Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA968491
`
`Filing date:
`
`04/22/2019
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91243647
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Plaintiff
`Blacklands Malt, LLC
`
`RICHARD J GROOS
`KING & SPALDING LLP
`500 W 2ND ST , STE 1800
`AUSTIN, TX 78701
`UNITED STATES
`emolson@kslaw.com, aotrademark@kslaw.com, sade@kslaw.com,
`rgroos@kslaw.com
`512-457-2018
`
`Testimony For Plaintiff
`
`Samantha Ade
`
`aotrademark@kslaw.com, emolson@kslaw.com, sade@kslaw.com
`
`/Samantha Ade/
`
`04/22/2019
`
`2019.4.22 Final Public Ade Declaration.pdf(245565 bytes )
`Exhibit A.pdf(1752139 bytes )
`Exhibit B.pdf(1242913 bytes )
`Exhibit C.pdf(317450 bytes )
`Exhibit D.pdf(2929066 bytes )
`Exhibit E.pdf(133443 bytes )
`Exhibit F.pdf(975491 bytes )
`Exhibit G.pdf(2447787 bytes )
`Exhibit H.pdf(1848884 bytes )
`Exhibit I.pdf(352203 bytes )
`Exhibit J.pdf(608013 bytes )
`Exhibit K.pdf(783224 bytes )
`Exhibit L Part 1.pdf(4810166 bytes )
`Exhibit L Part 2.pdf(244542 bytes )
`Exhibit L Part 3.pdf(2638902 bytes )
`Exhibit L Part 4.pdf(2581772 bytes )
`Exhibit M.pdf(1849643 bytes )
`Exhibit N.PDF(4397576 bytes )
`Exhibit O.pdf(1236944 bytes )
`
`

`

`REDACTED FOR PUBLIC VIEW
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the matter of Application Serial No. 87731387
`By M Distillery, Inc. for the Mark: BLACKLAND DISTILLERY
`Published in the Official Gazette on May 22, 2018
`
`BLACKLANDS MALT, LLC,
`
`Opposer,
`
`v.
`
`M DISTILLERY, INC.,
`
`Applicant.
`
`Opposition No. 91243647
`
`Serial No. 87731387
`
`DECLARATION OF BRANDON ADE
`
`I, Brandon Ade, declare under penalty of perjury as follows:
`
`1.
`
`I am currently the managing partner at Opposer Blacklands Malt, LLC (“Opposer”). I
`
`submit this declaration to provide relevant information regarding Opposer’s use and enforcement of the
`
`BLACKLANDS MALT mark in United States commerce, the recognition of the BLACKLANDS MALT
`
`mark among U.S. consumers. I also provide herein relevant information concerning Applicant M
`
`Distillery, Inc.’s BLACKLAND DISTILLERY mark that is the subject of Application No. 87731387 and
`
`this proceeding.
`
`2.
`
`The facts set forth herein are based on my personal knowledge and on information
`
`contained in Opposer’s business records regularly maintained by me in the normal course of business and to
`
`which I have regular access in the course of my job. Unless otherwise noted, the exhibits to which I refer
`1
`
`

`

`and which are attached to this declaration are copies of documents and other materials from Opposer’s
`
`business records kept in the ordinary course of business.
`
`I. Job Responsibilities, Experience, and Education
`
`3.
`
`As the founder and managing partner of Opposer, a position I have held since 2012, my
`
`responsibilities include sales, business administration, regulatory compliance, staffing, payroll, accounting,
`
`financing, customer support, production management, supply chain management, business development,
`
`quality control, branding, marketing, advertising, and other responsibilities required in the course of
`
`running a manufacturing business.
`
`4.
`
`Prior to my current positions, I was an Applications Engineer at Imagination Technologies
`
`from 2012 to 2013, where my responsibilities included customer technical support, technical field support,
`
`and technical code support for IMG’s line of 3D graphics accelerators. Prior to that, I was a Senior
`
`Applications Engineer at Freescale Semiconductor from 2005 to 2012, where my responsibilities included
`
`software development, in-house technical training, project management, customer technical support,
`
`technical field support, and software tools development. I obtained a Bachelor of Science in Computer
`
`Engineering from Purdue University in 2005. I also obtained a Malting Training Certificate from the
`
`Canadian Malting Barley Technical Centre in Winnipeg, Canada in 2012.
`
`5.
`
`I have been on the Board of Directors of the Craft Maltsters Guild since 2017. Opposer is
`
`a member of the Brewer’s Association, American Distilling Institute, Texas Craft Brewers Guild.
`
`6.
`
`I have been an invited speaker at industry events, including The Austin Food + Wine
`
`Festival, Texas Craft Brewers Guild, Craft Maltsters Guild, a craft brewer panel at Craft Pride bar, Pulse
`
`Innovation Summit, Farm and Ranch Freedom Alliance Farm and Food Leadership Conference; Black Star
`
`Co-op (brewpub); Oskar Blues Brewery; Pint House Pizza; Hops & Grain Brewing; Oasis Texas Brewing
`
`Company; and Vista Brewing.
`
`
`
`
`
`2
`
`

