IP Law Daily, TRADEMARK—Fed. Cir.: BREW SCIENCE mark for entertainment services not registerable, (Dec 11, 2020)

By Thomas K. Lauletta, J.D.

A trademark may not be merely descriptive of its identified services.

The U.S. Court of Appeals for the Federal Circuit in a nonprecedential decision has upheld as supported by substantial evidence the Trademark Trial and Appeal Board decision that refused to register appellant Coles’ BREW SCIENCE mark. The refusal was based on the conclusion that the proposed mark was descriptive of the services identified in the trademark application and that consumers would understand BREW SCIENCE as describing a body of knowledge about beer and preparing beer (In re Coles, December 11, 2020, O'Malley, K.).

On August 16, 2017, Coles filed an application seeking registration on the principal register of "BREW SCIENCE." He identified the services as:

Entertainment services, namely, on-line non-downloadable videos, in the field of beer, beer accessories and the beer industry; provision of entertainment, namely, on-line non- downloadable videos concerning beer, beer accessories and the beer industry.

Responding to the Examining Attorney’s refusal to register the proposed mark, Coles pointed to videos posted on his website demonstrating his video services as "comedic in nature and not scientific . . . playful and fanciful in the context of its services." The Board upheld the Examining Attorney’s refusal, holding that the proposed mark BREW SCIENCE was merely descriptive of a body of knowledge about beer and brewing beer. Although Cole argued that his use of "science" in his videos was intended to be comedic, this did not, the Board concluded, overcome the fact that the proposed mark’s specified services was not limited in the manner suggested by Cole.

Citing numerous online sources, the Board noted that the term "brew science" was used in the beer industry, by home brewers, educational institutions, and on websites in discussing beer, including the brewing of beer. Accordingly, the Board concluded that consumers would understand BREW SCIENCE as a body of knowledge about beer and beer making.

The appeal. Cole appealed the Board’s decision on the ground that it did not have substantial evidence that his proposed mark was merely descriptive of his identified services under the Lanham Act (15 U.S.C. § 1052(e)(1)). The Federal Circuit disagreed, concluding that substantial evidence supported the Board’s conclusion that "brew" refers to beer, and "science" generally refers to "a systematic method or body of knowledge in a given area." The Board’s holding was supported by multiple dictionary and website uses of the terms. When combined, these terms retained their descriptive significance within the field of beer and beer making. Thus, BEER SCIENCE was merely descriptive of the services described the registration application and the Board’s refusal to register was affirmed.

This case is No. 20-1236.

Attorneys: Kerry Ann Brennan (Brennan Law Firm PLLC) for Christopher Coles. Daniel Kazhdan for the USPTO.

Cases: Trademark FedCirNews GCNNews