Schlafly v. the Saint Louis Brewery, LLC , 909 F.3d 420 ( 2018 )

United States Court of Appeals
for the Federal Circuit
______________________
BRUCE S. SCHLAFLY, PHYLLIS SCHLAFLY
REVOCABLE TRUST, SUCCESSOR-IN-INTEREST
TO PHYLLIS SCHLAFLY,
Appellants
v.
SAINT LOUIS BREWERY, LLC,
Appellee
______________________
2017-1468
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in No.
91207224, 91207225.
______________________
Decided: November 26, 2018
______________________
ANDREW SCHLAFLY, Far Hills, NJ, argued for appel-
lants.
MARK R. SOWERS, The Sowers Law Firm, LLC, St.
Louis, MO, argued for appellee.
______________________
Before NEWMAN, MAYER, and STOLL, Circuit Judges.
NEWMAN, Circuit Judge.
2 SCHLAFLY v. THE SAINT LOUIS BREWERY, LLC
The Saint Louis Brewery (“SLB”) is a craft brewery
that was founded in 1989 by Thomas Schlafly and Daniel
Kopman in St. Louis, Missouri. The brewery began
selling beer with the SCHLAFLY logo in 1991, and as-
serts that it “has continuously sold beer under its
SCHLAFLY trademark” ever since. Appellee’s Br. 2. In
2011 SLB applied for trademark registration for the word
mark “SCHLAFLY” for use with various types of beer.
The application drew opposition from two relatives of
Thomas Schlafly (“the Opposers”): Phyllis Schlafly,
Thomas’s aunt, and Bruce Schlafly. The Trademark Trial
and Appeal Board (“TTAB” or “the Board”) denied the
opposition.
The Opposers appeal, arguing that the TTAB did not
recognize that the mark was “primarily merely a sur-
name,” and that the TTAB improperly accepted that the
mark has acquired secondary meaning although the
applicant did not provide survey evidence. The Opposers
also claim violation of their First Amendment, Fifth
Amendment, and Due Process rights and protections.
We conclude that the mark “SCHLAFLY” for beer
meets the requirements for registration, and affirm the
decision of the TTAB.
BACKGROUND
A
The St. Louis Brewery
SLB states that it sells sixty types of beer, all with the
SCHLAFLY mark, in fifteen states and the District of
Columbia, through thirty wholesalers, 14,000 retail
locations, and several national restaurant chains. Appel-
lee’s Br. 4–6. From 2009 to 2014, SLB sold more than
seventy-five million units of SCHLAFLY beer, not includ-
ing sales made at its restaurants; this included 56.3
million bottles and cans and 18.5 million draft servings of
SCHLAFLY beer. Appellee’s Br. 6.
SCHLAFLY v. THE SAINT LOUIS BREWERY, LLC 3
SLB states that it has made substantial investments
in marketing the SCHLAFLY brand, and that all labels
for SCHLAFLY beer prominently feature the SCHLAFLY
mark. It claims that it has spent $1.1 million in advertis-
ing over the last five years and has featured the
SCHLAFLY mark in radio, print publications, billboards,
social media, and at over 500 events. Appellee’s Br. 7.
SCHLAFLY beer has been mentioned in print media,
including USA Today, J.A. 347–52, The Atlantic, J.A.
369–70, The Washington Post, J.A. 375–77, and The Wall
Street Journal, J.A. 372–73.
SLB already has trademark registrations for two oth-
er logo marks that include the SCHLAFLY name. The
application here seeks to register the SCHLAFLY word
mark in standard character format for “[b]eer, ale and
lager; [b]eer, ale and porter; [b]eer, ale, lager, stout and
porter; [b]eers; [b]lack beer; [b]rewed malt-based alcoholic
beverage in the nature of a beer; [and] [c]offee-flavored
beer.” J.A. 456. To support its application, SLB submit-
ted a Section 2(f) declaration, stating that the SCHLAFLY
mark had acquired distinctiveness due to substantially
exclusive and continuous use with its goods for at least
five years, immediately prior to the submission of the
application. J.A. 457.
B
The Opposers
The Opposers filed separate oppositions to the regis-
tration, and the oppositions were consolidated by the
Board and presented on the same record and briefs.
