Schlafly Wins and Loses at Federal Circuit — You may Register a Distinctive Surname

by Dennis Crouch

Bruce Schlafly v. St. Louis Brewery (Fed. Cir. 2018)

Thomas Schlafly started the St. Louis Brewery and began selling SCHLAFLY beer in 1991.  When the company finally got around to registering the mark in 2011, some of his relatives opposed the registration. Thomas’s aunt, Phyllis Schlafly (now deceased) and her son Bruce Schlafly both filed oppositions.  Andrew Schlafly (another son of Phyllis) was the lawyer for her case.

The opposition here focused on the Phyllis Schlafly brand — arguing that  “the
surname Schlafly is primarily associated in the minds of the public with Phyllis Schlafly and the traditional values that she represented.”  Phyllis Schlafly was a conservative activist who opposed the Equal Rights Amendment, rejected the idea of “marital rape” (“by getting married, the woman has consented to sex”), and co-wrote the ABA’s influential Red-Scare guide to  “Communist Tactics, Strategy, and Objectives.” [PDF of Guide: CSTO]

In the opposition proceedings, the TTAB sided with St. Louis Brewery — finding that the mark had acquired distinctiveness and that there was no evidence of “market proximity” between the beer and Schlafly’s political work.

Of importance to the appeal — Section 2(e)(4) of the Lanham Act prohibts registration of a mark that “is primarily merely a surname.” On appeal, the Federal Circuit affirmed the registration — holding that the distinctiveness test is appropriate even for words that primarily known as surnames:

No law or precedent suggests that surnames cannot be registered as trademarks if they have acquired distinctiveness in trademark use. Because the Board found that the SCHLAFLY mark for beers had acquired secondary meaning, Section 1052(e)(4) did not bar the registration.

Correct outcome here on the law. The prohibition found in 2(e)(4) basically sets up a system where a word that is primarily a surname will never be assumed distinctive. Rather the applicant must prove acquired distinctiveness to overcome the limits of Section 2(e)(4).

The opposition also argued that the trademark registration by the Beer company will impinge their First Amendment free speech rights and also represents a governmental taking in violation of the Fifth Amendment of the U.S. Constitution and a due process violation.  The Federal Circuit rejected these arguments out of hand.

17 thoughts on “Schlafly Wins and Loses at Federal Circuit — You may Register a Distinctive Surname

  1. 6

    Please note, this case rather gives the lie to the argument recently made elsewhere on these boards that In re Rath, 402 F.3d 1207 (Fed. Cir. 2005) establishes that the Lanham Act is not consistent with our Paris Convention obligations.

    Rath sued the PTO because they refused to register “Rath” as a trademark on the grounds that it was primarily a surname. Rath argued that the Paris Convention provides that “Trademarks covered by this Article may be neither denied registration nor invalidated except… when they are devoid of any distinctive character… .” Rath contended that this meant that a trademark cannot be denied on the “merely a surname ground.”

    What we see in the Schlafly case is that the Lanham Act presumes that a mere surname is “devoid of any distinctive character,” but that this is a rebuttable presumption, and that the Lanham Act even provides fairly simply mechanisms by which the applicant can rebut the presumption. In other words, Rath’s problem was not that the Lanham Act contradicts the Paris Convention—rather, Rath’s problem was that he did not want to lay the evidentiary foundation to comply with the Lanham Act’s presumption against distinctive character for surnames.

  2. 5

    “Communist Tactics, Strategy, and Objectives”

    A great guide.

    However I’m somewhat surprised that her fam was all that upset about this. More likely lawlyers opposed it and the fam went along with it. Seems like the right result as long as they’re not using her first name as well (so long as nobody in their business happens to have the same first name).

    1. 5.1

      How about a Phyllis Schlafly Bitter Ale? Seems fitting.

      1. 5.1.1

        6 would love that, as would the rest of incel brot@rds.

        1. 5.1.1.1

          MM’s mad that his e-thots are getting audited lol.

          My irl-thots on the other hand are giving me lesbian threesomes w/ gay married 20 yr old lesbian couple that’s near surely destined to split over lack of $$$ in the next few years lol.

          1. 5.1.1.1.1

            ?

            Really?

            This is a patent blog, right? I know Malcolm is usually off in the weeds with his rants, but come on 6, stay classy.

          2. 5.1.1.1.2

            Are you referring to the campaign to report camgirls that was started by an alleged pedophile?

            1. 5.1.1.1.2.1

              That’s what MM is referring to, though I hadn’t heard about the pedo thing just yet. As far as me and MM and the rest of the readers of leftist news know it was started by “the incels”. “the incels” being supposedly a shadowy group of all right wing haters of muh precious noble whamen of course. Because as we all know, people on the right wing can’t get whamen and only the noble virtuous commie block are the only ones getting whamen at all!

              In reality it was started by autists.

              Pre-audit – fullcommisms now!

              Post-audit – Taxation is theft, low taxes now!

              link to i.kym-cdn.com

              1. 5.1.1.1.2.1.2

                That’s what MM is referring to

                No, I was referring to you, 6, and your fellow chatgroup circle jirkers. I don’t bother to keep up with your “news” because, well, the books about you and your dweeby issues were mostly written a few years back. You will get punched in the face someday, and it will hurt, and you will deserve it more than your ped0 daddy ever let you know.

                [shrugs]

                Get some therapy. The government will pay for it.

      2. 5.1.2

        Two things to know about Tom Schlafly (the founder of the brewery):

        (1) The commonality of surname is not a mere coincidence. He and Ms. Schlafly were related, but they did not get along.

        (2) That said, Tom Schlafly is a real class act, and one of St. Louis’ most generous and civically minded citizens. It would have been beneath him (back when he ran the brewery) to take a cheap shot like that, amusing though it might have been.

      3. 5.1.3

        Be glad you’re not in jail commie.

  3. 4

    As I recall, there was a long legal battle by Walter Taylor to even list his name on his wine, which he lost because of the pre-existing trademark rights of the Taylor Wine company owned by that company, not his family.

  4. 3

    I suppose the members of the family siding with the brewery want the name “Schlafly” to finally be associated with something good and redeemable.

  5. 2

    I seem to recall a similar case regarding John Wayne Gacy’s Homemade Bagels trademark.

  6. 1

    The Board did not decide whether Schlafly was primarily merely a surname because the applicant proved acquired distinctiveness anyway. The CAFC affirmed that approach.

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