Bluebird Hardwater LLC

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Mailed: October 22, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Bluebird Hardwater LLC
_____
Serial Nos. 90902279 and 97187261
_____
Susan Stabe and Scott J. Strohm of Kutak Rock LLP,
for Bluebird Hardwater LLC.
Kieu-Nhi Le, Trademark Examining Attorney, Law Office 129,
Pam Willis, Managing Attorney.
_____
Before Allard, Casagrande, and Bradley,
Administrative Trademark Judges.
Opinion by Allard, Administrative Trademark Judge:
Bluebird Hardwater LLC (“Applicant”) seeks registration on the Principal
Register of the standard character mark BLUEBIRD HARDWATER1 and the
1 Application Serial No. 90902279 was filed on August 25, 2021, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention
to use the mark in commerce.

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composite word and design mark ,2 both for goods ultimately identified
as “Canned alcoholic beverages, except beer,” in International Class 33.
The Trademark Examining Attorney refused registration of each mark under
Section 6(a) of the Trademark Act, 15 U.S.C. § 1056(a), based on Applicant’s failure
to comply with the requirement to disclaim HARD WATER, which is the proper
spelling of the term HARDWATER, on the ground that the terms are merely
descriptive of Applicant’s identified goods within the meaning of Section 2(e)(1) of the
Trademark Act, 15 U.S.C. § 1052(e)(1), and, accordingly, are unregistrable
components of each mark.
Registration of each mark is also refused under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), on the ground that each of Applicant’s marks, when used on the
goods identified above, so resembles the mark BLUEBIRD DISTILLING (in standard
characters, DISTILLING disclaimed) for “distilled spirits” in International Class 333
that each mark is likely to cause confusion, to cause mistake, or to deceive.
2 Application Serial No. 97187261 was filed on December 23, 2021, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention
to use the mark in commerce. The mark is described as “consist[ing] of a circle design
appearing with the bottom quadrant appearing as [a] separate … wedge shape appearing
above the word ‘BLUEBIRD’ appearing in a stylized font, all of the foregoing appearing
centered above the word ‘HARDWATER’ in a smaller stylized font.”
3 Reg. No. 5625044 issued on December 11, 2018 and has been maintained.
Both applications were initially refused under Section 2(d) of the Trademark Act on the basis
of likelihood of confusion with a different mark: BLUEBIRD for wine (Reg. No. 4173369).
May 27, 2022 Office Action at 2 in each matter. After Applicant successfully petitioned to
cancel this cited registration, the refusals based on it were deemed moot. See June 6, 2025
Final Office Action at 2 in each matter.

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After the refusals were made final in both cases, Applicant requested
reconsideration and filed a notice of appeal in each.4 The appeals were suspended and
the applications remanded to the Examining Attorney.5 After reconsideration was
denied, the appeals resumed.6
Applicant filed briefs in both appeals.7 Arguing that the appeals involve similar
marks and similar issues of law and fact, the Examining Attorney moved to
consolidate them.8 Despite the pending motion, and presumably because it was
undecided at the time the Examining Attorney’s brief was due, the Examining
Attorney filed separate briefs in each matter.9 Because the motion is unopposed, the
appeals do indeed involve common issues of law and fact, and the record and
arguments are largely the same, we grant the motion to consolidate and decide these
two appeals in a single opinion. In re Mr. Recipe, LLC, No. 86040643, 2016 TTAB
LEXIS 80, at *2 (Board consolidated appeals in two applications upon examining
Citations to the prosecution files refer to the United States Patent and Trademark Office’s
(“USPTO”) Trademark Status & Document Retrieval (“TSDR”) system and identify the
documents by title, date, and page in the downloadable .pdf version.
4 1 TTABVUE in both proceedings; December 8, 2025 Request for Reconsideration in both
matters.
Citations to the briefs and other materials in each appeal record refer to the Board’s
TTABVUE online docket system.
5 2 TTABVUE in both proceedings.
6 4, 5 TTABVUE in both proceedings.
7 6 TTABVUE in both proceedings.
8 8 TTABVUE in both proceedings.
9 10 TTABVUE in both proceedings.

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attorney’s motion). Citations to the record refer only to Application Serial No.
90902279 unless otherwise indicated.
For the reasons discussed below, we affirm the disclaimer requirement as to each
application and we also affirm the refusal to register each mark under Section 2(d) of
the Trademark Act.
I. Disclaimer Requirement – Applicable Law
In the absence of acquired distinctiveness, which Applicant does not claim in these
cases, merely descriptive terms are unregistrable under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. § 1052(e)(1), and therefore are subject to disclaimer under
Section 6(a) of the Trademark Act, if the mark is otherwise registrable. 15 U.S.C.
§ 1056(a) (“The Director may require the applicant to disclaim an unregistrable
component of a mark otherwise registrable.”). Failure to comply with a disclaimer
requirement is a basis for refusal. In re Stereotaxis, Inc., 429 F.3d 1039, 1041 (Fed.
Cir. 2005) (“[T]he Trademark Office may require a disclaimer as a condition of
registration if the mark is merely descriptive for at least one of the products or
services involved.”); In re Korn Ferry, No. 90890949, 2024 TTAB LEXIS 224, at *5
(“Failure to provide the required disclaimer constitutes a ground for refusing
registration.”) (quoting In re Lego Juris A/S, No. 88698784, 2022 TTAB LEXIS 175,
at *6)).
In both applications, the Examining Attorney required Applicant to disclaim the
wording HARDWATER apart from the mark as a whole, asserting that in the context

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of Applicant’s identified goods, namely, “Canned alcoholic beverages, except beer,”
HARDWATER merely describes a characteristic or ingredient of them.10
The record shows that the term “hard” is defined as “having a high concentration
of alcohol.”11 “Water” is listed as an ingredient in Applicant’s goods.12
Third-party website evidence establishes that the phrase “hard water” is
commonly used by third parties to mean beverages composed of alcohol and water:
• Milwaukee Business Journal: “Central Standard Craft Distillery releases first
hard water beverage,” discussing the “first vodka water of its kind.”13
• Thrillist asks: “Why the sudden demand for alcohol-spiked water?” and
describes market trends around “hard water.”14
• Clarity offers “hard sparkling water” from its brewery.15
• Cottage Springs offers “hard water” which consists of vodka and water.16
• Forbes, in an article titled, “Milwaukee Distillery Creates New Alcohol
Category of Hard Water,”17 which it describes as a “low, ABV [alcohol by
volume] drink that’s … made from a grain-neutral spirit, not malt.”18
10 10 TTABVUE 3, 7.
11 June 6, 2025 Final Office Action at 75 (MERRIAM-WEBSTER DICTIONARY).
12 May 27, 2022 Office Action at 60-61.
13 Id. at 35-37 (emphasis added).
14 Id. at 40-47 (emphasis added).
15 Id. at 53-58 (emphasis added).
16 June 6, 2025 Office Action at 104 (emphasis added).
Because there is no indication that sales of Cottage Springs Hard Water from Berezanhg.com
are limited to Canada, as Applicant argues (December 8, 2025 Request for Reconsideration
at 21), and the price is listed in U.S. dollars, we consider this evidence.
17 June 6, 2025 Office Action at 106-110 (emphasis added).
18 Id. at 106-07.
The Examining Attorney also made of record evidence of the use of “hard water” from
funnywater.com. Id. at 90-99. Inasmuch as Applicant countered with unrebutted evidence

