Great Lakes Brewing Co.

Trademark Trial and Appeal Board

Jan 9, 2012

No. 77464553 (T.T.A.B. Jan. 9, 2012)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: January 9, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Great Lakes Brewing Co.
________

Serial No. 77464553
_______

Sandra M. Koenig of Fay Sharpe LLP for Great Lakes Brewing
Co.

Florentina Blandu, Trademark Examining Attorney, Law Office
117 (Brett J. Golden, Managing Attorney).
_______

Before Cataldo, Bergsman and Wellington,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Great Lakes Brewing Co. filed an application to
register in standard characters on the Principal Register
the proposed mark CHRISTMAS ALE for “beer” in International
Class 32.1
Procedural History
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.

1 Serial No. 77464553 was filed on May 2, 2008, alleging first
use anywhere and in commerce as of August 19, 1992.
Ser. No. 77464553
2
§1052(e)(1), on the ground that applicant’s mark is
descriptive of applicant’s goods. Applicant responded by
disclaiming “ALE” and, at the examining attorney’s
suggestion, amended its application to seek registration of
its proposed mark under Section 2(f). The examining
attorney found that applicant’s showing of acquired
distinctiveness was insufficient to overcome the refusal to
register. Applicant submitted additional evidence of
acquired distinctiveness under Section 2(f) and amended its
application in the alternative to seek registration on the
Supplemental Register. The examining attorney continued
the refusal under Section 2(e)(1) and also refused
registration under Section 23 of the Trademark Act, 15
U.S.C. §1091, on the ground that applicant’s mark is
generic and incapable of identifying applicant’s goods and
distinguishing them from those of others.
When the refusals were made final, applicant appealed.
Applicant and the examining attorney filed briefs on the
issues under appeal, and applicant filed a reply brief.
Issues on Appeal
The issues on appeal are (1) whether the term
CHRISTMAS ALE is generic for beer; and, alternatively (2)
Ser. No. 77464553
3
if such term is not generic, whether it has acquired
distinctiveness.2
Genericness
In support of the refusal to register, the examining
attorney has made of record dictionary definitions of
CHRISTMAS and ALE. According to these definitions,
CHRISTMAS is defined as “a Christian feast on December 25
or among some Eastern Orthodox Christians on January 7 that
commemorates the birth of Christ and is usually observed as
a legal holiday.”3 “ALE” is defined as “an alcoholic
beverage brewed especially by rapid fermentation from an
infusion of malt with the addition of hops”4 or “beer other
than lager, stout, or porter; beer brewed by top
fermentation.”5 In addition, evidence made of record by
applicant further indicates that “ale is a subset of beer.”6
The examining attorney further has made of record
articles and advertisements retrieved from Internet web

2 Applicant has conceded the mere descriptiveness of the
designation sought to be registered by seeking registration
pursuant to Section 2(f). See Yamaha International Corp. v.
Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed.
Cir. 1988); and In re Leatherman Tool Group, Inc., 32 USPQ2d 1443
(TTAB 1994).
3 merriam-webster.com
4 Id.
5 askoxford.com
6 Applicant’s January 18, 2010 communication, Exhibit U, December
18, 2009 article posted on realbeer.com.
Ser. No. 77464553
4
pages. The following samples from such articles and web
pages are illustrative:
CHRISTMAS ALE
The brewers of Anchor Steam® Beer are proud to
announce the release of our thirty-third
Christmas Ale.
Every year since 1975 the brewers at Anchor have
brewed a distinctive Christmas Ale, which is
available from early November to mid-January. …
Each year our Christmas Ale gets a unique label
and a unique recipe for the Ale itself. …
anchorbrewing.com;

Christmas Ale
A holiday ale brewed with honey and spiced with
fresh ginger and cinnamon.
greatlakesbrewing.com (applicant’s website);

CHRISTMAS ALE
The chill of Colorado high country winter calls
for a beer with extra flavor and strength. Here
it is. Breck Brew’s Christmas Ale. At over 7%
alcohol, with a sturdy texture and rich flavors
of caramel and chocolate, our holiday seasonal is
the fermented equivalent of a good fire.
breckbrew.com;

Saint Arnold Christmas Ale
Description: A rich, hearty ale perfect for the
holiday season with a malty sweetness and spicy
hop character. The generous use of five
different malts is responsible for the full
flavor and high alcohol level of this beer.
Saint Arnold Christmas Ale is best consumed at
45º Fahrenheit.
saintarnold.com;

