Allied Lomar, Inc v. Talnua, LLC.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Mailed: April 13, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Allied Lomar, Inc.1
v.
Talnua, Inc.
_____
Opposition No. 91284670
_____
Paul W. Reidl of Dickenson, Peatman & Fogarty,
for Allied Lomar, Inc.
H. Michael Drumm and Trent E. Rinebarger of Drumm Law, LLC,
for Talnua, Inc.
_____
Before Pologeorgis, Elgin, and Stanley,
Administrative Trademark Judges.
Opinion by Elgin, Administrative Trademark Judge:
Applicant/Counterclaim Petitioner Talnua, Inc. (“Applicant”) seeks registration
on the Principal Register of the standard-character mark OLDE SAINT’S KEEP for
1 Substituted as party plaintiff by way of assignment from Sur Mesure, LLC. See
40 TTABVUE and infra note 22. Citations in this opinion to the briefs and other materials in
the case docket refer to TTABVUE, the Board’s online docketing system. See New Era Cap
Co. v. Pro Era, LLC, 2020 TTAB LEXIS 199, at *4-5 n.1.

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“Distilled spirits” in International Class 33.2
Opposer/Counterclaim Respondent Allied Lomar, Inc. (“Opposer”) opposes
registration of Applicant’s mark based on a claim of likelihood of confusion under
Trademark Section 2(d), 15 U.S.C. § 1052(d).3 In the notice of opposition, Opposer
claims prior use and ownership of two registrations: (1) Reg. No. 6913245 for the
standard-character mark OLDE ST. NICK, registered for “alcoholic beverages, except
beers” in International Class 33 (the ’245 Registration);4 and (2) Reg. No. 2002734 for
the mark VERY OLDE ST. NICK RARE and design (“VERY OLDE” and “RARE”
disclaimed), shown below, registered for “bourbon whiskey” in International Class
33 (the ’734 Registration).5
2 Ser. No. 97294152, filed March 3, 2022 under Trademark Act Section 1(a), 15 U.S.C.
§ 1051(a), based upon allegations of first use anywhere and first use in commerce of March
16, 2019.
3 1 TTABVUE. The ESTTA cover sheet also lists a claim of false suggestion of a connection
under Trademark Section 2(a), 15 U.S.C. § 1052(a). 1 TTABVUE 1. This claim was neither
sufficiently pleaded nor pursued at trial. Therefore, it has been waived or forfeited. See, e.g.,
Swatch AG (Swatch SA) (Swatch Ltd.) v. M.Z. Berger & Co., No. 91187092, 2013 TTAB
LEXIS 515, at *2 n.3 (opposer’s pleaded claims not argued in its brief deemed waived), aff’d,
787 F.3d 1368 (Fed. Cir. 2015).
4 Issued Nov. 29, 2022 under Trademark Act Section 1(a).
5 Issued Sept. 24, 1996 under Trademark Act Section 1(a); renewed. There is no description
of the mark in the registration, but the mark shows an old man with a beard in profile
wearing a robe and smoking a pipe and the words “VERY OLDE ST. NICK RARE” written
in a stylized font above the image of the old man.

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Applicant filed an Answer admitting that Opposer (Sur Mesure, LLC) is the record
owner of the pleaded registrations but denying the other salient allegations of the
Notice of Opposition, along with counterclaims to cancel Opposer’s pleaded
registrations.6 Applicant alleged that the standard-character mark shown in the ’245
Registration had not been used in commerce as of the time the application was filed,
and that the composite mark in the ’734 Registration was abandoned by nonuse with
intent not to resume use.7 Opposer filed an Answer denying the salient allegations in
the counterclaims.8 Applicant later withdrew its counterclaim against the
’245 Registration, resulting in dismissal of that claim with prejudice.9
Opposer filed evidence and a brief in support of its claim and a combined rebuttal
brief and opposition brief to the counterclaim.10 Applicant filed evidence and a
combined brief in opposition to the claim and in support of its counterclaim, but no
rebuttal brief on the counterclaim.11
For the reasons set forth below, we deny the counterclaim for cancellation of the
’734 Registration; and dismiss the opposition against Applicant’s application on the
ground of likelihood of confusion.
6 4 TTABVUE. Applicant’s remaining affirmative defense of abandonment is duplicative of
its counterclaims. Id. at 4.
7 Id. at 5-11.
8 7 TTABVUE.
9 25 TTABVUE; 27 TTABVUE 3.
10 28-30 and 34-36 TTABVUE (Opp. evidence); 41 TTABVUE (Opp. confidential main brief);
42 TTABVUE (Opp. public main brief); and 44 TTABVUE (Opp. rebuttal brief). We
acknowledge the notice of filing error at 38 TTABVUE and have disregarded the filings at 33
and 37 TTABVUE.
11 31-32 TTABVUE (App. evidence); 43 TTABVUE (App. brief).

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I. The Record
Evidence Automatically of Record and Filed By the Parties
The record automatically includes the pleadings and, pursuant to Trademark Rule
2.122(b), 37 C.F.R. § 2.122(b), the files of the opposed application and challenged
’734 Registration. Both parties supplemented the record with documents filed under
notices of reliance, as well as testimony with exhibits. Some evidence was designated
confidential, and we discuss it only in general terms.
Opposer submitted: (1) the Trial Testimony Declaration12 and Opposition and
Rebuttal Trial Testimony Declaration13 of Marci Palatella, the founder and CEO of
Sur Mesure, LLC (successor-in-interest to the original applicant and later assignee,
Allied Lomar, Inc.); (2) a Notice of Reliance14 on records of Applicant’s application and
Opposer’s pleaded registrations,15 excerpts from Applicant’s written discovery
responses; printouts from Applicant’s website, and printouts from websites listing
Opposer’s products for sale; (3) a rebuttal/opposition Notice of Reliance16 on the
resume of Applicant’s witness, public records relating to Applicant’s corporate
12 29 (confidential) and 30 (public) TTABVUE.
13 36 TTABVUE.
14 28 TTABVUE.
15 As addressed more fully below in Section I(B), this includes a plain copy of the pleaded ’245
Registration along with an incomplete copy of the registration from the Trademark Status
Document Retrieval (TSDR) database of the USPTO (with no sections expanded)
(28 TTABVUE 21-24 (Exh. 3)); and both a plain copy and an incomplete TSDR record (in that
the “assignment” and “proceedings” sections are not expanded) of the pleaded ’743
Registration, along with a copy of notices of acceptance of renewals related to the ’734
Registration (id. at 13-20 (Exh. 2)).
16 34 TTABVUE.

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formation, and printouts from websites showing whiskey offered for sale; and (4) the
Rebuttal Trial Testimony Declaration of Joy L. Durand, Applicant’s counsel.17
Applicant submitted: (1) a Notice of Reliance18 on: records of the ’734 Registration;
excerpts from the discovery deposition of Marci Palatella in a federal district court
case; printouts from the Internet website of the California Secretary of State; and
plain-copy records of third-party registrations; and (2) the Testimony Declaration of
Patrick Miller, Applicant’s founder and Head Distiller.19
Pleaded Registrations
We turn first to a preliminary question – that is, whether Opposer’s ’245 and ’745
Registrations are of record as a basis for the claims of entitlement to a statutory cause
of action, priority, and likelihood of confusion.
Under Trademark Rule 2.122(d), 37 C.F.R. § 2.122(d), a pleaded registration may
be made of record either (1) by attaching an original or photocopy of the registration
prepared and issued by the Office, or electronic database records of the Office,
showing both the current status of and current title to the registration; or (2) at trial
either by appropriate identification and introduction during the taking of testimony;
or by submitting under a notice of reliance an original or photocopy of the registration
prepared and issued by the Office; or electronic database records of the Office,
showing both the current status of and current title to the registration. Id.; see also
17 35 TTABVUE.
18 31 TTABVUE.
19 32 TTABVUE.

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TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP)
§ 704.03(b)(1)(A) (June 2025), and authorities cited therein. The Board does not take
judicial notice of a party’s registration. UMG Recordings Inc. v. O’Rourke,
No. 91178937, 2009 TTAB LEXIS 533, at *12.
A copy of the certificate of registration (commonly called a “plain copy”) of the ’734
Registration was attached to the Notice of Opposition, along with records of an
assignment from Allied Lomar, Inc. to Sur Mesure, LLC and acceptance of a 2015
filing under Trademark Act Section 8, 15 U.S.C. § 1058.20 As explained above,
Opposer made of record both a plain copy and an incomplete electronic (TSDR) record
of Opposer’s ’734 Registration with some sections expanded under its Notice of
Reliance.21 Both list Opposer Allied Lomar, Inc. as the record owner.22
A plain copy “generally [is] not sufficient to make a registration of
record.” Shenzhen IVPS Tech. Co. v. Fancy Pants Prods., LLC, No. 91263919,
2022 TTAB LEXIS 383, at *12. Also, the registration was not issued reasonably
contemporaneously with the Notice of Opposition or Notice of Reliance such that the
plain copy of the issued registration alone would be sufficient. Id. (citing United
Global Media Grp. v. Tseng, No. 91200786, 2014 TTAB LEXIS 348, at *13 (finding
registration that issued one and a half years prior to filing of notice of opposition was
20 1 TTABVUE 6-11.
21 See supra note 15.
22 Office records indicate that the ’734 Registration and composite mark were assigned from
Opposer (Allied Lomar Inc.) to Sur Mesure, LLC in 2018, and then from Sur Mesure, LLC
back to Opposer in 2024. Opposer was substituted for Sur Mesure, LLC as party plaintiff and
counterclaim defendant in August 2025. See 39 and 40 TTABVUE.

Opposition No. 91284670
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not of record, because it was not “reasonably contemporaneous” with the filing of the
proceeding)).
The incomplete TSDR record lists the owner as Allied Lomar, Inc. and shows that
the registration is active and was renewed.23 Even if these records are insufficient to
make the registration of record, however, the ’734 Registration, as the subject of a
pending counterclaim, is automatically of record. Trademark Rule 2.122(b). As such,
it may be relied upon by any party for any purpose. Trademark Rule 2.122(a),
37 C.F.R. § 2.122(a); cf. Nazon v. Ghiorse, No. 91216729, 2016 TTAB LEXIS 262,
at *6 n.6 (opposer’s plain copy registration not sufficient, but applicant’s submission
of TSDR printout of opposer’s registration made it of record).
Unlike the ’743 Registration, the ’245 Registration was not attached to Opposer’s
Notice of Opposition and is not automatically of record because there is no pending
counterclaim for cancellation against this registration.24 Thus, we turn to the
evidence of record. As noted above, Opposer filed under its Notice of Reliance both a
plain copy and an incomplete printout of the registration obtained from the Office’s
TSDR database with no sections expanded.25 Again, the plain copy of the registration
does not provide current status and ownership and was not issued reasonably
contemporaneous with the filing of the Notice of Reliance. Shenzhen, 2022 TTAB
LEXIS 383, at *12.
23 28 TTABVUE 14-16 (Opp. Notice of Reliance Exh. 2).
24 See 25 TTABUVE; 27 TTABVUE 3.
25 See supra note 15.

