Molson Breweriesv.D. G. Yuengling & Son, Inc.

Trademark Trial and Appeal Board

Oct 30, 1998

No. 91097388 (T.T.A.B. Oct. 30, 1998)

Paper No. 53
HRW
10/30/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Molson Breweries
v.
D.G. Yuengling & Son, Inc.
Opposition No. 97,388
to application Serial No. 74/453,767
filed on October 27, 1993
_____
Julie A. Petruzzelli of Spencer & Frank for Molson
Breweries.
Laura G. Miller and Gary H. Levin of Woodcock Washburn Kurtz
Mackiewicz & Norris for D.G. Yuengling & Son, Inc.
______
Before Quinn, Hairston, and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
D.G. Yuengling & Son, Inc. has filed a multi-class
application to register the mark AMERICA’S OLDEST BREWERY
for “posters, postcards, and playing cards” in Class 16,
“steins, mugs, coasters, cups, insulated coolers, plastic
cups, plastic pitchers, plastic drink bottles, and beverage
glassware” in Class 21, “clothing, namely, hats, caps, t-
shirts, sweatshirts, sweatpants, shorts, sweaters, golf
Opposition No. 97,388
2
shirts, shirts, and jackets” in Class 25, “toys, namely, toy
trucks and toy vehicles; Christmas tree ornaments” in Class
28 and “beer” in Class 32.1
Molson Breweries has filed an opposition to
registration of the mark for all classes, on the grounds
that applicant’s mark AMERICA’S OLDEST BREWERY is
deceptively misdescriptive within the meaning of Section
2(e)(1) of the Trademark Act, and deceptive within the
meaning of Section 2(a). Opposer alleges that it has been
engaged in the business of producing and selling beer for
many years; that its products are marketed in the United
States and that it has promoted these products through the
distribution of clothing and other novelty items bearing its
marks; that opposer opened its first brewery in North
America in 1786; that applicant did not open its first
brewery in North America until 1829; and thus, applicant is
not the oldest brewery in North America.

1 Ser. No., 74/453,767, claiming a first use date for the goods
of Class 16 of Dec. 31, 1957 and first use date in commerce of
Dec. 31, 1975; a first use date for the goods of Class 21 of Dec.
31, 1973 and first use date in commerce of Dec. 31, 1975; a first
use date for the goods of Class 25 of Dec. 31, 1973 and a first
use date in commerce of Dec. 31, 1975; a first use date for the
goods of Class 28 of Dec. 31, 1973 and a first use date in
commerce of Dec. 31, 1985; and a first use date for the goods of
Class 32 of Dec. 31, 1957 and a first use date in commerce of
Dec. 31, 1957.
The application was amended to one seeking registration under
Section 2(f) and a disclaimer of the term “Brewery” was entered.
An amendment was submitted during the course of the opposition to
amend the dates of first use in commerce for the goods of Classes
16, 21 and 25, which will be addressed later.
Opposition No. 97,388
3
Applicant, in its answer, has denied the salient
allegations of the notice of opposition. Applicant has
further stated that opposer’s allegation that applicant’s
brewery is not the oldest in North America is misleading, in
that applicant’s brewery is the oldest in America. (Although
not clear from the pleadings per se, a key question in this
case is whether the term “America”, when viewed by the
average purchasers of the involved goods, would be construed
to refer to the whole of North America, or to the United
States of America).
The record consists of the file of the involved
application; trial testimony taken by both parties and
accompanying exhibits; the dictionary definition and
excerpts from four printed publications introduced by
notices of reliance filed by opposer during its testimony
period;2 and certain discovery responses of opposer and a

2 Opposer filed two additional notices of reliance during its
rebuttal period. Applicant filed a motion to strike the same, on
the bases that they were improper rebuttal, and also irrelevant
to the issues in this proceeding. Opposer, in response, argued
that the documents being submitted by these notices were
necessary to refute applicant’s attempts to establish that it was
the oldest brewer in America and also to show that opposer’s
distribution of beer in the United States exceeded in quantity
and geographic area that described by applicant for its beer
during the testimony deposition of Mr. Yuengling. Decision on
this motion was deferred until final hearing.
Upon review, we find that the documents sought to be introduced
by opposer in these notices of reliance constitute improper
rebuttal. Evidence as to opposer’s promotion of its beer and the
extent of distribution in the United States supports opposer’s
case-in-chief rather than serves as rebuttal to the evidence
introduced by applicant, which was limited to applicant’s use of
its trademark. See Hoyle Knitting Mills Inc. v. T. J. Manalo
Opposition No. 97,388
4
copy of a section of U.S. Code 16 directed to the
preservation of historic sites introduced by a notice of
reliance filed by applicant.3 Both parties have filed
briefs, but an oral hearing was not requested.
By documentary evidence opposer has shown that it is
recognized as the oldest brewery in North America, having
opened its first brewery in Canada in 1786. Jeffery Kellar,
the Director of Marketing at Molson Breweries U.S.A., has
testified with respect to consumer perception in the United
States of opposer as the oldest brewer in North America and
of consumer association of opposer with the phrases “Since
1786” and “North America’s Oldest Brewery”, both of which
are emphasized in opposer’s promotion and packaging of its
goods. Mr. Kellar has introduced copies of radio and
television commercials aired by opposer in the 1980’s and
1990’s in which opposer stresses its start “back in 1786”
and its standing as “North America’s oldest brewery.”
Applicant, by means of the documentary evidence of
record, has shown that it is recognized as the oldest

