Anheuser-Busch Incorporated v. The Stroh Brewery Company

5, merce on December January 1983. On Hofstetter, W. Thomas for appellee. 20, 1984, press Anheuser-Busch issued a BRIGHT, R. Before JOHN GIBSON informing industry public release FAGG, Judges. Circuit plans sell LA same beer. On the date, application registration for made GIBSON, R. Judge. JOHN Circuit March, mark LA. Anheuser- protectible marketing Whether “LA” is a Busch At commenced the beer. for a low alcohol beer marketed Anheu- the time of the of the trial commencement Roy Harper, 1. The United Honorable W. Senior Missouri. Judge States District Eastern District preempt allow it to 1984, marketing the new prod- would May representatives Stroh preparatory to dis- market. testified

uct ten test markets they believed become the on a national basis. tribution segment generic name of the beer press issued On Stroh March There frequent market. references announcing plans introduce a release “Light” words to the use and “Lite” 7, 1984, On March alcohol beer. market, predominance in the beer approval separate of two obtained BATF Brewing in that market the Miller using LA, one with labels achieved, Company had and Anheuser- prod- name Schaefer the other Busch’s admitted desire to Miller emulate uct name Milwaukee. On March Old respect to LA in the low alcohol mar- receiving objections An- after ket. Insofar as other evidence must heuser-Busch, press release Stroh issued resolving considered issues planned market stating that it Schaefer case, will discuss it in detail at that we action, brought April This on beer. time. infringe- against Stroh for ment, compe- opinion, began and unfair In district court trademark dilution § 1125(a) (1982), analysis by recognizing following prin- tition under 15 U.S.C. Act, ciples: and for of the Mis- Lanham violation statute,

souri antidilution Mo.Rev.Stat. protection A term for which trademark § (1978), 417.061 followed. catego- claimed will fall in one of four (1) (2) (3) generic, descriptive, sug- ries: trial, marketing During the executives of (4) gestive, arbitrary or or fanciful. testified, parties (Jerry) Yoram both as did categories, spec- like colors These in a Wind, Marketing a Professor of and Man- trum, edges tend blur at and School, agement University at the Wharton together, making merge it difficult to Pennsylvania, who testified * ** appropriate The apply label. surveys he marketing results of had con- categorization given correct of a term is Krugman, a ducted and Herbert E. consult- * * * a factual issue. opinion re- public ant and consumer testimony WSM, Hilton, concerning There was Inc. v. 724 F.2d 1325- search. (8th Cir.1984)(citations pre- omitted). low alcohol Australia After beers analysis, in that dominance market Tooth careful the court concluded that LA. generic, descriptive, arbitrary An- LA beer. There was detailed evidence of was concerning suggestive heuser-Busch’s the new or fanciful2 but was and there studies product, dealing protectible.3 fore The particularly those with was district court perception of a name stressed the de- considered consumer selection which by public opinion sire of to select a term LA as demonstrated Anheuser-Busch arbitrary opinion that the LA either 2. The district court’s states: conclude term or prominently fanciful when featured can or on a opinion, Court’s a term should not be this bottle of beer. generic equated phrases or merely term because the individual letters of the opinion 3. The district court’s states: may generic interpreted to be initials * * * opinion study sup- is this Court’s [I]t descriptive phrase. test is real [T]he * * * LA, ports placed promi- a conclusion that perception of such term. consumer’s name, nently can of on a beer as the sole brand at trial numerous memoranda [EJxhibited requires opera- idea stands for an some through discovery gained and communications imagination tion of the to connect it with selecting plaintiffs process internal product, suggestive and therefore is in nature. plain- proof This establishes brand name. * * * sum of defendant’s evidence fails between LA anticipated the tiff connection study's contradict essence of the research low, among less findings. weight sup- of credible evidence Bolstering evidence were the future. LA, ports a conclusion that as a for brand name journal articles newspaper trade number beverage product, a malt a na- of the brand disclosing introduction plaintiffs therefore, is, quality ture or explanations that LA means low name LA protectible as a valid trademark. it is difficult to this evidence With alcohol. reaching 52(a). Stroh, surveys in its conclusion. The standard Fed.R.Civ.P. ad- much, district court then considered mitting argues appeal whether infringement there had been under the the finding predi- nonetheless was fact Lanham Act and Missouri’s antidilution subject error cated on an of law not statute. It found clearly erroneous standard.

was the appropriate first to and utilize the argues first that the initials of a Stroh LA mark appropriated and that Stroh had generic such as “low alcohol” cannot LA in order to dilute its distinctiveness status, citing assume trademark National marketplace create be- confusion Bar Examiners Multi Conference of products. tween the Studies, Legal state appeal On that the district (“Under Cir.1982) settled trademark law if court erred as matter of law since the components of a trade name are com initials of or descriptive term descriptive terms, mon a combination of such as low alcohol cannot assume trade- * * * quality. such terms retains that Ab status, since court found itself descrip breviations or common that LA “category is a descriptor,” since phrases must similarly.”), tive be treated perception consumer employed as the - denied, U.S.-, cert. principal test determining (1983). In L.Ed.2d 83 National descriptive, and since An- Confer ence, plaintiffs sought pro: heuser-Busch burden proof phrase tect Bar both the “Multistate Exam establish that it was entitled to a trade- ination” the As initials “MBE.” the for LA. argu- Stroh makes other ments, noted in of district court its discussion including report ones based on a case: Anheuser-Busch from a firm consulting stating that LA protectible be distinguisha is [National ] Conference a trademark, and on a failure to in ask plaintiff the facts ble from here because opinion question, survey “What, any- if seeking protect is not accompany an thing, do the initials LA mean in you alcohol, phrase, light such as low relation to product?” It also alcohol, alcohol, alternative, less nor injunction that the overly is broad in that it any of a number of word combinations “any extends to other acts likely which are for which mark LA could stand. confusion, to cause deception mistake or And, course, of because the BATF plaintiff.”

with arguments made are regulations at the time of its initial label- sufficiently general to cause us to conclude decision, making plaintiff desig has not that Stroh is suggesting also that the find- nated on label what LA does stand ings of the district court are clearly errone- for.4 ous.