CHRISTMAS ALE
Our spicy yuletide ale
Every year to celebrate the holiday season, we
brew up our Christmas Ale, and with each year we
Ser. No. 77464553
5
change the recipe slightly so that you have
something special and new to look forward to.
Traditionally, our Christmas Ale is a complex
brown ale that develops well in the bottle for up
to five years.
gooseisland.com;

Brewed my Christmas Ale this weekend. It was a
fun day! The beer smells great and the color is
fantastic. Recipe is below for anyone
interested. …
I can’t brew every weekend, or even every other,
bc I don’t consume it fast enough. However, I
could always brew ahead by brewing up an
octoberfest, a pumpkin ale and Christmas ales
ahead of time…
homebrewtalk.com;

Tasting Notes and Review of Schafly Christmas Ale
This is probably the beer that the uninitiated
imagine when they here [sic] the phrase
“Christmas beer.” With more than healthy doses
of traditional holiday spices, this beer smells
and tastes like Christmas.
The Christmas Ale pours with a short dense head.
The body is reddish copper and clear. …
beer.about.com;

Barley’s Christmas Ale
Style Guidelines: Holiday Ale
Rotation Schedule: on tap at both locations the
week before Thanksgiving, until we run out,
usually between Christmas and New Years Eve.
Until Barley’s Christmas Ale was born, we stuck
strictly to the essential ingredients of beer:
malt, hops, water and yeast. When it came time
to brew Barley’s Christmas Ale though, we drop
everything we’re doing, grab some chairs (and
beers!) and sit around zesting oranges while we
chat. …
barleysbrewing.com;

Corsendonk® Christmas Ale
Ser. No. 77464553
6
A New Holiday tradition
First brewed and released in 1998, Corsendonk®
Christmas Ale is a rich, dark, joyous brew with
which to celebrate the holiday season. …
mythbirdbeer.com;

Hi and Welcome to HomeBrewChatter.com! This
forum was started by a group of dedicated
homebrewers that desired a place to discuss the
process of homebrewing, beer in general, and,
well, life in general. …
Gonna take half the day off and brew today. Got
the idea for a Christmas ale from k4 over at this
thread. …
homebrewchatter.com;

Christmas Ale
Classification: christmas ale, spiced ale,
partial mash
For those who might be looking for a Christmas
Ale recipe, here is one that Curt Freeman and I
made 2 weeks ago and I just bottled my share this
afternoon. …
brewery.org;

Christmas Ale
If you’re looking for a special beer recipe to
help make this holiday season a little happier,
our Christmas Ale is just what you need. The
Christmas Ale is filled with the festive flavor
of cherries, spices and almonds. It’s a beer you
and your guests are sure to love.
myfamilykitchen.com;

Christmas Ale
Our Christmas Ale is a robust E.S.B. (Extra
Special Bitter.) This brew has a lovely, dark
red/amber color and a rich, full-bodied, malty
taste with slightly roasted undertones. …
grittys.com; and

Strong Christmas Ale Recipe
Ser. No. 77464553
7
With Christmas right around the corner it’s time
to pick out a recipe for this year[’]s Christmas
Ale. Last year I made a Spiced Ale that came out
excellent. I wanted to use that recipe again
this year but I recently decided to change it up.
So, this year[’]s recipe is a strong Christmas
Ale. Here’s the recipe that I will be using.
mybeer.getpaidfrom.us.