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The incomplete TSDR record shows status of the registration (registered); it does
not show title in Opposer or a predecessor or other pertinent information such as the
identification of goods.26 Thus, the incomplete TSDR record is insufficient to make
the ’245 Registration of record. Nor does Opposer’s testimony evidence help matters,
in that the witness testified only that “My company [Sur Mesure, LLC] is the owner
of trademark registration 6,913,245 of the mark OLDE ST. NICK and design for
‘alcohol beverages, excluding beers’ in Class 33.”27 There is no testimony of record as
to the status of the registration or current title in Opposer.
Nonetheless, Opposer’s pleaded ’245 Registration may be considered to be of
record if Applicant (1) admitted its current status and title in its answer, United
Global Media, 2014 TTAB LEXIS 348, at *10-12, or (2) did “not object to the
submission of the evidence and/or argue[d] the evidence in its brief on the case.”
Shenzhen IVPS Tech., 2022 TTAB LEXIS 383, at *17 (citation omitted); see also El
Encanto, Inc. v. La Tortilla Factory, Inc., 201 F. App’x 773, 776 (Fed. Cir. 2006) (not
precedent) (“[I]t is true that registrations not offered into evidence in strict
compliance with 37 C.F.R. § 2.122(d) may nonetheless be deemed by the Board to be
of record if the adverse party treats the registrations as being of record….”).
We turn first to the pleadings. Opposer alleged in paragraph 4 of the Notice of
Opposition that “Opposer [Sur Mesure, LLC] is the owner of the trademark OLDE
ST. NICK for alcohol beverages and the owner of the Federal trademark registration
26 28 TTABVUE 24 (Opp. Notice of Reliance Exh. 3).
27 30 TTABVUE 3 (Palatella Decl. ¶ 5).

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of OLDE ST. NICK for alcohol beverages except beers in International Class 33 (Reg.
No. 6,913,245) issued on November 22, 2022.”28 Applicant admitted “that according
to the Trademark Electronic Search System, Opposer [Sur Mesure, LLC] is the record
owner of the trademark listed in paragraph 4.”29 Opposer did not plead that the
’245 Registration is valid and subsiding, nor did Applicant admit it; rather, Applicant
admitted only that Opposer’s predecessor was listed as the then-current owner.
Cf. United Global Media, 2014 TTAB LEXIS 348, at *10 (the fact that applicant
“admitted in her answer that opposer owned the registrations does not suffice to show
their current status.”). As in the United Global Media case, we “do not view
[A]pplicant as having admitted the registration[ ] in a manner that would excuse
[O]pposer from having to prove [its] validity and status.” Id.
We next consider whether an objection to the imperfect evidence of the pleaded
’245 Registration was waived or whether Opposer’s Section 2(d) claim based on the
registration was tried by implied consent. Opposer’s Notice of Reliance stated that
the plain copy and incomplete TSDR record for the ’245 Registration were offered to
establish “(a) Opposer’s registration, (b) Opposer’s priority, (c) similarity of the
marks, (d) similarity of the goods, and (e) similarity of the channels of trade.”30
Applicant never objected to Opposer’s submission of the imperfect evidence for these
purposes.
28 1 TTABVUE 4 (Notice of Opp. ¶ 4).
29 4 TTABVUE 4 (Answer ¶ 4).
30 28 TTABVUE 3 (Opp. Notice of Reliance ¶ 3).

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The submission of evidence in a manner not in compliance with the Trademark
Rules of Practice is generally a procedural violation, and, “[a]s a general rule,
[procedural] objections that are curable must be seasonably raised, or they will be
deemed waived.” Flame & Wax, Inc. v. Laguna Candles, LLC, No. 92072343,
2022 TTAB LEXIS 272, at *13 (finding defendant waived any objection to
procedurally improper evidence by failing to promptly assert an objection). If
Applicant had timely objected to Opposer’s submission of the non-compliant evidence
via a motion to strike that portion of the Notice, Opposer could have cured that defect
by submitting status-and-title copies. Applicant’s failure to move to strike that
portion of Opposer’s Notice of Reliance indicates that it accepted the evidence of
record as sufficient proof of the current status and title of Opposer’s pleaded
registrations.
Applicant also did not object in its brief to the defective evidence of Opposer’s
’245 Registration or Opposer’s reliance on it. To the contrary, Applicant considered
the ’245 Registration to be of record31 and seemingly acknowledged its subsistence:
• “Opposer filed the instant proceeding alleging priority and likelihood
of confusion based on two registered trademarks: … (2) Registration
No. 6,913,245 for OLDE ST. NICK, issued on November 29, 2022, for
‘alcoholic beverages except beer’ in International Class 33.”32
• “Applicant denies that there is any likelihood of confusion between
the relevant marks because, among other things: (A) the OLDE
SAINT’S KEEP mark is not similar to either of Opposer’s marks in
31 43 TTABVUE 7 (“Evidence Automatically of Record Pursuant to 37 C.F.R. 2.122 (b)(1)…
The file of Opposer’s U.S. Trademark Registration No. 6913245 for the mark OLDE ST.
NICK.”). The belief that the registration was automatically of record was incorrect, but
nonetheless Applicant did not challenge it.
32 Id. at 10.

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meaningful aspects of sight, sound, meaning, and commercial
impression….”33
• “In addition, Opposer’s Word Mark [OLDE ST. NICK] should not bar
registration of Applicant’s application because there are
dissimilarities in the goods and services and conditions under which
and buyers to whom sales are made between the respective
products.”34
• “For the foregoing reasons, there is insufficient evidence that there
shall be a likelihood of consumer confusion between Applicant’s
OLDE SAINT’S KEEP mark and Opposer’s pleaded marks.”35
Despite Opposer’s failure to make status-and-title copies of its pleaded
’245 Registration of record, Applicant did not make “any objection in this regard”
when the registration was submitted during trial, or in its brief, “but rather treat[ed]
the registration as if properly of record. In view thereof, we have treated [O]pposer’s
[’245 R]egistration to be of record.” Riceland Foods Inc. v. Pac. E. Trading Corp.,
No. 91083829, 1993 TTAB LEXIS 50, at *6.
We also take judicial notice of the updated status of the ’245 Registration in the
name of Opposer Allied Lomar, Inc. as shown by the records of the Office. Nike, Inc.
v. WNBA Enters., LLC, No. 91160755, 2007 TTAB LEXIS 39, at *9 n.6 (when a
registration owned by a party has been properly made of record, and the status of the
registration changes between the time it was made of record and the time the case is
decided, the Board will take judicial notice of the change).36
33 Id. at 7.
34 Id. at 22.
35 Id. at 29.
36 A copy of the recorded assignment was filed after close of testimony but prior to briefing.
See 39 TTABUE 12-13.

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II. Motions to Strike
We next address motions to strike raised in the parties’ respective briefs.
Opposer’s Motion to Strike
Opposer moves to strike Applicant’s Exhibit No. 4 to its Notice of Reliance.37 This
exhibit is an excerpt from a transcript of a 2016 discovery deposition of Opposer’s
witness, Marci Palatella, in a federal district court case between Opposer and a third
party (Lone Star Distillery, LLC) relating to alleged infringement of another mark.38
Applicant submitted the transcript for the purposes of “[i]mpeachment of Palatella’s
testimony; failure to use mark in commerce; abandonment.”39
Opposer argues Exhibit No. 4 should be excluded for three reasons: (1) the
transcript is not relevant because it discusses a different mark than Opposer’s
pleaded marks in the Board proceeding; (2) prior trial testimony may be admitted
only “on motion,” Trademark Rule 2.122(f), 37 C.F.R. § 2.122(f), and Applicant did
not move to admit the transcript; and (3) as required by that rule, Applicant was
neither a party to nor in privity with a party to that suit.40 In response to the motion
to strike, Applicant belatedly “moves to admit Exhibit 4 for the purposes of rebuttal,
impeachment, as well as to complete the record” and argues Opposer “opened the door
to admit this evidence by submitting testimony directly on the issue.”41
37 See 42 TTABVUE 13-15.
38 31 TTABVUE 19-29 (Exh. 4). The transcript appears to be a partial minuscript, which is
not signed by the witness or verified by the court reporter.
39 Id. at 3 (Exh. 4).
40 42 TTABVUE 14-15.
41 43 TTABVUE 32.

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We start with Trademark Rule 2.122(f), which provides:
By order of the Trademark Trial and Appeal Board, on
motion, testimony taken in another proceeding, or
testimony taken in a suit or action in a court, between the
same parties or those in privity may be used in a
proceeding, so far as relevant and material, subject,
however, to the right of any adverse party to recall or
demand the recall for examination or cross-examination of
any witness whose prior testimony has been offered and to
rebut the testimony.
Applicant did not timely move to admit the transcript in compliance with the rule.
But even more importantly, we cannot consider the discovery deposition transcript
because it does not qualify for admission at trial under Rule 2.122(f). The Board has
construed the term “testimony” as used in this rule as meaning only trial testimony
or a discovery deposition which was used by agreement of the parties as trial
testimony in the other proceeding. Threshold.TV, Inc. v. Metronome Enters.,
No. 76256094, 2010 TTAB LEXIS 314, at *6. Here, there is no showing, as required
by the rule, that the discovery deposition was used as trial testimony in the district
court proceeding, or that the parties are the same or in privity as in that proceeding.
Accordingly, Opposer’s motion to strike Exhibit 4 to Applicant’s Notice of Reliance
for failure to comply with Trademark Rule 2.122(f) is granted; the remainder of the
motion is denied as moot. Applicant’s belated motion to admit the transcript is denied
as moot.
Applicant’s Motions to Strike
First, Applicant argues that, “[i]n the alternative, should the Board decline to
admit Exhibit 4, Applicant objects to and moves to strike paragraphs 17-23 of Ms.

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Palatella’s testimony, 36 TTABVUE 9-11, on the basis of relevancy, hearsay, and
testimony regarding matters not in evidence.”42 Opposer counters that the testimony
should not be excluded because the Board “still must decide Applicant’s claim of
abandonment based on the non-matching Section 8 specimens. Her testimony,
especially Paragraphs 20-23, is directly relevant on this claim.”43
To the extent that Ms. Palatella’s declaration testimony counters or explains the
deposition testimony, which we have excluded, there is nothing to rebut. But to the
extent the testimony is relevant to the ultimate question of Opposer’s abandonment
of the registered mark, we have considered it and give the evidence whatever
probative value it deserves. Norris, 2019 TTAB LEXIS 345, at *4. Thus, Applicant’s
motion to strike paragraphs 17-23 of Ms. Palatella’s testimony declaration is denied.
Second, Applicant moves to strike Exhibit 6 to the Palatella Declaration, which is
a “letter” from the David Mandell, co-founder and former CEO of Bardstown Bourbon
Company and the co-founder and CEO of Whiskey House.44 Ms. Palatella testified
that “Mr. Mandell provided this letter to me at my request and I have maintained it
as a business record of my company.”45 Applicant argues that the document is (1) “an
attempt to introduce an improper declaration containing out-of-court statements not
made during testimony period by witness who was never disclosed,” (2) hearsay, as it
is not a record kept in Applicant’s ordinary course of business; (3) Applicant had “[n]o
42 Id. at 33.
43 44 TTABVUE 27 n.12.
44 30 TTABVUE 28-29 (Palatella Decl. Exh. 6).
45 Id. at 7 (Palatella Decl. ¶ 13).

