Tuesday, April 09, 2019

TTABlog Test: Is “BLUEBERRY MUFFIN” Generic for Beer?

[This guest post was written by Kira-Khanh McCarthy, a 2L at University of Notre Dame Law School.] The USPTO refused to register BLUEBERRY MUFFIN, in standard characters, finding the term generic for “beer.” Applicant Humboldt Street Collective had conceded that the term is merely descriptive by amending its initial application to seek registration on the Supplemental Register, but Examining Attorney Natalie Kenealy nonetheless refused registration under Section 23(c). How do you think this came out? In re Humboldt Street Collective LLC, Serial No. 87152277 (March 29, 2019) [not precedential] (Opinion by Judge Peter Cataldo).

The TTAB applied its standard two-part test to determine whether BLUEBERRY MUFFIN is generic: (1) what is the genus of the goods at issue and (2) whether relevant purchasers understand that designation primarily to refer to that genus of goods.

Genus of the Goods at Issue: Both the Examining Attorney and Applicant agreed that the proper genus of the goods identified in the application is “beer.” Furthermore, Applicant’s own specimen of use (see above) indicated that BLUEBERRY MUFFIN is used as a designation of one of Applicant’s house beers.

The Relevant Purchasers: The Examining Attorney and Applicant disagreed on who are the relevant purchasers of Applicant’s goods. The Examining Attorney asserted that “the relevant public comprises ordinary consumers who purchase applicant’s goods.” Conversely, Applicant maintained that the relevant public is “craft beer drinkers.” The Board found that because the genus of Applicant’s goods is “beer,” without limitation as to type (i.e., craft brews, etc.), the relevant consumers are ordinary members of the public who are beer drinkers.

The Meaning of BLUEBERRY MUFFIN to the Relevant Purchasers: Next, the Board sought to determine how the relevant purchasers would understand the meaning of the term “blueberry muffin.” To aid in its decision, the Board considered website evidence submitted by the Examining Attorney and third-party registrations submitted by Applicant. Based on the evidence, the Board made these findings of fact:

• [B]eers are often flavored, and flavored beers are growing in popularity;
• [C]onsumers refer to Applicant’s blueberry muffin-flavored beer as “blueberry muffin;”
• [C]onsumers also refer to blueberry muffin-flavored beer produced by third parties, inter alia, as “blueberry muffin;”
• [T]hird parties create and market blueberry muffin-flavored beverages other than beer, including smoothies, coffee, wine, liquor and mixed drinks, and refer to them as “blueberry muffin.”

When an applied-for term “directly names the most important or central aspect or purpose of [an] applicant’s goods” and would be understood by the relevant consumers as referring to a category of those goods, the term is generic. See In re Cent. Sprinkler Co., 49 USPQ2d 1194, 1199 (TTAB 1998) (finding ATTIC generic for automatic sprinklers for fire protection). Here, the record shows that flavor, including flavors resulting in beer tasting like another food or beverage, is an important and central aspect for beer, and blueberry muffin refers to a specific flavor of beer for Applicant and several third parties. See A.J. Canfield Co. v. Honickman, 808 F.2d 291, 1 USPQ2d 1364 (3rd Cir. 1986) (CHOLCOATE FUDGE [sic] generic for diet sodas with chocolate fudge flavor).

As a result, the Board found that consumers would understand Applicant’s proposed mark to refer to a subset of blueberry muffin flavored beers. BLUEBERRY MUFFIN was therefore found to be generic and incapable of distinguishing Applicant’s goods. And so, the Board affirmed the refusal to register Applicant’s mark on the Supplemental Register, allowing competitors to freely use the term to refer to their own goods and services.

Read comments and post your comment here.

TTABlog comment: Would Chocolate Chip Blueberry Muffin be a sub-sub-genus?

Text Copyright John L. Welch and Kira-Khanh McCarthy 2019.


At 8:28 AM, Anonymous Erik Pelton said...

I have trouble reconciling this with the dozens of magazine titles that are registered (not generic) such as ENTREPRENEUR, TENNIS, GOLF, PHOTOGRAPHY, and many more.

At 9:26 AM, Anonymous Anonymous said...

The short answer is, and should have been: NO. Blueberry Muffin is generic for blueberry muffins, and nothing else. It is merely descriptive of beer flavored like a blueberry muffin, but to say, essentially, that "blueberry muffin" means "beer" is just plain wrong.

At 10:15 AM, Anonymous Anonymous said...

This decision is so bad I literally stopped everything I was doing to try and understand how any reasonable person could believe that BLUEBERRY MUFFIN is generic for beer. And unfortunately my reading of the opinion has left me even more dumbfounded. I suppose the silver lining is that this is non-precedential.

