Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE THE STROH BREWERY COMPANY
Serial No. 74/262,791
December 15, 1994
Darren B. Cohen
Trademark Examining Attorney
Law Office 13
(Craig Morris, Managing Attorney)
Before Hanak, Quinn and Hohein
Administrative Trademark Judges
Opinion by Hanak
Administrative Trademark Judge
The Stroh Brewery Company (applicant) seeks to register ST. BART'S THE VIRGIN BREW and design in the form shown below for "non-alcoholic malt beverages." The application was filed on April 6, 1992 with a claimed first use date of July 15, 1989. Applicant has disclaimed the exclusive right to use the word BREW apart from the mark shown below.
The Examining Attorney refused registration "on the ground that the wording THE VIRGIN BREW is merely descriptive of the goods and therefore must be disclaimed apart from the mark as shown under Trademark Act Section 6(a)." (Examining Attorney's brief page 1).
Both applicant and the Examining Attorney filed briefs. Applicant did not request an oral hearing.
As the parties agree, the sole issue in this proceeding is whether the word VIRGIN, as applied to non-alcoholic malt beverages, is descriptive of them. It is the position of the Examining Attorney that "the word VIRGIN, through common usage, has become recognized as a designator for non-alcoholic versions of perennially alcoholic beverages." (Examining Attorney's brief page 2-3). In support of this position, the Examining Attorney has made of record approximately 15 stories from the NEXIS data base wherein the term "virgin" is used to refer to specific types of non-alcoholic mixed drinks. Representative of these articles is the following passage from The Seattle Times of March 28, 1991: "A 22-year-old waiter tried to talk her into a 'virgin daiquiri,' which contains no alcohol." Another representative story appears in the April 2, 1992 Orlando Sentinel Tribune, and reads, in pertinent part, as follows: "He orders his banana daiquiris 'virgin,' or without the alcohol."
In addition, the Examining Attorney has referred to the 16th definition of the word "virgin" found in the Random House Unabridged Dictionary (2d ed. 1993), which reads as follows: "Informal. being a mixed drink resembling a specific cocktail but made without any alcoholic ingredient: 'a virgin pina colada."'
It is the position of applicant that none of the evidence submitted by the Examining Attorney in any way relates to "non-alcoholic malt beverages." Rather, applicant points out that all of the evidence submitted by the Examining Attorney pertains solely to mixed drinks (i.e. cocktails). Moreover, even with regard to mixed drinks, applicant makes two additional points. First, applicant states that the Examining Attorney's evidence reflects that the term "virgin" is applied to only those mixed drinks which, even in their alcoholic forms, contain a large amount of non-alcoholic ingredients such that the removal of the alcohol still permits for a pleasing beverage. Applicant points out that none of these NEXIS stories use the term "virgin" in connection with mixed drinks which consist solely of alcoholic ingredients or alcohol with simply a mixer. Applicant states that it would be meaningless to request a "virgin martini." Moreover, applicant points out that no one would request a "virgin gin and tonic"; rather, they would request simply tonic water.
*2 Second, applicant further notes that even with regard to that narrow band of mixed drinks to which the term "virgin" has occasionally been used, its use has almost always been with the accompanying explanation that "virgin" means without alcohol or non-alcoholic, as exemplified by the excerpts quoted above.
In addition, applicant has made of record a number of articles which demonstrate that non-alcoholic malt beverages have been in existence since at least 1920, and that further, sales of non-alcoholic malt beverages have exploded since the early 1980s. These articles demonstrate that literally dozens of brewers manufacture non-alcoholic malt beverages marketed under an even larger array of trademarks. Applicant furthermore points out that despite the fact that non-alcoholic malt beverages is a very large and well established product category, there has been not one single use of the word "virgin" in connection with these particular types of beverages.
As has been stated repeatedly, a term is merely descriptive "if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods." In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978) (emphasis added); Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 189 USPQ 759, 765 (2d Cir.1976).
Moreover, in determining whether a mark is descriptive, the mark must not be considered in the abstract, but instead, it must be considered as "applied to the goods or services involved." Abcor Development, 200 USPQ at 218. In addition, the fact that a term may be descriptive of certain types of goods does not establish that it is likewise descriptive of other types of goods, even if the goods are closely related (e.g. hats and boots). Abercrombie & Fitch, 189 USPQ at 766.
The evidence submitted by the Examining Attorney merely demonstrates that as applied to certain types of mixed drinks (i.e. cocktails), the term "virgin" apparently describes their non-alcoholic versions. We use the word "apparently" because, as previously noted, in virtually every one of the fifteen or so articles made of record by the Examining Attorney, the authors have felt the need--when they used the term "virgin" in relation to certain mixed drinks--to explain that it means without alcohol or non-alcoholic. If the word "virgin" was clearly descriptive of certain types of cocktails, there would be no need for the explanations.
Given the fact that (1) non-alcoholic malt beverages is a large and old product category, and that (2) the NEXIS data base is extremely extensive, we believe that if the term "virgin" was descriptive of non-alcoholic malt beverages, it would have been used in relationship to such beverages at least occasionally. Firestone Tire & Rubber Co. v. Goodyear Tire & Rubber Co., 189 USPQ 348, 350 (CCPA 1976); Shoe Corp. of America v. Juvenile Shoe Corp., 266 F.2d 793, 121 USPQ 510, 512-13 (CCPA 1959). The fact that it has not raises strong doubts in our minds as to whether, as applied to non-alcoholic malt beverages, the term "virgin" is descriptive. When doubts exist as to whether a term is descriptive as applied to the goods or services for which registration is sought, it is the practice of this Board to resolve doubts in favor of the applicant and pass the mark to publication with the knowledge that a competitor of applicant can come forth and initiate an opposition proceeding in which a more complete record can be established. In re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972).
*3 Decision: The refusal to register is reversed.
E.W. Hanak
T.J. Quinn
G.D. Hohein
Administrative Trademark Judges, Trademark Trial and Appeal Board