Hop Law

Descriptive Trademark Vs. Suggestive Trademark Issues: Mixed Culture

Fair State Brewing Cooperative throws an annual party celebrating wild, sour, and mixed fermentation beers entitled “Mixed Culture,” a name they wanted to make sure was protected. Thus a trademark application was filed with the Patent and Trademark Office (PTO). The PTO, however, initially responded that the mark was “merely descriptive.”

In response to the PTO’s office action refusing the application, we noted that a “merely descriptive” mark (not entitled to registration on the Principal Register unless it has obtained secondary meaning) differs from a “suggestive” mark (entitled to registration).

A descriptive mark is one that immediately and directly connects to a particular product. A suggestive mark, however, requires an imaginative leap to determine the products and services to which the mark refers. The distinction between descriptive and suggestive marks is not always clear, but some examples may help clear it up. Hoppy, for example, may be merely descriptive because it is a common way to describe a beer’s flavor. A suggestive mark, on the other hand, may be Strikingly Refreshing — although this may indicate how a beer tastes, there is a logical leap to get from Strikingly Refreshing to beer.

In the case of Mixed Culture, we therefore had to argue that they were considered a suggestive trademark, not a descriptive trademark. In essence, we argued that the PTO had conflated Mixed Culture with Mixed Culture Parties by arguing that Mixed Culture was descriptive of entertainment services/conducting parties.

Courts primarily use the “imagination test” to determine whether a trademark is considered descriptive or suggestive and therefore deserving of registration. E.g. AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 349 (9th Cir. 1979) … A mark is therefore only merely descriptive when it conjures an “immediate and direct” connection to the particular product. Id. Thus, even where the mark might “readily conjure up the image” of such product, it is merely suggestive when a variety of other connotations might also follow. See id. Thus, Sleekcraft is suggestive of boats even though boats may be crafted to be sleek, id., and Trek is suggestive of bicycling even though one frequently uses bicycles to trek. Thane Int’l, Inc. v. Trek Bicycle Corp., 305 F.3d 894, 912, n. 14 (9th Cir. 2002) … The Examining Attorney relied on two definitions in support of their argument: “Mixed means consisting of different things; involving people of different ages, abilities, races, etc.” and “culture” means “Activities involving music, literature, and other arts; a society that has its own set of ideas, beliefs, and ways of behaving.”

Neither of these definitions inherently and exclusively connotes the concept of a party. Indeed, the concept of culture readily conjures images of a variety of concepts and activities that are completely removed from parties, as demonstrated by the definition itself which include activities not generally associated with parties, such as literature. Therefore, in determining that the term Mixed Culture connotes parties, the examining attorney made an imaginative leap and merely demonstrated that the term itself is suggestive rather than that it is merely descriptive.

In distinguishing descriptive and suggestive trademarks, we were able to show that Mixed Culture, although perhaps suggestive, did not rise to the level of mere descriptiveness because nothing about Mixed Culture directly connoted an event or party. As a result, we helped our client move its trademark application along.

Our client now gets to use the mark exclusively and can prevent others from infringing on its trademark. There is often a thin line between descriptive and suggestive marks, which creates both problems and opportunities for breweries and distilleries.

If you have any questions about trademark issues, it is important to contact a trademark attorney (and particularly one with experience working for breweries and distilleries).

If you are interested in attending Mixed Culture, it goes up July 15 from 4pm to 8pm at Fair State Production Brewery, 2075 Ellis Ave., St. Paul, MN 55114.