Wednesday, October 28, 2015

BACON FLAVORED BOURBON Trademark Filed...But There's a Problem...Maybe

On October 22nd, Branded Spirits, Ltd. in San Francisco filed a federal trademark application for BACON FLAVORED BOURBON as it relates to "[a]lcoholic beverages, namely, [b]ourbon[.]" 
According to the application, Branded Spirits started selling this flavored bourbon back in August. But unfortunately for the applicant, I believe this application is going to have significant issues in getting registered with the U.S. Patent and Trademark Office.

The problem? Section 2(e)(1) of the Trademark Act prohibits the registration of trademarks that "merely describe" the related goods or services. The U.S. Patent and Trademark Office considers a mark merely descriptive if it "describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services." 

In this case, the goods are bourbon. "Bacon flavored bourbon" certainly describes a quality or ingredient of these goods. Therefore, when an examining attorney at the Trademark Office reviews this application in approximately three months, he or she will almost certainly issue an office action refusing to register this mark pursuant to Section 2(e)(1).

Why can't someone register a merely descriptive trademark? This application is the perfect example. If Branded Spirits could obtain a federal trademark over BACON FLAVORED BOURBON, it would have the exclusive, nationwide right to use that term to describe bourbon. No one person or company could make bourbon and describe it as "bacon flavored bourbon" without risking liability for trademark infringement. Such a result would stifle commerce and is simply unfair. Congress believed every person should be able to use descriptive terms to describe features of their goods. This is the reason it enacted Section 2(e)(1) and the reason why merely descriptive trademarks should be avoided whenever possible.

UPDATE - this applicant sought registration on the Supplemental Register, which does not offer all the benefits of a full registration on the Principal Register, but will permit a merely descriptive trademark to register there until it "acquires distinctiveness" and becomes capable of registration on the Principal Register. However, a generic trademark is never capable of registration on either Register. 

The USPTO uses a two part test to determine whether a trademark is generic:  (1) What is the genus of goods or services at issue? and (2) Does the relevant public understand the designation primarily to refer to that genus of goods or services? What do you think? Is BACON FLAVORED BOURBON merely descriptive (and capable of residing on the Supplemental Register) or generic (and incapable of any type of registration)?

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