Federal trademark law bars the registration of marks that are merely descriptive of the goods – that is, if it simply describes an ingredient, quality, characteristic, function, feature, purpose or use of the claimed goods or services. The rationale for this is that it would be anti-competitive to let one trader monopolize terms that competitors need in order to describe their own goods in plain English. The trademark isn’t supposed to tell you about the product, it’s supposed to identify the producer.
The same prohibition also applies to terms that are geographically descriptive – marks that tell you where the product is from. The same thinking applies: it would be unfair to let one party to monopolize the name of the locale and thereby shut out competitors in the same region.
What happens when a mark isn’t entirely descriptive – when it has elements which might be descriptive or generic, but also distinctive elements? In those cases, the Trademark Office will not refuse registration entirely, but will require a disclaimer of the descriptive or generic terms. A disclaimer does not mean that the word(s) in question are no longer part of the mark; it’s just an acknowledgement on the record that the disclaimed words are merely descriptive in this context and are free to be used by others – so long as they are not combined with the distinctive (non-disclaimed) element of the mark.
All of this was thrown into relief by a lawsuit recently filed in federal court in Texas, Azar Distilling LLC v. Dark Corner Distillery LLC (W.D. Tex., Civil Action No. 5:17-cv-643). The plaintiff in that case is a San Antonio distillery which last year introduced a new spirit under the name Seersucker Southern Style Gin®. Azar had applied to register this trademark the year before based on its intent to use, and the mark registered in September 2016 once Azar submitted their statement of use. Azar also has pending federal applications for their SG Logo and for “Southern Style Gin” (which was approved for publication by the PTO in late July). According to the complaint, the defendant Dark Corner Distillery is infringing Azar’s Southern Style trademarks by using the phrase “American Southern Style” on the labels of its Jocasee Gin.
What has this got to do with disclaimers? Azar’s registration for SEERSUCKER SOUTHERN STYLE GIN and its pending application for just SOUTHERN STYLE GIN include a disclaimer of any exclusive right to use the word GIN. This is not surprising since “gin” is the generic term for the product itself. But curiously, neither record includes a disclaimer of SOUTHERN STYLE, notwithstanding the fact that that phrase appears to be geographically descriptive of the (Texas-made) goods. PTO examiners are usually quite vigilant about spotting non-distinctive elements in marks, and indeed, a quick search of active federal trademarks featuring the words “Southern Style” show that in the vast majority of cases, the PTO examiner has required that those words be disclaimed. Azar appears to have gotten lucky here (twice!), because if those words had been disclaimed, Azar’s claims against Dark Corner would have trouble surviving a motion to dismiss. Instead Dark Corner must bear the burden of submitting evidence that “Southern Style” is descriptive and not protectable. (They could also oppose Azar’s application for SOUTHERN STYLE GIN when it is published for opposition later this summer.)
Regardless of the disclaimers, geographic phrases like “Southern Style” are very weak as trademarks, and the ultimate lesson to be drawn from this case when all is said and done may be that while slipping one past the examiner is nice, it’s always better to start with a mark that is distinctive – either suggestive, arbitrary or fanciful. Azar may end up wishing they hadn’t picked this fight (rather than focusing on protecting the core element of the brand SEERSUCKER).
The opinions expressed are those of the author(s) and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes and is not intended to be and should not be taken as legal advice.
Bob O’Connell devotes his practice to providing comprehensive trademark and copyright strategic advice, prosecution and enforcement for clients across many industries. He helps clients prevent and solve problems involving all aspects of domestic and international trademark law, as...