[00:00:58] Speaker 02:
The next argued case is number 17, 1468, Shafley against the St.

[00:01:04] Speaker 02:
Louis Brewery LLC.

[00:01:07] Speaker 02:
Mr. Shafley.

[00:01:12] Speaker 01:
Thank you, Your Honor.

[00:01:13] Speaker 01:
May it please the court and with me is Appellant Bruce Shafley, who's going to assist me a little bit in argument.

[00:01:20] Speaker 01:
The other appellant

[00:01:21] Speaker 01:
is the Phyllis Schlafly revocable trust.

[00:01:24] Speaker 01:
The case was started while Phyllis Schlafly was still alive, and then we substituted in the revocable trust after she passed away.

[00:01:33] Speaker 01:
The starting point for the issue this morning is the statute.

[00:01:39] Speaker 01:
And the statute expressly says this is section 1052E4 of the Trademark Act.

[00:01:50] Speaker 01:
that a trademark is not allowed when the applied for word, quote, is primarily merely a surname.

[00:02:01] Speaker 01:
And that's what we have at issue this morning, an attempt to obtain a trademark in the word Schlafly by itself, no stylizing, no graphics, just the word Schlafly.

[00:02:17] Speaker 02:
Mr. Schlafly, a lot of time has passed.

[00:02:20] Speaker 02:
There are presumptions of the entitlement to use the mark.

[00:02:25] Speaker 02:
Has it been 20 years?

[00:02:29] Speaker 01:
The applicant has used the mark, Your Honor, for some time.

[00:02:34] Speaker 01:
But that has to be compared to the industry that it's in, whether its use of the mark is significant relative to the industry that it's in.

[00:02:48] Speaker 01:
And that presumption, Your Honor, of use over a particular time was not actually invoked by the board below.

[00:02:57] Speaker 01:
They did not invoke the five-year presumption.

[00:03:01] Speaker 01:
In fact, they disavowed using use for five years.

[00:03:06] Speaker 01:
They said that's not what they're going on.

[00:03:08] Speaker 01:
And our main objection on appeal is that the board below never addressed that threshold question of whether the word

[00:03:18] Speaker 01:
is primarily merely a surname.

[00:03:21] Speaker 01:
And primarily in the statute actually doesn't refer to the use of the term in the marketplace.

[00:03:28] Speaker 01:
It actually refers to the meaning of the word.

[00:03:31] Speaker 01:
Is it in the dictionary?

[00:03:34] Speaker 01:
Was it a surname of a founder, which it was in this case?

[00:03:38] Speaker 01:
That's what primarily means.

[00:03:40] Speaker 01:
And there was a recent decision by the board that I alerted the court to in my 28-J letter written by Susan Hightower.

[00:03:48] Speaker 04:
which really lays out exactly what we felt the board should have done in our case.

[00:04:07] Speaker 04:
I don't think that's right.

[00:04:09] Speaker 04:
I think that the PTAP looked at distinctiveness, found that this was distinctive, and thus didn't have to look at whether this was primarily a surname, because distinctiveness is an exception to whether something is primarily merely a surname.

[00:04:24] Speaker 01:
Yes, Your Honor, that's right.

[00:04:25] Speaker 01:
And what I meant to say is that the PTAP skipped over that threshold

[00:04:30] Speaker 01:
inquiry of whether it's primarily merely a surname and didn't look at that.

[00:04:34] Speaker 04:
But the statute says you can have a trademark on something that's primarily merely a surname except that you can have a trademark if that name has acquired distinctiveness, which means that it didn't have to consider whether it was primarily really a surname because it could look at whether it had acquired distinctiveness.

[00:04:55] Speaker 04:
And I understand you disagree with that.

[00:04:56] Speaker 01:
Your Honor, I respectfully disagree, because as Susan Hightower held in this Olin case, she said that it is well established that those are separate considerations under the Trademark Act, that you first have to determine.

[00:05:16] Speaker 01:
Let's see if I can find it here.

[00:05:21] Speaker 01:
Yeah, it has, in fact, long been established, however,

[00:05:25] Speaker 01:
that whether a mark is primarily merely a surname and whether it has acquired secondary meaning are separate considerations under the Trademark Act.

[00:05:34] Speaker 01:
And the board never looked at that threshold consideration.

[00:05:39] Speaker 01:
And the reason that's so important is because if you don't look at whether it's a surname, then you have nothing to measure secondary meaning against.

[00:05:49] Speaker 01:
The stronger it is as a surname,

[00:05:52] Speaker 01:
The more descriptive an applied form mark is, and that's one of the reasons surnames are not allowed, because they're really descriptive.

