When a surname can be registered as a trademark

June 19, 2019
Patterson Thuente IP

Family businesses often like to use their surname as a mark for their products and services, whether as a point of pride or simply because they feel the name is memorable. These businesses can run into obstacles, though, when it comes time to register trademarks with the surname. A prolonged court battle over one such mark shows how problems can arise — and how businesses can overcome them.

The brewing controversy

St. Louis Brewery (SLB), co-founded by Thomas Schlafly and Daniel Kopman, sells 60 kinds of craft beer in 15 states and the District of Columbia. It sells through wholesalers, retail locations and several national restaurant chains. The brewery began selling Schlafly beer in 1991 and, from 2009 to 2014, sold more than 75 million units, not including restaurant sales.

According to SLB, it has made substantial investments in marketing the brand, and all labels for Schlafly beer prominently feature the Schlafly mark. It has featured the mark in radio, print, billboards and social media, as well as at over 500 events.

Prior to the application at issue, SLB had already obtained two trademark registrations for logo marks with the Schlafly name. In 2011, it applied to register the word mark in standard character format for a variety of types of beer and malt-based alcoholic beverages.

Two individuals with the surname of Schlafly opposed the most recent application. The now deceased Phyllis Schlafly was a well-known conservative activist and proponent of “traditional values” who lived in Missouri. Dr. Bruce Schlafly (Phyllis’s son) is a Missouri physician who has used his name in his practice since 1986. They asserted that, if granted, the mark would have a negative connotation because of drunk driving and intoxication leading to injuries.

The Trademark Trial and Appeal Board (TTAB) ruled in SLB’s favor and found that the Schlafly mark had acquired secondary meaning under the federal trademark law — that is, the mark had become distinctive as applied to SLB’s goods in commerce. The opposers appealed to the U.S. Court of Appeals for the Federal Circuit.

Another round

The Lanham Act allows the registration of marks that have acquired distinctiveness (also known as secondary meaning) from use in commerce. The federal regulations for the law provide that the following types of evidence can indicate acquired distinctiveness:

  • Ownership of prior registration(s) of the same mark,
  • Five years of substantially exclusive and continuous use in commerce, or
  • Other evidence — including verified statements; depositions or other appropriate evidence showing duration; extent and nature of the use in commerce and advertising expenditures; and verified statements, letters or statements from the industry or public, or both.
    The appeals court found that SLB had presented all three types of evidence, including evidence of the commercial success of Schlafly-branded beer, sales of more than 75 million servings in the 2009 to 2014 period, and media coverage in local and national media outlets. SLB also had demonstrated more than 25 years of continuous use of the mark.

A beer by any other name

The opposers raised two arguments focused on the fact that the mark was a surname. The court shot down both.

First, the opposers claimed that “Schlafly” was significant to the public primarily as Phyllis Schlafly’s surname and urged the court to adopt a new test for surnames. Under the proposed “change in significance” test, a surname couldn’t be registered as a trademark in the absence of a showing of a change in significance to the public — from a surname to an identifying mark for specified goods. The court found the request for a new test to be unsupported and pointed out that the Schlafly mark had acquired secondary meaning for beer products, regardless.

The opposers further argued that the TTAB should have considered whether the mark was “primarily merely a surname” because the Lanham Act prohibits the registration of such marks. As the court noted, though, the law also provides that trademarks that are primarily merely a surname can be registered if they have acquired distinctiveness.

Surnames can trigger bar fights

SLB filed its registration for the Schlafly mark eight years ago. While the brewery seems likely to secure registration, the case illustrates some of the risks in selecting and registering a surname as a mark. •

Schlafly v. St. Louis Brewery, LLC, No. 17-1468, Nov. 26, 2018, Fed. Cir.

 

Constitutional claims fall flat

The opposers to the Schlafly mark in Schlafly v. St. Louis Brewery, LLC, also took the approach of claiming that registration of the mark violated the U.S. Constitution, including the First and Fifth Amendments. The U.S. Court of Appeals for the Federal Circuit rejected these arguments.

As to the First Amendment claim, the court found that the opposers didn’t adequately explain how registration improperly impinged on their rights. Their Fifth Amendment claim likewise failed because trademark registration isn’t a taking of property for government use.

The court also dismissed the opposers’ claim that their due process rights were violated by the Trademark Trial and Appeal Board’s recognition of the secondary meaning in the Schlafly mark without proof of a change in public perception. It concluded that the trademark opposition procedure, which the opposers took advantage of, provides appropriate due process of law.

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