BEDA Investments GmbH

Trademark Trial and Appeal Board

Jun 10, 2014

No. 79107074 (T.T.A.B. Jun. 10, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
June 10, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re BEDA Investments GmbH
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Serial No. 79107074
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Nicole K. McLaughlin of Duane Morris LLP for BEDA Investments GmbH.

Elissa Garber Kon, Trademark Examining Attorney, Law Office 106 (Mary I.
Sparrow, Managing Attorney).
_____

Before Mermelstein, Wolfson, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
BEDA Investments GmbH (“Applicant”), a Luxembourg entity, has requested
extension of protection of an International Registration for the mark shown below
with respect to “Beers,” in International Class 32; and “Services for providing food
and drink, namely, providing of food and drink; temporary accommodation, namely,
providing temporary housing accommodations,” in International Class 43.1

1 Application Serial No. 79107074, filed on November 8, 2011 under Trademark Act § 66, 15
U.S.C. § 1141(e), on the basis of International Reg. No. 1101394. The Application also
includes services in International Class 41, which are not at issue in this appeal.
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Color is not claimed as a feature of the mark.2 With respect to the goods in
International Class 32 only,3 no claim is made to the exclusive right to use
WEISSBIER apart from the mark as shown. Applicant entered the following
translation into the record:
The English translation of “BENEDIKTINER” and
”WEISSBIER” in the mark is Benedictine and white beer.
The Examining Attorney required Applicant to disclaim the exclusive right to
use the term BENEDIKTINER, apart from the mark as shown, on the ground that
this term is merely descriptive of Applicant’s goods and merely descriptive of a
feature of Applicant’s services in Class 43.4 Applicant declined to disclaim
BENEDIKTINER or BENEDIKTINER WEISSBIER. The Examining Attorney
made her requirement final and, on that basis, refused registration of the mark.

2 The record contains the following description of the mark: “The mark consists of a design
of a monk holding a tankard within a circle. The wording ‘BENEDIKTINER’ and four [sic]
stars appear surrounding the monk. A wheat design is positioned at the bottom of the
design. The wording ‘BENEDIKTINER WEISSBIER’ appears centered on two lines at the
bottom of the mark.”
3 See Response filed April 12, 2013 at 1.
4 Because the term BENEDIKTINER appears in two instances in the mark, the Examining
Attorney required that the disclaimer take the following form: No claim is made to the
exclusive right to use BENEDIKTINER and BENEDIKTINER WEISSBIER apart from the
mark as shown.
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Applicant filed a Request for Reconsideration, which was denied. This appeal
ensued. Applicant and the Examining Attorney have filed Briefs, and Applicant has
filed a Reply Brief.
The Director of the U.S. Patent and Trademark Office “may require the
applicant to disclaim an unregistrable component of a mark otherwise registrable.”
Trademark Act § 6(a), 15 U.S.C. §1056(a). A mark or component is unregistrable if,
“when used on or in connection with the goods of the applicant,” it is “merely
descriptive … of them.” Trademark Act § 2(e)(1), 15 U.S.C. §1052(e)(1). The Patent
and Trademark Office may require a disclaimer as a condition of registration if the
term at issue is merely descriptive of any of the identified goods or services. In re
Stereotaxis Inc., 429 F3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005). A term is
merely descriptive of goods or services within the meaning of Section 2(e)(1) if it
forthwith conveys an immediate idea of an ingredient, quality, characteristic,
feature, function, purpose or use of the goods or services. In re Chamber of
Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); see
also, In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Whether a
mark or a component of a mark is merely descriptive is determined in relation to
the goods or services for which registration is sought and the context in which the
term is used, not in the abstract or on the basis of guesswork. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle,
66 USPQ2d 1222, 1224 (TTAB 2002). A term need not immediately convey an idea
of each and every specific feature of the goods or services in order to be considered
Serial No. 79107074

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merely descriptive; it is enough if it describes one significant attribute, function or
property of them. See In re Gyulay, 3 USPQ2d at 1010; In re H.U.D.D.L.E., 216
USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Moreover, the term need not describe all of the identified goods or services. Rather,
a finding of mere descriptiveness is proper with respect to all of the identified goods
or services in an International Class if the mark is merely descriptive of any of the
goods or services in that class. In re Chamber of Commerce, 102 USPQ2d at 1219;
In re Stereotaxis Inc., 77 USPQ2d at 108. It is the Examining Attorney’s burden to
prove that a term is merely descriptive of an Applicant’s goods or services. In re
Accelerate s.a.l., 101 USPQ2d 2047, 2052 (TTAB 2012). The determination that a
term is merely descriptive is a finding of fact and must be based upon substantial
evidence. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed.
Cir. 2007).
Applicant has conceded that “the English translation of ‘BENEDIKTINER’ …
is ‘Benedictine.’” The Examining Attorney refers to the following dictionary
definition of “Benedictine”:5
NOUN:
Roman Catholic Church
A monk or nun belonging to the order founded by Saint
Benedict of Nursia.
OTHER FORMS:
Ben'e· dic'tine (Adjective)

