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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The Brooklyn Brewery Corporation (“Brewery”) appeals 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 sanitizing preparations for household use in Class 5 (the “Opposition”). 

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 entering 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 dismissal of the claim that, under Section 2(d), the mark is 

likely to cause confusion. We vacate and remand with respect to the descriptiveness issue under Section 2(e)(1), because 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 under 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 throughout 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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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 additional sanitizer packets. Although it began as a mom-andpop shop selling kits at a local market, BBS’s business has 

blossomed over the last ten years, now distributing beermaking 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, Brewery 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-updatesand-announcements/nice-agreement-tenth-edition-general-remarks-class. 

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Trademark Office (“PTO”) issued Registration 

No. 4,034,439 on the Principal Register (the “’439 Registration”). 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 registration 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-alcoholised beer; Extracts of hops for making beer; Flavored beers; Ginger beer; Hop extracts for 

manufacturing beer; Imitation beer; Malt beer; 

Malt extracts for making beer; Malt liquor; Non-alcoholic 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 distinctiveness 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, asserted the affirmative defenses of laches, acquiescence, and 

equitable estoppel based on the parties’ “substantial coexistence without any confusion” or prior challenge to BBS’s 

marks by Brewery. BBS also moved to amend the ’776 Application 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 petition to cancel the ’439 Registration, raising for the first 

time a claim that the registered mark was primarily geographically descriptive under Section 2(e)(2) of the Lanham 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 opposition 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 Application to limit the Class 32 goods to “Beer making kit[s]” (but 

did not enter judgment in that respect); (2) rejected Brewery’s Section 2(d) (likelihood-of-confusion) claim in the Opposition 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 (beermaking kits) in both the Cancellation and the Opposition 

because the defenses of laches and acquiescence applied 

and Brewery failed to prove inevitable confusion; (3) dismissed Brewery’s geographic descriptiveness claims under 

Section 2(e)(2) on the ground that they had not been adequately pled; and (4) rejected Brewery’s claims under Section 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 dismissing the Opposition as to the Class 5 goods (sanitizing preparations). 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 “Congress 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 (internal 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 quotation marks omitted). Although certain of these requirements, “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. (quoting Summers v. Earth Island Inst., 555 U.S. 488, 497

(2009)). 

As the party seeking judicial review of the Board’s decision in this case, Brewery is required to “supply the 

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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 Consumer Watchdog, 753 F.3d at 1262); that it “has contractual

rights that are affected by a determination of patent validity,” id.; or that it would suffer some other concrete and 

particularized injury. Speculation about “‘possible future 

injury’” is not sufficient. Momenta Pharms., Inc. v. BristolMyers Squibb Co., 915 F.3d 764, 767 (Fed. Cir. 2019) (quoting Clapper v. Amnesty Int’l USA, 568 U.S. 398, 409

(2013)). 

To establish injury in fact in a trademark case, an opposer must demonstrate a concrete and particularized risk 

of interference with the rights that flow to it from registration 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 establish 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 particularized harm. 

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Thus, the test for likelihood-of-confusion or descriptiveness 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 showing 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 logical conclusion, the theory seems to be that a market participant is injured for Article III purposes whenever a 

competitor benefits from something allegedly unlawful—

whether a trademark, the awarding of a contract, a landlord-tenant arrangement, or so on. We have never accepted 

such a boundless theory of standing.”). A more particularized showing of harm is required. Id.

B

Here, Brewery never explains how granting the application 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 connection with beer-making kits. But Brewery does not make 

or sell sanitizing preparations. The Board found that “sanitizing preparations are only peripherally related to beermaking kits, much less beer” and that there was no indication 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 [Brewery’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 preparations. 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 presently 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 particularized’ and ‘actual or imminent, not conjectural or hypothetical.’” (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 basis for injury in fact, but is not currently engaging in infringing 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 appeal as to those goods. 

BBS appropriately does not raise a challenge to Brewery’s Article III standing to seek cancellation or oppose registration 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 depends on the merits of the plaintiff’s contention that particular 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 argument that Brewery cannot challenge dismissal of the Opposition 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-drinking 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 challenge 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 issues that are discussed in terms of “standing” that are

more appropriately viewed as requirements for establishing 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 exists, 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 enter 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 confusion 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 amendment to an identification that, while contested, is otherwise 

acceptable, the Board looks to see whether” several circumstances are satisfied, including that the “applicant [] consent[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) (entering judgment for opposer on goods deleted from application). 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 original 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 judgment on the deleted goods would be inappropriate, implying 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 trademark that so resembles a registered mark “as to be likely, 

when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” 

15 U.S.C. § 1052(d). 

Before the Board, BBS successfully argued that the defenses of laches and acquiescence applied to Brewery’s Section 2(d) claims in the Cancellation and as to the beermaking 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 requires 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 fouryear 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 collaborated 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 assert a right or a claim against [BBS’s] use of its 

BROOKLYN [BREW] SHOP mark in connection with beermaking kits.” Id. Finding no valid excuse for Brewery’s 

delay in asserting its rights that could outweigh the material 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 Australian 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 inevitable confusion and dismissed the Section 2(d) claims in 

both the Cancellation and Registration as to the beer-making 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 erroneous. Rather, it argues the Board erred in applying the 

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equitable defenses to the Opposition. Laches and acquiescence are generally not available as defenses in an opposition proceeding, given that the clock for laches begins to 

run from the date the application is published for opposition. See Nat’l Cable Television Ass’n, 937 F.2d at 1582. 

