Surnames are registrable on Principal Register with sufficient evidence of acquired distinctiveness

| December 19, 2018

Schlafly, et al. v. Saint Louis Brewery, LLC

November 26, 2018

Before Newman, Mayer, and Stoll.  Opinion by Newman.


A surname can be registered as a trademark on the Principal Register upon showing of acquired distinctiveness.



The appellee, Saint Louis Brewery (“SLB”), states that it sells various types of beer using the SCHLAFLY mark, and has been selling beer using the mark continuously since 1991.  From 2009 to 2014, SLB has sold more than seventy-five million units of SCHLAFLY beer, not including sales made at its restaurants.  SLB has also made substantial investments in marketing the SCHLAFLY brand, claiming that it has invested $1.1 million in advertisements over the last five years.  SLB owns trademark registrations for two other trademark registrations for logos that include the SCHLAFLY name.  SLB is now applying to register the mark SCHLAFLY word mark in standard character, claiming Section 2(f) acquired distinctiveness for alcoholic beverages named in the application.

One of the opposers is Phyllis Schlafly, who is now deceased, but was a “conservative icon” and a known public figure.  The other opposer is Dr. Bruce Schlafly, a physician who has been using his name in his medical practice since 1986.  The opposers had separately filed oppositions against the registration of the standard character mark SCHLAFLY, and the oppositions were consolidated by the Trademark Trial and Appeal Board (“TTAB”).

The TTAB ruled in favor of SLB and found SCHLAFLY mark registrable on the Principal Register.  Considering the long and continuous use of the mark in commerce, the prominent placement of the mark on products, the large sales volume, the marketing types and expenditures, the total revenue, SLB’s ranking among craft brewers in the United States, awards won by SCHLAFLY beer, and media and reports on SCHLAFLY beer products, the Board found that the mark SCHLAFLY has acquired secondary meaning, and therefore, registrable on the basis of acquired distinctiveness under Section 2(f).   The opposers argued that consumer surveys must be submitted as evidence of secondary meaning, but the TTAB rejected the argument, and also denied the opposers requested reconsideration.

Section 2(f) of the Lanham Act permits registration of marks that have acquired distinctiveness by use in commerce, and this can be shown by providing following types of evidence:

1.  Ownership of prior registrations

2.  Five years of substantially exclusive and continuous use in commerce

3.  Other evidence – i.e., verified statements, depositions, or other evidence showing duration, extent, and nature of the use in commerce and advertising expenditures in connection therewith

SLB had presented all three types of evidence to the TTAB, and the TTAB considered fifteen different forms of evidence in reaching its conclusion.

The opposers argued that SCHLAFLY is significant to the public primarily as a surname of Phyllis Schlafly, and urged the court to adopt a new test called a “change in significance” test, whereby a surname cannot be registered as a trademark without showing a change in significance to the public, from a surname to an identifying mark for specified goods.  Here, the SCHLAFLY mark had acquired secondary meaning for use with beer products.

The opposers further argued that the Board refused to determine whether the mark was “primarily merely a surname,” arguing that a mark that is “primarily merely a surname” is not registrable under Section 1052(e)(4).  However, Section 1052(f) also provides that a mark that has become distinctive of the applicant’s goods in commerce can be registered, and no law or precedent suggests that surnames cannot be registered as trademarks, so long as they have acquired distinctiveness.  The CAFC concluded that Section 1052(e)(4) did not bar the registration of the mark SCHLAFLY, as the Board found that the mark had acquired secondary meaning when used in connection with beers.

Finally, the opposers argued the registration violates the First and Fifth Amendment, as well as their Due Process rights, but the CAFC rejected the opposers’ arguments.

The CAFC, therefore, upheld the decision of the TTAB.


Surnames can be registered on the Principal Register by claiming acquired distinctiveness under Section 2(f) of the Lanham Act.  The amount of evidence required to prove acquired distinctiveness may differ by mark, but submission of survey evidence is not necessary if other evidence can support finding of acquired distinctiveness.

Full Opinion

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