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The above-discussed evidence shows that third parties providing beverages
consisting of alcohol and water use the phrase “hard water” to describe these
beverages. Whether a term is merely descriptive is determined in the context of
consumers who know what the goods are. See, e.g., Earnhardt v. Kerry Earnhardt,
Inc., 864 F.3d 1374, 1378 (Fed. Cir. 2017). The evidence here establishes that
consumers who know what the goods are will understand Applicant’s use of the
compound word HARDWATER to convey information about an ingredient or
characteristic of the goods.
The record also includes third-party registrations for marks incorporating the
term “hard” or “water” for alcoholic beverages containing alcohol or water, where such
terms were disclaimed:
• BOJANGLES HARD SWEET TEA (HARD SWEET TEA disclaimed) for
“alcoholic tea-based beverage” (Reg. No. 7280721);19
• HARDLY WATER (WATER disclaimed) for “Alcoholic fruit beverages;
Ready-to-drink alcoholic beverages, other than beer-based” (Reg. No.
7069686);20
• ARIZONA HARD (HARD disclaimed) for, among other things, “Alcoholic
beverages except beers” (Reg. No. 7020299);21
that this site no longer uses the terms “hard water,” December 8, 2025 Request for
Reconsideration at 21, 59-60 (Exhibit E), we do not consider it.
Due to Applicant’s unrebutted evidence that Quivr.com no longer uses the phrase “hard
sparkling water,” December 8, 2025 Request for Reconsideration at 21, 62 (Exhibit F), we
also do not consider the evidence attached to the June 6, 2025 Office Action at 100-01.
19 January 22, 2026 Office Action at 29.
20 Id. at 31-32.
21 Id. at 35-36.

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• MIKE’S HARD (HARD disclaimed) for, inter alia, “alcoholic flavored malt
coolers” (Reg. No. 3215727);22
• PARTY WATER (WATER disclaimed) for “Alcoholic beverages in the
nature of hard seltzer” (Reg. No. 6411859);23
• HARD LABEL (HARD disclaimed) for “Distilled spirits; whiskey” (Reg. No.
6037758);24
• PRINCESS WATER (WATER disclaimed) for “Alcoholic fruit beverages”
(Reg. No. 7525171);25
• PIRATE WATER (WATER disclaimed) for “Ready to drink alcoholic malt
beverages, except beers, excluding rum and rum-based beverages” (Reg. No.
7340970);26
• SNAKE WATER (WATER disclaimed) for “Alcoholic beverages, except
beer” (Reg. No. 6278855);27
• PEELED HARD CIDER (HARD CIDER disclaimed) for “Alcoholic
beverages, namely, ciders; Hard cider” (Reg. No. 6441441);28 and
• SISTERS HARD SELTZER (HARD SELTZER disclaimed) for “hard
seltzer” (Supp. Reg. No. 6674322).29
These third-party registrations featuring goods similar to Applicant’s identified
goods are probative evidence on the issue of descriptiveness because the terms “hard”
and “water,” as indicated above, have been disclaimed. See, e.g., Sweats Fashions,
Inc. v. Pannill Knitting Co., 833 F.2d 1560, 1565 n.1 (Fed. Cir. 1987) (discussing third-
22 Id. at 39-40.
23 Id. at 41.
24 Id. at 43.
25 Id. at 45.
26 Id. at 47.
27 Id. at 49.
28 Id. at 51.
29 Id. at 53.

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party registrations with disclaimers, Court said: “the disclaimers are evidence, albeit
not conclusive, of descriptiveness of the [disclaimed] term.”) (citations omitted); see
also In re Morinaga Nyugyo K.K., No. 86338392, 2016 TTAB LEXIS 448, at *25-26
(“Third party registrations show the sense in which the word is used in ordinary
parlance and may show that a particular term has descriptive significance as applied
to certain goods or services.”) (quoting Inst. Nat’l des Appellations D’Origine v.
Vintners Int’l Co., 958 F.2d 1574, 1581-82 (Fed. Cir. 1992)).
Here, the same evidence showing that water is an ingredient in Applicant’s
canned alcoholic beverage also shows Applicant’s use of the compound word
HARDWATER.30 Applicant’s use of the term HARDWATER is consistent with the
dictionary definition of the term HARD and with the third-party website and
registration evidence discussed above, all of which shows that consumers will
understand the compound word to mean a beverage composed of alcohol and water.
In re N.C. Lottery, 866 F.3d 1363, 1367-69 (Fed. Cir. 2017) (applicant’s own
promotional materials helped evidence mere descriptiveness).
Applicant argues that the record shows that “‘HARDWATER’ is a term coined by
Applicant[,]”31 and that it has been improperly dissected into the terms “hard” and
“water.”32 However, the record does not establish that HARDWATER is a coined
term. Rather, it is a combination of two common, well-established terms that describe
30 May 27, 2022 Office Action at 60-61.
31 6 TTABVUE 10.
32 Id.

Serial Nos. 90902279 and 97187261
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an alcoholic beverage containing both water and alcohol, which precisely describes
the ingredients of Applicant’s identified “Canned alcoholic beverages, except beer.”
The dictionary definition of the term “hard” and third-party use and registration
evidence of record confirm that these terms, when combined, have a common meaning
in the relevant field and it requires no imagination to connect it to Applicant’s
identified goods. Applicant’s combining the terms “hard” and “water,” and omitting
the space between them, does not cause the combined terms to be something other
than merely descriptive of the identified goods. See, e.g., In re Nursecon, LLC, No.
88052194, 2024 TTAB LEXIS 545, at *28 (“Nor does the fact that NURSECON does
not include a space between the two elements alter its merely descriptive nature.”);
In re Tower Tech., Inc., No. 75709532, 2002 TTAB LEXIS 300, at *10, 13-14 (finding
that the terms, when combined as SMARTTOWER, are merely descriptive of highly
automated cooling towers); see also Minn. Mining & Mfg. v. Addressograph-
Multigraph Corp., 1967 TTAB LEXIS 152, at *5 (“It is almost too well established to
cite cases for the proposition that an otherwise merely descriptive term is not made
any less so by merely omitting spaces between the words . . . .”) (no number in
original).
Applicant’s claim that it coined the term is of no merit. “‘The fact that Applicant
may be the first or only user of a term does not render that term distinctive’ if . . . it
has been shown to be merely descriptive of the goods identified in the application.” In
re Fallon, No. 86882668, 2020 TTAB LEXIS 464, at *32-33 (quoting In re Fat Boys
Water Sports LLC, No. 86490930, 2016 TTAB LEXIS 150, at *10); see also In re

Serial Nos. 90902279 and 97187261
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Swatch Grp. Mgmt. Servs. AG, No. 85485359, 2014 TTAB LEXIS 131, at *29 n.50
(“Being ‘the first and only one to adopt and use the mark sought to be registered does
not prove that the mark is not descriptive.’”) (quoting In re Bailey Meter Co., 102 F.2d
843, 844 (CCPA 1939)).
Applicant’s argument that “even if the term [HARDWATER] is broken up into
‘HARD’ and ‘WATER’, the evidence shows that a consumer would associate ‘hard’
used with ‘water’ to indicate a high mineral content water[,]”33 relies on the mistaken
premise that the term is to be considered in the abstract. But “[w]hether consumers
could guess what the product is from consideration of the mark alone is not the test.”
Hangzhou Mengku Tech. Co. v. Shanghai Zhenglang Tech. Co., No. 91272143, 2024
TTAB LEXIS 575, at *24 (quoting In re Am. Greetings Corp., No. 73284539, 1985
TTAB LEXIS 97, at *3-4). Again, the element HARDWATER must be considered “in
relation to the goods or services for which registration is sought, the context in which
the mark is used, and the possible significance that the mark is likely to have to the
average purchaser encountering the goods or services in the marketplace.” Hangzhou
Mengku, 2024 TTAB LEXIS 575, at *23-24. The goods here are “Canned alcoholic
beverages, except beer.” In view of the record here, we have no doubt that “someone
who knows what the goods . . . are will understand the mark to convey information
about them.” Fallon, 2020 TTAB LEXIS 464, at *21-22 (quoting Real Foods Pty Ltd.
v. Frito-Lay N. Am., Inc., 906 F.3d 965, 974 (Fed. Cir. 2018)).
33 6 TTABVUE 11 (citing August 9, 2023 Response to Office Action at 688-94 (Google search
results for “What is hard water” referred to as Exhibit E)).