`

`II. Opposer’s Business and General History of the BLACKLANDS MALT Mark
`
`7.
`
`Opposer is in the business of manufacturing malt for use by distilleries and breweries and
`
`also engages in other business activities including professional consulting in malt production for
`
`commercial malthouses, recipe guidance for breweries and distilleries, and providing technical training and
`
`educational seminars for the malting, brewing, and distilling industry. Opposer also sells branded
`
`merchandise, including hats, T-shirts, glassware, stickers, koozies, and keychains, representative examples
`
`of which are attached as Exhibit A.
`
`8.
`
`Opposer is Texas’s first modern manufacturer of malted and raw grains for sale to brewers,
`
`distillers, homebrew shops, and end consumers.
`
`9.
`
`Other than water, malt is the primary ingredient by weight in beer and in some distilled
`
`spirits, including malt whisky.
`
`10.
`
`Opposer commissioned Texas A&M University and individual producers to conduct
`
`research to identify a strain of barley that would grow in Texas so distillers and brewers could use
`
`Opposer’s goods to produce the first truly local beers and spirits in Texas history.
`
`11.
`
`Opposer commenced use of the BLACKLANDS MALT mark in connection with the sale
`
`of malt in December 2013, when Opposer sold its first bag of malt to a homebrewer at its production facility
`
`in Leander, Texas.
`
`12.
`
`Opposer’s products have been sold to countless homebrewers and more than 90
`
`commercial brewers and distillers.
`
`13.
`
`14.
`
`Opposer has made direct sales to 18 states.
`
`Opposer selected the BLACKLANDS MALT mark because at the time of its inception
`
`Opposer had commissioned research on barley production in central Texas, including portions of the
`
`Blackland Prairies, and Opposer was inspired by the individuals from central and west Texas involved in
`
`crop production. Opposer adopted the BLACKLANDS MALT mark to honor these individuals who
`
`3
`
`
`
`

`

`operated in the background, unknown to most, and to draw attention to the little-known Blackland Prairies
`
`Ecoregion of Texas. Opposer further selected the name because it was not in use in beer, spirits, or malt,
`
`and had no nationwide recognition or use in the alcoholic-beverages industry. I researched usage,
`
`trademark availability, and common law usage, and found no competing usage for the terms “Blackland” or
`
`“Blacklands” in the food, beer, or spirits categories.
`
`15.
`
`16.
`
`Opposer is regularly referred to by consumers as “Blacklands” alone.
`
`Since the launch of the BLACKLANDS MALT brand in 2013, Opposer has been
`
`continuously using the BLACKLANDS MALT mark in US commerce in connection with malt for brewing
`
`and distilling and has expanded use of the mark to include consulting services and a variety of common
`
`consumer goods such as glassware, clothing, hats, keychains, and stickers.
`
`17.
`
`BLACKLANDS MALT products are promoted by brewers and distillers to consumers and
`
`purchasers as key ingredients of finished beers and distilled spirits, and the BLACKLANDS MALT mark is
`
`used in connection with such promotion in packaging and marketing throughout Texas and beyond.
`
`18.
`
`In 2013, the BLACKLANDS MALT mark began to be used in connection with sales of
`
`beer to end consumers, and since then the mark has been used continuously in connection with these goods.
`
`Attached hereto at Exhibit B is a true and correct copy of a representative sample of a December 2013
`
`promotion for beer using the BLACKLANDS MALT mark. Additional representative samples are found at
`
`14 TTABVUE 263, 747, 749, 751, 753, 765, 775, 777, 789, 791, 794, 802, 805, 808, 810, 815–19, 824, 830,
`
`838, 842, 849–56, 866, 876–883, 887, 897–899, 909–921, 925–29, 933, 937–39, 963, 971–73, 982–84, and
`
`992–94.
`
`19.
`
`I have observed numerous labels of beer sold to retail consumers that have included the
`
`BLACKLANDS MALT mark on the label from breweries including but not limited to Burial Brewing,
`
`Circle Brewing, Clown Shoes Beer, and Jester King Brewery.
`
`
`
`
`
`4
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`

