USCA1 Opinion

UNITED STATES COURT OF APPEALS

FOR THE FIRST CIRCUIT
____________________
Nos. 93-1290
93-1520
BOSTON BEER COMPANY LIMITED PARTNERSHIP,
D/B/A THE BOSTON BEER COMPANY,
Plaintiff, Appellant,
v.
SLESAR, BROS. BREWING COMPANY, INC.,
D/B/A BOSTON BEER WORKS,
Defendant, Appellee.
____________________
APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
[Hon. Robert E. Keeton, U.S. District Judge]
___________________
____________________
Before
Cyr, Circuit Judge,
_____________
Bownes, Senior Circuit Judge,
____________________
and Boudin, Circuit Judge.
_____________

____________________

William O. Hennessey, with whom Richard A. Savrann and Burns

_____________________
__________________
_____
Levinson were on brief for appellant.
________
Martin J. O'Donnell, with whom Cesari and McKenna were on br
____________________
___________________
for appellee.
____________________
November 16, 1993
____________________

BOWNES, Senior Circuit Judge.

BOWNES, Senior Circuit Judge.
_____________________

Plaintiff-appellant,

The Boston Beer Company, sought to enjoin defendant-appellee,

Boston Beer Works, from using

the words "Boston Beer" in its

name, and from using the word "Boston" in connection with any
of

its beers.

Appellant contended

confusingly similar to
into

its own, and would mislead the public

thinking that Boston

Beer Works' products

originated or were associated

Company.
that

that appellee's name was

or services

with those of The Boston

Beer

The district court rejected this claim, concluding

appellant's marks "Boston

Beer," as used

in its name,

and

"Boston," as

products,

used in

were not

connection with

entitled to

a number

trademark

of its

protection.

We

affirm.
I.
I.
__
BACKGROUND
BACKGROUND
__________
Appellant
appellant

The

Samuel

Pittsburgh

and appellant

namely, one

contract

beer

manufacturer.
Adams

operated

who engages

owned

by

breweries

the
in

another
other.

as

-22

contract

Presently,
Utica,

at

"Boston

independently

to manufacture

Pittsburgh,

Portland, Oregon.

1985

Lager

the name

facility was
it

In

Boston

Pittsburgh, Pennsylvania under

Beer Company."

brewery

began brewing

brewery in

owned,

is

brewer,

beer in

appellant
New

York,

a
has
and

In November 1988
beer at a brewery
first

located in Boston.

time that

city that

appellant first began to brew

called Boston

This also marked

appellant actually brewed

shares its name.

any beer

Appellant has,

its corporate home,

its own
the

in the

however, always

and virtually all

of its

assets and non-sales employees can be found in Massachusetts.

Appellant's

"Boston"

brews

Samuel Adams

Boston Lager.

refers to as

a "family" of "Boston"

are

not

In fact, appellant has

beers.

Samuel Adams Boston

Lager, other members of

Boston

which

Lightship,

September
began

limited

appellant

began

In

to

what it

addition to

this family are

marketing

in

1987, and Samuel Adams Boston Ale, which appellant

marketing in

October 1988.1

marketed

and distributed

abroad.

Appellant

package

stores and

Appellant's beers

throughout the

sells its

beers

grocery stores

United States

to restaurants,
for resale; it

are
and
bars,

does not

make any sales directly to the public.

Over
substantial
Boston

area.

the

past

five

amounts of money
From

1988

years

appellant

has

promoting its products

through

1992,

appellant

spent
in the
spent

____________________
1. This is not, however, the extent of appellant's
brews. In fact, appellant sports an entire line of "Samuel
Adams" beers, including:
"Samuel Adams Cranberry Lambic,"
"Samuel Adams Cream Stout," "Samuel Adams Double Bock,"
"Samuel Adams Triple Bock," "Samuel Adams Oktoberfest,"
"Samuel Adams Wheat Brew," "Samuel Adams Winter Ale" and
"Samuel Adams Winter Lager."
-3-

approximately $350,000
stations.

in advertising on major

Among the various

appellant are

billboards,

Boston radio

other promotional means used by

print advertising,

and sales

of

promotional materials such as coasters, balloons, hats, table

tents

and table

sales

in the

tent

holders.

