BRUCE S. SCHLAFLY, PHYLLIS SCHLAFLY REVOCABLE TRUST, SUCCESSOR-IN-INTEREST TO PHYLLIS SCHLAFLY v. SAINT LOUIS BREWERY, LLC
2017-1468
United States Court of Appeals for the Federal Circuit
November 26, 2018
NEWMAN, MAYER, and STOLL, Circuit Judges. Opinion by NEWMAN, Circuit Judge.
Appeal from the United States Patent and Trademark Office, Trademark Trial and Appeal Board in No. 91207224, 91207225.
MARK R. SOWERS, The Sowers Law Firm, LLC, St. Louis, MO, argued for appellee.
Before NEWMAN, MAYER, and STOLL, Circuit Judges.
NEWMAN, Circuit Judge.
The Opposers appeal, arguing that the TTAB did not recognize that the mark was “primarily merely a surname,” and that the TTAB improperly accepted that the mark has acquired secondary meaning although the applicant did not provide survey evidence. The Opposers also claim violation of their First Amendment, Fifth Amendment, and Due Process rights and protections.
We conclude that the mark “SCHLAFLY” for beer meets the requirements for registration, and affirm the decision of the TTAB.
BACKGROUND
A
The St. Louis Brewery
SLB states that it sells sixty types of beer, all with the SCHLAFLY mark, in fifteen states and the District of Columbia, through thirty wholesalers, 14,000 retail locations, and several national restaurant chains. Appellee‘s Br. 4-6. From 2009 to 2014, SLB sold more than seventy-five million units of SCHLAFLY beer, not including sales made at its restaurants; this included 56.3 million bottles and cans and 18.5 million draft servings of SCHLAFLY beer. Appellee‘s Br. 6.
SLB already has trademark registrations for two other logo marks that include the SCHLAFLY name. The application here seeks to register the SCHLAFLY word mark in standard character format for “[b]eer, ale and lager; [b]eer, ale and porter; [b]eer, ale, lager, stout and porter; [b]eers; [b]lack beer; [b]rewed malt-based alcoholic beverage in the nature of a beer; [and] [c]offee-flavored beer.” J.A. 456. To support its application, SLB submitted a
B
The Opposers
The Opposers filed separate oppositions to the registration, and the oppositions were consolidated by the Board and presented on the same record and briefs.
Opposer Phyllis Schlafly, now deceased, was a well-known activist who lived in Missouri. Her brief refers to her as a “conservative icon,” and it is not disputed that she was a known public figure. The Opposers argue that, due to Phyllis‘s role in political and public discourse, “the surname Schlafly is primarily associated in the minds of
Opposer Dr. Bruce Schlafly is a physician in Sappington, Missouri, and has used his name in his medical practice since 1986. Appellants’ Br. 7-8. The Opposers argue that, if granted, the SCHLAFLY mark will have “[a] negative connotation due to complications with . . . [d]runk driving [and] intoxication leading to injuries.” J.A. 45 (Tr. 15:10-14).
C
The Board Decision
The TTAB ruled in favor of SLB and accordingly entitled the SCHLAFLY mark to registration on the Principal Register.1 The allowance was on the basis of acquired distinctiveness under
The Board rejected the Opposers’ argument that SLB was required to submit consumer surveys as evidence of secondary meaning. Id. at *8. The Board found the evidence presented sufficient to show that the mark had acquired distinctiveness in commerce, stating that the Board could not “escape the conclusion that Applicant‘s mark and goods have developed market recognition among a segment of the relevant public.” Id. The Board then concluded that the applicant had established “a substantial business and has vigorously promoted its beer under the mark SCHLAFLY in such a way as to have created, among its customers, an association between its mark and its goods.” Id. at *9.
After the TTAB decision, the Opposers requested reconsideration on the ground that it was improper to permit registration based on acquired distinctiveness without a survey showing secondary meaning. The Board denied reconsideration, stating that there was more than enough evidence to support a finding of secondary meaning, and, “[t]o be blunt, this was not a ‘close call.‘” Opinion on Request for Reconsideration, Opposition No. 91207225, at *3.
