Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1057797
`
`Filing date:
`
`05/26/2020
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91243647
`
`Party
`
`Correspondence
`Address
`
`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
`
`Submission
`
`Appeal or Cross-Appeal of Final Board Decision
`
`Notice of Appeal
`to
`
`Name of U.S.
`District Court (if
`applicable)
`
`Case Number (if
`known)
`
`Civil Action in United States District Court
`
`Northern District of Texas (Dallas Division)
`
`TXND-3:2020-cv-00971
`
`Certificate of Ser-
`vice
`
`The undersigned hereby certifies that a copy of this filing has been served upon
`all parties, at their address of record by Email on this date.
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Kelly Kubasta
`
`kkubasta@fbfk.law
`
`/Kelly Kubasta/
`
`05/26/2020
`
`txnd-3_2020-cv-00971-00001.pdf(716007 bytes )
`txnd-3_2020-cv-00971-00001-001.pdf(395634 bytes )
`txnd-3_2020-cv-00971-00001-002.pdf(521543 bytes )
`txnd-3_2020-cv-00971-00001-003.pdf(562772 bytes )
`
`

`

`
`
`Case 3:20-cv-00971-K Document 1 Filed 04/20/20 Page 1 of 7 PageID 1Case 3:20-cv-00971-K Document 1 Filed 04/20/20 Page 1 of 7 PageID 1
`
`IN THE UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF TEXAS
` DALLAS DIVISION
`
`
`M DISTILLERY, INC.,
`
`
`
`v.
`
`BLACKLANDS MALT, LLC,
`
`
`
`
`PLAINTIFF,
`
`DEFENDANT.
`
`
`
`
`
`CIVIL ACTION NO. __________________
`
`
`
`
`
`
`
`COMPLAINT FOR DE NOVO REVIEW
`OF DECISION OF TRADEMARK TRIAL AND APPEAL BOARD
`
`Plaintiff M Distillery, Inc. (“M Distillery” or “Plaintiff”) brings this action as against
`
`
`
`Defendant Blacklands Malt, LLC (“Blacklands Malt” or “Defendant”) and alleges as follows in
`
`support of its complaint:
`
`I.
`
`Nature of the Action
`
`1.
`
`This is an action under the Lanham Act, 15 U.S.C § 1071(b), seeking de novo
`
`judicial review of a final decision of the Trademark Trial and Appeal Board (“TTAB”) of the
`
`United States Patent and Trademark Office (“USPTO”). It is filed in connection with a trademark
`
`opposition proceeding captioned Blacklands Malt, LLC v. M Distillery, Inc., Opposition
`
`No. 91243647 (the “Opposition Proceeding”).
`
`2.
`
`By a final decision dated November 18, 2019, and a subsequent order on motion
`
`for reconsideration dated March 31, 2020, the TTAB sustained an opposition by Defendant to
`
`M Distillery’s application to register an intent-to-use trademark under Section 1(b) of 15 U.S.C.
`
`§ 1051(b) for the mark BLACKLAND DISTILLERY (standard characters, “DISTILLERY”
`
`disclaimed) as shown in Application Serial No. 87/731,387 for “distilled spirits” in International
`
`1
`
`

`

`
`
`Case 3:20-cv-00971-K Document 1 Filed 04/20/20 Page 2 of 7 PageID 2Case 3:20-cv-00971-K Document 1 Filed 04/20/20 Page 2 of 7 PageID 2
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`Class 33 (the “Application”). In its final decision (and its order on motion for reconsideration),
`
`the TTAB sustained the opposition on the basis of likelihood of confusion, but dismissed the
`
`opposition on the basis of geographic descriptiveness.
`
`3.
`
`The decision by the TTAB sustaining Defendant’s opposition as to likelihood of
`
`confusion was incorrect and not supported either by the law or the evidence in this matter.
`
`Accordingly, by this action, M Distillery seeks an order from this court reversing and vacating the
`
`referenced TTAB order as to likelihood of confusion and, further, ordering the USPTO to allow
`
`M Distillery’s BLACKLAND DISTILLERY mark to proceed to registration on the Principal
`
`Register.
`
`II.
`
`The Parties
`
`4.
`
`Plaintiff M Distillery, Inc. is a Texas corporation with a principal place of business
`
`located at 7105 Meadowside Road S., Fort Worth, Texas 76132.
`
`5.
`
`Defendant Blacklands Malt, LLC is a Texas limited liability company with a
`
`principal place of business located at 190 N. Bagdad Rd., Bldg. B300, Leander, Texas 78641.
`
`III.
`
`Jurisdiction and Venue
`
`6.
`
`This court has subject matter jurisdiction in this matter pursuant to the Lanham Act,
`
`15 U.S.C. § 1071(b)(1).
`
`7.
`
`This court has personal jurisdiction over M Distillery and Defendant as both parties
`
`are registered Texas entities that do business in the state of Texas.
`
`8.
`
`Venue is proper in this district pursuant to 15 U.S.C. § 1071(b) and 28 U.S.C.
`
`§ 1391(b)(1) as Defendant is deemed to be a resident of the Northern District of Texas pursuant to
`
`28 U.S.C. § 1391(c)(2) and M Distillery maintains its principal place of business within the
`
`Northern District of Texas.
`
`
`
`2
`
`