I. Rather, question in the instant whether, party case is when a seeks to is The threshold issue this case protect initials alone are which also the court’s whether the district determination generic descriptive phrase, initials or suggestive protec therefore equated are with the initials to be finding to which the clear tible is a factual issue, phrase. key as the eases demon or ly applied must be erroneous standard strate, relationship nature of the or is the of law. As we have erroneous as a matter generic tie the initials and the between categorization held previously, phrase relationship descriptive and the protection is term for which trademark issue, product. tie initials and to be a factual between claimed is considered held, if WSM,Inc., 1325-26, properly some thus is As the district 724 F.2d required imagination operation be reviewed under erroneous regulation allowing prod- a new 4. The court had earlier observed that at the time BATF issued label, containing approval regulations less vol- BATF ucts than 2.5% prohibited described or reduced on the label or re- ume to be as low alcohol reference to low beverages. April On duced alcohol content. alcohol malt product, The statement National initials connect the Confer urges equated adopt that we as a be ence which Stroh initials cannot nature, there- authority are rule of cites as sole phrase but law FS Ser protectible. Services, rendering them v. vices Custom Farm case, (7th Cir.1972). plain In that Optics v. Univis Lens In Modern protection for tiff was denied the letters 970, (1956), the C.C.P.A. FS, used in where such were colors a valid that “CV” was court concluded totally motif dissimilar to its mark. Id. composed of though it was even specific 673. The rule stated FS Servic “continuous vi of the words the initials es, however, is that “[abbreviations descriptive alleged be sion” they generally terms where are court, lenses. As did district of trifocal recognized similarly.” must be treated Id. Optics reasoning Modern we find added). (emphasis at 674 As the court persuasive: Kampgrounds America North Dela appel- considered [Although we have Campground, F.Supp. ware A-OK descriptive- contentions as lant’s 1288, 1292(D.Del.1976),pointed out, the FS vision,” it ness the words “continuous placed heavy “reliance on its Services court necessary to determine whether FS had determination abbreviation merely descriptive those words lenses, descriptive itself appellee become since is not seek- trifocal words, representing descriptive words farm ing registration those but a supply.” let- or farm We believe that mark whose dominant feature is the service are, ters letters “CV.” The “CV” the sentence National Conference course, letters of the words upon similarly the initial must which Stroh relies vision,” it is possible addition, “continuous qualified.5 In so we do not be letters to so associated initial become presence very lieve of a brief de- words as become case circuit statement from another * * * scriptive It does not themselves. entirely con made different factual follow, that all initials of combi- text, particular consid which demanded no descriptive ipso fac- nations words import, very its its eration of should unregistrable. While each case must presence cause its to the status of elevation particular be decided on the of the basis rule of an established law. involved, that, as facts it would seem rule, general cannot initials be considered authority cites Stroh as 3 R. Call descriptive they so mann, unless have become Competition, Law The of Unfair § generally representing as de- understood Trademarks, (4th Monopolies 18.23 scriptive accepted as sub- words as to be 1983) ed. and asserts that “the author stantially synonymous therewith. states that numerals and are not letters if they solely valid are not trademarks used omitted). (citations question The Id. purpose indicating The origin.” for Optics court then be- before the Modern of the treatise on which asser section estab- came one of whether the record had tion is discusses numerals and letters based question that the initials were a lished (normally grade alone as either stand recognized generally term nature, quality size marks indicate or they descriptive term from which or service) commonly or are correctly The court derived. Id. district dis question in understood abbreviations. treatise faced its realized it the same in the instant meaning the term cusses elsewhere the issue consideration of the case and there states that the issue of LA. Indeed, obviously stand though argues cases initials otherwise where Stroh brief, similarly reply original generic phrase, brief it asserts that in its the initials are strong public policy (em- generic, phrase appropriation" disqualified “[i]f for trademark through against preemption the abuse of added). market phasis that, requires least laws the LA descriptiveness acronym “depends on as a category descriptor name together recognized the initials are own with its may established brand. Stroh § phrase.” full equivalent to the Id. 18.10. used LA have as a category descriptor and us Stroh also refers to some thirteen cases hoped would become generally,7 such but support of their contention. We have say the district court does not that it found carefully examined these cases and find the term to be such. To read the sentence that in none is it stated as a matter of law grossly otherwise would specific distort the descriptive phras that initials of findings of the court. Since we do unprotectible.6 es are We conclude that believe district court LA found to be did the district court not err as a matter of category descriptor, we no find error as a engaging law in in factual determination matter law in court’s issuance of its proper classification to be accorded injunction. the initials LA. argues Stroh next that the district court next district erred as a matter of relying primari law in enjoining erred as a matter of law in court ly perceptions on consumer in its classifica Stroh’s use of the mark “Schaefer LA” tion LA. It asserts per that consumer finding “catego after itself was a ceptions should the principal used as believe, ry descriptor.” We do not how test for “terms that have started out as ever, so as court found. Stroh’s generic category descriptors.” as Stroh’s depends following passage sertion “generic sertion assumes that LA is a cate opinion: from the district court’s gory descriptor.”8 above, As discussed facts reveal the district specifically found LA to presented industry with sufficient no- descriptive. be neither Thus of its of a tice selection brand name. At Brewing Miller Co. v. Jos. Schlitz Brew time, defendant, on the basis of Cir.1979), considerations, marketing decided denied, cert. use established brand name awith (1980), 62 L.Ed.2d 787 the case Stroh cites descriptor category consisting authority, point: is not on that case plaintiff same mark using aas (Defendant’s survey deals irrelevance of a post-trial name—LA

brief, p. 18) added). responses (emphasis of 988 beer drinkers to “the meaning of Anglo-Saxon a familiar word of A “category descriptor” presumably (i.e., heritage” “light”). The mark LA ain descriptive category. of a Whether beer-drinking obviously context is not so the term in nature was As points familiar. the Miller itself case length by discussed at the district court. out, when “a coined word a for commercial specifically It found that it was not. We involved, product” is proper in test pas- believe the district court be sage ‘buyers “what simply by above meant what it comes understand said: ” Stroh used Anheuser-Busch’s (quoting brand word.’ Id. Bayer Co. v. United Rather, (BNA) (T.T.A.B.1963) Corp., U.S.P.Q. 6. turn on whether the cases initials 138 517 descriptive. ("MICR” have themselves become banking used in electronics and indus- See, e.g., Anonyme Co. v. la Martell & Societe de interchangeably tries as abbreviation for and Benedictine, (C.C.P.A.1941) ("B 116 F.2d 516 "magnetic recognition”); ink character In thirty years popularly for B” used in United U.S.P.Q. Corp., re General & Aniline Film 136 designation for States Benedictine and bran- (BNA) (T.T.A.B.1962) ("PVP” recognized 306 ab- equal dy parts protectible); therefore not "polyvinylpyrrolidone” by breviation for aver- Bounty, Organics, Nature’s Inc. v. Basic 432 age purchaser). (E.D.N.Y.1977) ("B-100” F.Supp. 546 associated milligrams complex by with 100 of vitamin B 7. See note 15. infra buying public); re In Product Code Uniform Council, Inc., (BNA) (T.T.A.B. U.S.P.Q. 202 618 phrase apparently categories, merges This two ("UPC" 1979) and "Universal Product Code” pertinent descriptive. and the descriptive common names for bar and numeric category test either is the same. symbols); Burroughs Corp. v. Microcard Reader

638 primarily upon relying (S.D.N.Y. consumer 505, 509 law Drug Co., 272 Fed. classifying the term LA. perceptions 1921)). finally asserts that the dis Stroh WSM, specifically stated Inc. we of erred a matter law since court trict deciding test “[t]he proving the trademark status the burden prod title of a word has become agree LA fell on Anheuser-Busch. We buyer under uct or is one service regis the initials were not that since buyers understand standing: ‘What do the tered, had the burden are parties use the by the whose word establishing trademark status. National ” (citations F.2d at 1325 contending.’ 724 488; 692 F.2d at Reese Pub Conference, de omitted). applies when The same test Hampton lishing v. International Co. re descriptive. In ciding whether word 7, Communications, (2d 620 F.2d Cir. 811, Corp., 588 F.2d Development Abcor 1980). in the Stroh does not indicate where (C.C.P.A.1978). that the district record finds indications in addition to consum argues that Stroh placed proof court the burden of on Stroh. as the perceptions, other factors such er see no indication from record We understanding of those familiar with Rather, so acted. our the district court (presumably those in the beer alcohol beer that the examination convinces us burden trade, being distin since Hence, proof properly allocated. of Anheuser-Busch guished) and intent find we no error law. have been adopting the mark should Thus, find no of law we error test, is what considered. points urged particular district court on trade, consumers, persons under we by Stroh. we do not believe that Since WSM,Inc., 724 F.2d term to stand the be. question our should abandon rule 3; Big Tire Dealers v. Good at 1328 n. O is to proper category in which term Co., & year Tire Rubber purposes ques- placed for trademark Cir.1977), denied, cert. fact, precedent shall follow our tion we (1978); 54 L.Ed.2d 805 WSM, court Inc. and review the district Bounty, Drugs v. SuperX Nature’s Inc. erroneous standard record under (E.D.N.Y. 54 n. Corp., F.Supp. 52(a). Rule 1980); Corp., 477 Inc. v. Salton Cornwall (D.N.J.1979); 975, 985 F.Supp. Blisscraft II. (2d Plastics United Cir.1961) (“In determining whether A. descriptive trademark is claimed the term LA was since adoption, non- meaning time to a merely descriptive, generic or the district purchasing segment population on the consumer improperly relied important. question The critical fur- survey offered into evidence. Stroh descriptive pro whether the mark is methodology of sur- ther attacks the article.”). spective purchasers vey. above, Stroh’s if in some As we have noted

Even LA has been used trade, required persons argument have the district manner what,it per find, had to if do not court assume it immaterial consumers generic descrip descriptive determining if a term is or ceive LA to be a or tive, a is to the term from the court view term for beer. We therefore conclude standpoint prospective pur- average of the err a matter district did LA, court, supports determining as a name * * * that “the a conclusion that brand district 9. The after beverage product, expert for a malt the research results and conclusion of ** * protectible.” weight We conclude and therefore in determin- must be accorded relevant mark,” language found descriptiveness then from this district court the con- the the of that Anheuser-Busch its burden. weight credible evidence had carried cluded that of "[t]he

