ABK Betriebs-gesellschaft der Aktienbrauerei Kaufbeuren GmbH

Trademark Trial and Appeal Board

Jul 7, 2017

No. 86937069 (T.T.A.B. Jul. 7, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: July 7, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re ABK Betriebsgesellschaft der
Aktienbrauerei Kaufbeuren GmbH
_____

Serial No. 86937069
_____

Marcus Luepke of Muncy, Geissler, Olds & Lowe, P.C.,
for ABK Betriebsgesellschaft der Aktienbrauerei Kaufbeuren GmbH

Marco Wright, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
_____

Before Kuhlke, Adlin, and Heasley,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
ABK Betriebsgesellschaft der Aktienbrauerei Kaufbeuren GmbH (“Applicant”)
seeks registration on the Supplemental Register of the mark ROSE (in standard
characters) for “beer based mixed beverages” in International Class 32.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Sections 23(c) and 45 of the Trademark Act, 15 U.S.C. §§ 1091(c) and 1127, on

1 Application Serial No. 86937069 was filed on March 11, 2016, based upon Applicant’s claim
of first use anywhere and use in commerce since at least as early as August 31, 2015.
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the ground that Applicant’s mark is generic and therefore incapable of distinguishing
its goods.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal resumed. We affirm the refusal to register.
I. Analysis
In order to qualify for registration on the Supplemental Register, a proposed mark
must be “capable of distinguishing the applicant’s goods or services.” 15 U.S.C.
§ 1091(c); see In re Emergency Alert Sols. Grp., LLC, 122 USPQ2d 1088, 1089 (TTAB
2017). A generic term does not qualify for registration on the Supplemental Register,
much less the Principal Register, because it is incapable of distinguishing an
applicant’s goods from those manufactured or sold by others, or of indicating a unique
source of the goods. Id.; see In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116
USPQ2d 1262, 1267 (Fed. Cir. 2015). “Generic terms, by definition incapable of
indicating sources, are the antithesis of trademarks, and can never attain trademark
status.” In re Merrill Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4 USPQ2d
1141, 1142 (Fed. Cir. 1987).
A proposed mark is generic if it refers to the class or category of goods and/or
services on or in connection with which it is used. In re Dial-A-Mattress Operating
Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed. Cir. 2001) (citing H. Marvin Ginn
Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986)).
A generic term is, in fact, “the ultimate in descriptiveness.” Marvin Ginn, 228 USPQ
at 530 quoted in In re La. Fish Fry Prods., 116 USPQ2d at 1264. It can never attain
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trademark status, In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1634
(Fed. Cir. 2016), because “[t]o allow trademark protection for generic terms, i.e.,
names which describe the genus of goods being sold … would grant the owner of the
mark a monopoly, since a competitor could not describe his goods as what they are.”
Merrill Lynch, 4 USPQ2d at 1142, quoted in Dial-A-Mattress, 57 USPQ2d at 1810.
Whether a particular term is generic is a question of fact. In re Hotels.com LP, 573
F.3d 1300, 91 USPQ2d 1532, 1533 (Fed. Cir. 2009). Resolution of that question
depends on the primary significance of the term to the relevant public. “The critical
issue in genericness cases is whether members of the relevant public primarily use
or understand the term sought to be protected to refer to the genus of goods or services
in question.” Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114
USPQ2d 1827, 1830 (Fed. Cir. 2015) (quoting Marvin Ginn, 228 USPQ at 530). The
genericness inquiry is a two-part test: “First, what is the genus of goods or services
at issue? Second, is the term sought to be registered … understood by the relevant
public primarily to refer to that genus of goods or services?” In re Reed Elsevier Props.
Inc., 482 F.3d 1376, 82 USPQ2d 1378, 1380 (Fed. Cir. 2007) (quoting Marvin Ginn,
228 USPQ at 530); see Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121
USPQ2d 1477, 1483 (TTAB 2017). The Examining Attorney bears the burden of
proving genericness by clear and convincing evidence. In re Cordua Rests., 118
USPQ2d at 1635; In re Tennis Ind. Ass’n., 102 USPQ2d 1671, 1674 (TTAB 2012).
We find that the genus of goods in this case is adequately defined by Applicant’s
identification of goods, namely “beer based mixed beverages.” See In re Cordua Rests.,
118 USPQ2d at 1632; Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110
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USPQ2d 1458, 1462 (TTAB 2014). Applicant owns another mark for the same
identified goods, “beer based mixed beverages” that is registered on the Principal
Register:2
Applicant’s specimen is the label
depicted below:3