[00:05:59] Speaker 01:
The more descriptive a mark is, the greater the burden on the applicant to prove that there's secondary meaning.

[00:06:07] Speaker 01:
So if you have a very strong surname, the applicant has a greater burden to show that there is significant secondary meaning to justify a trademark in that surname.

[00:06:20] Speaker 01:
And yet the board never even addressed whether it's a surname, which it obviously is.

[00:06:27] Speaker 04:
It's not competitive fiction.

[00:06:28] Speaker 04:
Do you think it assumed it's a surname?

[00:06:31] Speaker 04:
Or do you think it just said, well, regardless of whether it's a surname or not, I'm going to move on to the exception?

[00:06:38] Speaker 01:
Well, yeah, that's what they said.

[00:06:40] Speaker 01:
We may not address whether applicant's mark actually is primarily merely a surname.

[00:06:45] Speaker 01:
because the Trademark Act explicitly provides a central mark may be registered if it has acquired distinctiveness.

[00:06:50] Speaker 01:
So you're right.

[00:06:50] Speaker 01:
That's what they did.

[00:06:51] Speaker 01:
We don't need to address it.

[00:06:52] Speaker 01:
But you can't measure the secondary meaning unless you first address whether it's a surname and whether it's a strong surname.

[00:07:02] Speaker 02:
And so what's your response to the five-year presumption?

[00:07:06] Speaker 01:
Yes.

[00:07:07] Speaker 01:
Well, Your Honor, surprisingly,

[00:07:11] Speaker 01:
The board disavowed using that five-year presumption.

[00:07:14] Speaker 01:
That's not what they know.

[00:07:15] Speaker 02:
So what's your response to the five-year presumption?

[00:07:17] Speaker 01:
My response is the five years did not change the public perception as to what that word Schlafly means.

[00:07:29] Speaker 01:
That Schlafly is such a strong surname.

[00:07:32] Speaker 01:
It has historical significance.

[00:07:34] Speaker 01:
There are many figures, in addition to Phyllis Schlafly, who have used that surname,

[00:07:39] Speaker 01:
that the five years of use by the applicant in the beer industry, where $200 billion a year are spent just in advertising, the beer industry, the applicant is just a drop in the bucket.

[00:07:54] Speaker 01:
And they never move the public perception.

[00:07:57] Speaker 01:
And that's the critical test.

[00:08:00] Speaker 01:
Did the public perception of this word change a little bit because of applicants' activities?

[00:08:08] Speaker 01:
And there's no evidence that it did.

[00:08:11] Speaker 01:
If we were to look in a dictionary today, if we were looking at a dictionary 30 years from now, and we looked up the word Schlafly, we're not going to find its meaning as beer.

[00:08:22] Speaker 01:
It's not going to be there.

[00:08:23] Speaker 01:
No one is going to think Schlafly means beer.

[00:08:27] Speaker 01:
And that's another point that the board missed, is that even though applicant has used Schlafly in its products, when the use of the word

[00:08:38] Speaker 01:
is as a surname, that doesn't get them the trademark.

[00:08:42] Speaker 01:
It's still a surname.

[00:08:44] Speaker 01:
It's a surname that they've put on beer bottles.

[00:08:47] Speaker 01:
But it's still a surname.

[00:08:49] Speaker 01:
They haven't shifted the perception where when someone says Schlafly, there are people who think beer.

[00:08:58] Speaker 01:
That's a bottle of beer.

[00:09:00] Speaker 01:
No, people still think Schlafly is somebody's name.

[00:09:05] Speaker 01:
It's difficult to spell.

[00:09:07] Speaker 01:
It's difficult to pronounce.

[00:09:08] Speaker 01:
I can speak to that personally.

[00:09:10] Speaker 01:
It has a look and feel of a surname.

[00:09:15] Speaker 01:
It's the surname of the co-founder of Applicant.

[00:09:17] Speaker 01:
That never changed.

[00:09:18] Speaker 01:
And nothing the board cites here even addresses the issue of whether public perception has changed to think that Schlafly means beer rather than somebody's surname.

[00:09:32] Speaker 01:
And some of the things they cite here

[00:09:35] Speaker 01:
They cite attempts.

[00:09:37] Speaker 01:
They cite attempts to change it.

[00:09:39] Speaker 01:
They cite public relations effort.

[00:09:41] Speaker 01:
Here we go on page 15 of their decision.

[00:09:44] Speaker 01:
They say, well, Playboy referred to Schlafly as beer.

[00:09:48] Speaker 03:
USA Today and Washington Post and The Wall Street Journal, right?