A mark is a generic name if it refers to the class,
genus or category of goods and/or services on or in
connection with which it is used. See In re Dial-A-
Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807
(Fed. Cir. 2001), citing H. Marvin Ginn Corp. v.
International Association of Fire Chiefs, Inc., 782 F.2d
987, 228 USPQ 528 (Fed. Cir. 1986). The test for
determining whether a mark is generic is its primary
significance to the relevant public. See Section 14(3) of
the Act. See also In re American Fertility Society, 188
F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc.
v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991);
and H. Marvin Ginn Corp. v. International Association of
Fire Chiefs, Inc., 228 USPQ2d at 530.
The examining attorney has the burden of establishing
by clear evidence that a mark is generic and thus
unregistrable. See In re Merrill Lynch, Pierce, Fenner and
Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987).
Evidence of the relevant public’s understanding of a term
Ser. No. 77464553
8
may be obtained from any competent source, including
testimony, surveys, dictionaries, trade journals,
newspapers, and other publications. See In re Northland
Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed.
Cir. 1985).
In In re American Fertility Society, 51 USPQ2d 1832,
our primary reviewing court held that if the USPTO can
prove “(1) the public understands the individual terms to
be generic for a genus of goods and species; and (2) the
public understands the joining of the individual terms into
one compound word to lend no additional meaning to the
term, then the PTO has proven that the general public would
understand the compound term to refer primarily to the
genus of goods or services described by the individual
terms.” (Id. at 1837.)
The court further clarified the test in In re Dial-A-
Mattress Operating Corp., 57 USPQ2d 1807, 1-888-M-A-T-R-E-
S-S for “telephone shop-at-home retail services in the
field of mattresses,” (Id. at 1810):
Where a term is a “compound word” (such as
“Screenwipe”), the Director may satisfy his
burden of proving it generic by producing
evidence that each of the constituent words is
generic, and that “the separate words joined to
form a compound have a meaning identical to the
meaning common usage would ascribe to those words
as a compound.” In re Gould Paper Corp., 834
F.2d 1017, 1018, 5 USPQ2d 1110, 1110 (Fed. Cir.
Ser. No. 77464553
9
1987). However, where the proposed mark is a
phrase (such as “Society for Reproductive
Medicine”), the board “cannot simply cite
definitions and generic uses of the constituent
terms of a mark”; it must conduct an inquiry into
“the meaning of the disputed phrase as a whole.”
In re The Am. Fertility Soc'y, 188 F.3d at 1347,
51 USPQ2d at 1836. The In re Gould test is
applicable only to “compound terms formed by the
union of words” where the public understands the
individual terms to be generic for a genus of
goods or services, and the joining of the
individual terms into one compound word lends “no
additional meaning to the term.” Id. at 1348-49,
51 USPQ2d at 1837.

The court concluded that “1-888-M-A-T-R-E-S-S,” as a
mnemonic formed by the union of a series of numbers and a
word, bears closer conceptual resemblance to a phrase than a
compound word, and the court reiterated that the PTO must
produce evidence of the meaning the relevant purchasing
public accords to the proposed mnemonic mark “as a whole.”
In concluding that there was not substantial evidence that
the term is generic, the court added that the term is not
literally a genus or class name nor does it “immediately and
unequivocally” describe the service at issue.
In this case, the terms comprising the proposed mark
CHRISTMAS ALE include CHRISTMAS, here an adjective,
followed by the noun ALE which it clearly modifies. As
such, CHRISTMAS and ALE form a union of words,
notwithstanding the space between its component terms. See
In re American Institute of Certified Public Accountants,
Ser. No. 77464553
10
65 USPQ2d 1972, 1982 n. 8 (TTAB 2003). Therefore, we find
that CHRISTMAS ALE is more analogous to the compound word
considered in Gould than it is to the phrase considered by
the court in American Fertility. See, for example, In re
William B. Coleman Co., 93 USPQ2d 2019, 2021 (TTAB 2010).
Thus, we look first to the above dictionary
definitions of the terms comprising CHRISTMAS ALE to
determine whether they support the refusal to register the
proposed mark. According to these definitions, CHRISTMAS
ALE may be defined as an alcoholic beverage, namely, a type
of beer, brewed to coincide with and celebrate the holiday
of Christmas. In other words, CHRISTMAS ALE is a beer
brewed and consumed at Christmas time. This finding is
supported by the internet evidence noted above wherein
CHRISTMAS ALE was referred to as “a holiday ale,”
“available from early November to mid-January,” “our
holiday seasonal,” etc.
We agree with applicant and the examining attorney
that the genus of the goods at issue is “beer,” that is,
the goods as identified in the involved application. We
also find that CHRISTMAS ALE is understood by the relevant
public to refer to that genus of goods or a subgenus
thereof. See H. Marvin Ginn, 228 USPQ at 532. A product
may have more than one generic name. In re Sun Oil Co.,
Ser. No. 77464553
11
426 F.2d 401, 165 UPSQ 718, 719 (CCPA 1970) (Rich, J.,
concurring) (“All of the generic names for a product belong
in the public domain”) (emphasis in the original); Roselux
Chemical Co., Inc. v. Parsons Ammonia Company, Inc., 299
F.2d 855, 132 UPSQ 627, 632 (CCPA 1962) (a product may have
more than one common descriptive name). Specifically,
articles and advertisements made of record by the examining
attorney clearly establish that, contrary to applicant’s
contention, “Christmas Ale” is a type of seasonal beer
brewed both by commercial and home brewers for consumption
during the Christmas holiday (e.g., “Every year to
celebrate the holiday season, we brew up our Christmas
Ale”). Furthermore, the materials made of record by the
examining attorney do not point to applicant, or to any
other single entity, as the single source of the “Christmas
Ale” discussed therein. Rather, it seems that “Christmas
Ale” may be obtained from any number of sources, or
formulated at home by a home brewer for non-commercial
consumption.
In addition, applicant has failed to introduce
evidence sufficient to rebut the examining attorney’s
evidence of genericness. Most of applicant’s evidence is
directed toward the popularity of applicant’s beer under
its CHRISTMAS ALE designation, discussed in more detail
Ser. No. 77464553
12
infra in the section of this decision addressing
applicant’s claim of acquired distinctiveness, and the
nature of various types of beer in general.
Applicant further made of record copies of third-party
applications and registrations for CHRISTMAS-formative
marks identifying a variety of goods, taken from the
Trademark Electronic Search System (TESS). However, this
evidence is not persuasive for the following reasons.
First, the pending applications submitted are of no
value.7 See Interpayment Services Ltd. v. Docters & Thiede,
66 USPQ2d 1463 (TTAB 2003)(applications show only that they
have been filed). The registrations for CHRISTMAS-
formative marks submitted by applicant, include:
Registration No. 2832690 for CHRISTMAS EXPRESS
for candy;

