Schlafly v. the Saint Louis Brewery, LLC
909 F.3d 420 (2018)
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Rule of Law:
A mark that is primarily merely a surname may be registered as a trademark under the Lanham Act if it has acquired distinctiveness, also known as secondary meaning, through use in commerce. Proof of acquired distinctiveness does not require consumer survey evidence and can be established through circumstantial evidence such as long-term continuous use, extensive sales, and significant marketing efforts.
Facts:
- In 1989, Thomas Schlafly and Daniel Kopman founded The Saint Louis Brewery, LLC (SLB).
- Beginning in 1991, SLB began continuously selling beer using the SCHLAFLY logo and mark.
- Over a five-year period from 2009 to 2014, SLB sold more than seventy-five million units of SCHLAFLY beer across fifteen states and the District of Columbia.
- SLB invested substantially in marketing, spending $1.1 million on advertising over five years to promote the SCHLAFLY brand.
- Thomas Schlafly's aunt, Phyllis Schlafly, was a well-known conservative activist and public figure.
- Another relative, Dr. Bruce Schlafly, is a physician who has used his name in his medical practice since 1986.
- Phyllis and Bruce Schlafly argued that the surname is primarily associated with Phyllis Schlafly and that its use on beer would create a negative connotation.
Procedural Posture:
- The Saint Louis Brewery, LLC (SLB) filed an application with the U.S. Patent and Trademark Office (USPTO) to register the word mark 'SCHLAFLY' for beer.
- Bruce S. Schlafly and Phyllis Schlafly ('the Opposers') filed oppositions to the registration with the Trademark Trial and Appeal Board (TTAB).
- The TTAB consolidated the oppositions and, after reviewing the evidence, denied the oppositions, finding that the mark had acquired distinctiveness under Section 2(f) of the Lanham Act.
- The Opposers filed a request for reconsideration, which the TTAB denied.
- The Opposers, as Appellants, appealed the TTAB's decision to the United States Court of Appeals for the Federal Circuit. SLB is the Appellee.
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Issue:
Does a mark that is primarily merely a surname qualify for trademark registration by demonstrating acquired distinctiveness through substantial evidence of long-term use, sales, and marketing, even without consumer survey evidence?
Opinions:
Majority - Newman, Circuit Judge
Yes, a mark that is primarily merely a surname qualifies for registration if it has acquired distinctiveness. The Lanham Act's prohibition on registering marks that are 'primarily merely a surname' under § 2(e)(4) is explicitly subject to the exception for acquired distinctiveness under § 2(f). The court held that the Trademark Trial and Appeal Board (TTAB) correctly determined that it did not need to decide if 'SCHLAFLY' was primarily merely a surname because SLB had presented overwhelming evidence that the mark had acquired distinctiveness for beer. This evidence included over 25 years of continuous use, extensive geographic sales, large sales volumes, significant advertising expenditures, and substantial unsolicited media coverage. The court rejected the Opposers' argument that a consumer survey was required to prove secondary meaning, affirming that circumstantial evidence is sufficient. The court also dismissed the Opposers' First and Fifth Amendment and Due Process claims as meritless.
Analysis:
This decision reaffirms the established pathway for registering surnames as trademarks by proving acquired distinctiveness under Section 2(f) of the Lanham Act. It clarifies that the bar on registering surnames is not absolute and can be overcome with sufficient evidence that the public has come to associate the name with a specific source of goods or services. The ruling is significant for emphasizing that expensive consumer surveys are not a mandatory prerequisite for proving secondary meaning, providing a more accessible standard for brand owners who can instead rely on strong circumstantial evidence like sales, advertising, and long-term use. This reinforces the value of consistent and prolonged brand-building efforts in trademark law.