`

`
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`Case 3:20-cv-00971-K Document 1 Filed 04/20/20 Page 3 of 7 PageID 3Case 3:20-cv-00971-K Document 1 Filed 04/20/20 Page 3 of 7 PageID 3
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`IV.
`
`Background
`
`9.
`
`M Distillery filed its Application on December 21, 2017, seeking registration for
`
`the mark BLACKLAND DISTILLERY on the USPTO’s Principal Register.
`
`10.
`
`The USPTO approved M Distillery’s mark BLACKLAND DISTILLERY for
`
`publication and the mark was published in the Official Gazette for opposition on May 22, 2018.
`
`11.
`
`On June 4, 2018, Defendant requested a 90-day extension of the deadline to oppose
`
`the Application, and the TTAB granted the extension until September 19, 2018.
`
`12.
`
`Thereafter, Defendant instituted an opposition proceeding with the TTAB on
`
`September 17, 2018 (the “Opposition”). The basis of the Opposition as against M Distillery’s
`
`mark BLACKLAND DISTILLERY was two-fold: (1) priority and likelihood of confusion under
`
`15 U.S.C. § 1052(d); and (2) geographic descriptiveness under 15 U.S.C. § 1052(e)(2).
`
`13. With respect to its allegations under 15 U.S.C. § 1052(d) as to priority and
`
`likelihood of confusion, Defendant pleaded
`
`that M Distillery’s mark BLACKLAND
`
`DISTILLERY so resembles Defendant’s mark BLACKLANDS MALT used in association with
`
`“malt for brewing and distilling” as to be likely to cause confusion, or to cause mistake, or to
`
`deceive .1
`
`14.
`
` With respect to its allegations under 15 U.S.C. § 1052(e)(2) as to geographic
`
`descriptiveness, Defendant pleaded that the mark BLACKLANDS MALT and the mark
`
`
`1 Critically, Defendant does not have registered trademarks for the BLACKLANDS MALT marks.
`Following M Distillery’s Application on December 21, 2017, Defendant subsequently filed its
`own applications for the mark BLACKLANDS MALT on April 2, 2018—U.S. Trademark App.
`Ser. No. 87/859,068 for the mark BLACKLANDS MALT (“MALT” disclaimed) and U.S.
`Trademark App. Ser. No. 87/859,071 for the mark BLACKLANDS MALT & Design (“MALT”
`disclaimed), both of which allege use-in-commerce at least as early as December 2013 in
`association with “malt for brewing and distilling” in International Class 31. To date, both of
`Defendant’s later-filed applications remain suspended by the USPTO.
`
`3
`
`

