January 2, 2019

Joel Samuels Discusses SCHLAFLY Brand & Family Trademarks in IP Litigator Article

By Joel R. Samuels, Principal

On November 27, the Federal Circuit affirmed the Trademark Trial and Appeal Board’s decision to register The Saint Louis Brewery LLC’s SCHLAFLY trademark, U.S. Trademark Application Serial No. 85/482,562. In doing so, the Federal Circuit dismissed arguments brought by the late Phyllis Schlafly and her son Dr. Bruce Schlafly that the mark was “primarily a surname” and, therefore, ineligible for registration pursuant to 15 U.S.C. 1052(e)(4). Bruce S. Schlafly, Phyllis Schlafly Revocable Trust, Successor-In-Interest To Phyllis Schlafly v. Saint Louis Brewery, No. 2017-1468 (Fed. Cir. Nov. 27, 2018)(Slip. Op.)

Phyllis Schlafly was a nationally known activist and self-proclaimed “conservative icon.” Ms. Schlafly alleged that the public associates the term “Schlafly” with “[Ms.] Schlafly and the traditional values that she represented” as a result of her years of activism. Slip. Op. at 3-4. According to her, The Saint Louis Brewery’s registration of SCHLAFLY would impermissibly link her name with the sale and consumption of beer. Dr. Schlafly contended that registration of SCHLAFLY for beer would result in the term having “[a] negative connotation due to complications with . . . [d]runk driving [and] intoxication leading to injuries”—an association that a physician would like to avoid. Slip. Op. at 4.

The Board side-stepped Opposers’ surname arguments, noting that even if “Schlafly” is a surname, The Saint Louis Brewery provided sufficient evidence that the term has acquired distinctiveness under 15 U.S.C. 1052(f). Slip. Op. at 4. Specifically, the Board noted evidence of longstanding use, marketing expenditures, volume of sales, awards, and media reports surrounding SCHLALFY branded beer products. The Board succinctly concluded “[t]o be blunt, this was not a ‘close call.’” Slip. Op. at 5.

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