Brouwerij Bosteels

Trademark Trial and Appeal Board

Aug 26, 2010

No. 77357895 (T.T.A.B. Aug. 26, 2010)

Mailed: August 26, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Brouwerij Bosteels
________

Serial No. 77357895
_______

David B. Kirchstein of Schiffmiller & Pieroni, P.C. for
Brouwerij Bosteels.

Jennifer M. Martin, Trademark Examining Attorney, Law
Office 116 (Michael Baird, Managing Attorney).
_______

Before Hairston, Bergsman and Wellington, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

On December 21, 2007 Brouwerij Bosteels, a Joint
Stock Company of Belgium, filed an application to
register as a trademark on the Principal Register the
following:
THIS OPINION IS A
PRECEDENT OF
THE TTAB
Serial No. 77357895
2

for “beer” in International Class 32.1
The trademark examining attorney refused
registration under Sections 1, 2 and 45 of the
Trademark Act on the ground that applicant’s alleged
mark (also referred to herein as “beer glass and
stand with wording and scrollwork” or “beer glass and
stand”) does not function as a mark. Specifically,

1 Application Serial No. 77357895, alleging December 31, 1980 as
the date of first use and May 31, 1983 as the date of first use
in commerce. Applicant subsequently filed an amendment
describing the alleged mark as follows: “The mark consists of a
configuration of product packaging for the goods.” Furthermore,
we note that the wording on the glass is “PAUWEL KWAK”; and the
wording on the stand is: “OP UW GEZONDHEID;” “PAUWEL KWAK;” “A
VOTRE SANTE;” and “MOD.DEP.” Applicant has offered the
following translation: “The foreign wording in the mark
translates into English as follows: The English translation of
‘OP UW GEZONDHEID’ in the mark is on your health. The English
translation of ‘A VOTRE SANTE’ is to your health. The term
‘MOD.DEP.’ is an abbreviation of Modèle Déposé, the English
translation of which is registered design.” Applicant has
disclaimed “MOD.DEP.” and states that the name PAUWEL KWAK does
not identify a living individual.
Serial No. 77357895
3
the examining attorney stated that the alleged mark
“is merely a glass and does not serve as product
packaging for the applicant’s beer.” (4/2/2008
Office Action) Applicant responded to the refusal,
arguing that the alleged mark is not merely a glass,
but rather consists of a flask, flask holder/stand,
scrollwork and wording. Further, applicant argued
that the alleged mark is a configuration of the
product packaging for applicant’s goods, and that
such configuration is unique and distinctive. The
examining attorney, however, was not persuaded by
applicant’s arguments in support of registration.
After another office action refusing registration and
applicant’s response thereto, the examining attorney
finally refused registration of the alleged mark on
the ground that it does not function as a mark.
Applicant appealed. Applicant and the examining
attorney filed briefs, and applicant filed a reply
brief.
Shortly thereafter, the examining attorney
requested a remand of the application because she
determined that an issue not involved in the appeal
may render the alleged mark unregistrable.
Specifically, the examining attorney stated in the
Serial No. 77357895
4
request for remand that in the event the alleged mark
is found to be product packaging for applicant’s
goods, applicant must disclaim the configuration of
the beer glass and stand because it is a
nondistinctive configuration that is not registrable
on the Principal Register without sufficient proof of
acquired distinctiveness. The Board granted the
remand request. Prior to the examining attorney’s
issuing an office action, however, applicant
submitted an amendment to the application seeking, in
the alternative, registration of the alleged mark as
a whole under Section 2(f) along with a declaration
asserting that the alleged mark has become
distinctive of the goods as a result of substantially
exclusive and continuous use in interstate commerce
on the goods for at least five years.
Notwithstanding such amendment, the examining
attorney issued the contemplated office action and,
citing Sections 1, 2 and 45 of the Act, stated that
in the event the alleged mark is found to be product
packaging for applicant’s goods, applicant must
disclaim the configuration of the beer glass and
stand because it is a nondistinctive configuration
that is not registrable on the Principal Register
Serial No. 77357895
5
without sufficient proof of acquired distinctiveness.
According to the examining attorney, the beer glass
and stand is a mere refinement of a commonly-adopted
style of beer glass. In addition, the examining
attorney found that the declaration asserting five
years use was not sufficient to show acquired
distinctiveness, and maintained the prior refusal
that the alleged mark does not function as a mark.
Applicant traversed the requirement for a
disclaimer, and argued that its beer glass and stand
is not a mere refinement of a commonly adopted style
of beer glass. Furthermore, applicant contended that
a disclaimer is not necessary because the alleged
mark as a whole has acquired distinctiveness as a
result of at least twenty-five years of use.
Applicant submitted a new declaration asserting that
the alleged mark has become distinctive of the goods
as a result of substantially exclusive and continuous
use in interstate commerce on the goods for at least
twenty-five years. The examining attorney was still
not persuaded by applicant’s arguments, and she
issued an office action wherein (1) registration was
again finally refused on the ground that the alleged
mark does not function as a mark, (2) in the event
Serial No. 77357895
6
the alleged mark is found to be product packaging,
applicant was finally required to submit a disclaimer
of the configuration of the beer glass and stand, and
(3) the declaration of twenty-five years of use was
held not sufficient to show acquired distinctiveness
of the alleged mark as a whole. Both applicant and
the examining attorney then filed supplemental
briefs.
Summary of the Examining Attorney’s Arguments and
Evidence