`

`
`
`Case 3:20-cv-00971-K Document 1 Filed 04/20/20 Page 4 of 7 PageID 4Case 3:20-cv-00971-K Document 1 Filed 04/20/20 Page 4 of 7 PageID 4
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`BLACKLAND DISTILLERY consist of the same element of BLACKLAND[S], which Defendant
`
`alleged was primarily geographically descriptive, referring to the “Texas Blackland Prairies”
`
`geographic region.
`
`15.
`
`Following M Distillery’s timely answer to the Opposition, the parties agreed to
`
`utilize the TTAB’s Accelerated Case Resolution (“ACR”) procedure on December 28, 2018.
`
`16.
`
`Pursuant to the agreed-upon ACR procedure, the parties made numerous
`
`stipulations and agreed to a summary judgment format for resolution of the Opposition Proceeding.
`
`17.
`
`Following the filing of physical and testamentary evidence as well as briefing by
`
`the parties, on November 18, 2019, the TTAB issued a decision sustaining Defendant’s Opposition
`
`on the ground that there was a likelihood of confusion between certain of Defendant’s mark
`
`BLACKLANDS MALT marks and M Distillery’s mark BLACKLAND DISTILLERY; however,
`
`the TTAB dismissed Defendant’s Opposition on the grounds of geographic descriptiveness.
`
`Pursuant to its findings, the TTAB denied M Distillery’s registration of the mark BLACKLAND
`
`DISTILLERY. A true and correct copy of the TTAB’s decision (the “Final Decision”) is attached
`
`hereto as Exhibit 1.
`
`18.
`
`Thereafter, on November 27, 2019, M Distillery filed Applicant’s Motion for
`
`Reconsideration Under 37 CFR § 2.129(c) (“Reconsideration”) alleging that the Final Decision
`
`was reached in error for two (2) reasons: (1) the TTAB failed to consider evidence that the TTAB
`
`mistakenly believed was not present in the record; and (2) the TTAB erroneously interpreted the
`
`evidence and authority, which misinterpretation resulted in a misapplication of the requisite factors
`
`for determining whether there was or was not a likelihood of confusion.
`
`19.
`
`By way of summary, throughout the Opposition Proceeding as well as within its
`
`Reconsideration, M Distillery argued that its mark BLACKLAND DISTILLERY is used as a
`
`4
`
`

`

`
`
`Case 3:20-cv-00971-K Document 1 Filed 04/20/20 Page 5 of 7 PageID 5Case 3:20-cv-00971-K Document 1 Filed 04/20/20 Page 5 of 7 PageID 5
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`designator of origin for finished products, i.e., distilled spirits, whereas Defendant’s mark
`
`BLACKLANDS MALT is used in conjunction with merely an ingredient, i.e., malt, used in some
`
`distilled spirits, beer, non-alcoholic beverages, and food products, which finished products are not
`
`actually created or sold by Defendant.
`
`20.
`
`Ultimately, the TTAB maintained its Final Decision and denied M Distillery’s
`
`Reconsideration on March 31, 2020. A true and correct copy of the TTAB’s denial of the
`
`Reconsideration (the “Decision on Reconsideration”) is attached hereto as Exhibit 2.
`
`V.
`
`Claim for De Novo Review and Reversal of TTAB Decision
`
`21.
`
`On November 18, 2019, the TTAB issued its Final Decision, which sustained
`
`Defendant’s Opposition on the ground of likelihood of confusion between Defendant’s mark
`
`BLACKLANDS MALT for “malt for brewing and distilling” in International Class 31 (the subject
`
`of subsequently-filed U.S. Trademark App. Ser. Nos. 87/859,068 and 87/859,071) and M
`
`Distillery’s mark BLACKLAND DISTILLERY for “distilled spirits” in International Class 33 (the
`
`subject of U.S. Trademark App. Ser. No. 87/731,387).
`
`22. M Distillery seeks de novo review of the TTAB’s Final Decision pursuant to the
`
`Lanham Act, 15 U.S.C. § 1071(b).
`
`23.
`
`The decision by the TTAB in the Opposition Proceeding is in error and is not
`
`supported by either the law or the evidence in this matter. Such decision, accordingly, should be
`
`reversed and vacated, and an order should be entered directing the USPTO to register on the
`
`Principal Register M Distillery’s mark BLACKLAND DISTILLERY, Application Serial
`
`No. 87/731,387, for “distilled spirits” used in International Class 33.
`
`24.
`
`Defendant will not be damaged by registration of the BLACKLAND DISTILLERY
`
`mark because there is no substantial likelihood of confusion between the mark BLACKLAND
`
`5
`
`