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opportunity to cross-examine the witness”; (4) Opposer laid “[n]o foundation for
expert opinion”; and (5) there is “[n]o foundation to admit this document, facts not
within the declarant’s personal knowledge. (Fed. R. Evid. 801, 802, 602; 37 C.F.R.
2.122).”46
The “letter” is dated April 25, 2024 and is neither signed by the sender nor made
under oath. Thus, it is not testimony and was not taken during Opposer’s 30-day
testimony period, which closed on February 2, 2025. Trademark Rule 2.121(a), 37
C.F.R. § 2.121(a) (“No testimony shall be taken or evidence presented except during
the times assigned.…”); Trademark Rule 2.123(a)(1), 37 C.F.R. § 2.123(a)(1) (“The
testimony of witnesses in inter partes cases may be submitted in the form of an
affidavit or a declaration pursuant to [Trademark Rule 2.20, 37 C.F.R.] § 2.20 and in
conformance with the Federal Rules of Evidence, filed during the proffering party’s
testimony period….”). As such, we do not consider it for this purpose.
As for Applicant’s hearsay and foundation objections, the Board is capable of
assessing the proper evidentiary weight to be accorded the evidence, taking into
account the concerns raised by the objections. Luxco, Inc. v. Consejo Regulador del
Tequila, A.C., No. 91190827, 2017 TTAB LEXIS 6, at *4; see also U.S. Playing Card
Co. v. Harbro, LLC, No. 91162078, 2006 TTAB LEXIS 484, at *9 (“[B]ecause an
opposition is akin to a bench trial, the Board is capable of assessing the proper
evidentiary weight to be accorded the testimony and evidence, taking into account
the imperfections surrounding the admissibility of such testimony and evidence.”).
46 43 TTABVUE 31.

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We have considered Opposer’s Exhibit 6 for whatever probative value it is worth,
which precludes the need to strike it. Accordingly, Applicant’s motion to strike
Exhibit 6 to the Palatella Declaration is denied.
III. Entitlement to a Statutory Cause of Action
Entitlement to a statutory cause of action is an element of the plaintiff’s case in
every inter partes proceeding. See Corcamore, LLC v. SFM, LLC, 978 F.3d 1298,
1303 (Fed. Cir. 2020); Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270,
1274 (Fed. Cir. 2014); Illyrian Imp., Inc. v. ADOL Sh.p.k., No. 91234244, 2022 TTAB
LEXIS 91, at *19. A party in the position of plaintiff may challenge registration of a
mark when the cause of action is within the zone of interests protected by the statute,
and the plaintiff has a reasonable belief in damage that is proximately caused by
registration of the mark. Meenaxi Enter., Inc. v. Coca-Cola Co., 38 F.4th 1067, 1070
(Fed. Cir. 2022); Corcamore, 978 F.3d at 1303.
Neither party disputes the other’s entitlement to a statutory cause of action. In
any event, Opposer’s pleaded registrations are of record. Opposer has established its
statutory entitlement to bring a Section 2(d) claim that is not wholly without merit.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 945 (Fed. Cir. 2000); Primrose Ret.
Cmtys., LLC v. Edward Rose Senior Living, LLC, No. 91217095, 2016 TTAB LEXIS
604, at *6 (entitlement established based on pleaded registration made of record).
Applicant’s entitlement to assert its counterclaim for cancellation is inherent as
the defendant in the opposition. Finanz St. Honore, B.V. v. Johnson & Johnson, No.
91161028, 2007 TTAB LEXIS 63, at *2-3; Carefirst of Md., Inc. v. FirstHealth of the

Opposition No. 91284670
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Carolinas Inc., No. 91116355, 2005 TTAB LEXIS 406, at *29 (“Applicant, by virtue of
its position as defendant in the opposition, has standing to seek cancellation of the
pleaded registrations.”) (citation omitted; subsequent history omitted).
IV. Applicant’s Abandonment Counterclaim
We first address Applicant’s counterclaim for cancellation of the ’734 Registration
for the composite mark for “bourbon whiskey” based on
abandonment, because if successful, it might impact our analysis of Opposer’s claim.
See Robinson v. Hot Grabba Leaf, LLC, No. 92060394, 2019 TTAB LEXIS 96, at *16-
17 (electing to consider counterclaim to cancel pleaded registrations first because
cancellation of those registrations was potentially dispositive of the petitioner’s
likelihood of confusion claim) (subsequent history omitted).
Did Opposer Stop Selling Bourbon Whiskey Under the
Composite Mark?
Applicant first contends that Opposer has not used the registered composite mark
in connection with bourbon whiskey “since at least June 2006 (but likely before) and
had not used the mark for at least ten consecutive years.”47 Applicant argues that
47 Id. at 8. We have already noted the assignments of the ’734 Registration and composite
mark to and from Opposer and Sur Mesure, LLC. See Section I(B). Other apparent
predecessors, dba’s, or perhaps licensees of Opposer appear in the record, e.g., Kentucky
Bourbon Distillers, Ltd. (dba Old St. Nick Distillery), Frank-Lin Distillers Products, Ltd.,
and Olde St. Nick Distillers, which filed COLAs submitted by Opposer’s witness. Applicant
has not argued that any rights acquired through use by any of these various entities did not

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Opposer stopped selling bourbon under the registered mark during a period of
scarcity of the goods.
“[T]he Lanham Act was not intended to provide a warehouse for unused marks.”
Adamson Sys. Eng’g, Inc. v. Peavey Elecs. Corp., No. 92076586, 2023 TTAB LEXIS
454, at *21 (citing Imperial Tobacco, Ltd. v. Philip Morris, Inc., 899 F.2d 1575, 1581
(Fed. Cir. 1990)). The Act provides for cancellation of a registration at any time if the
registered mark has been abandoned. Id. (citing Rivard v. Linville, 133 F.3d 1446,
1448 (Fed. Cir. 1998)). This provision permits the abandoned mark to return to the
public domain so it may be used by others in the marketplace. Id. (citing Exec. Coach
Builders, Inc. v. SPV Coach Co., No. 91212312, 2017 TTAB LEXIS 201, at *20).
Under Section 45 of the Trademark Act, 15 U.S.C. § 1127, a mark is deemed to be
abandoned based on nonuse:
when its use has been discontinued with intent not to
resume such use. Intent not to resume may be inferred
from circumstances. Nonuse for 3 consecutive years shall
be prima facie evidence of abandonment. “Use” of a mark
means the bona fide use of such mark made in the ordinary
course of trade, and not made merely to reserve a right in
a mark.
A mark is in “use in commerce” on goods when “it is placed in any manner on the
goods or their containers or the displays associated therewith or on the tags or labels
affixed thereto, or if the nature of the goods makes such placement impracticable,
accrue to Opposer. For convenience, we hereafter refer to Opposer and all of these entities
collectively as “Opposer.”

Opposition No. 91284670
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then on documents associated with the goods or their sale, and ... the goods are sold
or transported in commerce.” Id.
There are two elements to a nonuse abandonment claim: (1) use of the mark has
been discontinued; and (2) with intent not to resume use. Adamson Sys. Eng’g, 2023
TTAB LEXIS 454, at *21 (citing Tiger Lily Ventures Ltd. v. Barclays Cap. Inc., 35
F.4th 1352, 1360 (Fed. Cir. 2022)). Proof of these elements is a matter of fact, not
speculation. Id. at *22 (citing Cerveceria Centroamericana, S.A. v. Cerveceria India,
Inc., 892 F.2d 1021, 1024 (Fed. Cir. 1989) and Yazhong Investing Ltd. v. Multi-Media
Tech. Ventures, Ltd., No. 92056548, 2018 TTAB LEXIS 168, at *20). According to the
statutory language and legislative history, “nonuse” of a mark for abandonment
purposes means “no bona fide use of the mark made in the ordinary course of trade,”
and this is to be interpreted with flexibility to encompass a variety of commercial
uses. Double Coin Holdings Ltd. v. Tru Dev., No. 92063808, 2019 TTAB LEXIS 347,
at *34 (citing Lewis Silkin LLP v. Firebrand LLC, No. 92067378, 2018 TTAB LEXIS
436, at *9).
If a plaintiff (here, Applicant, as counterclaim plaintiff) can show three
consecutive years of nonuse of the mark, it establishes a prima facie showing of
abandonment, creating a rebuttable presumption that use of the mark was
discontinued with intent not to resume use. Adamson Sys. Eng’g, 2023 TTAB LEXIS
454, at *22 (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1087
(Fed. Cir. 2000) and ARSA Distrib., Inc. v. Salud Nat. Mexicana S.A. De C.V., No.
91240240, 2022 TTAB LEXIS 347, at *31). The burden then shifts to the defendant

Opposition No. 91284670
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(here, Opposer, as counterclaim defendant) to produce evidence that it either used
the mark or that it intended to resume use.
We keep in mind that a mark registered on the Principal Register is presumed to
be valid. Trademark Act Section 7(b), 15 U.S.C. § 1057(b). Thus, “the burden of
persuasion in a cancellation proceeding rests on the party seeking to cancel the
registration …. A party seeking to cancel a registration must overcome the
registration’s presumption of validity by a preponderance of the evidence.” Adamson
Sys. Eng’g, 2023 TTAB LEXIS 454, at *22 (citing Cold War Museum, Inc. v. Cold War
Air Museum, Inc., 586 F.3d 1352, 1356 (Fed. Cir. 2009)). If Applicant does not prove
three consecutive years of nonuse, it must prove both elements of the claim without
the aid of a presumption – that is, that Opposer discontinued use of the marks with
intent not to resume such use. Id. at *21 (citing Double Coin Holdings, 2019 TTAB
LEXIS 347, at *48-49).
1. Evidence of Record
Before turning to the question of nonuse, we set forth some background about the
nature of Opposer’s business and the types of activities that have constituted the
ordinary course of trade for the goods sold under the registered mark. This
understanding will guide our analysis of whether certain activities are in keeping
with it.
The record includes the testimony declaration of Opposer’s founder and CEO
Marci Palatella, who testified that Opposer is a seller of bourbon whiskey. Originally,
Opposer purchased barrels of bourbon from producers who had extra supply and had

Opposition No. 91284670
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it bottled by them or a contract bottler.48 She testified that Opposer has “never made
a lot of bourbon bearing the VERY OLDE ST. NICK RARE or the OLDE ST. NICK
mark,” reflecting a “marketing strategy for exclusive whiskey.”49 Opposer sought to
follow the strategy of wineries which made both lower-priced wine for immediate
consumption and more expensive vintages for storage and later consumption later
with bourbon; in other words, “sell a high-end, very aged bourbon and, also, a super-
premium high-end bourbon that was not aged as long.”50 This would “build consumer
‘buzz’ in the very high-end, very aged bourbon, and that would (hopefully) pull along
sales of the lower priced, lesser aged bourbon.”51 VERY OLDE ST. NICK RARE and
OLDE ST. NICK are two of Opposer’s flagship brands.52
Ms. Palatella further testified that, due to success of the strategy and brands,
Opposer (which purchased aged bourbon in barrels from third parties and bottled it
for resale) had trouble keeping up with demand.53 She testified that, “[a]s a result of
this sudden market shift, I was unable to purchase enough aged bourbon to bottle all
of my brands.”54 Ms. Palatella explained that the supply issue persisted until 2017,
when Opposer opened its own distillery in Kentucky to produce VERY OLDE ST.
48 30 TTABVUE 8 (Palatella Decl. ¶ 16).
49 Id. at 5 (Palatella Decl. ¶ 10).
50 Id.
51 Id.
52 Id. at 6 (Palatella Decl. ¶ 12).
53 Id. at 6-8 (Palatella Decl. ¶¶ 12, 14, 16).
54 36 TTABVUE 9 (Palatella Reb. Decl. ¶ 19).

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NICK RARE and OLDE ST. NICK brand bourbon.55 An advertisement for the
opening of the distillery in “Fall 2017” on Opposer’s website is in the record, as
displayed below:56
The description following this image explains that “Very Olde St Nick Rare Bourbon
and Whiskey” have been “almost impossible to find … the past few years,”57 backing
up Ms. Palatella’s testimony.
Against this background, we turn back to Applicant’s allegations of abandonment.
Ms. Palatella testified that “[a]t no time did we cease using the mark with the
intention not to resume its use.58 She testified that the invoices of record support this
statement, even though they sometimes do not differentiate between marks (VERY
55 30 TTABVUE 8 (Palatella Decl. ¶ 16).
56 Id. at 11, 73 (Palatella Decl. ¶ 25, Exh. 10).
57 Id. at 75 (Palatella Decl. Exh. 10).
58 Id. at 3 (Palatella Decl. ¶ 4).