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`20.
`
`Attached as Exhibit C are true and correct copies of photographs I took on April 17, 2019,
`
`showing the can for Land of Eternity Rolling Plains Lager, brewed for sale by Burial Brewing in Asheville,
`
`North Carolina, in collaboration with Jester King Brewery that includes the BLACKLANDS MALT mark
`
`prominently displayed on the front of the can and the BLACKLANDS MALT logo on the back of the can.
`
`21.
`
`Attached as Exhibit D are true and correct reproductions of representative examples of
`
`Jester King labels with which I am familiar that include the BLACKLANDS MALT mark.
`
`22.
`
`Attached as Exhibit E is a true and correct copy of the label for Jester King Brewery’s Part
`
`& Parcel beer, first released in March 2017, which noted on the beer’s label:
`
`Part & Parcel is the first beer in modern history brewed with 100% Texas-Grown malted
`barley. Its origin dates back four years to when Blacklands Malt in Leander, Texas began
`its mission to rekindle Texas barley growing. . . . We thank Brandon Ade at Blacklands for
`his hard work and persistence in making Texas malted barley a reality.
`
`23.
`
`Attached as Exhibit F is a true and correct copy of the label for Circle Brewing’s Archetype
`
`Historical IPA beer, first released in 2016, which notes that the beer was created “[w]orking closely with
`
`Blacklands Malt.”
`
`24.
`
`I have observed numerous brewpubs and taprooms, including but not limited to Austin
`
`Beerworks, Black Star Co-op, Blue Owl Brewing, Jester King Brewery, Oasis Texas Brewing Company,
`
`Oskar Blues Brewery, Red Horn Coffee House & Brewing Co., Oddwood Ales, Pinthouse Pizza, and
`
`Whitestone Brewery, displaying the BLACKLANDS MALT mark at the point of sale to retail consumers.
`
`25.
`
`Attached as Exhibit G is a true and correct copy of a photograph I took in June 2018 at
`
`Black Star Co-op, showing the BLACKLANDS MALT logo next to each beer brewed with
`
`BLACKLANDS MALT goods on the beer menu.
`
`26.
`
`Attached as Exhibit H is a true and correct copy of a photograph I took in May 2018 at
`
`Oasis Texas Brewing Company, listing the BLACKLANDS MALT mark along with the beer name.
`
`
`
`
`
`5
`
`

`

`27.
`
`Attached as Exhibit I is a true and correct copy of a photograph I took in or around
`
`September 2016 of a menu at Oskar Blues Brewing Austin that includes the BLACKLANDS MALT mark
`
`alongside the beer name.
`
`28.
`
`In 2015, the BLACKLANDS MALT mark began to be used in connection with distilled
`
`spirits, and since then the mark has been used continuously in connection with these goods and services.
`
`Attached hereto as Exhibit J is a representative sample of promotion for distilled spirits using the
`
`BLACKLANDS MALT mark. Additional representative samples are attached at 14 TTABVUE 767, 769,
`
`779, 793, 869–875, 923, 945.
`
`29.
`
`I have observed sales of both beer and distilled spirits by at least two of Opposer’s
`
`customers, Treaty Oak Brewing & Distilling and Real Ale Brewing (as Real Ale Spirits).
`
`30.
`
`Through the Craft Maltsters Guild, I am aware of numerous manufacturers that produce
`
`both malt and beer or spirits, including, among others, Admiral Maltings (malt and beer), Bentley Heritage
`
`(malt and spirits); Colorado Malting Company (malt and beer), Eckert Malting & Brewing (malt and beer),
`
`Leopold Brothers (malt and spirits), and West Branch Malts (malt and spirits).
`
`31.
`
`In 2015, the BLACKLANDS MALT mark began to be used in connection with consulting
`
`services, and since then the mark has been used continuously in connection with these services.
`
`32.
`
`Pursuant to communications between the parties granting license and permission, in
`
`January 2016 Real Ale Brewing produced and sold a special edition “Real Ale Brewer’s Cut No. 23 ESB”
`
`that was brewed with Opposer’s BLACKLANDS MALT products and was distributed and sold bearing the
`
`Blacklands Malt logo. Opposer sampled the “Real Ale Brewer’s Cut No. 23 ESB” product before sale and
`
`granted express permission for use of the BLACKLANDS mark in connection with the product. Attached
`
`as Exhibit K is a true and correct copy of a photograph I took in or around January 2016 of the six-pack as it
`
`was distributed to stores throughout Texas.
`
`
`
`
`
`6
`
`