Opposer Phyllis Schlafly, now deceased, was a well-
known activist who lived in Missouri. Her brief refers to
her as a “conservative icon,” and it is not disputed that
she was a known public figure. The Opposers argue that,
due to Phyllis’s role in political and public discourse, “the
surname Schlafly is primarily associated in the minds of
4 SCHLAFLY v. THE SAINT LOUIS BREWERY, LLC
the public with Phyllis Schlafly and the traditional values
that she represented.” Appellants’ Br. 5.
Opposer Dr. Bruce Schlafly is a physician in Sapping-
ton, Missouri, and has used his name in his medical
practice since 1986. Appellants’ Br. 7–8. The Opposers
argue that, if granted, the SCHLAFLY mark will have
“[a] negative connotation due to complications with . . .
[d]runk driving [and] intoxication leading to injuries.”
J.A. 45 (Tr. 15:10–14).
C
The Board Decision
The TTAB ruled in favor of SLB and accordingly enti-
tled the SCHLAFLY mark to registration on the Principal
Register. 1 The allowance was on the basis of acquired
distinctiveness under Section 2(f), the Board found that
the mark had acquired secondary meaning. The Board
explained that it need not decide whether the mark was
primarily a surname, because the mark had acquired
distinctiveness. The Board relied on the long continuous
use of the mark, the geographic scope of use of the mark,
the variety of products with the mark in commerce, the
prominent placement of the mark on SLB’s products, the
large sales volume of SCHLAFLY beer, the marketing
types and expenditures of SLB, the total revenue for
SCHLAFLY marked products, SLB’s significant ranking
among craft brewers in the United States, the awards
won by SCHLAFLY beer, and media and other reports on
SCHLAFLY beer products. TTAB Op. at *5–8.
1 Dr. Bruce Schlafly v. Saint Louis Brewery, Oppo-
sition No. 91207224, 2016 WL 4474865 (T.T.A.B. Aug. 2,
2016) (“TTAB Op.”).
SCHLAFLY v. THE SAINT LOUIS BREWERY, LLC 5
The Board stated that it “need not address whether
Applicant’s mark actually is primarily merely a surname
because, even if it is, the Trademark Act explicitly pro-
vides that such a mark may be registered if it has ac-
quired distinctiveness.” TTAB Op. at *4 (citing 15 U.S.C.
§ 1052(f)). It further stated, “[i]nasmuch as there is no
evidence of market proximity between Applicant and the
activities of Phyllis Schlafly, there is no reason to believe
that those activities have interfered with the ability of
customers to associate Applicant’s mark with Applicant’s
goods.” Id. at *9.
The Board rejected the Opposers’ argument that SLB
was required to submit consumer surveys as evidence of
secondary meaning. Id. at *8. The Board found the
evidence presented sufficient to show that the mark had
acquired distinctiveness in commerce, stating that the
Board could not “escape the conclusion that Applicant’s
mark and goods have developed market recognition
among a segment of the relevant public.” Id. The Board
then concluded that the applicant had established “a
substantial business and has vigorously promoted its beer
under the mark SCHLAFLY in such a way as to have
created, among its customers, an association between its
mark and its goods.” Id. at *9.
After the TTAB decision, the Opposers requested re-
consideration on the ground that it was improper to
permit registration based on acquired distinctiveness
without a survey showing secondary meaning. The Board
denied reconsideration, stating that there was more than
enough evidence to support a finding of secondary mean-
ing, and, “[t]o be blunt, this was not a ‘close call.’” Opin-
ion on Request for Reconsideration, Opposition No.
91207225, at *3.
DISCUSSION
The question of acquired distinctiveness of a mark is a
question of fact, and the Boards findings are reviewed for
6 SCHLAFLY v. THE SAINT LOUIS BREWERY, LLC
support by substantial evidence. See Hoover Co. v. Royal
Appliance Mfg. Co., 238 F.3d 1357, 1360 (Fed. Cir. 2001);
In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1335 (Fed.
Cir. 2015). [W]e determine whether, on the entirety of the
record, there was substantial evidence to support the
determination,” In re Hotels.com, LP, 573 F.3d 1300, 1302
(Fed. Cir. 2007), which requires “such relevant evidence
as a reasonable mind might accept as adequate to support
a conclusion,” Consol. Edison Co. of N.Y. v. N.L.R.B, 305
U.S. 197, 229, 59 S. Ct. 206 (1938).
