Brooklyn Brewery Corporation v. Brooklyn Brew Shop, LLC

Case: 20-2277 Document: 43 Page: 1 Filed: 10/27/2021

United States Court of Appeals
for the Federal Circuit
______________________

BROOKLYN BREWERY CORPORATION,
Appellant

v.

BROOKLYN BREW SHOP, LLC,
Appellee
______________________

2020-2277
______________________

Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in Nos.
91223982, 92062838.
______________________

Decided: October 27, 2021
______________________

JOHN JAY DABNEY, I, Snell & Wilmer LLP, Washington,
DC, argued for appellant. Also represented by MARY
HALLERMAN.

SEAN REEVES MARSHALL, Hoffmann Marshall Strong
LLP, New York, NY, argued for appellee. Also represented
by CHARLES DAVISON HOFFMANN.
______________________

Before DYK, O’MALLEY, and HUGHES, Circuit Judges.
DYK, Circuit Judge.
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2 BROOKLYN BREWERY CORPORATION v.
BROOKLYN BREW SHOP, LLC

The Brooklyn Brewery Corporation (“Brewery”) ap-
peals a decision of the Trademark Trial and Appeal Board
(the “Board”). Brewery petitioned to cancel Brooklyn Brew
Shop, LLC’s (“BBS”) registration of the mark “BROOKLYN
BREW SHOP,” in standard characters, for goods identified
as “Beer making kit[s]” in Class 32 (the “Cancellation”),
and opposed BBS’s application to register a stylized version
of the same mark for beer-making kits in Class 32 and san-
itizing preparations for household use in Class 5 (the “Op-
position”).
We affirm the Board’s denial of Brewery’s petition for
cancellation. As for the Opposition, we dismiss the appeal
as to the Class 5 goods for lack of standing. We vacate and
remand in part because we find the Board erred by not en-
tering judgment in favor of Brewery on the Class 32 goods
deleted from BBS’s application. As to the remaining goods
in Class 32 (beer-making kits), we affirm the Board’s dis-
missal of the claim that, under Section 2(d), the mark is
likely to cause confusion. We vacate and remand with re-
spect to the descriptiveness issue under Section 2(e)(1), be-
cause the Board erred by not reaching Brewery’s claim that
the applied-for mark lacked acquired distinctiveness under
Section 2(f) as to the beer-making kits, but affirm the
Board’s refusal to consider geographic descriptiveness un-
der Section 2(e)(2).
BACKGROUND
Appellant Brewery is in the business of brewing and
selling craft beer. Its beers, which include lagers, pilsners,
and brown ales, are sold to thousands of retailers through-
out the United States, including Whole Foods Market and
Total Wine & More. For more than thirty years, Brewery
has used the marks BROOKLYN and BROOKLYN
BREWERY in connection with the advertising, promotion,
and sale of Brewery’s beer and beer-related merchandise.
Among other registrations, Brewery owns Registration
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BROOKLYN BREW SHOP, LLC

No. 3,186,503 for BROOKLYN BREWERY for beer in
Class 32, 1 registered in 2006.
As its name would suggest, appellee BBS was founded
in Brooklyn, New York, in 2009. BBS is in the business of
selling kits for making beer, as well as for wine and hard
cider (hereinafter “beer-making kits”). Each kit contains
brewing equipment, a cleaning sanitizer, and ingredients
to make a one-gallon batch of a particular beer. BBS also
sells accessories for its beer-making kits, including addi-
tional sanitizer packets. Although it began as a mom-and-
pop shop selling kits at a local market, BBS’s business has
blossomed over the last ten years, now distributing beer-
making kits in all fifty states. BBS sells its kits online and
through retail stores such as Bed Bath & Beyond, Whole
Foods Market, and Macy’s. Between 2011 and 2015, Brew-
ery and BBS partnered on a number of projects, including
the sale of co-branded beer making kits.
On February 18, 2011, BBS applied for registration of
the mark BROOKLYN BREW SHOP in standard character
format in Class 32 for “Beer making kit[s],” claiming first
use in March 2009. During prosecution, BBS disclaimed
“exclusive right to use ‘BROOKLYN BREW’ apart from the
mark,” and on October 4, 2011, the U.S. Patent and

1 The various international trademark classes are
established by the Committee of Experts of the Nice Union
and set forth in the International Classification of Goods
and Services for the Purposes of the Registration of
Marks (10th ed. 2011), published by the World Intellectual
Property Organization (“WIPO”). See USPTO, NICE
AGREEMENT TENTH EDITION - GENERAL REMARKS, CLASS
HEADINGS AND EXPLANATORY NOTES - VERSION 2012,
https://www.uspto.gov/trademarks/trademark-updates-
and-announcements/nice-agreement-tenth-edition-gen-
eral-remarks-class.
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Trademark Office (“PTO”) issued Registration
No. 4,034,439 on the Principal Register (the “’439 Registra-
tion”). J.A. 666.
Nearly three years later, on May 14, 2014, BBS filed
U.S. Trademark Application Serial No. 86,280,776 (the
“’776 Application”) to register the mark BROOKLYN
BREW SHOP, stylized as shown below:

Unlike the ’439 Registration, which was limited to Class 32
for “Beer making kit[s],” the ’776 Application sought regis-
tration for a wide variety of goods in Class 32. It identified:
Alcohol-free beers; Beer; Beer making kit; Beer
wort; Beer, ale and lager; Beer, ale and porter;
Beer, ale, lager, stout and porter; Beer, ale, lager,
stout, porter, shandy; Beer-based cocktails; Black
beer; Brewed malt-based alcoholic beverage in the
nature of a beer; Coffee-flavored beer; De-alcohol-
ised beer; Extracts of hops for making beer; Fla-
vored beers; Ginger beer; Hop extracts for
manufacturing beer; Imitation beer; Malt beer;
Malt extracts for making beer; Malt liquor; Non-al-
coholic beer; Non-alcoholic beer flavored beverages;
Pale beer; Porter; Processed hops for use in making
beer; Root beer, in International Class 32.
J.A. 8, 669–72. It also sought registration for “Sanitizing
preparations for household use, in International Class 5.”
J.A. 670. The application disclaimed “BREWSHOP” and
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claimed acquired distinctiveness under Section 2(f) of the
Lanham Act, 15 U.S.C. § 1052(f). 2
In late 2015, Brewery filed a Petition for Cancellation
of the ’439 Registration and a Notice of Opposition to the
’776 Application, which were consolidated by the Board.
Brewery challenged the registered and applied-for marks
based on the following violations of the Lanham Act, 15
U.S.C. §§ 1051 et seq.: (1) the marks were “likely to cause
confusion” with Brewery’s marks under Section 2(d),
§ 1052(d); and (2) the marks were merely descriptive under
Section 2(e)(1), § 1052(e)(1), and lacked acquired distinc-
tiveness under Section 2(f) at the time of registration.
In its answers, BBS denied Brewery’s allegations and,
as to the Section 2(d) (likelihood-of-confusion) claims, as-
serted the affirmative defenses of laches, acquiescence, and
equitable estoppel based on the parties’ “substantial coex-
istence without any confusion” or prior challenge to BBS’s
marks by Brewery. BBS also moved to amend the ’776 Ap-
plication to delete all but “Beer making kit[s]” from the
goods identified under Class 32. Brewery opposed BBS’s
motion to amend and the Board deferred ruling on it.
Brewery filed a motion for summary judgment on its peti-
tion to cancel the ’439 Registration, raising for the first
time a claim that the registered mark was primarily geo-
graphically descriptive under Section 2(e)(2) of the Lan-
ham Act, 15 U.S.C. § 1051(e)(2). The Board found Brewery
had not adequately pled the claim and denied summary
judgment.
On August 10, 2020, the Board issued a final written
decision denying the Petition for Cancellation and

