Docket Nos. 2017-1468
NEWMAN, MAYER, STOLL
Nov. 26, 2018
Brief summary: TTAB’s decision that SLB was entitled to register the SCHLAFLY mark on the basis of distinctiveness affirmed since “words that are primarily a surname can be registered trademarks if they have acquired secondary meaning”.
Summary: This opinion explains that SLB was founded by Thomas Schlafly and a partner as a craft beer brewery in 1989, began selling beer using the SCHLAFLY logo in 1991, and applied for a trademark for the word mark “SCHLAFLY” in 2011. The TTAB found that SLB was entitled to the mark on the basis of distinctiveness under Section 2(f), that it “did not need to decide whether the mark was primarily a surname, because the mark had acquired distinctiveness”, and denied an opposition to the application filed by other Schlafly family members. In this appeal, the (consolidated) opposers argue “that the TTAB did not recognize that the mark was ‘primarily a surname,’ and that the TTAB improperly accepted that the mark has acquired secondary meaning although the applicant did not provide survey evidence”, and “claim violation of “their First Amendment, Fifth Amendment, and Due Process rights and protections.” The opinion explains that SLB states that it sells sixty types of beer, all with the SCHLAFLY mark, in fifteen states…through thirty wholesalers” in “14,000 retail locations, and several restaurant chains” including “more than seventy-five million units of SCHLAFLY beer”, “made substantial investments in marketing the SCHLAFLY brand”, had registered at least two other SCHLAFLY marks, and that the mark “had acquired distinctiveness due to substantially exclusive and continuous use with its goods for at least five years, immediately prior to the submission of the application.” The opposers (now deceased Phyllis Schlafly’s estate and Dr. Bruce Shlafly) argued “that, if granted, the SCHLAFLY mark will have ‘[a] negative connotation due to complications with…[d]runk driving [and] intoxication leading to injuries.’” The FC panel reviewed the TTAB’s decision to determine whether its was supported “by substantial evidence” (In re Hotels, FC 2007; Consol. Edison, US 1938) and whether it applied the correct legal standard de novo (Princeton Vanguard, FC 2015; Hewlett-Packard, FC 2002). Under Title 37 of the CFR, the FC panel explained, “the following types of evidence may be considered to show secondary meaning: (1) Ownership of prior registrations”, “(2) Five years substantially exclusive and continuous use in commerce”, and “(3) Other evidence” such as verified statements and depositions. “SLB”, the FC panel wrote, “presented all three types of evidence to the Board, and the Board evaluated fifteen different forms of evidence in reaching its conclusion” including “direct evidence of third-party perceptions of the mark” (press notices; “both direct and circumstantial evidence may show secondary meaning”, citing Yamaha Intern., FC 1988), and “correctly stated that the trademark statute provides that words that are primarily a surname can be registered trademarks if they have acquired secondary meaning in trademark use” (Section 1052 of Title 15). The FC panel also disagreed with the opposers constitutional arguments since “the trademark opposition procedure, of which they have availed themselves, provides appropriate process of law.” The TTAB’s decision was therefore affirmed.