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Surname or Suds? SCHLAFLY Mark Has Acquired Distinctiveness

The US Court of Appeals for the Federal Circuit affirmed a Trademark Trial and Appeal Board (TTAB) decision that the SCHLAFLY mark had acquired secondary meaning and met the requirements for registration. Bruce S. Schlafly and Phyllis Schlafly Revocable Trust, Successor-in-Interest to Phyllis Schlafly v. Saint Louis Brewery, LLC, Case No. 17-1468 (Fed. Cir. Nov. 26, 2018) (Newman, J).

St. Louis Brewery sells 60 types of craft beers through 14,000 retail locations, all with the SCHLAFLY mark on the label. The brewery sold more than 75 million units of SCHLAFLY beer from 2009 to 2014, not including restaurant sales. St. Louis Brewery spent more than $1 million in advertising SCHLAFLY beer in radio, print publications, billboards, social media and events. The brewery applied to register the SCHLAFLY word mark in standard character format for beer, stating that the mark had acquired distinctiveness as a result of substantially exclusive and continuous use with its goods for at least five years immediately prior to the application.

Two oppositions were filed. The estate for Phyllis Schlafly filed an opposition asserting that she was a known conservative icon and her surname is primarily associated with her and the traditional values she represented. Bruce Schlafly, Phyllis’ son and a doctor, argued that he had used his name in his medical practice since 1986.

The TTAB found that the SCHLAFLY mark, as used in connection with beer, had acquired distinctiveness because of the long continuous use of the mark; the geographic scope of the use; the variety of products with the mark in commerce; the prominent placement of the mark on the brewery’s products; the large sales volume of SCHLAFLY craft beer; the marketing types, expenditures and revenue of Saint Louis Brewery; and the significant ranking and awards won by SCHLAFLY beer. The TTAB found that it did not need to address whether the mark was a surname if it had acquired distinctiveness. The TTAB also found sufficient evidence that the mark had acquired distinctiveness and rejected the opposers’ argument that the brewery was required to submit a customer survey. The opposers had requested reconsideration, asserting that it was improper to register a mark based on distinctiveness without a survey of secondary meaning. The TTAB denied reconsideration, and the opposers appealed.

Section 2(f) of the Lanham Act permits registration of marks that have acquired distinctiveness. The statute provides that if there is proof of substantially exclusive and continuous use of the mark for five years immediately preceding the application, the TTAB may accept such proof as prima facie evidence that a mark has become distinctive as used on or in connection with the applicant’s goods in commerce. The Federal Circuit found that Saint Louis Brewery presented 15 different forms of evidence to the TTAB, which the TTAB evaluated before reaching its conclusion. The brewery provided evidence of the commercial success of the SCHLAFLY branded beer, as well as media coverage in local and national outlets, including the Washington Post and the Wall Street Journal. The brewery also demonstrated more than 25 years of continuous use of the SCHLAFLY mark.

The opposers, citing the Federal Circuit’s 1985 decision in In re Etablissements Darty et Fils, argued that the Court should adopt a new test, one they called a “change in significance” test, where a surname cannot be registered as a trademark without showing a change in significance to the public, i.e., from the surname to the identifying mark for specified goods. The Court disagreed, finding Darty to be distinguishable from the facts in this case. The issue in that case was whether Darty was primarily merely a surname, whereas here, the TTAB found that SCHLAFLY had acquired secondary meaning for use in connection with beer products.

The opposers further argued that § 1052(e) of the Lanham Act prohibited the registration of marks that are primarily merely a surname. The Federal Circuit pointed out that the TTAB correctly stated that the trademark statute provides that words that are primarily merely a surname can be registered as trademarks if they have acquired secondary meaning in trademark use. Because the TTAB found that the SCHLAFLY mark for beers had acquired secondary meaning, § 1052(e) did not bar the registration. The Court thus affirmed the TTAB’s decision.

© 2019 McDermott Will & Emery


About this Author

Jodi Benassi, Intellectual Property Litigator, McDermott Will Emery Law Firm

Jodi Benassi* focuses her practice on intellectual property litigation.

Jodi has drafted and negotiated technology and commercial contracts; analyzed non-practicing entities (NPE), NPE litigation andinter partes reviews to reduce risks and costs of patent litigation; and assessed startups and individual inventors for preemptive patent purchase visibility. She previously held several executive positions in the technology sector where she managed corporate expansions into the Latin America and European cable and telecommunication markets...