Anheuser-Busch, Inc.v.Kelly J. Holt

Trademark Trial and Appeal Board

Sep 16, 2009

No. 91180119 (T.T.A.B. Sep. 16, 2009)

Mailed: September 16, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Anheuser-Busch, Incorporated

v.

Kelly J. Holt
_____

Opposition No. 91180119
to Application Serial Nos. 77065796, 77063889 and 77090584

_____

Daniel D. Frohling and Seth A. Rose of Loeb & Loeb LLP for
Anheuser Busch, Inc.

Daniel R. Johnson and Melissa S. Hockersmith of Ryan Kromholz &
Manion, S.C for Kelly J. Holt.
______

Before Walsh, Taylor and Ritchie, Administrative Trademark
Judges.

Opinion by Taylor, Administrative Trademark Judge:

Kelly J. Holt (“applicant”) seeks registration on the
Principal Register of the following marks:
Serial No. 770638891
BEER 1 (in standard characters) for “beer” in International
Class 32. Beer has been disclaimed.

1 Filed December 13, 2006 and reciting a bona fide intention to
use the mark in commerce.

THIS OPINION
IS A PRECEDENT
OF THE TTAB
Opposition No. 91180119

2
Serial No. 770657962
ONE BEER, BEER 1 (in standard characters) for “beer” in
International Class 32. Beer has been disclaimed.

Serial No. 770905843

for “beer” in International Class 32. Beer and
MMVII have been disclaimed.

Opposer, Anheuser-Busch, Incorporated, has opposed
registration of all three marks on the same alternative
grounds, namely that they: (1) are merely descriptive and
lack secondary meaning; or (2) are deceptively
misdescriptive and lack secondary meaning.4 Opposer

2 Filed December 15, 2006 and asserting a bona fide intention to
use the mark in commerce.

3 Filed January 24, 2007 and asserting a bona fide intention to
use the mark in commerce. The application includes the following
statement: “The mark consists of three concentric bands framing
the word BEER over a large numeral 1. Three diagonal bands cut
across and behind the numeral 1 from the upper left internal
border of the oval to the lower right internal border of the
oval. Pictoral [sic] representation of a mug of beer located to
the lower left side of the numeral 1. Pictoral [sic]
representation of a rising sun and the year 2007 in Roman
numerals located to the upper right side of the numeral 1.
Pictoral [sic] representation of two barley heads beginning at a
point just below the bottom of the external border of the oval,
curving upward to the left and right along the external area of
the oval.”

4 Applicant also pleaded that all three marks are so highly
laudatory that they are inherently incapable of functioning as
Opposition No. 91180119

3
particularly alleges that it and its predecessors have been
marketing beer for more than a century, and opposer is the
leading brewer and marketer of beer in the United States;
that, as regards its descriptiveness claim, applicant’s
applied-for marks “identify and/or describe a beer that has
won an award or is ranked number ‘1,’ and are therefore
descriptive of the goods covered in the applications and
have not acquired distinctiveness” (not. of opp. ¶ 6); that,
as regards its deceptively misdescriptive claim, “[o]n
information and belief, beer marketed, offered for sale or
sold by Applicant under the alleged marks would reasonably
be expected by consumers to have won an award as the number
‘1’ beer or to be ranked the number ‘1’ beer[; o]n
information and belief, there is no award, ranking or the
like signified by Applicant’s alleged marks” (not. of opp.
¶¶ 10-11); and that if applicant were granted registration
of his applied-for marks, applicant would obtain prima facie
rights to the exclusive use of those marks, all to the
damage of Opposer.
Opposer also requests that, in the event the Board
finds that any of applicant’s applied-for marks are not
wholly merely descriptive or deceptively misdescriptive and,

trademarks. That claim, however, was neither tried nor argued in
the briefs. Accordingly, we consider it withdrawn.