In maintaining the refusal that the alleged mark
does not function as a mark, the examining attorney
contends that the alleged mark would be perceived by
purchasers as a mere serving suggestion, and not as
an indicator of the source of applicant’s goods.
Furthermore, the examining attorney maintains that
the alleged mark does not function as a mark for
applicant’s beer because the beer “does not reside”
in the alleged mark. (9/9/2009 Office action).
Rather, applicant must rely on bartenders to serve
the beer in the alleged mark. The examining attorney
also takes issue with applicant’s contention that the
alleged mark is a configuration of the product
Serial No. 77357895
7
packaging for applicant’s goods. Specifically, the
examining attorney maintains that:
Product packaging is the “form in which
product is processed or wrapped and
labeled.” The mark consists of a glass and
its holder/stand. The glass does not
contain a lid or top of any sort and the
beer is not packaged by the applicant in the
glass. The applicant has not provided any
evidence to show that the proposed mark is
actually product packaging or that the
applicant controls how the beer is sold in
the glass. (Citations omitted)

(Brief, unnumbered pp. 4-5)
With regard to the contention that the beer glass
and stand “consist of a nondistinctive configuration
of packaging for the goods,” the examining attorney
argues that such configuration is a mere refinement
of “a commonly-adopted style of beer glass” known as
a “yard of ale glass,” and the glass and stand must
therefore be disclaimed. (7/21/2009 Office action,
p. 1) In this regard, the examining attorney has
submitted materials downloaded from the Internet
showing over ten examples of products described as
Yard, Half Yard, or Foot of Ale Glass with stand.
Reproduced below are several examples of online
images of these products that the Trademark Examining
Attorney placed into evidence. (attachments to
7/21/2009 Office action):
Serial No. 77357895
8