Boston area

By 1992

had exceeded

appellant's total
$3 million

and its

total sales had exceeded $20 million.

Appellee is
10, 1992, it
Kenmore

a restaurant and

brew pub.

opened for business on Brookline

On April

Avenue in the

Square section of Boston, directly across the street

from Fenway Park, home of the Boston Red Sox.

As a brew pub,

appellee is a licensed restaurant that brews beer on-site for

consumption

by its

appellee is named

patrons.

One

"Boston Red."

of the

In addition

beers brewed

by

to brewing and

serving its own beers, appellee offers a wide range of food.

Appellant commenced this
alleging

trademark

misappropriation and
of the Lanham

and

trade

action on April 14,

name

infringement,

unfair competition pursuant

Act, 15 U.S.C.

1125(a), the

1992

to

43(a)

general laws of

the Commonwealth of Massachusetts and

amended

complaint

"adoption

of

alleged,

`BOSTON

common law.

inter
_____

BEER WORKS'

alia,
____
made

The first

that
with

appellee's
knowledge of

Plaintiff's prior use of the trademark and trade name `BOSTON

BEER COMPANY'

and its

...." constitutes a

`BOSTON BRAND'

violation of

family of

43(a) of

trademarks

the Lanham Act.

-44

First Amended Complaint at

17.

On April 15 appellant moved

for a temporary restraining order to stop appellee from using

the names "Boston

Beer Works" and "Boston Red."

The motion

was denied the same day.

On April
injunction.

After

21

appellant

two days

moved

of hearings

district court denied the motion.

dated June

18, 1992

court found that the

(the "June

for

and

preliminary
argument the

In a Memorandum and Order

Memorandum"), the

appellant's marks were not

district

entitled to

trademark2 protection.
The district

court found

first that

"plaintiff's

`BOSTON BEER' mark as used

is

in its name `BOSTON BEER COMPANY'

sufficiently descriptive

generic

and

thus

so

as

unprotectable."

not
June

to

be

considered

Memorandum

at 9.

Next, the court found that "plaintiff's `BOSTON' mark as used

in its `SAMUEL ADAMS BOSTON' beers and its `BOSTON LIGHTSHIP'
beer

is a descriptive term."

In fact, the court found that

appellant did not even

contend that its marks

but descriptive.

Therefore, the court stated, in order

to

satisfy its

Id.
___

burden of

establishing that

were anything

its marks

are

____________________
2. For purposes of this opinion, the term trademark
includes trade names as well. Although there are differences
between the two concerning, inter alia, registration under
_____ ____
the Lanham Act, the differences are not relevant to our
decision in this case.
See Union National Bank, Laredo v.
___ ____________________________
Union National Bank, Austin, 909 F.2d 839, 841 n.2 (5th Cir.
___________________________
1990) (citing Blinded Veterans Assoc. v. Blinded American
________________________
________________
Veterans Foundation, 872 F.2d 1035, 1040 n.11 (D.C. Cir.
____________________
1989)).
-55

entitled
make a

to trademark

protection,

showing, under a

"[p]laintiff must

likelihood standard, that

and marks have acquired secondary meaning."

still

its name

Id.
___

After reviewing the relevant preliminary injunction

considerations, the court
shown a likelihood

concluded that appellant

had "not

of establishing by a preponderance of the

evidence a secondary meaning for `BOSTON BEER' and `BOSTON.'"

Id.
___

at 15.

Specifically, the

appellant had been using

the

term "Boston"

Lager since

court

found that

the name "Boston Beer

in connection

late 1985,

not all

with

although

Company" and

Samuel Adams

of appellant's

Boston

promotional

materials contained "The Boston Beer Company" name, and those

that did,

always used it

beer marks.

"For example,"

cards plaintiff prints

restaurants
on

along with another

the court pointed out,

to be inserted

"on the

into table tents

for

and bars, the `BOSTON BEER COMPANY' name appears

the bottom

logo and its

of the

card with plaintiff's

slogan `The Best Beer in

the top of the card."