[00:09:51] Speaker 01:
Right.

[00:09:52] Speaker 01:
Referred to it as Schlafly.

[00:09:54] Speaker 01:
But that doesn't mean public perception has changed.

[00:09:58] Speaker 01:
That just means there's some public relations effort.

[00:10:01] Speaker 01:
It's like a candidate running for office.

[00:10:04] Speaker 01:
And this is where the dollars come in.

[00:10:05] Speaker 01:
Because the way the board opinion is written, they say, well, they spent money doing this.

[00:10:12] Speaker 01:
Well, suppose someone said he spent $2 million running for public office.

[00:10:18] Speaker 01:
That's a lot of money.

[00:10:19] Speaker 04:
What about the statement in the opinion in appendix 21, where it says, the evidence shows that a segment of the public

[00:10:26] Speaker 04:
has taken note of applicants' goods under its mark and would view the designation Shaffley as an indicator of the source thereof, the goods being the Shaffley beer.

[00:10:37] Speaker 01:
Right.

[00:10:37] Speaker 04:
Would you contest that?

[00:10:40] Speaker 01:
I do.

[00:10:41] Speaker 01:
There's no evidence that a segment of the public has shifted its perception of that word away from it as a surname.

[00:10:50] Speaker 01:
There's no evidence at all and the board doesn't sign any of it.

[00:10:54] Speaker 01:
There's just, there hasn't been that shit.

[00:10:56] Speaker 01:
It can't be.

[00:10:56] Speaker 01:
I mean, they'd have to spend billions of dollars to change that public perception.

[00:11:01] Speaker 01:
And it still may not change.

[00:11:02] Speaker 01:
I mean, who would, it's just, you know, Schlath is obviously asserting.

[00:11:09] Speaker 01:
It's obvious.

[00:11:09] Speaker 01:
And they can't, so we had the case by the circuit in Earnhardt recently, which I cited in my 28-J letter.

[00:11:15] Speaker 01:
He's the famous race car driver, Dale Earnhardt.

[00:11:19] Speaker 01:
And they're trying to trademark Earnhardt collection.

[00:11:23] Speaker 01:
And this circuit said, wait a minute.

[00:11:27] Speaker 01:
Ehrenhardt Collection is primarily merely a surname.

[00:11:30] Speaker 01:
Not only is Ehrenhardt primarily merely a surname, but even Ehrenhardt Collection is primarily merely a surname.

[00:11:37] Speaker 01:
You can't do it under federal law.

[00:11:38] Speaker 01:
And so I'm urging some fidelity to the statute, which as the Ehrenhardt decision says, there's a good reason for this.

[00:11:51] Speaker 01:
Anyone who has his name should be able to go into business, should be able to start a restaurant, Schlafly Restaurant, without having a beer company, which may be owned by someone else at that point, come in and say, you can't call your restaurant Schlafly Restaurant because we own a trademark in Schlafly.

[00:12:10] Speaker 01:
There's a strong public interest.

[00:12:12] Speaker 01:
It goes back a long time.

[00:12:13] Speaker 04:
What about the fact that the goods that are designated for the trademark are limited to, if I remember this correctly, they're limited to beer and beer production.

[00:12:25] Speaker 04:
I could look it up specifically.

[00:12:27] Speaker 01:
That's right.

[00:12:27] Speaker 01:
That's the category.

[00:12:28] Speaker 01:
You're right, Your Honor.

[00:12:29] Speaker 01:
That's the category of beer and, you know, ale and all that stuff.

[00:12:33] Speaker 01:
However, I'm confident that they would come in and protest Schlafly Restaurant.

[00:12:39] Speaker 04:
On the basis of likelihood of confusion.

[00:12:42] Speaker 01:
Or just using the mark.

[00:12:43] Speaker 01:
I mean, a restaurant could serve beer.

[00:12:46] Speaker 01:
They could object historical uses of Schlafly.

[00:12:50] Speaker 01:
And once you get that trademark in a name, then they've got the full power of the Lanham Act behind them.

[00:12:57] Speaker 02:
They already have the common law trademark.

[00:13:00] Speaker 01:
They do, Your Honor, but they don't have that full power of the federal law behind them, where they go into federal court and they get attorney's fees and damages and all the presumptions that go with that.

[00:13:11] Speaker 02:
The presumption is that after five years, there is a great burden.

[00:13:18] Speaker 02:
This is the difficult part, I believe.

[00:13:22] Speaker 02:
Here it is, 20 years without objection.

[00:13:25] Speaker 01:
Well, we don't object to their using the name.