978 Lindsay Lane
Lancaster, PA 17601
2

475 Little Falls Drive
Amery, WI 54001
3

4
5

6 E. Palo Verde Street Suite #3
Gilbert, AZ 85296

2 http://www.thepubshoppe.com/c-42-yard-half-yard-glasses.aspx
3 http://www.german-toasting-glasses.com/specialty_novelty_glasses.html
4 http://www.beerglasshopper.com/134yaglwist2.html
5 http://www.groomsonline.com/BARG-GO40432-p-
personalized_beer_pitcher_yard_glasses.html
Serial No. 77357895
9
As to applicant’s showing of acquired
distinctiveness, the examining attorney maintains that
applicant bears a heavy burden to prove that the alleged
mark has acquired distinctiveness. The examining attorney
contends that applicant cannot rely on its ownership of
Registration No. 3479299 (discussed infra) because the
mark therein is not the same as the alleged mark involved
herein. Furthermore, the examining attorney concludes
that the declaration of twenty-five years of use is
insufficient, and that direct evidence of acquired
distinctiveness is required.
Summary of Applicant’s Arguments and Evidence
It is essentially applicant’s position that the
alleged mark is a distinctive configuration of the product
packaging for its goods and, thus, registrable. In this
regard, we note that applicant submitted two specimens
with its application which are reproduced below.
Applicant characterizes Specimen No. 1 as a photograph and
Specimen No. 2 as a point of sale display.
Serial No. 77357895
10

Specimen No. 1 Specimen No. 2

Applicant argues that the fact that the beer glass in
the alleged mark is not capped or sealed has no bearing on
whether the alleged mark functions as a mark. Applicant
argues that its alleged mark is similar to many registered
marks which consist of a configuration of a bottle or
other type of container for the goods. In support of its
contention that the alleged mark functions as a mark,
applicant submitted a photograph of a gift set it sells
which contains applicant’s beer in a bottle along with the
beer glass and stand with wording and scrollwork;
materials downloaded from third-party websites which
contain references to and/or pictures of applicant’s beer
being served in the beer glass and stand with wording and
scrollwork; materials downloaded from applicant’s website;
and copies of many third-party registrations for marks
consisting of configurations of bottles/containers for
various goods.
Serial No. 77357895
11
Further, applicant asserts that its alleged mark has
acquired distinctiveness in view of the facts that it has
used the alleged mark in the United States for over
twenty-five years, and it is the owner of Registration No.
3479299 for the mark6 shown below for beer and ale:

Thus, applicant maintains that it is not necessary to
disclaim the configuration of the beer glass and stand
apart from the alleged mark. In support of its claim of
acquired distinctiveness, applicant submitted the
declaration of its attorney, David Kirchstein, stating
that the alleged mark has become distinctive through
substantially exclusive and continuous use in the United
States for at least twenty-five years, and a copy of its
Registration No. 3479299.

6 The mark in this registration is described as follows: “The
mark consists of a representation of a uniquely shaped glass
with wide mouth, a thin neck and a bulbous bottom in a holder.”
Serial No. 77357895
12
Preliminary and Evidentiary Matters
First, we note that attached to applicant’s
supplemental reply brief are Exhibit Nos. 9-13. Exhibits
attached to a brief that were not made of record during
examination (or, in this case, during examination on
remand), are untimely, and will not be considered. See
Trademark Trial and Appeal Board Manual of Procedure
(TBMP) §1203.02 and §1207.01 (2d ed. rev. 2004). In view
thereof, these exhibits have not been considered.
Second, applicant argues that the examining
attorney’s analysis of the issues in this case is flawed
because she fails to recognize that the alleged mark
consists of more than a glass. Although the examining
attorney, in her office actions and briefs on the case,
occasionally refers to the alleged mark as simply a glass
or beer glass, the final refusal/requirement is clearly
based on a consideration of the alleged mark as whole,
i.e., the beer glass and stand with wording and
scrollwork.
Third, in view of applicant’s alternative amendment
to the application to seek registration of the alleged
Serial No. 77357895
13
mark as a whole under the provisions of Section 2(f),
thereby conceding (for the purpose of applicant’s
alternative argument in support of registration) that the
alleged mark as a whole is not inherently distinctive,7 the
issues in this case are (1) whether the alleged mark is
inherently distinctive and, if not, (2) whether applicant
has demonstrated that the alleged mark has acquired
distinctiveness. Thus, we need not consider the examining
attorney’s requirement for a disclaimer of the beer glass
and stand apart from the alleged mark.
Background For Analysis
To provide context for our consideration of the
refusal of registration, we begin by noting that applicant
describes the alleged mark as follows: “The mark consists
of a configuration of product packaging for the goods.”
It is not exactly clear what applicant intends by the
wording “configuration” of product packaging. However, in
view of the drawing of the alleged mark, which appears to
be a photograph of the beer glass and stand with wording