2 BBS also sought registration for goods in Class 21
(beverage glassware). The Board sustained Brewery’s op-
position with respect to Class 21 and that determination is
not at issue on appeal.
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sustaining in part and rejecting in part the Opposition. See
Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC,
Opp’n No. 91223982, 2020 WL 4673282, at *35 (TTAB Aug.
10, 2020) (“Decision”). With respect to the Opposition, the
Board (1) granted BBS’s motion to amend the ’776 Applica-
tion to limit the Class 32 goods to “Beer making kit[s]” (but
did not enter judgment in that respect); (2) rejected Brew-
ery’s Section 2(d) (likelihood-of-confusion) claim in the Op-
position as to the Class 5 goods (sanitizing preparations)
for failure to show likelihood of confusion, and rejected the
Section 2(d) claim as to the remaining Class 32 goods (beer-
making kits) in both the Cancellation and the Opposition
because the defenses of laches and acquiescence applied
and Brewery failed to prove inevitable confusion; (3) dis-
missed Brewery’s geographic descriptiveness claims under
Section 2(e)(2) on the ground that they had not been ade-
quately pled; and (4) rejected Brewery’s claims under Sec-
tion 2(e)(1) (descriptiveness) for failure to establish that
the marks were merely descriptive.
Brewery appeals. We have jurisdiction pursuant to
28 U.S.C. § 1295(a)(4)(B).
DISCUSSION
I. Brewery’s Standing as to the Class 5 Goods
BBS argues that Brewery lacks both Article III and
statutory standing to appeal the Board’s decision dismiss-
ing the Opposition as to the Class 5 goods (sanitizing prep-
arations). Although we have not yet had occasion to
address Article III standing in a trademark case, our cases
in the patent context have made clear that the statute does
not set forth the exclusive test for standing when a decision
of an administrative agency is appealed in federal court.
The appellant must also satisfy the requirements of Article
III. See, e.g., Phigenix, Inc. v. Immunogen, Inc., 845 F.3d
1168 (Fed. Cir. 2017); see also Consumer Watchdog v. Wis.
Alumni Rsch. Found., 753 F.3d 1258, 1261 (Fed. Cir. 2014)
(“[A]lthough Article III standing is not necessarily a
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requirement to appear before an administrative agency
[such as the TTAB], once a party seeks review in a federal
court, ‘the constitutional requirement that it have standing
kicks in.’” (quoting Sierra Club v. EPA, 292 F.3d 895, 899
(D.C. Cir. 2002))). This is because Article III of the U.S.
Constitution limits federal courts to hearing “Cases” or
“Controversies,” U.S. Const. art. III, § 2, cl. 1, and “Con-
gress cannot erase Article III’s standing requirements by
statutorily granting the right to sue to [an appellant] who
could not otherwise have standing,” Phigenix, 845 F.3d at
1175 (quoting Raines v. Byrd, 521 U.S. 811, 820 n.3 (1997)).
Accordingly, we must address Article III standing.
A
“To meet the constitutional minimum for standing, the
party seeking to invoke federal jurisdiction must satisfy
three requirements.” Consumer Watchdog, 753 F.3d at
1260–61 (citing Lujan v. Defs. of Wildlife, 504 U.S. 555, 560
(1992)). First, the party must show that it has suffered an
“injury in fact” that is both “concrete and particularized”
and “actual or imminent.” Lujan, 504 U.S. at 560–61 (in-
ternal quotation marks omitted). Second, it must show
that the injury is fairly traceable to the challenged action.
Id at 560. And third, the party must show that it is “likely,”
rather than “merely speculative,” that a favorable judicial
decision will redress the injury. Id. at 561 (internal quota-
tion marks omitted). Although certain of these require-
ments, “namely immediacy and redressability,” may be
relaxed “where Congress has accorded a procedural right
to a litigant,” Consumer Watchdog, 753 F.3d at 1261 (citing
Massachusetts v. EPA, 549 U.S. 497, 517–18 (2007)), the
“requirement of injury in fact is a hard floor of Article III
jurisdiction that cannot be removed by statute,” id. (quot-
ing Summers v. Earth Island Inst., 555 U.S. 488, 497
(2009)).
As the party seeking judicial review of the Board’s de-
cision in this case, Brewery is required to “supply the
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8 BROOKLYN BREWERY CORPORATION v.
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requisite proof of an injury in fact” to satisfy the Article III
standing requirements. Phigenix, 845 F.3d at 1172. The
Supreme Court has held that an injury in fact must be both
“concrete and particularized.” Spokeo, Inc. v. Robins, 136
S. Ct. 1540, 1545 (2016) (quoting Friends of the Earth, Inc.
v. Laidlaw Env’t Servs. (TOC), Inc., 528 U.S. 167, 180–81
(2000)). Injuries that are “‘conjectural’ or ‘hypothetical’”
will not provide standing. Lujan, 504 U.S. at 560 (quoting
Whitmore v. Arkansas, 495 U.S. 149, 155 (1990)).
Our cases in the patent area establish that “in order to
demonstrate the requisite injury [for Article III standing]
in an [inter partes review] appeal, the appellant/petitioner
must show that it is engaged or will likely engage ‘in an[]
activity that would give rise to a possible infringement
suit,’” JTEKT Corp. v. GKN Auto. Ltd., 898 F.3d 1217, 1220
(Fed. Cir. 2018) (third alteration in original) (quoting Con-
sumer Watchdog, 753 F.3d at 1262); that it “has contractual
rights that are affected by a determination of patent valid-
ity,” id.; or that it would suffer some other concrete and
particularized injury. Speculation about “‘possible future
injury’” is not sufficient. Momenta Pharms., Inc. v. Bristol-
Myers Squibb Co., 915 F.3d 764, 767 (Fed. Cir. 2019) (quot-
ing Clapper v. Amnesty Int’l USA, 568 U.S. 398, 409
(2013)).
To establish injury in fact in a trademark case, an op-
poser must demonstrate a concrete and particularized risk
of interference with the rights that flow to it from registra-
tion of its own mark, or some other Article III injury. This
does not require that an opposer show that it faces a risk
of potential trademark infringement liability, though that
could be sufficient to establish standing. It may also estab-
lish standing by showing that if a mark is not canceled, or
if an application is granted, the very registration and use
of the mark would cause the opposer concrete and particu-
larized harm.
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Thus, the test for likelihood-of-confusion or descriptive-
ness purposes is whether the challenger and registrant
compete in the same line of business and failure to cancel
an existing mark, or to refuse registration of a new mark,
would be likely to cause the opposer competitive injury. To
be clear, an opposer cannot show standing by merely show-
ing the registrant competes with the opposer and receives
a benefit from an unlawful trademark. See Already, LLC
v. Nike, Inc., 568 U.S. 85, 96–100 (2013) (“Taken to its log-
ical conclusion, the theory seems to be that a market par-
ticipant is injured for Article III purposes whenever a
competitor benefits from something allegedly unlawful—
whether a trademark, the awarding of a contract, a land-
lord-tenant arrangement, or so on. We have never accepted
such a boundless theory of standing.”). A more particular-
ized showing of harm is required. Id.
B
Here, Brewery never explains how granting the appli-
cation to register the mark for sanitizing preparations in
Class 5 would cause Brewery to suffer an Article III injury.
To be sure, BBS’s sanitizing preparations are used in con-
nection with beer-making kits. But Brewery does not make
or sell sanitizing preparations. The Board found that “san-
itizing preparations are only peripherally related to beer-
making kits, much less beer” and that there was no indica-
tion in the record that “[BBS’s] sanitizing preparations for
household use—particularly when sold individually—are
likely to travel in the same channels of trade . . . as [Brew-
ery’s] beer.” Decision, 2020 WL 4673282, at *20.
When pressed on this issue at oral argument on appeal,
Brewery urged that it would suffer possible injury if it were
ever to expand its business to the sale of sanitizing prepa-
rations. See Oral Arg. 02:50–02:57, available at
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20-
2277_08302021.mp3. Brewery did not provide any details
of a concrete plan for such expansion of its business, nor is
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there anything in the record indicating that Brewery pres-
ently has such plans or any interest in making or selling
sanitizing preparations. Such hypothetical future possible
injury is insufficient to establish Article III standing. See
Spokeo, 136 S. Ct. at 1548 (“To establish injury in fact, a[n
appellant] must show that he or she suffered ‘an invasion
of a legally protected interest’ that is ‘concrete and partic-
ularized’ and ‘actual or imminent, not conjectural or hypo-
thetical.’” (emphasis added) (quoting Lujan, 504 U.S. at
560)); see also JTEKT Corp., 898 F.3d at 1221 (“[W]here
the party relies on potential infringement liability as a ba-
sis for injury in fact, but is not currently engaging in in-
fringing activity, it must establish that it has concrete
plans for future activity that creates a substantial risk of
future infringement or [would] likely cause the patentee to
assert a claim of infringement.”). Because Brewery lacks
Article III standing to oppose the ’776 Application as to the
sanitizing preparations under Class 5, we dismiss its ap-
peal as to those goods.
BBS appropriately does not raise a challenge to Brew-
ery’s Article III standing to seek cancellation or oppose reg-
istration of its mark for beer-making kits. 3 Brewery need
not prevail on the merits to establish standing. Warth v.
Seldin, 422 U.S. 490, 500 (1975) (“[S]tanding in no way de-
pends on the merits of the plaintiff’s contention that par-
ticular conduct is illegal.”); see also Ariz. State Legis. v.
Ariz. Indep. Redistricting Comm’n, 576 U.S. 787, 800
(2015) (“One must not ‘confus[e] weakness on the merits
with absence of Article III standing.’” (quoting Davis v.
United States, 564 U.S. 229, 249 n.10 (2011))). As the