`

`
`
`Case 3:20-cv-00971-K Document 1 Filed 04/20/20 Page 6 of 7 PageID 6Case 3:20-cv-00971-K Document 1 Filed 04/20/20 Page 6 of 7 PageID 6
`
`DISTILLERY and Defendant’s mark BLACKLANDS MALT as used in association with its
`
`respective goods.
`
`
`
`WHEREFORE, Plaintiff M Distillery, Inc. respectfully requests that:
`
`i.
`
`The Court vacate the November 18, 2019, Final Decision of the TTAB in the
`
`opposition proceeding captioned Blacklands Malt, LLC v. M Distillery, Inc.,
`
`Opposition No. 91243647, and adjudge that M Distillery be entitled to register the
`
`mark BLACKLAND DISTILLERY on the Principal Register in connection with
`
`the goods described in U.S. Trademark App. Ser. No. 87/731,387;
`
`ii.
`
`The Court direct the Commissioner of Trademarks, pursuant to 15 U.S.C.
`
`§ 1071(b), to grant M Distillery’s application to register the mark BLACKLAND
`
`DISTILLERY, U.S. Trademark App. Ser. No. 87/731,387;
`
`iii.
`
`The Court award M. Distillery its costs and attorneys’ fees incurred in this action,
`
`along with such other and further relief as the Court deems just and proper.
`
`
`
`
`
`6
`
`

`

`
`
`Case 3:20-cv-00971-K Document 1 Filed 04/20/20 Page 7 of 7 PageID 7Case 3:20-cv-00971-K Document 1 Filed 04/20/20 Page 7 of 7 PageID 7
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`Dated: April 20, 2020
`
`
`
`
`
`
`
`Respectfully submitted,
`
`FERGUSON BRASWELL FRASER KUBASTA PC
`
`By: /s/ Kelly J. Kubasta
`James E. Davis
`Texas Bar No. 05504200
`Kelly J. Kubasta
`Texas Bar No. 24002430
`Kevin E. Barnett
`Texas Bar No. 24103834
`
`
`2500 Dallas Parkway, Suite 600
`Plano, Texas 75093
`Phone: 972-378-9111
`Fax: 972-378-9115
`Emails: jdavis@fbfk.law
` kkubasta@fbfk.law
` kbarnett@fbfk.law
`
`
`
`
`FOR
`ATTORNEYS
`DISTILLERY, INC.
`
`PLAINTIFF M
`
`
`
`7
`
`
`
`
`
`
`
`
`
`
`
`

`

`
`
`Case 3:20-cv-00971-K Document 1-1 Filed 04/20/20 Page 1 of 36 PageID 8Case 3:20-cv-00971-K Document 1-1 Filed 04/20/20 Page 1 of 36 PageID 8
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`EXHIBIT 1
`
`

`

`
`
`Case 3:20-cv-00971-K Document 1-1 Filed 04/20/20 Page 2 of 36 PageID 9Case 3:20-cv-00971-K Document 1-1 Filed 04/20/20 Page 2 of 36 PageID 9
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`This Opinion is Not a
`Precedent of the TTAB
`
`Mailed: November 18, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`_____
`
`Blacklands Malt, LLC
`v.
`M Distillery, Inc.
`
`
`
`Opposition No. 91243647
`
`
`
`Richard J. Groos and Samantha Porphy Ade of King & Spalding LLP,
`for Blacklands Malt, LLC.
`
`Scott H. Davison of Musick Davison LLP,
`for M Distillery, Inc.
`
`
`
`Before Cataldo, Ritchie and Pologeorgis,
`Administrative Trademark Judges.
`
`Opinion by Cataldo, Administrative Trademark Judge:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Applicant, M Distillery, Inc., seeks registration on the Principal Register of the
`
`mark BLACKLAND DISTILLERY (standard characters, “DISTILLERY” disclaimed),
`
`identifying “distilled spirits” in International Class 33.1
`
`Opposer, Blacklands Malt, LLC, opposes registration, asserting the following
`
`
`1 Application Serial No. 87731387 was filed December 21, 2017, based on Applicant’s
`assertion of a bona fide intention to use the mark in commerce under Section 1(b) of the
`Trademark Act, 15 U.S.C. § 1051(b).
`
`
`
`