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In light of the foregoing, we conclude that the terms HARD and WATER are
merely descriptive of a characteristic or ingredient of Applicant’s identified goods and,
accordingly, affirm the requirement that Applicant disclaim the wording
HARDWATER in both applications.
II. Likelihood of Confusion – Applicable Law
We also must address the Section 2(d) refusal, which stands in the way of
registration. Section 2(d) of the Trademark Act prohibits the registration of a mark
that “[c]onsists of or comprises a mark which so resembles a mark registered in the
Patent and Trademark Office … as to be likely, when used on or in connection with
the goods of the applicant, to cause confusion, or to cause mistake, or to deceive ….”
15 U.S.C. § 1052(d). We assess the likelihood of confusion under Section 2(d) based
on the factors set forth in In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357, 1361
(CCPA 1973) (“DuPont”).
In any likelihood of confusion analysis, we consider each DuPont factor for which
there is evidence and argument. In re Guild Mortg. Co., 912 F.3d 1376, 1379 (Fed.
Cir. 2019). Varying weights may be assigned to each DuPont factor depending on the
evidence presented. See Citigroup Inc. v. Cap. City Bank Grp., Inc., 637 F.3d 1344,
1356 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 1206 (Fed. Cir. 1993) (“[T]he
various evidentiary factors may play more or less weighty roles in any particular
determination.”). “Each case must be decided on its own facts and the differences are
often subtle ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 1199 (CCPA
1973).

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In every Section 2(d) case, two key factors are the similarity of the marks and the
relatedness of the goods or services. See In re i.am.symbolic, LLC, 866 F.3d 1315,
1322 (Fed. Cir. 2017); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65
(Fed. Cir. 2002); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103
(CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative
effect of differences in the essential characteristics of the goods and differences in the
marks.”). These factors and others are addressed below.
A. Similarity or Dissimilarity and Nature of the Goods
We turn first to the second DuPont factor and consider the similarity or
dissimilarity of the goods or services as they are identified in the involved
applications and cited registration. See In re Detroit Athletic Co., 903 F.3d 1297, 1306
(Fed. Cir. 2018); Octocom Sys., Inc. v. Hous. Comput. Servs., Inc., 918 F.2d 937, 942-
43 (Fed. Cir. 1990).
The identified goods and services need not be identical or even competitive to find
a likelihood of confusion. On-line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080,
1086 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329 (Fed. Cir. 2000). The
goods or services need only be “related in some manner and/or if the circumstances
surrounding their marketing are such that they could give rise to the mistaken belief
that they emanate from the same source.” See Coach Servs v. Triumph Learning LLC,
668 F.3d 1356, 1369 (Fed. Cir. 2012) (quoting 7-Eleven, Inc. v. Wechsler, No.
91117739, 2007 TTAB LEXIS 58, at *28-29)).

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Evidence of relatedness may include, for example, evidence from computer
databases showing that the relevant goods are used together or advertisements
showing that the relevant goods are sold by the same manufacturer or dealer. In re
Embiid, No. 88202890, 2021 TTAB LEXIS 168, at *30. In addition, “[t]he application
and registration themselves may provide evidence of the relationship between the
services.” Monster Energy Co. v. Lo, No. 91225050, 2023 TTAB LEXIS 14, at *19-20
(citing Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 1376 (Fed. Cir. 2002) (“On
the face of the registrations themselves, QSC’s [amplifiers and power amplifiers] and
the ACOUSTIC WAVE [loudspeaker systems and music systems consisting of a
loudspeaker system and amplifier and at least one of a radio tuner, compact disc
player and audio tape cassette player and loudspeaker systems] are related.”) and
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267 (Fed. Cir. 2002)
(finding the Board erred in concluding that there was insufficient evidence of
relatedness, because it “did not consider the important evidence already before it,
namely the ITU application and [opposer’s] registrations”)); see also In re Davia, No.
85497617, 2014 TTAB LEXIS 214, at *25 (finding pepper sauce and agave related
where evidence showed both were used for the same purpose in the same recipes and
thus consumers were likely to purchase the products at the same time and in the
same stores).
Recall that each of Applicant’s involved applications seeks registration for goods
identified as “Canned alcoholic beverages, except beer,” while the cited registration
identifies “distilled spirits.”

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Because Registrant’s “distilled spirits” are used in Applicant’s “Canned alcoholic
beverages, except beer,” this renders the goods complementary. It is well settled that
complementary goods may be found related. See In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 1567 (Fed. Cir. 1984) (holding bread and cheese to be
related because they are often used in combination and noting that “[s]uch
complementary use has long been recognized as a relevant consideration in
determining a likelihood of confusion”); In re Vienna Sausage Mfg. Co., No. 73401682,
1986 TTAB LEXIS 85, at *3 (sausage and cheese are complementary goods because
they appear together as the main ingredient in some recipes and because they may
be served together).
Other evidence of record bolsters our finding that the goods are related.
Specifically, the record shows that the following third-parties offer the goods of
Applicant (canned alcoholic beverages except beer) and the cited registration
(distilled spirits) under the same mark: Cutwater,34 Dogfish Head,35 Southern Tier
Distilling Co,36 Seven Caves,37 Cardinal Spirits,38 4 Spirits Distillery,39 Captain
34 June 6, 2025 Final Office Action at 24-35.
35 Id. at 36-40.
36 Id. at 50-55.
37 Id. at 57-60.
38 Id. at 61-68.
39 Id. at 69-74.

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Morgan,40 Ketel One,41 Casa Azul,42 Arsenal Wine & Liquor (showing Crown Royal
canned alcoholic beverages and distilled spirits),43 Coborn’s Liquor (showing Svedka
canned alcoholic beverages and distilled spirits),44 Jim Beam,45 Jack Daniel’s,46 and
Absolut.47 Internet evidence, such as this, showing the parties’ respective goods
emanating from the same source under the same mark is probative evidence of the
relatedness of the goods for likelihood of confusion purposes. In re Davey Prods. Pty,
No. 77029776, 2009 TTAB LEXIS 524, at *14-15.
Applicant’s arguments based on the different characteristics of the identified
goods, such as serving size, number of calories per serving, and alcohol content,48 are
unpersuasive. Here, the involved applications and the cited registration describe
their respective goods broadly and, as a result, each encompasses all goods of the type
described. Accordingly, we must consider Applicant’s “canned alcoholic beverages,
except beer” and Registrant’s “distilled spirits” to encompass all types, regardless of
calories per serving and alcohol content, for example. We cannot, despite Applicant’s
urging, read such limitations into the identifications. Octocom Sys., 918 F.2d at 942
40 January 22, 2026 Subsequent Final Office Action at 83-91.
41 Id. at 93-98.
42 Id. at 99-113.
43 Id. at 114-17.
44 Id. at 118-21.
45 Id. at 122-25.
46 Id. at 126-29.
47 Id. at 130-33.
48 6 TTABVUE 17.

Serial Nos. 90902279 and 97187261
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(“The authority is legion that the question of registrability of an applicant’s mark
must be decided on the basis of the identification of goods set forth in the application
regardless of what the record may reveal as to the particular nature of an applicant’s
goods, the particular channels of trade or the class of purchasers to which the sales
of goods are directed.”).
Similarly, we are not persuaded by Applicant’s arguments that its amendment
adding “canned” to its identification renders the goods dissimilar from Registrant’s
goods, which, Applicant argues, are typically sold in glass bottles.49 The evidence
discussed above shows that alcoholic beverages – packaged in cans – are related to
distilled spirits.
For the foregoing reasons, we find the goods related and, as a result, the second
factor weighs in favor of a likelihood of confusion.
B. Established, Likely-to-Continue Channels of Trade and Classes of
Consumers
Turning to the third DuPont factor, we consider “[t]he similarity or dissimilarity
of established, likely-to-continue trade channels.” DuPont, 476 F.2d at 1361.
As an initial matter, because neither Applicant’s nor the cited registration’s
identifications of goods includes any restrictions or limitations as to trade channels,
we presume that the respective goods are or would be marketed in all normal trade
channels for such goods. Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352,
1361 (Fed. Cir. 2000); Davey Prods., 2009 TTAB LEXIS 524, at *18. We disagree with
49 6 TTABVUE 16-17 in No. 90902279; 6 TTABVUE 17 in No. 97187261.