3 BBS does characterize as a standing issue its argu-
ment that Brewery cannot challenge dismissal of the Op-
position as to the beer-making kits if we affirm the Board’s
denial of the Cancellation, but that is more appropriately a
merits issue, which we address below in Section IV.C.
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Board found, beer-making kits are related to beer and to
some extent compete with beer since they are sold in many
of the same stores. The Board found that “[t]he classes of
consumers for [BBS’s] beer-making kits and [Brewery’s]
beer [are] overlapping.” Decision, 2020 WL 4673282,
at *20. Although “[t]he population of beer drinkers willing
to brew their own beer likely is small as compared to the
overall population of beer drinkers,” the Board observed,
“they are nevertheless part of the same larger beer-drink-
ing group.” Id. The Board noted that BBS’s marks were
“more similar than dissimilar in overall appearance,
sound, connotation, and commercial impression,” id. at
*24, and that Brewery submitted a “great deal” of evidence
purporting to show many instances of actual confusion
among consumers, id. at *25. Also, Brewery in the past
was involved in the sale of co-branded beer-making kits.
This is sufficient to establish Brewery’s standing to chal-
lenge the existing and applied-for marks for beer-making
kits.
C
We need not address statutory standing separately.
The Supreme Court has clarified that there are certain is-
sues that are discussed in terms of “standing” that are
more appropriately viewed as requirements for establish-
ing a statutory cause of action. Lexmark Int’l, Inc. v. Static
Control Components, Inc., 572 U.S. 118, 128 n.4 (2014). As
relevant here, Section 13 of the Lanham Act provides:
Any person who believes that he would be damaged
by the registration of a mark upon the principal
register, . . . may, upon payment of the prescribed
fee, file an opposition in the Patent and Trademark
Office, stating the grounds therefor . . . .
15 U.S.C. § 1063(a); see also id. § 1071(a)(1) (allowing any
“party to an opposition proceeding . . . dissatisfied with the
decision of . . . the Trademark Trial and Appeal Board” to
appeal to this court). In contrast to Article III standing,
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where we are required to determine whether standing ex-
ists, see DaimlerChrysler Corp. v. Cuno, 547 U.S. 332, 341
(2006), the issue of whether a plaintiff has satisfied the
statutory requirements need not be addressed if not raised
by the parties, see June Med. Servs. LLC v. Russo, 140 S.
Ct. 2103, 2117–18 (2020) (explaining that “prudential”
standing arguments can be forfeited or waived). Since BBS
has not raised the statutory issue with respect to Class 32
beer-making kits, we need not address whether Brewery
has satisfied the statutory requirements in that respect.
II. BBS’s Motion to Amend the ’776 Application
Brewery contends that the Board erred by failing to en-
ter judgment against BBS on the Class 32 goods deleted
from the ’776 Application, including beer, when it granted
BBS’s motion to amend. Section 18 of the Lanham Act, 15
U.S.C. § 1068, gives the Board authority to, among other
things, “modify the application or registration by limiting
the goods or services specified therein.” Pursuant to that
authority, and in conjunction with a motion to amend, a
defendant may assert an affirmative defense by moving to
restrict its goods or services to avoid any likelihood of con-
fusion alleged by the plaintiff. See 15 U.S.C. § 1068; 37
C.F.R. § 2.133; Trademark Trial & Appeal Board Manual
of Procedure (“TBMP”) § 514.
“In determining whether to accept a proposed amend-
ment to an identification that, while contested, is otherwise
acceptable, the Board looks to see whether” several circum-
stances are satisfied, including that the “applicant [] con-
sent[s] to the entry of judgment on the grounds for
opposition with respect to the broader identification of
goods.” Johnson & Johnson v. Stryker Corp., 109
U.S.P.Q.2d 1077, 2013 WL 6664934, at *2 (TTAB 2013).
BBS provided that consent here, and in response, the
Board granted its motion to amend. The Board did not,
however, enter the judgment to which BBS consented. Its
failure to do so appears to be inadvertent and is
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inconsistent with its practice. See, e.g., Univ. of Ky. v. 40-
0, LLC, 2021 WL 839189, at *10 (TTAB Mar. 4, 2021) (en-
tering judgment for opposer on goods deleted from applica-
tion). The purpose of entering judgment on the deleted
goods is to “preclude [BBS] from seeking to register its
mark at a later date for the goods . . . deleted from the orig-
inal identification.” Int’l Harvester Co. v. Int’l Tel. & Tel.
Corp., 208 U.S.P.Q 940, 1980 WL 30179, at *2 (TTAB
1980). BBS makes no argument as to why entry of judg-
ment on the deleted goods would be inappropriate, imply-
ing instead that formal entry of judgment is unnecessary.
On remand, the Board should enter judgment in favor of
Brewery as to the items deleted from the ’776 Application.
III. Brewery’s Likelihood-of-Confusion Claims
Brewery next argues that the ’439 Registration for
beer-making kits should be cancelled and the application
to register the mark for beer-making kits should be denied
because of likelihood of confusion. Under Section 2(d) of
the Lanham Act, the PTO may refuse to register a trade-
mark that so resembles a registered mark “as to be likely,
when used on or in connection with the goods of the appli-
cant, to cause confusion, or to cause mistake, or to deceive.”
15 U.S.C. § 1052(d).
Before the Board, BBS successfully argued that the de-
fenses of laches and acquiescence applied to Brewery’s Sec-
tion 2(d) claims in the Cancellation and as to the beer-
making kits in the Opposition. The defense of laches in a
trademark proceeding “requires a showing of undue delay
in asserting rights against a claimant to a conflicting mark
and prejudice resulting therefrom.” Nat’l Cable Television
Ass’n, Inc. v. Am. Cinema Eds., 937 F.2d 1572, 1580 (Fed.
Cir. 1991). And to establish acquiescence, the Board re-
quires a defendant to prove that the plaintiff’s conduct
amounted to an assurance to defendant, “either express or
implied[,] that plaintiff w[ould] not assert [its] trademark
rights against the defendant.” CBS, Inc. v. Man’s Day
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Publ’g Co., 205 U.S.P.Q 470, 1980 WL 30129, at *5 (TTAB
1980); see also Coach House Rest. Inc. v. Coach & Six Rests.,
Inc., 934 F.2d 1551, 1558 (11th Cir. 1991) (setting forth test
for acquiescence in trademark cases).
Here, the Board found that Brewery’s more than four-
year delay in bringing an action was unreasonable given
that Brewery “was long aware of the nationwide sales of
[BBS’s] beer-making kits.” Decision, 2020 WL 4673282, at
*14. Between 2011 and 2016, Brewery publicly collabo-
rated with BBS on the sale of “co-branded beer-making
kits, books on beer making, and educational programs on
beer making.” Id. at *15. During that time, the Board
found, “[Brewery] actively represented that it would not as-
sert a right or a claim against [BBS’s] use of its
BROOKLYN [BREW] SHOP mark in connection with beer-
making kits.” Id. Finding no valid excuse for Brewery’s
delay in asserting its rights that could outweigh the mate-
rial prejudice BBS would suffer from the delay, the Board
held the defenses were applicable in this case.
As a result, Brewery could not overcome the defenses
and prevail on its Section 2(d) claims as to the beer-making
kits unless it established “inevitable confusion.” See Aus-
tralian Therapeutic, 965 F.3d at 1372; see also Ultra-White
Co., Inc. v. Johnson Chem. Indus., Inc., 465 F.2d 891, 893–
94 (CCPA 1972) (finding six-year delay in filing a petition
to cancel did not make a laches defense where confusion
was inevitable). After a thorough review of the evidence,
the Board concluded that Brewery failed to establish inev-
itable confusion and dismissed the Section 2(d) claims in
both the Cancellation and Registration as to the beer-mak-
ing kits.
A
On appeal, as to the ’439 Registration, Brewery does
not argue that the Board’s determination that the defenses
of laches and acquiescence were available to BBS was er-
roneous. Rather, it argues the Board erred in applying the
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equitable defenses to the Opposition. Laches and acquies-
cence are generally not available as defenses in an opposi-
tion proceeding, given that the clock for laches begins to
run from the date the application is published for opposi-
tion. See Nat’l Cable Television Ass’n, 937 F.2d at 1582.
This court has recognized an exception to that rule, how-
ever, where a “defense in an opposition . . . [is] based upon
the Opposer’s failure to object to an Applicant’s registra-
tion of substantially the same mark.” Lincoln Logs Ltd. v.
Lincoln Pre-Cut Log Homes, Inc., 971 F.2d 732, 734 (Fed.
Cir. 1992). Thus, “a laches defense in an opposition pro-
ceeding may be based upon [an] opposer’s failure to object
to an applicant’s earlier registration of substantially the
same mark for substantially the same goods.” Aquion Part-
ners Ltd. P’ship v. Envirogard Prods. Ltd., 43 U.S.P.Q.2d
1371, 1997 WL 424968, at *3 (TTAB 1997).
Applying that standard to the facts of this case, the
Board concluded that laches applied “as a defense in the
opposition proceeding as to the beer-making kits.” Deci-
sion, 2020 WL 4673282, at *11 (citing Aquion Partners, 43
U.S.P.Q.2d at 1373). We review the Board’s ruling with
respect to equitable defenses for abuse of discretion.
Bridgestone/Firestone Rsch., Inc. v. Auto. Club de l’Quest
de la France, 245 F.3d 1359, 1361 (Fed. Cir. 2001). “Abuse
of discretion will lie when the [Board’s] decision rests on an
error of law or on erroneous findings of fact, or if the deci-
sion manifests an unreasonable exercise of judgment in
weighing relevant factors.” Id.
Despite the fact that, on its face, the registration and
application contain substantially similar marks, Brewery
argues the Board committed legal error in finding the
marks substantially similar, because “[t]o secure registra-
tion of its BROOKLYN BREW SHOP mark, [BBS] dis-
claimed ‘any exclusive rights’ to the term BROOKLYN
BREW ‘apart from the mark shown,’” Appellant’s Br. 47,
whereas in the ’776 Application, BBS “claimed section 2(f)
acquired distinctiveness rights in BROOKLYN and
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16 BROOKLYN BREWERY CORPORATION v.
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disclaimed BREW SHOP,” id. at 48. Accordingly, Brewery
contends, its “supposed laches and acquiescence against
[BBS’s] registered mark that disclaims any rights to
BROOKLYN should not prejudice [Brewery’s] rights
against an applied-for mark that claims rights to
BROOKLYN.” Id.
The Board rejected this argument, explaining that
“[t]he mark must [] be regarded as a whole, including the
disclaimed matter, in evaluating similarity to other
marks.” Decision, 2020 WL 4673282, at *11 n.74 (citing In
re Nat’l Data Corp., 753 F.2d 1056, 1059 (Fed. Cir. 1985)).
“[A] disclaimer does not remove the disclaimed matter from
the mark,” nor does “a Section 2(f) claim . . . remove matter
from the mark.” Id. In National Data Corp., we held that
“[t]he technicality of a disclaimer . . . has no legal effect on
the issue of likelihood of confusion,” because “[t]he public
is unaware of what words have been disclaimed during
prosecution of the trademark application at the PTO.” 753
F.2d at 1059; see also Specialty Brands, Inc. v. Coffee Bean
Distribs., Inc., 748 F.2d 669, 672 (Fed. Cir. 1984) (disre-
garding the fact that the applicant had disclaimed the word
“spice” apart from SPICE VALLEY for the purposes of like-
lihood-of-confusion analysis, because “the marks are
viewed in their entireties”). The Board did not commit le-
gal error in finding that the defense of laches was available
in the opposition proceeding as to the beer-making kits, so
its application of laches was not an abuse of discretion.
B
Even if laches or acquiescence applies, Brewery argues
that it overcame the defense by establishing inevitable con-
fusion. We review the Board’s conclusion that Brewery
failed to prove inevitable confusion de novo and the factual
findings underlying that determination for substantial ev-
idence. See Coach Servs., Inc. v. Triumph Learning LLC,
668 F.3d 1356, 1365–66 (Fed. Cir. 2012).
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A showing of inevitable confusion requires that there
be no reasonable doubt as to likelihood of confusion. See
Ultra-White Co., 465 F.2d at 893. Typically, only where
both the goods and marks are nearly identical is that
standard satisfied. See Metro Traffic Control, Inc. v.
Shadow Network Inc., 104 F.3d 336, 339 (Fed. Cir. 1997)
(“[C]onfusion was ‘so likely that it [wa]s virtually inevita-
ble, because the parties [we]re using the identical mark for
the identical services.’”); Ultra-White Co., 465 F.2d at 892–
93 (finding confusion inevitable for “identical term
‘BRIGHTWHITE’ or ‘BRIGHT WHITE’ for the specified
goods”); In re Nat’l Distillers & Chem. Corp., 297 F.2d 941,
943 (CCPA 1962) (finding differences between MARQUES
DEL MERITO and MERITO for the non-identical goods
wine and rum were “sufficient to raise a doubt as to the
likelihood of confusion, mistake or deception of purchasers
arising from the common use of the word MERITO”). But
in some cases, confusion has been shown where the marks
or goods are not identical. See, e.g., Standard Oil Co. (N.J.)
v. Epley, 40 F.2d 997, 999 (CCPA 1930) (finding confusion
inevitable for “the words EPCO and ESSO . . . [w]hen ap-
plied upon identical goods”).
Substantial evidence supports the Board’s finding that,
although the marks BROOKLYN BREWERY and
BROOKLYN BREW SHOP are substantially similar, they
are not nearly identical, nor are the goods. As the Board
observed, “beer and beer-making kits are not interchange-
able goods because making beer from a kit takes weeks and
the kits cannot be sold for immediate consumption of beer.”
Decision, 2020 WL 4673282, at *19 (internal quotation
marks and citation omitted). Under our case law, once the
Board made the determination that neither the marks nor
the goods were nearly identical, it is not clear that any fur-
ther analysis was required to reject an inevitable confusion
claim. Nevertheless, the Board went on to address the
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various DuPont factors 4 and rejected Brewery’s argument
and evidence that the marks cause actual confusion. Brew-
ery disputes that conclusion on appeal. Assuming without
deciding that such evidence would be relevant to inevitable
confusion (when both the marks and goods are not identi-
cal), we see no legal error in the Board’s ultimate analysis,
and its underlying findings of fact are supported by sub-
stantial evidence.
After carefully evaluating the evidence as applied to
the seventh and eighth DuPont factors—the nature and ex-
tent of any actual confusion, and the length of time during
and conditions under which there has been concurrent use
without evidence of actual confusion—the Board found
those factors were at most neutral. Although, as the Board
recognized, Brewery presented “voluminous evidence of ac-
tual confusion from its current and former employees, . . .
documents produced in discovery, and an array of third-
party sources,” Appellant’s Br. 52, that evidence has signif-
icant shortcomings.
As the Board found, the majority of the evidence pur-
porting to show actual confusion is from the time period
when the parties were actively collaborating on co-branded
beer-making kits. Between early 2012 and 2016, the par-
ties sold two co-branded kits, manufactured by BBS based
on Brewery’s recipes, which “prominently featured both
parties’ marks.” Decision, 2020 WL 4673282, at *9. They
also publicly participated in several joint promotional
events for the co-branded kits. Accordingly, as the Board
explained, “although some customers may have been con-
fused as to whether the companies were affiliated, they
cannot have been confused as to the source of the goods