639 In determining viewpoint chaser. the of also argues sur consumer purchasers prospective vey improperly the designed. survey The cases, Wind, competition designed Dr. and unfair substantial Yoram Profes Management, weight may Marketing sor of and be accorded the result of Whar School, University Pennsylvania.10 ton of properly survey. Squirtco conducted See Co., 1086, (8th The district court found that the Seven-Up 628 F.2d consumer v. 1091 fairly Cir.1980); survey was and scientifically con Oil v. Refining Humble & Co. by qualified experts ducted and impartial 803, American Oil 405 F.2d 817 interviewers, that the study respons drew Cir.), 905, 395 cert. denied U.S. sample of portion es from a relevant 1745, (1969); 23 L.Ed.2d 218 Union Car potential consumers, the questions, Corp. Inc., bide v. 531 Ever-Ready, upon relied, which the results ap did not (7th Cir.), denied, 830, 366 cert. pear biased, to misleading or and (1976); S.Ct. L.Ed.2d James Bur responses recordation of was handled Inc., rough Beefeater, Ltd. v. Sign completely in a unbiased manner. These (7th Cir.1976). 540 F.2d Courts findings were not challenged on appeal. frequently upon have relied properly con Stroh, however, argues survey was de surveys determining ducted respondents fective because who fa were Indeed, or descriptive. marks miliar low alcohol beer were not asked survey may practical evidence be the most what LA meant.11 approaching manner of evaluation public reaction in such cases. E.I. This issue was DuPont addressed trial. On de Nemours v. cross-examination Dr. why & Co. Yoshida Wind was Interna asked tional, (E.D.N.Y. question, F.Supp. designation' “What does 1975). instance, suggest you?” For was not asked. Dr. DuPont v. Yoshi da, Wind argument testified: rejected the court mark TEFLON was on the IIf will ask them all ques- after these surveys basis two which showed that tions what it does mean or what does * * * recognized designation this, of consumers 48% 68% first of I’mall name, though directing them, here, TEFLON as a even leading I’m it’s a leading question. the surveys thought directing one of showed I 31% am them to scratching TEFLON was a common start their head what it name. does they go Id. at 526. mean and then can into types See also Coca-Cola all Co. Overland, puzzles games Inc., especially n. 11 (9th Cir.1982); experimental setting. They will tell me Stix Products v. United Angeles try guess Los or Manufacturers, what else. F.Supp. Merchants & (S.D.N.Y.1968). survey 490-92 The trying try I’m get What to do is properly offered into evidence was meaning central way get- true and the best findings ting the district court’s of fact. meaning open true ended 10. The district basically court summarized the methodol- tween these sets of two data meas- ogy survey advertising and results of the thus: ured the effect on those who seen, of, product. ever heard or tried survey shopping was conducted at malls respondents Even with the rise of familiar cities, eight already in fifteen were answered, "less,” "low,” who plaintiffs product. Respon- test markets for alcohol,” “light type question, “What proper dents were screened character- it,” apparent study beer is from the subsequently istics were divided into two generally recognize that consumers do not seen, cells: test Those who ever have not immediately of, connote low alcohol plaintiffs product, heard tried they product. plaintiff’s such seen, of, see those who have tried the heard product. general conclusion researcher's Responses gathered following perceived was that label the LA questions: statements and Please describe be the brand name product. type What of it? What the beer is is generic designation beer. The for low alcohol * * * product? compa- brand name of new What this supports raw data this conclusion. brand} ny produces this researcher be- difference concluded that opinion from the court’s that questions that district

questions, not directive carefully can scrutinized surveys to tell me. What were respondent Wind ask the is, asking than what it describe it its determination before reached be better it, is it, type of or what did not contradict the es or what Stroh’s evidence Very simple non-bias- name. findings. the brand research of Dr. Wind’s sence ing type questions. expressed, differing were we views While clearly trial court was say that the cannot if a of his Dr. stated that student Wind also reaching error in its conclusions about question in research had “a included such gotten argues F in the also surveys.12 have an Stroh design he would did question the district court proposed course.” We believe its means omission of his finding Dr. Wind’s defense of not err in not met its of Anheuser-Busch has burden Further, an design persuasive. research regarding proof. our conclusions Given Krugman, Dr. Herbert E. opposing expert, must also conclude that surveys, we that to ask on direct examination testified clearly did not err district court engage in “a question such a would finding weight of that the credible evidence He further stated that fishing expedition.” and, supported it the conclusions reached guessing” if so respondents “start hence, Anheuser-Busch’s burden of might “Los guess that some asked and proof was met.13 “Light some Anheuser” Angeles,” variety That alcohol.” such some “low B. probable responses posited as answers suggestiveness of the is further indication above, the court As we observed district of the term LA. grounded analysis protectibility of the mutually catego exclusive on four Dr. was cross-examined Wind descriptive, suggestive, the generic, ries: great length. The district court also heard WSM,Inc., Krugman. arbitrary or fanciful.14 See Dr. It is clear views many respects the dis- Judge Bright his dissent erroneous. surveys senting findings opinion deal world its own con- did not with the real makes market market, polling group cerning public con- penchant and real American public understanding with low beer and sumers not familiar alcohol be. and what future will First, legally criticism irrelevant. hence that, exception with the fact overlooks Judge urged, 14. As has and as Eschbach products with low market two reduced Enterprises v. Gannett observed in Walt-West product penetration, a new introduced this was (7th Cir.1982), the consuming public generally not familiar classificatory merely scheme labels in this “are surveys beer. The Wind with low alcohol springboards analysis, not a substitute part just properly such concerned Judge As also observed: it.” Eschbach being the new audience to whom understood, Properly the so-called trade- Second, crucially, it is clear introduced. judicial skep- spectrum reflects levels of mark carefully opinion that it district court’s from the concerning actually ticism whether the term responses from who compared consumers denoting serves function the source of, seen, tried or heard had supposed perform. Terms which of, seen, heard who consumers those from fanciful, arbitrary, ap- are as reaching its conclu- product before tried plied given product or service to a are natural- respondents rise with the ”[e]ven sion that consuming ly public as understood answered, ‘low,’ product who familiar ‘less,’ unlikely designations origin: it is such alcohol,’ Tight question, 'what study anything terms would be understood else. it,’ apparent type of beer * * * terms, hand, Descriptive other recognize generally do not designations to serve as of ori- ill-suited immediately low alcohol LA to connote gin, naturally terms are understood for such plaintiff’s they product." See see such on ordinary consuming public in their argument but supra note 10. The the dissent descriptive sense. the fact that the of advertis- underscores effect categories Id. the district distin- survey by comparison was measured guished thoroughly in the instant case are con- groups. responses of the two rationale, and, underlying sonant with this deed, in- application require proper job for a goes beyond 13. The dissent far a determination evil, per discernment. Classification se is no findings were the district court’s The court 724 F.2d at 1325. district found at 814. The district court therefore proper- in LA be ly the term nature. survey looked the consumer in reach- * * * ing its conclusion that “LA stands argues generic. Stroh that the term requires for an idea operation which some found We have addressed above and want imagination it connect with the ing gener that initials of Stroh’s contention product.” similarly phrases ic must be so classified. rejected We have argues also addressed only Stroh when one is un- “marketplace Stroh's contention that a sur aware that the is low alcohol beer vey purpose” in any can serve little determin imagination could be involved in as- ing generic. aif term is sessing Since we have nature from the that the clearly However, found district court was not initials LA. survey demon- erroneous its evaluation of consumer respondents strated that of those who had survey seen, of, offered into evidence and in beer, accord heard or tried LA did, weight it it the we must type also con asked “what of beer only is it?” 24.4% clude that the court was not alcohol,” error answered “light alcohol,” “low finding as a matter of fact that LA was “half alcohol” or “less alcohol.” We can- generic.15 not say not that the trial court inwas error in finding, examining results, after such “that argues descriptive, Stroh also that LA is recognize consumers do not generally suggestive. adopted The district court term LA to immediately connote low alco- distinction between the two stated they hol when see such plaintiffs prod- on Development, Abcor F.2d at 814: uct.” “Generally speaking, if mark imparts directly, descriptive. it information If it commercial context requires used, stands for an which idea some including which term operation imagination advertising it product, connect for the must be con- goods, suggestive.” sidered, it is citing Development, See Un- Abcor Corp. Ever-Ready, Inc., (“Evidence ion v. Carbide of the context in 379; labels, F.2d at Abercrombie & Fitch a mark Co. is used on packages, World, (2d Hunting or in advertising Cir. material directed to the 1976). genericness, descrip- As with goods probative of the reaction of pro- tiveness of a mark is to be spective purchasers mark.”). determined from standpoint the average prospective Development statement in Abcor purchasers. Development, response Abcor 588 F.2d made in to a claim proper stating you Q. the Walt-West court also clear made After learned about Anheuser- plans "district they that a court’s classification of the term Busch's and after had made their * * * spectrum may brand, announcement about their new then considering if they ought set aside after all the evidence we did Stroh decide that to use LA prominently are definite your prod- ‘left and firm conviction on the label for new that a mistake has been committed.”’ Id. uct well? (citations omitted). We A. believed that it become therefore, generic designator segment; for the ‘‘[d]uring district court stated testi- it, yes. we should use mony, vice-president marketing defendant’s become, say you Q. You believed it would that LA admitted now a words, isn’t other it now a term as concerned, far if as consumers and that far as consumers are concerned? uses LA and several other not, Probably A. no. it, generic.” breweries use that would become it, you you Q. But think if use it will be- to, testimony In the T. Hunter refers that, come is that correct? Hastings testified: A. That if Anheuser-Busch uses it and sev- it, than ever became more convinced eral other brewers use it would be- [W]e so, yes. LA would name for this come become business, segment everybody Q. the low alcohol Of If uses the the beer course. same name, segment, that Anheuser- based on the fact it will soon lose distinctive- ness, resources Busch with isn't that their enormous true? * ** Yes, adopted it. A. sir.