Opposition No. 91180119

4
thus, are capable of registration, the Board order all non-
disclaimed descriptive aspects of the marks be disclaimed.
Applicant, in his answer, admits that “opposer markets
beer” (Answer ¶ 1), that “if Applicant were granted
registration of his alleged marks, Applicant would obtain
certain statutory rights, including prima facie rights to
the exclusive use of the alleged marks” (Answer ¶ 1) and
that applicant’s marks have not acquired distinctiveness or
secondary meaning (Answer ¶ 6), but otherwise has denied the
salient allegations of the combined notice of opposition.
THE RECORD
By operation of Trademark Rule 2.122 the record
includes the pleadings and the files of the subject
applications. In addition, during its testimony period,
opposer submitted the testimony deposition, with exhibits,
of Gregory Ward, Ph.D., a linguistics expert; a notice of
reliance on applicant’s responses to opposer’s first set of
interrogatories, Nos. 1, 5, 7 and 14-17; and a notice of
reliance on opposer’s second supplemental response to
Interrogatory No. 1 of applicant’s first set of
interrogatories (submitted to clarify the record).
Applicant, during his testimony period, submitted a notice
of reliance on opposer’s responses to applicant’s first set
of interrogatories, Nos. 1, 7, 8 and 13; the definition of
the word “one” (taken from the second edition of Random
Opposition No. 91180119

5
House Webster’s College Dictionary); and applicant’s
response to opposer’s first set of interrogatories, Nos. 10
and 12 (submitted to prevent misinterpretation of its
responses to interrogatory nos. 7 and 14).
STANDING
To establish standing, opposer must show a real
interest in the proceeding. Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023 (Fed. Cir. 1999). Generally, where a
claim of mere descriptiveness is asserted, it is sufficient
for the plaintiff to establish that it is engaged in the
manufacture or sale of the same or related products, i.e.,
is a competitor, or that the product in question is within
the normal field of expansion of the plaintiff’s business.
Plyboo America, Inc. v. Smith & Fong Co., 51 USPQ2d 1633
(TTAB 1999); and Binney & Smith, Inc. v. Magic Marker
Industries, Inc., 222 USPQ 1003, 1010 (TTAB 1984). In this
case opposer, in the notice of opposition, alleged:
1. Opposer and its predecessors have been
marketing beer for more than a century, and
Opposer is the leading brewer and marketer of
beer in the United States.

While applicant did not admit to all of the allegations
contained in the paragraph, applicant did admit that
“opposer markets beer.” Answer at ¶1. In view of this
admission, we find that opposer has established that it is a
competitor of applicant in the beer market and, therefore,
Opposition No. 91180119

6
has demonstrated its standing to challenge the registration
of the involved applications.
MERE DESCRIPTIVENESS
We first consider opposer’s claim that all three of
applicant’s applied-for marks, “BEER 1,” “ONE BEER, BEER 1”
and “BEER 1 MMVII and design,” merely describe the goods
identified thereunder, namely, beer. Opposer has primarily
supported this contention with the testimony (and report) of
a linguistic expert, Professor Gregory Ward, Ph.D., a
professor of linguistics at Northwestern University.
Professor Ward indicated that he used “standard analytic
techniques” in the linguistics field in reaching the
conclusion that, taken as a whole, applicant’s marks would
be understood by native speakers of American English as
descriptive of applicant’s goods. Professor Ward also
indicated that he familiarized himself with what the term
“descriptive” meant in a legal context before conducting his
analysis.5

5 Professor Ward particularly stated:
Q. Can you tell us what Exhibit 3 is?
A. Yes. Exhibit 3, … also consists of the section from
McCarthy that I mentioned earlier [Sections 11:27 of
McCarthy on Trademarks and Unfair Competition (2007)] and
a section on “merely descriptive” marks that I mentioned
earlier as well.
Q. The section on merely descriptive marks is from what
corpus? What body of work?
A. From the TMEP.
Q. And is the TMEP the Trademark Manual [sic] Examining
Procedure?
A. Yes, it is.
Opposition No. 91180119

7
With respect to the mark BEER 1, opposer points to the
disclaimer by applicant of the term “beer” and argues, based
on the Ward testimony, that “[g]iven that ‘1’ follows and
modifies the noun ‘beer,’ … the term ‘1’ denotes a rank or
ordering and the phrase ‘BEER 1’ conveys that the beer in
question is ranked or ordered number 1 such that any native
speaker of American English would, upon encountering the
phrase ‘BEER 1,’ immediately understand it to identify a
ranking of beers, i.e., that the product in question is
ranked number 1.” (Brief at pp. 12-13 citing to Ward Dep.,
Ex. 2, pp 8-8; Ward Dep. Pp. 23:3-9, 24:20-24, 26:13-16 and
45:17-21).6