7 We note that applicant did not expressly state that it was
arguing that the alleged mark had acquired distinctiveness in
the alternative. However, we consider applicant’s amendment to
seek registration of the alleged mark under the provisions of
Section 2(f) to be in the alternative because it was filed after
the examining attorney requested a remand of the application to
consider a new issue.

Serial No. 77357895
14
and scrollwork, we interpret “configuration of product
packaging” to mean “three dimensional packaging.”
In addition, we deem the alleged mark to be trade
dress in the nature of product packaging, not trade dress
in the nature of a product configuration. This is because
the identified product applicant seeks to register the
alleged mark for is “beer,” not a “beer glass and stand
with wording and scrollwork.”8 Where, as here, applicant
seeks to register trade dress in the nature of product
packaging, the question of inherent distinctiveness can be
considered. In contrast, this question does not arise
where an applicant seeks to register trade dress in the
nature of a product configuration. See Wal-Mart Stores,
Inc. v. Samara Brothers, Inc., 529 U.S. 205, 54 USPQ2d
1065 (2000) [Trade dress in the nature of a product
configuration cannot be inherently distinctive].
Furthermore, we deem it appropriate to construe the
identification of goods in the application as necessarily

8 The possibility that a container for a liquid can be either a
product or product packaging is acknowledged in Wal-Mart Stores,
Inc. v. Samara Brothers, Inc., 529 U.S. 205, 54 USPQ2d 1065,
1069-70 (2000) (“a classic glass Coca-Cola bottle, for instance,
may constitute packaging for those consumers who drink the Coke
and then discard the bottle, but may constitute the product
itself for those consumers who are bottle collectors, or part of
the product itself for those consumers who buy Coke in the
classic glass bottle, rather than a can, because they think it
more stylish to drink from the former.”)
Serial No. 77357895
15
limited to beer sold in restaurants, bars, pubs, and the
like. We do so because applicant identified the alleged
mark as “configuration of product packaging” (underlining
added), and the beer glass depicted in the alleged mark is
clearly an open, rather than closed, container. Thus,
applicant’s beer would be dispensed in the beer glass and
stand having wording and scrollwork in restaurants, bars,
pubs, and the like.9
As indicated supra, the examining attorney submitted
materials downloaded from the Internet showing examples of
products described as Yard, Half Yard, or Foot of Ale
Glass with stand. According to the evidence, these
glasses and stands are sold as products in their own
right, rather than as packaging for beer or ale. Although
the evidence of these glasses and stands is evidence of
the design of products, rather than product package
designs, and therefore must be considered unlike