642 meaning low in of a term to an alcohol beer Australia has become test was the L.A.,” consumer, has me an that LA is who never seen “Give the term “ultimate there, generic descriptive know what it is.” or and that product and does not a case, generic the mean- in In instant word that a Id. at 812. country LA to who had be foreign of the term should accorded was in of or tried the United States. The seen heard same status noted, “the surveyed. by support the district court As and treatise cited Stroh in cases determining frame for relevant time proposition, of the latter deal present, protectibility not question mark’s of whether words from at time may well be that some future.” It languages should modern be treated as may more forceful- hence equivalent English to their translations phrase LA “low ly link the term (such “coffee”). French for as “café” A clear, however, that alcohol.” It is may of cases hold that a be number term in LA context which beer was commercial country suggestive in one ignored design in the introduced was not In Greengrocer, another. v. The Carcione survey. (BNA) Inc., U.S.P.Q. (E.D.Cal. 1979), argued the defendant that the trade- trial, by Further, called at witness Greengrocer, is a mark Buell, Stroh, Jr., R. a former Stroh James vege- for a retailer of fruits and Britain by time of employee employed trial tables, protection as a was entitled Anheuser-Busch, that he felt LA stated in the States. trademark United suggestive alco- phrases “low was rejected argument ground on the alcohol,” alcohol,” hol,” “light “less term is irrelevant how a used outside subjects discussion at that one of the under parties agree “The States: United “ways speed Anheuser-Busch had been generic in Britain. Since we the term is strengthen the up or association law, American deal here with public, buying the consumers between consumers, Brit- neither and thus American prod- that it’s low alcohol fact dictionary indi- usage ish definition nor the If the connection were obvious uct.” cating usage such are determinative.” Id. strength- suggests, now such need to Sporting Goods at 1077. See also Seiko have been unnec- en the association would U.S.A., Kaisha Hattori essary. do dis- Inc. Kabushiki Again, we not believe the (S.D.N.Y. Tokeiten, finding F.Supp. trict court was erroneous 1982) (efforts to prove in nature. mark Seiko Japan rejected since issue C. recognition in the United was consumer States); Fitch, & Abercrombie the district Stroh also contends holdings believe these are correct. We in reach- properly consider court failed Therefore, correct in the district court was experience findings the ing its Australian ascribing ex- weight to Australian beer, the lessons low alcohol perience in its of consumer marketing determination Miller’s learned from perceptions or ultimate classification. beer, of Anheuser-Busch and the intentions documents, in- from internal as discerned marketing in its brief the Stroh discusses cluding preemptive by move Anheuser- light (or, spells it, as Miller Miller of market. Busch the low alcohol “Lite”) initially trade Miller claimed beer. “Lite”; beer, litigation LA, rights extensive has Tooth meantime, Stroh, states marketed Australia for about five ensued.16 been call, and Miller argues “bar “Lite” became the bar years. Stroh that the call” (1978); Brewing Brewing Brewing 54 L.Ed.2d 772 and Miller 16. See Miller Co. v. Falstaff Co., (7th (1st Cir.1981); Brewing Brewing Corp., F.2d 990 Miller Co. v. Jos. 655 F.2d 5 Schlitz Cir.1979), denied, cert. Brewing 444 U.S. Co. v. G. Heileman 561 F.2d 75 denied, Cir.1977), (1980). 62 L.Ed.2d 787 cert. S.Ct. gained preemptive stranglehold on the III.