Q. Did you read these documents in conjunction with the
preparation of your report?
A. I did.
Q. And did these documents affect the methodology you used in
preparing your report”
A. They did.
Q. Can you explain how?
A. Yes. In order to address the question of whether the
marks in question were descriptive, I needed to have an
understanding of the term “descriptive” in a legal
context.
Q. And then knowing what “descriptive” meant in a legal
context, how did that affect the methodology you chose?
A. It informed me as to how to conduct the linguistic
analysis in order to address the issue of whether or not
the marks in question were descriptive.

6 Professor Ward particularly testified, in part, that: “[i]n
this case ‘Beer 1,’ ‘beer’ is the noun, ‘one’ is the post-nominal
modifier; therefore, the expression ‘BEER 1’ is that it refers to
a ranking or ordering of beer in some way with the ranking or
ordering being “1.” (Ward Dep. p. 25).

Opposition No. 91180119

8
With regard to the mark ONE BEER, BEER 1 opposer states
that given that “ONE BEER” is a more straight-forward
linguistic construct, Professor Ward, in addition to his
expertise in the field of linguistics, was “able to rely on
his intuitions as a native speaker” in analyzing the “ONE
BEER” component of the mark. Based on the Ward testimony,
opposer contends that since a number coming before a noun
identifies a quantity or amount, “ONE” denotes a set that has
one and only one member, and that while the set is undefined,
the only “plausible” interpretation in the marking/branding
context is that it can only be a category (e.g., brand,
style, source, etc.) of beer. That is, it would be
nonsensical to deduce that, in a trademark/branding context
“one beer” would be understood by consumers as referring to a
single can. (Opposer’s brief pp. 7-8, citing to the Ward
Dep., Ex. 2, p. 10-11).
Opposer then contends:
Putting the components together, Professor Ward
logically concluded that “One beer, BEER 1”
means that there is only one brand (or style,
source, etc., of beer) and this beer is ranked
#1. … Stated in simple terms, (and for
illustrative purposes, inserting “brand” as the
category), a consumer would interpret “One
beer, BEER 1,” to mean “there is only one brand
of beer and that beer is ranked #1.”

(Applicant’s brief p. 14, citing Ward Dep. at 33:6-20,
36:13-20, and 59:4-60:14; Ward Dep., Ex. 2, p. 11).
Opposition No. 91180119

9
Last, with regard to the mark BEER 1 MMVII and design,
opposer notes the disclaimer of the terms “beer” and “MMVII”
(the Roman numerals for 2007) and, citing to applicant’s
response to opposer’s interrogatory request No. 14, contends
that “applicant has admitted that the image in the lower
left area of the oval is a ‘Pictoral [sic] representation of
a mug of beer’, and the grain depicted around the bottom of
the oval is barley, a common ingredient used in brewing beer
… [and] the roman numeral and rising sun in the upper right
area of the oval identify ‘the year of establishment of the
BEER 1 brand.’” (Opposer’s brief p. 14).7 It is therefore
obvious, opposer asserts, that the visual representation of
the applied-for mark depicts various elements that all
identify or describe important features or characteristics
of applicant’s beer. Opposer further asserts that, as
concluded by Professor Ward, “the meaning of ‘BEER 1,’ the
shape of the logo, and the sash all lead to the overall

7 Interrogatory 14 and applicant’s response is as follows:
14. Describe the message Applicant intends to
convey to consumers from its use of BEER 1
MMVII and Design as a trademark for
Applicant’s beer.

RESPONSE:
Applicant intends to convey through the rising
sun and roman numerals MMVII, the year of
establishment of the BEER 1 brand. The barley
heads are symbolic of natural ingredients.
The single mug of beer is symbolic of purity,
tradition, and simplicity.

Opposition No. 91180119

10
impression of the Alleged Mark being a medal or award or
some type of ranked representation” and, thus, the mark
serves to describe a characteristic, quality, feature or
attribute of the beer bearing the applied-for mark.”
(Opposer’s brief p. 15 citing to Ward Dep., Ex. 2, p. 13).
In response, applicant argues that:8
Opposer has not met their [sic] burden of
proving by a preponderance of evidence that any
of the marks at issue are merely descriptive.
On the spectrum of distinctiveness, each of the
above referenced marks [BEER 1; ONE BEER, BEER
1; and BEER 1 MMVII& Design] is at least
suggestive of the goods upon which it is to be
used.