`

`33.
`
`Pursuant to communications between the parties granting license and permission, in March
`
`2016 Whitestone Brewery produced and sold a special edition “Smoak on the Blacklands” beer that was
`
`brewed with Opposer’s BLACKLANDS MALT products. Opposer sampled the “Smoak on the
`
`Blacklands” product before sale and granted express permission for use of the BLACKLANDS mark in
`
`connection with the product.
`
`34.
`
`Pursuant to communications between the parties granting license and permission, in 2018,
`
`Oskar Blues Brewery produced and sold a special edition “Blacklands Barleywine” that was brewed with
`
`Opposer’s BLACKLANDS MALT products. Opposer sampled the “Blacklands Barleywine” product
`
`before sale and granted express permission for use of the BLACKLANDS mark in connection with the
`
`product. Oskar Blues held a special release event at Oskar Blues’s Austin brewery to celebrate the event
`
`and invited Opposer to speak at the event.
`
`III. Success and Public Recognition of the BLACKLANDS MALT Brand
`
`35.
`
`Opposer’s goods under the BLACKLANDS MALT mark have been offered for sale
`
`throughout the United States since well before December 2017. Opposer’s goods under the
`
`BLACKLANDS MALT mark are offered for sale from Opposer’s production facility in Leander, Texas,
`
`shipped nationwide, and are and available for sale at home brewing stores in Texas, including Austin
`
`Homebrew Supply, SoCo Homebrew Supply, and Craft Brewing Shop.
`
`36.
`
`Opposer has made direct sales in Texas, Pennsylvania, Arizona, Tennessee, Louisiana,
`
`Nevada, Wisconsin, North Carolina, Massachusetts, Michigan, Oklahoma, Kansas, Ohio, Florida,
`
`Missouri, Colorado, Oregon, and Illinois. Opposer’s goods are also sold through Austin Homebrew
`
`Supply, SoCo Homebrew Supply, and Craft Brewing Shop—retail outlets that ship nationwide.
`
`37.
`
`These trade channels are the ordinary trade channels for craft malted grains for brewing
`
`and distilling.
`
`
`
`
`
`7
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`

`

`38.
`
`Since 2014, beer bearing or promoted using the BLACKLANDS MALT mark have been
`
`available in bars, grocery stores, taprooms, brewpubs, breweries, and liquor stores.
`
`39.
`
`Opposer’s malt under the BLACKLANDS MALT mark is targeted towards and purchased
`
`by brewers, distillers, and homebrewers, who are consumers of legal drinking age, a group that includes
`
`consumers of all sophistication levels. These consumers are the typical consumers of malt, the goods sold
`
`in connection with Opposer’s common law mark and identified in Opposer’s applications asserted in this
`
`proceeding.
`
`40.
`
`Beer sold by third parties and bearing the BLACKLANDS MALT mark or promoted using
`
`the BLACKLANDS MALT mark is targeted towards and purchased by consumers of legal drinking age, a
`
`group that includes consumers of all sophistication levels. These consumers are the typical consumers of
`
`beer, the goods identified in Opposer’s Notice of Opposition as being sold bearing or in connection with
`
`Opposer’s common law mark.
`
`41.
`
`Distilled spirits sold by third parties and advertising the BLACKLANDS MALT mark is
`
`targeted towards and purchased by consumers of legal drinking age, a group that includes consumers of all
`
`sophistication levels. These consumers are the typical consumers of distilled spirits, the goods identified in
`
`Opposer’s Notice of Opposition as being sold in connection with Opposer’s common law mark.
`
`42.
`
`Opposer engages in a variety of promotional activities for its goods and services under the
`
`BLACKLANDS MALT mark, including social media postings on Facebook, Twitter, and Instagram;
`
`in-person events at breweries and festivals; speaking engagements; and the annual BLACKLANDS MALT
`
`Blacklands Beershare event.
`
`43.
`
`Opposer also advertises
`
`its goods and
`
`services
`
`through
`
`its website at
`
`www.blacklandsmalt.com (the “Website”), which prominently displays the BLACKLANDS MALT mark
`
`at the top of every page. Attached hereto as Exhibit L are true and correct copies of pages from
`
`www.blacklandsmalt.com as of April 13, 2019.
`
`
`
`
`
`8
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`

