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Stock Designs for Others Do Not Function as Trademarks, No Matter How Much More Beer You Drink

Posted by Thomas P. Howard | Nov 10, 2021 | 0 Comments

By James Juo.

A trademark must function as an identifier of the source of the applicant's goods or services. In re DePorter, 129 USPQ2d 1298, 1299 (TTAB 2019) (citing Sections 1, 2 and 45 of the Trademark Act). “The Trademark Act is not an act to register mere words, but rather to register trademarks. Before there can be registration, there must be a trademark, and unless words have been so used they cannot qualify.” In re Bose Corp., 546 F.2d 893, 192 USPQ 213, 215 (CCPA 1976).

Whether the applied for mark functions as a trademark depends on how it would be perceived by the relevant public, such as the commercial actors who are responsible for ordering the goods, as is evident from the specimens, and also members of the general public interested or associated with the goods or services. In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1862 (TTAB 2006). Consideration is given to the specimens and other evidence of record showing how the proposed mark is used. In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013) (quoting Eagle Crest, 96 USPQ2d at 1229).

Mere intent that a word, design, symbol, or slogan function as a trademark, or the fact that such designation appears on the specimen, is not enough in and of itself to make it a trademark. See In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89, 90 (CCPA 1980); In re Manco, Inc., 24 USPQ2d 1938, 1941 (TTAB 1992) (citing In re Remington Prods. Inc., 3 USPQ2d 1714, 1715 (TTAB 1987)). To be a trademark, the proposed mark must be used in a manner calculated to project to purchasers or potential purchasers a single source or origin for the goods. Bose, 192 USPQ at 215; In re Volvo Cars of N. Am. Inc., 46 USPQ2d 1455, 1459 (TTAB 1998).

In the case of In re Maugus Manufacturing, Inc., Ser. No. 88389863, — USPQ2d — (TTAB 2021), the phrase DRINK MORE BEER for “non-metal and non-paper closures for containers” was at issue.

The applicant does business under the initialism “NNBC” and sells lid closures for growlers and other containers. NNBC offers to sell closures embossed with “stock designs” or “custom designs” such as a customer's logo.

Two specimens were submitted with the statement of use for the trademark application.

The first specimen consists of a screenshot of Applicant's product webpage showing images of six product categories, with the image for “GROWLER CAPS” showing three caps with the wording “DRINK MORE BEER” embossed thereon.

The second specimen consists of a brochure, with the wording “Cost-Effective Stock Designs ‘Drink More Beer' – Stock print from $0.49 with no setup fees” (where a custom logo design would require a $3,500 set-up fee), which is reproduced below:

Drink More Beer Specimen 2
The Trademark Examining Attorney refused registration of the proposed mark under Sections 1, 2 and 45 of the Trademark Act on the ground that it failed to function as a trademark because it is presented on the specimens of use as an example of a “stock” print or image that customers could choose when ordering the identified goods, and would not be perceived as identifying and distinguishing Applicant's goods from those of others or indicating their source.

In response, Applicant submitted a substitute specimen, consisting of another image of its growler cap (in blue) with the proposed mark and design of a beer mug stamped or embossed on the cap top; but this specimen appears to be a cropped and enlarged image of the blue cap that appears (along with a pink cap and a black cap) in the product category box for “GROWLER CAPS” in the original webpage specimen.

For the webpage specimen which prominently displays Applicant's initialism, NNBC, the TTAB found that “[t]he proposed mark DRINK MORE BEER appears as a feature of the products — the three caps shown in this box, functioning as a filler when the buyer opts not to have their own mark embossed in that location”; and “[u]nlike the relatively large bold initials NNBC, the wording DRINK MORE BEER is not prominently displayed or highlighted.”

The TTAB also discounted the substitute specimen because it was “simply a cropped and enlarged image of the blue cap displayed in the ‘GROWLER CAPS' product category box in the original webpage specimen.”

Furthermore, the brochure specimen refers to the proposed DRINK MORE BEER mark as one of Applicant's “Cost-Effective Stock Designs” (in the plural), from which “[a]verage brewery owners, managers, or other ordering employees, or individuals or businesses associated with home brewing, who see the brochure would understand that they could save money by purchasing growler caps with pre-stamped standard wording, such as DRINK MORE BEER.” Moreover, “the individuals purchasing growlers from Applicant's customer, who are supplied the cap by Applicant's customer, will associate the wording on the top of the cap with Applicant's customer, not Applicant, if they associate it with anyone at all.”

The TTAB also discussed its prior decision, In re J. Hungerford Smith Co., 279 F.2d 694, 126 USPQ 372 (CCPA 1960), where “JHS” or “J. Hungerford Smith” was used to identify the source of its soft drink syrup, and the proposed “Burgundy” mark was used “only as a flavor designation.”

“[T]he evidence here (Applicant's webpage specimen) shows that Applicant uses “NNBC” (sometimes with an accompanying design) to identify and distinguish the source of its closures for containers, and DRINK MORE BEER merely identifies optional wording that may appear on one of the products, or one of the available styles for the product sold, under the NNBC mark.

Because the proposed mark DRINK MORE BEER was presented on the specimens as an example of a standard stock design that others could purchase to use in their own beer sales, the TTAB concluded that DRINK MORE BEER would not be perceived as a trademark for “non-metal and non-paper closures for containers.”

The trademark attorneys at Thomas P. Howard, LLC are experienced at prosecuting trademark applications before the USPTO, as well as enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.

About the Author

Thomas P. Howard

Thomas Howard is an experienced trial lawyer that handles intellectual property litigation nationwide, including copyright, trademark, trade secret and patent litigation, as well as complex civil litigation, including breach of contract, interference with contract, breach of fiduciary duty, conspiracy, fraud and fraudulent transfer of assets.


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