Thursday, June 12, 2014

TTAB Overrules Disclaimer Requirement for BENEDIKTINER for Beer and Food Services

The PTO examining attorney required disclaimer of the word BENEDIKTINER in the mark shown below [WEISSBIER disclaimed], for beers and for "services for providing food and drink, namely, providing of food and drink; temporary accommodation, namely, providing temporary housing accommodations," maintaining that the word is merely descriptive of the goods and of a feature of the services. Applicant BEDA refused to comply and, when the final refusal was issued, appealed to the TTAB. The Board reversed the refusal to register. In re BEDA Investments GmbH, Serial No. 79107074 (June 10, 2014) [not precedential].

Applicant BEDA conceded that the English translation of BENEDIKTINER is "Benedictine." The Examining Attorney relied on a dictionary definition of Benedictine as a noun meaning "A monk or nun belonging to the order founded by Saint Benedict of Nursia." In adjectival form, the Board noted, Benedictine means "of or relating to St. Benedict of Nursia: of or relating to the Benedictines."

Applicant BEDA also stated that it is part of a brewery called Bitburger Braugruppe, which has entered into a joint venture with the Benedictine Order of Ettal for the production of beer. That led to the Examining Attorney's position that the word BENEDIKTINER "immediately tells consumers an important fact about the source of applicant’s beer and the beer featured in its food and beverage provision services."

The essence of the Examining Attorney’s position appears to be that the term BENEDIKTINER informs the purchaser that: (a) the beer originates in a Benedictine monastery or is made by Benedictine monks; (b) it was brewed according to Benedictine traditions, recipes, and techniques; and (c) the money earned from the sale of the beer supports Benedictine monasteries and their charitable endeavors.

As to the first point, the Board opined, the fact that the word BENEDIKTINER conveys to customers that the goods originate in a Benedictine monastery or are made by Benedictine monks does not render the term merely descriptive. Instead, according to the evidence, the term functions as a source-indicator for a single monastic order under the worldwide control of (as Applicant contends) "a single Benedictine Confederation."

As to the second point, the evidence did not establish that consumers would perceive the designation “Benedictine” as indicating that the beer possesses any particular attributes, or that BENEDIKTINER merely describes the traditions, recipes or techniques underlying the brewing of Applicant’s beer.

As to the third point, "the fact that the mark tells consumers that the entity selling the goods profits from the sales does not make the mark descriptive or even suggestive of the purpose of the goods unless it otherwise describes them."

Under the same reasoning, since BENEDIKTINER is not merely descriptive of beer, it is not merely descriptive of services featuring beer, nor is it merely descriptive of the provider of those goods or services.

And so the Board reversed the refusal.

Read comments and post your comment here.

TTABlog note:  I needs a drink.

Text Copyright John L. Welch 2014.


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