[00:13:28] Speaker 01:
We object to their getting a federal trademark and all that apparatus of the Lanham Act.

[00:13:34] Speaker 01:
Powerful.

[00:13:35] Speaker 01:
Very powerful.

[00:13:35] Speaker 01:
You know, injunctions and all that stuff.

[00:13:37] Speaker 01:
That's what we object to.

[00:13:38] Speaker 01:
We don't object to their username.

[00:13:39] Speaker 01:
We don't object to their trademarking Schlafly beer, the actual products they use.

[00:13:44] Speaker 01:
And that's an irony in this case.

[00:13:46] Speaker 01:
They can protect everything they need to protect by getting other names.

[00:13:50] Speaker 01:
And they have gotten some other trademarks using Schlafly.

[00:13:53] Speaker 01:
But to just get a trademark in that surname, that is going to put in jeopardy all other uses and businesses that use that surname, Schlafly Restaurant, potentially even historical uses of Schlafly Library.

[00:14:09] Speaker 01:
potential.

[00:14:10] Speaker 01:
I mean, all that becomes, there's a cloud now hanging over that, whether other people can properly use that, or use their own name, future Schlaflys, whether they can open their own business using their own name, because there's that trademark in Schlafly.

[00:14:24] Speaker 01:
And that's why that federal statute is there, I submit.

[00:14:27] Speaker 01:
I'd like to reserve the rest of my time for a little bit.

[00:14:29] Speaker 02:
OK.

[00:14:29] Speaker 02:
Thank you, Mr. Schlafly.

[00:14:31] Speaker 02:
Thank you.

[00:14:37] Speaker 00:
Thank you, Your Honor.

[00:14:38] Speaker 00:
Your Honor, my name is Mark Sowers.

[00:14:40] Speaker 00:
I am here representing Pelley the applicant, St.

[00:14:43] Speaker 00:
Louis Brewery LLC.

[00:14:45] Speaker 00:
The board's finding that Applicant's Mark Schlafly has acquired distinctiveness is supported by substantial evidence in the record.

[00:14:53] Speaker 00:
In fact, applicants submitted considerable evidence of acquired distinctiveness before the board in this proceeding.

[00:14:59] Speaker 00:
The board, in its decision determining that Applicant's Mark had acquired distinctiveness, spent almost seven pages detailing and

[00:15:07] Speaker 00:
going through all of the evidence applicants submitted with respect to the acquired distinctiveness of the term Schlafly with respect to beer.

[00:15:14] Speaker 00:
Again, some of this evidence is traditional evidence from which courts generally can find acquired distinctiveness, the length of use, quantity of sales, advertising expenditures, et cetera.

[00:15:25] Speaker 00:
But importantly, applicant in this case also submitted context for the use of applicant's mark.

[00:15:32] Speaker 00:
For instance, in this particular case,

[00:15:34] Speaker 00:
The board cited to the fact that applicant had continuous exclusive use of the mark for 20 years.

[00:15:39] Speaker 00:
Not even substantially exclusive use.

[00:15:40] Speaker 00:
There's no evidence that anybody else anywhere used the term Schlafly related to beer or related products.

[00:15:45] Speaker 00:
Applicant uses its mark and its beer products are sold in over 14,000 different retail establishments in 15 states and the District of Columbia.

[00:15:54] Speaker 00:
This includes places such as Walmart, Sam's, Costco, Target, and other large national retailers.

[00:15:59] Speaker 00:
It's sold in national restaurant chains, Chili's, Applebee's,

[00:16:03] Speaker 00:
Buffalo Wild Wings is sold in different sports stadiums in the Midwest.

[00:16:07] Speaker 00:
In addition, the board noted that applicant did have substantial sales in terms of revenue from 1999 through 2015.

[00:16:13] Speaker 00:
It also noted that applicant had over $1.1 million of advertising expenditures from 2009 to 2014.

[00:16:24] Speaker 00:
Importantly, the board noted the quantity of sales was substantial in this case as well.

[00:16:27] Speaker 00:
Applicant's evidence shows that from 2009 through 2014, it had over 75 million individual servings of its Schlafly brand beer sold in the United States.

[00:16:38] Speaker 00:
This includes over 16 million in 2013 and 2014 alone.

[00:16:41] Speaker 00:
And this evidence is particularly compelling when the court reviews in context of how applicant brands and promotes its products.

[00:16:51] Speaker 00:
The applicant made a decision many years ago to focus on the term Schlafly for its products.

[00:16:54] Speaker 00:
Applicant sells over 60 different varieties of beer.