June Memorandum at 11.

all of the promotions that

company's

"place[d] the

name,

smaller type

`SAMUEL ADAMS'

America' appearing at

court found that

item."

of appellant's

name

on the

than the rest

of the words on

far

labels

Moreover, the
did include the
bottom

and in

the promotional

Id.
___
As

appellant's

three

as

the

"Boston"

beers,

appearing
the

court

on

each
noted

of
that

-66

"Boston" did in fact appear in each of the beers' names.

addition,

the

court

found that

each

beer's

contained an illustration

or logo, and that,

Samuel Adams

and Boston

Boston Lager

In

bottle label
on bottles of

Lightship, the

words

"Samuel Adams" and "Lightship" were in larger print

than the

words "Boston

Finally,

Lager" and

"Boston," respectively.

the court found that the name "Boston

at the

bottom of

Beer Company" appeared

all appellant's labels

in a

smaller type

than either the illustration or the other words on the label.

It
substantial

undisputed

that

appellant

engaged

in

advertising and promotion of its products in the

Boston

area.

efforts

were

connection

The court
"focused
between

products[,]"
between

was

and

not

found,
in

Id. at 15-16.
___

examined

appellant's

direction
ADAMS'

towards

establishing

Beer" and

promoting

and

radio

plaintiff's
a

"Boston" and

In reaching this
billboards,

appellant's

of

'SAMUEL

the terms "Boston

products.

the

however, that

connection
its beer

result, the court

advertisements,

various

promotional

brochure.

Finally,

majority of

the

and

court pointed

out

promotional
that the

appellant's advertising is directed

best-selling
appellant

paraphernalia,

brand,

Samuel

Adams Boston

produces other "Samuel

part of its "Boston" family.

vast

towards its

Lager,

and

Adams" beers that

that

are not

As the court also observed,

[t]he fact that plaintiff produces other

Samuel Adams beers, with the same Samuel
-77

Adams logo as appears on its "Samuel

Adams Boston Lager" and "Samuel Adams
Boston Ale" beer labels, but without the
"BOSTON"
family
name,
reduces
the
likelihood that a consumer will associate
"BOSTON"
or
"BOSTON
BEER"
with
plaintiff's products.
June Memorandum at 14-15.
notwithstanding
"Boston

Beer

the

its

advertising

connection

duration

Company"

connection with

In summary, the court found that,

name

three of its

of
and

appellant's
the

use

term

"Boston"

products, it had

and promotional

between "Boston Beer"

activities

of

the
in

not directed
to

creating a

and its products,

and had

not made efforts

at promoting a connection

between "Boston"

and its products, and therefore it had not shown a likelihood

of establishing secondary meaning.
On February

9 and 10,

held, at the conclusion of

from the bench.

1993 a

non-jury trial

was

which the court gave its decision

The sole issues litigated were:

(1) whether

secondary meaning had attached to "Boston" and "Boston Beer,"

and (2) if
existed.

so, whether
Appellant's

a likelihood

of consumer

principal evidence at

confusion

trial consisted

of a consumer survey.
The survey was conducted
from the greater-Boston
of

200.

approximately

Each

group

20 beers

beers produced by

among 400 "beer drinkers"

area who were split

was

provided

and asked

into two groups

with

to identify

each of three different

choice
the

of

beer or

"beer companies."

-88

Both

groups were asked

about the "Latrobe

Brewing Company"

and the "Anheuser-Busch company."

One group was asked about

Boston Beer Company

about Boston Beer

and the other

Works.

Included
which

on the list

appeared as

"Lightship."

The

were appellant's three

"Samuel Adams

beer,"

"Boston" beers

"Boston Ale,"

other beers consisted of

and

various domestic

and imported brands.

When

asked

what

brand of

beer

was

produced by

responded with Samuel

Adams beer.

Boston

Beer Company, 36%

Boston

Ale and Lightship each garnered 4%, and 59% responded

that they did not know.

