Anheuser-Busch Inc. v. Stroh Brewery Co.

• Decision Date: 05 December 1984
• Docket Number: No. 84-1714,ANHEUSER-BUSCH,84-1714
• Citation: 750 F.2d 631
• Parties: INCORPORATED, Appellee, v. The STROH BREWERY COMPANY, Appellant.
• Court: U.S. Court of Appeals — Eighth Circuit

Page 631

750 F.2d 631

224 U.S.P.Q. 657

ANHEUSER-BUSCH INCORPORATED, Appellee, v. The STROH BREWERY COMPANY, Appellant.

No. 84-1714.

United States Court of Appeals Eighth Circuit.

Submitted Sept. 12, 1984.

Decided Dec. 5, 1984.

James J. Foster, for appellant.

W. Thomas Hofstetter, for appellee.

Before BRIGHT, JOHN R. GIBSON and FAGG, Circuit Judges.

JOHN R. GIBSON, Circuit Judge.

Whether "LA" is a protectible trademark for a low alcohol beer marketed by Anheuser-Busch Incorporated is the issue before us. Following Anheuser-Busch's introduction of its product, the Stroh Brewery Company introduced "Schaefer LA," also a low alcohol beer. An action to enjoin Stroh's use of LA followed. The district court, 587 F.Supp. 330, ¹ finding that the term LA was suggestive in that it required some imagination to connect it with the product and, accordingly, was a protectible trademark, issued a permanent injunction. On appeal, Stroh argues that as a matter of law LA is generic or descriptive in nature, since the term is comprised of the initials of the phrase "low alcohol." Stroh also argues that should the issue be determined to be a factual one, the findings of the district court are clearly erroneous. We conclude that whether LA is suggestive is a factual issue and that the findings of the district court are not clearly erroneous, and we affirm the judgment of the district court.

For several years Anheuser-Busch had been interested in producing a low alcohol beer both because of its need to develop new markets for growth and because of growing public concern over the health aspects of beer consumption and the problem of drunken driving. Other breweries had similar interests and, in fact, two smaller companies, Hudepohl Brewery and Christian Schmidt Brewing Company, had marketed reduced alcohol beers under the brand names of Pace and Break. Anheuser-Busch accelerated its plans in the fall of 1983, obtained approval from the Bureau of Alcohol, Tobacco and Firearms (BATF) for an early version of its LA label on November 21, 1983, and began using the LA mark on beer shipped in interstate commerce on December 5, 1983. On January 20, 1984, Anheuser-Busch issued a press release informing the industry and public of its plans to sell LA beer. On the same date, application was made for registration of the mark LA. In March, Anheuser-Busch commenced marketing the beer. At the time of the commencement of the trial on May 7, 1984, it was marketing the product in ten test markets preparatory to distribution on a national basis.

On March 5, 1984, Stroh issued a press release announcing its plans to introduce a low alcohol beer. On March 7, 1984, Stroh obtained BATF approval of two separate beer labels using LA, one with the product name Schaefer and the other with the product name Old Milwaukee. On March 26, 1984, after receiving objections from Anheuser-Busch, Stroh issued a press release stating that it planned to market Schaefer LA beer. This action, brought on April 18, 1984, against Stroh for trademark infringement, trademark dilution and unfair competition under 15 U.S.C. Sec. 1125(a) (1982), the Lanham Act, and for violation of the Missouri antidilution statute, Mo.Rev.Stat. Sec. 417.061 (1978), followed.

During the trial, marketing executives of both parties testified, as did Yoram (Jerry) Wind, a Professor of Marketing and Management at the Wharton School, University of Pennsylvania, who testified as to the results of marketing surveys he had conducted and Herbert E. Krugman, a consultant in public opinion and consumer research. There was testimony concerning low alcohol beers in Australia and the predominance in that market of Tooth LA beer. There was detailed evidence of Anheuser-Busch's studies concerning the new product, particularly those dealing with the selection of a name which stressed the desire of Anheuser-Busch to select a brand that would allow it to preempt the new market. Stroh representatives testified that they believed LA would become the generic name for this segment of the beer market. There were frequent references to the use of the words "Light" and "Lite" in the light beer market, the predominance in that market that the Miller Brewing Company had achieved, and Anheuser-Busch's admitted desire to emulate Miller with respect to LA in the low alcohol market. Insofar as other evidence must be considered in resolving the issues in the case, we will discuss it in detail at that time.