`

`44.
`
`Opposer’s customers also promote
`
`the BLACKLANDS MALT mark
`
`through
`
`co-sponsored events, promotional flyers, packaging materials, and press releases.
`
`45.
`
`Opposer also uses social media to advertise its goods under the BLACKLANDS MALT
`
`mark, including pages on Facebook, Instagram, and Twitter.
`
`46.
`
`Opposer holds an annual public “Blacklands Beershare” event which is a sponsored event
`
`held at its place of business in Leander, Texas. The Beershare is free and open to the public and is heavily
`
`advertised via social media, flyers, public postings at universities, and inside brewing and distilling
`
`customers taprooms. Opposer partners with brewing and distilling customers using their malt to donate
`
`beer and spirits for the event which are then served during the event. There is a heavy amount of
`
`co-branding and co-sponsorship that occurs with the BLACKLANDS MALT mark and the mark of
`
`Opposer’s customers leading up to and during the event. Representative examples of promotional materials
`
`for the Beershare events are attached as Exhibit M.
`
`47.
`
`Over the years, Opposer’s goods have garnered substantial unsolicited media coverage
`
`throughout the United States. I am aware of coverage of the BLACKLANDS MALT mark in the following
`
`publications:
`
`(a)
`
`Newspapers
`The Austin Chronicle
`(i)
`(ii)
`The Austin-American Statesman
`(iii) Community Impact Newspaper
`(iv) Houston Chronicle
`San Antonio Express-News
`(v)
`(b) Magazines
`Austin Monthly
`(i)
`
`(ii)
`
`Austin Beer Guide
`
`(iii) Beverage Master: Craft Spirits & Brew Magazine
`
`(iv) Brewer & Distiller International
`9
`
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`
`
`
`

`

`(v)
`
`Craft Beer & Brewing Magazine
`
`(vi) Draft Magazine
`
`(vii) Edible Austin
`
`(viii)
`
`Imbibe Magazine
`
`(ix)
`
`(x)
`
`(xi)
`
`Paste Magazine
`
`San Antonio Current
`
`Spirited Magazine
`
`(xii) TakePart
`
`(c)
`
`Books
`(i) Mallett, John, Malt: A Practical Guide from Field to Brewhouse
`Zimmerman, Jereme, Brew Beer Like a Yet: Traditional Techniques
`(ii)
`and Recipes for Unconventional Ales, Gruits, and Other Ferments
`Using Minimal Hops
`(iii) Thomas, Dave, The Craft Maltsters’ Handbook
`Toth, Gabe, Craft Floor Malting, A Practical Guide
`(iv)
`(d) Websites and Blogs
`
`(i)
`
`(ii)
`
`Accidentalis Brewing
`
`Allaboutbeer.com
`
`(iii) AgriLife TODAY
`
`(iv) Austin 360
`
`(v)
`
`Austin 360 Spirits
`
`(vi) Beer in Big D
`
`(vii) Beeradvocate.com
`
`(viii) Beerawareness.com
`
`(ix) Beerbasics.com
`
`(x)
`
`Beerandbrewing.com
`
`(xi) Beerstreetjournal.com
`10
`
`
`
`
`
`

`

`(xii) Beers and Shenanigans
`
`(xiii) Beer with Blake
`
`(xiv) Beer Pulse
`
`(xv) Bitch Beer
`
`(xvi) Brewbound
`
`(xvii) Brewbroski.com
`
`(xviii) Craftbeer.com
`
`(xix) Craftbrewingbusiness.com
`
`(xx) Craft Beer Austin
`
`(xxi) Craft By Under My Host
`
`(xxii) Craftmalting.com
`
`(xxiii) Craftpac.org
`
`(xxiv) Do512.com
`
`(xxv) Eats Blog
`
`(xxvi) Facebook.com
`
`(xxvii) Farm Boy Farms
`
`(xxviii)Farm and Ranch Freedom Alliance
`
`(xxix) HEB
`
`(xxx) Homebrewfinds.com
`
`(xxxi) Hop Culture
`
`(xxxii) Instagram.com
`
`(xxxiii)Liquid Austin
`
`(xxxiv) Mashing-in.com
`
`(xxxv) Moreno’s Liquors
`
`(xxxvi) Mybeerbuzz.blogspot.com
`11
`
`
`
`
`
`