[00:16:58] Speaker 00:
And as opposed to many breweries which have a particular trade name or arbitrary name or fainseful name for each individual variety, Schlafly only uses the term Schlafly with each variety.

[00:17:09] Speaker 00:
So whether it's a pale ale or a pumpkin's ale or hefeweizen, it's Schlafly pale ale, Schlafly hefeweizen, Schlafly pumpkin ale.

[00:17:17] Speaker 00:
And why that's significant with respect to individual servings is because when a consumer goes in and wants to order a Schlafly brand product,

[00:17:24] Speaker 00:
They can't simply order pale ale.

[00:17:25] Speaker 00:
They actually have to use and say, I'd like a Schlafly pale ale.

[00:17:29] Speaker 00:
I'd like a Schlafly hefeweizen, et cetera.

[00:17:32] Speaker 00:
In addition, as the evidence that was submitted of record shows, not only do consumers have to actually use the trademark Schlafly in order to order one of these 75 million individual samples, but when they receive it at the store or in their six pack or in their can or bottles, the term Schlafly is prominently displayed on the six packs, on the labels, on the can, on the bottle caps, and in fact,

[00:17:53] Speaker 00:
applicant developed its own font, just for the term Schlafly, because it knew that in order to compete in this market, in order to garner consumer recognition of its name, it had to focus solely on developing acquired distinctness in that term Schlafly.

[00:18:06] Speaker 00:
So it's always been held apart and distinct from any other font, and they've always promoted that word Schlafly, that trademark, in order to sell and promote its products.

[00:18:15] Speaker 00:
In addition to that evidence, applicants submitted, again, quite a bit of evidence of third party

[00:18:20] Speaker 00:
recognition of its mark.

[00:18:22] Speaker 00:
And this third-party recognition includes wards, but it also includes unsolicited media recognition.

[00:18:27] Speaker 00:
Again, as the court has noted, in major national publications, The Wall Street Journal, The Washington Post, USA Today, Men's Journal, Atlantic, Esquire, etc.

[00:18:37] Speaker 00:
And significantly, and the board took note of this, in many of these third-party references to not only Schlafly Beer, but also to the applicant, applicants

[00:18:49] Speaker 00:
mark is so strong, actually, that parties conflate the applicant with its trademark.

[00:18:53] Speaker 00:
In fact, in 237, 238 of the appendix, which is the list of the top 50 breweries in the United States from 2012, so this is all the way back in 2012, the Brewers Association describes the applicant as the St.

[00:19:07] Speaker 00:
Louis Brewery slash Schlafly Beer.

[00:19:09] Speaker 00:
In fact, it's the only brewery on that list where they actually use the trademark to describe the applicant or the source of the actual beer.

[00:19:18] Speaker 00:
And so that evidence alone is sufficient for the board to find that applicant's mark has acquired distinctiveness.

[00:19:28] Speaker 00:
The opposer in this case, and he's made several allegations that the board's findings were without any evidence of public or consumer recognition of the mark.

[00:19:38] Speaker 00:
Of course, the board considered that argument in its ruling on the request for reconsideration and determined that, indeed, it was not well taken.

[00:19:45] Speaker 00:
I think what the applicant's missing is that Section 2F, which is indeed the governing statute, which determines whether or not applicant is entitled to registration of its mark, whether it's acquired distinctiveness, doesn't mention any type of evidence.

[00:19:58] Speaker 00:
In fact, it simply says that use of five years may constitute prime official evidence of acquired distinctiveness.

[00:20:06] Speaker 00:
This court has expounded on that particular standard.

[00:20:08] Speaker 00:
And Yamaha v. Oshino, where it basically said that,

[00:20:11] Speaker 00:
In order to prove acquired distinctiveness, an applicant can submit any evidence tending to show a mark distinguishes applicants' goods.

[00:20:20] Speaker 00:
Of course, this principle is expounded upon by this court in Coach Services v. Triumph.

[00:20:26] Speaker 00:
There, the court lists some traditional evidence which may be considered in order to determine whether a mark is acquired distinctiveness.

[00:20:32] Speaker 00:
That's advertising expenditures, sales success, length of use, unsolicited media coverage.

[00:20:37] Speaker 00:
And all of this is exactly what applicants submitted before the board, and it's exactly what the board relied upon

[00:20:41] Speaker 00:
in order to find acquired distinctiveness.

[00:20:45] Speaker 00:
Opposer, in its brief, also makes the allegation and the assertion that in order to find acquired distinctiveness, the applicant was required to submit consumer service.

[00:20:55] Speaker 00:
That clearly is not the law.

[00:20:56] Speaker 00:
In fact, in Yamaha, this court explicitly says as much and says that consumer service are not required to find acquired distinctiveness.