5 Definition from Yahoo! Education, Office Action of April 26, 2013 at 97.
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As the Examining Attorney has not provided the definition of the adjectival form of
the word, we take judicial notice of the following definition from WEBSTER’S THIRD
NEW INTERNATIONAL DICTIONARY 203 (1993):6
adj usu cap 1 : of or relating to St. Benedict of Nursia 2 :
of or relating to the Benedictines.
Applicant has stated that it is part of a brewery called Bitburger Braugruppe,
which has entered into a joint venture with the Benedictine Order of Ettal for the
production of beer.7 Applicant asserts:
[A]ll Benedictine monks worldwide are united and
governed by a single Benedictine Confederation
headquartered at Sant’Anselmo, Rome. The Benedictine
Confederation is aware of and supports Applicant’s use
and registration of the term BENEDICTINE for its beer
products. [Citation omitted.] Further, the Benedictine
Confederation represented by the current Abbot Primat in
Rome, Mr. Notker Wolf OSB, is not only well aware of,
but also welcomes the BENEDIKTINER WEISSBIER
product of Applicant. He has approved the worldwide
distribution of Applicant’s products.8
The Examining Attorney, in support of her requirement that
BENEDIKTINER be disclaimed, contends as follows:
BENEDIKTINER immediately tells consumers an
important fact about the source of applicant’s beer and
the beer featured in its food and beverage provision
services. …

6 The Board may take judicial notice of dictionary definitions. Univ. of Notre Dame du Lac
v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
7 Request for Reconsideration at 5. See also id. at 33 (a statement from a representative of
the Order of Ettal, apparently issued in connection with an application to register the mark
BENEDIKTINER WEISSBIER in Benelux, indicating the Order’s consent to the Benelux
registration of that mark).
8 Reply Brief at 9-10.
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[T]he term BENEDIKTINER informs consumers about
the source of its beers, which is key to understanding the
quality, characteristics and purpose of the goods and
services. … BENEDICTINE describes the quality and
traditions used in producing the applicant’s beers, as well
as the source of the applicant’s goods and services.9
The essence of the Examining Attorney’s position appears to be that the term
BENEDIKTINER informs the purchaser that:
(a) the beer originates in a Benedictine monastery or is made by
Benedictine monks;10

(b) it was brewed according to Benedictine traditions, recipes, and
techniques;11 and

(c) the money earned from the sale of the beer supports Benedictine
monasteries and their charitable endeavors.12

The Examining Attorney’s position is that if BENEDIKTINER is merely descriptive
of any one of these aspects of Applicant’s goods and services, the disclaimer
requirement is justified. We will consider each of these contentions in order. We
will focus first on Applicant’s goods (i.e., beer), because the Examining Attorney has
directed most of her evidence and arguments to the goods.
1. The beer originates in a Benedictine monastery.

The Examining Attorney argues that “Terms that describe the provider of a
product or service may also be merely descriptive of the product and/or service”; and
“BENEDIKTINER immediately tells consumers an important fact about the source

9 Examining Attorney’s Brief at 5-6.
10 Id. at 12.
11 Id. at 4-5, 9.
12 Id. at 5, 7.
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of applicant’s beer….”13 The Examining Attorney cites In re Chamber of Commerce,
102 USPQ2d at 1220 (finding NATIONAL CHAMBER to be merely descriptive of
“traditional chambers of commerce activities”) and In re Major League Umpires, 60
USPQ2d 1059, 1060 (TTAB 2001) (“It is well established that a term which
describes the provider of goods or services is also merely descriptive of those goods
and services.”).
The Examining Attorney appears to contend that BENEDIKTINER describes
a type or class of monastery or monk (i.e., Benedictine monasteries and Benedictine
monks) and that the term is merely descriptive of beer that emanates from such a
monastery or is made by such monks. Applicant, to the contrary, appears to
contend that BENEDIKTINER (like its English equivalent “Benedictine”) functions
as a trademark to identify the Benedictine monastic order as a single commercial
source of goods; and that it can effectively do this because “all Benedictine monks
worldwide are united and governed by a single Benedictine Confederation….,”14
including the branch of the Benedictine order with which Applicant is engaged in a
joint venture.15
The dictionary definition cited above indicates that “Benedictine” designates
a particular monastic order. In this context, we understand “order” to refer to a
religious organization which, like other organizations, is able to engage in commerce
and to distinguish its goods by means of a distinctive mark. Nothing in the record

