Boston Beer Company Limited Partnership

Trademark Trial and Appeal Board

Jun 11, 1998

No. 74464118 (T.T.A.B. Jun. 11, 1998)

6/11/98
Hearing: Paper No. 33
July 31, 1997 RFC
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Boston Beer Company Limited Partnership
________
Serial No. 74/464,118
_______
Laurence R. Hefter of Finnegan, Henderson, Farabow, Garrett
& Dunner for Boston Beer Company Limited Partnership.
Robert J. Crowe, Senior Trademark Examining Attorney, Law
Office 101 (Ronald E. Williams, Managing Attorney).
_______
Before Simms, Cissel and Hohein, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On November 30, 1993, applicant filed the above-
referenced application to register the words “THE BEST BEER
IN AMERICA” on the Principal Register for “beverages, namely
beer and ale,” in Class 32. The application was based on
applicant’s claim of use since June of 1985. Applicant
asserted that under the provisions of Section 2(f) of the
Trademark Act, the words sought to be registered had become
distinctive of its products.
Ser No. 74/464,118
2
The declaration of applicant’s founder and President,
James Koch, was submitted in support of the claim of
acquired distinctiveness. Mr. Koch stated that the words
sought to be registered have developed secondary meaning as
a source-indicator for applicant’s goods by virtue of
extensive promotion and sales of beer under the mark since
June of 1985. Since then, applicant has averaged annual
advertising expenses of over ten million dollars, and
according to Mr. Koch, annual sales of beer under the mark
have been approximately eighty-five million dollars.
Additionally, applicant had spent about two million dollars
on promotions and/or promotional items which included the
phrase “THE BEST BEER IN AMERICA.”
Also submitted with the application and the declaration
was a copy of an advertisement for Rolling Rock Bock beer, a
product of one of applicant’s competitors. The text of the
advertisement relates a taste test the brewers of Rolling
Rock Bock beer conducted in Boston. The test showed that
the majority of those tested preferred Rolling Rock Bock
beer over Samuel Adams beer. The ad closes with an
invitation to sample “the beer that bested ‘the best beer in
America.’” Applicant contends that this is evidence that
applicant’s competitor regards “THE BEST BEER IN AMERICA” as
applicant’s trademark, and that it also shows “that
applicant’s competitor has not been harmed by applicant’s
Ser No. 74/464,118
3
ownership of the mark.”(p. 2 of applicant’s February 18,
1994 submission.)
Registration was refused under Section 2(e)(1) of the
Trademark Act on the ground that the words sought to be
registered are merely descriptive of applicant’s products,
and because applicant had not established that the words
have acquired distinctiveness.
The Examining Attorney took the position that the
designation sought to be registered is merely descriptive of
applicant’s product because it is simply a claim that
applicant’s beer is the best beer in America. In
particular, the Examining Attorney noted that
“[a]pplicant’s proposed mark has been used by others
who have won the title ‘The Best Beer in America’ at
the Great American Beer Festival and is used by others
and recognized in regional beer tasting contests
or named by magazines. The use of the term ‘The
Best Beer in America’ is merely a title given to
the winners in beer tasting contests and used by
the applicant as advertisement and not as a source
indicator.”
Attached to the first Office Action were copies of
excerpts from stories retrieved from the Nexis database of
published articles. The stories include text to the effect
that Anchor Steam beer was considered to be “the best beer
in America” in 1983 by Quest magazine; that in 1984, Point
beer from Wisconsin was rated as “the best beer in America”
by a taste-testing panel; that also in 1984, brewers in
Telluride, Colorado started a brewery “in hopes of brewing
Ser No. 74/464,118
4
the ‘best beer in America’”; that in 1988, for the third
year in a row, applicant’s “Samuel Adams” beer was “picked
as the best beer in America” at “The Great American Beer
Festival” competition; that Alaskan brand beer “was selected
as the best beer in America in a poll of 4,500 people
attending the annual Great American Beer Festival in Denver
in 1988”; that in the 1990 version of that competition,
“Coors Brewing Co. won three medals for brewing some of
America’s best beers”; that in 1992, Chicago-based brewer
“Kenneth Pavichevich may well be producing the best beer in
America”; that in 1993, Pete Coors was described as “devoted
to brewing the best beers in America”; and that Mr. Koch
once stated that his “Samuel Adams Festival Lager” “was
voted the ‘Best Beer in America’ before he even had a name
for it.” He is quoted further as follows: “Being voted the
best beer in America is gratifying, particularly with so
many excellent American beers around.”