[00:21:05] Speaker 00:
Much of the opposed arguments seem to conflate the issue of actual evidence with whether it's direct or circumstantial evidence.

[00:21:14] Speaker 00:
Any actual evidence of acquired distinctiveness is just evidence which would show or which is probative of whether applicants' mark has indeed acquired distinctiveness.

[00:21:23] Speaker 00:
And then actual evidence can be separated into circumstantial evidence or direct evidence.

[00:21:28] Speaker 00:
In this case, there's no question that applicants submitted a lot of circumstantial evidence from which the court can then

[00:21:34] Speaker 00:
that applicant's mark has become a source indicator for its products.

[00:21:38] Speaker 00:
In Tone Brothers, this court has found that circumstantial evidence alone is sufficient in order to find acquired distinctiveness.

[00:21:46] Speaker 00:
However, applicant also did submit direct evidence.

[00:21:48] Speaker 00:
And as the board noted, the direct evidence is all of the unsolicited third party references to applicant's mark.

[00:21:57] Speaker 00:
Finally, I would submit to the court that the board did not need to determine whether or not applicant's mark was primarily merely a surname.

[00:22:04] Speaker 00:
It was not required.

[00:22:05] Speaker 00:
The board did find that it had acquired distinctiveness.

[00:22:08] Speaker 00:
And therefore, that analysis was not appropriate.

[00:22:10] Speaker 00:
In addition, applicant's mark was, when it was filed, was submitted under a claim of 2f in any event, which again would obviate the requirement that this court or the board would need to first determine whether or not a mark is asserting before moving on to acquire distinctiveness.

[00:22:27] Speaker 00:
I would reject the posers' assertion that the recent case

[00:22:32] Speaker 00:
Olin case makes any such requirement that you first must determine whether a mark is a surname and then determine whether it's acquired distinctive.

[00:22:39] Speaker 00:
That's not what that court holds.

[00:22:40] Speaker 00:
It just simply went through the surname requirement or the surname analysis and found that since Olin was a surname, the only way that the applicant was entitled to registration was if it proved acquired distinctiveness.

[00:22:50] Speaker 00:
That's all that case stands for.

[00:22:53] Speaker 00:
We certainly don't dispute that whether a mark is a surname or a term is a surname and whether a term has acquired distinctiveness is two different

[00:23:01] Speaker 00:
analysis, of course, that is completely separate analysis under the statute in the Lanham Act.

[00:23:08] Speaker 00:
With respect to the allegation that the court then had to determine some level of descriptiveness of the mark, this is one area where I believe that the descriptiveness analogy that we typically apply to certain marks kind of breaks down.

[00:23:23] Speaker 00:
Traditional descriptive marks are marks in which the term immediately conveys some

[00:23:29] Speaker 00:
characteristic or quality of the underlying product to consumers.

[00:23:32] Speaker 00:
That's not what we have in surname.

[00:23:34] Speaker 00:
Surnames, the prohibition against surnames in part is not based upon the fact that the surname conveys some immediate quality or characteristic of the product.

[00:23:43] Speaker 00:
And surname registrations, it's because a consumer would not immediately identify the term with a single source of the product.

[00:23:51] Speaker 00:
It would immediately identify the term as a surname.

[00:23:55] Speaker 00:
And so what's really about is whether or not the consumer's recognition of a surname would interfere with the mark's ability to acquire distinctiveness.

[00:24:05] Speaker 00:
And in this particular instance, the board did indeed consider the relative notoriety or prominence, to the extent it exists, of opposer surnames.

[00:24:16] Speaker 00:
And in fact, in page 24 of the appendix and the last page of the board's decision, it acknowledged the fact that to the extent there is any

[00:24:25] Speaker 00:
relative notoriety or prominence of the name Schlafly, there was simply no evidence of record that that prominence or notoriety impacted at all applicants' ability to acquire distinctiveness for the mark.

[00:24:37] Speaker 00:
So to the extent that this analysis or allegation that you must first determine the level of descriptiveness for the mark and then move on to determine whether it's quite distinct, it breaks down in the Saram context.

[00:24:50] Speaker 00:
I think functionally, the court did that exact analysis and determined whether or not the prominence of the Schlafly surname impacted or interfered with the applicant's ability to acquire distinctiveness.

[00:25:02] Speaker 00:
The court determined no, it certainly did not.

[00:25:05] Speaker 00:
So in closing, I would suggest to the court that the board has relied on more than enough evidence in order for the court to uphold its finding that applicants' markets acquired distinctiveness.