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OLDE ST. NICK RARE in the composite mark and OLDE ST. NICK) or types of
bourbon:
VERY OLDE ST. NICK RARE and OLDE ST. NICK are used on and
in connection with high quality, aged bourbon. We add the term
“Rare” to the labels of exceptionally old bourbon, typically aged for
over 8 years. For invoicing and accounting purposes, we treat VERY
OLDE ST. NICK RARE and OLDE ST. NICK as the same brand. All
sales are invoiced as VERY OLDE ST. NICK or OLDE ST. NICK.
Historically most products that have been aged 8 years or less have
the OLDE ST. NICK label; products aged longer than 8 years have
the VERY OLDE ST. NICK RARE label as well as typically another
label with just OLDE ST. NICK fully spelled out. Based on my
experience, consumers and the trade refer to both products as OLDE
ST. NICK. Attached as Exhibit 3 to this Declaration are true and
correct copies of invoices showing use of the marks in connection with
the goods since 1995. Most invoices are in 9-liter cases (12 bottles to
the case), although we have sold six-bottle cases and individual
bottles. These are business records of my business that are
maintained in the normal course of business….59
Ms. Palatella’s rebuttal declaration provides further explanation:
The representative invoices attached as Exhibit 3 to my Confidential
Declaration (29 TTABVUE) which state that the product sold was
VERY OLDE ST. NICK were labeled with the registered design
mark. In later years when we began to refer to both products on our
invoices as OLDE ST. NICK for accounting purposes, the products
on the invoices that were aged eight (8) or more years bore the VERY
OLDE ST. NICK label with the registered design mark.60
Turning to the invoices, Exhibit 3 includes copies of invoices with various dates
between April 28, 1995 and March 19, 2024, for various items such as “Olde St. Nick
59 Id. at 4 (Palatella Decl. ¶ 7).
60 36 TTABVUE 10 (Palatella Reb. Decl. ¶ 22). Ms. Palatella confirms that a label discussed
by Applicant that was submitted for Alcohol and Tobacco Tax and Trade Bureau (“TTB”)
approval in 2000, 30 TTABVUE 32 (Palatella Decl. Exh. 9) is for a different product, “OLDE
ST. NICK … a product I designed in the late 1980’s and has been used continuously since
that time.” 36 TTABVUE 10-11 (Palatella Reb. Decl. ¶ 23). See also 36 TTABVIE 70 (clearer
color image of this label). Applicant has not rebutted this testimony.

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8 Year,” “Very Olde St. Nick Winter Rye 9 Year W/ White Wax Top,” “Very Olde St.
Nick Summer Rye,” “Very Olde St. Nick 8 yr,” “Very Olde St. Nick Ancient Cask 12
Year,” and “Very Olde St. Nick Kentucky Bourbon 8yr,” “Old St. Nick 8yr Bourbon,”
“Olde St. Nick 8yr Rye Whiskey,” “Olde St. Nick Ancient Faith & Conviction Rye,”
“Olde St. Nick Winter Maple Whiskey Bourbon.”61 These products include bourbon
as well as various rye whiskeys. But we take judicial notice that bourbon whiskey
(the only good identified in the registration) and rye whiskey are not the same
product.62
Ms. Palatella’s testimony also relies on a summary of sales since 1995 compiled
from Opposer’s business records (Exhibit 4 to the Declaration).63 The exhibit is
entitled “SALES OF VERY OLDE ST. NICK AND OLDE ST. NICK” and contains
two charts: a chart listing the years from 1995 to 2017 and corresponding numbers of
bottles; and a chart of years from 2018 to 2024 (YTD) corresponding to sales in
61 29 TTABVUE 57-68 (Palatella Decl. Exh. 3) (confidential). We question why, with the
purchaser, prices, and totals all redacted, these materials were filed under seal. We see
nothing on this exhibit that demands confidential treatment, and thus we discuss the
materials as needed. See Trademark Rule 2.116(g), 37 C.F.R. § 2.116(g) (“The Board may
treat as not confidential that material which cannot reasonably be considered confidential,
notwithstanding a designation as such by a party.”); Couch/Braunsdorf Affinity, Inc. v. 12
Interactive, LLC, No. 92051006, 2014 TTAB LEXIS 95, at *6-7 (finding testimony and
evidence improperly designated as confidential, Board declined to observe designations).
62 See “What’s the Difference Between Whiskey and Whisky? What About Scotch, Bourbon,
and Rye?,” ENCYCLOPEDIA BRITTANICA (britannica.com/story/whats-the-difference-between-
whiskey-and-whisky-what-about-scotch-bourbon-and-rye, accessed Apr. 13, 2026) (bourbon
is a whiskey made from at least 51% mash from corn in its production, and rye is a whiskey
that uses a rye mash or a rye and malt mash). The Board may take judicial notice of
dictionary definitions, including online dictionaries that exist in printed format. In re Cordua
Rests. LP, No. 85214191, 2014 TTAB LEXIS 94, at *6 n.4, aff’d, 823 F.3d 594 (Fed. Cir. 2016);
see also B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d 727, 728 (Fed. Cir. 1988)
(“dictionaries and encyclopedias may be consulted”).
63 30 TTABVUE 4 (Palatella Decl. ¶ 8).

Opposition No. 91284670
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dollars.64 None of these summaries are broken down by type of alcohol (bourbon v.
rye), age (rare v. non-rare), mark, or location.
Ms. Palatella confirms that “[t]hese sales figures contain products that bore both
the VERY OLDE ST. NICK RARE and OLDE ST. NICK labels.” She further testified:
“While I have not calculated how many bottles of VERY OLDE ST. NICK RARE were
sold in any particular year, I can say with absolute certainty that there were sales
annually although the amounts in some years were small.”65 Thus, she testified that,
even with dramatic supply shortages, Opposer never stopped selling products under
either mark, which are currently available for purchase, and “[n]ow that I own my
own distillery, the supply problem has been solved.”66
Further she testified that “the product sold was VERY OLDE ST. NICK [ ] labeled
with the registered design mark. In later years when we began to refer to both
products on our invoices as OLDE ST. NICK for accounting purposes, the products
on the invoices that were aged eight (8) or more years bore the VERY OLDE ST. NICK
label with the registered design mark.”67
64 29 TTABVUE 69-70 (Palatella Decl. Exh. 4) (confidential). A footnote in this exhibit to the
Palatella declaration explains that “Opposer has no data prior to 1995. From 1995 – 2017, its
accounting system captured the number of 750 ml bottles that were sold. From 2018 forward,
the system captured sales in dollars.” Id. The same chart (Olde St. Nick Sales by Bottle –
1995-2017) in another typeface is included, twice, in Exhibit 3, but these are not
authenticated by the witness. See 29 TTABVUE 20, 66 (Exh. 3) (confidential). Other charts
in confidential Exhibit 3 entitled “Total Olde St. Nick Sales” for years 2018-2024 (partial)
also are not authenticated. See 29 TTABVUE 55-56, 58, 60, 62, 64, 67 (Exh. 3) (confidential).
65 30 TTABVUE 4-5 (Palatella Decl. ¶ 9).
66 36 TTABVUE 9-10 (Palatella Reb. Decl. ¶¶ 20-21).
67 Id. at 10 (Palatella Reb. Decl. ¶ 22).

Opposition No. 91284670
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2. Analysis
In reviewing the evidence of use (and alleged non-use) by Opposer, we must “look
at the evidence as a whole, as if each piece of evidence were part of a puzzle which,
when fitted together.” W. Fla. Seafood Inc. v. Jet Rests. Inc., 31 F.3d 1122, 1125-26
(Fed. Cir. 1994). The testimony and exhibits are not as clear as they could be in that
the data and invoices do not identify or segregate the sales of “Rare” bourbon, sold
under the registered mark, with other types of alcohol or bourbon sold under an
OLDE ST. NICK formative mark. Not all of the summaries are authenticated. The
invoices have a lot of pertinent information redacted, including purchasers and their
locations. But Applicant’s “evidence” of non-use mainly rests on evidence we excluded
from consideration; and Applicant did not put forth sufficient additional evidence, as
it might have had it cross-examined Ms. Palatella, to rebut her evidence (albeit
imperfect) of continued use.
We conclude that Applicant has not proven by a preponderance of the evidence
that Opposer ceased sales of bourbon under the composite mark VERY OLDE ST.
NICK RARE for three consecutive years due to insufficient supply; and, having failed
to prove the presumption, did not prove that Opposer did not have the intent to
resume use. The fact that there may have been periods of time where bourbon was
not sold under the composite mark, perhaps due to scarcity of product, does not
indicate Opposer’s intent to cease use of the mark; in fact, Opposer opened its own
distillery in 2017 to solve supply issues. Adamson Sys. Eng’g, 2023 TTAB LEXIS 454,
at *50 (“There is also no rule of law that the owner of a trademark must reach a
particular level of success, measured either by the size of the market or by its own

Opposition No. 91284670
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level of sales, to avoid abandoning a mark.”) (quoting Person’s Co. v. Christman, 900
F.2d 1565 (Fed. Cir. 1990)); Double Coin Holdings, 2019 TTAB LEXIS 347, at *34
(“According to the statutory language and legislative history, ‘nonuse’ of a mark for
abandonment purposes means ‘no bona fide use of the mark made in the ordinary
course of trade,’ and this is to be interpreted with flexibility to encompass a variety
of commercial uses.”). The limited sales made by Opposer under the mark are in
keeping with its ordinary course of trade of rare products.
Did Opposer Materially Modify the Registered Mark?
Applicant presents a second theory of abandonment based on the changing
appearance of Opposer’s bottle labels over time. Abandonment occurs when a
trademark owner uses a modified version of its registered trademark, and the
modified version does not “create[ ] the same, continuous commercial impression” as
the registered mark. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGaA v.
New Millennium Sports, S.L.U., 797 F.3d 1363, 1369 (Fed. Cir. 2015).
In other words, the question is whether “the original mark been so substantially
altered such that third parties would not expect that presently used mark to be used
under and protected by the registration.” Id.; accord Double Coin Holdings, 2019
TTAB LEXIS 347, at *52 n.61 (quoting Jack Wolfskin). Thus, this theory of
abandonment requires a determination of whether forms of the mark appearing on
various labels used by Opposer constitute continuing use of the registered mark. If
the varying forms of the mark are substantially the same, then the abandonment
claim on this basis fails. Ms. Palatella testified that the “labels have remained

Opposition No. 91284670
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substantially the same since at least 1996 (almost thirty years).”68 The labels fall into
two groups, each of which we address below.
1. Early Labels
Applicant first argues that the early labels for Opposer’s product do not show use
of the mark.69 Ms. Palatella provided photographs of these early labels and bottles
for Opposer’s bourbon whiskey with her declaration, including “specimens of use
submitted to the Trademark Office”:70
68 30 TTABVUE 4-5 (Palatella Decl. ¶ 9).
69 See 43 TTABVUE 26-29. Opposer suggests (44 TTAVUE 19) that Applicant’s counterclaim,
to the extent it is based on Opposer’s original label, actually asserts the registration is “void
ab initio” for never having used the mark in commerce; such a claim, however, would be time-
barred. See, e.g., Maids to Order of Ohio, Inc. v. Maid-to-Order, Inc., No. 92040571, 2006
TTAB LEXIS 106, at *20 n.6 (registration more than five years old may not be challenged on
the basis of never having used the mark in commerce). But Section 14(3) of the Trademark
Act, 15 U.S.C. § 1064(3), lists abandonment as one of the grounds for cancellation permitted
after five years of registration. Abandonment claims may be based on events occurring after
the date of registration, even if they are based on the same facts as a non-use void ab initio
claim. See Carefirst of Md., Inc. v. FirstHealth of the Carolinas, Inc., No. 91116355, 2005
TTAB LEXIS 600, at *32 (construing “never used” claim as based on abandonment for
registration over five years old) (subsequent history omitted).
70 30 TTABVUE 3-5 (Palatella Decl. ¶¶ 4, 9); id. at 13-15, 23-27 (Palatella Decl. Exhs. 1, 5).