Although Applicant agrees that “[t]he relevant genus of goods for this
determination can be defined by an applicant’s identification of goods and/or

2 Registration No. 5159618, issued March 14, 2017 (ROSE disclaimed, among other words).
3 June 27, 2016 Office Action p. 22 (all references to the TSDR are to the .pdf format).

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services,”4 it claims that the Examining Attorney’s definition of the genus seemed to
fluctuate through the course of prosecution, leaving it unclear whether he considered
the relevant genus to be “rose colored beer beverage mixed with fruits or fruit juices,
extracts or syrups” or simply “rose colored fruit beers.”5
The Examining Attorney, however, states that Applicant’s identification of goods
adequately defines the genus at issue,6 and we accept that definition of the genus.
Id.; see also In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 92 USPQ2d 1682 (Fed.
Cir. 2009) (defining the genus of goods or services as that for which the applicant
sought protection in its application); Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19
USPQ2d 1551, 1552 (Fed. Cir. 1991) (“[A] proper genericness inquiry focuses on the
description of [goods or] services set forth in the [application or] certificate of
registration.”); Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d
1750, 1761 (TTAB 2013) aff’d, 565 Fed. Appx. 900 (Fed. Cir. 2014); In re Trek 2000
Int’l Ltd., 97 USPQ2d 1106, 1112 (TTAB 2010).
It is not necessary to broaden or narrow the genus from Applicant’s identified
goods, “beer based mixed beverages.” Under the second part of the genericness test,
“[A] term is generic if the relevant public understands the term to refer to part of the
claimed genus of goods or services, even if the public does not understand the term to
refer to the broad genus as a whole.” In re Cordua Rests., 118 USPQ2d at 1638. See
also In re Analog Devices Inc., 6 USPQ2d 1808, 1810 (TTAB 1988) (where a mark is

4 Applicant’s brief p. 2, 7 TTABVUE 7.
5 Applicant’s brief p. 3, 7 TTABVUE 8.
6 Examining Attorney’s brief, 10 TTABVUE 5.
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generic for some but not all of the goods identified in an application, registration is
properly refused for all of the goods) cited in Alcatraz Media, 107 USPQ2d at 1761;
RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 15 comment a (1995) (“A term that
denominates a subcategory of a more general class, such as ‘light’ used with beer or
‘diet’ with cola, is also generic.”). Hence, it would make no difference if we broadened
the genus to “beer” or narrowed it to “beer based mixed beverages that have a pinkish
color”; the outcome would be the same.
The issue, then, is whether the relevant public―in this case, ordinary beer
drinkers and other adult purchasers of alcoholic beverages―would understand the
term ROSE primarily to refer to a subcategory of beer based mixed beverages, i.e.,
those that are rose or pink colored. Evidence of the relevant public’s understanding
can be obtained from any competent source, including dictionary definitions, research
databases, newspapers, and other publications. See In re Cordua Rests., 118 USPQ2d
at 1634; TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 1209.01(c)(i)
(April 2017).
“[A] term can be generic for a genus of goods or services if the relevant
public…understands the term to refer to a key aspect of that genus….” In re Cordua
Rests, 118 USPQ2d at 1637; accord In re Emergency Alert Sols. Grp., 122 USPQ2d at
1090; In re Meridian Rack & Pinion, 114 USPQ2d 1462, 1464 (TTAB 2015). The
Examining Attorney maintains that color is a key aspect of beer.7 Beer is often

