Schlafly is dead, long live the new Schlafly! Schlafly craft brewer defeats the ghost of aunt Phyllis in trademark dispute of Schlafly name.

The Saint Louis Brewery, which operates more commonly as Schlafly Beer has won an ongoing suit filed by the late aunt of the brewery founder, and conservative pundit, Phyllis Schlafly (a Schlafly by marriage, btw) seeking to block the brewery’s registration of the Schlafly name as a trademark for the brewer’s beer.

A bit of history: Founded in 1989 by Thomas Schlafly and others, the Saint Louis Brewery began selling beer with the Schlafly logo in 1991… and “has continuously sold beer under its Schlafly trademark” ever since. In 2011, the brewery applied for a word mark (trademarking just the name/words without a logo or other graphics) “SCHLAFLY” for use with various types of beer.

(A ™ geek aside – here are the products in case you want to up your trademark game from simple “beer”: [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.)

Aunt Phyllis (now deceased) and a doctor relative opposed. They lost at the Trademark Trial an Appeal Board and appealed that decision arguing that the mark was merely a surname (usually not trademarkable until it’s acquired some secondary meaning through use (think GALLO or BEAM)).

Schlafly beer countered and argued that making sixty types of beer all bearing the Schlafly mark, selling in fifteen states and D.C. at over 14,000 retail locations, selling more than 75,000,000 units of Schlafly beer (not including restaurant sales) (including 56,300,000 bottles and cans and 18,500,000 draft servings, spending $1,100,000 on advertising in radio, print, billboards, social media and at over 500 events, and garnering mentions in USA Today, the Atlantic, and the Wall Street Journal, have garnered them an acquired distinctiveness for the mark (name) SCHLAFLY which came about through continuous use on the brewer’s goods.

Arguing that “Schlafly” was still associate with Phyllis and not with beer (hoping she was still relevant) argued that she was (i’m not kidding) a “conservative icon” and that  “the surname Schlafly is primarily associated in the minds of the public with Phyllis Schlafly and the traditional value she represented.” The opposers (Phyllis and the doctor relative) also argued that the mark for beer would have “a negative connotation due to complications with … drunk drink and intoxication leading to injuries” – because intolerant people make zero sum arguments like that. Seriously, let’s be clear on that – their argument was that associating something with beer meant an link to drunk driving which leads to injuries.

In any event, an undivided panel of the Federal Circuit ruled against aunt Phyllis. Finding it was proper to view all the evidence submitted by Schlafly although it did not submit survey evidence to support its argument of acquiring distinctiveness (survey evidence on trademark disputes like this is a common tool in establishing consumer understandings for presentation as “fact” to the trademark trial and appeal board) as meeting the typical three distinct types of evidence that can be used in showing a secondary meaning (beer and not just a surname):

(1)Ownership  of prior registration(s).  In  appropriate  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 sufficiently similar to the  goods or services in the application; however,   further evidence may be required. (Schlafly had other marks featuring designs that used the name/word mark in conjunction with a logo/design.)

(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 commerce 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 distinctiveness; however, further evidence may be required. (Schlafly had been using the mark since 1991.)

(3)Other evidence.  In appropriate cases, where the applicant claims that a mark has become distinctive  in commerce of the applicant’s goods or services, the applicant may, in support  of registrability, submit with the application, or in response 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 advertising expenditures in connection therewith (identifying types of media and attaching  typical advertisements), 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). (Schlafly cited numerous awards, sales and the other evidence detailed above (press having a substantial weight in these decisions).

So, while not a full-throated commentary on the waning relevance of a conservative “icon” at least a good map for taking your time in achieving brand rights for a surname.