`

`(xxxvii) Northwest Beer Guide
`
`(xxxviii) Pink Boots Society
`
`(xxxix) RateBeer
`
`(xl)
`
`San Antonio Express-News
`
`(xli) Scrumptiouschef.com
`
`(xlii) Taylorpress.net
`
`(xliii) Tenemu.com
`
`(xliv) TexasHillCountry.com
`
`(xlv) Texas Craft Brewers Guild
`
`(xlvi) Texas Craft Brewers Festival
`
`(xlvii) Texas Brew and Barbecue
`
`(xlviii) Twitter.com
`
`(xlix) Untappd.com
`
`(l)
`
`The Full Pint Craft Beer News
`
`(li) Williamson County Libertarian Party
`
`(lii) You Stay Hoppy Austin
`
`(liii) You Stay Hoppy Dallas
`
`(liv) Youtube.com
`
`(lv) Whichcraft.com
`
`(lvi) Westcoastersd.com
`
`(e)
`
`Other:
`
`(i)
`
`(ii)
`
`American Malting Barley Association, Inc.
`
`Austin Food & Wine Alliance
`
`(iii) Ben E. Keith Co.
`
`(iv) Craft Pride
`
`12
`
`
`
`
`
`

`

`(v)
`
`The Flying Saucer
`
`(vi) Chipotle
`
`(vii) Drive The District
`
`(viii) Texas A&M University
`
`(ix)
`
`Texas Department of Agriculture
`
`48.
`
`49.
`
`Representative examples of this unsolicited media coverage are attached at 14 TTABVUE.
`
`All of the foregoing sales, advertising, and publicity of goods under and in connection with
`
`the BLACKLANDS MALT mark have resulted in strong consumer recognition of the BLACKLANDS
`
`MALT brand in the United States.
`
`50.
`
`Because of the overwhelming success and appeal of BLACKLANDS MALT goods, and
`
`Opposer’s exclusive use of the BLACKLANDS MALT mark in connection with malt and with alcoholic
`
`beverages, the BLACKLANDS MALT mark has acquired enormous value and become well known to the
`
`public and to the trade as identifying and distinguishing Opposer exclusively and uniquely as the source of
`
`goods under the mark. Thus, in addition to its inherent distinctiveness, the BLACKLANDS MALT mark
`
`has acquired distinctiveness in the minds of consumers.
`
`IV. Opposer’s Enforcement of the BLACKLANDS MALT Mark
`
`51.
`
`Opposer has engaged in an active enforcement program to protect its BLACKLANDS
`
`MALT mark.
`
`52.
`
`Opposer has successfully enforced its exclusive rights in the BLACKLANDS MALT mark
`
`against Texas Beer Company. Opposer became aware in late April 2018 that Texas Beer Company had
`
`started to produce a “Blacklands Porter” beer. Opposer immediately contacted Texas Beer Company,
`
`which apologized and acknowledged the confusion created. Opposer and Texas Beer attempted to
`
`negotiate a licensing agreement but were unsuccessful, and Texas Beer agreed to cease using “Blacklands
`
`
`
`
`
`13
`
`

`

`Porter” after the then-current production run. Opposer has confirmed that the beer has been re-branded to
`
`“Bill Pickett Porter.”
`
`53.
`
`As a result of Opposer’s enforcement activities, other than the Applicant’s mark
`
`challenged in this proceeding and the conduct at issue in the enforcement listed in the foregoing paragraph,
`
`Opposer’s use of the BLACKLANDS MALT mark is substantially exclusive. Thus, the BLACKLANDS
`
`MALT mark, as used in connection with malt and alcoholic beverages, uniquely identifies Opposer’s
`
`goods.
`
`VI. Applicant, the BLACKLAND DISTILLERY Mark, and Consumer Confusion
`
`54.
`
`On February 1, 2018, I learned that Applicant was planning to use the BLACKLAND
`
`DISTILLERY mark when I received a call from an unidentified male caller from a Fort Worth area code
`
`inquiring whether Opposer was opening a new distillery in Fort Worth. Opposer was not aware of
`
`Applicant or the BLACKLAND DISTILLERY mark before February 1, 2018.
`
`55.
`
`In response to the call, I discovered a news article noting a planned distillery in Fort Worth
`
`using the name “Blackland Distillery” and found the Application for BLACKLAND DISTILLERY.
`
`56.
`
`Upon learning of Applicant’s application, counsel for Opposer promptly contacted M
`
`Distillery to inform it of Opposer’s objection to the use of the BLACKLAND DISTILLERY mark.
`
`Attached hereto as Exhibit N are true and correct copies of Opposer’s February 15, 2018 letter to Applicant
`
`and Applicant’s February 21, 2018 response.
`
`57.
`
`Opposer has no business relationship with Applicant and has never authorized Applicant or
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`otherwise permitted Applicant to use or register the BLACKLAND DISTILLERY mark or any other mark
`
`similar to the BLACKLANDS MALT mark.
`
`58.
`
`The goods identified in Applicant’s Application Serial No. 87731387 at issue in this action,
`
`namely “distilled spirits,” are related to Opposer’s goods under the BLACKLANDS MALT mark because
`
`Opposer produces malt for beer and distilled spirits. Brewers and distillers using Blacklands Malt’s goods
`
`14
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`
`
`