light beer market. Stroh also injunc tion issued the district court unnec inapposite findWe the Miller eases essarily broad in that it was not limited instant case. Those cases established enjoined “doing solely any to beer and oth “light” was a term that been used * * * likely confusion, er to acts cause great many years industry a beer deception plaintiff.” mistake or After by consumers to a describe beer’s col- of careful consideration the district court’s or, flavor, content, body, alcohol or a com- order, however, we conclude that the in bination of these therefore was junction properly drawn so as to af descriptive. We believe the LA ford Anheuser-Busch effective relief sufficiently “light” dissimilar from that against infringement future of its trade precedential these cases afford little value. mark LA. that internal of documents We affirm injunction the issuance of the Anheuser-Busch reveal both a descriptive by the district court. use of the term LA an preempt intention to beer BRIGHT, Judge, Circuit dissenting. market with a mark to similar “Lite.” particular report Stroh in a refers to case, major brewer, In this a Anheu- Corporation, independent Interbrand ser-Busch, jurisdiction invokes federal marketing firm speaks consultant seeking protection trademark for its brand preemption opinion and also renders the “LA”. deny protection name I would be- protectible. that LA is not cause its claim the to mark “LA” reflects a preemptive anticompetitive intent We believe the does evidence indicate capture the emerging for market low alco- hoped likely gain that Anheuser-Busch by converting holic content beer the initials significant share of the low alcohol beer (l.a.) of “low alcohol” into trademark. market and to might establish mark that call.”17 become “bar alsoWe believe Counsel Anheuser-Busch commented was, the evidence does establish that LA complex. that this case I agree. is not An times, used in a complexity artificial arises prag- However, internally. sense such interpretations matters matic and flexible of the are not relevant to trademark status trademark laws become enmeshed LA, given rigid categorization the rules of we have Here, law dis of terms. above. example, cussed the district court found to be Judge attained, Bright’s upon appears. dissent is critical of the ac- which it Once this is Anheuser-Busch, finding protec- tions something the trade-mark owner has of value. attempt preempt tion the mark LA an poaches upon mag- If another the commercial low alcohol beer market. It is useful in this created, symbol netism the he has the own- context recall Justice Frankfurter’s famous legal er can obtain redress. purpose discussion of the of trademark law: Manufacturing Mishawaka Rubber & Woolen protection of trade-marks is the The recognition law’s Co., 203, 205, Kresge S.S. 1024, Co. v. psychological of the function (1942). 86 L.Ed. 1381 We can nei- by symbols, symbols. If it is true that we live ther condemn Anheuser-Busch for desire to goods by purchase no it is less true we appropriate magnet- to its use "commercial merchandising A them. trade-mark symbol adopted agree ism” it first nor purchaser short-cut which induces a to select equities with the dissent that the of the case wants, he or what what he has been led to require before us that we sanction what the he believe wants. The owner of a trade-mark appropriation district court found: of the exploits propensity by making this human ev- competitor by brand name of a Stroh. If there ery impregnate human effort the atmo- here, preemption Anheuser-Busch it is no sphere drawing power of the market with the enjoyed than who more those introduce congenial symbol. of a Whatever the means products new onto market. We do not employed, through convey the aim is the same—to enterprising believe such innovativeness is mark, potential minds to be condemned. customers, desirability commodity and, basis, dence, Application Meyer see & 945, 949, Wenthe, Inc., 46 C.C. granted protec- trademark Anheuser-Busch finding, upon (1959), primarily tion. That rests serves P.A. legally Anheuser-Busch) (from from a irrelevant conclusions drawn designate its source Furthermore, granting survey. market charac or indicate a rather than describe on the term other beers of that it shares with teristic objectives “LA” subvert produced by other low alcoholic content reasons, I For these law trademarks. Inc. Anti-Monopoly, v. General brewers. respectfully dissent. Group, Mills Fun Cir.1979); Chemical v. Par Roselux Co. HAS FAILED I. ANHEUSER-BUSCH 862; 299 F.2d at 3 R. sons Ammonia A LA AS TRADE- TO ESTABLISH §§ 18.01, 18.03. Callmann MARK. I not take district do issue with the outset, I At the observe because its analysis court’s decision to commence alcohol”)1 (for has yet mark “LA” “low distinctive, and therefore registered, been Anheuser-Busch bears status, cat entitled to trademark under the establishing proof in that it can burden of WSM, Hilton, egories Inc. set forth v. National trademarked. Conference of 1320, 1325 Cir.1984),2 (8th 724 F.2d do I nor Legal v. Bar Multistate Stud Examiners disagree factual issue arises (7th Cir.1982); ies, 478, Inc., F.2d 488 692 categorization of Id. at 1326. The a term. Publishing Hampton Inter Reese Co. v. provided in clearly erroneous standard Communications, Inc., 620 F.2d national 52(a) Rule of the Federal Rules of Civil Cir.1980); supra at The (2d see 638. 7, 11 appellate Procedure for review of a trial (1) objectives of the trademark laws are: findings not, court’s of fact does prevent among consuming confusion relegate appeals the task courts goods or public as to the source of services stamping findings. of merely rubber those and, ownership (2) permit indicate appellate may An set aside even prod owner to control the the trademark sup finding of fact with some evidence to reputation. Burrough uct’s See James “ if, port reviewing after ‘the entire evi Inc., Sign Beefeater, Ltd. 540 v. dence[, is left firm definite and it] 266, (7th Cir.1976); v. F.2d 274 Sweetarts that a mistake has conviction been commit 923, Sunline, Inc., (8th 380 F.2d 927 Cir. ” ted,’ Anti-Monopoly, Inc. v. General 1967); Callmann, R. Law 3 The of Unfair Group, Inc., 1316, 1318 Fun 684 F.2d Mills Trademarks, Competition, Monopo (9th Cir.1982) (quoting §§ v. United States 17.01, 17.13, (4th at 2 at 58 ed. lies & Co., 364, Gypsum 333 United States U.S. 1983) Callmann). (hereinafter as 3 R. cited 525, 542, 395, (1948)), 68 S.Ct. 92 L.Ed. 746 objectives, To realize these trademark finding or if fact upon was based distinguish product must from similar legal erroneous standard. Inwood Labora identify products produc owner or tories, Inc., Laboratories, 456 Inc. v. Ives Consequently, only er. char those marks 2182, U.S. 855 n. 2189 n. may acterized as receive trade distinctive § (1982); L.Ed.2d Leh 18.01, Trout v. protection. 3 R. Callmann (D.C.Cir.1983); man, F.2d Thus, protection for gain 1. trademark Frank, “LA”, Washington Lake must Save the mark Anheuser-Busch Cir.1981). convincing evi by clear and demonstrate purposes analysis designations irrelevant 1. There are numerous other ge- product category has more one segment. parties and the that a than this new beer The alcohol”, “low neric name. Roselux Chemical Co. v. Parsons alternatively to it media refer 855, 860, alcohol”, alcohol”, C.C.P.A. 931 “less Ammonia "light light in "low or (1962). alcohol”, alternative”, alco- "reduced "light acronym would en- “LA” Obviously, hol.” except the last. It is compass designations supra 2. See all Survey. the can from that of other advertising, The Research A. Market promotion material and word mouth heavily on the majority The relies district surprisingly, communication.” Not court’s determination that the initials “LA” surveyed the 226 4.4% consumers who merely suggest do not describe but fell into this category described the finding beer’s low alcoholic content. This upon beer, survey, rested as a and only a market conducted at re 5.8% the behest of sponded contem- “low alcohol” to the follow-up plation of litigation. survey con- question type “what of beer is it?”3 These perceived cluded LA as the responses, conjunction considered in brand name of the and not as a responses participants of these 76% description for low alcohol beer. that LA was the name prod of the uct, agree obviously

I majority support proper the district for determining test whether a mark is court’s determination that consumers rec “generic”, descriptive”, “merely “sug ognize LA the brand name prod of the average looks to the beliefs gesijive” uct and that it does not connote low alcohol consumers, prospective may be de to them. through properly termined conducted sur perceptions group wholly and, therefore, veys, in the circumstances are, however, uninformed consumers sim- case, reject of this Stroh’s contention that ply legally approach irrelevant. Dr. Wind’s proper opinions test looks essentially perception measures consumer usage experts or the actual industry the abstract, hypothetical context: what WSM,Inc., 724 itself. See F.2d at 1328 n. a convey does mark immediately to a con- 3; Dealers, Big Goodyear O Tire Inc. v. sumer who has never prod- before seen the 1365, &Tire Rubber 1369 might uct and who not even know that (10th Cir.1977), denied, cert. product such a category exists. As the (1978); 98 805 Appli S.Ct. 54 L.Ed.2d United States Court of Customs and Patent Development Corp., cation Abcor Appeals in Application observed Abcor (C.C.P.A.1978); & n. 15 3 R. Development Corp., supra, such an ap- §§ 18.01, 18.04, Callmann at 2 & proach “separate concept would the of the However, survey n. 8. the market intro average prospective purchaser from the duced the district reality.” Thus, world 588 F.2d at 814. defects, suffers court several fatal and can rejected approach the held, properly serve as a basis for the dis determining that in prospec- the reaction of finding suggestive, LA trict court’s mark, “[ejvidence tive a of the generic merely descriptive, than rather context in a labels, low alcohol beers. which mark is used on packages, advertising or in material direct- Dr. Yoram Wind conducted the market * * goods probative ed to the Id. survey for Anheuser-Busch. He testified The Patent and Trademark Office Trade- that in order to determine whether “the LA Appeal Board, mark Trial and in its deci- (on designation beer) the can of connote[s] case, sion in the same stated that consider- light beer”, alcohol or alcohol low given possible ation should also be to “the study only the responses focused on significance of the term relation to the seen, those consumers who had never goods, likely of, reaction thereto of the beer, heard or tried the who were average purchaser as he encounters exposed only to the LA label on can. In essence, then, goods in sought marketplace” determining Dr. Wind answer question by “isolatpng] U.S.P.Q. perception. (BNA) the effect of consumer Some, all, alcohol”, hoi”, alcohol”, "light respondents but not of these actual- "less "reduced ly alcohol”, purposes actually used words given. "low alcohol." For I use “low alcohol” reporting responses, it is more simply it is because the most common report phrase convenient one the vari- under supra various alternatives. See n. 1. synonymous ous responses such "low alco- exposed only to Anheuser-Busch adver (T.T.A.P.1978); see 3 R. Call- also § Sixty-two tising percent LA. of this

