BEER 1 marks are not descriptive, says TTAB

United States of America
In Anheuser-Busch Incorporated v Holt (Case 91180119, September 16 2009), in a precedential opinion, the Trademark Trial and Appeal Board (TTAB) has dismissed an opposition against the registration of the marks BEER 1, ONE BEER BEER 1 and BEER 1 MMVII.

Kelly J Holt applied for the registration of the marks BEER 1, ONE BEER BEER 1 and BEER 1 MMVII (and design) for beer, disclaiming exclusive rights in the word 'beer' and the roman numeral 'MMVIII'
 
Anheuser-Busch Incorporated opposed the application, alleging that the marks:

  • were all merely descriptive and lacked secondary meaning; or
  • were all deceptively misdescriptive and lacked secondary meaning.
Anheuser-Busch contended that the marks “identify and/or describe a beer that has won an award or is ranked number one” and, therefore, were merely descriptive. Alternatively, Anheuser-Busch asserted that upon seeing the marks, consumers would reasonably expect that the products had achieved a number one ranking. Therefore, the marks were deceptive because Holt's beer had achieved no such ranking.
 
In support of its claims, Anheuser-Busch relied on the expert testimony of a linguistics expert who opined that upon encountering the BEER 1 mark, any native speaker of the English language would understand it to identify a ranking of beers. The expert also testified that:
 
ONE BEER BEER 1 means that there is only one brand (or style, source, etc, of beer) and [that] this beer is ranked number one. […] Stated in simple terms (and for illustrative purposes, inserting 'brand' as the category), a consumer would interpret 'one beer, beer 1' to mean [that] there is only one brand of beer and [that] that beer is ranked number one.”
 
Despite this evidence, the TTAB ruled in favour of Holt and found that the marks were neither merely descriptive nor deceptively misdescriptive. In its ruling, the TTAB held that although the opinion of an asserted expert in linguistics may have some probative value, it is not dispositive on the ultimate determination of descriptiveness. 
 
In this case, the expert’s testimony was found unpersuasive because it was not necessarily indicative of actual consumer perceptions. The TTAB also cited the absence of any empirical evidence (eg, surveys, excerpts from newspapers, magazines, trade journals and the Internet) showing that consumers perceived the marks as descriptive.
 
The TTAB cited the fact that Holt had offered dictionary definitions showing that 'one' has multiple meanings. Based on this, the TTAB held that consumers were just as likely to perceive the numeral '1' in the mark as meaning 'unique' or 'only' as they were to perceive it as a ranking.
 
In rejecting the allegation that the marks were deceptively misdescriptive, the TTAB held that the test for determining whether a term is deceptively misdescriptive as applied to the goods involves a two-part determination of whether:

  • the mark sought to be registered misdescribes the goods; and
  • anyone is likely to believe the misrepresentation.
In the TTAB’s view, none of the marks applied for immediately conveyed to the consuming public, as Anheuser-Busch contended, the idea that the beer was ranked number one. Thus, the marks make no representation, false or otherwise, regarding any beer ranking. 
 
The case is noteworthy for several reasons, including the following:
  • It shows an increasing reluctance on the part of the TTAB to rule in favour of a plaintiff unless a survey or other empirical evidence is offered in support of its claims; 
  • It illustrates that expert opinions are of little value on issues such as mere descriptiveness unless the opinions are corroborated by evidence as to the perceptions of actual consumers; and
  • It may be useful in demonstrating that words with multiple meanings are not necessarily merely descriptive, even if one of those meanings is descriptive.
Michael A Grow, Arent Fox LLC, Washington DC 

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