Introduction

On November 26, 2018, the United States Court of Appeals for the Federal Circuit (“the Federal Circuit”) made a decision in Schlafly v. The Saint Louis Brewery. In 2011, the Saint Louis Brewery (“SLB”), a beer brewery based in Missouri founded in 1989 by Thomas Schlafly, applied for registration of the mark SCHLAFLY, which has been sold in association with their beer since 1991. During the application’s publication for opposition, two opposers were in favor of blocking the mark’s registration: Phyllis Schlafly and Bruce Schlafly, Thomas Schlafly’s aunt and cousin (“the Opposers”), respectively. However, the Trademark Trial and Appeal Board (TTAB) denied their opposition and entitled the SCHLAFLY mark to registration on the Principal Register. Thereafter, the Opposers appeal TTAB’s decision on the basis that TTAB disregarded the fact that the mark is a surname and that the applicant had failed to provide survey evidence of the mark’s secondary meaning. Moreover, “the Opposers claim violation of their First Amendment, Fifth Amendment, and Due Process rights and protections.” The appeal is in the Federal Circuit’s jurisdiction.


Decision

The Opposers first challenge the mark’s acquired distinctiveness and assert that secondary meaning was not properly proven. Per the Code of Federal Regulations, the following may be considered to demonstrate secondary meaning: (1) Ownership of prior registration, (2) Five years substantially exclusive and continuous use in commerce, or (3) Other evidence, such as verified statements, depositions, etc. In this case, SLB presented evidence in all acceptable areas, and thus, secondary meaning is justified.

The Opposers further argue that the public associates SCHLAFLY with Phyllis Schlafly as she was an iconic conservative activist and insist on the “change in significance” test, “whereby a surname cannot be registered as a trademark without showing a change in significance to the public, from a surname to an identifying mark for specified goods.” However, the examiner and Board had already found that the mark had accrued secondary meaning and had been correlated with their goods of beer products.

Additionally, the Opposers allege that the Board disregarded SCHLAFLY as merely a surname. Nonetheless, per statute, a surname is eligible for trademark registration granted that it has established secondary meaning in commerce.

Regarding the Opposers’ constitutional allegations, the claim that registration of the mark impedes on their First and Fifth Amendment rights and their rights to Due Process, the Opposers fail to adequately demonstrate how their rights are violated.

Thus, the Federal Circuit affirmed TTAB’s decision and held that a surname may be considered registrable as a trademark should secondary meaning be successfully proven.

 

Full Schlafly v. The Saint Louis Brewery decision can be read here: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-1468.Opinion.11-26-2018.pdf

Disclaimer: The views and opinions expressed throughout this blog are the views and opinions of the individual author(s) and/or contributor(s) and do not necessarily reflect the views and opinions of our firm, CIONCA IP Law. P.C.

 

BLOG

  • Marin11/18/2015 6:11:11 PM

    PTAB Decisions Give Examples of Patent Eligible Subject Matter

    More
  • Marin11/18/2015 6:15:40 PM

    Covered Business Method Claims Are Not Required to Particularly Target Financial Industry

    More
  • Marin11/18/2015 7:31:35 PM

    When Is a Thesis Prior Art?

    More
  • Marin11/19/2015 2:13:05 PM

    An Innovator’s Dilemma: Design or Utility Patent?

    More
  • Marin1/28/2016 9:10:56 PM

    How Unpredictability Can Affect Obviousness Challenges

    More
  • Marin1/28/2016 9:15:16 PM

    The Patent Trial and Appeal Board Designates Two Decisions as Precedential

    More
  • M. Cionca and I. Kim2/4/2016 5:55:16 PM

    Software Inventions Are Still Patentable!

    More
  • Marin Cionca2/16/2016 6:34:53 PM

    In IPRs, patentees have to show that substitute patent claims are patentable

    More
  • I. Kim PhD2/26/2016 8:47:51 PM

    The U.S. Supreme Court Will Review Claim Construction Standards and Institution Decision Reviewability.

    More
  • Iris Kim, PhD3/25/2016 8:34:14 PM

    Challenging a Claim’s Validity with Different Standards of Claim Construction

    More
  • Marin Cionca5/17/2016 8:57:23 PM

    Patent Claims Rejection Based on Inherency

    More
  • Iris Kim, PhD6/1/2016 7:04:50 PM

    The Patent Trial and Appeal Board Designates Five More Decisions as Precedential

    More
  • Marin Cionca9/6/2016 9:26:12 PM

    Patent Case Law: New Example of Software as Patentable Subject Matter

    More
  • Marin Cionca9/15/2016 9:47:39 PM

    Patent Law Alert: Federal Circuit Opens Door for More Software Patents

    More
  • Marin Cionca2/21/2017 12:30:52 AM

    Software Patent Law Update: Federal Circuit Finds Graphical User Interface Patentable

    More
  • Marin Cionca4/25/2017 9:48:49 PM

    Monetization of Patents: How to Make Money with Patents

    More
  • CIONCA - Staff6/15/2017 5:32:14 PM

    Patent Law: Challenging the Patent Claim Definiteness Requirement

    More
  • CIONCA - Staff6/28/2017 8:26:07 PM

    Patent Law: Conditions Precedent May Expose Method Claim to Broad Interpretation During Prosecution

    More
  • CIONCA - Staff8/9/2017 5:39:58 PM

    Patent Case Study: The Novelty Of An “Invention” Is NOT Enough To Make It Patentable

    More
  • CIONCA Staff8/20/2017 3:16:11 PM

    CIONCA on Patents: Think Twice Before Suing for Patent Infringement and Fight Back when Unreasonably Sued