13 Id. at 5.
14 Reply Brief at 9.
15 Request for Reconsideration at 5.
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suggests that the Benedictine order is not such an organization or that the terms
“Benediktiner” or “Benedictine” are used freely to identify persons or groups other
than the members of the religious organization referred to in the dictionary
definition. The record does show the existence of a number of individual
Benedictine monasteries, such as the Monastery of Christ in the Desert (New
Mexico);16 the Benedictine Monks of Norcia (Italy);17 and Ampleforth Abbey (United
Kingdom).18 However, the existence of individual monasteries that call themselves
“Benedictine” is not inconsistent with the function of that term as a source-indicator
for a single monastic order under the worldwide control of (as Applicant contends)
“a single Benedictine Confederation.”19
It is, of course, conceivable that over the centuries there could be a
breakdown in control over the monks and monasteries that refer to themselves as
“Benediktiner” or “Benedictine”; similarly, there could have been a breakdown in
control over the nature and quality of the goods and services to which those terms
are applied. However, the record before us does not demonstrate that these terms
have changed from distinctive designations that identify a particular organization
into descriptive designations that may identify any number of unrelated

16 Office Action of April 26, 2013 at 13-15.
17 Id. at 20-21.
18 Id. at 46-47.
19 Had the Examining Attorney wished to question Applicant’s association with the
Benedictine order or the Benedictine Confederation, she could have done so either by
means of a request for information under 37 C.F.R. § 2.61(b) or by issuing a refusal on
grounds that the mark falsely suggests a connection with the order, under Trademark Act
§ 2(a), 15 U.S.C. § 1052(a).
Serial No. 79107074

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organizations. Accordingly, the fact that BENEDIKTINER conveys to customers
that the goods originate in a Benedictine monastery or are made by Benedictine
monks does not, on the present record, render this term merely descriptive under
Section 2(e)(1).20
2. The beer is brewed in accordance with Benedictine traditions, recipes and
techniques.

The Examining Attorney contends that “others in the beer brewing industry
brew beer according to Benedictine traditions, in Benedictine monasteries, following
Benedictine recipes and employing Benedictine techniques.”21 The record contains
a number of references to brewing traditions of Benedictine monasteries.22 Without
more, general references to a “tradition” do not demonstrate what information the
word “Benedictine” conveys to relevant customers with respect to the goods.
However, evidence showing that “Benedictine” is associated with particular
traditional or non-traditional recipes or techniques of production would be relevant
to demonstrate that the term is merely descriptive. Most of the evidence of recipes
and techniques relates to the beer made at the Ampleforth monastery which,
according to news articles, was expected to come to market in June 2012:23

20 In re Chamber of Commerce and In re Major League Umpires are not inconsistent with
our decision. Unlike the case before us, neither of those cases involved terms that referred
to a unique or single source of origin, i.e., were arbitrary as applied to the “provider” of the
goods.
21 Examining Attorney’s Brief at 4-5.
22 See, e.g., Office Action of October 12, 2012 at 17; Office Action of April 26, 2013 at 85, 87,
94.
23 Office Action of April 26, 2013 at 41.
Serial No. 79107074

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They are using the same recipe as their predecessors,
made from hops and barley, double fermented for
strength and ‘champagne-like sparkle.’ … And today the
beer, to the same recipe, is being brewed and poured
again.24
Van der Spek married modern brewing techniques to the
fragments of information made available by the
monastery of Dieulouard near Nancy in Lorraine. … “La
biere anglaise” was brewed with barley malt, wheat, hops,
yeast and water and would have been a deep amber,
russet or brown beer. Before the invention of coke in the
industrial revolution, which enabled pale malt to be
produced, grains used in brewing were “kilned” or gently
cured over wood fires that created brown malt and dark
beer. … The beer brewed at Dieulouard was said to be
“double fermented” and even “sparkled like champagne.”
... What is certain is that the monks’ beer would have had
a first fermentation in the brewery and a second in oak
casks.25
The beer is strongly flavoured and limited to 330 ml
bottles because of its gutsy 7% alcohol by volume. …
[T]he Benedictines took their classically English brewing
skills to France after Henry VIII’s Reformation, then
returned with a distinctly European type of beer…. The
process, unused since, … has given the brew an
invaluable marketing tool: ancient documents referring to
secret recipes. … [O]ne relic from the exile in France
[lists] wheat, hops and other ingredients that made up
what the writer called “le grand secret de fabrication des
Benedictines Anglais.”26
According to the record, the distinctive attributes of the Ampleforth
monastery’s beer appear to be that it is “double fermented,” is high in alcohol
content, and perhaps has a high level of effervescence. The record contains a few

