Friday, September 18, 2009

Precedential No. 38: Expert Testimony Alone Not Sufficient to Prove Mere Descriptiveness of "BEER 1" Marks

The Board dismissed this opposition to registration of the marks BEER 1; ONE BEER, BEER 1; and BEER 1 & Design (shown below) for beer [BEER and MMVII disclaimed], finding these marks to be neither merely descriptive nor deceptively misdescriptive under Section 2(e)(1). Opposer Anheuser-Busch relied primarily on the testimony of a linguistics expert [transcript here], but the Board found the testimony to be insufficient, absent evidence as to how consumers perceive the marks. Anheuser-Busch, Incorporated v. Kelly J. Holt, 92 USPQ2d 1101 (TTAB 2009) [precedential].

A-B's expert asserted that he had familiarized himself with the meaning of "descriptive" in a legal context, and stated that he used "standard analytic techniques" in the linguistic field in concluding that Applicant Holt's marks would be understood as being descriptive of the goods.

As to BEER 1, he opined that Americans would immediately understand that term "to identify a ranking of beers, i.e., that the product in question is ranked number 1."

As to ONE BEER, BEER 1, the expert further relied on his "intuitions as a native speaker" in concluding that the phrase "means there is only one brand ... and this beer is ranked #1."

As to the logo mark, the expert concluded that the design "leads to the overall impression of the Alleged Mark being a medal or award or some type of ranked representation" and, according to Opposer, it therefore describes "a characteristic, quality, feature or attribute of the beer."

Applicant Holt argued that the word "one" and the number "1" have many different interpretations. Thus BEER 1 is susceptible to many meanings. As to ONE BEER, BEER 1, Holt contended that the expert failed to identify any specific message that the mark delivers about the goods. And as to the logo, Holt pointed out that even A-B's expert used the terms "suggests" and "evokes" in discussing the mark.

The Board observed that "although an opinion of an asserted expert in linguistics may have some probative value, it is not dispositive on the ultimate determination of descriptiveness."

the opinion offered by Professor Ward as to the descriptiveness of applicant's "BEER 1," "ONE BEER, BEER 1" and "BEER 1 MMVII and design" marks, as opposed to any factual matters within his area of linguistic expertise or personal knowledge, is of virtually no probative value in this case.

Moreover, the Board pointed out, "conspicuously absent from the record is any empirical evidence, such as surveys, excerpts from newspapers, magazines, trade journals, the internet and the like, showing that consumers perceive the marks as descriptive."

And it noted that the word "one" has twenty-four different meanings in the Random House Webster's College Dictionary.

several of the meanings of "one" listed above are equally plausible in the context of applicant's goods. For example, a consumer is just as likely to perceive the number "1" in the mark as meaning "unique" or "only" as he or she is to perceive the number as "a ranking."

In short, the Board found that "the record is devoid of credible evidence that established that BEER 1 would be perceived by the purchasing public as meaning 'beer that is ranked #1' and thus merely descriptive of beer."

As to the mark ONE BEER, BEER 1, the Board found the expert testimony alone to be unpersuasive, and it noted the lack of "objective evidence" to show that this mark is descriptive of beer.

As to the logo mark, "[h]ere, too, the expert linguist has gone far beyond his claimed area of expertise." A-B's dissection of the logo is "an inappropriate attempt to ascribe descriptive significance to its individual elements."

In sum, the Board found that Opposer had failed to carry its burden of proof:

there is simply nothing that persuades us that the lone opinion of opposer's asserted linguistics expert should substitute for evidence of the perception of the consuming public of the involved marks, or substitute for the Board's ultimate determination of the issue of mere descriptiveness in the matters before us.

As to the merely descriptiveness claim, the Board found that none of the three marks immediately conveys the idea that Applicant Holt's beer is "ranked number one." Therefore there was no misdescription.

And so the Board dismissed the opposition.

TTABlog comment: Mr. Holt, this one's for you!

Text Copyright John L. Welch 2009.


At 8:28 AM, Anonymous Paul Reidl said...

The pilot survey results must not have been useful, although the Board's disdain for the expert witness is curious. It is of course true that expert testimony is not dispositive, but if that is the record evidence the testimony should be given some weight. In any event, a very interesting decision.

At 3:45 PM, Anonymous Catherine Cavella said...

Yes, a very interesting post. It almost seems the TTAB felt the expert was stepping on its toes in coming to what is essentially a legal conclusion. Perhaps if his testimony were limited to relevant facts and his linguistic opinion the Board would have given his testimony greater weight. Or perhaps they simply suspected his testimony was disingenuous.


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