9 We note that applicant states at p. 2 of its Appeal Brief that
the beer glass and stand with wording and scrollwork is also
“employed to dispense applicant’s beer … at home.” In addition,
applicant submitted a photograph of a gift set it sells
comprising its beer (apparently bottled) and the beer glass and
stand with wording and scrollwork. Presumably, these gift sets
may be purchased by consumers. However, applicant’s
identification of goods is simply beer; not bottled beer or sets
comprising bottled beer and the beer glass and stand with
wording and scrollwork. Thus, for the reasons indicated, it is
necessary to read the application’s identification as limited to
beer sold in restaurants, bars, pubs, and the like where beer in
open containers is sold.
Serial No. 77357895
16
applicant’s alleged mark in this particular sense, they
nonetheless may be considered in determining whether
consumers would be likely to find applicant’s product
packaging to be distinctive, whether inherently or through
acquisition of distinctiveness.
To summarize, for purposes of our analysis, we
construe the goods in the application as beer sold in
restaurants, bars, pubs and the like; we deem the alleged
mark to be trade dress in the nature of product packaging;
and the issues in this case are whether the alleged mark,
i.e., the beer glass and stand with wording and
scrollwork, is inherently distinctive or has acquired
distinctiveness for beer sold in restaurants, bars, pubs
and the like.
Analysis
Inherent Distinctiveness
The first issue we address is whether the alleged
mark is inherently distinctive such that it functions as a
mark. It is important to point out that the mere fact the
beer glass in the alleged mark is an open, rather than
closed, container does not render the alleged mark not
inherently distinctive. In other words, there is no per
se rule that an open container cannot be inherently
Serial No. 77357895
17
distinctive for the goods served or contained therein.
For example, the “classic glass Coca-Cola bottle”
referenced in Wal-Mart, would be no less source indicating
when served as an open container to a restaurant patron
than when pulled as a closed container from a refrigerated
display or store shelf by a consumer. However, closed
containers, because they are closed, presumably are
suitable for display on store shelves or in other ways in
which the container can aid the consumer in choosing
between competing products. See Wal-Mart, 54 USPQ2d at
1068 (“a garish form of packaging (such as Tide’s squat,
brightly decorated plastic bottles for its liquid laundry
detergent) may attract an otherwise indifferent consumer’s
attention on a crowded store shelf”). Thus, consumers may
more readily perceive such containers as trademarks for
the goods contained therein.
In determining whether the alleged mark is inherently
distinctive, we look to the predecessor to our primary
reviewing court for guidance. The Court in the past
has looked to whether it was a “common” basic
shape or design, whether it was unique or
unusual in a particular field, [or] whether it
was a mere refinement of a commonly-adopted and
well-known form of ornamentation for a
particular class of goods viewed by the public
as a dress or ornamentation for the goods[.]

Serial No. 77357895
18
Seabrook Foods, Inc. v. Bar-Well Foods, Inc., 568 F.2d
1342, 196 USPQ 289, 291 (CCPA 1977).
Applying the Seabrook test for inherent
distinctiveness to the present case, we are not persuaded
that consumers would immediately perceive and rely upon
the beer glass and stand with wording and scrollwork as an
indication of source for applicant’s beer sold in
restaurant, bars, pubs and the like. The examining
attorney’s evidence shows that this type of glass and
stand for holding beer is common and is known as a Yard,
Half-Yard, or Foot of Ale Glass with stand. Moreover, the
evidence shows that these other glasses and stands are not
being used as source indicators for beer, and are not
associated with a specific brand of beer. Rather, in one
of the advertisements, the beer glass and stand is touted
as a décor item (“displays great in any home bar”) and the
purchaser is challenged to drink from the glass (“try to
drink from this without spilling a drop”). Given these
facts, it is reasonable to assume that the public’s
perception of the alleged mark would be as a mere
refinement of this type of beer glass and stand, rather
than an inherently distinctive indicator of source for the
beer served within it in a bar or restaurant. Consumers
who purchase applicant’s beer at a restaurant, bar or pub
Serial No. 77357895
19
are likely to view the alleged mark as simply a glass and
stand for serving/holding the beer. This is the case
notwithstanding that the alleged mark also includes the
name of applicant’s beer, PAUWEL KWAK, and other wording
and scrollwork. Stated differently, the mere inclusion of
PAUWEL KWAK and other wording and scrollwork on the beer
glass and stand does not render the beer glass and stand
design bearing the wording and scrollwork inherently
distinctive.
As previously noted, applicant submitted a photograph
of a gift set it sells which contains applicant’s beer
(apparently bottled) along with the beer glass and stand
with wording and scrollwork. In addition, applicant
submitted materials downloaded from its website, and
materials downloaded from third-party websites that
contain references to and/or pictures of applicant’s beer
being served in the beer glass and stand with wording and
scrollwork. At applicant’s website is a picture of the
alleged mark and above is the following: “The art of
pouring -- You will enjoy a Kwak most in its original Kwak
glass, poured in accordance with the rules of the art.”
The following are excerpts from the third-party websites,
all referring to applicant’s KWAT branded beer:
Serial No. 77357895
20
A landlord is demanding drinkers hand over a
shoe before they get a beer in his Kent pub. It
is to ensure they bring back an elaborate wooden
frame and special glass used to serve a Belgian
beer. Kwak beer comes in a ball-shaped glass
and the frame is needed to keep it upright;10