(Applicant’s brief p. 1). Applicant, citing 2 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition,
§ 11.67 at 11-150 (4th ed. 2008), further points out that
the Board will accord little value to the expert opinion of
a linguist on the ultimate issue of the descriptiveness of a
particular term.
Applicant particularly argues that the word “one” or
the number “1” may have many different interpretations and,

8 In framing his arguments against opposer’s allegations of
mere descriptiveness, applicant contends that the Board has
“adopted a three part test to determine whether a mark is
descriptive: degree of imagination; competitor’s use; and
competitor’s need” (applicant’s brief p. 4), and suggests by his
arguments that opposer must demonstrate mere descriptiveness
based on all three tests. Applicant is mistaken. In a recent
decision, the Board reiterated that “the [only] test for
descriptiveness is whether a term ‘immediately conveys knowledge
of a quality, feature, function, or characteristic of the goods
or services with which it is used.’” In re Carlson, 91 USPQ2d
1198, 1203 (TTAB 2009) (internal citations omitted).

Opposition No. 91180119

11
thus, its mark BEER 1 is susceptible to many meanings, none
of which immediately conveys a message about a quality,
characteristic, or ingredient of the goods sold under the
BEER 1 mark. Applicant further argues, with regard to his
ONE BEER, BEER 1 mark, that opposer’s expert failed to
identify any specific message that the mark delivers about
any specific quality or characteristic of the product and,
therefore, the mark is at most suggestive. Last, with
regard to his BEER 1 MMVII and design mark, applicant
contends that opposer’s own expert report shows that the
mark is at most suggestive as applied to beer by Professor
Ward’s use of such terms as “suggests” and “evokes.”
A term is merely descriptive of goods, and therefore
unregistrable under Trademark Act Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods. See, e.g., In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987); and In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978).
Whether a particular term is merely descriptive is
determined not in the abstract, but in relation to the goods
for which registration is sought, the context in which it is
being used or is intended to be used on or in connection
with those goods, and the possible significance that the
term would have to the average purchaser of the goods
Opposition No. 91180119

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because of the manner of its use or intended use. In re
Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002) (“The
question is not whether someone presented with only the mark
could guess what the goods or services are. Rather, the
question is whether someone who knows what the goods and
services are will understand the mark to convey information
about them.”). In addition, a visual representation that
consists merely of an illustration of the goods, or of an
article that is an important feature or characteristic of
the goods or services, is merely descriptive under Section
2(e)(1) of the Act. See In re Society for Private and
Commercial Earth Stations, 226 USPQ 436 (TTAB 1985)
(representation of satellite dish held merely descriptive of
services of an association promoting the interests of
members of the earth station industry); In re Underwater
Connections, Inc., 221 USPQ 95 (TTAB 1983) (pictorial
representation of a compressed air gas tank held merely
descriptive of travel tour services involving underwater
diving).
However, a mark is suggestive if, when the goods or
services are encountered under the mark, a multi-stage
reasoning process, or the utilization of imagination,
thought or perception, is required in order to determine
what attributes of the goods or services the mark indicates.
See, e.g., In re Abcor Development Corp., 200 USPQ at 218,
Opposition No. 91180119

13
and In re Mayer-Beaton Corp., 223 USPQ 1347, 1349 (TTAB
1984). As has often been stated, there is a thin line of
demarcation between a suggestive mark and a merely
descriptive one, with the determination of which category a
mark falls into frequently being a difficult matter
involving a good measure of subjective judgment. See, e.g.,
In re Atavio, 25 USPQ2d 1361 (TTAB 1992) and In re TMS Corp.
of the Americas, 200 USPQ 57, 58 (TTAB 1978). The
distinction, furthermore, is often made on an intuitive
basis rather than as a result of precisely logical analysis
susceptible of articulation. See In re George Weston Ltd.,
228 USPQ 57, 58 (TTAB 1985).
Opposer must prove its claims of mere descriptiveness
by a preponderance of the evidence. Plyboo America, 51
USPQ2d at 1639, citing 2 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition, § 20.16 (3d ed. 2002).
Opposer does not meet this burden as to any of the involved
marks inasmuch as opposer did not present evidence
sufficient to establish that the marks are merely
descriptive in the beer industry or to the relevant
consuming public.
With regard to all three marks at issue, opposer has
almost exclusively relied on the testimony of a single
expert witness, Professor Gregory Ward, to prove its claims
that applicant’s applied-for marks are merely descriptive of
Opposition No. 91180119