24 Id.
25 Id. at 77. See also id. at 93-94.
26 Office Action of October 12, 2012 at 12. See also id. at 19 (“The Benedictine community…
took its brewing skills to France when Henry VIII dissolved the monasteries, and returned
with a more Continental process….”)
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descriptions of the brewing methods used by other Benedictine monasteries. One of
them indicates that the beer has a higher alcohol content:
The [Paulaner] monks developed new methods of brewing
which produced stronger beer.27
Three others indicate that double fermentation is a feature of their method:
The monks approve every step of brewing these
extraordinary [Maredsous] ales, including secondary
fermentation in the bottle and cellaring for at least two
months to fully develop the complex flavors and aromas.28
The very traditional working method [of the Andechs
Monastery Brewery] is characterized by decoction
mashing, the two-tank method for fermentation and
storage and long storage times of up to six weeks.29
Blond top-fermented abbey beer refermented in the bottle
with a full-bodied, somewhat malty palate and a slightly
bitter aftertaste. [Ename Tripel beer] is a distinguished
abbey beer, brewed with artisanal care according to a
medieval Benedictine recipe from the abbey of Ename.30
Otherwise, the record gives a very uncertain idea of what the public would
understand a “Benedictine” beer to be. The Monastery of Christ in the Desert
produces at least three beers that are variously described as “a tasty Belgian-style
brew known as an enkel”; “a wheat beer similar to a German hefeweizen, seasoned
with coriander and orange peel”; and an ale “modeled… on the ales that Belgian

27 Office Action of April 26, 2013 at 44.
28 Id. at 85.
29 Id. at 87. It is not entirely clear from the record that “a two-tank method for
fermentation” is the same as “double fermented”; however, we consider this reference for
what it is worth.
30 Id. at 89-90.
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Trappist monks brew for their own consumption.”31 A beer marketed as
“Cornerstone Benedictine Order” is identified on as being of the
“Belgian Ale” style.32 A beer marketed as “Elixir Benedictine Groove” is described
on the same website as being a “Scotch Ale.”33
The evidence discussed above shows that certain beers emanating from
particular Benedictine monasteries have particular attributes. However, it is
insufficient to persuade us that members of the relevant public would perceive the
designation “Benedictine” as indicating, when applied to beer, that the beer
possesses any or all of those attributes. This record does not demonstrate that
BENEDIKTINER merely describes the traditions, recipes or techniques underlying
the brewing of Applicant’s beer.
3. The purpose of Applicant’s beer is to support Benedictine monasteries and
their charitable endeavors.

The Examining Attorney argues that the term BENEDIKTINER “tell[s]
consumers a key feature of [Applicant’s] brews that relates directly to their …
purpose in supporting the monasteries from which they originate.”34 “[T]he money
earned from the sale of beer from monasteries is often used to support the
monasteries and their charitable endeavors.”35 “Many monastic breweries exist to
support the ongoing operations of the abbeys. This information is relevant to the

31 Office Action of October 12, 2012 at 8-9.
32 Office Action of April 26, 2013 at 34.
33 Id. at 37.
34 Examining Attorney’s Brief at 4.
35 Id. at 5.
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consuming public because of the high standards used by the monasteries in making
the beer and the charitable purposes consumers may support in purchasing their
beer.”36 The record contains evidence that monasteries do indeed use the proceeds
of their brewery operations to support their monastic and charitable activities.
Assuming that the Examining Attorney is correct in her assessment of the
“purpose” of Applicant’s goods, the fact that the mark tells consumers that the
entity selling the goods profits from the sales does not make the mark descriptive or
even suggestive of the purpose of the goods unless it otherwise describes them. We
find that the term BENEDIKTINER is not descriptive of the purpose of Applicant’s
goods.
4. Applicant’s services in Class 43.
The rationale for the Examining Attorney’s requirement of a disclaimer of
BENEDIKTINER in connection with Applicant’s Class 43 services is that those
services feature Benedictine beers or are provided by a Benedictine monastery or
Benedictine monks. Our analysis set forth above shows that the Examining
Attorney has not demonstrated that BENEDIKTINER is merely descriptive as
applied to beers; accordingly, it does not merely describe beer that is featured in
connection with Applicant’s services. Our analysis also concluded that
BENEDIKTINER is not merely descriptive of the provider of goods that originate in
a Benedictine monastery or with Benedictine monks. By the same logic, it is not

36 Id. at 7.
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merely descriptive of the source of services that are provided by a Benedictine
monastery or by Benedictine monks.
5. Conclusion.
After careful review, we find that the record does not support the Examining
Attorney’s requirement of a disclaimer of the term BENEDIKTINER on the ground
that this term is merely descriptive of the Applicant’s goods and services.
Accordingly, we reverse the Examining Attorney’s refusal of registration. The
disclaimer of WEISSBIER stands as currently set forth in the record.
Decision: The refusal to register is reversed. The Application will proceed
to publication in International Classes 32, 41 and 43.