Boston Beer
Boston

Similarly, for the group asked about

Works, 31% responded with Samuel

Ale, 2%

Lightship

and 66%

could

Adams, 4% with

not identify

any

brand.
After hearing all of the evidence, the court found:

The principal difference

between the
evidence that was before me at the time
of the preliminary injunction hearing and
the evidence that is before me in the
full development of the case here on
trial is the addition of the survey
evidence that the plaintiff has offered.
I find that that is not sufficient to
establish a secondary meaning and indeed
as fact finder I find that it does not
even strongly support an inference of
secondary meaning.
The court went on to identify what it felt were two
problems
inferences

with the

survey.

favorable to

First

it

appellant from
-99

had trouble

drawing

the survey

because

participants were

told

that they

were

going to

be

asked

questions about beer "companies" as opposed to a neutral term

such as "producers" or "brewers."
Second
found

and more

importantly,

that the survey results simply

support for an inference of

colloquy with

the district

did not provide strong

secondary meaning.

appellant's trial

court

counsel the

In a lengthy
district court

explained that "[a] strong inference I draw from this is that

when the interviewee is prompted by three words, two of which
are 'Boston
Adams'."

Beer,' a
"Is that

third of them
enough"

the

come back

with 'Samuel

court queried,

"if

[the

interviewees are] just associating Samuel Adams with somebody

who produces beer in
found

that the

association

Boston ...."

survey

between

product and source.3

provided a

product

and

In other words, the court

strong
place,

inference of
but

This association, the

not

an

between

court believed,

explained the fact that similar percentages associated Samuel

Adams with Boston Beer Company and Boston Beer Works.
According to the court, the results
support[ed] an inference of uncertainty,
if not confusion, as between Boston Beer
Works and Boston Beer Company, but that
is not the issue that is decisive of the

____________________
3. On this point, the district court commented: "Well,
don't people associate Samuel Adams with Boston, at least any
of them who have their American history course still in
mind?" The court added that this might particularly be the
case with,
"upper-scale Samuel Adams beer drinkers[.]"
Appendix at 608.
-1010

adequacy of the evidence before me to

show secondary meaning.
So taking into
account that evidence along with all the
other evidence before me, I find by a
preponderance of the evidence that there
has not been an establishment of
a
secondary meaning that associates the
product with Boston Beer Company.
Because

the trial court

found that appellant

had failed to

meet its burden on secondary meaning, the court did not reach
the issue of likelihood of confusion.

This appeal followed.

II.
II.
___
DISCUSSION
DISCUSSION
__________
Appellant argues that the
legal

error by failing

the marks lack

to make an

district court committed

independent finding that

"inherent distinctiveness," to go

along with

its finding that

descriptive.

the marks "Boston"

and "Boston Beer"

were

Alternatively, appellant contends that, even if

the court did not commit any

legal error on this front,

its

finding that the marks are descriptive was clearly erroneous.

Next, appellant argues that the district court's finding that
the survey was not highly probative of secondary
clearly erroneous.
the

Alternatively,

district court misunderstood

meaning.
alone

meaning was

appellant contends
the doctrine

that

of secondary

Finally, appellant argues that the survey, standing

or together

with the

other

evidence, established

likelihood of confusion as a matter of law, and therefore the

court's finding that

its marks lacked secondary

meaning was

illogical.
-1111

Neither mark over which appellant asserts exclusive

rights

Therefore
Lanham Act

"Boston

Beer"

the present

and

claim is

"Boston"

based upon

which covers unregistered

43(a) prohibits any person from using

are

registered.
43(a)

trademarks.4

of the
Section

in connection with any goods ... or any

container for goods, ... any word, term,
name,
symbol,
or
device,
or
any
combination thereof ... which ... is
likely to cause confusion, or to cause
mistake, or to deceive ... as to the
origin, sponsorship, or approval of his
or her goods ... by another person.
15 U.S.C.

1125(a).

Lanham Act
the
under

It

is settled

that

43(a) of

protects qualifying unregistered marks,

general
2

principles qualifying
of the

determining

whether

protection under

a mark

Lanham

Act are

an

unregistered

43(a).

the

and that

for registration

generally applicable
mark

is

Two Pesos, Inc. v.