mann 18.04. product described the as a group low alco Thus, legally relevant test of consumer If who hol beer. we focus those perceptions must reflect the real world and question to the “de some answer6 gave case, then, ap real market. In this product”, fully described 76% scribe group survey propriate of consumers to product as a low alcohol beer.7 Even group have been an informed acknowledged Dr. Wind that consumers ex consumers, familiar with low alcohol beer.4 posed advertising responded by talk Certainly, trademarks are used in the real ing about low alcohol. through context ad in a commercial world presumably testimony, sought in In his Dr. vertising. Anheuser-Busch Wind impact responses beer of the de- its low alcohol in minimize the troduced beer, communicating scribing to the public the low as a low alcohol tent of Although noting among of the beer. that even the consumers ex- alcohol character posed advertising, overwhelming LA Dr. based his conclusion that did Wind majority LA solely low on the identified as the brand name connote response prior expo question to the of consumers no responses advertising, of this product or its “what the brand name beer?”. sure to the Dr. Wind that he could not con- survey did include 369 consumers who had testified of, alcohol even to seen, tried Anheuser clude that connoted low heard exposed responded alco- either to those consumers who “low Busch and who were advertising. questions prod- supporting LA or its hol” “describe the can of type In- shed a uct” and of beer it?”. responses of these consumers “what deed, question points overwhelming he num- different on the of whether participants responded who LA connotes alcohol beer.5 ber these LA when asked to state the brand name as respondents, exposed these Of LA to evidence that consumers understand can of LA: it as only to a described 23% and it does not con- be a brand name that respond- product low alcohol beer 24% of note to them the low alcoholic content type ed alcohol” asked what “low when beer. the it The results are even more beer was. essence, significant respons- Dr. that if a examines the Wind concluded one recognizes respondents respondent LA as the es the other 249 who were brand exposure reject- explicitly previous had who to Wind that he 369 consumers had Dr. testified 4. advertising proof screening potential participants LA or that even when idea of ed the they product as a survey by consumers described the low alco- had ever heard the beer, they LA was thought hol also stated that the brand he that low alcohol beers because not, however, at for de- name. See 646-647 more It would result a bias. infra on the tailed discussion. statistics effects necessary aspect to further that of the consider advertising did, fact, the Anheuser-Busch on those con- survey survey because include the seen, of, or sumers who had heard tried LA exposed LA or the who had been to prior survey to from the the culled statistical advertising for See n. it. Anheuser-Busch infra Development prepared the Cor- tables Data pp. 5 and 646-647. Wind, poration Dr. from which Dr. Wind for analysis prepared his re- did statistical his analyze responses did the Wind not Dr. 5. port. consumers, present any nor conclusions these report, his final with re- therefrom in drawn According to the tabulation of the 6. statistical question spect whether LA connotes low to results, group respondents 46 of the 249 this to he deter- beer consumers because alcohol gave response question. no to Of the this question by focusing to that mined “answer" 76%, question, responses total to the about only “pure, response on a uncontaminated” to Thus, described it as a low alcohol beer. stimulus of the label “LA” a can. the conclusion that LA does connote low not responses sub-group respondents alcohol was based on the A small were 7. of 41 having prior exposure print consumers with LA or no to shown after advertisement advertising exposed only Seventy-eight being exposed after a can to been to a can of LA. percent responses Dr. Wind then alcohol beer. LA. focused on described LA as a low name, previously had been recognize exposed he or she cannot also that sumers who exposed alcohol, who were LA and to the for low even in those it stands Anheu- advertising described LA respondent pre- ser-Busch as a instances which the beer. low alcohol viously described as a low alco- appears disingen- hol This conclusion beer. could, by focusing responses on the One premise It on the that uous. rests false seen, of, consumers who had of those heard only meaning LA can have one to consum- exposed tried LA and who were term, Any all, after can more ers. mean advertising, conclude that LA connotes low It re- thing. requires very than one little and, thus, merely descriptive alcohol recognize average con- flection registrable. But, necessary, it is not sumer, exposed one brand of of the record and the view allocation of the designed emphasize advertising case, proof go burden that far.8 name than the alcoholic con- brand rather survey Examination of the market reveals beer, might that think both that tent of namely, serious conclu defects— alcohol is the stands for low it sion that LA does not connote product. Although Dr. name for brand legally beer was drawn from the irrelevant study Wind drew his conclusions sample group of uninformed consumers respondents assumption on the meaning asked to draw from an isolated referring perceived LA as either label, survey and that the was oth product’s description name or to a question erwise insufficient because of the content, questions its alcoholic make-up ques able structure and presented respondents as either/or Thus, upon analysis, tions asked. this sur highly unlikely propositions and seems not, view, vey in my support does the dis they perceived them as such. Dr. finding suggestive. trict court’s that LA is expressed avoiding concern about Wind’s Industry Expert Opinion B. testing appro- Testimo- certainly result is

bias ny. priate. type That structure and in one questions employed avoided bias cites, The majority support also not, however, preclude does direction finding sug- the district court’s LA is they in anoth-

possibility that created bias Buell, gestive, testimony of James er. executive, who stated that he felt LA was of low alcohol. average presumably consumer has supra See However, as noted required conception legally no of what is supra opinions of industry brand name to for a receive experts irrelevant; are the relevant test Thus, protection. just majority because perceptions pro- looks to the of informed surveyed thought, after of the consumers spective Thus, consumers. Buell’s testimo- being exposed prominently a can labeled to ny cannot, law, provide as a matter of advertising LA LA as the and that stressed support for the finding district court’s name, LA the brand name brand suggestiveness. mark may not establish that the is entitled equally is as to trademark status. What My review of record discloses no impressive Anheuser-Busch, of consumers number other evidence offered name, thought court, who LA was and upon sup- or relied the district to noteworthy trade- purposes more port finding suggestive. LA is that, notwithstanding Thus, analysis, mark is I conclude that Anheuser-Busch has advertising emphasizing focus in the failed to meet its proof burden show- name, con- that the mark as the brand of those “LA” is distinctive and over 60% least, question anything very of these con- like "Does responses 8. At the else come mind suggested may you have connoted sumers that LA hear If 'LA'?”. asked the last this, low alcohol view question, question beer to them. In would not have biased attempted survey might gone and further have survey. by asking a true to ascertain whether that 648 consisting Consequent- than mark no different to trademark status. entitled words; be a valid LA is word or it cannot trade- finding that

ly, the district court’s if it refers to the ge- mark describes or descriptive or suggestive, rather than if it any of its characteristics or is not neric, and should be clear error constitutes solely origin. used indicate See Na- set aside. Bounty, Organics, Basic 432 ture’s Inc. v. (E.D.N.Y.1977); 3 R. F.Supp. Call- “LA”. C. Effect of Initials § Thus, recognized by initials mann 18.23. record, Anheuser of this On the basis equivalent prospective consumers as carry has failed its burden Busch they for which stand are phrase establishing registrability of proof may if the not be trademarked full matter, legal LA. As phrase cannot be trademarked. See FS in LA granted a trademark should not be Services, Services, Inc. v. Farm Custom sufficiently those initials do not because Cir.1972); Inc., Mod- product— distinguish its brand from Co., Optics, Inc. v. Lens ern Univis determining In alcohol beer. low 504, 506, (1956); 3 R. C.C.P.A. trademark, the ulti may become a mark § 18.10; Callmann accord National Con- dis on the mark’s criterion focuses mate Examiners, Bar 692 F.2d at ference primarily it ori does indicate tinctiveness: 488. WSM, Inc. gin ownership. The four descrip “merely categories “generic”, factors me to conclude Several lead — “arbitrary and tive”, “suggestive”, and LA with al consumers will associate “low propounded demon First, penchant I fanciful”—were cohol.” would note along public adopt continuum which brand strate the the American nicknames scheme, “generic” appellations, including lie. Under that names and other shortened “arbitrary represent the tendency duly and fanciful” This has been acronyms. can never Application extremes—the former which Ab two noted elsewhere. See which a trademark and the latter F.2d at Development constitute cor § descriptive” and “Merely (Rich, J., concurring); does. 3 R. Callmann 18.- the con “suggestive” reflect the middle of that LA highly likely It seems will close is a tinuum where distinctiveness the “bar become call” question. Although categories States, just these as it did Aus in the United 11(b). Indeed, conceptually, need mindful useful we tralia. See Part infra analyzing trade the ultimate focus in precisely what Anheuser-Busch intended always on the distinctive capitalize mark claims on when it selected as the source-designating capacity of a its low ness name for alcohol beer. See infra 11(a). mark.9 Part assessing Second, distinctiveness of the mark in a the use “[i]t “LA”, key question distinguish is whether it going trade or business pub- in the substantially differs from terms of the user from that of others associate of it creates so that consumers will not the choice what lic domain property subject exclusively with Anheuser-Busch. See becomes § Brands, really Inc. v. acronym An mark.” Standard Smi- 18.01. R. Callmann Thus, 9. That the "generic" “descriptive" ques- the categories §§ R. Callmann and 19.25-19.38. sufficiently parameters always, merely of the non-distinc- "Is distinc- define the tion is the mark tive, “arbitrary non-protectable, and identify product?". thus and of the In tive to the source "suggestive” parameters the case, and fanciful” must be made on this that determination distinctive, protectable, and do not and thus the meaning mark "LA” the intrinsic of the because value, any possess has determinative themselves does show that Anheuser-Busch the record not support. just Under than common sense more any to establish second- has offered evidence Act, applicant may trade- obtain the Lanham hardly surprising ary meaning. That merely descriptive for a mark status even mark has been remembers that Anheuser-Busch one has achieved sec- it can show that mark if beginning April marketing only LA since meaning ondary so as to become distinctive. 1984. 1052(f) (1982). generally See 3 § See 15 U.S.C.