7 Examining Attorney’s brief, 10 TTABVUE 7-9.
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categorized by its color, such as amber, blonde, brown, dunkel, golden, pale, and red,
the Examining Attorney notes, and “rose” is another key aspect.8
Applicant states that it “does not disagree with the Examining Attorney’s view
that beers can be categorized by different characteristics and that their color is one
of such criteria.”9 But these common beer colors do not currently include “rose,” it
contends:10 “If there was already a common understanding that fruit beers with a
pink color are a category of beers, then such category would have been listed on these
websites [adduced by the Examining Attorney] as ‘rose’.”11 “The term ‘rose’ merely
describes one of several characteristics of certain beer beverages that have a pinkish
color but it does not name the key aspect or … the central focus of such beverages”
within the meaning of In re Hotels.com, supra (which addressed key aspects of
services) and similar genericness decisions.12
Applicant argues further that “rose” does not currently denote a category of beer
as “rosé” does for wine:
Different to the field of wine, the evidence provided does not show that
the general public when encountering the term ROSE in relation to beer
does likely have the same association as it would have when the term ‘rosé’
is encountered in relation to wine; in the field of wine, the term ‘rosé’ by
itself in this spelling and the corresponding pronunciation has been
commonly used for a long time and is therefore understood to designate
wines of rosé color as one of the three wine color categories and people just
use the term by itself to order a rosé wine without adding the word ‘wine.’13

8 Examining Attorney’s brief, 10 TTABVUE 8-9, October 24, 2016 Office Action, pp. 22-30.
9 Applicant’s brief p. 8, 7 TTABVUE 13.
10 Applicant’s brief p. 8, 7 TTABVUE 13, Examining Attorney’s brief, 10 TTABVUE 13.
11 Applicant’s brief p. 9, 7 TTABVUE 14.
12 Applicant’s brief pp. 5, 6, 7 TTABVUE 10, 11.
13 Applicant’s brief p. 13, 7 TTABVUE 18.
Serial No. 86937069
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Although the Examining Attorney, during the course of examination, adduced
numerous instances of beer producers, retailers, reviewers and commentators using
the terms “rose” or “rosé” for beer, Applicant maintains that “nearly all of these
instances show a descriptive use of the term “rosé” or “rose” in combination with the
term “beer” and are nearly all taken from beer blogs and articles targeting beer
aficionados and/or are written by or experienced by people outside the U.S., but not
by the general U.S. public. They are therefore not sufficient to show that the average
U.S. American consumer will at this time clearly understand the term ROSE
standing alone and without the term “beer” to identify a category of rosé colored (fruit)
beers.”14
As the Federal Circuit has stated, however, “The test is not only whether the
relevant public would itself use the term to describe the genus, but also whether the
relevant public would understand the term to be generic.” In re 1800Mattress.com, 92
USPQ2d at 1685; TMEP § 1209.01(c)(i). The relevant public in this case is ordinary
beer drinkers and other adult purchasers of alcoholic beverages. See Sheetz of Del.,
Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341, 1351 (TTAB 2013) (“The relevant
public for a genericness determination is the purchasing or consuming public for the
identified goods.”) (citing Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d
1551, 1553 (Fed. Cir. 1991)); cited in TMEP § 1209.01(c)(i). The consuming public
would be ordinary beer drinkers; and the purchasing public would include ordinary