This court has recognized an exception to that rule, however, where a “defense in an opposition . . . [is] based upon 

the Opposer’s failure to object to an Applicant’s registration 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 proceeding 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 Partners 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.” Decision, 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 decision 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 registration of its BROOKLYN BREW SHOP mark, [BBS] disclaimed ‘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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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) (disregarding the fact that the applicant had disclaimed the word 

“spice” apart from SPICE VALLEY for the purposes of likelihood-of-confusion analysis, because “the marks are 

viewed in their entireties”). The Board did not commit legal 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 confusion. We review the Board’s conclusion that Brewery 

failed to prove inevitable confusion de novo and the factual 

findings underlying that determination for substantial evidence. 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 inevitable, 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 applied 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 interchangeable 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 further analysis was required to reject an inevitable confusion

claim. Nevertheless, the Board went on to address the 

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various DuPont factors4 and rejected Brewery’s argument 

and evidence that the marks cause actual confusion. Brewery 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 identical), we see no legal error in the Board’s ultimate analysis, 

and its underlying findings of fact are supported by substantial evidence. 

After carefully evaluating the evidence as applied to 

the seventh and eighth DuPont factors—the nature and extent 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 actual confusion from its current and former employees, . . .

documents produced in discovery, and an array of thirdparty sources,” Appellant’s Br. 52, that evidence has significant shortcomings. 

As the Board found, the majority of the evidence purporting 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 parties 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 confused 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) (holding that where a party places a “collective mark on its products, 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 infringement”)). 

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 finding that “the remaining examples [of purported actual confusion were] too infirm to constitute evidence upon which 

[it could] accord sufficient probative value to make a finding of actual confusion.” Id. 

Accordingly, we see no legal error in the Board’s ultimate 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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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 proceedings 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 descriptiveness 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 interest is not served by allowing [merely descriptive or] primarily 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-offering 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 absence of doubt that the nonmoving party is aware that the 

issue is being tried.” TBMP § 507.03(b). Here, Brewery introduced 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 being tried,” J.A. 15, because Brewery’s Section 2(e)(1) claim 

also relied in part on geographic significance. It was therefore not clear that Brewery intended that evidence to support the Section 2(e)(2) claim, especially after Brewery 

failed to amend the pleadings to include the claim after being 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 Section 2(e)(2) claim. 

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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 trademark 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 immediately 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 cancellation proceeding rests on the party seeking to cancel the 

registration.” Cold War Museum, Inc. v. Cold War Air Museum, 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 inherently 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 descriptive. 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 descriptive, but is instead “suggestive,” if it “requires imagination, 

thought and perception to reach a conclusion” about the nature 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 suggestiveness, not direct descriptiveness.” 2 McCarthy on Trademarks and Unfair Competition § 11:67 (5th ed.).

Applying those principles here, the Board found Brewery failed to overcome the presumption of validity by proving 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 customers seeking brewing supplies and accessories as describing a ‘quality, feature, function, or characteristic’ of 

the goods.” Decision, 2020 WL 4673282, at *34. Substantial evidence supports the Board’s determination. 

Brewery contends that the Board’s finding that “BREW 

SHOP describes a place to buy brewing supplies,” id. (internal 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 relation to the particular goods for which registration is 

6 “A suggestive mark qualifies for registration without secondary meaning.” In re Nett Designs, Inc., 236 F.3d 

1339, 1341 (Fed. Cir. 2001).

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sought.” Coach Servs., Inc., 668 F.3d at 1378 (internal quotation 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 statute 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 equipment, 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 presumption of inherent distinctiveness as to the registered 

mark was not overcome is supported by substantial evidence. 

C

Finally, we consider whether BBS was required to establish that the applied-for mark had acquired distinctiveness in order to register the mark.7 “Where, as here, an 

applicant seeks a registration based on acquired distinctiveness under Section 2(f), the statute accepts a lack of inherent 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 original mark under Section 2(f), and because Brewery failed to 

rebut the presumption that the registered mark is inherently distinctive, the Board was not required to reach the 

issue of acquired distinctiveness in the cancellation proceedings.

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(“Where an applicant seeks registration on the basis of Section 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 become 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 federal trademark registration which would otherwise be refused.” Id. Here, the Board made no findings concerning 

acquired distinctiveness as to the ’776 Application. Because proof of acquired distinctiveness was required to register 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 “essentially 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 existing 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 suffer additional harm from the applied-for mark than that 

which is caused by the registered mark. To secure 

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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. “Disclaiming unregistrable components prevents the applicant 

from asserting exclusive rights in the disclaimed unregistrable terms.” In re La. Fish Fry Prods., Ltd., 797 F.3d 

1332, 1335 (Fed. Cir. 2015). In the ’776 Application, in contrast, 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 disclaims 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 acquired 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 acquired distinctiveness as to the beer-making kits. 

8 We observe that the Board has held that the Morehouse, or “prior registration,” defense is unavailable in proceedings 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 inapplicable 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 beermaking 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. 

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