Thursday, February 6, 2014

SCHLAFLY Trademark Dispute: A Family Affair


 
It's rare to see a trademark opposition proceeding where the opposing party is a family member of the applicant. And it is unlikely that there had ever been one where the opposer was the applicant's 89 year-old aunt. Until recently, that is, when The Saint Louis Brewery's application for the mark SCHLAFLY was opposed by Phyllis Schlafly, the aunt of the brewery's co-founder, Tom Schlafly.  For good measure, two of Phyllis Schlafly's sons opposed the application as well.


The Parties:

Tom Schlafly is the co-founder and Chairman of The Saint Louis Brewery. He is also an attorney and holds various civic leadership positions in St. Louis, including serving on the Board of Directors of the St. Louis Public Library. But perhaps his most interesting position is the chief lyricist of a troupe of singing lawyers called The Courthouse Steps. (See: http://www.thompsoncoburn.com/people/find-a-professional/thomas-schlafly.aspx)

Phyllis Schlafly is a well-known conservative activist, author, and founder of the Eagle Forum. She is known for, among other things, her best-selling book published in 1964, A Choice Not an Echo, and her campaign against the Equal Rights Amendment in the 70s. (See: http://en.wikipedia.org/wiki/Phyllis_Schlafly)

Phyllis' son, Bruce Schlafly, is an orthopedic surgeon in St. Louis. (See: http://health.usnews.com/doctors/bruce-schlafly-165519)

Phyllis' son, Andrew Schlafly, is an attorney and conservative activist. He graduated from Harvard Law School, and was an associate at Wachtell, Lipton, Rosen & Katz before founding Conservapedia. (See: http://en.wikipedia.org/wiki/Andrew_Schlafly)


The Application:

The St. Louis Brewery has been distributing beer under the SCHLAFLY name since 1991. [The Brewery's website helpfully instructs that "laf" in "Schlafly" is pronounced like "laugh" and "ly" is pronounced like "lee".]
 
The Brewery already owns two trademark registrations for design marks featuring the SCHLAFLY term along with other words. But it did not seek registration for the SCHLAFLY mark on its own until 2011. This application was approved by the Trademark Office and published in July 2012. In September 2012, Notices of Opposition were filed by Phyllis Schlafly, Bruce Schlafly, and Andrew Schlafly. [Andrew Schlafly's opposition was subsequently dismissed after he failed to respond to the Brewery's motion to dismiss.]

The Oppositions:

The Notices of Opposition all list as the sole ground for opposition that the SCHLAFLY mark is primarily merely a surname.  U.S. trademark law prohibits the registration of any mark that is "primarily merely a surname" unless the mark has acquired distinctiveness as a source indicator (e.g., McDonald's for fast food, Ford for cars, and Miller for beer). The Trademark Office uses a 4-part test to determine whether a term is "primarily merely a surname":
  • (1) whether the surname is rare; 
  • (2) whether the term is the surname of anyone connected with the applicant; 
  • (3) whether the term has any recognized meaning other than as a surname; and 
  • (4) whether it has the “look and feel” of a surname.
In most cases, the rareness of the name plays a dominant role in the Trademark Office's decision. The Trademark Office looks at evidence such as census records and telephone book listings to gauge the rareness of a name; however, there is no bright line rule as to how many results are sufficient to take the name outside of the "rare" (or "extremely rare") category. (See: http://thettablog.blogspot.com/2012/12/two-surname-refusals-for-your-perusal.html)

The parties have yet to submit evidence in this case, so it is unknown where the "Schlafly" name may fall in terms of rareness. However, even if the "Schlafly" name was found to be primarily merely a surname, the Brewery would still be able to register the mark if it could show that the term has acquired distinctiveness as a result of its longstanding use. Perhaps anticipating the "surname" objection, the Brewery included a claim of acquired distinctiveness when it filed the application.  Because the Examiner accepted the claim of acquired distinctiveness, the Brewery would enjoy a presumption that this determination was correct during the opposition proceeding.  As a result, the Opposers would have the burden of presenting a prima facie case challenging the sufficiency of the Brewery’s proof of acquired distinctiveness.  If they were successful in doing so, the Brewery would then have an opportunity to present additional evidence and argument to rebut or overcome the Opposers' showing. (See: http://thettablog.blogspot.com/2012/05/finding-cokes-zero-has-secondary.html)


Interestingly, the Notices of Opposition also raised other arguments seemingly unrelated to the surname issue. For example, Phyliss Schlafly's Notice of Opposition included the following allegations:

-The Schlafly surname "has the connotation of conservative values, which to millions of Americans (such as Baptists and Mormons) means abstinence from alcohol."

-The "consumption of alcohol is considered immoral by millions of Americans, including many of the subscribers to my...monthly newsletter and consumers of my radio shows, books, and other products, including Baptists and Mormons."

-Registration of the SCHLAFLY mark "would falsely suggest a connection between me and alcoholic beverages", and "could be harmful to my conservative values."

(See: http://ttabvue.uspto.gov/ttabvue/v?pno=91207225&pty=OPP&eno=1)


Therefore, it appears that the Opposers may be attempting to introduce other potential grounds for opposition into the proceeding, including that the mark:

  • falsely suggests a connection with a person, institution, belief or national symbol;
  • disparages a person, institution, belief, or national symbol, or bring them into contempt, or disrepute; and
  • consists of or comprises a name identifying a particular living individual without her written consent.

However, they would likely have an uphill battle to prevail on any of these claims. For example, in order to succeed on a "false connection" claim, they would need to show, among other things, that the mark points "uniquely and unmistakably" to the opposer (e.g. "BO BALL" as a reference to Bo Jackson, and BASEBALLS EVIL EMPIRE as a reference to the New York Yankees).

Similarly, in order to prevail on a "name of a living individual" claim, the opposer would need to show, among other things, that she will be associated with the mark as used on the goods, either because she is so well known that the public would reasonably assume the connection (e.g. OBAMA PAJAMA, and PRINCE CHARLES), or because she is publicly connected with the business in which the mark is used.

Finally, to prevail on a "disparagement" claim, the opposer would need to show:
(1) that the meaning of the mark, as used in connection with the goods described in the application, refers to an identifiable person, institution, belief or national symbol; and
(2) that this meaning is disparaging to a substantial composite of the referenced group. \
Examples of marks that have been found to be disparaging include: HEEB for clothing and entertainment services (See: http://thettablog.blogspot.com/2008/12/precedential-no-52-ttab-affirms-2a.html); and KHORAN for wine (See: http://thettablog.blogspot.com/2010/03/precedential-no-9-divided-ttab-panel.html).


It will be interesting to see how this one turns out. Perhaps the parties will be able to hash it out at the next family gathering.

[On a personal note, I can confirm that the Schlafly Dry Hopped APA is really good--I picked up a 6-pack a few months ago (without having any idea about this trademark dispute). I'm looking forward to trying some of their other beers, especially the Tasmanian IPA.]



2 comments:

  1. The thorny, 'high-minded' obstinance of folks like Phyllis serve as a fine example of those attributed in a quote from Clarence Darrow: "I have never killed a man, but I have read many obituaries with great pleasure." Clarence Darrow | I'd suggest that it is Tom that has 'grounds' as it is HER politics which now 'taints' (at least in my mind) HIS #beer!

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  2. yeah, I didn't know they were related until this article

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