The Power of the Trademark Examining Attorney

The Trademark Trial and Appeal Board (TTAB) decided the case of ABK Betriebsgesellschaft der Aktienbrauerei Kaufbeuren GmbH WL 3102594 (2017). The TTAB is an administrative board that deals with issues arising out of the United States Patent and Trademark Office (USPTO). The TTAB oversees opposition, cancellation, interference, and concurrent use hearings. The TTAB also hears appeals for trademark application rejections from USPTO Trademark Examining Attorneys.


ABK Betriebsgesellschaft der Aktienbrauerei Kaufbeuren GmbH (ABK) applied for a trademark. ABK sought to register the mark “ROSE” for “beer based mixed beverages.” ABK attempted to register this mark on the Supplemental Register under International Class 32, which includes beer as a category.

The Trademark Examining Attorney (TEA) rejected ABK’s application for the ROSE mark, elaborating that the mark was “generic and therefore incapable of distinguishing its goods.” The TEA relied on Sections 23(c) and 45 of the Trademark Act in justifying this decision.

After receiving the TEA’s decision, ABK protested and requested another review. The TEA rejected this request, refusing to reconsider the initial decision. As a result, ABK appealed to the TTAB.


The TTAB first outlined several key aspects of trademark law. Under 15 U.S.C. 1091(c), only marks “capable of distinguishing the applicant’s goods or services” will be registered. A mark is generic if it does not distinguish a company or product from competitors, because it fails to indicate “a unique source.”

Citing In re Merrill Lynch, Pierce, Fenner, and Smith, Inc., 828 F.2d 1567 (Fed. Cir. 1987), the TTAB elaborated that generic terms “are the antithesis of trademarks, and can never attain trademark status.” Furthermore, allowing trademarks for generic terms “would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.” Overall, generic marks are not suitable for trademark protection because such marks do not differentiate one product from another.

After establishing the basis for generic marks, the TTAB applied the law to ABK’s application for the ROSE mark. The term “rose,” as applied to beer or wine, is employed as a description of the color of the beverage. Moreover, the TTAB referenced common use of “rose” as a term to describe a specific subset of beer beverages. As applied to beer, specifically, the TTAB determined that “rose” was generic and “should be freely available for use by competitors.”

Consequently, the TTAB denied ABK’s appeal, confirming that ROSE was generic in this situation.

Do You Need Legal Advice from a Trademark Attorney?

Navigating the ins and outs of patents and trademarks can be a challenge. There are various legal regulations and considerations at play, which can make it difficult to understand the proper course of action. But a knowledgeable patent and trademark attorney can make all of the difference, helping you avoid pitfalls and resolve any issues that might arise.

If you are in need of assistance with trademarks, patents, or other related matters, please do not hesitate to contact Whitcomb, Selinsky, PC immediately. Located in Denver, Colorado, the attorneys at Whitcomb, Selinsky, PC can be reached through their contact page.

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