4 Issues of confusion, whether inevitable or likely,
are determined by assessing the factors set forth in In re
E.I. DuPont DeNemours & Co., 476 F.2d 1357 (CCPA
1973).
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because both parties were in fact the source of the goods.”
Id. at *30; see also id. (citing Sebastian Int’l, Inc. v. Longs
Drug Stores Corp., 53 F.3d 1073, 1077 (9th Cir. 1995) (hold-
ing that where a party places a “collective mark on its prod-
ucts, it is primarily responsible for any confusion that
result[s] from the mark’s assertion of affiliation, and that
confusion cannot be used to support a charge of infringe-
ment”)).
Substantial evidence supports the Board’s finding that
“[t]he evidence occurring during the co-branded period
[wa]s [thus] not evidence of actual confusion.” Id. at *31.
Likewise, substantial evidence supports the Board’s find-
ing that “the remaining examples [of purported actual con-
fusion were] too infirm to constitute evidence upon which
[it could] accord sufficient probative value to make a find-
ing of actual confusion.” Id.
Accordingly, we see no legal error in the Board’s ulti-
mate conclusion that Brewery failed to establish inevitable
confusion as to the beer-making kits, and in the Board’s
rejection of the likelihood-of-confusion claims.
IV. Brewery’s Descriptiveness Claims
A
Brewery argues that the Board abused its discretion in
refusing to consider its geographic descriptiveness claim
against the ’439 Registration. The equitable defenses of
laches and acquiescence are not available against claims of
descriptiveness. See W. D. Byron & Sons, Inc. v. Stein Bros.
Mfg. Co., 146 U.S.P.Q. 313, 1965 WL 7807 (TTAB 1965),
aff’d, 377 F.2d 1001 (CCPA 1967) (“[I]t is well established
that the equitable defense of estoppel and laches is not
available to a defendant in a proceeding wherein[] . . . the
adverse party is claiming in essence that the mark in
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20 BROOKLYN BREWERY CORPORATION v.
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question inherently cannot function as a trademark under
the trademark statute.”). 5
Section 2(e)(2) of the Lanham Act bars registration of a
mark which is “primarily geographically descriptive” of the
goods to which it is applied. 15 U.S.C. § 1052(e)(2). The
Board found Brewery had not adequately pled the claim.
In a footnote to its summary judgment decision, the Board
advised Brewery that “[a]bsent a motion to amend the
pleadings, both the cancellation and opposition proceed-
ings will go forward without the primarily geographically
descriptive claim.” J.A. 900 n.5. Brewery did not amend
its pleadings.
In its brief after trial, Brewery again raised its Section
2(e)(2) claim. Even though Brewery had failed to amend
its pleadings, the Board nevertheless considered whether
the Section 2(e)(2) claim had been tried by implied consent
because Brewery presented evidence of geographic descrip-
tiveness without objection. See J.A. 14 (citing Fed. R. Civ.
P. 15(b)). We review the Board’s decision regarding
whether an issue was tried by implied consent for abuse of
discretion. See Trans-World Mfg. Corp. v. Al Nyman &
Sons, Inc., 750 F.2d 1552, 1566 (Fed. Cir. 1984). We find
the Board acted within its discretion.
The Board first observed there was no express consent,
because BBS objected to consideration of the claim. Where