The question of whether the Board applied the correct
legal standard to the facts is a question of law. Princeton
Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960,
964 (Fed. Cir. 2015) (citing In re Dial–A–Mattress Operat-
ing Corp., 240 F.3d 1341, 1345 (Fed. Cir. 2001)). We
review the Board’s legal determinations de novo and
without deference. Hewlett-Packard Co. v. Packard Press,
Inc., 281 F.3d 1261, 1265 (Fed. Cir. 2002).
I
Acquired Distinctiveness of the Schlafly Mark
The Lanham Act in Section 2(f) permits registration of
marks that have acquired distinctiveness by use in com-
merce. The statute provides, “[e]xcept as expressly ex-
cluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of
this section, nothing in this chapter shall prevent the
registration of a mark used by the applicant which has
become distinctive of the applicant’s goods in commerce.”
15 U.S.C. § 1052(f). After reviewing SLB’s evidence, the
Board concluded that SLB had presented more than
sufficient evidence to show that the SCHLAFLY mark
had acquired distinctiveness.
The statute also states that “[t]he Director may accept
as prima facie evidence that the mark has become distinc-
tive, as used on or in connection with the applicant’s
goods in commerce, proof of substantially exclusive and
SCHLAFLY v. THE SAINT LOUIS BREWERY, LLC 7
continuous use thereof as a mark by the applicant in
commerce for the five years before the date on which the
claim of distinctiveness is made.” Id. Section 2.41 of Title
37 of the Code of Federal Regulations in relevant part,
provides that the following types of evidence may be
considered to show secondary meaning:
(1) Ownership of prior registration(s). In ap-
propriate cases, ownership of one or more active
prior registrations on the Principal Register or
under the Trademark Act of 1905 of the same
mark may be accepted as prima facie evidence of
distinctiveness if the goods or services are suffi-
ciently similar to the goods or services in the ap-
plication; however, further evidence may be
required.
(2) Five years substantially exclusive and
continuous use in commerce. In appropriate
cases, if a trademark or service mark is said to
have become distinctive of the applicant’s goods or
services by reason of the applicant’s substantially
exclusive and continuous use of the mark in com-
merce for the five years before the date on which
the claim of distinctiveness is made, a showing by
way of verified statements in the application may
be accepted as prima facie evidence of distinctive-
ness; however, further evidence may be required.
(3) Other evidence. In appropriate cases, where
the applicant claims that a mark has become dis-
tinctive in commerce of the applicant’s goods or
services, the applicant may, in support of regis-
trability, submit with the application, or in re-
sponse to a request for evidence or to a refusal to
register, verified statements, depositions, or other
appropriate evidence showing duration, extent,
and nature of the use in commerce and advertis-
ing expenditures in connection therewith (identi-
8 SCHLAFLY v. THE SAINT LOUIS BREWERY, LLC
fying types of media and attaching typical adver-
tisements), and verified statements, letters or
statements from the trade or public, or both, or
other appropriate evidence of distinctiveness.
37 C.F.R. § 2.41(a).
SLB presented all three types of evidence to the
Board, and the Board evaluated fifteen different forms of
evidence in reaching its conclusion. These included
evidence of the commercial success of SCHLAFLY-
branded beer through sales at restaurants and large
retailers, evidence of sales of over seventy-five million
servings of SCHLAFLY-branded beer between 2009 and
2014, and media coverage in local and national media
outlets, including USA Today, The Washington Post, and
The Wall Street Journal. Appellee’s Br. 28–31. In addi-
tion, SLB demonstrated more than twenty-five years of
continuous use of the SCHLAFLY mark. The Board also
found direct evidence, in the form of press notices which
were “direct evidence of third-party perceptions of the
mark.” Opinion on Request for Reconsideration at *3
(J.A. 3). The Board and courts have recognized that both
direct and circumstantial evidence may show secondary
meaning. See Yamaha Intern. Corp. v. Hoshino Gakki
Co., Ltd., 840 F.2d 1572, 1583, (Fed. Cir. 1988)
(“[A]bsence of consumer surveys need not preclude a
finding of acquired distinctiveness. . . . To prove distinc-
tiveness under 15 U.S.C. § 1052(f), applicants may submit
any appropriate evidence tending to show that the mark
distinguishes [applicant’s] goods.”) (internal quotation
marks omitted). 2
2 See also Herman Miller, Inc. v. Palazzetti Imports
and Exports, Inc., 270 F.3d 298, 315, (6th Cir. 2001)
(“[C]onsumer surveys, while helpful, are not a prerequi-
SCHLAFLY v. THE SAINT LOUIS BREWERY, LLC 9
The Opposers argue that SCHLAFLY is significant to
the public primarily as the surname of Phyllis Schlafly.