Everything about this opinion is so disappointing. From the multiple misspelled words in the opinion, to the fact that the applicant actually argued that the relevant members of the public were craft beer drinkers rather than beer drinkers in general. (Craft beer drinkers are going to be more familiar with the term "BLUEBERRY MUFFIN" as a beer name, and will thus be more inclined to see it as primarily referring to beer rather than a muffin. Conversely, casual beer drinkers will be less familiar with that name and will not even associate the term "BLUEBERRY MUFFIN" with beer whatsoever, let alone view that term as primarily referring to beer rather than a pastry.)

But much more importantly, part two of the test asks whether "the relevant public understands the designation PRIMARILY to refer to that genus of goods or services." Applied to this situation, does an ordinary member of the public who drinks beer understand that "BLUEBERRY MUFFIN" primarily refers to beer? There was no analysis in the opinion whatsoever as to whether this term PRIMARILY refers to beer. Sure, there's evidence that the term is descriptive, and the applicant has admitted as such. BUT THE QUESTION IS WHETHER THIS TERM PRIMARILY REFERS TO BEER AS UNDERSTOOD BY A CASUAL BEER DRINKER.

I'm just flabbergasted by this. Sure the term is descriptive. But it is so painfully obvious that a casual beer drinker would think the term "BLUEBERRY MUFFIN" PRIMARILY refers to a muffin and not to beer. Disagree? Go ask ten people you know who are ordinary beer drinkers and I would be shocked if even one of them says the term "BLUEBERRY MUFFIN" primarily refers to beer. I'm pretty sure the TTAB jumped the shark on this one.

This has got to be the worst decision I have read in years.

At 1:35 PM, Anonymous Anonymous said...

@ Erik Pelton: For an analysis of the genericness of magazine titles see H. Marvin Ginn Cop. v. Int’l Ass’n of Fire Chiefs, Inc., 228 USPQ 528 (Fed. Cir. 1986).

At 1:37 PM, Anonymous Anonymous said...

"Would you please go to the grocery store and pick me up a blueberry muffin?"

One couldn't possibly expect you to bring home a "blueberry muffin" beer.

This mark should have been approved on Supp with a disclaimer of BLUEBERRY.

At 2:29 PM, Blogger Stacey Friends said...

I completely agree with the prior posters regarding Blueberry Muffin not primarily referring to beer. The term is highly descriptive and not registerable, especially when one considers all the third party uses, but not generic. The part of the analysis regarding "when an applied-for term directly names the most important or central aspect or purpose of [an] applicant’s goods and would be understood by the relevant consumers as referring to a category of those goods,"is also clearly off. We don't see "Blueberry Muffin" and think of beer, and we also don't see Blueberry Muffin, even in context with beer, and think it is the most important aspect of the goods. The most important aspect of Blueberry Muffin for beer, is that it's beer! Are we going to have a million sub-genera of everything? What about BBQ potato chips? All descriptive terms will be generic?

At 5:07 PM, Blogger Mike said...

I agree with the reasoning behind the decision. Blueberry Muffin should not be registerable for Blueberry Muffin flavored beer, just like Blueberry should not be registerable for Blueberry Muffins. Everybody knows blueberries aren't muffins, but to permit someone to trademark Blueberry for muffins would be a major hassle for any competitors trying to advertise blueberry muffins.

Now if they were using Blueberry Muffins as a trademark for beer which was not blueberry muffin flavored, they would probably have a better argument for trademarking the name.

At 11:48 PM, Anonymous Arizona Trademark Attorney said...

How can we provide any meaningful guidance to clients when the TTAB issues opinions like this? Eric's examples above contrast starkly with this decision; hoping for consistency at the Trademark Office is becoming a fool's errand.

At 8:58 AM, Anonymous Anonymous said...

But don't forget that an ingredient or key aspect of goods may indeed be generic for the goods, e.g., A.J. Canfield Co. v. Honickman - "chocolate fudge" held generic for diet soda.

At 4:48 PM, Anonymous John said...

How does one impart a muffin flavor to beer? Would the decision have been different if it was a blueberry flavored beer and the term "muffin" was added just to impart a fanciful connotation to the mark?

At 8:35 PM, Anonymous Anonymous said...

Incapable matter: absolutely. Generic: No. Fails to function as informational: Why yes, isn't that the refusal that the Board has been pushing the last year, and doesn't that refusal fit better? Sometimes remand to the examining attorney for the proper refusal isn't such a bad idea. Just saying...


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