The excerpted articles submitted by the Examining
Attorney show the words sought to be registered used by
applicant and others as a laudatory term in reference to
superior beers produced by a number of different brewers in
America, including applicant. All such beers were either
winners of comparison competitions, or simply beers which
had been touted as the best in America by their makers or by
others.
Ser No. 74/464,118
5
Responsive to the refusal to register, applicant
submitted argument and additional evidence. The argument is
basically that when beer purchasers are confronted with the
words “THE BEST BEER IN AMERICA” on a label of a bottle of
beer or in an advertisement for beer, “that phrase means
‘Samuel Adams.’” (p. 3 of the November 10, 1994 response).
Applicant contended that if “American Airlines” and “Best
Products” can be registered even though these words can be
used descriptively, then applicant’s mark should be
registered as well.
The evidence submitted with the response consisted of
additional excerpts retrieved from the Nexis database. This
evidence shows that applicant refers to its product as “the
best beer in America,” and that applicant often uses this
designation in connection with promoting its beer as the
winner of the annual beer competition in Denver. Typical
examples from these excerpts include the following: “The
most controversial result has been Koch’s use of the phrase
‘Best Beer in America,’ a title he claimed (and trademarked)
after his Samuel Adams Boston Lager won consumer-preference
polls at the festival in 1985, ’86, ’87 and ’89…”; “…Jim
continues the Koch legacy of brewing the best beer in
America…”; “…because for a dollar a bottle, you can get the
best beer in America. That’s cheap”; “In addition to being
voted the Best Beer in America at the annual Great American
Ser No. 74/464,118
6
Beer Festival on four separate occasions,…”; “But Boston
Beer founder and president Jim Koch said he believes that
the investigation, which centers on the claim that Samuel
Adams is ‘the best beer in America,’ was instigated by rival
Brooklyn Brewery, which he said has been after him for
several months to change his advertising… The Brooklyn
brewer said he had been asked many times how he could be the
winner when Samuel Adams promotes itself as such…”; “For the
fourth time in five years, Samuel Adams Boston Lager was
named the best beer in America at the 8th annual Great
American Beer Festival”; and “…Samuel Adams has been picked
as the best beer in America….”
On March 6, 1995, the Examining Attorney issued a final
refusal under Section 2(e)(1), holding that applicant had
not established that the proposed mark had become
distinctive. Included were copies of dictionary definitions
of “best,” “beer,” and “America,” as well as a plethora of
copies of additional excerpts from published articles.
These articles describe the fact that The Great American
Beer Festival in Denver features winners in many different
categories, that winners have included others in addition to
applicant, and that “[w]inning a gold here means that a beer
is the best of its kind in the States…” The Examining
Attorney noted the high degree of laudatory descriptiveness
of the term sought to be registered and the fact that
Ser No. 74/464,118
7
because “the best beer in America” will always be a
subjective designation, rather than one that can be verified
by specific scientific criteria, beers made by a variety of
brewers could be described with equal accuracy as the best
beers in America. He concluded that applicant’s evidence of
acquired destinctiveness falls short of establishing
secondary meaning for this descriptive terminology.
Applicant filed a notice of appeal on September 5,
1995. Attached to its brief, which was submitted on
November 6, 1995, were additional exhibits. Rather than
objecting to this evidence as untimely under Trademark Rule
2.142(d), the Examining Attorney requested that the Board
suspend action on the appeal and remand the application to
him for consideration of the new evidence. The Board
granted the request.
On April 24, 1996, the Examining Attorney issued
another Office Action dealing in detail with the additional
evidence submitted by applicant with its brief, and
concluding that it did not change his determination that the
term sought to be registered is merely descriptive and has
not become distinctive of applicant’s beer. Included with
the Office Action were additional excerpts showing the use
of what he argued were clearly descriptive terms, e.g.,
“America’s best micro-brewed beer”; “the best beer
anywhere”; the “World Beer Championship--the definitive
Ser No. 74/464,118
8
consumer oriented judging of the best beers in the world…”;
and “the LI Brewing Company hosts a Best Beers in America
Festival….” (emphasis in original). Other excerpts included
with the Office Action relate to applicant’s marketing
strategy and how the term sought to be registered was
selected and used following applicant’s awards at the
aforementioned annual beer competition in Denver.