Citing In re Etablissements Darty et Fils, 759 F.2d 15, 17
(Fed. Cir. 1985), the Opposers urge the court to adopt a
new test that they call a “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. Appellants’ Br. 12–13. In Darty et Fils, however,
even though, the primary question was whether “Darty”
was primarily merely a surname, the Board had correctly
held that the Opposers’ “provides no support for their
contention.” Opinion on Request for Reconsideration at
*2 (J.A. 2). Here, in contrast, the examiner and the Board
found that the SCHLAFLY mark had acquired secondary
meaning for use with beer products.
The Opposers further argue that the Board refused to
determine whether the mark was “primarily merely a
surname,” pointing out that Section 1052(e)(4) prohibits
the registration of marks that are primarily merely a
surname. The Board, however, correctly stated that the
trademark statute provides that words that are primarily
merely a surname can be registered trademarks if they
have acquired secondary meaning in trademark use.
Section 1052 of Title 15 of the United States Code, in
relevant part provides: “[e]xcept as expressly excluded in
subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section,
nothing in this chapter shall prevent the registration of a
mark used by the applicant which has become distinctive
site to establishing secondary meaning.”); see 2 McCarthy
on Trademarks and Unfair Competition § 15:30 (“Survey
data is direct evidence of secondary meaning. But survey
evidence is not required. Secondary meaning can be, and
most often is, proven by circumstantial evidence.”).
10 SCHLAFLY v. THE SAINT LOUIS BREWERY, LLC
of the applicant’s goods in commerce.” 15 U.S.C. §
1052(f). 3 The statutory interpretive canon of expressio
unius est exclusio alterius, provides that “expressing one
item of [an] associated group or series excludes another
left unmentioned.” N.L.R.B. v. SW Gen., Inc., 137 S. Ct.
929, 933 (2017)(quoting Chevron U.S.A. Inc. v. Echazabal,
536 U.S. 73, 80 (2002).
No law or precedent suggests that surnames cannot
be registered as trademarks if they have acquired distinc-
tiveness in trademark use. Because the Board found that
the SCHLAFLY mark for beers had acquired secondary
meaning, Section 1052(e)(4) did not bar the registration.
II
The Constitutional Claims
The Opposers argue that the registration violates the
First and Fifth Amendments of the Constitution. As to
the First Amendment claim, the Opposers do not ade-
quately explain how registration improperly impinges on
their First Amendment rights. The Fifth Amendment
claim likewise fails, as trademark registration is not a
taking for government use. See Acceptance Ins. Cos., Inc.
v. United States, 583 F.3d 849, 854 (Fed. Cir. 2009) (ex-
plaining that the court must first “determine[] whether
the claimant has identified a cognizable Fifth Amendment
3 See Barnhart v. Peabody Coal Co., 537 U.S. 149,
168 (2003)(“[T]he canon expressio unius est exclusion
alterius does not apply to every statutory listing or group-
ing; it has force only when the items expressed are mem-
bers of an ‘associated group or series,’ justifying the
inference that items not mentioned were excluded by
deliberate choice, not inadvertence.” (quoting United
States v. Vonn, 535 U.S. 55, 65, 122 S. Ct. 1043 (2002))).
SCHLAFLY v. THE SAINT LOUIS BREWERY, LLC 11
property interest that is asserted to be the subject of the
taking”).
The Opposers also claim that their Due Process rights
were violated when the Board recognized secondary
meaning in the SCHLAFLY mark without proof of a
change in public perception. However, the trademark
opposition procedure, of which they have availed them-
selves, provides appropriate process of law.
CONCLUSION
The decision of the Trademark Trial and Appeal
Board is affirmed.
AFFIRMED