Opposition No. 91284670
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Ms. Palatella also provided samples of labels for VERY OLDE ST. NICK RARE
bourbon that were submitted for pre-approval by the TTB, called Certificates of Label
Approval (“COLAs”).71 One such COLA application filed on August 28, 1995 depicts
the following bottle label, apparently matching the label to the left above:72
These labels differ from the registered mark: they include the phrase BOURBON
WHISKEY trailing the word RARE (such that it reads RARE BOURBON
WHISKEY). As an example, we place the registered mark and one of the labels side-
by-side below, indicating the added words boxed in red:
71 30 TTABVUE 9 (Palatella Decl. ¶ 19).
72 Id. at 38 (Palatella Decl. Exh. 9).

Opposition No. 91284670
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We conclude that the labels are materially the same as the registered mark,
inasmuch as BOURBON WHISKEY is a generic term that would not serve as a source
identifier, and thus is not essential to the commercial impression of composite mark.
See In re Raychem Corp., No. 73690098, 1989 TTAB LEXIS 36, at *3 (“Ordinarily,
even if it is used with a trademark, the generic name of a product need not be included
as part of the words applicant seeks to register unless it forms a part of a unitary
mark.”). Thus, Applicant’s counterclaim based on abandonment due to alterations in
the early labels fails.
2. Modified Labels
It appears that Opposer’s bottle labels were modified sometime before 2015. Three
other COLA applications of record, dated January 13, 2015 and February 6, 2015,
depict labels with a different font style, and the term “Rare” moved down below the
image in a ribbon design:73
73 Id. at 40-41, 44-45, 48-51 (Palatella Decl. Exh. 9). A similar depiction of the mark without
the term “Barrel Proof” appears on Opposer’s website (www.oldestnick.com), printed
February 4, 2025. Id. at 72 (Palatella Decl. Exh. 10).

Opposition No. 91284670
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Other COLA applications of record dated January 25 and 31, 2017 show similar
labels for a “Year 17 Old” bourbon whiskey and “8 Year Estate Reserve” bourbon
whiskey:74
74 Id. at 52-57, 64-69 (Palatella Decl. Exh. 9).

Opposition No. 91284670
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Pictures of sample labels in the record, which are similar in design to the above
labels, are as follows:75
Ms. Palatella explains these changes made to the labels over time:
Over the years, the position of that term [RARE] has moved
around the label, and it has been modified with the term
“Bourbon Whiskey,” but it is always in close proximity to
the drawing of St. Nick and the words VERY OLDE ST.
NICK. From a marketing standpoint, the message
communicated to consumers is the same. We never
believed that moving the term “Rare” around the label was
a material change that would signal a change in consumer
messaging or perception.76
In her rebuttal testimony declaration, she clarified:
All we did was to modernize the font used for VERY OLD
ST. NICK and move around the word “Rare.” Although
updated and refreshed from time-to-time, the basic label
layout and design have not changed since we began using
the mark. From my standpoint as a marketer, and to our
customers, the modernized label creates the same general
75 Id. at 15, 17 (Palatella Decl. Exh. 1, 2).
76 Id. at 5-6 (Palatella Decl. ¶ 11).

Opposition No. 91284670
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commercial impression as the registered mark….Given
that these brands are cult brands, and my flagship brand,
it would have been foolish for me to redesign the label to
such an extent that consumers did not recognize it.
Modernizing label fonts and labels is commonly done in the
alcohol beverage business. This can be done without
applying for another Certificate of Label Approval from the
Federal government.77
Thus, Ms. Palatella appears to concede that the labels used on Opposer’s “rare”
bourbon have been modified and updated, though she claims that the “message
communicated to consumers” is the same and various changes are not material
alterations of the mark. Again, we place a representative example side-by-side with
the registered mark:
The font of VERY OLDE ST. NICK at the top has been altered from a handwritten-
style font to an elaborate script-style typeface. The term RARE has been moved down
77 36 TTABVUE 11-12 (Palatella Rebuttal Decl. ¶¶ 27-28).

Opposition No. 91284670
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into the ribbon below the figure (such that it reads RARE BOURBON WHISKEY).
The figure itself appears unaltered.
We conclude that the updated labels are not a material alteration of the registered
mark for abandonment purposes. In particular, both “create the same, continuous
commercial impression.” Jack Wolfskin, 797 F.3d at 1369. The dominant features of
the registered mark are the figure and the literal element VERY OLDE ST. NICK.
The term “rare,” which is located below VERY OLDE ST. NICK, is not as prominent.
The updating of the script and relocating of the subservient term “rare” does not
materially change the overall commercial impression of the mark. We believe that
third parties would expect that the presently-used mark is used under and protected
by the ’743 Registration. Id.
For these reasons, Applicant’s abandonment counterclaim for cancellation of the
’743 Registration based on modifications of the registered mark fails. The
counterclaim of abandonment based on nonuse is denied in its entirety.
V. Opposer’s Section 2(d) Claim
We turn next to Opposer’s Section 2(d) claim against registration of Applicant’s
standard-character mark OLDE SAINT’S KEEP for “Distilled spirits” in
International Class 33.
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, or a mark or trade name previously used in the United States
by another and not abandoned, 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

Opposition No. 91284670
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U.S.C. § 1052(d). To prevail on its Section 2(d) claim, Opposer must prove, by a
preponderance of the evidence, that (1) it has priority in the use of its pleaded marks
and (2) use of Applicant’s mark is likely to cause confusion, mistake, or deception as
to the source or sponsorship of Applicant’s goods. Cunningham v. Laser Golf Corp.,
222 F.3d 943, 945 (Fed. Cir. 2000).
Priority
As explained above, Opposer’s ’734 and ’245 Registrations are deemed of record,78
and Applicant’s counterclaim for cancellation has been denied. Therefore, priority is
not at issue as to the goods identified in those registrations. See B.V.D. Licensing
Corp. v. Rodriguez, No. 91157529, 2007 TTAB LEXIS 32, at *1 (citing King Candy
Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400 (CCPA 1974)).
Opposer also alleged common law priority in both pleaded marks (OLDE ST.
NICK and the composite mark) as to “whiskey” since “as early as 1991.”79 These
allegations are supported by unrebutted declaration testimony from Ms. Palatella as
to use of “bourbon whiskey.”80 We therefore conclude that Opposer has established
common law priority as to each mark as to “bourbon whiskey.”
Likelihood of Confusion
Our likelihood of confusion determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are relevant to the factors set
78 See supra Section I(B).
79 1 TTABVUE 3-4 (Notice of Opp. ¶¶ 3-4).
80 30 TTABVUE 3 (Palatella Decl. ¶¶ 4, 6).

Opposition No. 91284670
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forth in In re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 1361 (CCPA 1973)
(“DuPont”); see also In re Guild Mortg. Co., 912 F.3d 1376, 1379 (Fed. Cir.
2019) (Board considers each relevant DuPont factor for which there is evidence and
argument).
In any likelihood of confusion analysis, different DuPont factors may play a
dominant role and some factors may not be relevant. Naterra Int’l, Inc. v. Bensalem,
92 F.4th 1113, 1116 (Fed. Cir. 2024) (citing Tiger Lily, 35 F.4th at 1362). In addition,
varying weight may be assigned to each factor depending on the evidence presented,
and “any one of the factors may control a particular case.” Id.; see also In re Charger
Ventures LLC, 64 F.4th 1375, 1381 (Fed. Cir. 2023). Two key considerations are the
similarities between the marks and the similarities between the goods or services. In
re i.am.symbolic, llc, 866 F.3d 1315, 1322 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc.
v. Kappa Books, Inc., 308 F.3d 1156, 1164-65 (Fed. Cir. 2002)).
We focus our analysis on Opposer’s pleaded standard character mark OLDE ST.
NICK in the ’245 Registration for “alcoholic beverages, except beers” in Class 33
because this mark is closest to Applicant’s OLDE SAINT’S KEEP mark for “Distilled
spirits” in International Class 33. See Sock It to Me, Inc. v. Fan, No. 91230554, 2020
TTAB LEXIS 201, at *20-21 (confining Section 2(d) analysis to most similar pleaded
mark); In re Max Cap. Grp., No. 77186166, 2010 TTAB LEXIS 1, at *5 (same). If we
find a likelihood of confusion as to the OLDE ST. NICK mark, we need not find it as
to the composite VERY OLDE ST. NICK RARE mark in the ’745 Registration;
conversely, if we do not find a likelihood of confusion as to these marks, we would not

Opposition No. 91284670
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find it as to the other pleaded registration either. Sock It to Me, 2020 TTAB LEXIS
201, at *21. We also need not address Opposer’s common law rights in the pleaded
marks, including OLDE ST. NICK as to “whiskey,” because this is subsumed within
the broader registered goods, “alcoholic beverages, except beers.”
1. Fifth and Sixth DuPont Factors: Strength and Weakness of
Opposer’s Pleaded Marks
Because it affects the scope of protection to which it is entitled, we first address
the strength or weakness of Opposer’s registered OLDE ST. NICK mark. “Two of the
DuPont factors (the fifth and sixth) consider [the] strength” of a plaintiff’s mark.
Spireon, Inc. v. Flex Ltd., 71 F.4th 1355, 1362 (Fed. Cir. 2023). “The fifth DuPont
factor, ‘[t]he fame of the prior mark (sales, advertising, length of use),’ 476 F.2d at
1361, is a measure of the mark’s strength in the marketplace.” Id. (citing Joseph
Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 1325 (Fed. Cir.
2017)). This factor allows a plaintiff to expand the scope of protection its mark based
on evidence of marketplace strength.
By contrast, “the sixth DuPont factor, ‘[t]he number and nature of similar marks
in use on similar goods,’ 476 F.2d at 1361, [ ] is a measure of the extent to which other
marks weaken the assessed mark.” Spireon, 71 F.4th at 1362 (citing Palm Bay Imps.
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1373 (Fed
Cir. 2005)). “There are two prongs of analysis for a mark’s strength under the sixth
factor: conceptual strength and commercial strength.” Id. (citation omitted).
“Conceptual strength is a measure of a mark’s distinctiveness” along the spectrum of
distinctiveness, id., while commercial strength “is the marketplace recognition value