`

`
`Case 3:20-cv-00971-K Document 1-1 Filed 04/20/20 Page 3 of 36 PageID 10Case 3:20-cv-00971-K Document 1-1 Filed 04/20/20 Page 3 of 36 PageID 10
`Opposition No. 91243647
`
`claims:
`
`
`
`1. Priority and Likelihood of confusion under Trademark
`Act Section 2(d), 15 U.S.C. § 1052(d); and
`
`2. Geographic descriptiveness under Trademark Act Section
`2(e)(2), 15 U.S.C. § 1052(e)(2).
`
`
`Opposer pleaded the following applications:
`
`
`
`Application Serial No. 87859068 for the mark BLACKLANDS MALT (standard
`
`characters, “MALT” disclaimed), and
`
`
`
`Application Serial No. 87859071 for the mark
`
`(“MALT”
`
`disclaimed), both identifying “malt for brewing and distilling” in International Class
`
`31.2
`
`Applicant denied the salient allegations of the notice of opposition.3
`
`
`2 Both applications were filed on April 2, 2018, based upon an assertion of use in commerce
`since December 2013 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a).
`
`Applicant describes the mark in Application Serial No. 87859071 as follows: The mark
`consists of two concentric circles, the outer circle having a stylized scalloped edge, around a
`picture of a farm scene with a barn and a cultivated field, and a shovel at the front left and
`stalks of cereal grains at the front right, with the words “BLACKLANDS MALT” between
`the two concentric circles in all caps, with “BLACKLANDS” across the top and “MALT” across
`the bottom, with a single seed on either side of the word “MALT.”
`
`3 Answer, 4 TTABVUE. Applicant asserted seven affirmative defenses. In a November 16,
`2018 interlocutory order, the Board struck Applicant’s second through sixth affirmative
`defenses on the ground that they were insufficiently pleaded, and construed Applicant’s first
`and seventh affirmative defenses as mere amplifications of its denials.
`
`- 2 -
`
`

`

`
`Case 3:20-cv-00971-K Document 1-1 Filed 04/20/20 Page 4 of 36 PageID 11Case 3:20-cv-00971-K Document 1-1 Filed 04/20/20 Page 4 of 36 PageID 11
`Opposition No. 91243647
`
`I. Accelerated Case Resolution
`
`The parties agreed to try this case via the Board’s Accelerated Case Resolution
`
`(“ACR”) procedure.4 Specifically, they agreed to forego a traditional trial, and to
`
`proceed on the summary judgment model of ACR, in which each party may submit a
`
`brief with accompanying evidentiary submissions. In addition to stipulating, inter
`
`alia, to certain facts and the use of limited evidence and discovery,5 their stipulation
`
`provides that the Board may resolve any genuine disputes of material facts that may
`
`be found to exist based on the record. See generally Kemi Organics, LLC v. Gupta,
`
`126 USPQ2d 1601, 1602 (TTAB 2018) (describing summary judgment ACR model);
`
`TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 702.04(b)
`
`(2019).
`
`The case is fully briefed.6 As in a traditional Board proceeding, the burden of proof
`
`remains with Opposer, which must establish its case by a preponderance of the
`
`evidence. TBMP § 702.04(a). As noted above, under the terms of the stipulation the
`
`Board may resolve any and all issues of material fact in the course of issuing a final
`
`ruling. See TPI Holdings, Inc. v. TrailerTrader.com, LLC, 126 USPQ2d 1409, 1411
`
`
`4 See stipulation to proceed via ACR, 9 TTABVUE, clarified and approved by the Board, 10
`TTABVUE; and subsequent ACR stipulation, 15 TTABVUE.
`
`5 Stipulations, 9 TTABVUE 2; 15 TTABVUE 2-3.
`
`6 On November 16, 2018, Opposer notified the Board of a state court action brought in Tarrant
`County, Texas involving the parties and marks at issue herein. 6 TTABVUE. In a November
`27, 2018 interlocutory order, the Board deferred consideration of whether to suspend this
`opposition pending the outcome of the Texas court action. 8 TTABVUE. The parties
`subsequently have informed the Board in their stipulation for ACR that no trial date had
`been set in the Tarrant County litigation. 9 TTABUVE. Accordingly, we see no reason to
`delay the determination of this opposition pending the outcome of the Tarrant County state
`court action.
`
`- 3 -
`
`