In its opinion, the district court began its analysis by recognizing the following principles:

A term for which trademark protection is claimed will fall in one of four categories: (1) generic, (2) descriptive, (3) suggestive, or (4) arbitrary or fanciful. These categories, like colors in a spectrum, tend to blur at the edges and merge together, making it difficult to apply the appropriate label. * * * The correct categorization of a given term is * * * a factual issue.

WSM, Inc. v. Hilton, 724 F.2d 1320, 1325-26 (8th Cir.1984) (citations omitted). After careful analysis, the court concluded that LA was not generic, descriptive, arbitrary or fanciful ² but was suggestive and therefore was protectible. ³ The district court considered consumer perception of the term LA as demonstrated by public opinion surveys in reaching its conclusion. The district court then considered whether there had been infringement under the Lanham Act and Missouri's antidilution statute. It found that Anheuser-Busch was the first to appropriate and utilize the LA mark and that Stroh had appropriated LA in order to dilute its distinctiveness in the marketplace and create confusion between the products.

On appeal Stroh argues that the district court erred as a matter of law since the initials of a generic or descriptive term such as low alcohol cannot assume trademark status, since the court found itself that LA is a "category descriptor," since consumer perception was employed as the principal test for determining whether LA was generic or descriptive, and since Anheuser-Busch had the burden of proof to establish that it was entitled to a trademark for LA. Stroh makes other arguments, including ones based on a report to Anheuser-Busch from a consulting firm stating that LA would not be protectible as a trademark, and on a failure to ask in the opinion survey the question, "What, if anything, do the initials LA mean to you in relation to this product?" It also argues that the injunction is overly broad in that it extends to "any other acts which are likely to cause confusion, mistake or deception with plaintiff." The arguments made are sufficiently general to cause us to conclude that Stroh is also suggesting that the findings of the district court are clearly erroneous.

I.

The threshold issue in this case is whether the district court's determination that LA is suggestive and therefore protectible is a factual finding to which the clearly erroneous standard must be applied or is erroneous as a matter of law. As we have held previously, the categorization of a term for which trademark protection is claimed is considered to be a factual issue, WSM, Inc., 724 F.2d at 1325-26, and thus is to be reviewed under the clearly erroneous standard of Fed.R.Civ.P. 52(a). Stroh, admitting as much, argues on appeal that nonetheless the finding of fact was predicated on an error of law not subject to the clearly erroneous standard.

Stroh first argues that the initials of a generic term such as "low alcohol" cannot assume trademark status, citing National Conference of Bar Examiners v. Multistate Legal Studies, 692 F.2d 478, 488 (7th Cir.1982) ("Under settled trademark law if the components of a trade name are common descriptive terms, a combination of such terms retains that quality. * * * Abbreviations for generic or common descriptive phrases must be treated similarly."), cert. denied, --- U.S. ----, 104 S.Ct. 69, 78 L.Ed.2d 83 (1983). In National Conference, however, the plaintiffs sought to protect both the phrase "Multistate Bar Examination" and the initials "MBE." As the district court noted in its discussion of the case:

[National Conference ] is distinguishable from the facts here because plaintiff is not seeking to protect an accompanying phrase, such as low alcohol, light alcohol, less alcohol, light alternative, nor any of a number of word combinations for which the mark LA could stand. And, of course, because of the BATF regulations at the time of its initial label-making decision, plaintiff has not designated on the label what LA does stand for. ⁴

Rather, the question in the instant case is whether, when a party seeks to protect initials alone which are also the initials of a generic or descriptive phrase, the initials are to be equated with that phrase. The key issue, as the cases demonstrate, is the nature of the relationship or tie between the initials and the generic or descriptive phrase and the relationship or tie between the initials and the product. As the district court properly held, if some operation of the imagination is required to connect the initials with the product, the initials cannot be equated with the generic phrase but are suggestive in nature, thereby rendering them protectible.

In Modern Optics v. Univis Lens Co., 234 F.2d 504, 43 C.C.P.A. 970, (1956), the court concluded that "CV" was a valid trademark even though it was composed of the initials of the words "continuous vision" which were alleged to be descriptive of trifocal lenses. As did the district court, we find the reasoning of Modern Optics persuasive:

[A]lthough we have considered appellant's contentions as to the descriptiveness of the words "continuous vision," it is not necessary to determine whether those words are merely descriptive of trifocal lenses, since appellee is not seeking registration of those words, but a mark whose dominant feature is the letters "CV." The letters "CV" are, of course, the initial letters of the words "continuous...