Opposition No. 91284670
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of the mark.” Id. at 1363 (cleaned up). This DuPont factor allows a defendant to
contract the scope of protection of a plaintiff’s mark by adducing evidence of
conceptual and commercial weakness. Made in Nature, LLC v. Pharmavite LLC, No.
91223352, 2022 TTAB LEXIS 228, at *23-24; see also Spireon, 71 F.4th at 1362-63.
a. Fifth DuPont Factor: Fame
The fifth DuPont factor (fame) examines the extent to which the public perceives
the mark as indicating a single source of origin. DuPont, 476 F.2d at 1361. A famous
or commercially strong mark is one that has extensive public recognition and renown.
Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 1371 (Fed. Cir. 2002); Top
Tobacco, L.P. v. N. Atl. Operating Co., No. 91157248, 2011 TTAB LEXIS 367, at
*25 (fame or commercial strength is “based on the marketplace recognition value of
the mark.”). “The fifth DuPont factor, fame of the prior mark, when present, plays a
‘dominant’ role in the process of balancing the DuPont factors.”' Recot, Inc. v. M.C.
Becton, 214 F.3d 1322, 1327 (Fed. Cir. 2000). Famous marks enjoy a “wide latitude of
legal protection since they are more likely to be remembered and associated in the
public mind than weaker marks.” Palm Bay, 396 F.3d at 1374.
In assessing commercial strength or fame, we may consider direct evidence such
as consumer surveys or declarations; and indirect evidence including the volume of
sales and advertising expenditures in connection with the identified goods sold under
the mark; the length of time the mark has been in use; widespread critical
assessments; notice by independent sources of the goods offered under the marks; the
general reputation of the goods; and social media presence. Heil Co. v. Tripleye

Opposition No. 91284670
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GmbH, No. 91277359, 2024 TTAB LEXIS 494, at *51 (citation omitted); Weider
Publ’ns, LLC v. D & D Beauty Care Co., No. 91199352, 2014 TTAB LEXIS 2, at *18-
19; see also Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367, 1371 (Fed. Cir.
2002) (recognizing indirect evidence as appropriate proof of strength).
The record demonstrates that Opposer has owned and continuously used the
OLDE ST. NICK mark since February 1991.81 Opposer claims its bourbon has a “cult-
like following” in the United States.82 Ms. Palatella admits Opposer has not sold
much product under the mark (a concession borne out by the confidential sales
records in Exhibit 4 to her testimony), but states that each bottle can sell at retail for
thousands of dollars; as discussed above, she claims Opposer cannot meet demand.83
Ms. Palatella further testified:
Sotheby’s and I have discussed having a multi-continent
auction of my bourbons bearing these labels. They are
shown and discussed in several prestige whiskey books
including at least two books from the well-known New York
Times whiskey writer Clay Risen honoring these brands,
one being a $1000 book titled, “The Impossible Whiskey
Collection” citing the 75 ultimate whiskeys of all time, one
being this brand. Last year a book was released on the
history of the most famous bourbon produced, Van Winkle
whiskey, and my brands are not only featured in the book,
I was asked to write the foreword for the book as a tribute
to my brands’ significant history with the Van Winkle
family.84
81 30 TTABVUE 3 (Palatella Decl. ¶ 6).
82 Id. at 7, 9 (Palatella Decl. ¶¶ 14, 18, 20).
83 Id. at 7-8 (Palatella Decl. ¶¶ 14, 18).
84 Id. at 9 (Palatella Decl. ¶ 20).

Opposition No. 91284670
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Ms. Palatella also testified that she was asked to be a speaker at an event at the
Kentucky Bourbon Festival about her history in the industry, “largely for my VERY
OLDE ST. NICK brand.”85
Opposer’s evidence is insufficient to demonstrate that the mark OLDE ST. NICK
is commercially strong. Ms. Palatella’s testimony does not demonstrate that many
consumers of “alcoholic beverages, except beers,” or even just bourbon whiskey,
recognize Opposer’s mark. The confidential sales figures are not divided by mark, and
consist of numbers of bottles sold for 1995-2017 and dollars for 2018-2025. Even if we
attribute all of the sales to OLDE ST. NICK mark (which Ms. Palatella testified would
be improper, as she relies on these same numbers to show sales of the composite
VERY OLDE ST. NICK RARE mark),86 we have no context for such numbers and Ms.
Palatella admits these numbers are not large for the industry. Moreover, raw sales
figures (unless they are extraordinarily large – which is not the case with Opposer’s
numbers) are not sufficient by themselves to establish that a mark is strong. See
Fossil, Inc. v. Fossil Grp., No. 91098191, 1998 TTAB LEXIS 388, at *20 (citing Gen.
Mills, Inc. v. Health Valley Foods, No. 91076303, 1992 TTAB LEXIS 37, at *22-23).
There also is no evidence, such as extensive unsolicited third-party media coverage,
that would point to a mark that is well-known to many relevant alcohol consumers.
Opposer has not established that it is entitled to a broadened scope of protection
for its pleaded OLDE ST. NICK mark.
85 36 TTABVUE 11 (Palatella Rebuttal Decl. ¶ 26).
86 We need not decide, and Opposer does not argue, whether use of the composite mark would
support use of the OLDE ST. NICK mark in the ’245 Registration.

Opposition No. 91284670
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b. Sixth DuPont Factor: Conceptual and Commercial Weakness
As noted above, “[t]here are two prongs of analysis for a mark’s strength under
the sixth factor: conceptual strength and commercial strength.” Spireon, 71 F.4th at
1362 (citation omitted). This factor enables Applicant to contract the strength of the
mark through proof of third-party registrations and uses of similar marks.
i. Conceptual Strength
Conceptual strength, or inherent strength, is a measure of a mark’s
distinctiveness, ranging from generic to fanciful. Two Pesos, Inc. v. Taco Cabana, Inc.,
505 U.S. 763, 768 (1992). Because Opposer’s OLDE ST. NICK mark issued on the
Principal Register without a claim of acquired distinctiveness, the mark is presumed
to be inherently distinctive as to the goods listed in the registration. Trademark Act
7(b); Made in Nature, 2022 TTAB LEXIS 228, at *24 (citing Tea Bd. of India v.
Republic of Tea, Inc., No. 9118587, 2006 TTAB LEXIS 330, at *62 (“A mark that is
registered on the Principal Register is entitled to all Section 7(b) presumptions
including the presumption that the mark is distinctive and moreover, in the absence
of a Section 2(f) claim in the registration, that the mark is inherently distinctive for
the goods.”)). Opposer argues that its mark is arbitrary, therefore conceptually
strong.87
Applicant counters that the term “olde” is descriptive of Opposer’s goods,
“designed to convey the age and rarity of the product to increase the consumer
87 42 TTABVUE 27.

Opposition No. 91284670
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perception of value.”88 In addition, to demonstrate that Opposer’s OLDE ST. NICK
marks are “weak,” Applicant made of record evidence of third-party registrations of
marks using “OLD(E)” and/or “SAINT”/”ST.” on similar goods.89
The Federal Circuit has held that if there is evidence that a mark, or an element
of a mark, is commonly adopted by many different registrants in the relevant field(s),
that may indicate that the mark or a common element has some non-source
identifying significance that undermines its conceptual strength as an indicator of a
single source. Jack Wolfskin, 797 F.3d at 1374 (“[E]vidence of third-party
registrations is relevant to ‘show the sense in which a mark is used in ordinary
parlance,’ ... that is, some segment that is common to both parties’ marks may have
‘a normally understood and well-recognized descriptive or suggestive meaning,
leading to the conclusion that that segment is relatively weak.’”) (quoting Juice
Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1339 (Fed. Cir. 2015)).
As a reminder, the ’245 Registration covers the mark OLDE ST. NICK for the very
broad goods, “alcoholic beverages, except beers” in Class 33. A summary of the third-
party registrations made of record and associated goods in Class 33 is set forth below:
88 43 TTABVUE 23.
89 31 TTABVUE 31-52 (App. Notice of Reliance, Exh. 6). See 43 TTABVUE 19-20. Applicant
does not distinguish between conceptual and commercial weakness, but we discuss both for
completeness. We note that Applicant’s evidence consists of certificates of registration for
these marks rather than records from the Office’s online databases. Where, as here, third-
party registrations are offered merely to show that they issued, a plain copy of the
registration is sufficient. See Merritt Foods Co. v. Americana Submarine, No. 91060795, 1980
TTAB LEXIS 80, at *3 n.16 (a party who wishes to rely upon third-party registrations need
only provide plain copies thereof); see also TBMP § 704.03(b)(1)(B) and cases cited therein.
But plain copies, which do not show current status and title have less probative value and
increases our burden in reviewing them.

Opposition No. 91284670
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• ’33 SAINT, Reg. No. 5214611 (issued May 30, 2017) for “Liquor and
liqueur beverages, namely, distilled corn-based whiskey”;
• LUCKY SAINT, Reg. No. 6762876 (issued June 21, 2022) for “Alcoholic
beverages except beers; hard cider; spirits being beverages; grape
brandy distilled in the Cognac region of France in compliance with the
laws and regulations of the French Government; vodkas; rums;
whiskies; wine; wines with registered designation of origin Champagne
produced in accordance with specific standards; sparkling wines”;
• OLD ST. CROIX (“ST. CROIX” disclaimed), Reg. No. 6931275 (issued
Dec. 20, 2022) for “Alcoholic beverages (except beer)”;
• OLD ST. PETE (“ST. PETE” disclaimed), Reg. No. 4787228 (issued Aug.
4, 2015) for “Distilled Spirits”;
• OLDE POINT, Reg. No. 6108045 (issued July 21, 2020) for “Distilled
spirits”;
• OLDE RALEIGH DISTILLERY (“RALEIGH DISTILLERY”
disclaimed), Reg. No. 6278411 (issued Feb. 23, 2021) for “Distilled
spirits”;
• OLDE SPICE WINE (“SPICE WINE” disclaimed), Reg. No. 5927895
(issued Dec. 3, 2019) for “Alcoholic beverages except beers”;
• SAINT BENEVOLENCE, Reg. No. 7669314 (issued Jan. 28, 2025) for
“Rum; Distilled spirits”;
• SAINT CLOUD, Reg. No. 6651724 (issued Feb. 22. 2022) for “Bourbon”;
• SAINT EVREMOND, Reg. No. 5790477 (issued July 2, 2019) for
“Alcoholic beverages except beers”;
• SAINT JAMES & design, Reg. No. 2188682 (issued Sept. 15, 1993) for
“[A]lcoholic beverages, namely rum, brandies, liqueurs, liqueur-based
aperitives”;
• SAINT LIBERTY, Reg. No. 5884691 (issued Oct. 15 2019) for “Liquor;
Spirits and liqueurs”;
• SAINT LUNA, Reg. No. 6136910 (issued Aug. 25, 2020) for “Moonshine;
Spirits; Whiskey”;
• SAINT MAYA, Reg. No. 6494247 (issued Sept. 21, 2021) for “Distilled
blue agave liquor; Distilled spirits”;

Opposition No. 91284670
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• SAINT WENDELIN, Reg. No. 7109675 (issued July 18, 2023) for
“Alcoholic beverages with the exception of beers; spirits, whisky,
liqueurs, eaux-de-vie as brandy, digestifs as spirits, distilled alcoholic
beverages”;
• SAINT-CRÈME, Reg. No. 7273176 (issued Jan. 16, 2024) for “Cream
liqueurs”;
• SAINT’S DESIRE, Reg. No. 5930657 (issued Dec. 10, 2019) for “Distilled
spirits”;
• SIPPIN’ SAINT, Reg. No. 6398410 (issued June 22, 2021) for “Alcoholic
beverages, except beer; Spirits; Spirits and liqueurs; Distilled spirits”;
• ST. AUGUSTINE DISTILLER CO. (“DISTILLERY CO.” disclaimed),
Reg. No. 6188702 (issued Nov. 3, 2020) for “Distilled spirits”;
• ST. GEORGE, Reg. No. 7263778 (issued Jan. 2, 2024) for “Alcoholic
beverages except beers”; and
• ST. NICOLAUS, Reg. No. 6817072 (issued Aug. 16, 2022) for “Alcoholic
beverages, except beer.”
Of these marks, two contain the terms OLD (phonetic equivalent of OLDE) and
ST., both in the order of Opposer’s ’245 Registration – OLD ST. CROIX and OLD ST.
PETE. Both of these marks have disclaimers for the geographic locations referred to
in the marks, confirming the very different connotations and commercial impressions
engendered by those marks. We are not convinced that the shared terms diminish
the conceptual strength of the phrase “OLDE ST.” in the ’245 Registration. Juice
Generation, 794 F.3d at 1339; Jack Wolfskin, 797 F.3d at 1373-74; see also In re
Embiid, No. 88202890, 2021 TTAB LEXIS 168, at *52 (finding three examples to be
“a far cry from the large quantum of evidence of third-party use and third-party
registrations that was held to be significant” in Jack Wolfskin and Juice Generation).
As to the phrase ST. NICK in Opposer’s mark, one third-party mark – ST.
NICOLAUS – is similar; but again, only one registration is insufficient to diminish

