Detroit Rivertown Brewing Company, LLC

Trademark Trial and Appeal Board

Jul 10, 2017

No. 86640818 (T.T.A.B. Jul. 10, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: July 10, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Detroit Rivertown Brewing Company, LLC
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Serial No. 86640818
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Daniel Christopherson of Lehrman Beverage Law, PLLC,
for Detroit Rivertown Brewing Company, LLC.
Caile Morris, Trademark Examining Attorney, Law Office 123,
Susan Hayash, Managing Attorney.
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Before Zervas, Hightower, and Coggins,
Administrative Trademark Judges.
Opinion by Hightower, Administrative Trademark Judge:
Applicant Detroit Rivertown Brewing Company, LLC seeks registration on the
Principal Register of the mark VANILLA JAVA PORTER, in standard characters and
with “porter” disclaimed, for “beer” in International Class 32.1 Applicant claims that
the mark as a whole has become distinctive of its goods in commerce pursuant to
Trademark Act Section 2(f), 15 U.S.C. § 1052(f).

1 Application Serial No. 86640818 was filed on May 26, 2015, under Trademark Act Section
1(a), 15 U.S.C. § 1051(a), based on allegations of first use anywhere and in commerce as of
January 2006.
Serial No. 86640818
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The Trademark Examining Attorney has refused registration under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that VANILLA
JAVA PORTER is merely descriptive of the goods identified in the application, and
Applicant has not provided sufficient evidence of acquired distinctiveness to support
registration under Section 2(f).
After the refusal was made final, Applicant appealed, and briefing is complete. We
affirm the refusal to register.
Although Applicant initially contested the descriptiveness refusal, Applicant has
conceded for procedural purposes that VANILLA JAVA PORTER is merely
descriptive by amending its application to seek registration under Section 2(f). See
Cold War Museum Inc. v. Cold War Air Museum Inc., 586 F.3d 1352, 92 USPQ2d
1626, 1629 (Fed. Cir. 2009). Therefore, the only issue before us is whether Applicant’s
evidence of acquired distinctiveness for the mark VANILLA JAVA PORTER is
sufficient. See In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262, 1264
(Fed. Cir. 2015); Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d
1001, 1006 (Fed. Cir. 1988).
Applicant bears the burden of proving acquired distinctiveness. “To show that a
mark has acquired distinctiveness, an applicant must demonstrate that the relevant
public understands the primary significance of the mark as identifying the source of
a product or service rather than the product or service itself.” In re Steelbuilding.com,
415 F.3d 1293, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005) (citing Qualitex Co. v.
Jacobson Prods. Inc., 514 US 159, 163, 34 USPQ2d 1161 (1995)).
Serial No. 86640818
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Trademark Rule 2.41(a)(3), 37 C.F.R. § 2.41(a)(3), states that an applicant may
submit, in support of registration under Section 2(f),
appropriate evidence showing duration, extent, and nature
of the use in commerce and advertising expenditures in
connection therewith (identifying types of media and
attaching typical advertisements), and verified
statements, letters or statements from the trade or public,
or both, or other appropriate evidence of distinctiveness.
See also Steelbuilding.com, 75 USPQ2d at 1424 (“In determining whether secondary
meaning has been acquired, the Board may examine copying, advertising
expenditures, sales success, length and exclusivity of use, unsolicited media coverage,
and consumer studies (linking the name to a source)).” Applicant submitted an
affidavit from its president stating in substantive part that:
The VANILLA JAVA PORTER mark has become
distinctive for beer through Applicant’s substantially
exclusive and continuous use in commerce for almost ten
(10) years, and based on:
a. Extensive sales of the beer in the United States
across at least 20 states and the District of
Columbia amounting to more than $5,000,000 in
retail sales;
b. Extensive advertising expenditures in
association with the mark amounting to more
than $250,000 over the past ten (10) years,
including advertisements in Michigan Beer
Guide and Great Lakes Brewing News, extensive
promotions at retail, significant monetary
expenditures on new packaging, point of sale
materials, and social media campaigns.
c. This beer has been mentioned in numerous
articles, including various publications on web
magazines like www.cleveland.com and
www.mlive.com . . . .
d. This is the flagship beer of one of the fastest
growing craft breweries in the United States.
Serial No. 86640818
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e. The top 20 results in a Google search for
“VANILLA JAVA PORTER” all relate to
Applicant’s beer . . . .2
Descriptive words must be left free for competitive use. In re Abcor Dev. Corp., 588
F.2d 811, 200 USPQ 215, 217 (CCPA 1978); In re Styleclick.com Inc., 58 USPQ2d
1523, 1527 (TTAB 2001). More evidence of acquired distinctiveness is required where
a mark is so highly descriptive that purchasers seeing the matter in relation to the
named goods would be less likely to believe that it indicates source in any one party.
In other words, “the greater the degree of descriptiveness the term has, the heavier
the burden to prove it has attained secondary meaning.” In re Bongrain Int’l Corp.,
894 F.2d 1316, 13 USPQ2d 1727, 1728 n.4 (Fed. Cir. 1990) (quotations omitted); see
also Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1767
(TTAB 2013), aff’d mem., 565 Fed. Appx. 900 (Fed. Cir. 2014).
Here, VANILLA JAVA PORTER is highly descriptive of the qualities, ingredients,
and characteristics of the applicant’s goods. See In re TriVita, Inc., 783 F.3d 872, 114
USPQ2d 1574, 1575 (Fed. Cir. 2015). On its website, Applicant describes its goods
offered under VANILLA JAVA PORTER as follows:
With a beautifully crafted, copper cored, English Style
Porter at its heart, Atwater’s Vanilla Java Porter tips its
hat to the modern audience with the addition of vanilla and
coffee that is locally brewed cold to eliminate burnt flavors.
The beer, vanilla & coffee tumble together, enhancing the
smooth nature of each.3