_______________

in

entitled to
Taco Cabana,
____________

Inc., __ U.S. __ , 112 S. Ct. 2753, 2757 (1992).

____
A

court's

trademark protection

inquiry

whether

term

starts with the classification

term along the spectrum of

the

into

spectrum there are

"distinctiveness."

generic terms that

common usage to identify a

merits
of that

At one end of

have passed into

product, such as aspirin, and can

____________________
4. A trademark is defined as "any word, name, symbol,
or device, or any combination thereof used by a person to
identify and distinguish his or her goods, including a unique
product, from those manufactured or sold by others and to
indicate the source of the goods, even if that source is
unknown." 15 U.S.C.
1127.
-1212

never be protected.
Brewing Co.
___________

In the middle

terms, such as
only if

consumers

S. Ct. at 2757;

v. Falstaff Brewing Co., 655

_____________________

Cir. 1981).

but

Two Pesos, 112

_________

F.2d 5,

there are so-called

a geographical term, which

it

has acquired

814 F.2d 812, 816 (1st

descriptive

can be protected,

"secondary meaning"

by which

at 2757; Volkswagenwerk AG v. Wheeler,

_________________
_______
Cir. 1987).

At the other end

spectrum, there are suggestive, arbitrary

that can

be protected

terms are

Pesos, 112
_____
Corp.,
_____

7-8 (1st

associate it with a particular producer or source.

Two Pesos, 112 S. Ct.

_________

These

Miller
______

considered

considered

S. Ct. at

762 F.2d

without proof

139,

and fanciful terms

of secondary

meaning.

"inherently distinctive."

2757; see Wiley v.

___ _____
141

of the

(1st Cir.

'inherently distinctive'

if

Two
___

American Greetings
__________________

1985)

("a design

is

it

is fanciful

or

arbitrary") (footnotes omitted).

Once the determination has been made that a term is
entitled to trademark protection, the pivotal inquiry becomes
whether

the allegedly

consumer

confusion.

infringing mark

is

likely to

cause

See Boston Athletic Assoc. v. Sullivan,

___ ______________________
________

867 F.2d 22,

28 (1st Cir.

1989); Wheeler, 814 F.2d

_______

at 817.

That is, whether a consumer

is likely to believe that Boston

Beer Works' products are in

fact produced by The Boston Beer

Company.
Whether

term

is

generic,

descriptive,

inherently distinctive is a question of fact.

or

See Wiley, 762

___ _____

-1313

F.2d

at

141.

Similarly,

secondary meaning is
F.2d at

816.

mark

has

also a question of fact.

Accordingly, the district

both of these questions are

error.

whether

acquired

Wheeler, 814
_______

court's findings on

subject to review only for clear

Atlantic Track & Turnout Co.

_____________________________

v. Perini Corp., 989

_____________

F.2d 541, 543 (1st Cir. 1993).

As this
error hurdle

court has

is ...

previously noted,

quite high."

Lenn v.
____

"[t]he clear

Portland School
_______________

Committee, 998 F.2d 1083, 1087 (1st Cir. 1993).

_________

Of course, a

district court's rulings of law are reviewed de novo.

__ ____
A.
A.

Id.
___

Inherent Distinctiveness
Inherent Distinctiveness
________________________
At

the outset,

are inherently

distinctive, as

are therefore entitled to

of secondary
failed

appellant contends that

meaning.

its marks

opposed to descriptive,

and

trademark protection without proof

Because we

hold that appellant

has

to preserve the issue of inherent distinctiveness for

appeal, we decline to reach the merits of its contentions.

The
litigant's

law

in

circuit

failure to explicitly

district court forecloses

for the

this

first time

is

crystalline:

raise an issue

before the

that party from raising

on appeal.

Institute of Technology, 950

________________________

See McCoy
___ _____
F.2d 13,

the issue

v. Massachusetts
_____________

22 (1st

Cir. 1991),

cert. denied, 112 S. Ct. 1939 (1992).

