DANK found to be merely descriptive, brewery denied trademark registration. IN RE SWEETWATER

DANK found to be merely descriptive, brewery denied trademark registration. IN RE SWEETWATER

A trademark is a 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 a 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 the association consumer 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 descriptive trademark identifies a characteristic or quality of the service or product.  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 refuses to register a trademark because it is merely descriptive, than the trademark applicant can request registration on the Supplemental Trademark Register.

How can a trademark applicant overcome a refusal to register a trademark the United States Patent and Trademark Office deems merely descriptive?  With evidence of secondary meaning which demonstrates the trademark has acquired distinctiveness.

IN RE SWEETWATER BREWING CO, LLC, Serial No. 87772674 (TTAB 2021) is an example of a trademark application which was denied becase a term was found to be merely descriptive.

This case begins January 26, 2018 with Application Serial No. 87772674 for DANK TANK filed for Ale and Beer, in International Class 32..  The application claimed a first use of the trademark in 2015.

The Trademark Examining Attorney refused registration of Applicant’s mark for failure to comply with a disclaimer requirement, under Sections 2(e)(1) and 6(a) of the Trademark Act, for the wording “DANK”.  The examining attorney found that “DANK” merely describes a feature, purpose or characteristic of Applicant’s products.  Specifically the examining attorney the found that when used in connection with beer, the term DANK means ‘sticky, juicy, very pungent and of a high level’ and ‘very hoppy, cloudy IPAs with high alcohol content and flavors with a very funky taste.’ The case was appealed to the Trademark Trial and Appeal Board.

The TTAB noted that an applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services in the marketplace.  Whether a mark is merely descriptive must be made in relation to the goods for which registration is sought, not in the abstract or on the basis of guesswork.  Evidence submitted to the TTAB showed the term “DANK” being used by multiple third-parties involved in promoting and reviewing products in the ale and beer industry, on their websites and in online articles directed to potential customers, to descriptively refer to the taste of certain ales and beers.

Applicant argued that ‘DANK TANK’ was suggestive because customers must apply multiple mental steps, first associating the term ‘tank’ with a beverage and then associating the unitary mark ‘DANK TANK’ with a particular beverage (beer, ale).  The TTAB found that the evidence submitted indicated that the public considered DANK a description of flavors and aromas.

The TTAB affirmed the refusal however if the applicant filed a disclaimer of the term DANK, as originally requested by the examining attorney, the application would proceed to publication.

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