14
the goods they identify. Professor Ward opines that, taken
as a whole, applicant’s marks would be understood by native
speakers of American English as descriptive of applicant’s
goods. Opposer further states, in essence, that applicant
offered no evidence of its own as to consumers’
understanding of the alleged marks and has made “erroneous
and misplaced” criticisms of Professor Ward’s analysis and
findings.
We point out, however, that although an opinion of an
asserted expert in linguistics may have some probative
value, it is not dispositive on the ultimate determination
of descriptiveness. See Plyboo America, 51 USPQ2d at 1639.
As the Board noted in Plyboo, 51 USPQ2d 1640, by quoting
from Tanners’ Council of America, Inc. v. Scott Paper Co.,
185 USPQ 630, 637 (TTAB 1975):
[I]t is well established that the expressions
of opinion by witnesses, including persons
considered to be experts in a particular field
on any question before the Board, is not
binding upon the Board for “if such testimony
were adopted without considering other aspects
of the case, the effect would be to substitute
the opinion of the witnesses for the ultimate
decision to be reached by the Court and would
therefore be improper.” The Quaker Oats
Company v. St Joe Processing Company, Inc. [232
F.2d 653,] 109 USPQ 390 at 391 (CCPA 1956)
[additional citations omitted].

See also Ferro Corp. v. Nicofibers, Inc., 196 USPQ 41, 45
(TTAB 1977)(purchasers’ “understanding of the marks must be
determined in light of the relevant purchasing sector and
Opposition No. 91180119

15
not that of linguistics experts or those familiar with the
meaning or derivation of words”). As such, the opinion
offered by Professor Ward as to the descriptiveness of
applicant’s “BEER 1,” “ONE BEER, BEER 1” and “BEER 1 MMVII
and design” marks, as opposed to any factual matters within
his area of linguistic expertise or personal knowledge, is
of virtually no probative value in this case. See Mennen
Co. v. Yamanouchi Pharmaceutical Co., Ltd., 203 USPQ 302,
305 (TTAB 1979) at n.4.
Furthermore, conspicuously absent from the record is
any empirical evidence, such as surveys, excerpts from
newspapers, magazines, trade journals, the internet and the
like, showing that consumers perceive the marks as
descriptive. Applicant has made of record a definition,
taken from Random House Webster’s College Dictionary (2d ed.
1999), of “one” clearly showing that the word “one” has
multiple meanings, and in this case twenty-four. They
include, in part:
adj. 1. Being or amounting to a single unit or
individual or entire thing: one child; one
piece of cake. 2. being an individual
instance or member of a number, kind, or group
indicated; one member of the party. 3.
existing, acting, or considered as a single
unit or entity. 4. of the same or having a
single kind, nature or condition; of one mind.
… 8. being a particular, unique, or only
individual item, or unit: the one person I can
trust. … 11. the first and lowest whole number,
being a cardinal number; unity. 12. a symbol
of this number, as 1 or I. 13. a single
person or thing; one at a time. … 15. a person
Opposition No. 91180119

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or thing of a number or kind indicated or
understood; one of the Elizabethan poets. …
17. any person or thing indefinitely, anyone
or any thing; as goods as one could desire….

