909 F.3d 420
Fed. Cir.2018Background
- Saint Louis Brewery (SLB) applied to register the word mark SCHLAFLY for various beers; SLB had used the mark since 1991 and submitted a Section 2(f) declaration claiming acquired distinctiveness.
- SLB presented extensive evidence of use: >25 years’ continuous use, ~75 million servings sold (2009–2014), national and regional distribution, marketing expenditures, media coverage, awards, and two existing logo registrations incorporating SCHLAFLY.
- Opposers (Phyllis Schlafly, a well-known public figure, and Dr. Bruce Schlafly) opposed registration, arguing the mark is primarily a surname associated with Phyllis Schlafly and that SLB failed to prove secondary meaning without consumer surveys; they also raised First, Fifth, and Due Process challenges.
- The Trademark Trial and Appeal Board (TTAB) found SLB had acquired distinctiveness under 15 U.S.C. § 1052(f) and allowed registration, relying on multiple categories of evidence rather than survey data.
- The TTAB denied reconsideration, characterizing the record as more than sufficient and not a close call; the Board also noted no evidence of marketplace confusion or ‘‘market proximity’’ between SLB’s beer and Phyllis Schlafly’s activities.
- The Federal Circuit affirmed, reviewing findings for substantial evidence and legal questions de novo, and rejecting the Opposers’ statutory and constitutional arguments.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether SCHLAFLY acquired distinctiveness (secondary meaning) | Opposers: Applicant did not prove secondary meaning; surveys required | SLB: Submitted substantial circumstantial and direct evidence (use, sales, advertising, media, prior registrations) showing acquired distinctiveness | Affirmed: Substantial evidence supports TTAB finding of acquired distinctiveness under §2(f) |
| Whether mark is "primarily merely a surname" and thus unregistrable | Opposers: SCHLAFLY primarily evokes Phyllis Schlafly; registration should be barred or require showing of change in significance | SLB: Even if a surname, §1052(f) permits registration upon proof of acquired distinctiveness | Held: Court need not decide primarily-surname question—statute allows registration if secondary meaning is shown; §1052(e)(4) not dispositive here |
| Whether consumer surveys are required to prove secondary meaning | Opposers: Surveys needed to establish public association change | SLB: Surveys not required; multiple forms of evidence suffice | Held: Surveys are helpful but not required; circumstantial/direct evidence can establish secondary meaning |
| Constitutional claims (First, Fifth, Due Process) | Opposers: Registration violates First Amendment, is a Fifth Amendment taking, and Due Process violated by Board's approach | SLB: Registration is statutory administrative action, not a taking, and opposition procedure affords due process; no First Amendment infringement identified | Held: Constitutional claims rejected—no cognizable taking; plaintiffs fail to show First Amendment or Due Process violation |
Key Cases Cited
- Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357 (Fed. Cir.) (standards for substantial-evidence review of TTAB factual findings)
- In re La. Fish Fry Prods., Ltd., 797 F.3d 1332 (Fed. Cir.) (acquired distinctiveness standard)
- In re Hotels.com, LP, 573 F.3d 1300 (Fed. Cir.) (reviewing whole-record substantial-evidence standard)
- Yamaha Intern. Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d 1572 (Fed. Cir.) (surveys not required to prove secondary meaning)
- In re Etablissements Darty et Fils, 759 F.2d 15 (Fed. Cir.) (surname analysis context)
- Acceptance Ins. Cos., Inc. v. United States, 583 F.3d 849 (Fed. Cir.) (Fifth Amendment takings analysis)
- Barnhart v. Peabody Coal Co., 537 U.S. 149 (statutory construction canon regarding expressio unius)