`

`to create their finished beer and distilled spirits advertise the use of Blacklands Malt in the finished product,
`
`and the Blacklands Malt mark regularly appears on alcoholic beverage labels sold in commerce. Distillers
`
`using Blacklands Malt’s goods advertise the use of Blacklands Malt’s products. Malt is inherently a word
`
`associated with beer and spirits, especially certain categories of distilled spirits such as scotch whiskey,
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`single malt whiskey, malt whiskey, and the like which are commonly referred to as simply “malts.”
`
`Distillers regularly brand these products using the terms “malt” or “single malt”, and it is possible that
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`Applicant could release a product using similar language, such as “Blackland Single Malt.” The ubiquitous
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`use of the term “malt” as related to spirits leads to a high level of likelihood that Applicant will release a
`
`product bearing the terms “Blackland[s]” and “malt”, with the mark appearing on packaging, advertising,
`
`and promotional materials.
`
`59.
`
`Distilled spirits are typically sold to drinking-age adults, who are also the consumers of
`
`beer and distilled spirits sold bearing or advertised using the BLACKLANDS MALT mark.
`
`60.
`
`In the alcoholic beverage market, distilled spirits and beer are inexpensive, generally sold
`
`at retail for $5-$100. Because they are inexpensive, consumers do not exercise particular care when
`
`purchasing distilled spirits, increasing the likelihood of consumer confusion. Indeed, based on my
`
`experience in the industry, I have encountered members of the general public that regularly misidentify our
`
`business as a brewery or distillery.
`
`61.
`
`I have also encountered members of the general public during beer release events for beers
`
`bearing or promoted using the BLACKLANDS MALT mark that immediately identify the use of the
`
`BLACKLANDS mark as in connection to our business, even if they are confused as to the products
`
`Opposer produces.
`
`62.
`
`
`
`
`
`15
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`

`

`
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`63.
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`Consumers frequently inquire about whether Opposer will expand into brewing or
`
`distilling. Attached as Exhibit 0 is a true and correct copy of an October 6, 2014 tweet asking in response to
`
`a Tweet from Opposer, “when does the shop turn into Blacklands Malt & Brewery?”
`
`64.
`
`If Applicant is permitted to obtain registration for the BLACKLAND DIVSTILLERY mark,
`
`not only do I expect its use of the mark to confuse consumers as to the source and/or affiliation of its
`
`products, but also, its use of the mark will greatly devalue the BLACKLANDS MALT brand and cause
`
`significant harm to Opposer by diluting the distinctiveness of Opposer’s BLACKLANDS MALT mark.
`
`Given that Opposer has successfully policed the usage of the BLACKLANDS MALT mark in the market
`
`place to date, if Applicant obtains registration for the BLACMAND DISTILLERY mark it will provide
`
`Opposer with less recourse to protect the value of its brand against future infringers.
`
`The signatory, being warned that willful false statements and the like are punishable by fine or
`
`imprisonment, or both, under 18 U.S.C. §1001, and that such willfiil false statements and the like
`
`may jeopardize the validity of this submission, declares that all the statements made of his own
`
`knowledge are true and all statements made on information and belief are believed to be true.
`
`Dated: April 22, 2019
`
`W B
`
`RANDON ADE
`
`16
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`

`

`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and complete copy of the foregoing Testimonial Declaration of
`
`Brandon Ade has been served on the Applicant by forwarding said copy on April 22, 2019, via
`
`email to:
`
`
`
`Scott Davison
`MUSICK DAVISON LLP
`12636 High Bluff Drive, Suite 400
`San Diego, California 92130
`scott@mdiplaw.net
`
`This 22nd day of April, 2019.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/ Samantha Ade /
`
`17
`
`

`

`EXHIBIT A
`EXHIBIT A
`
`

`

`TWILL/MESH SNAPBACK BLACK/WHITE
`TWILL/MESH SNAPBACK BLACK/WHITE
`CONFIDENTIAL
`RICHARD‘E‘Bfi-‘EB‘T'AL
`RICHARDSON-112
`
`FBLM_0001818
`FBLM_0001818
`
`
`
`
`
`
`
`TWILL/MESH SNAPBACK RED/WHITE/BLACK
`TWILL/MESH SNAPBACK RED/WHITE/BLACK
`RICHARDSON-112
`RICHARDSON-112
`
`