    More
  • staff9/15/2017 9:33:30 PM

    cionca

    More
  • staff9/27/2017 5:00:12 PM

    Claim Indefiniteness During Patent Pre-Issuance: Define Your Invention, Not Just Your Audience

    More
  • staff9/27/2017 5:12:07 PM

    CIONCA - Patent and Trademark Law Attorney

    More
  • Staff9/28/2017 7:27:22 PM

    CIONCA

    More
  • Staff11/3/2017 4:20:04 PM

    An Introduction to Provisional Patent Applications

    More
  • 11/10/2017 6:47:44 PM

    An Introduction to Design Patent Applications

    More
  • 11/17/2017 1:24:20 PM

    An Introduction to Patent Searches

    More
  • 12/1/2017 8:01:27 PM

    An Introduction to Patent Cooperation Treaty Applications

    More
  • 12/26/2017 6:04:25 PM

    CIONCA Sets Foot in San Francisco

    More
  • 1/2/2018 7:47:09 PM

    The Lanham Act: Disparagement Provision Violates the First Amendment

    More
  • CIONCA Team1/17/2018 8:12:06 PM

    A Fork in the Road: Production or Protection?

    More
  • CIONCA Team2/16/2018 4:07:48 PM

    Fashion and Intellectual Property

    More
  • 3/8/2018 1:25:46 PM

    Proceed with Caution: Consider Carefully when Narrowing Claims for Allowance

    More
  • 3/20/2018 12:50:05 PM

    Andrei Iancu - New Director of the USPTO

    More
  • CIONCA Staff4/13/2018 9:10:04 PM

    It Take Two to Tango: Knowles v. Iancu, a Standing Dispute in a PTAB Decision

    More
  • CIONCA Staff4/20/2018 5:25:25 PM

    USPTO Changes Examination Procedure Pertaining to Subject Matter Eligibility in View of Berkheimer v. HP, Inc.

    More
  • 5/4/2018 7:37:51 PM

    The Hague System for Protection of International Designs

    More
  • CIONCA IP5/17/2018 9:54:58 PM

    Marin Cionca Presents at OCIPLA May 2018 Luncheon

    More
  • 7/3/2018 7:44:33 PM

    Impax Laboratories Inc. v Lannett Holdings Inc. on Claim Invalidation

    More
  • Marin Cionca7/31/2018 6:50:05 PM

    My patent expired? Can I still sue for patent infringement?

    More
  • Staff8/16/2018 4:24:01 PM

    Correcting or Changing a Patent After Issue Through the Central Reexamination Unit

    More
  • Staff8/31/2018 7:26:58 PM

    Patent Claim Interpretation By Federal Circuit's on Facebook's Contiguous Image Layout

    More
  • CIONCA Team Member9/17/2018 4:33:20 PM

    Trademarks and Likelihood of Confusion: Federal Circuit’s Decision in In re: Detroit Athletic Co.

    More
  • Marin Cionca10/1/2018 7:42:12 PM

    Can I Register a Color as a Trademark or Service Mark?

    More
  • CIONCA Team Member10/16/2018 6:50:31 PM

    A Double-Edged Sword: Benefit of Priority or Longer Patent Term

    More
  • CIONCA Team Member11/19/2018 1:07:51 PM

    The Appeals Process

    More
  • Marin Cionca12/8/2018 8:35:06 PM

    IP Assets - Procurement, Enforcement, Monetization

    More
  • CIONCA Team Member12/18/2018 6:12:48 PM

    Schlafly v. The Saint Louis Brewery: The Registration of Merely a Surname

    More
  • CIONCA Team Member1/4/2019 4:12:21 PM

    In re: Tropp: New Matter in a Continuation Can Be Relevant to Written Description Requirement

    More
  • Marin Cionca1/23/2019 9:45:30 PM

    Patent Law Alert: All Sales of the Invention, Including Secret Sales May Invalidate a Patent

    More
  • CIONCA Team Member2/5/2019 7:22:27 PM

    TiVo Puts Tivoli on Pause: TTAB’s Decision in TiVo Brands LLC v. Tivoli, LLC

    More
  • CIONCA Team Member2/19/2019 7:12:46 PM

    Revised Guidance by USPTO on Patent Subject Matter Eligibility and Examining Computer-Implemented Functional Claims

    More
  • Marin Cionca3/1/2019 9:36:50 PM

    USPTO Director Andrei Iancu Visits Orange County!

    More
  • CIONCA Team Member3/21/2019 3:49:43 PM

    Defining Inherency: A Decision in Personal Web Technologies, LLC v. Apple, Inc.

    More
  • CIONCA Team Member4/3/2019 7:25:37 PM

    The Patent Trial and Appeal Board (PTAB) Designates Three Decisions Precedential

    More
  • Marin Cionca4/17/2019 3:48:33 PM

    What Qualifies as Proper Use in Commerce Claim in a USPTO Trademark Application?

    More
  • CIONCA Team Member5/7/2019 7:13:41 PM

    The Federal Circuit Defines a Technological Invention

    More
  • CIONCA Team Member5/20/2019 8:25:57 PM

    PTAB Designates Cases as Precedential

    More

Marin Cionca, Esq.

Registered Patent Attorney

USPTO Reg. No. 63899

VERIFY

CONTACT INFO

About CIONCA® IP Law firm: We are an Orange County, CA based boutique intellectual property firm with a focus on patent and trademark application, prosecution, opinion, licensing and IP enforcement services, offering its IP services primarily at flat fee rates. We serve local OC clients, as well as clients throughout US and international clients.

HOME               

Let’s talk!

We’d love to hear from you…we just need a little info
about your plans to take over the world!

P.S…Feel free to call us! (800)985-9198