Recently, an application before the United States Patent and Trademark Office sought to register the mark Home Brewing Co. in standard characters on the Principal Register for “Beer; Beer, ale and lager; Beer, ale and porter; Beer, ale, lager, stout and porter; Beer, ale, lager, stout, porter, shandy; Beers; Black beer; Brewed malt-based alcoholic beverage in the nature of a beer; Coffee-flavored beer; Flavored beers; Malt beer; Pale beer; Porter” in International Class 32. See In re The Homebrewer, LLC, Serial No. 86273728 (July 19, 2016) [not precedential]. Even though the application disclaimed the words “Brewing Co.,” the Trademark Examining Attorney initially refused registration. The Attorney refused registration of the mark on the grounds that the mark is merely descriptive of the identified goods. See 15 U.S.C. § 1052(e)(1). When the refusal was finalized, Applicant appealed and requested reconsideration (the latter of which was denied, thus resuming the appeal before the Trademark Trial and Appeal Board or TTAB).
As mentioned in prior blog entries, the Trademark Act precludes the registration of a mark if it is merely descriptive of the mark’s goods or services when used in connection with the goods or services. 15 U.S.C. § 1052(e)(1). The determination of whether or not a good or service is merely descriptive is made in relation to the goods or services for which the registration is sought and not from an abstract point of view. “This requires consideration of the context in which the mark is used or intended to be used in connection with those goods or services, and the possible significance that the mark would have to the average purchaser of the goods or services in the marketplace.” See In re The Homebrewer, LLC, Page 3.
In this particular instance, the Board analyzed whether the entire mark, “Home Brewing Co.” was descriptive of the goods identified by the Applicant. Applicant argued that the dictionary definition of the word “home” means a place of residence, apartment, a permanent place of living, etc. and went on to reason that the goods would not be sold “at home” but instead at a business location. Further, Applicant argued that the use of the word “Home” in Applicant’s mark did not describe the quality or characteristic of the goods but instead was a marketing tool that effectively conveyed a sense of community, familiarity, and homeliness. Applicant also creatively argued that, while “homebrewing” and “homebrew” are well recognized terms in the industry, “the relevant consumer group encountering Applicant’s mark will immediately know that Applicant’s products are not ‘homebrewed’ because it is illegal to sell beer produced from one’s home.” Id. at 4.
Upon review, the Board highlighted excerpts from Wikipedia on “homebrewing” and “beer” that were originally introduced by the Examining Attorney, finding that the evidence from the Examining Attorney alone supported the determination that Applicant’s mark “immediately informs prospective purchasers as to a quality, feature, or characteristic of the identified goods, namely that the target market for Applicant’s identified goods are ‘home brewing’ enthusiasts seeking to replicate at home the various the types of beers offered by Applicant, who are seeking a specific taste for their beer.” Id. at 5. The Board went on to say that a term is merely descriptive if it “alludes to” the group that the Applicant is directing its goods (even if the term is used as an adjective and not a noun) and such is not mitigated by the inclusion of “Co.” Id. at 5–6.
The Board went on to examine additional evidence on the record from the Examining Attorney in regard to the Applicant’s website. Applicant had objected to the inclusion of this information, arguing that the company had since changed its business model. Despite such, the Board reasoned that it need not rely on such evidence to find that the mark is merely descriptive of the identified goods in the Applicant’s trademark registration application.
For the above reasons, the Board found “Home Brewing Co.” to be merely descriptive of “Beer; Beer, ale and lager; Beer, ale and porter; Beer, ale, lager, stout and porter; Beer, ale, lager, stout, porter, shandy; Beers; Black beer; Brewed malt-based alcoholic beverage in the nature of a beer; Coffee-flavored beer; Flavored beers; Malt beer; Pale beer; Porter” in International Class 32 and affirmed the Examining Attorney’s Refusal to register the mark.
For more information on wine or alcohol law, or trademarks, please contact Lindsey Zahn.
Image property of Home Brewing Co.
DISCLAIMER: This blog post is for general information purposes only, is not intended to constitute legal advice, and no attorney-client relationship results. Please consult your own attorney for legal advice.