Friday, January 27, 2012

TTAB Affirms Genericness Refusal of CHRISTMAS ALE for ... Guess What?

The Board affirmed a refusal to register CHRISTMAS ALE for beer [ALE disclaimed], on the ground of genericness, and alternatively as merely descriptive under Section 2(e)(1). Despite use of the designation by Applicant Great Lakes Brewing Co. for nearly two decades, the Board found Applicant's evidence of acquired distinctiveness to be insufficient in view of the highly descriptive nature of the applied-for mark. In re Great Lakes Brewing Co., Serial No. 77464553 (January 9, 2012) [not precedential]

Examining Attorney Florentina Blandu submitted dictionary definitions of CHRISTMAS and ALE, as well as evidence showing that "ale is a subset of beer." Internet website pages referred to "Christmas Ale" as a type of seasonal beer available from any number of sources.

Great Lakes pointed to other registrations for marks that include the word CHRISTMAS (but none for beer). The Board found these registrations irrelevant, in part because it is not bound by prior decisions of examining attorneys in other cases.

The Board deemed the genus of goods to be "beer," and it found that CHRISTMAS ALE is understood by the relevant public to refer to the genus of goods, or a subgenus thereof. Therefore it concluded that CHRISTMAS ALE is generic for beer.

As to the claim of acquired distinctiveness, Great Lakes pointed to its use of CHRISTMAS ALE since 1992, annual growth in sales of 30%, its receipt of various awards, its sale of collateral merchandise, and a number of media mentions. The Board, however, ruled that Applicant's commercial success demonstrated only the popularity of the product, not that consumers view CHRISTMAS ALE as a trademark. The record contained "little direct evidence" that relevant consumers perceive CHRISTMAS ALE as a source indicator for the goods. Given the (at least) highly descriptive nature of CHRISTMAS ALE, the Board "would need to see a great deal more evidence (especially in the form of direct evidence from customers) than what applicant has submitted in order to find that the designation has become distinctive of applicant's goods."

And so the Board affirmed both the genericness refusal and the alternative Section 2(e)(1) refusal.

TTABlog comment
: The Board deemed CHRISTMAS ALE to be more akin to a compound word than a phrase, but that ruling had no effect on the outcome, since the evidence showed use of the phrase "Christmas Ale" by third parties.

Text Copyright John L. Welch 2012.


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