2 Exhibit A to December 15, 2015, Response to Office Action at 7-9 (dated December 14, 2015).
3 June 22, 2015 Office Action at 5-6; see also Exhibit B to December 15, 2015 Response to
Office Action at 10-11 (same). Atwater is Applicant’s trade name. Appeal Brief at 9, 4
TTABVUE 10.
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The following evidence establishes that the words constituting the matter
Applicant seeks to register have descriptive significance in association with its goods:
• Vanilla: The Examining Attorney introduced dictionary definitions
of “vanilla” that include:
o “n. 1. Any of tropical American vines of the genus Vanilla in
the orchid family, especially V. planifolia, widely cultivated for
its long narrow seedpods, which yield an aromatic substance
used especially as a flavoring.”
o “adj. 1. a. Flavored with vanilla: vanilla pudding.”4
• Java: We take judicial notice that the definition of “java” in the
Merriam-Webster online dictionary is “coffee.”5 The Examining
Attorney also introduced dictionary definitions of “java” including
“Informal Brewed coffee.”6
• Porter (disclaimed): The Examining Attorney submitted dictionary
definitions of “porter” including: “A dark beer resembling light stout,
made from malt browned or charred by drying at a high
temperature.”7 Applicant also introduced evidence that “Porters” are
the name of a beer style family.8
Thus, it is plain from the record that Applicant’s goods are a porter-style beer
containing vanilla and brewed coffee, that is, java. Each of these words retains its
descriptive significance in the combination VANILLA JAVA PORTER, which forms

4 June 22, 2015 Office Action at 2 (from AMERICAN HERITAGE DICTIONARY OF THE ENGLISH
LANGUAGE (5th ed. 2011) at thefreedictionary.com/vanilla).
5 From merriam-webster.com/dictionary/java (last visited July 10, 2017). The Board may take
judicial notice of definitions from dictionaries, including online dictionaries that exist in
printed format or have regular fixed editions. E.g., In re C.H. Hanson Co., 116 USPQ2d 1351,
1355 n.10 (TTAB 2015).
6 June 22, 2015 Office Action at 3 (from AMERICAN HERITAGE DICTIONARY OF THE ENGLISH
LANGUAGE (5th ed. 2011) at thefreedictionary.com/java).
7 Id. at 4 (from AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (5th ed. 2011)
at thefreedictionary.com/porter).
8 Exhibit D to December 15, 2015 Response to Office Action at 115-19 (from the “Beer Styles
Study Guide” at CraftBeer.com).
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a composite that is itself highly descriptive of Applicant’s goods. See, e.g., DuoProSS
Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1759
(Fed. Cir. 2012) (finding SNAP SIMPLY SAFER merely descriptive for cannulae,
needles, and syringes); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1173 (TTAB 2013)
(holding SUPERJAWS merely descriptive for tools).
Although Section 2(f) provides that the PTO may accept five years of
“substantially exclusive and continuous use” as prima facie evidence of acquired
distinctiveness, the statute does not require the PTO to do so. La. Fish Fry, 116
USPQ2d at 1265. For highly descriptive marks, passage of time alone may be
insufficient to establish secondary meaning. See, e.g., Alcatraz Media, 107 USPQ2d
at 1766 (finding 21 years of continuous use alone insufficient to establish acquired
distinctiveness of highly descriptive phrase ANNAPOLIS TOURS); In re Packaging
Specialists, Inc., 221 USPQ 917, 920 (TTAB 1984) (deeming use of PACKAGING
SPECIALISTS, INC. for 16 years “a substantial period but not necessarily conclusive
or persuasive on the Section 2(f) showing”).
We find VANILLA JAVA PORTER to be such a phrase. Because it is so highly
descriptive of Applicant’s goods, ten years of use – even if it has been substantially
exclusive, which we assume without deciding9 – is insufficient to establish prima facie
that the phrase has acquired distinctiveness.

9 Much of Applicant’s appeal brief and evidence submitted with its May 11, 2016 Response to
Office Action is directed to countering the Examining Attorney’s evidence of third-party use
of the same phrase or its constituent elements in association with beer.
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Considering Applicant’s other evidence, we find that $5 million in retail sales and
$250,000 in advertising over a ten-year period is insufficient to establish that the
applied-for matter has become distinctive of Applicant’s goods. Moreover, although
the articles and advertising referenced in Applicant’s affidavit are not of record, the
ads mentioned include only what appear to be two specialty publications, likely from
the same geographic area: “Michigan Beer Guide” and “Great Lakes Brewing News.”
Applicant did submit Internet printouts of two newspaper articles referencing its
VANILLA JAVA PORTER and at least one discussion thread specifically about a
home brew attempt to clone it.10 This evidence does not establish “the effectiveness
of such use to cause the purchasing public to identify the mark with the source of the
product.” In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417, 422
(Fed. Cir. 1985).
On this record, we find that Applicant has not established that, “in the minds of
the public, the primary significance of [VANILLA JAVA PORTER] is to identify the
source of the product rather than the product itself.” Coach Servs. Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1729 (Fed. Cir. 2012) (quotation
omitted).
Decision: The refusal to register is affirmed.

10 Exhibits X (Robert Allen, Detroit’s most popular beers, St. Patrick’s Day faves, DETROIT
FREE PRESS, March 16, 2016); Y (Kevin Revolinski, A toast to good news from Detroit, CHI.
TRIB., Dec. 14, 2013); and J (“Atwater brewery vanilla java porter clone”) to May 11, 2016
Response to Office Action at 59-63, 130-39.