-Martha Engel, Attorney
I consider myself to be, among other things, a craft beer attorney. I enjoyed speaking last week at the Midwest Craft Brewers Conference as part of a great panel on brand positioning, trademarks, and the use of social media in the craft beer industry, and will be part of a continuing legal education seminar on craft beer, distillery, and liquor law on September 16 through NBI. Many attorneys reading this post likely have some area or industry like this where they focus a part of their practice and use industry-related terms to identify their expertise in an area or industry on their firm bio or in other marketing materials.
As a recent Wall Street Journal article on trademarks in the beer industry mentioned, an attorney filed an application for CRAFT BEER ATTORNEY for legal services. The applicant initially overcame an examiner’s refusal of the mark as being generic by arguing that the relevant consuming public does not understand the mark to refer to the identified genus of legal services because it could refer to a brewer. In addition to citing many third party registrations for legal services, she suggests that craft beer law covers several areas of practice including business law, intellectual property law, and alcoholic beverage law and that others use different terms such as “lawyer” in place of “attorney” or “brewery” in place of “beer.” 11 firms or attorneys have opposed registration of that mark on the basis that the mark is generic, descriptive without having acquired distinctiveness, and fraud against the U.S. Trademark Office.
A recent TTAB decision may help these firms successfully oppose registration of the mark CRAFT BEER ATTORNEY. A solo practitioner doing business as The Corporate Law Group filed an application for THE CORPORATE LAW GROUP in connection with various legal services. The examiner refused registration of the application on the basis that the mark was generic. Despite the practitioner providing dozens of affidavits from consumers and other evidence, the TTAB affirmed the refusal based on the evidence of record provided by the examiner of third party uses of the phrase THE CORPORATE LAW GROUP or CORPORATE LAW GROUP demonstrate that others use the phrase and support that the consuming public and other attorneys would understand the term to refer to the practice of corporate law. It certainly does not hurt those opposing the CRAFT BEER ATTORNEY mark that the TTAB stated in this decision, albeit a non-precedential one, that “no amount of evidence can transform a generic phrase into a registrable trademark” citing Miller Brewing Co. v. G. Heilman Brewing Co., 561 F.2d 75 (7th Cir. 1977).
Surely the internet age has compelled lawyers and other service providers to adopt more descriptive names for their practice than something more along the lines of Dewey, Cheatem & Howe or a long string of the most complicated names found within the partner ranks. Solo practitioners especially seem keen to adopt these types of descriptive firm names in order to drive web traffic based on search terms. However, lawyers and creative types alike should be mindful that while descriptive marks may seemingly “sell themselves”, they rarely create strong trademark rights.