_____ ______
After
uncover

scouring

single

the

instance,

record,

we

either

orally

-1414

have

failed
or

to

through

submission,

advocated that

its marks

were

From the

outset of

this

litigation appellant had pitched its case on the theory

that

anything

its

where appellant

but descriptive.

very

marks are descriptive, that they have attained secondary

meaning, and are thus entitled to trademark protection.

trial

below proceeded on

the common understanding

marks

were

and

descriptive;

secondary meaning and

triable

issues.

were

claims, and

that the

acknowledged

likelihood of confusion were

Moreover,

decision, the trial

findings

appellant

after

rendering

court asked appellant if

necessary in

order

to

The

the only

its

bench

any additional

address all

appellant did not request a

that

of

its

finding on inherent

distinctiveness.
According to appellant, it
underlining, and
pre-trial

preserve

Appendix

that the
this

at 444.

act

issue

of

in

appeal").

a perfunctory
Because

We have

underlining

for appeal.

Tirado-Delgado, 982 F.2d

______________
made

to, appellee's

proposed

finding that the marks were "neither arbitrary nor

fanciful."
finding

thereby objecting

preserved this issue by

is

See
___

34, 41 (1st Cir.

manner

we see

no

little trouble

in

insufficient

to

Rodriguez-Pinto v.
_______________
1993) ("arguments

below are

deemed

waived on

reason to

diverge from

customary practice, we treat this argument as waived.

B.
B.

Secondary Meaning
Secondary Meaning

our

_________________

-1515

Because appellant's marks are descriptive, they are

entitled

to

trademark

secondary meaning.

protection only

upon

showing of

Secondary meaning

refers to a word's, or a sign's, ability

to tell the public that the word or sign
serves a special
trademark function,
namely, that it denotes a product or
service that comes from a particular
source. Words and phrases, in ordinary,
non-trademark, use normally pick out, or
refer to, particular individual items
that exhibit the characteristics that the
word or phrase connotes (without specific
reference to the item's source).
DeCosta v. Viacom International, Inc., 981 F.2d 602, 606 (1st
_______
__________________________
Cir. 1992),

cert. denied, 113

_____ ______

S. Ct. 3039 (1993);

see also
___ ____

Wheeler, 814 F.2d at 816 ("words which have a primary meaning

_______
of

their

particular

own

... may

product,

by

come

long
to

be

use in
known

connection
by

with a

the public

as

specifically

designating

that

Volkswagenwerk AG v. Rickard,
__________________
_______
1974));

the

492 F.2d

(quoting

474, 477

(5th Cir.

President & Trustees of Colby College v.

_________________________________________

College-N.H., 508 F.2d

____________
achieved

product")

804, 807 (1st Cir. 1975)

secondary meaning

consuming

exclusively

public

to

secondary meaning
descriptive
to associate

the

appropriate

has been

goods

the

name

established in

with a

quantity of
as

party").

mark where the mark no

the

(a name has

when "a significant

understand

Colby
_____

referring

Accordingly,
a geographically

longer causes the public

particular

associate the goods with a particular source.

place,

but

to

Burke-Parsons______________

-1616

Bowlby Corp. v. Appalachian Log Homes, 871 F.2d 590, 595 (6th
____________
_____________________
Cir.

1989)

(citing

American Footwear
Corp.
__________________________

Footwear Co. Ltd., 609 F.2d

_________________

v.

General
_______

655 passim (2d Cir. 1979), cert.

______
_____

denied, 445 U.S. 951 (1980)).

______
"Proof
evidentiary

of

secondary

requirements."

Construction,
____________

915 F.2d

meaning

entails

Perini
Corp.
______________

121, 125

(4th

vigorous

v.

Cir. 1990)

Perini
______
(quoting

Thompson Medical Co. v. Pfizer Inc., 753 F.2d 208,

_____________________
____________

217 (2d

Cir. 1985)); see Bank of Texas v. Commerce Southwest, Inc.,

___ ______________
_________________________
741

F.2d

785,

787

(5th

Cir.