In analyzing the composite mark BEER 1, we note that
“beer” has been disclaimed, as it is generic for applicant’s
goods. However, several of the meanings of “one” listed
above are equally plausible in the context of applicant’s
goods. For example, a consumer is just as likely to
perceive the number “1” in the mark as meaning “unique” or
“only” as he or she is to perceive the number as “a
ranking.” As the Tanners panel explained, “an impression of
a trademark is generally gleaned at first impact or
encounter in the marketplace; and while there may be close
scrutiny of the goods sold thereunder, it is unlikely that
the average purchaser in the normal environment surrounding
the marketplace would likewise engage in a close inspection
of the mark and attempt to dissect and analyze each portion
thereof to determine its derivation and meaning.” Tanners’
Council, 185 USPQ at 637. We find the combination of the
term “Beer” and the number “1” may not necessarily be
perceived by consumers as “a beer ranked #1, as it may just
as likely be interpreted by them as “unique beer” or “only
beer.” That is to say, while “BEER 1” may have some
suggestive significance, the record is devoid of credible
evidence that establishes that BEER 1 would be perceived by
Opposition No. 91180119

17
the purchasing public as meaning “beer that is ranked #1”
and thus merely descriptive of beer.
Because multiple meanings can be ascribed to the word
“one” (or the numeral “1”) in the mark, we likewise find
that the evidence of record fails to establish that the term
ONE BEER, BEER 1 would be perceived by purchasers as
signifying a quality, feature or characteristic of beer. By
way of example, a purchaser could view the mark as meaning a
single beer, a unique beer or, put another way, if one could
only have a single beer, think BEER 1. As explained, the
Ward testimony, alone, is unpersuasive and opposer has
introduced no objective evidence to show that the consuming
public would immediately regard ONE BEER, BEER 1 as
describing a particular feature, aspect or characteristic of
applicant’s beer. We find that only after some degree of
thought, imagination or a multistage reasoning process would
a purchaser encountering beer sold under the mark ONE BEER,
BEER 1 believe, if then, that the mark merely describes
something specific about applicant’s beer.
Last, we find unavailing opposer’s arguments that
applicant’s applied-for mark BEER 1 MMVII and design,
, is merely descriptive. First, the mark is not
merely a visually representation of applicant’s beer, or of
Opposition No. 91180119

18
a significant characteristic thereof. Although, as admitted
by applicant, a mug of beer is depicted in the lower left
quadrant of the design, it is but a single element in a
complex design that is enclosed in a three-banded oval which
also includes the term “BEER,” the number “1,” the Roman
numerals “MMVII” (2007) placed over a rising sun, two barley
heads, and three diagonal bands which transect the oval.9
Though the literal elements have been disclaimed as
severable, we find the overall design is unitary, all of the
pictorial elements either being encompassed within, or
overlaying, the oval, such that the overall design is
evocative of a crest. More generally, we find the
dissection of a logo in this fashion is an inappropriate
attempt to ascribe descriptive significance to its
individual elements. Here too, the expert linguist has gone
far beyond his claimed area of expertise.10 We thus find
that the mark, as a whole, is not a merely descriptive
illustration of an important feature or characteristic of
applicant’s beer.

9 We reiterate that the literal elements in the composite mark,
i.e., the term “Beer,” the number “1” and the Roman numeral
“MMVII” have been disclaimed.

10 On this point, Professor Ward testified:
Q. Do you have any educational background that
might assist you in analyzing design marks?
A. Design marks specifically, no.

Opposition No. 91180119

19
Opposer has strenuously argued that the case law
supports its position that its linguistic expert testimony
is relevant and useful. We disagree. While credible expert
testimony may be useful under certain circumstances in
discerning the meaning or meanings of words, it is no
substitute for evidence of how the purchasing public
perceives a term (or picture or illustration) in reaching
the ultimate conclusion on the issue of mere
descriptiveness. Indeed, the case included in the McCarthy
citation opposer relied upon to support its proposition that
such evidence is relevant and probative on the issue of
descriptiveness, Stix Products, Inc. v. United Merchants &
Mfrs., Inc. 295 F. Supp 479, 160 USPQ 777 (S.D.N.Y. 1968),
supports this position. In Stix, the court recognized that
in determining whether a word used in advertising and
promotional campaigns is descriptive, the word’s meaning to
a non-purchasing segment of the population is not of
significance; rather the critical question is what it means
to the ultimate consumer. The Stix Court particularly
stated in regard to the opinion by a linguistic expert
“[t]hat stress patterns in a compound phrase may convey
generic meaning to a linguist, a scientific language expert,
does not necessarily make the phrase generic as far as the
consuming public is concerned.” Stix Products, 160 USPQ at
786.
Opposition No. 91180119