The most famous aspect of Kwak is the eye-
catching glass in which it is supposed to be
served. Kwak has a round bottomed glass that
resembles a ‘yard of ale’, which is held upright
in a wooden stand;11

Kwak … is the most eye-catching of Belgian
beers. Each Belgian beer has a unique glass out
of which it must be served and Kwak has a round
bottomed glass that resembles a “yard of ale”
and which is held upright in a wooden stand –
rather like a piece of scientific apparatus.12

Being on the Grote Market in Brugge, and in line
with all the tourists who were having the same,
we order a 1m Kwak. … what I find fascinating
about the Kwak, is the glass it comes in.13

The Kwak glass remains to this day one of the
most distinctive drinking vessels in Belgium.
Served to the client complete with monogrammed
wooden stand, it is a familiar sight in Belgium
bars, and a popular purchase for homeward-bound
tourists.14

The bottom of a Kwak glass is rounded so that
there comes a point when all the beer rushes
into your mouth. … Because glasses like that are
quite expensive, in the café Dulle Griet you
will be asked to give up a shoe as a deposit.15

10 http://www.4to40.com
11 http://www.nationmaster.com
12 http://www.economicexpert.com
13 http://gloriousfoodandwinebelgianbeer.blogspot.com
14 http://www.expatica.com
15 http://www.wallywine.com
Serial No. 77357895
21
The fact that applicant’s bottled beer and beer glass
and stand with wording and scrollwork are packaged and
sold together as a gift set fails to persuade us that the
beer glass and stand with wording and scrollwork itself,
when not sold as a product but used as a container in
restaurants, bars, pubs and the like, would be recognized
as an inherently distinctive source indicator for
applicant’s beer. Similarly, the facts that the alleged
mark is featured at applicant’s website and patrons of
bars and pubs are served applicant’s beer in the beer
glass and stand with wording and scrollwork does not
convince us that consumers would view the beer glass and
stand with wording and scrollwork as an inherently
distinctive source indicator for applicant’s beer.
Although the references quoted above include the authors’
observations about the distinctive nature of applicant’s
beer glass and stand, two references also note its
resemblance to a “yard of ale” glass and stand. Thus,
these excerpts support the conclusion that consumers would
view the alleged mark as a mere refinement of a Yard of
Ale Glass with Stand itself, rather than an inherently
distinctive indicator of source for beer sold at
restaurants, bars, pubs and the like. Moreover, four
excerpts refer to use of the alleged mark outside the
Serial No. 77357895
22
United States and, thus, these excerpts are not probative
of the impact of the alleged mark on purchasers and
potential purchasers in the United States. One of the
references comparing applicant’s container design to the
“yard of ale” glass and stand notes that “[e]ach Belgian
beer has a unique glass out of which it must be served.”
Even if this is so in Belgium, and consumers there have
come to distinguish beers by the types of glasses in which
they are served, there is no evidence of record to support
a conclusion that American consumers of beer would engage
in the same process, or even have the opportunity to do
so.
Insofar as the third-party registrations for marks
consisting of configurations of bottles/containers for
various goods are concerned, the Board has often noted
that each case must be decided on its own merits. We are
not privy to the records of the third-party registration
files and, moreover, the determination of registrability
of those particular marks by the examining attorneys
cannot control our decision in the case now before us.
See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001). (“Even if some prior
registrations had some characteristics similar to
[applicant’s application], the PTO’s allowance of such
Serial No. 77357895
23
prior registrations does not bind the Board or this
court.”) We do note, however, that unlike applicant’s
alleged mark, all but one of the marks in the third-party
registrations are configurations of closed, rather than
open, containers. As noted previously, consumers may more
readily perceive closed containers as trademarks for the
goods contained therein because closed containers
presumably are suitable for display on store shelves or in
other ways in which the container can aid the consumer in
choosing between competing products. There is no
indication whether applicant’s open container for beer
would be similarly displayed in a restaurant or bar, among
other containers for beer. A consumer of beer in a
restaurant or bar may very well not be presented with the
container until after the beer has been ordered.
In view of the foregoing, we conclude that the
alleged mark is a mere refinement of a common Yard, Half
Yard, or Foot of Ale glass with stand and thus falls short
of being inherently distinctive for applicant’s beer sold
in restaurants, bars, pubs and the like. This is the case
notwithstanding the wording and scrollwork included in the
alleged mark.