5 This is based on the principle that “the public in-
terest is not served by allowing [merely descriptive or] pri-
marily geographically descriptive marks to become or
remain registered based on the action or inaction of any
single person or concern.” Ohio State Univ. v. Ohio Univ.,
51 U.S.P.Q.2d 1289, 1292 (T.T.A.B. 1999). See generally 3
McCarthy on Trademarks and Unfair Competition § 20:36
(5th ed.).
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the non-offering party raises such an objection, implied
consent can only be found where evidence supporting the
claim was submitted without objection and the non-offer-
ing party was fairly apprised that the evidence was being
offered in support of the claim at issue. See TBMP
§ 507.03(b); see also Citigroup Inc. v. Cap. City Bank Grp.,
Inc., 94 U.S.P.Q.2d 1645, 1656 (TTAB 2010), aff’d, 637 F.3d
1344 (Fed. Cir. 2011) (articulating standard under the
TBMP). The TBMP provides that “there must be an ab-
sence of doubt that the nonmoving party is aware that the
issue is being tried.” TBMP § 507.03(b). Here, Brewery in-
troduced evidence of the geographic descriptiveness of the
term “Brooklyn.”
Brewery argues implied consent based on a stipulation
between the parties that the summary judgment record
would be part of the trial record and Brewery’s subsequent
notice of reliance on the summary judgment record. But
neither the stipulation nor the notice of reliance indicated
for what purpose Brewery intended to rely on the evidence.
The Board observed that none of Brewery’s testimony or
evidence at trial “included any clear indication to [BBS]
that a primarily geographic descriptiveness claim was be-
ing tried,” J.A. 15, because Brewery’s Section 2(e)(1) claim
also relied in part on geographic significance. It was there-
fore not clear that Brewery intended that evidence to sup-
port the Section 2(e)(2) claim, especially after Brewery
failed to amend the pleadings to include the claim after be-
ing expressly warned that its failure to do so would result
in the claim not proceeding to trial.
We thus agree with the Board that BBS was not “fairly
apprised” of the Section 2(e)(2) claim, and therefore the
claim was not tried by implied consent. The Board did not
abuse its discretion in refusing to consider Brewery’s Sec-
tion 2(e)(2) claim.
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22 BROOKLYN BREWERY CORPORATION v.
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B
Brewery next argues that substantial evidence does
not support the Board’s finding that it had failed to prove
the registered mark was merely descriptive under Section
2(e)(1), a claim that was properly raised before the Board.
Section 2(e)(1) of the Lanham Act provides that a trade-
mark may be refused registration if it consists of a mark
that, “when used on or in connection with the goods of the
applicant[,] is merely descriptive of the goods.” 15 U.S.C.
§ 1052(e)(1). “A mark is merely descriptive ‘if it immedi-
ately conveys knowledge of a quality, feature, function, or
characteristic of the goods or services with which it is
used.’” Coach Servs., Inc., 668 F.3d at 1377–78 (quoting In
re Bayer Aktiengesellschaft, 488 F.3d 960, 963 (Fed. Cir.
2007)). Whether a mark is descriptive is a question of fact
that we review for substantial evidence. Royal Crown Co.
v. Coca-Cola Co., 892 F.3d 1358, 1364–65 (Fed. Cir. 2018).
The parties disagree as to the proper burden of proof in
this case. A mark registered on the Principal Register is
presumed to be valid. 15 U.S.C. § 1057(b). “Due to this
presumption of validity, the burden of persuasion in a can-
cellation proceeding rests on the party seeking to cancel the
registration.” Cold War Museum, Inc. v. Cold War Air Mu-
seum, Inc., 586 F.3d 1352, 1356 (Fed. Cir. 2009). Where,
as here, the mark is registered without a Section 2(f) claim
of acquired distinctiveness, the mark is presumed to be in-
herently distinctive. See 2 McCarthy on Trademarks and
Unfair Competition § 11:43 n.3 (5th ed.) (citing cases). To
overcome that presumption, the burden is on the party
seeking to cancel the registration—in this case Brewery—
to show by a preponderance of the evidence that the mark
was not inherently distinctive, but instead merely descrip-
tive. See StonCor Grp., Inc. v. Specialty Coatings, Inc., 759
F.3d 1327, 1332 (Fed. Cir. 2014).
We have explained that “the question [for whether a
mark is descriptive] is whether [a consumer] who knows
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what the goods and services are will understand the mark
to convey information about them.” DuoProSS Meditech
Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254
(Fed. Cir. 2012). On the other hand, a mark is not descrip-
tive, but is instead “suggestive,” if it “requires imagination,
thought and perception to reach a conclusion” about the na-
ture of the goods. Id. at 1252 (quoting In re Abcor Dev.
Corp., 588 F.2d 811, 814 (CCPA 1978)). 6 “If the mental
leap between the word and the product’s attributes is not
almost instantaneous, this strongly indicates suggestive-
ness, not direct descriptiveness.” 2 McCarthy on Trade-
marks and Unfair Competition § 11:67 (5th ed.).
Applying those principles here, the Board found Brew-
ery failed to overcome the presumption of validity by prov-
ing that the registered mark was merely descriptive under
Section 2(e)(1). In so finding, the Board observed that
BBS’s marks “would not be perceived by [] prospective cus-
tomers seeking brewing supplies and accessories as de-
scribing a ‘quality, feature, function, or characteristic’ of
the goods.” Decision, 2020 WL 4673282, at *34. Substan-
tial evidence supports the Board’s determination.
Brewery contends that the Board’s finding that “BREW
SHOP describes a place to buy brewing supplies,” id. (in-
ternal quotation marks omitted), equates to a finding that
the mark “is merely descriptive of beer-making kits and not
inherently distinctive,” Appellant’s Br. 31. We disagree.
Descriptiveness is not evaluated “in the abstract,” or
broadly as to the class of goods that the applicant sells
(brewing supplies), but rather it must be evaluated “in re-
lation to the particular goods for which registration is