Following the April 24, 1996 Office Action responding
to applicant’s new evidence, applicant was allowed by the
Board to file a supplemental brief, which it did on August
27, 1996. Then, on November 18, 1996, the Examining
Attorney again requested suspension of action on the appeal
and remand of the application to him, this time for the
introduction into the record of recently discovered evidence
and the issuance of a refusal to register based on
genericness. The request was granted, and on December 9,
1996, he issued an Office Action refusing registration under
Sections 1, 2 and 45 of the Trademark Act on the ground that
the term sought to be registered is generic and, hence, is
incapable of functioning as a trademark to identify the
source of applicant’s goods. The Examining Attorney
concluded that the term is the name of a genus of goods,
namely “beers brewed in America that have won taste
competitions or were judged best in taste tests.” Copies of
printouts from applicant’s Internet Web site were offered to
Ser No. 74/464,118
9
show that applicant adopted the designation after it had won
such competitions. Copies of articles from printed
publications were also submitted. The Examining Attorney
contends that these articles show that a winner of a taste
test is often referred to as “the best beer in America” or
as the “best beer.” In one article from the May 13, 1996
issue of Advertising Age, applicant’s director of brand
development is quoted as saying, in reference to a contest
for home-brewed beer, “We’re convinced that the best beer in
America is being brewed in people’s kitchens.”
On February 18, 1997, applicant filed a second
supplemental brief to address the refusal based on
genericness and the evidence the Examining Attorney
submitted in support of it. With this brief, applicant
submitted still more evidence, including information about
The Great American Beer Festival and other such
competitions; information about the numerous different
styles of beer; a list of purportedly registered trademarks
featuring either or both the words “BEST” and “AMERICA”; and
copies of the complete information about those registrations
from a commercially available automated data bank.
Applicant argued that these materials establish that there
is no single beer which is awarded the title of “Best Beer
in America,” and that it should be granted registration of
the term.
Ser No. 74/464,118
10
Additionally, applicant submitted a copy of an entry
from McCarthy’s Desk Encyclopedia of Intellectual Property,
(1993 edition, BNA). On page 93, under the heading
“descriptive mark,” Professor McCarthy states that “…words
such as BEST, SUPERIOR, PREFERRED, and PLUS are usually
classified as descriptive.”
The Examining Attorney filed his appeal brief on April
28, 1997. Responsive to the brief submitted by the
Examining Attorney, applicant requested permission to file a
third supplemental brief, which was actually a combination
of a reply to the Examining Attorney’s brief combined with a
motion to strike part of that brief. The Board granted
applicant’s request to file a third supplemental brief, and
on June 2, 1997, applicant filed argument on the issue of
genericness and on the merits of its motion to strike pages
5 through 20 of the Examining Attorney’s appeal brief. The
argument for the motion to strike is that under Trademark
Rule 2.142(f)(1), the Examiner was limited to responding to
the issues discussed in the second supplemental brief
applicant had filed, and that brief dealt only with the
newly raised ground of genericness, whereas the pages of the
Examining Attorney’s brief to which applicant objects are
argument on the issues of descriptiveness and acquired
distinctiveness.
Ser No. 74/464,118
11
In its third supplemental brief, or reply brief,
applicant then proceeded to argue that its mark is not
generic. Applicant again points to the information
submitted with its second supplemental brief, and notes that
the beer competitions and taste tests evaluate beer
according to the many different beer categories which are
reflected in the marketplace. Applicant repeats the
argument that it was never given an award as the best beer
in America at the Great American Beer Festival because there
is no single best beer; rather, awards were given only for
the best beers in particular categories, such as best craft
lager, best ice beer, and best imported lager.
On June 10, 1997, the Board advised applicant and the
Examining Attorney that the Board’s ruling on applicant’s
motion to strike would be deferred until the Board took up
the case for final decision, but the Examining Attorney was
nonetheless provided with a copy of the motion. At
applicant’s request, an oral hearing on all the issues on
appeal, including descriptiveness, acquired distinctiveness,
and genericness, was conducted on July 31, 1997. Both the
Examining Attorney and counsel for applicant presented their
arguments to the Board at that time.
We turn first to applicant’s motion to strike portions
of the Examining Attorney’s brief. Paragraph (f)(4) of
Trademark Rule 2.142 does limit an Examining Attorney’s
Ser No. 74/464,118
12
response to a supplemental brief filed by an applicant to
the arguments made by applicant in its supplemental brief,
but that paragraph is plainly based on the assumption that
the remand was ordered after the main briefs had already
been filed by both applicant and the Examining Attorney.