Serial No. 77357895
24
Acquired Distinctiveness Under Section 2(f)
Having found that the alleged mark is not inherently
distinctive, we next consider whether it has acquired
distinctiveness as a source indicator for applicant’s
goods. In support of its claim of acquired
distinctiveness, applicant points to its substantially
exclusive and continuous use of the alleged mark for at
least twenty-five years, and its ownership of prior
Registration No. 3479299.16
Turning first to applicant’s prior registration,
Trademark Rule 2.41(b) provides that ownership of a
registration of “the same mark” on the Principal Register
may be accepted as prima facie evidence of acquired
distinctiveness. In relying on this rule, an applicant is
essentially seeking to tack the use of the registered mark
to its use of the present mark for purposes of
transferring distinctiveness to the new mark. See In re
Flex-O-Glass, Inc., 194 USPQ 203 (TTAB 1977). Thus, the
analysis used to determine whether applicant’s present
mark is “the same mark” as its previously registered mark,
for purposes of the rule, is the analysis used in tacking
cases, i.e., whether the marks are legal equivalents. See

16 Applicant claimed ownership and submitted a copy of this
registration in a response filed October 1, 2008.
Serial No. 77357895
25
Van Dyne-Crotty, Inc. v. Wear-Guard Corp., 926 F.2d 1156,
17 USPQ2d 1866, 1868 (Fed. Cir. 1991). See also In re
Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d
1807, 1812 (Fed. Cir. 2001) and In re Nielsen Business
Media Inc., 93 USPQ2d 1545 (TTAB 2010).
To meet the legal equivalents test, the marks must be
indistinguishable from one another or create the same
continuing commercial impression such that the consumer
would consider both as the same mark. See Van Dyne-
Crotty, Inc. v. Wear-Guard Corp., 17 USPQ2d at 1868; and
In re Dial-A-Mattress Operating Corp., 57 USPQ2d at 1812.
In this case, we find that applicant’s previously
registered mark shown below,

is not the legal equivalent of the three-dimensional beer
glass and stand mark shown below.
Serial No. 77357895
26