Inc., 12 USPQ2d 1720 (TTAB 1989). Furthermore, evidence directed
to the extent of opposer’s distribution in the United States is
irrelevant to the issue at hand. Thus, applicant’s motion to
strike is granted. Furthermore, even if consideration were given
to this additional evidence, it would have no effect on our
decision in this case.
3 In accordance with the Board’s order of June 27, 1997,
granting opposer’s motion to strike items 1-3 and 6 from
applicant’s notice of reliance, only the documents represented by
items 1 and 2, which were separately introduced during the
testimony of Mr. Yuengling, have been considered.
Opposition No. 97,388
5
brewery in the United States, having been founded in 1829.
Richard L. Yuengling, the president of applicant, has
testified to the recognition of this status by entry of the
brewery on the Pennsylvania Inventory of Historic Places and
the National Register of Historic Places and its promotion
in local tourism. Mr. Yuengling has stated that applicant
started using the mark AMERICA’S OLDEST BREWERY in the late
1950’s, and applicant has introduced exhibits demonstrating
applicant's use of the mark not only in the labeling and
promotion of its beer, but also on various secondary items
sold in the gift shop on its premises.
The issue in this opposition is whether applicant’s
mark AMERICA’S OLDEST BREWERY is deceptively misdescriptive
under Section 2(e)(1) or deceptive under Section 2(a), in
view of the acknowledged fact that opposer is recognized as
the oldest brewery in North America.
The test to be applied in determining whether or not a
term is deceptively misdescriptive under Section 2(e)(1) is
(1) whether the term misdescribes a characteristic,
quality, function, composition or use of the
goods, and
(2) if so, whether prospective purchasers are likely
to believe the misdescription actually describes
the goods.
If the issue is whether or not the term is deceptive under
Section 2(a), a third part is added to the test, namely
(3) if so, whether the misdescription is likely to
affect the decision of purchasers to buy the
goods.
Opposition No. 97,388
6
See In re Budge Manufacturing Co. Inc., 857 F.2d 773, 8
USPQ2d 1259 (Fed. Cir. 1988); In re Berman Bros. Harlem
Furniture Inc., 26 USPQ2d 1514 (TTAB 1993).
Opposer takes the position that the term “America”
encompasses the whole of North America (including the United
States), and thus opposer, not applicant, is the oldest
brewery in America. In support of its position, opposer has
made of record the definition found in Webster’s New
Geographical Dictionary (1988) for “America” as
...either continent of the Western Hemisphere
(North America or South America); often, specifically,
the United States of America.4
Opposer argues that applicant’s mark AMERICA’S OLDEST
BREWERY is deceptively misdescriptive within the meaning of
Section 2(e)(1), since the statement is not true. It
further argues that this misdescription is likely to affect
the purchaser’s decision to purchase the goods, so as to be
deceptive within the meaning of Section 2(a). To support
this latter argument, opposer points to the testimony of Mr.
Yuengling in which he describes the identification of

4 Opposer has attached to its brief a copy of the Board’s
unpublished decision in In re Surgidev Corp, S.N. 74/369,231
(TTAB Aug. 17, 1995), as evidence of the Board’s prior reliance
upon this definition. The Board has clearly stated, however,
that even if a copy of the decision is submitted, we will
disregard the citation of any unpublished decision as precedent.
General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270 (TTAB
1992). Even if we were to consider this decision, it would not
be in opposer’s favor, since we stated therein that “there is no
doubt that the expression ‘OF AMERICA’ particularly signifies
origin in the United States of America.” (page 5 of opinion).
Opposition No. 97,388
7
applicant as AMERICA’S OLDEST BREWERY as a “marketing tool”
and an “advantage in selling [its]beer.”5
Applicant, on the other hand, argues that opposer has
failed to meet its burden to show that the term “America” as
used in applicant’s mark means other than the “United States
of America” to the relevant consuming public. Applicant
points out that opposer has presented no evidence of U.S.
comsumers’ perceptions of the term “America” and that the
dictionary definition upon which opposer relies even refers
to “America” as “specifically, the United States of
America.” Applicant further argues that opposer itself
recognizes that Canada is distinct from America (i.e., the
United States of America) by its strong emphasis on the
Canadian origin of its beer in its advertising and
packaging.
As for being deceptive under Section 2(a), applicant
once again argues that opposer has failed to meet its burden
of proof, namely, to produce evidence that consumers would
purchase applicant’s goods on the basis of their belief that
applicant was the oldest brewery in America.