[00:25:18] Speaker 00:
I don't believe there's any requirement under the Lanham Act nor under the relevant case law that the court must first determine whether or not the mark determines the surname before moving on to acquire distinctness.

[00:25:27] Speaker 00:
And again, to the extent that there would be some requirement that the court determine the level of descriptiveness, I think the court functionally did that exact analysis by comparing and determining whether or not the alleged notoriety of individual to the surname Schlafly had interfered in any way with applicants' acquired distinctness of the mark.

[00:25:49] Speaker 02:
Any questions?

[00:25:52] Speaker 02:
Thank you.

[00:25:58] Speaker 01:
Thank you.

[00:25:58] Speaker 01:
As to the five-year use, it was not used below.

[00:26:01] Speaker 01:
I mean, that's an evidentiary standard that the director may look to five-year use and consider that climate-facing evidence.

[00:26:10] Speaker 01:
The director did not do that, and the board did not do that.

[00:26:13] Speaker 01:
So I think the five years, because that's an evidentiary issue, would not be considered by this court.

[00:26:20] Speaker 02:
So Mr. Shatley, you said you have no objection to the continued use of the mark for these products?

[00:26:29] Speaker 01:
That's right.

[00:26:30] Speaker 01:
But we do object to their getting a trademark, because that trademark will prevent.

[00:26:35] Speaker 02:
Well, that's really what you're objecting to their acquiring the legal rights that go with federal registration.

[00:26:46] Speaker 02:
Right.

[00:26:46] Speaker 02:
Is that right?

[00:26:47] Speaker 02:
What is the standing to

[00:26:49] Speaker 02:
raise that issue that some total stranger can't acquire legal rights.

[00:26:57] Speaker 02:
I hadn't seen in your briefs any statement of injury to the family by these legal rights.

[00:27:05] Speaker 02:
What is the objection?

[00:27:06] Speaker 01:
Well, of course, they haven't gotten it yet.

[00:27:08] Speaker 01:
We've objected, and they haven't gotten the federal trademark yet.

[00:27:11] Speaker 01:
But the board did address standing at length.

[00:27:13] Speaker 01:
And the standing would be if Bruce Schlafly wanted to start Schlafly Restaurant.

[00:27:19] Speaker 01:
He wouldn't be able to do that.

[00:27:20] Speaker 02:
He'd have a federal... You're objecting to something that hasn't yet happened?

[00:27:24] Speaker 01:
Well, I haven't gotten the trademark yet.

[00:27:26] Speaker 02:
And what about this trademark would inhibit someone else from opening a restaurant with or without this trademark?

[00:27:37] Speaker 02:
I need to understand just your standing to come into court and say, I object to someone else, total stranger.

[00:27:45] Speaker 02:
We happen to have the same name.

[00:27:47] Speaker 02:
We happen to be related.

[00:27:49] Speaker 02:
acquiring a legal right.

[00:27:52] Speaker 01:
Because that legal right is very powerful.

[00:27:54] Speaker 01:
For Bruce Schlafly to open a Schlafly restaurant, he would be taking... It's the goods are identified in the registration.

[00:28:03] Speaker 02:
I didn't see that they mentioned restaurants.

[00:28:05] Speaker 01:
No, but those goods are not, they're not limited to those goods when they use the full power of the Lanham Act to enforce their trademark rights.

[00:28:13] Speaker 01:
They're not limited to those goods.

[00:28:15] Speaker 01:
And they can come down... Are you sure?

[00:28:16] Speaker 01:
Oh, absolutely, yeah.

[00:28:17] Speaker 01:
They could come down against someone who opened Schlafly Restaurant and sue them for trademark violations.

[00:28:23] Speaker 01:
And they're very powerful.

[00:28:25] Speaker 02:
And so what is the standing of family members to come into court and object to things that haven't yet happened?

[00:28:37] Speaker 01:
Well, I mean, they haven't gotten the trademark yet.

[00:28:42] Speaker 01:
We have to object.

[00:28:43] Speaker 01:
I mean, we have to object, or we're going to waive it.

[00:28:44] Speaker 01:
The way the law works is if we don't raise our objection during that notice period, if we don't object to their getting the registration, we waive our rights to it.

[00:28:52] Speaker 01:
So we have to.

[00:28:53] Speaker 04:
Would you have Article III standing?

[00:28:54] Speaker 04:
Maybe it would be standing before the trademark office.

[00:28:58] Speaker 04:
Right.

[00:28:59] Speaker 04:
But would you have Article III standing before this court?

[00:29:03] Speaker 01:
We do, Your Honor, because when the trademark office rejected our opposition, we took it up on appeal.