The previously registered mark is a two-dimensional
design in the nature of a logo. Applicant itself
describes the mark as “a representation of a uniquely
shaped glass with a wide mouth, a thin neck and a bulbous
bottom in a holder.” (underlining added) In contrast,
the alleged mark that is the subject of the present
application consists of a three-dimensional beer glass and
stand, and includes wording and scrollwork not found in
the previously registered mark. Thus, applicant is not
entitled to tack the use of the registered mark to its use
of the alleged mark herein for purposes of transferring
distinctiveness to such alleged mark. See e.g., In re
Nielsen Business Media, Inc., 93 USPQ2d at 1547 [THE
BOLLYWOOD REPORTER and THE HOLLYWOOD REPORTER “are not
Serial No. 77357895
27
legal equivalents because they have different meanings and
engender different commercial impressions.”]
We turn next to applicant’s claim of acquired
distinctiveness based on at least twenty-five years use of
the alleged mark in the United States. In connection with
its claim of acquired distinctiveness based on length of
use, we will again consider the materials downloaded from
applicant’s website and the third-party websites that
contain references to and/or pictures of applicant’s beer
being served in the beer glass and stand with wording and
scrollwork. The burden of proving acquired
distinctiveness in an ex parte proceeding rests with
applicant. Yamaha Int’l. Corp. v. Hoshino Gakki Co. Ltd.,
840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988).
Acquired distinctiveness may be shown by direct evidence
and/or circumstantial evidence. Direct evidence, which
includes actual testimony, declarations or surveys of
consumers as to their state of mind, is not of record in
this case. Circumstantial evidence is evidence from which
consumer association might be inferred, such as years of
use, extensive sales and advertising, and any similar
evidence showing wide exposure of the mark to consumers.
In re Ennco Display Systems Inc., 56 USPQ2d 1279, 1283
(TTAB 1983). See also J. Thomas McCarthy, McCarthy on
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28
Trademarks and Unfair Competition, Sections 15:30; 15:62
(4th ed. updated 2010).
There is no fixed rule for the amount of proof
necessary to demonstrate acquired distinctiveness.
However, as is the case with highly descriptive terms
which may nevertheless acquire distinctiveness, we note
that the lesser the degree of distinctiveness, the heavier
the burden to prove trade dress in the nature of product
packaging has acquired distinctiveness. Cf. Yamaha
International Corp. v. Hoshino Gakki Co., Ltd., 6 USPQ2d
at 1008. In this case, the record shows that other
entities market as goods in trade Yard, Half Yard, or Foot
of Ale glasses and stands which are highly similar to
applicant’s alleged mark. Thus, consumers who order
applicant’s beer in a restaurant, bar, pub or the like
would not view applicant’s alleged mark as unique or
particularly unusual. We agree with the examining
attorney that given the nature of the alleged mark, i.e.,
it is highly similar to a specific type of glass and stand
for serving and holding beer, a claim of twenty-five years
of use is insufficient to prove acquired distinctiveness,
especially without evidence of the extent of such use.
Insofar as applicant’s website is concerned, although the
alleged mark is displayed thereon, there is no information
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29
with respect to the number of visitors to the website. In
the absence thereof, we are unable to determine whether a
significant number of people in the United States have
even viewed the alleged mark at the website. With respect
to the third-party website evidence, as noted previously,
four of the excerpts refer to use of the alleged mark
outside the United States and, thus, these excerpts are
not probative of whether the alleged mark has acquired
distinctiveness among purchasers in the United States.
With respect to the remaining two excerpts, one
characterizes the beer glass as “eye-catching” and another
as “unique.” However, these two excerpts hardly support a
finding that a significant number of consumers have come
to recognize the alleged mark as an indication of the
source of applicant’s beer sold at restaurants, bars, pubs
and the like. In this case, there is simply no evidence
that the alleged mark has ever been promoted by applicant
as its trademark in the United States using “Look for …”
promotions, and the record is devoid of evidence that
anyone other than applicant regards a beer glass and stand
with wording and scrollwork as a trademark for beer sold
at restaurants, bars, pubs and the like.
Accordingly, given the nature of the alleged mark,
more evidence would be necessary to show that it has
Serial No. 77357895
30
become distinctive of applicant’s goods, e.g., affidavits
or declarations from the ultimate purchasers and/or
unsolicited publicity and references in the media.
Conclusion
In view of the foregoing, we conclude that the
alleged mark is not inherently distinctive, and in the
absence of sufficient evidence that the purchasing public
relies upon the beer glass and stand with wording and
scrollwork, as a whole, as a means of identifying
applicant’s beer sold at restaurants, bars, pubs and the
like, we are not persuaded that the alleged mark has
acquired distinctiveness and that it functions as a
trademark for applicant’s goods.
Decision: The refusal to register on the ground that
the alleged mark does not function as a mark or, stated
differently, is not inherently distinctive is affirmed,
and applicant has not met its burden of proving acquired
distinctiveness.