649 34, (2d Cir.1945) dler, name, (empha the accompanying advertising Thus, added). I think it crucial to con does note low sis alcoholic content of the “LA” exists, view, sider the initials in the context of the my Little doubt beer. proba advertising and the synonomous LA will come be with low development ble course of in the low alco average alcohol consumer’s mind segment.10 hol beer heavy advertising. after few months of appearance This belief is reinforced In Grove v. Laboratories Inc. Brewer & newspapers numerous articles Co., (1st Cir.1939), magazines beginning since 1984 ex court although noted that the initials term plaining that the “LA” stands for low “LBQ” fanciful, arbitrary use of alcohol.12 kind of This association tends to along them on a label words “La confirm that the informed consumer ex Quinine” xative might Bromo render the posed to the new will more likely descriptive.11 initials Accord Horlick’s equate than not LA primarily with low Malted Milk Co. Borden Fed. alcohol, rather than associate the letters as (D.C.Cir.1924)(initials “MM” used on an Anheuser-Busch trademark. along descriptive label with “malted milk” product); America, Kampgrounds sum, I because think that Anheuser- cf. Inc. v. Camp North Delaware A-OK Busch has failed to marshall sufficient evi- Inc., ground, F.Supp. 1291-92 dence to the registrability establish of the (D.Del.1976): “LA,” that, mark on the record before us, “LA”, apparent, law, If it were from the initials as a matter of * * * represent descriptive designation

manner in KOA of the displayed did I product, KOA indeed alcohol would set aside as Kampgrounds stand of America erroneous the district court’s find- [for example, always if ap- suggestive. the KOA mark that LA is Because the peared alongside Kamp- of the granted protection name district court trademark grounds America], might I then that finding, judgment, basis of more descriptive convinced my view, KOA is support. Accordingly, [that lacks I descriptive because it stands for. a independent now turn to an consideration phrase]. Anheuser-Busch should receive protection trademark for LA. The record reveals that may not now only associate with low alcohol II. GRANTING TRADEMARK STATUS category because this has re- LATO THE WOULD FRUSTRATE cently come on the market and much of the FUNDAMENTAL INTENT OF general public not does even know of its TRADEMARK PROTECTION. Although existence. Anheuser-Busch does display categories originally “low alcohol” on the devised to aid label, primarily promotes LA as analyzing the courts in trademark claims Delivery telegram, telephone, Florist's Transworld Association or other means of 10. Cf. Inc., (BNA) Teleflora, U.S.P.Q. v. (T.T.A.B.1980): communication. 11. But the found that the evidence in the “FLOWERS-BY-WIRE,” The term considered case showed that defendant had established abstract, may project Thus, secondary meaning. granted the court ** significance Obviously, *. is not this protection. proper descriptiveness test. The or nonde- ** * scriptiveness term must be con- Time, See, 2, 1984, 76; Fortune, e.g., Apr. at * * * marketing sidered in envi- 5, 1984, 70-71; Week, March at Business Feb. * * * * * light, ronment *. Viewed 32; Lazurus, Week,Adweek, Top at that, by there can be little doubt the manner 30, 1984, 3; Hansell, Jan. low- offer industry in which the has used the terms beer, Press, 6, 1984; Detroit Free March years, “FLOWERS-BY-WIRE” over the Herald, 7, 1984, B-7; Dallas Times Feb. Ad describes, phrase immediately purchasers to 2, 1984; Lazurus, Day, brewing Feb. Busch new prospective purchasers, and a service involv- war, Tribune, 24, 1984, 3, Chicago suds § Jan. ing delivery by intercity of flowers use of the of avoiding possibility involved, the a all own and thus a life their have assumed reg- the suits harassing infringement doctrine has evolved body of tremendous the mark who use against others obscured semantic istrant has so become describing their own catego- advertising or rigid distinctions and unwarranted rization, products. and mutually exclusive boundaries rankings, choked it has hierarchical quite if anomalous at 813. It would Id. and their vitality categories the of the off apply of trade- to the law the courts were analysis the of trade- continuing efficacy in part of marks, of the law which is but fanciful”, “Arbitrary and mark claims. in a manner which competition, unfair “generic” “descriptive”, and “suggestive”, companies to trade- permit use the significance: achieved talismanic have unfairly restrict sword mark laws as a attempt parties the courts adverse merely than as a shield competition rather disputed into one of pigeonhole the products own and their protect their categories consequent outcome- products promoting those investment effect, addressing of instead determinative Yet, infringement by others. from unfair underlying equities ensure today majority precisely this is what car- objectives of the trademark laws are permits. of the must be mindful ried out. Courts Docu- A. Anheuser-Busch Internal flexi- law of apply need to trademarks Experi- and the Lite Beer ments light the exist- bly pragmatically ence. ing circumstances. country in this have re Sales beer under Resolution of trademark issues for time. The relatively mained flat some fails categorization often subtle nuances growth prospects in the beer best for sales relationship to consider the between industry development of new occur mark, product, and the the nature of the prime example of segments. The market registra- seeking applicant’s objectives this, major any lost on of the and one not Moreover, pat- factual tion of mark. breweries, Anheuser-Busch, including unique in trademark cases are so terns development seg “light” beer mark, relationship product, between ment in the 1970’s. Miller was the first case-by-case producer demands careful light major company to market a beer and analysis analysis rather than extensive two-year during enjoyed roughly period Applica- decisions. prior trademark See entry the sole beer Development Corp., 588 tion Abcor market. Miller called brand “Lite” and (Rich, J., concurring). With F.2d at sought protection. The Seventh trademark my background, and the basis this as “light” ultimately determined that Circuit 1(c) initials in Part conclusion “lite”, context, when used the beer merely “LA” are registrable thus not alcohol”, I considera- phrase “low turn to a Brewing trademark. Miller Co. v. G. See equities case and tion of Co., Brewing Heileman 561 F.2d 75 application proper law of trademarks Cir.1977), denied, cert. U.S. LA. (1978).13 S.Ct. 54 L.Ed.2d That Descriptive denied marks are decision, however, only to Miller the denied laws protection rights exclusive to the use of the term reasons: Miller, two through adver “lite” and extensive call” tising, “lite” the “bar (1) prevent established the owner of a mark Thus, segment. inhibiting par- for the calorie beer competition the sale anyone free- who enters a bar and asks goods; (2) ticular maintain Ac- “light”, gets “Lite” from Miller. language public dom the to use the denied, (7th Cir.1979), Brew- cert. Brewing 13. See also Miller Co. Falstaff (1980). Cir.1981); ing Corp., (1st Brew- Miller S.Ct. 62 L.Ed.2d 787 655 F.2d 5 F.2d 990 Brewing Co. v. Jos. Schlitz suit, parties states, the this cording to to Miller’s II Busch under section “LA labelled light share of the beer current market —The Bar Call of the 80s”: 57% its largely position initial attributable product in market, As the first this new and entry as the sole market the evolution LA has an excellent opportunity be- category. the for the “lite” as “bar call” light come THE bar call for alcohol People ask, quickly beers. will learn to many Between and 1983 the ma “light beer,” not for alcohol simply but jor brewers14 became interested low al for an “LA.” should We be able to possible seg cohol as a new beer market virtually establish a bar call that is un- ment. Numerous Anheuser-Busch internal breakable. reports prepared documents for An Marketing on, Guide at 12. Further in the during planning stages heuser-Busch the addressing promotion, section sales the early late 1983 and 1984 indicate Anheuser Guide observes that new “preempt” “[o]ur Busch’s desire low alco has a natural preempt bar call should hol market beer “a la Miller and ‘lite’ category during introductory peri this example, Naming beer.” For the Product 1983, od.” Id. at 21.15 Report, dated November Strategy prepared by Corporation Interbrand These internal documents are relevant to penciled Anheuser-Busch contains nota show Anheuser-Busch’s intent to use “preemptive” heading tion under descriptive preempt manner to the low Objectives” and “Brand Name a recommen laws, alcohol beer market. trademark dation oppor however, that “Anheuser-Busch has an designed protect names tunity to ‘write the book’ on the reduced by company promoted selected with segment exactly way indicating same ownership intent * * segment Miller did in the *.” goods. source of It is inconsistent A briefing report November on re the objectives of the trademark laws to produced by duced alcohol beers suggest protection James of those laws Buell, executive, an Anheuser-Busch lists should be extended to cases in which a objective the first brand name company attempts arrogate for business- promotional low alcohol beer that it be reasons a mark that essen- preemptive like tially descriptive. “Lite.” In another internal These documents dis- briefing intent, document dated just December close such an see Nature’s Wirtel, Charles another Anheuser Bounty, Organics, Inc. v. Basic executive, Busch F.Supp. (considering states that “it is our at 552 pur- intent and charge preemptive in category pose to be company determining claimed * * * the major beneficiary to be descriptive), mark to be and that intent emergence.” Finally, tellingly, directly and most prohibition against runs into the “Marketing Guide” furnished granting protection to a 16, 1984, wholesalers on March competition. Anheuser- that would inhibit Applica- breweries, regional 14. Two ketplace.” report produced by smaller the Chris- A second Brewing Company tian Philadelphia 20, 1983, Schmidt Corporation Interbrand on December Hudepohl Brewing Company and the of Cincin- objective strategy listed as one name nati introduced low alcohol beers in 1983 under pre- of "a use name in order respective brand names of "Break" and empt category, transcription ala lite.” A “Pace”. 2, 1984, by January notes dictated Mr. on Busch promi- reveals "[we name LA should] [u]se 15. There are several other documents contained * * * nently package on such as did Miller provide record further evidence * * * LA, trying I Lite. like the to set anti-competitive intent that dominated An- Light category the entire name like introducing heuser-Busch’s actions in beer. A its LA * * There *.” is also memo- a "confidential” transcription of notes dictated Au- listing randum Busch, the brand name III, alternatives gust A. the chief executive officer Anheuser-Busch, 31, 1983, which notes "L.A. in this use from Anheu- [LA on October contains category preemptive could ser-Busch] be a Mr. statement Busch that "we could move concepts with one of the name”. national rollout segment possibly capture of the mar- industry in a different Corp., 588 same coun- Development Abcor tion —albeit try preempt the intent to the market. 813. F.2d at —with unescapable The conclusion to be drawn Experience. The Australian B. Anheuser-Busch these facts is that from deciding move the low alcohol to into on a term sought to obtain a trademark segment, and beer both Anheuser-Busch generic, or at thought it become that would carefully Australian ex- Stroh studied the call”, segment for this least the “bar perience low since the with alcohol beer preemptive gain in to a market order beer developed Three there in late 1979. market just market low on the alcohol beer hold designation in use the companies Australia market. light beer I do Miller did with the the label of their low alcohol beer. LA on denigrate any way in Anheu not mean experience of the Australian The evidence attempt. Its for that innovative ser-Busch the “bar quickly became indicates that opening up in market for strategy a beer term the low alcohol call” or content deserves with a reduced alcoholic Brewing the Tooth category, and that exploit fairly and it is entitled to this credit very LA” advertising “Tooth Company, by may not, exploit It this market. share heavily, had obtained 70% by appropriating for its market alcohol beer market. belongs public, to the inherently that that LA argued that the evidence Stroh including competitors. its trademark in Australia and the “bar call” had become designed country pro of this laws huge captured LA had share that Tooth signify the tect brand names used to source LA is fact of the market reveals that thereby company of a enable registrable not for trade- and thus reputation goods protect the of its and to agree I protection. While mark among consuming prevent confusion that supra at majority, see It is the courts public. untenable experience is not relevant Australian protection extend the these should laws perceptions obj determination consumer anticompetitive, preemptive to sanction LA in classification of the ultimate Accordingly, I would refuse ectives.16 States, that evidence United I do think that trademark status to Anheuser-Busch for its show Anheuser-Busch relevant to use of on its low alcohol beer. arriving creative exercised no effort alcohol beer decision to call its low THE IS III. INJUNCTION OVER- Frank, concurring in Judge Stan- “LA”. BROAD. Smidler, Brands, Inc. v. stated that dard agreed majority if I Even sym- plaintiff originate did “[sjince not finding that LA sug- the district court’s which, noted, previ- as heretofore bol— * * * gestive, pro- and thus to trademark entitled dif- ously been utilized others [in erroneous, tection, I not scope monopoly itsof ferent contexts]—the injunctive modify striking order peculiarly should be restricted.” portion enjoins “doing I which case believe that Similarly, 43. likely acts are granted any other cause not be should confusion, deception with simply plain- it mistake or a term protection for 65(d) Rule the Federal Rules of companies tiff.” from other borrowed entitled, our under trade- majority's Justice Frankfurt- heuser-Busch citation of laws, magnetism” of a mark “commercial on trademark law Mishawaka remarks er's merely apt. supra at 643 n. 17. I because of quite See Rubber entry heavy exploitation early of the mar- disagree majority's merely view the do The evidence of Anheuser-Busch’s intent impact in this case. I ket. of those remarks experience knowledge "enterprising the Australian inno- condemn Anheuser-Busch's vativeness"; that, rather, claim to me to applaud I its effort in intro- seem choosing undermine “LA”, Nonetheless, any ducing it exercised cre- the name a low alcohol beer. several ativity entitling our developing protection under trade- other breweries have been currently marketing mark laws. low alcohol beers An- injunctive requires Procedure or- Civil specific in terms describe