`

`
`Case 3:20-cv-00971-K Document 1-1 Filed 04/20/20 Page 5 of 36 PageID 12Case 3:20-cv-00971-K Document 1-1 Filed 04/20/20 Page 5 of 36 PageID 12
`Opposition No. 91243647
`
`(TTAB 2018); Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016) (“In order to take
`
`advantage of any form of ACR, the parties must stipulate that the Board may resolve
`
`any genuine disputes of material fact in the context of something less than a full
`
`trial.”). See generally TBMP §§ 528.05(a)(2), 702.04, 705.
`
`II. The Record and Stipulations of Fact
`
`The parties introduced the following evidence by stipulation:7
`
`• The pleadings, including any exhibits and attachments thereto;
`
`• Opposer’s pleaded applications, including any documents in the file
`histories for the applications;
`
`• Applicant’s Opposed application, including all documents in the file history
`for the application; and
`
`
`
` •
`
` Opposer’s application Serial No. 87898729 for the mark BLACKLANDS
`BREWING (standard characters, “BERWING” disclaimed), identifying
`“beer” in International Class 32.8
`
`The parties further submitted the following testimony and evidence:
`
`• Testimony declaration of Mr. Brandon Ade, founder and managing partner
`of Opposer, with exhibits (18 TTABVUE);
`
`• Testimony declaration of Mr. Thomas Mote, Distillery Manager of third-
`party Balcones Distilling, with exhibits (20 TTABVUE);
`
` •
`
` Testimony declaration of Mr. Jeffrey Stuffings, co-founder of third-party
`Jester King Brewery, with exhibits (21 TTABVUE);
`
`• Testimony declaration of Mr. Tim Matthews, Vice President of Global
`Brewing for third-party Canarchy Craft Collective and Brewmaster of
`third-party Oskar Blues Brewery, with exhibits (22 TTABVUE);
`
`
`
`
`
`7 15 TTABVUE 9-225.
`
`8 Filed April 28, 2018 based upon an assertion of a bona fide intent to use intention to use
`the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).
`
`- 4 -
`
`

`

`
`Case 3:20-cv-00971-K Document 1-1 Filed 04/20/20 Page 6 of 36 PageID 13Case 3:20-cv-00971-K Document 1-1 Filed 04/20/20 Page 6 of 36 PageID 13
`Opposition No. 91243647
`
`• Opposer’s notice of reliance upon internet materials, with exhibits (14
`TTABVUE);
`
`• Opposer’s notice of reliance upon discovery responses, with exhibits (16
`TTABVUE);
`
` •
`
` Testimony declaration of Mr. Markus Kypreos, CEO and President of
`Applicant, with exhibits (25 TTABVUE);
`
` •
`
` Applicant’s notice of reliance upon internet materials, including exhibits
`(26 TTABVUE);
`
` •
`
` Applicant’s notice of reliance upon discovery responses, including exhibits
`(27 TTABVUE).
`
`The parties stipulated to the authenticity of all produced documents.9
`
`In addition, the parties stipulated to the following facts:10
`
`1. Opposer manufactures and sells, among other things, raw and malted
`grains.
`
`2. Opposer’s manufacturing facility is located in Leander, Texas.
`
`3. Opposer’s first sale of products bearing the BLACKLANDS MALT mark was
`in December 2013.
`
`4. Opposer has continuously offered
`BLACKLANDS MALT mark since 2013.
`
`5. Opposer receives orders for its raw and malted grains primarily via e-mail
`or telephone.
`
`6. Approximately ninety-eight (98) percent of Opposer’s sales to-date were to
`commercial entities.
`
`7. Malt is an ingredient in beer, some distilled spirits, non-alcoholic beverages
`and food products.
`
`
`for sale products bearing the
`
`
`9 9 TTABVUE 2; 15 TTABVUE 1-2.
`
`10 15 TTABVUE 3-7.
`
`- 5 -
`
`