DISCUSSION
The question of acquired distinctiveness of a mark is a question of fact, and the Boards findings are reviewed for
The question of whether the Board applied the correct legal standard to the facts is a question of law. Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 964 (Fed. Cir. 2015) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1345 (Fed. Cir. 2001)). We review the Board‘s legal determinations de novo and without deference. Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265 (Fed. Cir. 2002).
I
Acquired Distinctiveness of the Schlafly Mark
The Lanham Act in
The statute also states that “[t]he Director may accept as prima facie evidence that the mark has become distinctive, as used on or in connection with the applicant‘s goods in commerce, proof of substantially exclusive and
(1) Ownership of prior registration(s). In appropriate cases, ownership of one or more active prior registrations on the Principal Register or under the Trademark Act of 1905 of the same mark may be accepted as prima facie evidence of distinctiveness if the goods or services are sufficiently similar to the goods or services in the application; however, further evidence may be required.
(2) Five years substantially exclusive and continuous use in commerce. In appropriate cases, if a trademark or service mark is said to have become distinctive of the applicant‘s goods or services by reason of the applicant‘s substantially exclusive and continuous use of the mark in commerce for the five years before the date on which the claim of distinctiveness is made, a showing by way of verified statements in the application may be accepted as prima facie evidence of distinctiveness; however, further evidence may be required.
(3) Other evidence. In appropriate cases, where the applicant claims that a mark has become distinctive in commerce of the applicant‘s goods or services, the applicant may, in support of registrability, submit with the application, or in response to a request for evidence or to a refusal to register, verified statements, depositions, or other appropriate evidence showing duration, extent, and nature of the use in commerce and advertising expenditures in connection therewith (identi-
fying types of media and attaching typical advertisements), and verified statements, letters or statements from the trade or public, or both, or other appropriate evidence of distinctiveness.
SLB presented all three types of evidence to the Board, and the Board evaluated fifteen different forms of evidence in reaching its conclusion. These included evidence of the commercial success of SCHLAFLY-branded beer through sales at restaurants and large retailers, evidence of sales of over seventy-five million servings of SCHLAFLY-branded beer between 2009 and 2014, and media coverage in local and national media outlets, including USA Today, The Washington Post, and The Wall Street Journal. Appellee‘s Br. 28-31. In addition, SLB demonstrated more than twenty-five years of continuous use of the SCHLAFLY mark. The Board also found direct evidence, in the form of press notices which were “direct evidence of third-party perceptions of the mark.” Opinion on Request for Reconsideration at *3 (J.A. 3). The Board and courts have recognized that both direct and circumstantial evidence may show secondary meaning. See Yamaha Intern. Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 1583, (Fed. Cir. 1988) (“[A]bsence of consumer surveys need not preclude a finding of acquired distinctiveness. . . . To prove distinctiveness under
The Opposers further argue that the Board refused to determine whether the mark was “primarily merely a surname,” pointing out that
No law or precedent suggests that surnames cannot be registered as trademarks if they have acquired distinctiveness in trademark use. Because the Board found that the SCHLAFLY mark for beers had acquired secondary meaning,
II
The Constitutional Claims
The Opposers argue that the registration violates the First and Fifth Amendments of the Constitution. As to the First Amendment claim, the Opposers do not adequately explain how registration improperly impinges on their First Amendment rights. The Fifth Amendment claim likewise fails, as trademark registration is not a taking for government use. See Acceptance Ins. Cos., Inc. v. United States, 583 F.3d 849, 854 (Fed. Cir. 2009) (explaining that the court must first “determine[] whether the claimant has identified a cognizable Fifth Amendment
The Opposers also claim that their Due Process rights were violated when the Board recognized secondary meaning in the SCHLAFLY mark without proof of a change in public perception. However, the trademark opposition procedure, of which they have availed themselves, provides appropriate process of law.
CONCLUSION
The decision of the Trademark Trial and Appeal Board is affirmed.
AFFIRMED