[00:29:09] Speaker 01:
And then we got a decision.

[00:29:11] Speaker 01:
on appeal by the board that is unappealable to this court.

[00:29:15] Speaker 01:
So we do have jurisdiction in standing because we're appealing.

[00:29:18] Speaker 02:
That's the administrative agency does provide for oppositions, absolutely, without some but to try and understand the relief that you are requesting when you say you have no objection to their continuing to use the mark nationwide.

[00:29:37] Speaker 02:
And if I recall correctly, every state has a state trademark.

[00:29:44] Speaker 02:
Well, I think every state, certainly the major states, which would nonetheless provide the same rights within the state that you say you're objecting to.

[00:29:58] Speaker 01:
But Your Honor, they don't use the word by itself.

[00:30:01] Speaker 01:
I mean, what they've applied for with this trademark is a reach.

[00:30:06] Speaker 01:
So we have no objection to their selling Schlafly beer, Schlafly pale ale.

[00:30:12] Speaker 01:
They're products that have Schlafly in their name.

[00:30:15] Speaker 01:
But that's not what they're applying for.

[00:30:17] Speaker 01:
They're applying for Schlafly.

[00:30:18] Speaker 01:
It'd be as if they applied for trademark install, or Newman, or Mayer.

[00:30:23] Speaker 02:
For the specified goods in which they have shown that it has been in use for 20 years.

[00:30:31] Speaker 01:
enforcement of that is not limited to their specified use.

[00:30:35] Speaker 01:
That classification is just for education or whatever.

[00:30:42] Speaker 01:
They're not limited to their enforcement to those classifications.

[00:30:44] Speaker 01:
And I want to say that nearly everything my opposing counsel said here would apply to all these cases that involve surnames.

[00:30:54] Speaker 01:
It might apply to Earhart Collection five years from now or whatever.

[00:30:58] Speaker 01:
It certainly applied to the Olin Corporation

[00:31:00] Speaker 01:
The Olin Corporation has been using Olin for 100 years.

[00:31:04] Speaker 01:
And Susan Hightower said, no, it's a surname.

[00:31:08] Speaker 01:
You cannot get a trademark in Olin because it's a surname.

[00:31:11] Speaker 01:
Olin Corporation, it's a publicly traded corporation.

[00:31:14] Speaker 01:
They've been using Olin for 100 years.

[00:31:17] Speaker 01:
She looked at it.

[00:31:17] Speaker 01:
She said, well, that's a surname.

[00:31:20] Speaker 01:
You're not going to get the trademark in it.

[00:31:21] Speaker 01:
McDonald's, I believe there's a case that Susan Hightower cited about McDonald's where the board said, you're not getting a trademark in McDonald's.

[00:31:30] Speaker 01:
McDonald's Corporation could not get a trademark in the word McDonald's.

[00:31:34] Speaker 04:
So Susan Hightower, you mean Judge Hightower?

[00:31:36] Speaker 01:
Yeah, she's on the board.

[00:31:39] Speaker 01:
She wrote this Olin decision.

[00:31:40] Speaker 01:
And this is what we feel the board should have done in our case.

[00:31:45] Speaker 01:
This is the analysis that we feel the board should have done.

[00:31:48] Speaker 01:
And it didn't do.

[00:31:49] Speaker 01:
And we feel it was reversible error for the board to jump over the question of whether it's primarily merely a surname.

[00:31:59] Speaker 01:
and go into this talk about how much they've spent, I mean, realize the beer industry is a $200 billion just in advertising industry.

[00:32:11] Speaker 01:
So all this talk, they're opposing Council stuff here, and they've done this, and they spent a little bit here.

[00:32:17] Speaker 01:
Realize, you've got to measure that against $200 billion.

[00:32:20] Speaker 01:
And it's nothing.

[00:32:22] Speaker 01:
It's nothing.

[00:32:22] Speaker 01:
I mean, in 10 years, nobody may even know that Schlafly's

[00:32:28] Speaker 01:
Nobody may know Schlafly is in the beer business, but they'll still have that trademark.

[00:32:32] Speaker 01:
If you grant them that trademark, they will have that trademark in Schlafly.

[00:32:36] Speaker 01:
And they can stamp out any use by anyone who's just in good faith going into business for themselves, opening a restaurant, donating to a library, whatever.

[00:32:48] Speaker 01:
They will have that trademark to come down hard on any other Schlafly who wants to use their certainly.

[00:32:56] Speaker 02:
Thank you.

[00:32:58] Speaker 02:
Thank you both.

[00:32:58] Speaker 02:
The case is taken under the submission.