I was recently in Boston and had some great beer. Something I saw on that trip and then a discussion I had with David Minsky of the Broward/Palm Beach New Times inspired this article. David and I spoke about the recent trend of cease-and-desist letters in the brewing industry and whether it may soon affect South Florida’s breweries that are seeking to trademark names like Miami Pale Ale and Miami Brewing Company. As I drove through a few towns north of Boston, I passed Boston Beer Works and thought people might assume that Boston Beer Company, the company behind Sam Adams and Angry Orchard, was also behind Boston Beer Works. Boston Beer didn’t want people thinking that was the case. It sued Boston Beer Works twenty years ago for trademark infringement. I’ll get to that. First, some background on the relevant law.

Trademarks may fall within four categories with respect to the distinctiveness of a mark. These classes are (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful.  They are shortly described below:

Generic

A generic term is one that refers to, or has come to be understood as referring to, the genus of which the particular product is a species.  For example, “light” beer is a generic term for beer.  Generic terms are incapable of distinguishing specific goods from competing goods and are thus ineligible for trademark protection.

Descriptive

A descriptive mark, our focus in this piece, describes a product’s features, qualities or ingredients in ordinary language and generally useful in identifying the goods or services issue.  Descriptive terms, including those that are geographically descriptive, qualify for registration on the Supplemental Register. Descriptive marks can be placed on the Principal Register after acquiring secondary meaning.  A mark acquires secondary meaning when it becomes distinctive such that prospective purchasers perceive it as a designation that identifies the particular goods rather than as simply a descriptive term. Brooklyn Brewery was originally placed on the Supplemental Register and later registered on the Principal Register (there is a presumption that a mark acquires secondary meaning after five years of consistent use).

The final two categories of marks, which are shortly described below, are not relevant to this discussion.

Suggestive

A term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of goods.

 Arbitrary and Fanciful

Arbitrary or fanciful terms bear no relationship to the products or services to which they are applied.  These terms are the strongest of the categories because any value they possess in terms of name recognition comes from the use of the name.

Supplemental Register

The Supplemental Register is a landing spot for trademarks that do not qualify for the Principal Register as a result of being descriptive (or using a common surname). The Supplemental Register does not carry with it all of the favorable presumptions that come with the Principal Registry. However, a registration on the Supplemental Register does allow the mark’s owner to use the ® symbol with the goods listed in the registration and provides a spot in the USPTO database, which gives potential users of a similar mark notice of the mark’s existence.

One cannot, however, file a 1(b) intent-to-use application on the Supplemental Register. The goods must already be in use in commerce. The intent-to-use application provides owners with a means to reserve rights in a trademark without first using the mark in commerce.

TropicalFuitRecent articles have discussed the “taste of place” that comes with craft beer. Brewers in Florida are using tropical flavors in their brews. Brewers across the country are using seeds, leaves, spices and fruits found in their geographic areas.  Brewers in New York and the Pacific Northwest are using locally-grown hops. Similarly, many brewery owners opt to identify the name of the brewery with the community they are in. It provides a greater connection with the community. However, such a choice makes it more difficult to protect the brewery’s trademark from infringement.

 

Back to Boston Beer and Boston Beer Works. In 1993, Boston Beer Company sought to enjoin Boston Beer Works from using the words “Boston Beer” in its name and from using the word “Boston” in connection with any of its beers. They claimed that the names were confusingly similar and would mislead the public into thinking that Boston Beer Works’ products or services originated or were associated with those of Boston Beer Company. I thought that was probably the case before looking into it.

Boston Beer Works brewed and sold a “Boston Red”.  Boston Beer had a Boston Lightship and Samuel Adams Boston. The court held that “Boston Beer” was simply descriptive and there was not sufficient evidence of secondary meaning. Boston Beer Company provided evidence that it spent hundreds of thousands of dollars in advertising in the previous five years and had total sales in the Boston area over $3 million and total sales everywhere over $20 million, to no avail. The court did take into consideration that the advertising generally focused more on the words “Samuel Adams” and “Lightship”. The terms “Boston Beer” and “Boston” were also not registered with the USPTO at that time.

The court noted that because Boston Beer Company’s marks were descriptive, they were only entitled to trademark protection upon a showing of secondary meaning.  The court explained that in order “[t]o establish secondary meaning in the mark ‘Boston,’ not only must appellant prove that, when read or heard by consumers in connection with beer, ‘Boston’ no longer means that the beer was brewed in Boston or by a Boston-based brewer, but that the consuming public recognizes that the word ‘Boston’ identifies appellant as the source of the beer.” The same analysis applied to “Boston Beer”.

The court considered the length and manner of the marks’ use, the nature and extent of advertising of the marks, the efforts made in the direction of promoting a conscious connection, in the public’s mind, between the name/marks and the goods, and survey evidence to determine if secondary meaning had attached to “Boston” and “Boston Beer”. The court ultimately concluded “Boston Beer” and “Boston” were not entitled to trademark protection and simply described the origin of the goods and services in the mind of the consuming public.