Serial Nos. 90902279 and 97187261
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Applicant that its amendment to include the term “canned” in its identification
constitutes a restriction on its channel of trade.50
Here, the same third-party website evidence discussed above showing that the
identified goods are related also support a finding that such goods travel through the
same channels of trade, i.e., such as specialty beverage stores (such as the Arsenal
Wine & Liquor store51 and Coborn’s Liquor store52) as well as third-party alcohol
distillery websites (such as Jim Beam,53 Jack Daniel’s,54 and Absolut55), and that they
are sold to the same classes of consumers, namely, adult members of the general
public over the legal drinking age. Applicant’s arguments based on the packing of the
goods, i.e., the fact that Applicant’s goods are bought in 4- or 8-packs, for example,
whereas distilled spirits are sold in larger volume glass bottles,56 does not change
this.
Applicant argues, albeit in the context of discussing the fourth DuPont factor, that
[d]ue to states’ laws concerning the sales of spirits, in some
states the Cited Goods cannot be sold in the same stores as
the Applicant’s Goods. In states where both parties’
products could be sold in the same stores, Registrant’s
Goods are, or would be placed among other bottled spirits,
with high ABV [Alcohol By Volume].57
50 6 TTABVUE 18.
51 January 22, 2026 Subsequent Final Office Action at 114-17.
52 Id. at 118-21.
53 Id. at 122-25.
54 Id. at 126-29.
55 Id. at 130-33.
56 6 TTABVUE 18.
57 6 TTABVUE 18-19 in No. 90902279; 6 TTABVUE 19 in No. 97187261.

Serial Nos. 90902279 and 97187261
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Here, Applicant alludes to the three-tiered system for sales of alcoholic beverages. In
this system, a manufacturer, such as Registrant, sells its goods to a distributor, who
sells the goods to a retailer, who in turn sells the goods to the consuming public above
the legal drinking age. See generally Tao Licensing, LLC v. Bender Consulting Ltd.,
No. 92057132, 2017 TTAB LEXIS 437, at *10. Applicant argues that the three-tier
distribution system will cause the goods to be sold in different channels of trade or,
to the extent that they are sold in the same stores, in different locations within the
store.
We acknowledge that the sale of alcohol is strictly controlled, and as a result
producers such as Applicant and Registrant must at least in some circumstances sell
to distributors, who in turn sell to retailers, such as those described above, i.e., liquor
stores, and, depending on the state, perhaps grocery stores and/or other types of
retailers. The point here, however, is that in each state, canned alcoholic beverages,
such as those identified in the involved applications, and distilled spirits, as identified
in the cited registration, are sold together in particular types of legally-approved
stores and offered to the same classes of consumers, i.e., adults of legal drinking age.
While the parties’ goods may be sold in different sections of these stores, contrary
to Applicant’s arguments, this is not enough to avoid confusion given the
complementary nature of the goods. The Board has previously rejected this argument
in an analogous case involving complementary goods, finding:
If two ingredients, however, are found to be complementary
in that they are sold in the same stores to the same
consumers for the same, related or complementary end use,
consumers are likely to be confused upon encountering the

Serial Nos. 90902279 and 97187261
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goods under the same or similar marks even though the
goods may be found in different areas within a store.
Davia, 2014 TTAB LEXIS 214, at *18.
For the reasons discussed above, we find that the channels of trade for “canned
alcoholic beverages, except beer” identified in the involved applications and “distilled
spirits” identified in the cited registration overlap and that this overlap in trade
channels supports a finding, under the third DuPont factor, that a likelihood of
confusion exists.
C. The Strength or Weakness of the Cited Mark
Before we consider the similarity or dissimilarity of the marks, we first consider
the strength or weakness of the cited mark. The strength or weakness of the cited
mark affects the scope of protection to which it is entitled. When evaluating its
strength or weakness, we look at its conceptual strength based on the nature of the
term itself and, if evidence is present, its commercial strength. See Spireon, Inc. v.
Flex Ltd., 71 F.4th 1355, 1362 (Fed. Cir. 2023) (“There are two prongs of analysis for
a mark’s strength under the sixth factor: conceptual strength and commercial
strength.”); In re Chippendales USA, Inc., 622 F.3d 1346, 1353-54 (Fed. Cir. 2010)
(measuring both conceptual and marketplace strength).58
58 Applicant argues that the fifth DuPont factor weighs in its favor, 6 TTABVUE 19 in No.
90902279; 6 TTABVUE 20 in No. 97187261, but there is no evidence of the fame of the cited
mark, which is not surprising inasmuch as “the owner of the cited registration is not a party
to this ex parte appeal, and the Examining Attorney is under no obligation to demonstrate
the fame of a cited mark.” In re Integrated Embedded, No. 86140341, 2016 TTAB LEXIS 470,
at *26; see also Davey Prods., 2009 TTAB LEXIS 524, at *20-21 (fame is not normally a factor
in ex parte proceedings). Accordingly, the fifth DuPont factor is neutral here.

Serial Nos. 90902279 and 97187261
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Applicant argues that its evidence shows that “‘BLUEBIRD’ is common in the
industry such that consumers are accustomed to distinguishing between marks using
the term.”59 During examination Applicant made of record evidence of 138 marks, 127
of which are the subject of pending applications or registrations and 11 of which are
website printouts. Applicant argues “[t]he PTO improperly dismissed [this] evidence
as not probative.”60
One purpose of introducing evidence of third-party use is to show commercial
weakness by demonstrating that “customers have become so conditioned by a
plethora of such similar marks that customers ‘have been educated to distinguish
between different [such] marks on the bases of minute distinctions.’” Omaha Steaks
Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 1324 (Fed. Cir. 2018)
(quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772,
396 F.3d 1369, 1374 (Fed. Cir. 2005)); see also Apex Bank v. CC Serve Corp., 156 F.4th
1230, 1235 (Fed. Cir. 2025) (“When a field is crowded with similar marks, the theory
is that customers will be more adept at distinguishing marks from each other and are
less likely to be confused by similar marks.”). A second purpose of third-party use, as
well as third-party registrations, is to prove conceptual weakness by demonstrating
“that some segment of the [mark] has a normally understood and well recognized
descriptive or suggestive meaning, leading to the conclusion that that segment is
59 6 TTABVUE 15.
60 Id.

Serial Nos. 90902279 and 97187261
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relatively weak.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1339 (Fed.
Cir. 2015).
We consider each of the third-party marks in turn and, for the reasons explained
below, we agree that many of them are not probative. We turn first to the registered
marks (or that are or were the subject of filings before the USPTO).
a. Registration Evidence
i. Pending Applications and Cancelled Registrations
We immediately disregard those twelve marks that are the subject of a pending
application: Ser. Nos. 90652543;61 90188136;62 97119539;63 97188322;64 97026358;65
97260220;66 97148982;67 97036340;68 90467052;69 90467000;70 90467022;71 and
90778324.72 In re Team Jesus LLC, No. 88105154, 2020 TTAB LEXIS 503, at *17 n.29
(“[A]n application [is] evidence only of the fact that it was filed, and therefore has no
probative value.”). And likewise we disregard that mark subject to a cancelled
61 August 9, 2023 Response to Office Action at 277-79.
62 Id. at 321-23.
63 Id. at 506-08.
64 Id. at 538-39.
65 Id. at 540-42.
66 Id. at 547-49.
67 Id. at 571-73.
68 Id. at 574-75.
69 Id. at 576-78.
70 Id. at 579-80.
71 Id. at 581-82.
72 Id. at 75-76.