14 Applicant’s brief p. 12, 7 TTABVUE 17.
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beer drinkers and other adult purchasers of alcoholic beverages. This is because “[a]
typical consumer of alcoholic beverages may drink more than one type of beverage
and may shop for different alcoholic beverages in the same liquor store.” Schieffelin
& Co. v. The Molson Co’s. Ltd., 9 USPQ2d 2069, 2073 (TTAB 1989). Purchasers of
alcoholic beverages other than beer may still purchase beers for others “as gifts, or to
stock a bar for their guests,” Somerset Distilling Inc. v. Speymalt Whisky Dist. Ltd.,
14 USPQ2d 1539, 1542 (TTAB 1989), or because they “serve more than one kind of
alcoholic beverage before or during a meal or at a party.” Schieffelin, 9 USPQ2d at
2073. And people who usually drink other sorts of alcohol may decide to try something
new. In re Sailerbrau Franz Sailer, 23 USPQ2d 1719, 1720 (TTAB 1992) (“While some
may have preferred brands, there are just as likely to be purchasers who delight in
trying new taste treats.”).15 The relevant public thus encompasses ordinary beer
drinkers and other adult purchasers of alcoholic beverages.
This relevant public has already been exposed to a panoply of rosé wines made
from different grape varietals, such as Grenache, sangiovese, pinot noir, tempranillo
and others.16 And now, as the Examining Attorney points out, they are being exposed
to producers and retailers marketing rose beer as a type of beer. For example,
Applicant touts its beer’s “natural rose color”:

15 Although the Schieffelin, Somerset, and Sailerbrau decisions concern likelihood of
confusion under Section 2(d) of the Trademark Act, they explain how the relevant purchasing
public would encompass not only consumers of beer, but other adult purchasers of alcoholic
beverages.
16 “What Rosé Should I Drink: A Guide to Styles of Rosé Wine” May 7, 2014 WineFolly.com,
Oct. 24, 2016 Office Action pp. 18-20.
Serial No. 86937069
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17

Applicant’s Facebook page is to the same effect, advertising its rose pink beer in
the context of a pink-themed anti-cancer campaign:

17 Oct. 24, 2016 Office Action p. 9.

Serial No. 86937069
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18
The way an applicant uses an alleged mark in promotional materials or packaging
significantly affects how consumers will perceive the mark―as an indicator of source
or as generic. In re Am. Fertility Soc’y, 188 F.3d 1341, 51 USPQ2d 1832, 1836 (Fed.
Cir. 1999); In re ActiveVideo Networks, Inc., 111 USPQ2d 1581, 1590 n. 22 (TTAB
2014). Moreover, Applicant is not the only beer producer that refers to its own beer
as “rose.” California retailer K & L Wines reviewed Applicant’s beer―one in a line of
three beers Applicant promotes―and referred to it as a type of rose beer:

18 Oct. 24, 2016 Office Action p. 10.
Serial No. 86937069
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…
19
Applicant’s competitors and other retailers use the same or similar terminology to
refer to this type of beer, e.g.:
20

19 SpiritsJournal.KLWines.com, 3/18/2016, June 27, 2016 Office Action p. 23.
20 BelgianBeersChiangmai.com, 6/25/2016, June 27, 2016 Office Action p. 6.
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21

22

23

21 BeerAdvocate.com, 6/25/2016, June 27, 2016 Office Action p. 9.
22 Belbevasia.com, 6/25/2016, June 27, 2016 Office Action p. 18.
23 CarlsbergGroup.com, 6/25/2016, June 27, 2016 Office Action p. 19.
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U.S. retailers such as Total Wine purvey beers of this sort:

24

25

24 TotalWine.com 10/23/2016, Oct. 24, 2016 Office Action p. 71.
25 TotalWine.com 10/23/2016, Oct. 24, 2016 Office Action p. 72.
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“[E]vidence of competitors’ use of particular words as the name of their goods or
services is, of course, persuasive evidence that those words would be perceived by
purchasers as a generic designation for the goods and services.” Continental Airlines,
Inc. v. United Air Lines, Inc., 53 USPQ2d 1385, 1395 (TTAB 1999). So is evidence of
generic use in articles, on the Internet, and among members of the general public.
See In re Noon Hour Food Prods. Inc., 88 USPQ2d 1172, 1179 (TTAB 2008). Here the
Examining Attorney has adduced articles, blogs, and Internet posts and comments
discussing, reviewing, and rating rose beers:
• UNTAPPD.com, a networking service that allows beer drinking members of
the public to rate beers they consume, contains this entry:
26
• RATEBEER.com, which maintains a forum for beer lovers to share opinions
of beers, contains the following ratings of Schulten Brau Rosé Bier:

26 Untappd.com 10/18/2016, Oct. 24, 2016 Office Action p. 40.
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T Kolleke Rosé received the following ratings:
27
28
• BEERADVOCATE.com, founded in Boston in 1996, contained the following
review of Schultenbrau Rosé:
29
Wieckse Rosé received the following review:
30
• CRUSHED.com, devoted to rosé wines, carried this article about rosé beers:

27 RateBeer.com 10/18/2016, Oct. 24, 2016 Office Action p. 47.
28 RateBeer.com 10/18/2016, Oct. 24, 2016 Office Action p. 48 (highlighting added by
Examining Attorney).
29 BeerAdvocate.com 10/24/2016, Oct. 24, 2016 Office Action p. 49.
30 BeerAdvocate.com 10/24/2016, Oct. 24, 2016 Office Action p. 59.
Serial No. 86937069
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31
“These examples of competitors and commentators using the term … as a category or
type of product is persuasive evidence that the relevant consumers perceive the term
as generic.” In re Greenliant Sys. Ltd., 97 USPQ2d 1078, 1083 (TTAB 2010).

31 Crushed.com 10/18/2016, Oct. 24, 2016 Office Action p. 60.
Serial No. 86937069
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Here, the term “rose” is a generic adjective for a category or type of beer. See, e.g.,
In re Cent. Sprinkler Co., 49 USPQ2d 1194, 1199 (TTAB 1998) (ATTIC generic for
sprinklers used in attics); Sheetz of Del., 108 USPQ2d at 1366 (FOOTLONG generic
for sandwiches, excluding hot dogs). Although some use the term “rosé beer” rather
than “rose beer,”32 the examples above often use “rosé” and “rose” interchangeably to
identify the products’ color. The two terms have similar definitions, with the color
“rose” defined as “a moderate purplish red” and “rosé” defined as “pinkish.”33 And
relevant customers browsing through a beer aisle of a liquor store would be very
unlikely to distinguish between the two. “[M]inor variations in the display of a generic
term … typically are legally insignificant.” In re Noon Hour Food Prods., 88 USPQ2d
at 1173n. 2 (TTAB 2008) (finding differences between “bondost,” “Bondost,” “Bond
Ost,” and “Bond-Ost” cheese legally insignificant).
In sum, even if the relevant public does not currently use the term “rosé” or “rose”
as often for beer as for wine, the evidence adduced by the Examining
Attorney―including use of “rose” by Applicant, by its competitors, by retailers, by
reviewers, and by members of the public―indicates that the relevant public would
understand ROSE primarily to refer to a key aspect and a subcategory of beer based
mixed beverages. See generally In re Cordua Rests., 118 USPQ2d at 1635; Marvin
Ginn, 228 USPQ at 530; In re 1800Mattress.com, 92 USPQ2d at 1685. “[T]his term is

32 See Applicant’s brief p. 9, 7 TTABVUE 14.
33 Merriam-Webster.com 10/24/2016, Dictionary.reverso.net/French-english/rosé, Oct. 24.
2016 Office Action pp. 98-99.
Serial No. 86937069
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generic and should be freely available for use by competitors.” In re Cent. Sprinkler
Co., 49 USPQ2d at 1199.
II. Conclusion
Based on our careful consideration of all the arguments and evidence of record,
including those portions we have not mentioned, we conclude that the Examining
Attorney has demonstrated by clear and convincing evidence that ROSE is generic
for and incapable of distinguishing the goods identified in Applicant’s subject
application. 15 U.S.C. §§ 1091(c), 1127.
Decision: The refusal to register Applicant’s mark ROSE is affirmed.