`

`TWILL/MESH SNAPBACK HEATHER
`TWILUMESIHEEIHAEBACK HEATHER
`CONFIDENTIAL
`GREY/BLACK RICHARDSON-112
`GREY/BLACK R'CHARDSON-“Z
`
`FBLM_0001819
`FBLM_0001819
`Font IS Yanone Kaffeesatz Bold
`
`C
`
`o
`
`9
`
`Across back of: hole embroidered Small Texas flag added to Iefi side
`
`

`

`CONFIDENTIAL
`FBLM_0001821
`http://www.redkap.com/Products/Details/358072?product=Mens-Utility-Uniform-Shirt
`
`Red Kap ST62 Utility Uniform Shirt
`
`

`

`CONFIDENTIAL
`
`FBLM_0001826
`FBLM_0001 826
`
`
`
`

`

`CONFIDENTIAL
`CONFIDENTIAL
`
`FBLM_0001827
`
`
`
`

`

`CONFIDENTIAL
`CONFIDENTIAL
`
`FBLM 0001 828
`FBLM_0001828
`
`
`
`

`

`EXHIBIT B
`EXHIBIT B
`
`

`

`2/5/2018
`
`Jester King Brewery: First Delivery of Texas Malt from Blacklands
`
`FBLM_0000347
`
`Jester King Craft Brewery
`
`HOME | BEERS | BLOG | CONTACT | FAQ | SHOP | TASTING ROOM
`
`First Delivery of Texas Malt from Blacklands
`
`We are excited today to receive our first ever order of Texas malted barley and raw wheat! We
`received a delivery from Blacklands Malt located in Leander, Texas. Blacklands is the first ever
`micro-maltster in Texas. They produce brewing grains with barley and wheat grown in central Texas.
`
`Making beer with a sense of place is of utmost importance to us and our beer making process. We use
`well water and naturally occurring wild yeast and bacteria captured from the air and land where our
`brewery is located to make beer with flavor and aroma derived from the Texas Hill Country. Adding
`barley and wheat grown and malted in central Texas to our beer making equation is something we’re
`very excited about!
`
`http://jesterkingbrewery.com/first-delivery-of-texas-malt-from-blacklands
`
`BLMALT000323
`
`1/3
`
`

`

`2/5/2018
`
`Jester King Brewery: First Delivery of Texas Malt from Blacklands
`
`FBLM_0000348
`
`Malted barley from Blacklands Malt
`
`
`
`
`http://jesterkingbrewery.com/first-delivery-of-texas-malt-from-blacklands
`
`BLMALT000324
`
`2/3
`
`

`

`2/5/2018
`
`Jester King Brewery: First Delivery of Texas Malt from Blacklands
`
`FBLM_0000349
`
`Brandon Ade from Blacklands at Jester King making our first delivery
`
`
`
`
`« On Our Anniversary Party... Pellicle Photos »
`
`TWITTER
`FACEBOOK
`MAILING LIST
`CONTACT
`
`http://jesterkingbrewery.com/first-delivery-of-texas-malt-from-blacklands
`
`BLMALT000325
`
`3/3
`
`

`

`EXHIBIT C
`EXHIBIT C
`
`

`

`
`
`

`

`
`
`->3I—M1HgfiflhflzvFauna."Frag;MI.
`
`
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`pagan:all:j
`
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`v.1.
`
`
`

`

`EXHIBIT D
`EXHIBIT D
`
`

`

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`
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`BLMALT000089
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`

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`FBLM_0000680
`FBLM_0000680
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`
`
`BLMALT000657
`
`

`

`8/20/2018
`
`image%5B4%5D (image)
`
`FBLM_0000682
`
`BLMALT000659
`https://lh3.googleusercontent.com/-YIliVDZksOI/W3QYJZxYkFI/AAAAAAAFujs/dUWHCX4FXuEgim6EWgZ4gHqP9MNzLmevACHMYCw/s1600-h/ima… 1/1
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`

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`7/18/2018
`
`image%5B4%5D (image)
`
`FBLM_0000734
`
`https://lh3.googleusercontent.com/-mdzyuRI4NzE/WeOYzxWJ4DI/AAAAAAAFF9s/DmnNDPitnPwvCxya7EGqQBUONQz5DNJ5wCHMYCw/s1600-h/image%255B4%255D
`
`1/1
`
`BLMALT000711
`
`

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