In a recently released ruling, the Trademark Trial and Appeal Board (“Board”) dismissed PYRAT RUM’s opposition to registration of PIRATE PISS for beer, ale and lager.  Patrón Spirits International AG v. Conyngham Brewing Company, Opposition No. 91226939 (June 8, 2018).  The Board, in an opinion authored by Administrative Trademark Judge Thomas W. Wellington, held that PIRATE PISS for beer is not likely to be confused with the already-registered mark PYRAT for rum.  By rejecting PYRAT RUM’s challenge, the Board is allowing Conyngham Brewing Company’s application for registration to proceed.

In dismissing the Opposition, the Board took into account a variety of considerations commonly referred to as the “du Pont factors.”  The opinion, organized according to the du Pont factors, found the following:

A. Relatedness of the Goods: The Board held that beer and rum are not sufficiently related as to cause confusion amongst consumers. Although Patrón Spirits International AG (“Patrón”) submitted thirteen live, third-party Registrations, the Board only considered six use-based Registrations for marks covering both beer and rum and found they were not enough evidence to suggest consumers will be led to believe rum makers also produce beer and vice versa. This factor weighed in favor of PIRATE PISS.

B. Trade channels for the Goods: The Board held that rum and beer travel in the same trade channels. Because they can both be purchased in liquor stores, certain restaurants and certain bars, both goods are sold to the same general class of consumers: adult alcohol consumers. This factor weighed against PIRATE PISS.

C. Alleged weakness of PIRATE and Alleged Strength of Opposer Patrón’s Mark: The Board held that the term PIRATE is not weak in the context of beer. Patrón’s submission of three third-party registrations for marks containing PIRATE or a similar term for beer, without evidence of actual use of these marks, was not enough to show PIRATE as weak in connection with beer. This factor was considered neutral by the Board.

The Board also held that the PYRAT mark is not well-known enough to create a likelihood of confusion with PIRATE PISS.  Although Patrón did submit some Internet evidence suggesting PYRAT RUM had recently increased its sales and that PYRAT had been ranked by one website as one of “The Fifty Best” aged rums, there was no accompanying testimony to corroborate the truth of these statements.  Further, there was no evidence suggesting how many consumers had actually been exposed to this information.  This factor was also considered neutral by the Board.

D. Similarity of the Marks: The Board held that PIRATE PISS was sufficiently distinct from PYRAT. Although PIRATE and PYRAT have similar spellings and are pronounced similarly, the marks are different when it comes to the impressions they each make on consumers. PYRAT is meant to remind consumers of the golden age of piracy, which is often associated with rum, while PIRATE PISS “conjures the vulgar image of urine from a pirate,” which is meant to be funny or even an arbitrary expression.  This factor weighed in favor of PIRATE PISS.

In conclusion, after considering all relevant du Pont factors, the Board found that PIRATE PISS and PYRAT are distinguishable enough that confusion is not likely.  This decision was based primarily on the weak record in this case regarding a relationship between rum and beer, despite the fact that beer and rum travel in the same trade channels to the same class of consumers.  While this Opinion is non-precedential (meaning not binding on future cases before the Board), an important takeaway, as the Board noted on multiple occasions, is that relying too much on prior Board decisions is not always helpful, as the Board must make each decision based on the particular facts in evidence.  The upshot is if you are going to challenge someone else’s application, having a fully developed factual record including the du Pont factors is a better path to success.