Paragraph (f)(1) states that during an appeal, the Board may
suspend and remand when it becomes apparent that an issue
not previously raised may render the proposed mark
unregistrable. The next four paragraphs provide for what
will happen in the event of such a remand. In the instant
case, although applicant had filed its brief on appeal and
two supplemental briefs, the remand was ordered before the
Examining Attorney had yet filed his main brief on the
appeal. Here, applicant’s main brief in effect consists of
its initial brief and its first two supplemental briefs. To
limit the Examining Attorney to discussion of only the
additional issues raised for the first time after
applicant’s main brief had been filed, without ever
according him the opportunity to present arguments in
support of the issues on appeal under Sections 2(e)(1) and
2(f) of the Act, would be patently unreasonable and would
clearly contravene the requirement, under Trademark Rule
2.142(b)(1), that the Examining Attorney file “a written
brief answering the brief of applicant.”
Ser No. 74/464,118
13
The rule limiting the response of the Examining
Attorney to a supplemental brief was plainly never intended
to preclude him from presenting a response to the main brief
filed by applicant. Despite repeated suggestions at the
oral hearing that counsel withdraw the motion to strike the
Examining Attorney’s brief, he declined to do so, choosing
instead to rest on what he termed a “technical” objection.
The motion is wholly without merit, and it is accordingly
denied.
As a postscript to our discussion of the procedural
history of this matter described above, we note that in
several respects, this case is not a good example of proper
practice before the Board. After the remand for refusal on
the ground of genericness, applicant submitted a second
supplemental appeal brief, and then the Examining Attorney
submitted his brief on appeal. What should have happened,
instead, is that the Examining Attorney, upon remand, should
have issued a new, nonfinal action asserting the refusal
based on genericness; applicant should have filed a response
to the refusal; the Examining Attorney should have issued a
new action making the genericness refusal final and also
asserting the other grounds for final refusal; the Board
should have allowed applicant time to file a supplemental
appeal brief directed to the new ground for final refusal;
and then the Board should have sent the case to the
Ser No. 74/464,118
14
Examining Attorney for his appeal brief. All the issues
were ultimately fully argued and briefed, but the same
result would have been achieved with greater economy and
less confusion if the Board had insisted that both applicant
and the Examining Attorney follow the proper procedure.
Notwithstanding the protracted prosecution history of
this case, the issues before us on appeal are whether “THE
BEST BEER IN AMERICA” is a generic term and therefore does
not indicate the source of applicant’s beer and distinguish
it from similar products made by others, or, in the
alternative, whether the term is merely descriptive of
applicant’s goods within the meaning of Section 2(e)(1),
and, if this is so, whether it is nonetheless registrable
under the provisions of Section 2(f) because it has acquired
distinctiveness through use and promotion in connection with
applicant’s products.
We will first consider the issue of mere
descriptiveness, which will lead us into the question of
genericness, and then we will turn to distinctiveness under
Section 2(f).
The fact that the application as originally filed
sought registration under Section 2(f) constitutes an
admission of the descriptiveness of the term. In re
Leatherman Tool Group, Inc., 32 USPQ2d 1443 (TTAB 1994).
The issue of descriptiveness has therefore been conceded by
Ser No. 74/464,118
15
applicant. Even if this had not been conceded, the evidence
of record, especially the dictionary definitions submitted
by the Examining Attorney and the vast majority of the
excerpts from the Nexis database, both those submitted by
the Examining Attorney and those made of record by
applicant, clearly establish that “THE BEST BEER IN AMERICA”
is merely descriptive of beer. It is a laudatory expression
used to tout the superior quality of applicant’s product.
In the same sense that “AMERICA’S BEST POPCORN!” and
“AMERICA’S FAVORITE POPCORN!” were held to be only
laudatory, comparative, descriptive designations, “THE BEST
BEER IN AMERICA” immediately conveys to prospective
purchasers that applicant claims its beer is superior to
other beers in this country. See: In re Wileswood, Inc.,
201 USPQ 400 (TTAB 1978).
Admittedly, there is no universal standard against
which beers are measured to determine their relative merits.
