In Anheuser-Busch, Inc. v. Kelly J. Holt (App. No. 91180119), the Trademark Trial and Appeal Board ("TTAB") rejected the Opposer's (Anheuser-Busch Inc.) arguments challanging the Applicant's applied-for marks: "BEER 1" (77063889), "ONE BEER, BEER 1" (77065796) and "BEER 1 MMVII and design" (77090584). The TTAB held there was no basis to refuse the registration of the marks based on arguments primarily supported by expert testimony that the marks were merely descriptive or deceptively misdescriptiveand and lacked secondary meaning, or that if the marks were registrable, elements should be disclaimed.

On the issue of whether the applicant's mark was merely descriptive and lacked secondary meaning, the TTAB held, as per section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), a term is merely descriptive of goods, and therefore unregistrable, if it conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods. Thus, whether a particular term is merely descriptive is determined in relation to the goods for which registration is sought, the context in which it is being used or is intended to be used on or in connection with those goods, and the possible significance that the term would have to the average purchaser of the goods because of the manner of its use or intended use. The TTAB clarified that a mark is suggestive if, when the goods or services are encountered under the mark, a multi-stage reasoning process, or the utilization of imagination, thought or perception, is required in order to determine what attributes of the goods or services that mark indicates.

On this first issue the TTAB held the Opposer did not present evidence sufficient to prove its claims of mere descriptiveness by a preponderance of the evidence, that the marks were merely descriptive in the beer industry or to the relevant consuming public.

Furthermore, the TTAB emphasized that although the Opposer's reliance on the opinion of an expert in linguistics may have some probative value, it is not dispositive on the ultimate determination of descriptiveness. In earlier TTAB cases, expert testimony was treated simply as a piece of the puzzle, which included empirical evidence, such as dictionary definitions, competitors and other third-party uses. The TTAB noted that empirical evidence, such as surveys, excerpts from newspapers, magazines, trade journals, the internet, and other sources showing that consumers perceive the mark as descriptive were absent from the record. Hence, the sole opinion of the Opposer's expert cannot substitute for the evidence of the perception of the consuming public of the involved marks, nor substitute for the Board's ultimate determination of the issue of mere descriptiveness.

On the second issue, in order for the marks to be found deceptively misdescriptive of the goods, and thus unregistrable under section (2)(e)(1) of the Trademark Act, § 15 U.S.C. 1052(e)(1), the mark must immediately convey an idea about the goods or services, and that idea, although plausible, must be false. The test for determining whether a term is deceptively misdescriptive as applied to the goods involves a two-part determination of (1) whether the matter sought to be registered misdescribes the goods, and (2) whether anyone is likely to believe the misrepresentation.

The TTAB concluded that the combination of the term "BEER" and the number "1" may not be perceived by consumers as a beer ranked #1 (as the Opposer had argued), as it may just as likely be interpreted by them as "unique beer" or "only beer". While "BEER 1" may have some suggestive significance, the record was devoid of evidence to establish that BEER 1 would be perceived by the purchasing public as meaning "beer that is ranked #1" and thus merely descriptive of beer. Thus, the TTAB held none of the Applicant's applied-for marks immediately conveyed to the consuming public the idea that the applicant's beer is ranked number one and, thus the Applicant's "BEER 1", "ONE BEER, BEER 1" and "BEER 1 MMVII and design" marks make no representation, false or otherwise, regarding any beer ranking. Thus, the Opposer failed to meet the first pong of the test with regard to the Applicant's marks being deceptively misdescriptive.

Lastly, the Opposer's arguments that the applicant's mark "BEER 1 MMVII and design" is merely descriptive was also rejected. The TTAB held the dissection of the logo is an inappropriate attempt to ascribe descriptive significance to its individual elements of the trademark. Thus, the mark, as a whole, is not a merely descriptive illustration of an important feature or characteristic of the applicant's beer. Additionally, the literal and severable elements of the mark (such as "beer") have already been disclaimed and the pictorial elements comprise a unitary composite mark. The TTAB concluded there were no other elements severable and no further disclaimers were required.