In Re The Boston Beer Co

• Citation: 198 F.3d 1370,53 USPQ2d 1056
• Decision Date: 07 December 1999
• Docket Number: No. 74,74
• Parties: (Fed. Cir. 1999) IN RE THE BOSTON BEER COMPANY LIMITED PARTNERSHIP 99-1123 (Serial/464,118) DECIDED:
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 1370

198 F.3d 1370 (Fed. Cir. 1999)

IN RE THE BOSTON BEER COMPANY LIMITED PARTNERSHIP

99-1123 (Serial No. 74/464,118)

United States Court of Appeals for the Federal Circuit

DECIDED: December 7, 1999

Appealed from: Patent & Trademark Office Trademark Trial and Appeal Board

Amy J. Benjamin, Darby & Darby, P.C., of New York, New York, argued for appellant. With her on the brief were Ethan Horwitz and Karin Segall.

Thomas J. Finn, Associate Solicitor, Office of the Solicitor, of Arlington, Virginia, argued for appellee. With him on the brief were Albin F. Drost, Acting Solicitor, Nancy C. Slutter, and David R. Nicholson, Associate Solicitors. Of counsel was John M. Whealan, Acting Deputy Solicitor.

Before MAYER, Chief Judge, MICHEL and LOURIE, Circuit Judges.

MAYER, Chief Judge.

The Boston Beer Company Limited Partnership ("Boston Beer") appeals from a decision of the U.S. Patent and Trademark Office Trademark Trial and Appeal Board affirming the final rejection of trademark application Serial No. 74/464,118 seeking to register "The Best Beer In America" on the principal register. See In re Boston Beer Co. Partnership, 47 USPQ2d 1914 (TTAB June 11, 1998). Because the board did not err in refusing to register the mark described in Boston Beer's application, we affirm.

Background

On November 30, 1993, the Boston Beer Company filed an application to register "The Best Beer In America" on the principal register for "beverages, namely beer and ale," in Class 32. Boston Beer claimed use since 1985 and asserted that the words sought to be registered have acquired distinctiveness under 15 U.S.C. § 1052(f). Boston Beer claimed secondary meaning based on annual advertising expenditures in excess of ten million dollars and annual sales under the mark of approximately eighty-five million dollars. Specifically, Boston Beer spent about two million dollars on promotions and promotional items which included the phrase "The Best Beer in America."

In support of its claims, Boston Beer submitted an affidavit of its founder and co-president, James Koch, asserting that the words sought to be registered had developed secondary meaning as a source-indicator for its goods by virtue of extensive promotion and sales of beer under the mark since June 1985. It also submitted an advertisement for a competitor's product, Rolling Rock Bock beer, which included an invitation to sample "the beer that bested 'The Best Beer in America,'" as evidence that Rolling Rock regards "The Best Beer in America" as Boston Beer's trademark. The examining attorney rejected the proposed mark as merely descriptive and cited articles retrieved from the NEXIS database showing the proposed mark used by Boston Beer and others as a laudatory phrase to refer to superior beers produced by a number of different brewers. All of the beers mentioned had either won comparison competitions or had been touted as the best in America by their makers or others. Boston Beer responded by submitting articles showing its use of the proposed mark to refer to its product and in promoting its beer as a winner of the annual beer competition in Denver. Additionally, it argued that if marks such as "Best Products" and "American Airlines" can be registered even though they are also used descriptively, then the proposed mark should be similarly registered. The examining attorney issued a final refusal to register under 15 U.S.C. § 1052(e)(1), holding that Boston Beer had failed to establish that the mark had become distinctive.

Boston Beer filed a notice of appeal and attached further exhibits to its appeal brief. The application was remanded to the examiner on his request for consideration of the new evidence. Another office action was issued denying registration for lack of distinctiveness which noted that the phrase sought to be registered was selected and used after Boston Beer received awards at the Great American Beer Festival. The board then allowed Boston Beer to file a supplemental brief. Action on the appeal was suspended and the board remanded the application.

The examiner concluded that the proposed mark is the name of a genus of goods, namely "beers brewed in America that have won taste competitions or were judged best in taste tests," and included printouts from the Boston Beer Internet web site to show that it had adopted the proposed mark after it had won such competitions. He therefore issued an office action rejecting the proposed mark as generic and thus incapable of registration. Boston Beer submitted a second supplemental brief to respond to the genericness rejection. After the examiner filed his appeal brief, Boston Beer filed a third supplemental brief arguing against genericness and moved to strike portions of the examiner's brief. Boston Beer argued that the examiner was limited to responding to the issues raised in the second supplemental brief, namely genericness, and could not address descriptiveness and acquired distinctiveness. Boston Beer argued that its proposed mark was not generic because there was no single category at the Great American Beer Festival and thus no "best beer in America" award. The board rejected the motion to strike.

The board found the proposed mark to be merely descriptive because it is only laudatory and "simply a claim of superiority, i.e., trade puffery." In re Boston Beer, 47 USPQ2d at 1919. The proposed mark was found not to be generic because the examiner's characterization of the genus or class of goods as "'beers brewed in America which have won taste competitions or were judged best in taste tests' stretches the limits of our language and is inconsistent with common usage." Id. at *19, 47 USPQ2d at 1919. The board held, however, that the proposed mark inherently cannot function as a trademark because such "claims of superiority should be freely available to all competitors in any given field to refer to their products or services." Id. at *24, 47 USPQ2d at 1920-21. Finally, the board said that "[e]...