Brewing, Inc.
3,636,236 6/9/2015 The Brooklyn Brewery Corporation
Case 1:15-cv-01656-JAM-EPG Document 1-4 Filed 11/02/15 Page 1 of 1