6 “A suggestive mark qualifies for registration with-
out secondary meaning.” In re Nett Designs, Inc., 236 F.3d
1339, 1341 (Fed. Cir. 2001).
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24 BROOKLYN BREWERY CORPORATION v.
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sought.” Coach Servs., Inc., 668 F.3d at 1378 (internal quo-
tation marks omitted).
A “descriptive mark . . . is one that ‘conjure[s] up the
image’ of the precise good with which it is associated.”
Cross Com. Media, Inc. v. Collective, Inc., 841 F.3d 155, 163
(2d Cir. 2016) (quoting Playtex Prods., Inc. v. Ga.–Pac.
Corp., 390 F.3d 158, 164 (2d Cir. 2004), superseded by stat-
ute on other grounds as recognized in Starbucks Corp. v.
Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 107–08 (2d Cir.
2009)). Here, BREW SHOP does not conjure up an image
of a “beer-making kit” specifically. One can imagine any
number of goods that might be purchased at a “place to buy
brewing supplies,” J.A. 75, including beer brewing equip-
ment, testing and measuring devices, and beer ingredients.
A “beer-making kit” does not immediately come to mind.
We therefore find the Board’s conclusion that the pre-
sumption of inherent distinctiveness as to the registered
mark was not overcome is supported by substantial evi-
dence.
C
Finally, we consider whether BBS was required to es-
tablish that the applied-for mark had acquired distinctive-
ness in order to register the mark. 7 “Where, as here, an
applicant seeks a registration based on acquired distinc-
tiveness under Section 2(f), the statute accepts a lack of in-
herent distinctiveness as an established fact.” Yamaha
Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1580 (Fed.
Cir. 1988); Cold War Museum, Inc., 586 F.3d at 1358

