[This guest post was written by Kira-Khanh McCarthy, a 2L at University of Notre Dame Law School.] The USPTO refused to register BLUEBERRY MUFFIN, in standard characters, finding the term generic for “beer.” Applicant Humboldt Street Collective had conceded that the term is merely descriptive by amending its initial application to seek registration on the Supplemental Register, but Examining Attorney Natalie Kenealy nonetheless refused registration under Section 23(c). How do you think this came out? In re Humboldt Street Collective LLC, Serial No. 87152277 (March 29, 2019) [not precedential] (Opinion by Judge Peter Cataldo).

The TTAB applied its standard two-part test to determine whether BLUEBERRY MUFFIN is generic: (1) what is the genus of the goods at issue and (2) whether relevant purchasers understand that designation primarily to refer to that genus of goods.

Genus of the Goods at Issue: Both the Examining Attorney and Applicant agreed that the proper genus of the goods identified in the application is “beer.” Furthermore, Applicant’s own specimen of use (see above) indicated that BLUEBERRY MUFFIN is used as a designation of one of Applicant’s house beers.

The Relevant Purchasers: The Examining Attorney and Applicant disagreed on who are the relevant purchasers of Applicant’s goods. The Examining Attorney asserted that “the relevant public comprises ordinary consumers who purchase applicant’s goods.” Conversely, Applicant maintained that the relevant public is “craft beer drinkers.” The Board found that because the genus of Applicant’s goods is “beer,” without limitation as to type (i.e., craft brews, etc.), the relevant consumers are ordinary members of the public who are beer drinkers.

The Meaning of BLUEBERRY MUFFIN to the Relevant Purchasers:Next, the Board sought to determine how the relevant purchasers would understand the meaning of the term “blueberry muffin.” To aid in its decision, the Board considered website evidence submitted by the Examining Attorney and third-party registrations submitted by Applicant. Based on the evidence, the Board made these findings of fact:

• [B]eers are often flavored, and flavored beers are growing in popularity;
• [C]onsumers refer to Applicant’s blueberry muffin-flavored beer as “blueberry muffin;”
• [C]onsumers also refer to blueberry muffin-flavored beer produced by third parties, inter alia, as “blueberry muffin;”
• [T]hird parties create and market blueberry muffin-flavored beverages other than beer, including smoothies, coffee, wine, liquor and mixed drinks, and refer to them as “blueberry muffin.”

When an applied-for term “directly names the most important or central aspect or purpose of [an] applicant’s goods” and would be understood by the relevant consumers as referring to a category of those goods, the term is generic. See In re Cent. Sprinkler Co., 49 USPQ2d 1194, 1199 (TTAB 1998) (finding ATTIC generic for automatic sprinklers for fire protection). Here, the record shows that flavor, including flavors resulting in beer tasting like another food or beverage, is an important and central aspect for beer, and blueberry muffin refers to a specific flavor of beer for Applicant and several third parties. See A.J. Canfield Co. v. Honickman, 808 F.2d 291, 1 USPQ2d 1364 (3rd Cir. 1986) (CHOLCOATE FUDGE [sic] generic for diet sodas with chocolate fudge flavor).

As a result, the Board found that consumers would understand Applicant’s proposed mark to refer to a subset of blueberry muffin flavored beers. BLUEBERRY MUFFIN was therefore found to be generic and incapable of distinguishing Applicant’s goods. And so, the Board affirmed the refusal to register Applicant’s mark on the Supplemental Register, allowing competitors to freely use the term to refer to their own goods and services.

Read comments and post your comment here.

TTABlog comment: Would Chocolate Chip Blueberry Muffin be a sub-sub-genus?

Text Copyright John L. Welch and Kira-Khanh McCarthy 2019.