5 Opposer’s additional arguments that use by applicant of its
mark is likely to deceive consumers as to the sponsorship of
applicant’s goods by opposer are directed to the type of
deception that is the basis for a Section 2(d) claim (which has
not been pleaded), not a Section 2(a) claim, and thus have been
given no consideration. See Miller Brewing Co. v. Anheuser-Busch
Inc., 27 USPQ2d 1711 (TTAB 1993). See also Board’s order of June
18, 1996, fn.3, with respect to opposer’s failure to properly
plead a claim of likelihood of confusion.
Opposition No. 97,388
8
Looking to the first step of the analysis to be applied
under Section 2(e)(1), we find that opposer has failed to
establish that the mark AMERICA’S OLDEST BREWERY, and most
particularly, the term “America”, misdescribes applicant’s
goods in any manner. There is no reason to adopt that
portion of the dictionary definition being relied upon by
opposer which describes “America” as North or South America,
when the definition at the same time notes its specific use
in reference to the United States of America (“often,
specifically, the United States of America”). Our view is
buttressed by the Board’s decision in In re BankAmerica
Corp., 231 USPQ 873 (TTAB 1986), wherein the Board found the
primary significance of the term “America” to be the United
States of America.
Even more importantly, opposer has failed to produce
any evidence that the relevant purchasing public in the
United States would equate the term “America” with North
America, rather than the United States of America. Opposer
consistently uses the term “North America”, not “America”,
in its advertising and labeling, and points out that its
beer is Canadian in origin and “imported from North
America’s oldest brewery.” [Emphasis added]. Such
advertising could only emphasize in the minds of consumers
the distinction between opposer as the “Oldest Brewery in
North America” and of applicant as the “Oldest Brewery in
Opposition No. 97,388
9
America.” While opposer may argue that “at least some”
people would be likely to equate the term “America” with
“North America” and thus be deceived by applicant’s use of
the mark AMERICA’S OLDEST BREWERY, we find no basis for
concluding that there would be a significant number of
consumers who would not recognize the difference between the
claims of the two breweries. Thus, applicant’s goods, being
from the oldest brewery in the United States of America, are
not misdescribed when the term “America” is used in
connection with them.
Accordingly, opposer has failed to meet the first prong
of the test with respect to applicant’s mark being either
deceptively misdescriptive under Section 2(e)(1) or
deceptive under Section 2(a). While this is all that is
necessary to dismiss the opposition on both grounds, in view
of possible appeal, we will also consider the remaining
prongs of the test.
If applicant’s use of the term “America” were
misdescriptive (although we have held this not to be the
case), we find that the purchasers would be likely to
believe this misdescription. But this would have no effect
on applicant’s right to registration, since the application
has been amended to one seeking registration under Section
2(f). Opposer has failed to challenge the claim of acquired
distinctiveness, which would permit registration even if the
Opposition No. 97,388
10
mark were found to be deceptively misdescriptive under
Section 2(e)(1).
On the other hand, if applicant’s use of the term
“America” were deceptively misdecriptive, we believe that
this misdescription would be likely to affect the decision
of purchasers to buy applicant’s goods. Mr. Yuengling’s own
testimony is sufficient to establish that appplicant’s claim
to being AMERICA’S OLDEST BREWERY serves as a strong drawing
card to attract visitors and to result in the sale of its
goods. Thus, the third prong of the test would be satisfied
and the mark would be deceptive under Section 2(a).
Moreover, the provisions of Section 2(f) would not be
available to applicant to overcome this bar to registration.
In summary, applicant’s mark AMERICA’S OLDEST BREWERY
is neither deceptively misdescriptive under Section 2(e)(1)
nor deceptive under Section 2(a).
Decision: The opposition is dismissed.6
T. J. Quinn
P. T. Hairston
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board

6 Applicant’s motion to amend its dates of use is granted and the
registration will issue with the amended dates.