Registration No. 2024026 for CHRISTMAS TRADITIONS
for cocoa and cocoa mixes;

Registration No. 2135008 for CHRISTMAS
CELEBRATION for coffee;

Registration No. 1631034 for CHRISTMAS CRUNCH for
breakfast cereal;

Registration No. 1707115 for CHRISTMAS CHEER for
tobacco;

7 Applicant’s request in its brief that the Board take judicial
notice of the prosecution history of two the pending applications
is denied. The Board does not take judicial notice of the file
history of third-party applications or registrations. See TBMP §
1208.02.

Ser. No. 77464553
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Registration No. 2693110 for CHRISTMAS JEWEL for
live flowers;

Registration No. 1671949 for CHRISTMAS RICE for
rice;

Registration No. 3545054 for CHRISTMAS CRIMSON
for fresh grapes;

Registration No. 3549605 for CHRISTMAS MIX for
various tobaccos;

Registration No. 2683317 for CHRISTMAS PLUM for
wine; and

Registration No. 3297171 for CHRISTMAS ROSE for
wine.

However, these registrations fail to demonstrate that
CHRISTMAS ALE is not generic for beer. The mere
registration of other CHRISTMAS-formative marks for various
goods other than beer is insufficient to rebut the
examining attorney’s prima facie case of genericness. Cf.
In re American Online, Inc., 77 USPQ2d 1618 (TTAB 2006).
In addition, it is settled that we simply are not bound by
the decisions of examining attorneys to allow marks to
register in other applications. The Board must make its
own findings of fact, and that duty may not be delegated by
adopting the conclusions reached by an examining attorney.
In re Sunmarks, Inc., 32 USPQ2d 1470, 1472 (TTAB 1994); and
In re BankAmerica Corp., 231 USPQ 873, 876 (TTAB 1986).
Nor are we persuaded that because applicant
demonstrates that there is no definition of CHRISMAS ALE in
Ser. No. 77464553
14
an internet dictionary, the term somehow is not generic for
beer.8 The fact that a term is not found in a dictionary is
not controlling on the question of registrability if the
examining attorney can show that the term has a well
understood and recognized meaning. See In re Orleans
Wines, Ltd., 196 USPQ 516 (TTAB 1977) (BREADSPRED held
merely descriptive of jellies and jams).
The evidence of record clearly establishes that
CHRISTMAS ALE is used as a generic term for a type of beer
in informational and commercial internet websites.
Accordingly, the record is sufficient to establish that the
relevant public would find CHRISTMAS ALE a generic term
denoting applicant’s goods, namely, beer.
Acquired Distinctiveness
In finding that the designation CHRISTMAS ALE is
incapable of being a source identifier for applicant’s
goods, we have considered, of course, all of the evidence
touching on the public perception of this designation,
including the evidence of acquired distinctiveness.
Applicant has the burden to establish a prima facie case of
acquired distinctiveness. See Yamaha International Corp.