Serial Nos. 90902279 and 97187261
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registration (Reg. No. 4173369).73 In re Wal-Mart Stores, Inc., No. 86261962, 2019
TTAB LEXIS 1, at *40 (cancelled registrations and pending applications are not
probative).
ii. The Cited Registration is Not a Third-Party Registration
We also disregard the duplicate registrations for BLUEBIRD DISTILLING (Reg.
No. 5625044),74 which is cited against the involved applications, as it is not a third-
party registration in this context. In re Max Cap. Grp. Ltd., No. 77186166, 2010 TTAB
LEXIS 1, at *8-9 (“Although characterized as third-party use, applicant has also
included uses by itself and the [cited] registrant…. Such evidence does not address
the du Pont factor of third-party use.”); cf. Made in Nature, LLC v. Pharmavite LLC,
No. 91223352, 2022 TTAB LEXIS 228, at *31-32 (“By definition” opposer’s and
applicant’s own registrations “are not ‘third-party registrations.’”).
73 Id. at 211-18; see also 10 TTABVUE 15.
74 August 9, 2023 Response to Office Action at 400-01, 618-24.

Serial Nos. 90902279 and 97187261
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iii. Duplicates
Of the remaining registrations, we disregard those that are duplicates: Reg. Nos.
3007300;75 5132983;76 5212937;77 7036725;78 4309489;79 1331178;80 1089394;81
550115;82 1712058;83 3633981;84 6707607;85 6350485;86 and 6092903.87
iv. Marks Less Similar to the Cited Mark than Applicant’s Mark
We also disregard those marks that are less similar to the cited mark than
Applicant’s mark because they do not contain the word “Bluebird”, such as those that
combine the term BLUE with another term, such as BEARD. For example:
BLUEBEARD (Reg. No. 5212937);88 BLUEBEARD COFFEE (Reg. No. 4309489);89
BLUEBEARDS and Design (Reg. No. 6607204);90 BLUEBEARDS ORIGINAL and
75 Id. at 147; compare with id. at 138-46.
76 Id. at 614-17; compare with id. at 396-99.
77 Id. at 625-29; compare with id. at 175-79.
78 Id. at 630-33; compare with id. at 448-51.
79 Id. at 634-38; compare with id. at 180-84.
80 Id. at 639-43; compare with id. at 246-50.
81 Id. at 644-48; compare with id. at 251-55.
82 Id. at 649-54; compare with id. at 260-65.
83 Id. at 655-60; compare with id. at 300-05.
84 Id. at 661-64; compare with id. at 365-68.
85 Id. at 665-69; compare with id. at 443-47.
86 Id. at 670-76; compare with id. at 384-90.
87 Id. at 677-82; compare with id. at 456-61.
88 Id. at 175-79.
89 Id. at 180-84.
90 Id. at 185-88.

Serial Nos. 90902279 and 97187261
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Design (Reg. No. 3229315).91 See In re I-Coat Co., LLC, No. 86802467, 2018 TTAB
LEXIS 171, at *17 (“[N]one of the marks are as similar to the mark in the cited
registration as is Applicant’s mark.”) (citing Specialty Brands, Inc. v. Coffee Bean
Distribs., Inc., 748 F.2d 669, 675 (Fed. Cir. 1984) (“Applicant introduced evidence of
eight third-party registrations for tea which contain the word ‘SPICE’, five of which
are shown to be in use. None of these marks has a ‘SPICE (place)’ format or conveys
a commercial impression similar to that projected by the SPICE ISLANDS mark, and
these third-party registrations are of significantly greater difference from SPICE
VALLEY and SPICE ISLANDS than either of these two marks from each other.”));
see also Sabhnani v. Mirage Brands, LLC, No. 92068086, 2021 TTAB LEXIS 464, at
*32 (“[W]hile the registered marks all contain the word “MIRAGE” they contain
additional elements that cause many of them to be less similar to Petitioner’s mark
than Respondent’s marks are.”).
v. Marks Registered Under Sections 44(e) or 66(a) of the Trademark Act
We also do not consider those third-party registrations that are not based on use
in commerce but rather issued under Sections 44(e) or 66(a) of the Trademark Act,
15 U.S.C. §§ 1126(e), 1141f(a), and for which proof of use has not been filed. Made in
Nature, 2022 TTAB LEXIS 2, at *30-31. This includes: Reg. Nos. 5425838;92
91 Id. at 189-92.
92 Id. at 201-06.

Serial Nos. 90902279 and 97187261
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5613987;93 6350485;94 6092903;95 5148513;96 5929203;97 6110155;98 6451081;99 and
6297568.100
vi. Registered Mark that Translates into “blue bird”
Applicant includes as evidence the registration for the mark QING NIAO, which,
according to the registration, translates into English as “blue bird” (Reg. No.
5285483).101 Applicant does not argue that the doctrine of foreign equivalents should
apply here and we see no reason based on this record to consider it in the context of
the sixth DuPont factor. Cielo e Terra, S.p.A. v. Hoteles y Viñedos del Valle de
Guadalupe S.A. de C.V., No. 91287216, 2026 TTAB LEXIS 240, at *30 & n.29
(limiting the application of the doctrine of foreign equivalents to the first DuPont
factor although acknowledging that “there may be circumstances, based on a different
factual record, where it would be appropriate to apply the doctrine of foreign
equivalents to third-party marks under the sixth DuPont factor.”).
Even assuming the doctrine of foreign equivalents applied, however, this mark
would have no probative value because it is registered for unrelated goods, i.e.,
93 Id. at 329-34.
94 Id. at 384-90.
95 Id. at 456-61.
96 Id. at 481-85.
97 Id. at 522-27.
98 Id. at 528-34.
99 Id. at 550-55.
100 Id. at 556-60.
101 Id. at 583-87.

Serial Nos. 90902279 and 97187261
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“artificial turf.” See i.am.symbolic, 866 F.3d at 1328-29 (disregarding third-party
registrations for other types of goods where the proffering party had neither proven
nor explained that they were related to the goods in the cited registration); In re Thor
Tech, Inc., No. 78634024, 2009 TTAB LEXIS 253, at *19 (“third-party registrations
are of limited probative value because the goods identified in the registrations appear
to be in fields which are far removed from [the parties’] trailers and recreational
vehicles”).
vii. Registrations that Identify Goods That are Not Similar
For purposes of the sixth DuPont factor, the similarity of the goods identified in
the cited registration and third-party registrations must be proven in every case.
Cielo e Terra, 2026 TTAB LEXIS 240, at *24-25 (citing Omaha Steaks, 908 F.3d at
1325).
Recall that the cited registration identifies “distilled spirits.” Thus, we disregard
those marks that identify goods or services for which Applicant has neither argued
nor demonstrated are related to Registrant’s “distilled spirits.” This includes those
registrations that identify: balloons and balls (Reg. No. 615318);102 brand
development (Reg. No. 5780478);103 preparation of customized gift boxes (Reg. No.
6694351);104 beanies (Reg. No. 5424200);105 air hoses (Reg. No. 5193678);106 jewelry
102 Id. at 44-49.
103 Id. at 50-53.
104 Id. at 54-57.
105 Id. at 58-63.
106 Id. at 64-70.