Opposition No. 91284670
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the conceptual strength of a registered mark. As to the term OLDE alone, five of the
marks (including the two referenced above) contain the literal element OLD or OLDE
with none disclaiming the term;90 we find this insufficient evidence to demonstrate
that the term OLDE has a well-recognized descriptive or suggestive meaning as
applied to alcoholic beverages. Id.91
Somewhat more convincing, however, are the sixteen registrations of record for
marks that contain only the literal element ST. and its phonetic equivalent, SAINT.92
But – aside from the ST. NICOLAUS mark discussed above – each of these
registrations adds terms that result in very different connotations and commercial
impressions from Opposer’s OLDE ST. NICK mark. See 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.”).
Moreover, five of these sixteen registrations are not based on use in commerce, but
rather issued under Trademark Act Sections 44(e) or 66(a), 15 U.S.C. §§ 1126(e) or
90 OLD ST. CROIX, OLD ST. PETE, OLDE POINT, OLDE RALEIGH DISTILLERY, and
OLDE SPICE WINE.
91 We note, however, that the phrase “VERY OLDE” is disclaimed in the ’734 registration,
indicating it is at least merely descriptive of the “bourbon whiskey” identified in that
registration.
92 ‘33 SAINT, LUCKY SAINT, SAINT BENEVOLENCE, SAINT CLOUD, SAINT
EVREMOND, SAINT JAMES, SAINT LIBERTY, SAINT LUNA, SAINT MAYA, SAINT
WENDELIN, SAINT-CRÈME, SAINT’S DESIRE, SIPPIN’ SAINT, ST. AUGUSTINE
DISTILLER CO., ST. GEORGE, and ST. NICOLAUS.

Opposition No. 91284670
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1141f(a).93 Ten have been registered for less than five years.94 These registrations
have less probative value to demonstrate conceptual weakness of the ST./SAINT
term. See Made in Nature, 2022 TTAB LEXIS 228, at *30 (discounting probative
value of such third-party registrations). This leaves us with only six highly relevant
“ST.”/“SAINT” formative registrations: ’33 SAINT, OLD ST. PETE, SAINT
LIBERTY, SAINT LUNA, SAINT’S DESIRE, and ST. AUGUSTINE DISTILLER
CO., and a handful of less probative registrations. None of these registrations,
however, conveys the same or similar connotations to Opposer’s use of the term ST.
in OLE ST. NICK.
We recognize that Applicant’s evidence of third-party registrations of OLDE and
ST./SAINT marks for various distilled alcohol products is not devoid of evidentiary
value; however, the minimal number of probative third-party registrations are simply
insufficient to support a finding that Opposer’s OLDE ST. NICK mark is conceptually
weak and entitled to a limited scope of protection based on third party registrations.
At most, we acknowledge there is some proof that the term “ST.” standing alone has
some conceptual weakness.
ii. Commercial Strength
We next address the commercial strength prong of the sixth DuPont factor, the
number and nature of similar marks in use on similar goods and services. Primrose
93 LUCKY SAINT, SAINT EVREMOND, SAINT JAMES, SAINT WENDELIN, and SAINT-
CRÈME.
94 LUCKY SAINT, OLDE ST. CROIX, SAINT BENEVOLENCE, SAINT CLOUD, SAINT
MAYA, SAINT WENDELIN, SAINT-CRÈME, SIPPIN’ SAINT, ST. GEORGE, and ST.
NICOLAUS.

Opposition No. 91284670
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Ret. Cmtys., 2016 TTAB LEXIS 604, at *11. Evidence that a considerable number of
third parties use similar marks for similar goods or services is “powerful on its face”
even without specifics regarding the extent of such use. Jack Wolfskin, 797 F.3d at
1373-74; Juice Generation, 794 F.3d at 1339. If the evidence establishes that the
consuming public is exposed to widespread third-party use of similar marks for
similar goods or services, it “is relevant to show that a mark is relatively weak and
entitled to only a narrow scope of protection.” Palm Bay, 396 F.3d at 1373.
Applicant did not introduce evidence showing that these third-party registered
marks, or any other marks containing the relevant terms in Opposer’s mark, actually
are used in commerce on alcoholic beverages. Although we need not know “the specific
extent and impact of the usage” to give weight to such evidence, Primrose Ret. Cmtys,
2016 TTAB LEXIS 604, *17-18, lack of evidence of any use at all of any of the marks
is telling. Spireon, 71 F.4th at 1365 (burden rests on challenger to establish that non-
identical prior marks were actually in use). Opposer’s counsel also submitted an
unrebutted declaration with evidence showing that at least six of the third-party
registered marks of record – including the one highly similar mark ST. NICOLAUS
for “Alcoholic beverages, except beer” – are not in use in commerce for alcohol goods.95
95 35 TTABVUE 3-7 (identifying SAINT EVREMOND, SAINT WENDELIN, LUCKY SAINT,
SAINT-CRÈME, ST. NICOLAUS, and ‘33 SAINT) (Durand Decl. ¶¶ 3-9). The testimony that
certain of the registrations are not in use for “bourbon whiskey, see id. at 3 (Durand Decl.
¶ 4), is not relevant to the question of whether the marks are in use for the registered goods.
For example, Ms. Durand testifies that the mark ST. GEORGE, Reg. No. 7263778, is not in
use for “bourbon whiskey,” see id. at 4 (Durand Decl. ¶ 7); but the mark is registered for the
broader “alcoholic beverages except beers.” Moreover, Opposer’s pleaded registration does not
identify only “bourbon whiskey.” Opposer, having chosen a broad and unrestricted
identification of goods when filing its application, cannot now read limitations into the
identification to avoid a finding of diminished strength.

Opposition No. 91284670
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See id. (burden of showing non-use of identical marks for identical goods rests with
the opposer).
In other words, we cannot glean from the evidence before us that consumers are
accustomed to encountering marks containing the terms in the pleaded mark in
connection with alcoholic beverages and cannot find any commercial weakness. We
find there is insufficient evidence of record to demonstrate conceptual or commercial
weakness of the OLDE ST. NICK mark in view of the third-party registrations of
record.
c. Conclusion on the Strength and Weakness of Opposer’s Mark
The fifth DuPont factor, fame of Opposer’s OLDE ST. NICK mark, is neutral. The
record shows that the mark is inherently distinctive and therefore entitled to the
normal scope of protection afforded inherently distinctive marks. See Wal-Mart Stores,
Inc. v. Samara Bros., Inc., 529 U.S. 205, 210-11 (2000) (word marks that are arbitrary,
fanciful, or suggestive are “held to be inherently distinctive.”); accord, Two Pesos,
505 U.S. at 768.
Although there is evidence of some third-party registrations that incorporate
certain elements of Opposer’s OLDE ST. NICK mark for related goods (in particular,
“ST.” or “SAINT”), we find the evidence falls short of the “voluminous” evidence that
would establish that Opposer’s mark, or a portion thereof, is so commonly registered
in connection with alcohol goods that it is a conceptually weak term. See Juice
Generation, 794 F.3d at 1338-39; Jack Wolfskin, 797 F.3d at 1373 (discussing
“voluminous evidence” of registration and use of paw print design elements). As used

Opposition No. 91284670
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in Opposer’s mark, the individual terms combine to create a different commercial
impression from all but one of the third-party marks of record. There is no evidence
that any portion of the mark is commercially weak due to third-party use of similar
marks.
We find that the fifth and sixth DuPont factors are neutral, and accord the pleaded
mark the normal scope of protection due to inherently distinctive marks.
2. First DuPont Factor: Similarity or Dissimilarity of the Marks
The first DuPont factor concerns “[t]he similarity or dissimilarity of the marks in
their entireties as to appearance, sound, connotation and commercial impression.”
476 F.2d at 1361. This is always one of the most important considerations in our
analysis. See, e.g., Herbko, 308 F.3d at 1165 (“the ‘similarity or dissimilarity of the
marks in their entireties’ is a predominant inquiry”) (citation omitted). “Marks are
compared along the axes of their ‘appearance, sound, connotation and commercial
impression.’” Juice Generation, 794 F.3d at 1340 (citation omitted); accord,
i.am.symbolic, 866 F.3d at 1324.
Our analysis cannot be predicated on dissecting the marks into their various
components; that is, our finding must be based on the entire marks, not just part of
the marks. See, e.g., 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.”). “No element
of a mark is ignored simply because it is less dominant, or would not have trademark
significance if used alone.” In re Electrolyte Labs. Inc., 929 F.2d 645, 647 (Fed. Cir.

Opposition No. 91284670
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1990) (citing Spice Islands, Inc. v. Frank Tea & Spice Co., 505 F.2d 1293 (CCPA
1974)). Nonetheless, “in articulating reasons for reaching a conclusion on the issue of
confusion, 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
conclusion rests on consideration of the marks in their entireties.” Detroit Athletic.,
903 F.3d at 1305 (quoting Nat’l Data Corp., 753 F.2d at 1058).
Once again, Applicant is seeking to register the mark OLDE SAINT’S KEEP and
Opposer’s pleaded mark is OLDE ST. NICK, both in standard characters.
Undoubtedly, the marks share the identical first term OLDE, following by ST. in
Opposer’s mark and SAINT’S in Applicant’s mark. Opposer argues that these leading
terms will be the ones consumers encounter first and remember the most.96 Applicant
emphasizes that the marks look and sound different, and have different connotations:
Opposer’s mark referring to Saint Nicholas, and Applicant’s mark paying historical
homage to Saint Patrick of Ireland, who is “believed to have introduced the art of
distillation to Ireland in the fifth century” (the term “keep” denoting something
possessed by a saint).97
We acknowledge Opposer’s argument that consumers often focus on the first
term(s) in marks — here OLDE ST./SAINT. While often true, we do not believe that
consumers would focus on the first terms in these marks, but rather on the marks as
96 42 TTABVUE 21.
97 43 TTABVUE 17. Applicant explains that its OLDE SAINT’S KEEP product is a special
release, annually sold for St. Patrick’s Day. 32 TTABVUE 3 (Miller Decl. ¶¶ 6-7). See also
28 TTABVUE 43-44 (Opp. Notice of Reliance Exh. 5) (Applicant’s website excerpt showing
the product is an “Annual Special Release”).