8 Id., Exhibit Y, retrieved from dictionary.reference.com.

Ser. No. 77464553
15
v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001,
1006 (Fed. Cir. 1988).
Applicant submitted the declaration under Trademark
Rule 2.20 of Daniel J. Conway, its Secretary/Treasurer,
stating the following:
(1) applicant has made use of CHRISTMAS ALE in
commerce in connection with the goods provided by applicant
“on a regular periodic basis since at least 1992”9;
(2) applicant displays the designation CHRISTMAS ALE
on labeling and packaging for its goods;
(3) to keep pace with increasing demand, production of
applicant’s beer under the designation CHRISTMAS ALE has
grown by 30% annually;
(4) applicant sells its CHRISTMAS ALE beer in bars,
restaurants, grocery, convenience and beverage stores,
specialty shops and applicant’s company store and
restaurant;
(5) applicant advertises its goods under the CHRISTMAS
ALE designation in various media outlets including radio
and television;

9 Applicant’s Section 2(f) declaration, para. 2.

Ser. No. 77464553
16
(5) articles concerning applicant’s goods under the
CHRISTMAS ALE designation have appeared in newspapers,
newsletters, and the internet;
(6) applicant also produces collateral merchandise
bearing the CHRISTMAS ALE designation, including apparel,
coasters, tap handles, posters, glasses and bottle openers;
and
(7) applicant’s goods under the CHRISTMAS ALE
designation have received numerous awards, including awards
in 1999, 2005-2007. Applicant submitted with its
declaration representative samples of its advertisements,
labels and packaging for its goods, order sheets,
invitations to public relations dinners held by applicant,
copies of articles from its company newsletter, calendars,
and awards won by applicant. Applicant further made of
record an article from wikipedia.org regarding beer;
internet articles regarding applicant and its CHRISTMAS ALE
from cleveland.com; and copies of pages from applicant’s
Facebook site regarding its CHRISTMAS ALE.
Applicant’s long use and increased production suggest
that applicant has enjoyed a substantial degree of business
success. Nonetheless, this evidence demonstrates only the
popularity of applicant’s goods, not that the relevant
customers of such products have come to view the
Ser. No. 77464553
17
designation CHRISTMAS ALE as applicant’s source-identifying
trademark. See In re Bongrain International Corp., 894
F.2d 1316, 13 USPQ2d 1727 (Fed. Cir. 1990); and In re
Recorded Books Inc., 42 USPQ2d 1275 (TTAB 1997). The issue
here is the achievement of distinctiveness, and the
evidence falls far short of establishing this. Notably,
the record contains little direct evidence that the
relevant classes of purchasers of applicant’s goods view
CHRISTMAS ALE as a distinctive source indicator for
applicant’s goods.
Accordingly, even if the designation CHRISTMAS ALE
were found to be not generic, but merely descriptive, given
the highly descriptive nature of the designation CHRISTMAS
ALE, and the evidence that applicant is not the exclusive
user of the term, we would need to see a great deal more
evidence (especially in the form of direct evidence from
customers) than what applicant has submitted in order to
find that the designation has become distinctive of
applicant’s goods. That is to say, the greater the degree
of descriptiveness, the greater the evidentiary burden on
the user to establish acquired distinctiveness. See Yamaha
Int'l. Corp. v. Hoshino Gakki Co., 6 USPQ2d 1008; and In re
Merrill Lynch, Pierce, Fenner & Smith, Inc., 4 USPQ2d 1144.
The sufficiency of the evidence offered to prove secondary
Ser. No. 77464553
18
meaning should be evaluated in light of the nature of the
designation. Highly descriptive terms, for example, are
less likely to be perceived as trademarks and more likely
to be useful to competing sellers than are less descriptive
terms. More substantial evidence of secondary meaning thus
will ordinarily be required to establish their
distinctiveness.
Summary
In coming to our determination, we have considered all
of the arguments and evidence presented by applicant and
the examining attorney, including any arguments and
evidence not specifically discussed herein.
Decision: The refusal under Section 23 of the Act on
the ground that the proposed mark is generic is affirmed;
the refusal under Section 2(e)(1) of the Act on the ground
that the mark is merely descriptive and the Section 2(f)
showing is insufficient is likewise affirmed.