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`Opposition No. 91243647
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`8. Opposer’s craft malt and raw grains have been sold to and used by brewers
`and distillers to make products such as beer, whisky, vodka, bourbon, and
`other spirits. Opposer also sold grain to a bakery in 2015.
`
`9. Opposer has used the following logo in connection with sales of goods since
`December 2013:
`
`
`
`10. Opposer filed application Serial No. 87859068 on April 2, 2018 for a
`BLACKLANDS MALT word mark in Class 31.
`
`11. Opposer filed application Serial No. 87859071 on April 2, 2018 for a
`BLACKLANDS MALT stylized mark in Class 31.
`
`12. Opposer filed application Serial No. 87898729 on April 28, 2018 for a
`BLACKLANDS BREWING word mark in Class 32.
`
`13. Opposer filed application Serial Nos. 87859068 for the BLACKLANDS
`MALT word mark and 87859071 for the BLACKLANDS MALT stylized mark
`as in-use applications reflecting a first-use date of December 2013. Opposer
`filed Application Serial No. 87898729 for the BLACKLANDS BREWING word
`mark as intent-to-use.
`
`14. Applicant filed application Serial No. 87731387 for a BLACKLAND
`DISTILLERY word mark on December 21, 2017 in Class 33.
`
`15. Applicant disclaimed the exclusive right to the term “DISTILLERY” apart
`from the BLACKLAND DISTILLERY mark.
`
`16. Applicant’s application Serial No. 87731387 was filed as intent-to-use.
`
`17. Applicant’s distillery and tasting room is located in Fort Worth, Texas.
`
`18. Applicant sells distilled spirits including bourbon, gin, rye whiskey and
`vodka, as well as mixed drinks and food items.
`
`19. Applicant first became aware of Blacklands Malt on December 19, 2017.
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`Opposition No. 91243647
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`20. Other than applications filed by Applicant and Opposer, there are no other
`applications or registrations for “Blackland” or “Blacklands” that reference
`brewing or distilling.
`
`21. Applicant has used the following logo in connection with the sale of its
`goods:
`
`
`22. The term “Blackland” in the BLACKLAND DISTILLERY mark was
`derived from the Blackland Prairies Ecoregion of Texas.
`
`23. The term “Blackland” in the BLACKLANDS MALT name was inspired by
`the Blackland Prairies Ecoregion of Texas.
`
`24. Many of Applicant’s customers have inquired about the meaning of the
`name “Blackland.”
`
`25. Many of Opposer’s customers have inquired about the meaning of the name
`“Blacklands.”
`
`26. Among other places, distilled spirits are sold in bars, grocery stores,
`restaurants, and liquor stores.
`
`27. Among other places, beer is sold in bars, grocery stores, restaurants, and
`liquor stores.
`
`28. Malt is not sold in bars, grocery stores, restaurants or liquor stores.
`
`29. Purchasers of malt are not the type of consumers who purchase on impulse.
`
`30. Malt and distilled spirits are not sold through the same channels of trade.
`
`31. Applicant is located near the Blackland Prairies Ecoregion of Texas.
`
`32. Applicant is located in Tarrant County, Texas, portions of which are in the
`Blackland Prairies Ecoregion of Texas.
`
`33. Opposer is located near the Blackland Prairies Ecoregion of Texas.
`
`34. Opposer is located in Williamson County, Texas, portions of which are in
`the Blackland Prairies Ecoregion of Texas.
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`Opposition No. 91243647
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`35. The boundaries of the Blackland Prairies Ecoregion of Texas are unclear.
`
`For efficiency, we focus on Opposer’s pleaded application Serial No. 87859068 for
`
`the mark BLACKLANDS MALT in standard characters with “MALT” disclaimed,
`
`identifying “malt for brewing and distilling,” in Class 31. We consider the mark and
`
`goods in this application most relevant to the likelihood of confusion analysis. See In
`
`re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
`
`III. Standing
`
`Opposer must prove standing by showing a real interest in the outcome of the
`
`proceeding and a reasonable basis for believing that it would suffer damage if the
`
`mark is registered. See 15 U.S.C. § 1063; Empresa Cubana Del Tabaco v. Gen. Cigar
`
`Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014). In order to meet the
`
`standing requirement, a plaintiff need only show that it has a real interest, i.e., a
`
`personal stake, in the outcome of the proceeding. See Ritchie v. Simpson, 170 F.3d
`
`1092, 50 USPQ2d 1023, 1026 (Fed. Cir. 1999); Jewelers Vigilance Committee, Inc. v.
`
`Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2012, 2023-24 (Fed. Cir. 1987).
`
`In this case, the Examining Attorney assigned to Opposer’s pleaded applications
`
`cited Applicant’s involved application as a potential bar to registration.11 Thus,
`
`Opposer has standing based on the Trademark Examining Operation’s action taken
`
`in regard to its pleaded applications. Fiat Group Automobiles S.p.A. v. ISM Inc. 94
`
`USPQ2d 1111 (TTAB 2010). See also Life Zone Inc. v. Middleman Group Inc., 87