20
In addition, the nonprecedential Board cases cited by
opposer can be distinguished. In those cases, the Board did
not rely solely on expert opinion to form a conclusion on
the ultimate issue of descriptiveness. Rather the expert
testimony was treated simply as a piece of the puzzle, which
included empirical evidence such as dictionary definitions,
competitor and other third-party uses and/or the
competitor’s own use.
Last, we are not persuaded that the facts of this case
differ such that we should deviate from the Board’s position
on expert testimony set forth in Plyboo America, supra.
Opposer stresses that unlike the expert in Plyboo, its
linguistic expert familiarized himself with certain sections
of trademark treatises. While that may be so, there is
simply nothing that persuades us that the lone opinion of
opposer’s asserted linguistics expert should substitute for
evidence of the perception of the consuming public of the
involved marks, or substitute for the Board’s ultimate
determination of the issue of mere descriptiveness in the
matters before us.
For the reasons discussed above, we find that opposer
has failed to carry its burden to show that members of the
purchasing public will view applicant’s marks “BEER 1,” “ONE
BEER, BEER 1” and “BEER 1 MMVII and design” as merely
Opposition No. 91180119

21
describing a feature, characteristic or quality of
applicant’s beer.
DECEPTIVELY MISDESCRIPTIVE
We now address opposer’s alternative claim that
applicant’s applied-for marks are deceptively misdescriptive
of the goods identified thereunder. Opposer contends that:
Here, Opposer has already demonstrated that
Applicant’s Alleged Marks are merely descriptive
of Applicant’s product.
Further, Applicant has admitted that he has
no research, studies or opinion polls that
relate or refer to Applicant’s Alleged Marks or
his beer, and that he has not received any award
or ranking regarding beer. … As such, [it] is
not possible that applicant’s beer could
actually be ranked #1 in any respect. However,
this misrepresentation is believable, as
demonstrated both by common sense -
manufacturers often tout their ranking as
against competitors – and by the linguistic
analysis conducted by Professor Ward. …
Applicant’s Alleged Marks are therefore
deceptively misdescriptive without secondary
meaning.

(Opposer’s brief pp. 15-16.)
In order for a mark to be found deceptively
misdescriptive within the meaning of Section 2(e)(1) of the
Trademark Act, 15 U.S.C. 1052(e)(1), and thus unregistrable,
it must immediately convey an idea about the goods or
services, but that idea, though plausible, must be false.
See In re Woodward & Lothrop Inc., 4 USPQ2d 1412 (TTAB
1987). The test for determining whether a term is
deceptively misdescriptive as applied to the goods involves
a two-part determination of (1) whether the matter sought to
Opposition No. 91180119

22
be registered misdescribes the goods, and (2) whether anyone
is likely to believe the misrepresentation. See In re Quady
Winery, Inc. 221 USPQ 1213 (TTAB 1984).
For the reasons discussed above, we find that none of
applicant’s applied-for marks immediately conveys to the
consuming public, as opposer contends, the idea that
applicant’s beer is ranked number one and, thus, applicant’s
“BEER 1,” “ONE BEER, BEER 1” and “BEER 1 MMVII and design”
marks make no representation, false or otherwise, regarding
any beer ranking. Thus, applicant’s goods are not
misdescribed and opposer has failed to meet the first prong
of the test with regard to applicant’s marks being
deceptively misdescriptive.
DISCLAIMER REQUEST
As a final matter, opposer requested that in the event
we find applicant’s BEER 1 MMVII and design mark capable of
registration, the Board require applicant to disclaim all
descriptive elements of the mark. As noted previously
herein, the literal and severable elements of the mark have
already been disclaimed and the pictorial elements comprise
a unitary composite mark. See, e.g., In re Texsun Tire and
Battery Stores, Inc. 229 USPQ 227, 229 (TTAB 1986)(“[T]he
portion of the outline of the map of Texas encircled as it
is with the representation of a tire surrounded by a
rectangular border results in a unitary composite mark which
Opposition No. 91180119

23
is unique and fanciful.”). We accordingly find no other
elements severable and no further disclaimers are required.
In sum, applicant’s marks are neither descriptive nor
deceptively misdescriptive of applicant’s goods under
Section 2(e)(1).
Decision: The combined opposition against Application
Serial Nos. 77065796, 77063889 and 77090584 is dismissed.