Serial Nos. 90902279 and 97187261
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(Reg. No. 5622733);107 toupees and wigs (Reg. No. 6536816);108 binoculars (Reg. No.
6563210);109 chocolate and rice (Reg. No. 6584331);110 flour (Reg. No. 3193203);111
financing services (Reg. No. 3372355);112 automotive parts (Reg. No. 832107);113 pies
and cakes (Reg. No. 1098271);114 automotive vehicle bodies (Reg. No. 732400);115
transit vehicles (Reg. Nos. 1292132,116 3007300,117 and 2883096118); bakery products
(Reg. No. 3261202);119 charitable fundraising (Reg. No. 2284777);120 diesel exhaust
fluid (Reg. Nos. 6687864 and 6687865);121 and fruit drinks (Reg. Nos. 1331178,
1089394, and 550115).122 Other registrations that we disregard for this same reason
107 Id. at 71-74.
108 Id. at 77-80.
109 Id. at 81-85.
110 Id. at 86-90.
111 Id. at 91-93.
112 Id. at 94-98.
113 Id. at 99-108.
114 Id. at 109-117.
115 Id. at 118-27.
116 Id. at 128-37.
117 Id. at 138-46.
118 Id. at 166-74.
119 Id. at 148-51.
120 Id. at 152-55.
121 Id. at 156-65.
122 Id. at 246-55, 260-65

Serial Nos. 90902279 and 97187261
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include Reg. Nos. 5181603;123 5412681;124 5524375;125 6105146;126 6504985;127
4972414;128 2880287;129 5707023;130 3677616;131 5876916;132 4455916;133 4455917;134
1712058;135 2121756;136 6197012;137 6197011;138 6344476;139 4046532;140 6192372;141
6656045;142 6847302;143 6178715;144 3801824;145 5904475;146 5904476;147 5002081;148
123 Id. at 193-96.
124 Id. at 197-200.
125 Id. at 207-10.
126 Id. at 219-23.
127 Id. at 224-28.
128 Id. at 229-34.
129 Id. at 235-45.
130 Id. at 256-59.
131 Id. at 266-76.
132 Id. at 280-84.
133 Id. at 285-91.
134 Id. at 292-99.
135 Id. at 300-05.
136 Id. at 306-10.
137 Id. at 311-15.
138 Id. at 316-20.
139 Id. at 324-28.
140 Id. at 335-40.
141 Id. at 341-45.
142 Id. at 346-50.
143 Id. at 351-55.
144 Id. at 356-59.
145 Id. at 360-64.
146 Id. at 374-78.
147 Id. at 379-83.
148 Id. at 391-95.

Serial Nos. 90902279 and 97187261
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5295278;149 5939404;150 5939403;151 6117719;152 4719483;153 6747950;154 4881011;155
6474644;156 6707607;157 7036725;158 4300997;159 1342736;160 5856802;161 3649385;162
6847726;163 4174801;164 4937232;165 5136738;166 7127885;167 6238238;168 4501042;169
149 Id. at 402-06.
150 Id. at 407-11.
151 Id. at 412-16.
152 Id. at 417-20.
153 Id. at 421-26.
154 Id. at 427-31.
155 Id. at 432-36.
156 Id. at 437-42.
157 Id. at 443-47.
158 Id. at 448-51.
159 Id. at 452-55.
160 Id. at 462-65.
161 Id. at 466-70.
162 Id. at 471-75.
163 Id. at 476-80.
164 Id. at 486-90.
165 Id. at 491-95.
166 Id. at 496-500.
167 Id. at 501-05.
168 Id. at 509-12.
169 Id. at 513-17.

Serial Nos. 90902279 and 97187261
- 30 -
6657360;170 3205276;171 5605646;172 4516303;173 6255971;174 5460627;175 2567189;176
6778314;177 and 6005705.178 See i.am.symbolic, 866 F.3d at 1328-29; Thor Tech, 2009
TTAB LEXIS 253, at *19.
That leaves us with the following four registrations for BLUEBIRD and
BLUEBIRD formative marks in the name of three different registrants:
• BLUEBIRD CAFÉ for bar and restaurant services, and night club
entertainment events (Reg. Nos. 3633981, 3812504);179
• BLUEBIRD DAY for beer (Reg. No. 5132983);180 and
• BLUEBIRD for wine (Reg. No. 4173369).181
We acknowledge the Examining Attorney’s argument that Applicant has offered
no evidence that bar and restaurant services are related to the identified goods.182 We
need not definitively determine the degree of relatedness here. Rather, for purposes
of argument, we will consider them sufficiently related based on the face of the
170 Id. at 518-21.
171 Id. at 535-37.
172 Id. at 543-46.
173 Id. at 561-66.
174 Id. at 567-70.
175 Id. at 588-91.
176 Id. at 592-96.
177 Id. at 597-01.
178 Id. at 602-05.
179 Id. at 365-73.
180 Id. at 396-99.
181 Id. at 606-13.
182 10 TTABVUE 15.

Serial Nos. 90902279 and 97187261
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identifications themselves inasmuch as bar services by their nature necessarily
involve serving alcoholic beverages, i.e., beverages made with distilled spirits.
We disregard the mark for use with “beer,” however, because beer is not a
“distilled spirit,” as identified by Registrant (rather it is produced through
fermentation183), and it is expressly excluded in Applicant’s identification. With
regard to BLUEBIRD for “wine,” however, we consider it inasmuch as it is
encompassed by Applicant’s identification because it is an “alcoholic beverage.”
By carefully examining Applicant’s voluminous (and indiscriminate) third-party
registration evidence, we have, by eliminating nonprobative registrations, whittled it
down to the two relevant marks, BLUEBIRD CAFÉ for bar and restaurant services,
and night club entertainment events184 (two registrations), and BLUEBIRD for
wine.185 We discuss the impact of these registrations in the context of all of the
evidence in the summary section below.
b. Third-Party Uses
Applicant also made of record screen shots of various third-party marks for a
variety of goods and services.186 However, the screen shots did not contain the
183 “Beer” is defined as “a carbonated, fermented alcoholic beverage that is usually made
from malted cereal grain (especially barley), is flavored with hops, and typically contains less
than a 5% alcohol content.” MERRIAM-WEBSTER DICTIONARY, accessed on October 16, 2026
(emphasis added). https://www.merriam-webster.com/dictionary/beer?src=search-dict-hed.
In re Weiss, No. 88621608, 2024 TTAB LEXIS 277, at *13-14 n.30 (Board may take judicial
notice of dictionary definitions).
184 August 9, 2023 Response to Office Action at 365-73.
185 Id. at 606-13.
186 Id. at 35-43.

Serial Nos. 90902279 and 97187261
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required URL or date of download, as the Examining Attorney pointed out.187
Therefore, Applicant resubmitted some of this same evidence together with
additional evidence, for a total of 11 different third-party marks, this time limited in
use to “the alcoholic beverage industry, and beverage industry in general[.]”188
As an initial matter, we disagree that marks used in the “beverage industry in
general” are similar to “distilled spirits” for purposes of our analysis under the sixth
DuPont factor. Accordingly, without supporting evidence or argument, we disregard
evidence related to tea bags.189 For the reasons discussed above, we also disregard
those marks used with “beer:” BLUEBIRD DAY190 and BLUEBIRD BITTER.191
That leaves us with the following eight third-party marks:
• BLUEBIRD Café for bar and restaurant services;192
• BLUEBIRD Liquor for retail liquor store services;193
• BLUEBIRD Wine and Spirits for retail liquor store services;194
187 June 6, 2025 Final Office Action at 6.
188 December 8, 2025 Request for Reconsideration at 24; see also id. at 17-19, 24-25, 64-158.
189 Id. at 154-58 (Exhibit Q).
190 Id. at 68-78 (Exhibit H).
Even were we to consider this mark for beer relevant, it has little probative value because
the website printout does not show an “add to cart” feature, so there is no evidence that it is
available for sale, id., indicating that it has limited usage.
191 Id. at 80-83 (Exhibit I).
Even if we were to consider this mark, the website printout for this beer shows that it is
produced in the United Kingdom, and there is no evidence that it is for sale in the United
States. Id.
192 Id. at 64-66 (Exhibit G).
193 Id. at 85-86 (Exhibit J).
194 Id. at 88-102 (Exhibit K).