7 Because BBS did not seek registration of its origi-
nal mark under Section 2(f), and because Brewery failed to
rebut the presumption that the registered mark is inher-
ently distinctive, the Board was not required to reach the
issue of acquired distinctiveness in the cancellation pro-
ceedings.
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(“Where an applicant seeks registration on the basis of Sec-
tion 2(f), the mark’s descriptiveness is a nonissue,” because
the mark is presumed to be “descriptive.”). The applicant
may nevertheless register the presumptively descriptive
mark under Section 2(f) if it can prove the mark “has be-
come distinctive of the applicant’s goods in commerce.”
15 U.S.C. § 1052(f).
In contrast to an opposition involving Section 2(e),
where the burden of persuasion is on the opposer, we have
held that “the ultimate burden when registration is sought
under Section 2(f) is properly placed on the applicant.”
Yamaha Int’l Corp., 840 F.2d at 1580. This is because, we
have explained, Section 2(f) “is a provision under which an
applicant has a chance to prove that [it] is entitled to a fed-
eral trademark registration which would otherwise be re-
fused.” Id. Here, the Board made no findings concerning
acquired distinctiveness as to the ’776 Application. Be-
cause proof of acquired distinctiveness was required to reg-
ister the mark under Section 2(f), we find the Board erred
by not considering whether BBS had satisfied its burden.
BBS contends that the Board did not need to address
the acquired distinctiveness issue because, once the Board
denied Brewery’s petition for cancellation, the Morehouse
defense barred a challenge to the Opposition for “essen-
tially the same mark and same goods.” Appellee’s Br. 48
(citing Morehouse Mfg. Corp. v. J. Strickland & Co., 407
F.2d 881, 884 (CCPA 1969)). The Morehouse defense is
premised on the fact that an individual damaged by an ex-
isting registration “cannot suffer legal damage from [an]
additional registration, over and above any damage it may
suffer from [an] existing registration” for essentially the
same mark and same goods. Morehouse Mfg. Corp., 407
F.2d at 884.
Here, Brewery has shown that it would potentially suf-
fer additional harm from the applied-for mark than that
which is caused by the registered mark. To secure
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26 BROOKLYN BREWERY CORPORATION v.
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registration of its BROOKLYN BREW SHOP mark, BBS
disclaimed “any exclusive rights” to the term BROOKLYN
BREW “apart from the mark shown.” J.A. 654–55. “Dis-
claiming unregistrable components prevents the applicant
from asserting exclusive rights in the disclaimed unregis-
trable terms.” In re La. Fish Fry Prods., Ltd., 797 F.3d
1332, 1335 (Fed. Cir. 2015). In the ’776 Application, in con-
trast, BBS claimed Section 2(f) acquired distinctiveness
rights in BROOKLYN BREW SHOP and disclaimed
BREWSHOP. Therefore, because BBS’s applied-for mark
claims rights to BROOKLYN and the registered mark dis-
claims rights in BROOKLYN BREW, the harm the two
marks cause to Brewery’s BROOKLYN and BROOKLYN
BREWERY marks is potentially different. The Morehouse
defense does not apply. 8
Apart from the Morehouse defense, BBS does not argue
that it is free from the requirement that it establish ac-
quired distinctiveness to register a mark under Section
2(f). Accordingly, we vacate the Board’s order dismissing
the Opposition and remand for the Board to determine
whether BBS has shown that the applied-for mark has ac-
quired distinctiveness as to the beer-making kits.

8 We observe that the Board has held that the More-
house, or “prior registration,” defense is unavailable in pro-
ceedings predicated on whether a merely descriptive mark
has acquired distinctiveness, “because of the overriding
public interest in precluding the registration of a merely
descriptive designation.” See Performance Open Wheel
Racing, Inc. v. U.S. Auto Club Inc., Opp’n No. 91229632,
2019 WL 2404075, at *13–14 (TTAB 2019). We need not
reach that issue here, however, as we find the defense in-
applicable for another reason.
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CONCLUSION
We affirm the Board’s denial of Brewery’s petition for
cancellation. As to the Opposition, we dismiss the appeal
regarding the Class 5 goods. The Board on remand shall
enter judgment for Brewery on the Class 32 goods deleted
from the ’776 Application by amendment. As to the beer-
making kits under Class 32, we affirm in part and remand
to the Board in part for further proceedings consistent with
this opinion.
DISMISSED IN PART, AFFIRMED IN PART,
VACATED IN PART, REMANDED
COSTS
Each party shall bear its own costs.