Nevertheless, while there is no single competition, such as
the Great American Beer Festival or any other taste test,
which determines which beer is awarded the title of “the
best beer in America,” this fact does not alter our holding
that the term is merely descriptive because it is only
laudatory.
Further, for applicant to argue that its mark is not
descriptive of its beer because there is not one beer which
Ser No. 74/464,118
16
is the best in the country is disingenuous in view of the
fact that applicant itself began using the expression only
after it had begun to win beer competitions and awards.
In summary on this point, this record makes it clear
that the designation “THE BEST BEER IN AMERICA” is simply a
claim of superiority, i.e., trade puffery.
Our conclusion that the designation is merely
descriptive is not a finding that it is generic, however, at
least in the traditional sense of being the name for the
product. A well settled test for genericness was enunciated
by our primary reviewing court in H. Marvin Ginn Corp. v.
International Association of Fire Chiefs, Inc., 782 F.2d
987, 228 USPQ 528 (Fed. Cir. 1986). The test has two
elements. The first is to identify the genus or class of
goods at issue. The second element is to determine if the
relevant purchasing public understands the designation
sought to be registered primarily to refer to that genus or
class of products. In that case, “FIRE CHIEF” was held not
to be generic for a magazine directed to the field of
firefighting, because there was no evidence that the
relevant purchasing public refers to a class of fire
fighting publications as “FIRE CHIEF,” and also because the
term sought to be registered was neither the name of the
firefighting industry nor about the firefighting industry.
Ser No. 74/464,118
17
In the instant case, the Examining Attorney’s
contention that “THE BEST BEER IN AMERICA” is generic for
applicant’s goods fails the test as well. Although the
Examining Attorney would have us find that the genus or
class of goods in question is “beers brewed in America that
have won taste competitions or were judged best in taste
tests,” we cannot reach this conclusion. The genus or
category of goods here is aptly stated by applicant in its
application: “beverages, namely beer and ale.” To contend
that there is a “subclass” of beer which is known as or
referred to as “beers brewed in America which have won taste
competitions or were judged best in taste tests” stretches
the limits of our language and is inconsistent with common
usage. The product here is “beer,” not “beers brewed in
America that have won taste competitions or were judged best
in taste tests.” Beer is a beverage which is purchased by
ordinary consumers with common understandings of the usual
meanings of the words in our language. These people know
that “beer” and “ale” are words naming types of alcoholic
beverages. If one were to ask such a person what kind of
beer he or she preferred, the likely response would be the
name of a particular brand or style of beer, such as Samuel
Adams or lager, for example. In contrast, if such a person
were asked what kind of “beer brewed in America that has won
taste competitions or was judged best in taste tests” he or
Ser No. 74/464,118
18
she preferred, such a person would probably wonder what the
questioner had been drinking. The sixteen-word designation
asserted by the Examining Attorney as the genus or category
for applicant’s goods is simply not used in ordinary
parlance as the name for a class or genus of beverages. The
evidence in this record establishes that “THE BEST BEER IN
AMERICA” is a highly descriptive designation for these
goods, in that it is a laudatory claim that the beer so
described is comparatively superior, but the evidence simply
does not show that the designation is used or understood as
the name for a class of such products.
Just because the Ginn analysis does not lead to the
conclusion that the words here sought to be registered are
generic does not mean that they are registrable, however.
As the Court there noted, in most cases involving
trademarks, it is difficult to postulate a general rule that
will uniformly yield the correct result. Rather, our
determinations must be made on a case-by-case basis in light
of the particular designation for which registration is
sought and the record in the application which is under
consideration.
Our holding in the instant case is based on analysis
which is essentially no different from that of the Court of
Customs and Patent Appeals more than half a century ago in
Burmel Handkerchief Corp. v. Cluett, Peabody & Co., Inc., 53
Ser No. 74/464,118
19
USPQ 369 (CCPA 1942). There the applicant sought to
register the words “Handkerchiefs of the Year” for
handkerchiefs. On page 372 of that opinion, the predecessor
to our primary reviewing court noted with approval the
conclusion of the examiner in that case that some terms or
designations are “merely laudatory expressions, descriptive
of the character or quality of the subject concerned ... and
not registrable as trademarks, for the simple reason that
they are inherently incapable of functioning as such.” The
Court went on to state that such expressions are used and
intended to indicate that the goods in connection with which
they are used possess qualities which raise them above other
goods of the same type, and that such phrases or terms
cannot be exclusively appropriated by a single manufacturer
of those goods. The Court concluded that “[i]n the final
analysis such expressions as we are here discussing with
relation to objects of trade are a ‘puffing of wares’ and
are intended to call attention to the superiority of the
advertised goods.” The Court held that such common
expressions cannot function as trademarks because they “can
indicate nothing but high quality,” and thus “surely would
not be indicative of origin to the purchasing public.” See
also: 1 J. Thomas McCarthy, McCarthy on Trademarks & Unfair
Competition, Section 11:17 at page 11-22 (4th ed. 1997).