Serial Nos. 90902279 and 97187261
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• BLUEBIRD Bottleshop for retail liquor store services;195
• BLUEBIRD The Cocktail Room offering bar and restaurant services;196
• BLUEBIRD wine;197
• BLUEBIRD liquor;198 and
• BLUEBIRD wine from Schaard Cellars.199
Generally, the “probative value of third-party trademarks depends entirely upon
their usage” and where “the ‘record includes no evidence of the extent of [third-
party uses] . . . the probative value of this evidence is thus minimal.’” Palm Bay, 396
F.3d at 1373 (citation omitted) (italics in original, bold here) (quoting Han Beauty,
Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1338 (Fed. Cir. 2001)). With this in mind,
and for the following reasons, we find four of the third-party uses are of limited
probative value.
First, the website printout for the BLUEBIRD liquor retail store shows that it has
one location and, on Yelp it has 55 reviews, but there is no evidence that purchases
may be made online, suggesting a relatively modest commercial footprint.200 Second,
the website printout for BLUEBIRD Bottleshop states that it has a “New Name. New
Vibe[,]” suggesting that the BLUEBIRD mark has been relatively recently
195 Id. at 104-117 (Exhibit L).
196 Id. at 119-23 (Exhibit M).
197 Id. at 125-32 (Exhibit N).
198 Id. at 134-48 (Exhibit O).
199 Id. at 150-52 (Exhibit P).
200 Request for Reconsideration at 85-86 (Exhibit J).

Serial Nos. 90902279 and 97187261
- 34 -
introduced; further, the website did not printout out well and, as a result, the location
information is missing, which makes it difficult to draw a conclusion about the scope
of its usage.201 Further limiting its probative value, there is no indication that sales
can be made online, as no products are featured or an “add to cart” feature. Lastly,
BLUEBIRD The Cocktail Room offering bar and restaurant services appears to have
only one location and takes no online orders,202 and the same appears to be true of
the BLUEBIRD Café for bar and restaurant services.203
However, of a more probative nature is BLUEBIRD Wine shop, which, although
having only one retail location in the Catskills of New York, the evidence shows that
sales can be made online.204 Similarly, BLUEBIRD wine may be purchased online via
a third-party retail store,205 as can BLUEBIRD liquor,206 and BLUEBIRD wine from
Schaard Cellars.207 However, we have no evidence indicating how many consumers
visit any of these sites or what kind of web traffic they regularly experience so we
have no evidence about the extent of this use.
In sum, even considering these four third-party uses (BLUEBIRD Wine Shop,
BLUEBIRD wine, BLUEBIRD liquor, and BLUEBIRD wine from Schaard Cellars),
they collectively fall well short of the “ubiquitous” or “considerable” third-party use
201 Id. at 104-117 (Exhibit L).
202 Id. at 119-23 (Exhibit M).
203 Id. at 64-66 (Exhibit G).
204 Id. at 87-102 (Exhibit K).
205 Id. at 125-32 (Exhibit N).
206 Id. at 134-48 (Exhibit O).
207 Id. at 150-52 (Exhibit P).

Serial Nos. 90902279 and 97187261
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we expect to see in order to demonstrate commercial weakness. See i.am.symbolic,
866 F.3d at 1329 (“Symbolic’s evidence of [three] third-party use[s] of I AM for the
same or similar goods falls short of the ‘ubiquitous’ or ‘considerable’ use of the mark
components present in its cited cases.”).
c. Summary of Findings under the Sixth DuPont Factor
The three registrations for BLUEBIRD and BLUEBIRD formative marks in the
name of two different registrants together with the four third-party uses at best show
that the term BLUEBIRD has some conceptual weakness. However, because the cited
mark is registered on the Principal Register without a claim of acquired
distinctiveness, we must presume that it is inherently distinctive, see Brooklyn
Brewery Corp. v. Brooklyn Brew Shop, LLC, 17 F.4th 129, 146 (Fed. Cir. 2021), i.e.
that “it is at worst suggestive of the goods.” Heil Co. v. Tripleye GmbH, No. 91277359,
2024 TTAB LEXIS 494, at *49 (citing 15 U.S.C. § 1057(b)). Accordingly, the term
BLUEBIRD is at worst suggestive of “distilled spirits.” Applicant was not, however,
successful in demonstrating that the cited mark is commercially weak. Overall, we
find that the cited mark is entitled to the ordinary scope of protection to which
inherently distinctive marks are entitled.
The sixth DuPont factor is neutral.
D. Similarity or Dissimilarity of the Marks
Under the first DuPont factor, we consider the similarity or dissimilarity of
Applicant’s and Registrant’s marks in their entireties, considering their appearance,
sound, meaning and commercial impression. DuPont, 476 F.2d at 1361. See also

Serial Nos. 90902279 and 97187261
- 36 -
Detroit Athletic, 903 F.3d at 1303. “Similarity in any one of these elements may be
sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, No.
87075988, 2018 TTAB LEXIS 170, at *13 (quoting Davia, 2014 TTAB LEXIS 214, at
*3-4), aff’d mem., 777 F. App’x 516 (Fed. Cir. 2019).
“[S]imilarity is not a binary factor but is a matter of degree.” In re St. Helena
Hosp., 774 F.3d 747, 752 (Fed. Cir. 2014) (quoting In re Coors Brewing Co., 343 F.3d
1340, 1344 (Fed. Cir. 2003)). The proper test regarding similarity “is not a side-by-
side comparison of the marks, but instead whether the marks are sufficiently similar
in terms of their commercial impression such that persons who encounter the marks
would be likely to assume a connection between the parties.” Cai v. Diamond Hong,
Inc., 901 F.3d 1367, 1373 (Fed. Cir. 2018) (quoting Coach Servs., 668 F.3d at 1368).
The focus is on the recollection of the average purchaser, who normally retains a
general rather than a specific impression of trademarks. In re St. Julian Wine Co.,
No. 87834973, 2020 TTAB LEXIS 196, at *13.
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, our analysis cannot be predicated on dissecting the marks
into their various components. In re Nat’l Data Corp., 753 F.2d 1056, 1058 (Fed. Cir.
1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 1007 (CCPA
1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal;
rather, it must be considered as a whole in determining likelihood of confusion.”).
Nonetheless, “there is nothing improper in stating that, for rational reasons, more or
less weight has been given to a particular feature of a mark, provided the ultimate

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conclusion rests on consideration of the marks in their entireties.” Nat’l Data, 753
F.2d at 1058.
Recall that Applicant seeks to register two marks. Considering first Applicant’s
mark BLUEBIRD HARDWATER in standard characters, we find that the term
BLUEBIRD is its dominant term because it appears first and is the most distinctive
term. Palm Bay, 396 F.3d at 1371 (VEUVE as first word is a prominent feature of the
marks); Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 876
(Fed. Cir. 1992) (“[U]pon encountering each mark, consumers must first notice this
identical lead word.”). Moreover, we have affirmed herein the determination that the
HARDWATER element should be disclaimed as descriptive, which indicates that it
has little source-identifying significance. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 947 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted
that the ‘descriptive component of a mark may be given little weight in reaching a
conclusion on the likelihood of confusion.’”) (quoting Nat’l Data, 753 F.2d at 1060).
We next consider Applicant’s composite mark . In the case of a
composite mark containing both words and a design, “the verbal portion of [it] likely
will be the dominant portion.” In re Viterra Inc., 671 F.3d 1358, 1366 (Fed. Cir. 2012).
This is because the literal component “likely will appear alone when used in text and
will be spoken when requested by consumers.” Id.; see also L.C. Licensing, Inc. v.
Berman, No. 91162330, 2008 TTAB LEXIS 756, at *9 (“[I]t is well settled that if a

