Anheuser-Busch, Inc.v.Coors Brewing Co.

Trademark Trial and Appeal Board

Nov 9, 1999

No. 91106293 (T.T.A.B. Nov. 9, 1999)

UNITED STATES DEPARTMENT OF COMMERCE
Patent and Trademark Office
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 11/9/99

LKM/GCP

Opposition No. 106,293

Anheuser-Busch,
Incorporated

v.

Coors Brewing Company

Before Cissel, Quinn, and McLeod, Administrative Trademark
Judges.

By the Board:

Applicant, Coors Brewing Company, filed an application
to register the mark BARMEN for beer.1 An opposition has
been filed by Anheuser-Busch, Incorporated on the grounds
that the mark BARMEN, as applied to the identified goods, is
either a generic term for beer, incapable of distinguishing
applicant’s beer from those of its competitors, or is a
merely descriptive term without acquired distinctiveness.
Opposer also alleges, among other things, that it is the
nation’s leading brewer and that registration of BARMEN by

1 Application Serial No. 75/066,013, filed March 1, 1996,
alleging a bona fide intent to use the mark in commerce.
Opposition No. 106,293
2
applicant would be inconsistent with opposer’s right to use
the term descriptively.
This case now comes up for consideration of the
parties’ cross-motions for summary judgment. The motions
have been fully briefed.
By its motion, applicant seeks judgment as a matter of
law as to opposer’s allegations of descriptiveness.
Applicant argues that no genuine issue of material fact
exists as to the alleged descriptiveness of its proposed
mark and that its mark BARMEN is not merely descriptive of
beer. Rather, applicant maintains that its mark is
suggestive, if not arbitrary, when used in connection with
beer. In particular, applicant contends that since
potential consumers must use multistage reasoning or
imagination, thought or perception to determine attributes
of applicant’s beer sold under the mark BARMEN, the mark is
suggestive and not descriptive.
Applicant also asserts that the ordinary significance
and meaning of applicant’s mark, as perceived by the
consuming public, is an individual who tends bar or serves
drinks. As such, applicant argues that its mark does not
refer to or describe any attribute of beer and, therefore,
its proposed mark is not descriptive of its goods. Finally,
applicant argues that where others in a particular industry
do not use a term as a descriptive reference, such absence
Opposition No. 106,293
3
of descriptive usage is evidence that the term is neither a
natural nor obvious way to describe the product. Hence,
applicant concludes that the absence of any descriptive
reference of the term “barmen” in relation to beer indicates
that applicant’s mark is suggestive, if not arbitrary, when
used in connection with beer.
In support of its motion, applicant has submitted the
declaration of Marguerite A. West, who is a paralegal with
the law firm Sheridan Ross, P.C. which is representing
applicant in this Board proceeding. Ms. West, through her
declaration, provides two dictionary definitions of the
singular form of the term BARMEN. The first definition
entry defines “barman” as “a man who bartends; bartender.”
Random House Dictionary Definition of the English Language
Unabridges, Second Edition, 169. The second entry defines
“barman” as “a bartender.” Webster’s Ninth New Collegiate
Dictionary, 131. Ms. West also provides 318 excerpted
articles generated from a Lexis/Nexis database search. The
search was conducted in the “news” library and “allnws” file
for the term “barmen” in articles published on or after
January 1, 1996. None of the 318 articles uses the term
“barmen” to describe beer.
Opposer contends, on the other hand, that since the
term “barmen” describes a significant feature of applicant’s
beer, namely, by whom it is served, it should be refused
Opposition No. 106,293
4
registration. According to opposer, the Patent and
Trademark Office routinely requires applicants to disclaim
terms such as “chef,” “baker,” “brewer,” among others,
because these terms identify persons who create, use or
serve the identified products. Opposer concludes that
because applicant’s mark identifies the seller or server of
applicant’s goods, it is merely descriptive under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1).
In support of its motion, opposer has submitted the
declaration of Douglas N. Masters, who is an attorney with
the law firm of Pattishall, McAuliffe, Newbury, Hilliard &
Geraldson, which is representing opposer in the instant
proceeding. Mr. Masters, through his declaration, provides
copies of third-party registrations (retrieved from a
computer database) which contain disclaimers of such terms
as “chef,” “baker,” “brewer,” “tailor,” “carpenter,”
“plumber,” “mason,” and “electrician.” Mr. Masters also
provides a dictionary definition of the term “bartender” as
“a person who mixes and serves drinks at a bar.” The Random
House College Dictionary Revised Edition 111 (1988).
In reply, applicant argues that opposer has not
proffered any evidence which demonstrates that the term
“barmen” is descriptive of beer. Moreover, applicant
contests opposer’s argument that a term identifying a person
who serves the identified product is unregistrable on the
Opposition No. 106,293
5
ground of descriptiveness. Applicant maintains that opposer
has not offered any statutory authority or case law to
support this proposed general rule.
Applicant also asserts that opposer’s third-party
registrations do not support opposer’s position.
Specifically, applicant argues that opposer’s selective
examples are incomplete because, when viewing the federal
trademark register as a whole, “chef,” “baker,” “brewer,”
“tailor,” and the like are not disclaimed in the majority of
registrations which contain these terms. Applicant
concludes that opposer’s selective examples actually refute,
rather than support, opposer’s assertion that a term which
identifies a person who creates or serves a product is
merely descriptive of that product.
In support of its reply, applicant has submitted the
declaration of Sabrina C. Stavish, who is an attorney with
applicant’s law firm. Ms. Stavish, through her declaration,
provides results from executed computerized searches of the
federal trademark register. These searches demonstrate that
more often than not registrations for marks containing
“chef,” “baker” or “brewer” in the food and beverage classes
and “tailor,” “carpenter,” “plumber,” “mason” or
“electrician” in all classes do not include disclaimers for
these terms.
Opposition No. 106,293
6

