Descriptive Phrases Are For Everyone’s Use – Vanilla Java Porter Denied Trademark Registration

Some bad news for Atwater in its quest to trademark “Vanilla Java Porter” is good news for those hoping ingredients and styles and variants don’t end up receiving registration forcing breweries to have to challenge registrations to get them undone in order to use common terms in their labeling.  You’re correct if you think this shouldn’t be an issue because as a principle:

Descriptive words must be left free for competitive use. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978); In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001).

But in a nascent industry, applicants sometimes acquire registration of terms that are descriptive simply because the USPTO hasn’t yet gotten up to speed on the given lingua franca of a movement.  The sheer number of breweries still trying to file trademarks including words like “kolsch” without disclaiming the rights to “kolsch” and forcing the USPTO to either ask them to disclaim it, shows the problem can linger even after the office gets up to speed when attorneys or non-attorneys attempting to register don’t, in turn, understand trademark principles.

The brewery in  In re Detroit Rivertown Brewing Company, LLC, Serial No. 86640818 (July 10, 2017) [not precedential] (Opinion by Judge Susan J. Hightower) sought to register the term “Vanilla Java Porter” as having acquired enough distinctiveness in association singularly with Atwater’s beer that it deserved protection even though it was descriptive.  (The TTAB had already previously rejected the registration under the finding that the words were descriptive, so this was really the only argument left open.)

In rejecting the argument that the name had acquired some distinctiveness given Atwater’s many years of being the only “Vanilla Java Porter” on the market, the TTAB first took notice of the information supplied on the brewery’s website describing the beer:

With a beautifully crafted, copper cored, English Style Porter at its heart, Atwater’s Vanilla Java Porter tips its hat to the modern audience with the addition of vanilla and coffee that is locally brewed cold to eliminate burnt flavors. The beer, vanilla & coffee tumble together, enhancing the smooth nature of each.

Finding that this hinted at the descriptive character of the applied for mark, the opinion went on to drive the point home that the mark was completely descriptive by citing the dictionary definitions of the name’s constituent parts:

The following evidence establishes that the words constituting the matter Applicant seeks to register have descriptive significance in association with its goods:

• Vanilla: The Examining Attorney introduced dictionary definitions of “vanilla” that include: o “n. 1. Any of tropical American vines of the genus Vanilla in the orchid family, especially V. planifolia, widely cultivated for its long narrow seedpods, which yield an aromatic substance used especially as a flavoring.” o “adj. 1. a. Flavored with vanilla: vanilla pudding.”
• Java: We take judicial notice that the definition of “java” in the Merriam-Webster online dictionary is “coffee.” The Examining Attorney also introduced dictionary definitions of “java” including “Informal Brewed coffee.”
• Porter (disclaimed): The Examining Attorney submitted dictionary definitions of “porter” including: “A dark beer resembling light stout, made from malt browned or charred by drying at a high temperature.” Applicant also introduced evidence that “Porters” are the name of a beer style family.

Thus, it is plain from the record that Applicant’s goods are a porter-style beer containing vanilla and brewed coffee, that is, java.

(Vanilla and Porter are the no-brainers) the important one – Java – was determined as merely descriptive for coffee.

Relying on the descriptiveness as a determinative factor, the evidence presented of millions in sales of the beer and online documentation of the name’s use failed to overcome the severe prohibition on marking descriptive names:

For highly descriptive marks, passage of time alone may be insufficient to establish secondary meaning. See, e.g., Alcatraz Media, 107 USPQ2d at 1766 (finding 21 years of continuous use alone insufficient to establish acquired distinctiveness of highly descriptive phrase ANNAPOLIS TOURS); In re Packaging Specialists, Inc., 221 USPQ 917, 920 (TTAB 1984) (deeming use of PACKAGING SPECIALISTS, INC. for 16 years “a substantial period but not necessarily conclusive or persuasive on the Section 2(f) showing”).

We find VANILLA JAVA PORTER to be such a phrase. Because it is so highly descriptive of Applicant’s goods, ten years of use – even if it has been substantially exclusive, which we assume without deciding – is insufficient to establish prima facie that the phrase has acquired distinctiveness.

As a lesson, a descriptive name may help customers understand what the product is, but it may not make for a name  you can protect through trademark.