Ser No. 74/464,118
20
In the instant case, the designation applicant seeks to
register is in the same category. While it does not fit
squarely into the category of generic terminology as defined
by the test in the Ginn case, supra, when the particular
designation sought to be registered and the evidence showing
how the designation is used by applicant and by others are
considered, it is apparent that registration is not
appropriate. The designation “THE BEST BEER IN AMERICA” is
not what we would categorize as generic, but neither is it a
term which can acquire distinctiveness. It is and will
remain a laudatory designation, descriptive of the claimed
quality of any beer in connection with which it is used, and
any brewer should be free to make the same claim or boast
about his own beer. Professor McCarthy has noted that “as a
matter of competitive policy, it should be close to
impossible for one competitor to achieve exclusive rights”
in common phrases or slogans. 1 J. McCarthy, McCarthy on
Trademarks and Unfair Competition, Section 7:23 at page 7-34
(4th ed. 1997). As the Examining Attorney noted in his
first Office Action, the designation is used by applicant in
promoting its beer, but not as an indicator of the source of
the goods.
We note for the record that we are not resurrecting the
discredited notion that a term can be the “apt descriptive
name” for a product, and therefore be “so highly descriptive
Ser No. 74/464,118
21
as to be unregistrable.” See: In re Rickett & Colman, North
America, Inc., 18 USPQ2d 1389 (TTAB 1991); and In re K-T Zoe
Furniture Inc., 16 F.3d 398, 29 USPQ2d 1787 (Fed. Cir.
1994). Instead, in the instant case, we are finding that
this designation inherently cannot function as a trademark.
See: Burmel Handkerchief, supra. These words, as well as
such other expressions as “Best Car in America,” “Best Hotel
in the State” and “Best Restaurant in Town,” for example,
are slogans which can be referred to as mere “puffery.”
Such claims of superiority should be freely available to all
competitors in any given field to refer to their products or
services, subject to whatever limits the law may impose on
truthful advertising and unfair competition.
In spite of the nature of this designation, applicant
maintains that the words have acquired distinctiveness
within the meaning of Section 2(f) of the Trademark Act.
Even if we were to find this expression to be capable of
identifying applicant’s beer and distinguishing it from beer
made or sold by others, we also would find, in view of the
very high degree of descriptiveness which inheres in these
words, that applicant has failed to establish secondary
meaning in them as an identification of source.
To establish secondary meaning, applicant would have
to show that the significance of “THE BEST BEER IN AMERICA”
in the minds of the beer-consuming public is no longer the
Ser No. 74/464,118
22
claim of national superiority for the product, but that
instead, the designation functions as an indication of the
source of applicant’s beer. See Kellogg Co. v. National
Biscuit Co., 305 U.S. 111, 39 USPQ 296 (1938). This is a
question of fact, and the burden is on applicant to support
the claim by a showing of the preponderance of the evidence.
Yamaha International Corp. v. Hoshino Gakki Co. Ltd., 840
F.2d 1573, 6 USPQ2d 1001 (Fed. Cir. 1988).
Of particular significance to the case before us is the
principle that the greater the degree of descriptiveness a
term or expression has, the more proof is required to
establish acquired distinctiveness. In re Packaging
Specialists, Inc., 221 USPQ 917 (TTAB 1984).
Notwithstanding the substantial amounts of money spent
promoting applicant’s beer as the best beer in America, and
the large quantity of beer and promotional items bearing
this designation that applicant has sold, applicant has not
established that, to the relevant purchasing public, the
designation has lost its descriptive significance as a
laudatory claim of comparative superiority and has become an
indication of the source of applicant’s beer.