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mark comprises both a word and a design, then the word is normally accorded greater
weight because it would be used by purchasers to request the goods.”).
This general principle applies here. In Applicant’s composite mark, the circle with
wedge design appears first but the wedge design is angled so as to draw the eye
toward the literal element BLUEBIRD. Comparing the literal elements themselves,
BLUEBIRD appears in relatively large, thick font and appears on top of the term
HARDWATER, which appears in much smaller font. For these reasons, and the
reasons discussed above in connection the standard character mark, we find that the
term BLUEBIRD is the dominant element of Applicant’s composite mark. Contrary
to Applicant’s arguments,208 we are not ignoring the design component but rather
finding that it is not the dominant portion of the mark.
Similarly, BLUEBIRD is the dominant element of Registrant’s BLUEBIRD
DISTILLING mark. It appears first in the mark and is the most distinctive element.
Registrant’s disclaimer of the term DISTILLING supports our finding, as terms that
are disclaimed due to their descriptive or generic nature have less source-identifying
significance. See, e.g., Detroit Athletic, 903 F.3d at 1305 (“[T]he non-source identifying
nature of the words ‘Co.’ and ‘Club’ and the disclaimers thereof constitute rational
reasons for giving those terms less weight in the analysis.”) (citing In re Dixie Rests.,
Inc., 105 F.3d 1405, 1407 (Fed. Cir. 1997) (finding DELTA the dominant part of the
mark THE DELTA CAFE, in part because the generic word “cafe” was disclaimed)).
208 6 TTABVUE 16 in No. 97187261.

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Comparing the marks, they are identical in part in sound to the extent that they
all share the leading literal element BLUEBIRD. Although Applicant’s composite
mark looks different compared to Registrant’s mark due to its design element, and
Applicant’s and Registrant’s marks look different to the extent that they include
different ending terms (HARDWATER versus DISTILLING), the marks are similar
in appearance to the extent that they share the leading literal element BLUEBIRD.
Applicant’s and Registrant’s marks have similar connotations and make similar
commercial impressions due to their shared use of the literal element BLUEBIRD
and their use on related goods. We are not persuaded by Applicant’s argument that
the marks have different connotations and engender different commercial
impressions because “DISTILLING is a verb and does not describe an alcoholic
beverage, but rather describes the art of making a liquor.”209 Evidence of record shows
that HARDWATER connotes a beverage made of alcohol and water; because the
alcohol is rendered through a distilling process, this causes the marks to have similar
connotations and commercial impressions.
While we acknowledge Applicant’s arguments that there are some specific
differences between Applicant’s and Registrant’s marks, we consider both of
Applicant’s marks to be very similar to Registrant’s.
As a result, the first DuPont factor weighs in favor of likelihood of confusion.
209 6 TTABVUE 15.

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E. Conditions Under Which and Buyers to Whom Sales are Made
The fourth DuPont factor considers the “conditions under which and buyers to
whom sales are made, i.e. ‘impulse’ v. careful, sophisticated purchasing.” DuPont, 476
F.2d 1361. Purchaser sophistication or degree of care may tend to minimize likelihood
of confusion; conversely, impulse purchases of inexpensive items may tend to have
the opposite effect. Palm Bay, 396 F.3d at 1376.
Applicant argues that this factor weighs in its favor “because consumers of alcohol,
especially enthusiasts of high-end distilled spirits, exercise higher degrees of
sophistication and discernment than typical ‘supermarket’ consumers.”210 However,
no aspect of Applicant’s assertion is supported by record evidence and, as a result, it
is mere attorney argument. Cai, 901 F.3d at 1371 (“assertions of fact” in a brief do
not constitute “evidence under any of the relevant rules”); see also In re U.S. Tsubaki,
No. 85267349, 2014 TTAB LEXIS 88, at *13-14 (finding that there was no proof to
support the statements in the record by counsel).
Applicant also argues that the price points for the different identified goods are
“quite different.”211 Applicant’s goods retail “for less than $18 for a pack, equating to
just over $2 per 12 ounce can[,]”212 while “Registrant’s distilled spirits start at $34.99
a bottle, with certain products offered at a price as high as $79.99 a bottle.”213
210 6 TTABVUE 18 in No. 90902279; 6 TTABVUE 19 in No. 97187261.
211 6 TTABVUE 19.
212 Id. (citing December 8, 2025 Request for Reconsideration at 160).
213 Id. (citing December 8, 2025 Request for Reconsideration at 165-68).

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In considering this factor, again we emphasize that we are bound by the
identifications of goods and, while we must assume that consumers are over the legal
drinking age, nothing about the identifications otherwise limit the classes of
consumers or the conditions of sale to any particular quality or price-point for the
respective goods. Therefore, we must presume that Applicant’s and Registrant’s
alcoholic beverages and distilled spirits will be sold at all price points, including lower
prices and to all types of consumers (both sophisticated and unsophisticated). In re
Bercut-Vandervoort & Co., No. 73448806, 1986 TTAB LEXIS 124, at *8-9 (rejecting
the applicant’s arguments regarding the high cost and quality of its wine and the
sophistication of its purchasers, where application identified goods merely as “wine”);
see also In re Aquitaine Wine USA, LLC, No. 86928469, 2018 TTAB LEXIS 108, at
*29 (“Wine purchasers are not necessarily sophisticated or careful in making their
purchasing decisions” and because there is no restriction in the subject application
and registration as to price or quality, “we must presume that Applicant’s and
Registrant’s wine encompass inexpensive or moderately-priced wine.”). In the
appeals before us, there is nothing in the nature of Applicant’s alcoholic beverages
and Registrant’s distilled spirits, without any limitation as to their type, price point,
or intended consumers, to suggest their purchasers are particularly sophisticated or
careful.
Because the purchasers of the respective goods cannot be considered to have any
particular sophistication about these alcoholic beverages, we find the fourth DuPont
factor neutral.

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F. Summarizing the DuPont Factors
We have carefully considered all of the evidence made of record, as well as all of
the arguments related thereto. As discussed above, Applicant’s identified goods are
related to Registrant’s and, as a result, the second factor weighs in favor of a
likelihood of confusion. The record shows that Applicant’s and Registrant’s goods
travel in the same channels of trade to the same classes of consumers, so the third
factor also weighs in favor of a likelihood of confusion. Similarly, the first DuPont
factor weighs in favor of confusion due to the shared dominant term BLUEBIRD in
both Applicant’s standard character mark and its composite mark and in Registrant’s
mark. The fourth, fifth and sixth factors are neutral. Because all of the DuPont factors
either weigh in favor of a likelihood of confusion or are neutral, and none weigh
against it, we conclude that confusion with Registrant’s mark is likely to occur.
Decision:
The refusals to register Applicant’s marks based on a likelihood of confusion under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), and on the ground that
Applicant failed to submit a disclaimer of HARD WATER in both applications, are
affirmed.
However, if Applicant submits a disclaimer of HARD WATER within thirty (30)
days from the mailing date of this decision and prior to filing any appeal of this
decision, the disclaimer requirement will have been met. Trademark Rule 2.142(g),
37 C.F.R. § 2.142(g); TBMP § 1218. The disclaimer should read as follows: “No claim
is made to the exclusive right to use HARD WATER apart from the mark as shown.”

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The submission of the required disclaimer, however, will not overcome the refusal to
register under Section 2(d) of the Trademark Act and does not serve to toll the time
to appeal the Board’s decision.

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Casagrande, Administrative Trademark Judge, concurring:
I concur in the opinion. I further note that, as to the Section 2(d) refusal, I would
find the goods, not just related, but legally identical. “Distilled spirits” are an
“alcoholic beverage,” and Applicant points to nothing in the record, and I see nothing
in the record, indicating that cans can’t be used as containers for distilled spirits.