Published 12/18/2018 by CIONCA Team Member
On November 26, 2018, the United States Court of Appeals for the Federal Circuit (“the Federal Circuit”) made a decision in Schlafly v. The Saint Louis Brewery. In 2011, the Saint Louis Brewery (“SLB”), a beer brewery based in Missouri founded in 1989 by Thomas Schlafly, applied for registration of the mark SCHLAFLY, which has been sold in association with their beer since 1991. During the application’s publication for opposition, two opposers were in favor of blocking the mark’s registration: Phyllis Schlafly and Bruce Schlafly, Thomas Schlafly’s aunt and cousin (“the Opposers”), respectively. However, the Trademark Trial and Appeal Board (TTAB) denied their opposition and entitled the SCHLAFLY mark to registration on the Principal Register. Thereafter, the Opposers appeal TTAB’s decision on the basis that TTAB disregarded the fact that the mark is a surname and that the applicant had failed to provide survey evidence of the mark’s secondary meaning. Moreover, “the Opposers claim violation of their First Amendment, Fifth Amendment, and Due Process rights and protections.” The appeal is in the Federal Circuit’s jurisdiction.
The Opposers first challenge the mark’s acquired distinctiveness and assert that secondary meaning was not properly proven. Per the Code of Federal Regulations, the following may be considered to demonstrate secondary meaning: (1) Ownership of prior registration, (2) Five years substantially exclusive and continuous use in commerce, or (3) Other evidence, such as verified statements, depositions, etc. In this case, SLB presented evidence in all acceptable areas, and thus, secondary meaning is justified.
The Opposers further argue that the public associates SCHLAFLY with Phyllis Schlafly as she was an iconic conservative activist and insist on the “change in significance” test, “whereby a surname cannot be registered as a trademark without showing a change in significance to the public, from a surname to an identifying mark for specified goods.” However, the examiner and Board had already found that the mark had accrued secondary meaning and had been correlated with their goods of beer products.
Additionally, the Opposers allege that the Board disregarded SCHLAFLY as merely a surname. Nonetheless, per statute, a surname is eligible for trademark registration granted that it has established secondary meaning in commerce.
Regarding the Opposers’ constitutional allegations, the claim that registration of the mark impedes on their First and Fifth Amendment rights and their rights to Due Process, the Opposers fail to adequately demonstrate how their rights are violated.
Thus, the Federal Circuit affirmed TTAB’s decision and held that a surname may be considered registrable as a trademark should secondary meaning be successfully proven.
Full Schlafly v. The Saint Louis Brewery decision can be read here: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-1468.Opinion.11-26-2018.pdf
Disclaimer: The views and opinions expressed throughout this blog are the views and opinions of the individual author(s) and/or contributor(s) and do not necessarily reflect the views and opinions of our firm, CIONCA IP Law. P.C.
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