ders PARKER, Appellant, Patricia sought detail the acts to be' reasonable Injunctions must be tailored restrained. CORROTHERS, Warden, Helen

narrowly remedy specific harm Women’s Unit; Wells, Chairman, possible Robert enjoin shown rather than to all Board Paroles; Lockhart, & Hartford-Empire of Pardons A.L. breaches of law. States, 386, 409-10, Department v. Director Arkansas Co. United U.S. Correction, 373, 385-86, (1945); Appellees. 89 L.Ed. 322 S.Ct. Project Aviation Consumer Action v.

Washburn, 101, (D.C.Cir.. YANCEY, Bentley Appellant, John 1976); 1360, Romney, Davis v. F.2d v. (3d Cir.1974). EVANS, Jr., Administrator, Marvin case, complained In this Wells, Chairman, Robert Arkansas conjunction use of LA in Stroh’s Parole, Appel- Board of Probation and one of Stroh’s brand names—“Schaefer” or lees. “Old Milwaukee”—would dilute effec-

tiveness of Anheuser-Busch’s LA brand 84-1284, Nos. 84-1484. injunction and confuse consumers. Appeals, United States Court of using specifically prohibits Stroh from Eighth Circuit. any part or colorable imitation. That appropriate the order is and should suffice 11, Sept. Submitted 1984. rectify prob- harm in this case. 6, any provision lem with “or other acts” Decided Dec. “prevent of the order is that it does not 13, 1985. Rehearing Denied Feb. part

uncertainty and confusion * * * * * * [Stroh, and it does avoid not] [a potential contempt on a decree too citation]

vague to understood.” v. Schmidt Les-

sard, 414 U.S. 94 S.Ct. (1974); Corp. Toy

38 L.Ed.2d 661 Ideal Toy Manufacturing Corp.,

Plawner (3d Cir.1982). provision This

simply give pre- does not Stroh “fair and

cisely injunction drawn notice what the

actually Foods, prohibits.” Granny Goose Teamsters, v. Brotherhood

Inc. 423, 444, 1113, 1126, 39 L.Ed.2d (1974). uncertain, example,

It is

provision means that Stroh would be sub- contempt

ject to if it named “Loal”, “Lial,” acronym some other

for low alcohol. Anheuser-Busch name, protect

is entitled its brand Thus, even

not the it. nature of

if An- majority granting is correct in LA, protection

heuser-Busch trademark Gibson, Floyd injunction Judge, too broad R. Senior order is either Circuit part vague. strike the concurred in part too dissented in Accordingly, I would opinion. in the order. “any filed other provision acts”

Case Details

Case Name: Anheuser-Busch Incorporated v. The Stroh Brewery Company

Court Name: Court of Appeals for the Eighth Circuit

Date Published: Dec 5, 1984

Citation: 750 F.2d 631

Docket Number: 84-1714

Court Abbreviation: 8th Cir.