`
`
`11 15 TTABVUE 13-18; 39-45; 76-81; 102-107.
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`Opposition No. 91243647
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`USPQ2d 1953 (TTAB 2008) (standing found based on opposer’s ownership of pending
`
`trademark application and Office action which resulted in suspension of its
`
`application due to involved application being cited as a potential bar to registration).
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`IV. Priority
`
`The question of priority is an issue in this case because Opposer has asserted
`
`ownership of two prior trademark applications for the mark BLACKLANDS MALT
`
`and does not own an existing registration upon which it can rely under Section 2(d).
`
`Cf., e.g., King Candy Co., Inc. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182
`
`USPQ 108 (CCPA 1974). A party may establish prior proprietary rights in a mark
`
`through an earlier constructive filing date accorded to the party’s own registration
`
`or application, actual use, or through use analogous to trademark use that creates a
`
`public awareness of the designation as a trademark identifying the party as a source.
`
`See Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1022 (TTAB 2009).
`
`To establish priority on its likelihood of confusion claim under Section 2(d) of the
`
`Trademark Act, Opposer must prove that, vis-à-vis Applicant, it owns “a mark or
`
`trade name previously used in the United States . . . and not abandoned.” Here,
`
`Opposer must prove prior proprietary rights based on prior common-law use.
`
`To establish priority, the petitioner must show proprietary
`rights in the mark that produce a likelihood of confusion.
`Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317,
`1320, 209 USPQ 40, 43 (CCPA 1981). These proprietary
`rights may arise from . . . prior trademark or service mark
`use, prior use as a trade name, prior use analogous to
`trademark or service mark use, or any other use sufficient
`to establish proprietary rights.
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`Opposition No. 91243647
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`Herbko Int’l Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1378 (Fed.
`
`Cir. 2002).
`
`A party challenging registration of a trademark due to a likelihood of confusion
`
`with its own unregistered term cannot prevail unless it shows that its term is
`
`distinctive of its services, whether inherently, through the acquisition of secondary
`
`meaning, or through “‘whatever other type of use may have developed a trade
`
`identity.’” Towers v. Advent Software Inc., 913 F.2d 942, 16 USPQ2d 1039, 1041 (Fed.
`
`Cir. 1990) (quoting Otto Roth, 209 USPQ at 43). Thus, in order to prevail, Opposer
`
`must establish that its mark BLACKLANDS MALT is distinctive, either inherently
`
`or through acquired distinctiveness, and that
`
`its use and acquisition of
`
`distinctiveness predates Applicant’s acquisition of proprietary rights.
`
`Applicant does not appear to contest Opposer’s priority. The parties have
`
`stipulated above that “Opposer’s first sale of products bearing the BLACKLANDS
`
`MALT mark was in December 2013;” and that “Opposer has continuously offered for
`
`sale products bearing the BLACKLANDS MALT mark since 2013.”12 Applicant did
`
`not argue that BLACKLANDS MALT lacks inherent distinctiveness and, as
`
`discussed below, we find it to be suggestive and, thus inherently distinctive.13
`
`Furthermore, it is well-settled that in the absence of any evidence of earlier use,
`
`the earliest date upon which an applicant may rely is the filing date of its challenged
`
`application. See Trademark Act Section 7(c), 15 U.S.C. §1057(c). See also Syngenta
`
`
`12 15 TTABVUE 3.
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`13 Opposer argues that its BLACKLANDS MALT mark is inherently distinctive and, in the
`alternative, that it has acquired distinctiveness. 24 TTABVUE 11-16.
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`Opposition No. 91243647
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`Crop Prot. Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1119 (TTAB 2009) (“applicant may
`
`rely without further proof upon the filing date of its application as a ‘constructive use’
`
`date for purposes of priority.”); Larami Corp. v. Talk to Me Programs, Inc., 36
`
`USPQ2d 1840 (TTAB 1995). Applicant filed the involved application on December 21,
`
`2017 based upon its claim of a bona fide intent to use the mark in commerce under
`
`Trademark Act Section 1(b), 15 U.S.C. § 1051(b), and has not asserted an earlier date
`
`of first use.
`
`Therefore, we find that Opposer has met its burden of showing by a preponderance
`
`of the evidence that it first used the mark BLACKLANDS MALT in connection with
`
`its goods prior to Applicant’s constructive first use.
`
`V. Likelihood of Confusion
`
`The determination under Section 2(d) involves an analysis of all of the probative
`
`evidence of record bearing on a likelihood of confusion. In re E.I. DuPont de