The Supplemental Register and trademark rights for a geographically descriptive mark are essentially a balancing act. On one hand, the law seeks to protect marks that consumers will identify with specific goods or services but, on the other hand, must allow others to properly describe the origin of their goods and/or services. It is this need to allow trademark owners to freely describe the nature of their goods that allows for a potential fair use defense even if the party claiming infringement has registered his/her mark with the USPTO.

FishFriThe Zatarains case is one of the seminal decisions cited when it comes to descriptive marks and fair use. In Zatarains, Inc. v. Oak Grove Smokehouse, Inc., Zatarains had registered the mark FISH-FRI in connection with its fried-fish-batter mixes while defendant used the term “Fish-Fry” is connection with its goods.  While the court found that Zatarains’ mark had acquired secondary meaning and was entitled to trademark protection, it accepted the fair use defense based upon the fact that “Fish-Fry” was used in a manner meant to describe defendants’ goods and was used in good faith. Quite simply, the court held that there cannot exist any exclusive claim to use the term’s descriptive meaning. It can be a vague and somewhat troublesome standard but demonstrates the difficulty with policing one’s descriptive mark.

 

BrooklynBrewerySo, for example, while Brooklyn Brewery is registered by the Brooklyn Brewery Corporation on the Principal Register with a claim of acquired distinctiveness, Brooklyn Brew Shop and Kelso of Brooklyn coexist with the mark. Those marks, the first for a beer making kit and the second for beer, use the geographically descriptive term “Brooklyn” to describe the source/origin of the goods.

 

 

Miami

Miami, which is about to explode with outstanding beer, provides a great example of what I’ve discussed. First, there is Miami Beer Company and Miami Brewing Company. Miami Brewing Company is part of Schnebly Redlands Winery in Homestead, FL (generally an extension of Miami). Miami Brewing Company claims use of its applied-for mark back to 2011 but its application is currently suspended while waiting to see what happens with the earlier-filed Miami Beer Company. Miami Beer Company is a non-entity. It doesn’t brew beer, it doesn’t serve beer, it doesn’t exist. It did however file a trademark application for Miami Beer Company on an intent-to-use basis. As I described earlier, you cannot reserve the right to a descriptive mark with an intent-to-use application. Miami Beer Company’s mark was refused and offered a spot on the Supplemental Register if/when the mark is actually put to use. The applicant for that mark has since, via his attorney, filed a response to the refusal that was destined to fail. It failed.  If the mark is ever put to use, the effective date would change from the application date to the date it is actually put into use and would thus fall behind Miami Brewing Company in that regard. Miami Beer Company will most likely, at some point, be abandoned and Miami Brewing Company will then be able to register on the Supplemental Register.

MiamiBrewing

Meanwhile, along with those marks, other marks that use the term Miami have been applied-for. These include Miami Pale Ale, Miami Artisan and Miami Beach Lager. Each of these marks has been refused registration on the Principal Register for being geographically descriptive. However, in each instance, the examining attorney noted no registered or pending conflicting marks that would bar registration. Any of the entities behind these marks would have trouble in the long run attempting to stop one of the others from using their marks, which very well could cause consumer confusion. So, while associating those goods with their local community may bring certain perks, it will also bring difficulty in protecting the trademarks.

Cigar City

It’s not just names of places that qualify as geographically descriptive. Back in May, Cigar City Brewing received a refusal from the USPTO examining attorney assigned to its application for CIGAR CITY BREWING. The examining attorney noted that “Cigar City is geographically descriptive because it refers to the city of Tampa Bay, Florida” and that commonly used nicknames for geographic locations are generally treated as equivalent to the proper geographic name of the place identified.  As for commonly used nicknames, I’m a native Floridian and I wasn’t even aware that Tampa was ever known as Cigar City. The examining attorney suggested registration on the Supplemental Register.

Cigar City responded, explaining that the examining attorney had not proven that the mark’s primary significance is geographically descriptive to beer consumers and that Cigar City was a relatively obscure nickname.  In December, the examining attorney responded by issuing a final refusal, again claiming the mark is primarily geographically descriptive, generally making the same claims as in the initial refusal.  Cigar City may respond by showing that the mark has acquired distinctiveness in the nature of evidence discussed above that Boston Beer Company once used to attempt to show distinctiveness of the Boston Beer mark. In the alternative, it can register on the Supplemental Register. Cigar City claims use of the mark back to 2009 and will soon be able to rely on being in use for five years as a means of demonstrating acquired distinctiveness.

Bone Island Brewery in Key West and Orchid Island Brewing in Vero Beach are examples of other marks in Florida that were recently refused for being primarily geographically descriptive.