Anchor Steam vs City Steam: Can a Generic Term be Captured from the Public Domain?

It is black letter law that a term which describes a class or category of goods is considered generic and cannot be protected as a trademark. A recent example of this concept can be found in the TTAB's refusal of one brewery's attempt to register the phrase CHRISTMAS ALE for beer. (See http://thettablog.blogspot.com/2012/01/ttab-affirms-genericness-refusal-of.html)  But does the law allow for the possibility that a term that is generic today may gain trademark significance in the future?  In other words, can a term that was once considered generic be captured from the public domain by a single company as a result of the company's long and exclusive use of the term and/or because of changed circumstances?  This will likely be one of the primary issues in dispute in the recent lawsuit filed by Anchor Brewing against City Steam Brewery.

The Parties:

Anchor Brewing:

Anchor Brewing is the San Francisco based brewery best known for its Anchor Steam Beer. It has a long and storied history, beginning in the California gold rush, continuing through two rebuilding efforts after fires, and then flourishing under the ownership of Fritz Maytag during a period when the craft beer industry as a whole was in a serious decline. While Anchor Brewing has been lauded for its many contributions to the American craft brewing industry, it has drawn the ire of some for its aggressive approach toward claiming exclusive rights in the phrase "steam beer".

Steam beer is (or was) a type of beer that originated in the western US in the 1800s. It is a lager, but during the brewing process, the yeast ferments at higher temperatures than those typically used for lagers. This was necessary due to the lack of refrigeration at the time and the warmer temperatures in the western US. See: http://beeradvocate.com/beer/style/132/. Different explanations have been offered for the origin of the term "steam beer", including that it was a reference to the steam that was produced while the fermenting beer cooled in open pans, or to the escaping gas when a keg of the beer was tapped (due to the high amount of pressure in the keg).  Numerous breweries were producing steam beer by the early 1900s, but after Prohibition, according to Anchor, it was the only brewery that continued to use the "steam beer" term.

In 1978, Anchor filed a trademark application for a stylized version of the "steam beer" term:

The application was initially refused on the ground that the term "steam beer" merely describes a type of beer. Anchor responded by arguing that this term may have been descriptive in the past, but that it now functions as a trademark and that it should be allowed to register based on a claim of acquired distinctiveness. Anchor also directed the Examiner's attention to a lawsuit it had recently filed against a company that was using the term "California Steam Beer". The Examiner was not persuaded by Anchor's arguments, stating that ""steam beer" denotes a type of beer and thus cannot be exclusively appropriated by one brewer".  However, the Examiner requested that Anchor provide an update on the status of the lawsuit.  Anchor then submitted another round of arguments along with a copy of the court's decision in which it was granted an injunction (though the court based its decision on the defendant's intent to cause consumer confusion by copying Anchor's trade dress, and expressly noted that it could not decide on the record before it whether Anchor possessed trademark rights in the term "steam beer").  The Examiner then removed the objection and allowed the application to proceed to publication.  The application was opposed by a company that was importing beers from the UK which were labeled as "steam brewed". However, the opposition was dismissed a few months later. (Interestingly, Anheuser-Busch had filed an extension of time to oppose the application, but did not end up filing an opposition.)

In 1988, Anchor filed another trademark application for the term "Steam Beer"-- this one without any stylization.  Anchor again encountered an objection from the Trademark Office, but this Examiner could not be persuaded to remove the objection, and Anchor abandoned the application. (Copies of the documents associated with this application are not available on the Trademark Office's website, so it is unknown what the grounds for objection were.)

Anchor was apparently not discouraged by the Trademark Office's tepid reaction to its claim of exclusive rights in the "steam beer" term, as it has continued to seek to prevent others from using this term.  According to The Oxford Companion to Beer, "letters have appeared on the doorsteps of more than a few brewers, requesting them to cease and desist the use of even oblique and playful reference to "steam beer"."  The Oxford Companion further notes that "[a]n outgrowth of this assertion of right...has been the designation of the once-ubiquitous American steam beer style by various US judging entities as "California Common Beer"." See: Garret Oliver, The Oxford Companion to Beer (Oxford University Press, 2012).