This conclusion is based not just on the evidence that
others are using the designation in a descriptive sense, but
also on applicant’s own use of the words descriptively. The
many examples discussed above of the excerpts from
Ser No. 74/464,118
23
publications put in the record by both applicant and the
Examining Attorney show not just that others use the term
descriptively, but that applicant itself, in printed
materials as well as in interviews with the press, has used
the words it asserts to be its trademark in their ordinary
descriptive senses to refer to the comparative superiority
of its goods. As Judge Markey stated in Levi Strauss & Co.
v. Genesco, Inc., 840 F.2d 1579, 222 USPQ 939, 940 (Fed.
Cir. 1984), “When the record shows that purchasers are
confronted with more than one (let alone numerous)
independent users of a term or device, an application for
registration under Section 2(f) cannot be successful, for
distinctivenesss on which purchasers may rely is lacking
under such circumstances.”
It is significant that the record in the case at hand
is devoid of direct evidence that anyone in the general
beer-buying public perceives the designation applicant seeks
to register as indicating the source of the beer bearing it,
rather than simply a claim that applicant’s beer is the best
in America. Applicant recounts a great deal of information
concerning the substantial extent of promotion of the
designation in connection with Samuel Adams beer, as well as
the concomitant volume of sales of beer in containers
bearing the words sought to be registered. Notwithstanding
applicant’s calculation of the large number of “commercial
Ser No. 74/464,118
24
impressions” applicant’s advertising is claimed to have
generated over the years applicant has promoted its beer as
the best beer in America, the record provides scant support
for the conclusion that consumers perceive the designation
“THE BEST BEER IN AMERICA” as a source indicator, and not
just as applicant’s boast that its beer is the best in the
country.
Moreover, even if the record showed that consumers
actually believe that applicant’s beer is the best in
America, whether or not they think that the claim is a
boast, a fact, or a title or award from a particular
competition or certifying entity, this fact would not
entitle applicant to the registration it seeks under Section
2(f). Under these circumstances, the designation still
would not have lost its merely descriptive, laudatory
significance.
Applicant argues that the Rolling Rock advertisement it
made of record in connection with its initial Section 2(f)
claim shows that even competitors regard “THE BEST BEER IN
AMERICA” as a trademark for applicant’s beer. We disagree.
We interpret the reference in the competitor’s advertisement
as a snide remark, made at applicant’s expense in response
to the perceived snub in the Samuel Adams advertisement
quoted by Rolling Rock. The Rolling Rock advertisement
pokes fun at applicant for calling its beer “the best beer
Ser No. 74/464,118
25
in America,” when, in fact, the Rolling Rock comparison test
conducted on applicant’s home turf found the Rolling Rock
brew to be preferred by the majority of those participating
in the test. We view this advertisement as yet another
example of the widespread descriptive use of the
designation, and not as evidence of recognition of it by
applicant’s competitors as applicant’s trademark.
In a similar sense, the quote from the article in the
Providence Journal (applicant’s exhibit K), wherein Mr.
Owston states that his company, Coors, chose to compare its
beer to Samuel Adams because “it’s advertised as ‘the best
beer in America’” does not show that the designation is
regarded as a trademark by anyone other than applicant.
Instead, it is clear to us that applicant’s competitors were
trying to disprove applicant’s claim of national
superiority, with which applicant has “advertised,” i.e.,
promoted, its beer. The essence of Mr. Owston’s message is
that Coors wants to compare its product with applicant’s
because applicant claims that its beer is the best in
America. This is quite different from applicant’s analysis
of what he said.
A final argument applicant makes is that it
consistently uses the designation it seeks to register as a
trademark. As we noted above, the record shows applicant’s
use of the words it seeks to register not just in the manner
Ser No. 74/464,118
26
of a trademark, but also in their ordinary descriptive
senses. In any event, the fact that applicant frequently
uses the designation as one would use a trademark is not
determinative of the outcome in this appeal. The issues are
not whether applicant uses the phrase as a trademark or
whether applicant wants to secure for the designation the
protections afforded by registering it as its trademark.
The issue is instead whether these laudatory words, which
are highly descriptive of the claimed superior quality of
applicant’s goods, indicate the source of applicant’s goods,
or whether all they do is tout applicant’s goods as the best
in America. Based on the record in this appeal, we hold the
latter to be the case.
Accordingly, although the designation sought to be
registered is not the generic name for beer and ale, it is
nonetheless unregistrable. The refusal to register is
affirmed.
R. F. Cissel
G. D. Hohein
Administrative Trademark Judges,
Trademark Trial and Appeal Board
Ser No. 74/464,118
27
Ser No. 74/464,118
28