August 14, 2020

Volume X, Number 227

August 14, 2020

Subscribe to Latest Legal News and Analysis

August 13, 2020

Subscribe to Latest Legal News and Analysis

August 12, 2020

Subscribe to Latest Legal News and Analysis

Brewery Defeats Trademark Opposition by Conservative Public Figure Phyllis Schlafly

Relatives of the late conservative political activist, Phyllis Schlafly, lost their appeal to prevent the Saint Louis Brewery, LLC (“the Brewery”) from trademarking the Schlafly name in connection with various beer products on November 26, 2018. 

Thomas Schlafly, Phyllis Schlafly’s nephew, co-founded the Brewery in 1989 and began selling beer with the SCHLAFLY mark in 1991.  In 2011, the Brewery applied for trademark registration of the word mark SCHLAFLY for use with various types of beer.  Phyllis Schlafly and her son Bruce Schlafly (“the Opposers”), opposed the registration, alleging that, if granted, the mark would negatively affect their reputations by associating them with alcohol.  Phyllis Schlafly (who was replaced by a trust in her name as a plaintiff upon her death in September 2016) also argued that, due to her position as a conservative activist and role in public and political discourse, the public primarily associates “Schlafly” with Phyllis Schlafly and the “traditional values” she advocated for. 

The Trademark Trial and Appeal Board (“TTAB”) ruled in favor of the Brewery, finding that the mark had acquired distinctiveness by use in commerce pursuant to the Lanham Act, § 2(f) and, because it had acquired distinctiveness, the TTAB did not need to decide if the mark was primarily a surname as urged by the Opposers.  In finding that the mark had acquired distinctiveness, the TTAB relied upon evidence including 25 years of continuous use of the name, 75 million servings of the beers sold in a five-year window, and media coverage including USA Today, The Wall Street Journal, and The Washinton Post.  The Opposers also argued that the Brewery was required to submit consumer surveys as evidence of secondary meaning; however, the TTAB found that the evidence presented was sufficient.  After a request for reconsideration was denied by the TTAB, stating “To be blunt, this was not a close call” (Opinion or Request for Reconsideration, Opposition No. 91207225, at *3), the Opposers appealed to the Federal Circuit, arguing that the TTAB did not recognize the mark as primarily a surname and improperly found that the mark had acquired secondary meaning without survey evidence.  The Opposers also claimed violations of their First Amendment, Fifth Amendment, and Due Process rights under the Constitution. 

The Federal Circuit upheld the TTAB’s determination in a 3-0 decision issued November 26, 2018.  The Court agreed that the Brewery presented, and the TTAB considered, sufficient evidence to establish secondary meaning without the Brewery providing consumer survey evidence, noting that the Brewery’s evidence covered all three categories of information permitted by 37 C.F.R. § 2.41(a) and amounted to fifteen different forms of evidence in total.  The Federal Circuit also rejected the Opposers new proposed test, which they called the “change in significance test,” which would only allow a surname to be registered if there was a change in significance to the public from a surname to an identifying mark for specific goods.  The Court agreed that the TTAB was not required to determine whether the mark was primarily a surname because they had already determined it had acquired secondary meaning and, pursuant to 15 U.S.C. § 1052(f), even if the mark were primarily a surname, the fact that it had become distinctive of the applicant’s goods in commerce allowed it to be registered.  As to the Opposers’ Constitutional claims, the Opposers did not adequately explain how registration would infringe upon their First Amendment rights.  Moreover, because trademark registration is not a taking for government use, the Opposers Fifth Amendment claim failed.  The Opposers’ Due Process claim also failed because, as the Federal Circuit noted, the trademark opposition procedure utilized by the Opposers provides appropriate process at law.

Attorneys representing the Schlafly’s have indicated they intend to appeal the Federal Circuit’s decision to the Supreme Court.

©1994-2020 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.National Law Review, Volume VIII, Number 352


About this Author

Michael Greis, Mintz Levin Law Firm, Intellectual Property Law Attorney, New York

Michael is an intellectual property attorney whose practice encompasses trademark and copyright enforcement, technology and licensing transactions, patent and trademark portfolio management, and counseling clients on intellectual property issues that arise in business deals. He also has extensive experience in cybersecurity, privacy, and social media law. His clients range from start-ups to Fortune 500 companies in a broad range of industries, including technology, manufacturing, sports & entertainment, and digital & social media.


Tiffany Knapp, Mintz Levin Law Firm, Intellectual Property Attorney

Tiffany concentrates her practice on intellectual property litigation, with an emphasis on patent cases. She uses her background in computer science and mathematics to help clients in matters at the International Trade Commission and in Federal District Courts.

Prior to joining Mintz as an Associate, Tiffany was a law clerk to Clerk Joseph Stanton of the Massachusetts Appeals Court. During her last year in law school, prior to graduation, Tiffany worked as an Intern to Mintz’s IP practice. She assisted with the preparation of and research for documents to help clients strategize the use of their patent portfolio, such as a market-specific patent litigation and damages awards report. Tiffany researched effects of Supreme Court decisions and the America Invents Act on the rights and litigation strategies of patent holders, and prepared memoranda and drafted publications related to the development of standard setting organizations and their impact on patent policies.

Tiffany was involved with the New England Law Review while earning her degree at New England Law as an associate member and later as the Executive Online Editor and a published author. Tiffany was also a research assistant for Trademark matters while attending New England Law.