Opposition No. 91284670
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a whole – particularly Opposer’s mark. While we need not rely on extrinsic evidence,
the evidence of record, including Opposer’s pleaded mark, corroborates that Opposer’s
mark imparts a different connotation and commercial impression that is conveyed to
consumers. N. Face Apparel Corp. v. Sanyang Indus. Co., No. 91187593, 2015 TTAB
LEXIS 328, at *27 (considering opposer’s advertising in connection with connotation
and commercial impression of the marks); Nw. Golf Co. v. Acushnet Co., No.
91066474, 1985 TTAB LEXIS 86, at *15 (“Evidence of the context in which a
particular mark is used on labels, packaging, etc., or in advertising is probative of the
significance which the mark is likely to project to purchasers.”); cf. Specialty Brands,
Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 674 (Fed. Cir. 1984) (trade dress may
provide evidence of whether word mark projects a confusingly similar commercial
impression). That is, Opposer’s mark OLDE ST. NICK plainly refers to St. Nicholas
(also widely known as Saint Nick (St. Nick) or Santa Claus).98
In addition to the obvious differences between the parties’ marks in appearance
and sound, the connotation and commercial impression of Opposer’s mark, i.e., St.
Nicholas/Santa Claus, is not shared by Applicant’s mark OLDE SAINT’S KEEP.
Applicant did not make of record any definition of the noun “keep,” but we located
several of which we take judicial notice: a “keep” is a “fortress” or “castle,”99 or more
98 COLLINS DICTIONARY (collinsdictionary.com/us/dictionary/english/saint-nicholas, accessed
Apr. 13, 2026).
99 MERRIAM-WEBSTER DICTIONARY (merriam-webster.com/dictionary/keep, accessed Apr. 13,
2026).

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specifically, “the main tower of a medieval castle, in which people lived.”100 Thus, the
impression made by Applicant’s mark is that of a medieval European castle occupied
by a saint. The marks have different connotations and overall commercial
impressions.
Having considered the marks at issue in their entireties, we find that Applicant’s
mark OLDE SAINT’S KEEP and the pleaded mark OLDE ST. NICK are not similar
in sight, sound, connotation, or commercial impression. Accordingly, the first DuPont
factor weighs strongly against likelihood of confusion.
3. Second DuPont Factor: Similarity or Dissimilarity of the
Goods
The second DuPont factor “considers ‘[t]he similarity or dissimilarity and nature
of the goods or services as described in an application or registration.” In re Detroit
Athletic Co., 903 F.3d 1297, 1306 (Fed. Cir 2018) (quoting DuPont, 476 F.2d at 1361);
Sabhnani, 2021 TTAB LEXIS 464, at *24.
“We begin with the identifications of … [goods] in the registration and application
under consideration.” In re OSF Healthcare Sys., No. 88706809, 2023 TTAB LEXIS
353, at *10 (cleaned up; citation omitted). As a reminder, Applicant’s goods are:
“Distilled spirits.” The goods identified in the ’245 Registration are “alcoholic
beverages, except beers.” Opposer agues the goods are legally identical, as distilled
spirits are an alcoholic beverage.101 We agree that “alcoholic beverages, except beers”
100 COLLINS DICTIONARY (collinsdictionary.com/us/dictionary/english/keep, accessed Apr. 13,
2026).
101 42 TTABVUE 23 (citing 30 TTABVUE 2-3 (Palatella Decl. ¶ 3)).

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encompasses and overlaps with “distilled spirits,” and thus the goods are legally
identical.
Applicant does not disagree with this argument, but instead argues that Opposer,
unlike Applicant, is a re-bottler and not a distiller of bourbon.102 How Opposer obtains
the alcohol it brands and sells is beside the point. But in any event, we would not be
persuaded by extrinsic evidence of actual use. The registered mark is registered on
the Principal Register. Consequently, we must accord the mark the full scope of
protection afforded by Trademark Act Section 7(b), which bestows upon Opposer a
prima facie presumption of use of the registered mark upon all of the goods
encompassed by the description of goods. Applicant may not restrict the scope of the
goods covered by the registration by argument or extrinsic evidence. Stone Lion Cap.
Partners, L.P. v. Lion Cap. LLP, 746 F.3d 1317, 1323 (Fed. Cir. 2014) (“It was proper,
however, for the Board to focus on the application and registrations rather than on
real-world conditions....”) (citing Octocom Sys., Inc. v. Houston Comp. Servs., 918 F.2d
937, 942 (Fed. Cir. 1990)).
We conclude that the second DuPont factor strongly favors a finding of likelihood
of confusion.
4. Third and Fourth DuPont Factors: Trade Channels,
Classes of Consumers, and Purchasing Decisions
The third DuPont factor considers the “similarity or dissimilarity of established,
likely-to-continue trade channels,” and the fourth factor concerns the “conditions
102 43 TTABVUE 22.

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under which and buyers to whom sales are made, i.e. ‘impulse’ v. careful,
sophisticated purchasing.” In re Samsung Display Co., No. 90502617, 2024 TTAB
LEXIS 258, at *17 (quoting DuPont, 476 F.2d at 1361).
Because the goods are legally identical and there are no restrictions as to trade
channels or classes of purchasers in Opposer’s registration or Applicant’s application,
we must presume that these legally identical goods are provided in the same trade
channels and are offered to the same classes of purchasers. Monster Energy Co. v. Lo,
No. 91225050, 2023 TTAB LEXIS 14, at *23 (citing In re Viterra Inc., 671 F.3d 1358,
1362 (Fed. Cir. 2012) (finding Board entitled to rely on this legal presumption in
determining likelihood of confusion)); In re Yawata Iron & Steel Co., 403 F.2d 752,
771 (CCPA 1968) (where there are legally identical goods, the channels of trade and
classes of purchasers are considered to be the same).103 Therefore, the third DuPont
factor strongly weighs in favor of likelihood of confusion.
We turn next to the conditions under which the goods are likely to be purchased,
e.g., whether on impulse or after careful consideration, as well as the degree, if any,
of sophistication of the consumers, under the fourth DuPont factor. Purchaser
sophistication or degree of care may tend to minimize likelihood of confusion.
Conversely, impulse purchases of inexpensive goods may have the opposite effect.
Palm Bay, 396 F.3d at 1376.
103 Because of this presumption, the parties’ arguments related to the actual goods are not
relevant. We cannot read limitations into the unrestricted identifications by resorting to
extrinsic evidence; we must rely on the identifications alone. Samsung, 2024 TTAB LEXIS
258, at *20 (citing Detroit Athletic, 903 F.3d at 1308-09).

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Applicant, relying on Mr. Miller’s declaration, points to the actual purchasing
conditions of the goods, arguing that both parties sell “craft” products with higher
price points, and consumers exercise greater care in purchasing decisions.104 But
absent express limitations in the application or registration, we must assume that
the identified goods encompass “all goods of the type identified, without limitation as
to their nature or price,” Sock It to Me, 2020 TTAB LEXIS 201, at *24. Opposer
argues, relying on Ms. Palatella’s declaration, that bourbon whiskey (and alcohol
beverages generally) may be lower-priced, everyday consumer products purchased at
grocery or liquor stores.105
The evidence of record shows that alcoholic beverages (excluding beer) may be
expensive or inexpensive, sometimes costing under fifteen dollars a bottle.106
Consumers of the low-cost items are likely to exercise no more than ordinary care.
Although some consumers might be more sophisticated about purchasing distilled
spirits, particularly of distilled spirits that are quite expensive, others may not be as
knowledgeable. Cf. 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 where, as here, the goods are identified without any
limitations as to trade channels, classes of consumers or conditions of sale, we must
presume that Applicant’s and Registrant’s wine encompasses inexpensive or
104 43 TTABVUE 20-21 (citing 32 TTABVUE 4 (Miller Decl. ¶ 14)).
105 42 TTABVUE 25.
106 See, e.g., 34 TTABVUE 13, 17, 21, 27, 30, 35, 39, and 51 (Opp. Notice of Reliance Exh. 3).

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moderately-priced wine.”). The identified goods are unrestricted as to quality or price,
and we must consider the perspective of the least sophisticated potential purchaser,
not just purchasers of the parties’ higher-priced offerings. Stone Lion, 746 F.3d at
1325 (citations omitted).
We find the fourth DuPont factor to be neutral. See Aquitaine Wine, 2018 TTAB
LEXIS 108, at *30 (finding fourth factor neutral where wine may be moderately
priced).
5. Seventh and Eighth DuPont Factors: Actual Confusion
The seventh and eighth DuPont factors are interrelated; the absence of evidence
of actual confusion under the seventh DuPont factor by itself is entitled to little
weight in our likelihood of confusion analysis unless there also is evidence under the
eighth DuPont factor that there has been a significant opportunity for actual
confusion to have occurred. Keystone Consol. Indus. v. Franklin Inv. Corp.,
No. 92066927, 2024 TTAB LEXIS 290, at *75-76 (citing cases). Applicant argues that
the parties’ respective products have co-existed in the marketplace for roughly six
years with no known instances of actual confusion.107
We agree that there is no evidence of actual confusion under the seventh DuPont
factor. But we must look at actual use under the eighth factor. Opposer argues, and
we agree, that there has been no reasonable opportunity for confusion to have
occurred, in that “[w]hile Opposer’s goods are sold nationally, Applicant’s [goods] have
been sold in only one location: its distillery in Arvada, Colorado,” and in small
107 43 TTABVUE 22.

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quantities.108 In other words, the quantities are small and there is no evidence of
overlapping trade channels. We find there has not “been a reasonable opportunity for
confusion to have occurred” during the years of concurrent use of the parties’ marks.
Sabhnani, 2021 TTAB LEXIS 464, at *63 (citing Citigroup Inc. v. Cap. City Bank
Grp., No. 91177415, 2010 TTAB LEXIS 40, at *50, aff’d, 637 F.3d 1344 (2011)). The
seventh and eighth DuPont factors are neutral in our analysis of the likelihood of
confusion.
6. Tenth DuPont Factor: Market Interface
Finally, both parties addressed the tenth DuPont factor, which considers “[t]he
market interface between applicant and the owner of a prior mark....” DuPont,
476 F.2d at 1361. This factor concerns whether there has been any interaction
between Applicant and Opposer regarding the involved mark – such as a consent
agreement, contractual provisions designed to preclude confusion, or an assignment.
Id. Applicant and Opposer agree that they have not had any prior interactions.109
Although Applicant asserts that the tenth factor weighs against likelihood of
confusion,110 we find the factor neutral for lack of evidence.
7. Balancing the DuPont Factors
Notwithstanding that the goods are legally identical and that the channels of
trade and classes of purchasers are presumed to be the same (and the other factors
that we considered are neutral), we conclude that the marks are too dissimilar in
108 42 TTABVUE 29; see also 44 TTABVUE 18.
109 42 TTABVUE 19; 43 TTABVUE 24.
110 43 TTABVUE 24.

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connotation and overall commercial impression to warrant a determination of likely
confusion. We consider the first DuPont factor dispositive in this case. See
Champagne Louis Roederer, S.A. v. Delicato Vineyards, 148 F.3d 1373, 1375 (Fed.
Cir. 1998) (holding one DuPont factor may be dispositive in a likelihood of confusion
analysis, especially when that single factor is the dissimilarity of the marks) (citing
Kellogg Co. v. Pack’Em Enters., 951 F.2d 330, 332-33 (Fed. Cir. 1991)).
In view thereof, we find Applicant’s standard-character mark OLDE SAINT’S
KEEP for “distilled spirits” is not likely to be confused with Opposer’s registered
standard-character mark OLDE ST. NICK for “alcoholic beverages, except beer.”
Decision
Applicant’s counterclaim for cancellation of Reg. No. 2002734 based on
abandonment is denied.
Opposer’s opposition to registration of Ser. No. 97294152 based on likelihood of
confusion is dismissed.111
111 Because we dismiss the opposition on Opposer’s likelihood of confusion claim with regard
to the standard-character OLDE ST. NICK mark in the ’245 Registration, we similarly would
not find confusion likely as to the pleaded composite mark VERY OLDE ST. NICK RARE in
the ’745 Registration or Opposer’s pleaded common law marks.