In a motion for summary judgment, the moving party has
the burden of establishing the absence of any genuine issues
of material fact and that it is entitled to summary judgment
as a matter of law. See Fed. R. Civ. P. 56(c). The fact
that both parties have moved for summary judgment on the
same issue, i.e. opposer’s claim that applicant’s mark is
descriptive, does not, in itself, mean that no genuine
issues of material fact remain. See University Book Store
v. University of Wisconsin Board of Regents, 33 USPQ2d 1385
(TTAB 1994).
A genuine dispute with respect to material fact exists
if sufficient evidence is presented that a reasonable fact
finder could decide the question in favor of the non-moving
party. See Opryland USA Inc. v. Great American Music Show,
Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992). Thus,
all doubts as to whether any factual issues are genuinely in
dispute must be resolved against the moving party and all
inferences must be viewed in light most favorable to the
non-moving party. See Olde Tyme Foods Inc. v. Roundy’s
Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
The issue presented by the parties’ cross-motions is
whether there is a genuine issue of material fact as to
whether applicant’s proposed mark, BARMEN, is merely
descriptive of beer.2

2 Neither party has addressed the issue of genericness.
Opposition No. 106,293
7
A mark is merely descriptive under Trademark Act
Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an
ingredient, quality, characteristic, function, feature,
purpose or use of the relevant goods. See In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed &
Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir.
1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
A term is suggestive if some imagination, thought or
perception is required to determine the nature of the goods
from the term. A suggestive term differs from a descriptive
term, which immediately tells something about the goods.
See In re Aid Laboratories, Inc., 223 USPQ 357 (TTAB 1984).
A suggestive mark is registrable on the Principal Register.
See In re Shutts, 217 USPQ 363 (TTAB 1983).
After careful review of the record, we find that
applicant has met its burden in establishing the absence of
any genuine issues of material fact, and that the mark
BARMEN is suggestive, and not merely descriptive, of beer.
The documentary evidence submitted by applicant which
consists of dictionary definitions of the singular form of
the term BARMEN and a compilation of articles, clearly
indicates that the ordinary meaning of the term BARMEN is
bartenders or people who serve drinks. Such ordinary
meaning, however, is not descriptive of any ingredient,
Opposition No. 106,293
8
quality, characteristic, function, feature, purpose or use
of applicant’s identified goods, namely, beer.
Opposer, on the other hand, has failed to present any
evidence to support its claim that the proposed mark,
BARMEN, is merely descriptive of beer. The lack of any
evidence which demonstrates that the term BARMEN is
descriptive of beer indicates that the term is at most
suggestive. See Firestone Tire & Rubber Co. v. Goodyear
Tire & Rubber Co., 186 USPQ 557, 559 (TTAB 1975), aff’d, 189
USPQ 348 (CCPA 1976).
Furthermore, opposer’s reliance on disclaimers in marks
other than BARMEN is unpersuasive. Specifically, the Patent
and Trademark Office disclaimer practice as to terms such as
“chef,” “baker,” “brewer,” and the like for different marks
and products is not controlling. In fact, these terms are
not disclaimed in most cases. Moreover, none of these words
identifies the server of the particular product. Rather,
such terms identify the manufacturer or producer of
particular goods. Accordingly, the third-party
registrations provided by opposer are inapposite to the
instant case.
Finally, opposer has not provided any statutory
authority or case law for the proposition that a term, such
as BARMEN, which identifies the servers of a particular food
or beverage product is merely descriptive of such product.
Opposition No. 106,293
9
While the Board has previously held that a term which
describes the manufacturer of goods or provider of services
is merely descriptive of those goods or services, (see In re
E.I. Kline, 221 USPQ 1203 (TTAB 1984) and cases cited
therein), we find that a term which describes a “server” of
a particular food or beverage product is not merely
descriptive of that product.
In view thereof, applicant’s motion for summary
judgment is granted, opposer’s cross-motion for summary
judgment is denied, and the opposition is hereby dismissed
with prejudice.

R. F. Cissel

T. J. Quinn

L. K. McLeod
Administrative Trademark Judges,
Trademark Trial and Appeal Board