City Steam Brewery:



City Steam Brewery has been operating in Hartford, CT since 1997. [Full disclosure: I am from Connecticut and have been to City Steam Brewery a number of times.] According to its website, the "City Steam" name was inspired by the steam brewing process it employs at its brewery:
"The Hartford Steam Company supplies economical steam-heating and chilled water for cooling to many buildings in Hartford through a district heating and cooling system. Hartford Steam has engineered a way to run steam pipes into our brewery cafe. Enabling us to power our 23-barrel brewery with “city steam”. You can see the steam firsthand when we blow our antique steam-whistles. And ask our brew master about the technology ... he’ll tell you brewing with steam is a dream come true!"
See: http://www.citysteam.biz/history.html#

Steam brewing has its own place in brewing history, which is unrelated to that of "steam beer". See: One Hundred Years of Brewing: A Complete History of the Progress Made in the Art, Science and Industry of Brewing, (H.S. Rich and Co., 1903)("the introduction of steam brewing caused a complete revolution.").

The Opposition and Lawsuit:

In May 2012, City Steam filed an application to register the CITY STEAM mark. The application was approved and published for opposition in November 2012. Anchor Brewing then initiated an Opposition proceeding in March 2013. As grounds for opposition it alleged that the CITY STEAM mark is likely to cause confusion with, and dilution of, Anchor's registered mark STEAM BEER (stylized) and its common law rights in the mark ANCHOR STEAM BEER.  The opposition was suspended in September so the parties could engage in settlement discussions, but apparently the discussions were unsuccessful because Anchor filed a lawsuit in Connecticut Federal Court in January. In its complaint, Anchor sets forth essentially the same allegations as those contained in the notice of opposition. Though one factual distinction is that the common law mark cited in the complaint is ANCHOR STEAM (rather than ANCHOR STEAM BEER).

It is too early in the proceedings to  analyze the parties' arguments, but presumably one of City Steam's defenses will be that the term "steam beer" is generic and therefore Anchor's attempt to claim trademark rights in it is fatally flawed. Anchor would surely disagree, and argue that it has successfully captured the term from the public domain. In the few decisions that have touched on the issue, the courts have come out in different ways. Some courts have held that a generic term can never be transformed into a valid trademark, reasoning that even if there is evidence which demonstrates that a generic term is identified with one producer, this only proves that there exists "de facto" secondary meaning. See, e.g., Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976); and A.J. Canfield Co. v. Honickman, 808 F.2d 291 (3d Cir. 1986). However, a few other courts (and the Trademark Office) have at least recognized the possibility that a formerly generic term could be "captured" by a single company. See, e.g., Miller's Ale House v. Boynton Carolina Ale House, LLC, 702 F.3d 1312 (11th Cir.2012)("Were changed perception sufficient to warrant the elevation of a non-coined, generic term to trademark status, such change would have to be radical."); Miller Brewing Co. v. Falstaff Brewing Corp., 503 F. Supp. 896 (U.S.R.I. 1980), reversed, 655 F.2d5 (1st Cir.1981); Harley Davidson, Inc. v. Grottanelli, 164 F.3d 806 (2d Cir.1999)("The public has no more right than a manufacturer to withdraw from the language a generic term, already applicable to the relevant category of products, and accord it trademark significance, at least as long as the term retains some generic meaning.")[emphasis added]; and In re Holmstead, No. 75/183,278 (T.T.A.B., April 4, 2000). And at least one court has found that a term that was once a trademark, which then became generic, could be "recaptured" by the original owner. See: Singer Manufacturing Co. v. Briley, 207 F.2d 519 (5th Cir. 1953).


Of course, even if the court finds that Anchor possesses trademark rights in the "steam" term, City Steam will be able to assert all of the usual defenses, including that Anchor's marks are weak and that there are sufficient differences between the respective marks to prevent any consumer confusion.  City Steam will also be able to point third party use of the term "steam" in connection with beer to support its argument that Anchor's marks are weak. A review of the USPTO database uncovered the following registrations that may serve useful for this purpose:

• STEAMWORKS: Registration covering beer, ale, lager, malt liquor, stout, porter, and lambic.
• FULLSTEAM: Registration covering beer, ale and lager.
• STEAM WHISTLE & Design: Registration covering: alcoholic beverages, namely, beer.
• STEAM ENGINE LAGER ARGUABLY THE BEST AMERICAN STYLE AMBER LAGER IN THE WORLD & Design: Registration covering: beer.
• NASHVILLE STEAMER: Registration covering beer.

One final observation: it is interesting that on Anchor's website, it is using the "R" symbol next to the word "Steam" in the phrase "Anchor Steam Beer" despite the fact that neither "Steam" nor "Anchor Steam" is a registered trademark in the US. See: http://www.anchorbrewing.com/beer/anchor_steam [Though Anchor does have a CTM registration (which covers the EU) for "Anchor Steam", and it potentially has registrations in other jurisdictions as well.]