BREW SCIENCE deemed too descriptive for trademark protection. IN RE COLES

A trademark is something that a manufacturer uses to signal to consumers that the manufacturer is the source of a product. A trademark is traditionally a symbol, word or phrase, but a trademark can also be a color, sound or smell. If something creates an association in the mind of a consumer between a product and the identity of the manufacturer of the product, that can be considered a trademark. Trademark law in the United States is a hybrid of state and federal laws. A trademark owner can register their trademark with the United States Patent and Trademark Office to strengthen their trademark, but registration is not required to start using a trademark to brand goods.

The value and strength of a trademark is measured by the association consumers make between products branded trademark and the company which produced those products. Trademark law only offers protection to distinctive trademarks, that is, trademarks that serve the purpose of identifying the source of the goods or services. The trademarks that are the most distinctive are arbitrary or fantastical trademarks that have nothing to do with the products, like Apple for computers or Kodak for cameras. Suggestive trademarks may refer to a characteristic of a product, but require some imagination to make the connection between the trademark and the product, like Penguin for a refrigerator. Generic trademarks are trademarks that have become synonymous with a product and cannot be protected by trademark law.

A fifth class of trademarks are descriptive trademarks. A term is merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used. A descriptive trademark may be registered on the Principal Trademark Register of the United States Patent and Trademark Office, only if it has acquired secondary meaning. If the United States Patent and Trademark Office determines that a trademark is merely descriptive, it will be refused registration on the Principal Trademark Register.

IN RE: CHRISTOPHER COLES, 2020-1236 (C.A.F.C. 2020) is an example of a case where a trademark was found to be merely descriptive.

On August 16, 2017, Coles filed an application to register “BREW SCIENCE” on the principal register. The application was for entertainment services, namely, on-line nondownloadable videos, in the field of beer, beer accessories and the beer industry.

After several office actions the examining attorney rejected the application on the grounds that “BREW SCIENCE” was merely descriptive. The examining attorney cited several pieces of evidence to establish the rejection. She presented the dictionary definitions of “brew” and “science,” numerous online sources using the phrase, and statements on Coles’ website describing the videos as relating to “science type stuff.”

The rejection was appealed to the Trademark Trial and Appeal Board who affirmed the rejection. The Board found that the evidence tended to show that “brew science” is used in the beer industry to discuss beer knowledge which was the topic of Coles’ videos. Coles then appealed to the Court of Appeals for the Federal Circuit.

On appeal Coles argued that several trademarks containing the term “science” have been registered in the past for entertainment services, therefore “science” is not descriptive. The Federal Circuit noted that the Board cited numerous other parties using the term “brew science.” Moreover, Coles’ own website clearly describes his videos as relating to the knowledge of beer. A list of other trademarks that contain the term “science” does not overcome the substantial evidence cited by the board because there is no basis to assume that those trademarks are inherently distinctive. Because the Board’s conclusion was supported by substantial evidence the Federal Circuit affirmed the rejection.

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