1984)

(evidentiary

burden

necessary to establish secondary meaning for a geographically

descriptive term is substantial).
seeking protection of a mark
that secondary
Co.
___

Moreover, it is the

who bears the burden of proving

meaning has attached.

v. McNeil-P.P.C., Inc., 973

____________________

1992);

Bristol-Meyers Squibb
_____________________

F.2d 1033,

1041

(2d Cir.

Blinded Veterans Assoc., 872 F.2d at 1041.

_______________________
To

establish

"Boston," not only

heard

party

by

meaning

must appellant prove

consumers

longer means

secondary

that the

in connection
beer

with

was brewed

in

the

mark

that, when read

beer,

or

"Boston" no

in Boston

or by

Boston-based brewer, but that the consuming public recognizes

that the word "Boston" identifies

appellant as the source of

the beer.

as

used

Similarly, with respect to the mark

"Boston Beer,"

in

Beer

appellant's

name,

The

Boston

Company,

-1717

appellant

must prove

consuming

public associates

appellant's
"But

that

business.

substantial
those

portion

of

words specifically

See Perini Corp.,

___ ____________

915 F.2d

the
with

at 125.

secondary meaning cannot be recognized where, despite a

degree of association between the mark and the

producer, the

original

as

meaning remains

remains descriptive
connotations

dominant;

in its primary

cannot

justify

so

long

the

mark

significance, subsidiary

trademark

treatment."

R.

Callmann, Unfair Competition, Trademarks and Monopolies,

_______________________________________________
19.26
871

at 144 (4th ed. 1989); see Burke-Parsons-Bowlby Corp.,

___ __________________________
F.2d

at

secondary

595

(geographically

descriptive

term

lacks

meaning if it still primarily denotes a geographic

area as opposed to a single source).

Among
determining

the factors this court generally looks to in

whether a

term has

acquired secondary

are:
(1) the length and manner of its use, (2)
the nature and extent of advertising and

meaning

promotion of the mark and (3) the efforts

made in the direction of promoting a
conscious connection, in the public's
mind, between the name or mark and a
particular product or venture.
Wheeler,
_______

814 F.2d

at

Rickard, 492 F.2d

_______

816

(quoting

at 478).

Proof relating

constitutes circumstantial evidence

draw

reasonable

inferences.

district court found,

Volkswagenwerk AG
__________________

to these factors

from which a court

In

its

v.

bench

and appellant does not

must

decision, the
dispute, that,

-1818

except
not

for the survey, the evidence of secondary meaning was

materially

different

preliminary injunction
that

the

addition

at

trial

hearing.

of

the

than

The

survey

it

was

court then
to

the

at

the

concluded

circumstantial

evidence did not alter its prior findings, and that appellant
had not met its burden of establishing secondary meaning.
its brief appellant
earlier

findings.

does not explicitly address

Instead,

appellant

court's treatment of the survey is

alleges

In

the court's
that

the

grounds for reversing its

finding on secondary meaning.

We turn to the survey.

Survey evidence has become a well-recognized

of

establishing

secondary

meaning.

See
___

means

President and
______________

Trustees of Colby College, 508 F.2d at 809; Papercutter, Inc.

_________________________
_________________
v.

Fay's Drug Co., Inc., 900 F.2d 558,

_____________________

In

fact, consumer surveys and

evidence on this question.

564 (2d Cir. 1990).

testimony are the only direct

See International Kennel Club v.

___ __________________________

Mighty Star, Inc.,

__________________

846

F.2d 1079,

1085

(7th Cir.

1988).

Appellant

its

survey

three

steps.

First,

explains

in

appellant points to the percentage of participants, 36 and 31

percent respectively,

who identified The Boston Beer Company

and Boston Beer

Works as the producer of

Next, appellant

contends that

the

public associates

"Boston

Beer."

Samuel

Finally,

Samuel Adams beer.

this correlation
Adams

beer

with

proves that
the

words

appellant concludes that secondary

meaning has been established because whenever a consumer sees

-1919

or

hears

the term

product with the

court found

"Boston

Beer,"

it

will associate

brewer of Samuel Adams beer.

that the survey

the

The district

did not bridge the

logical gap

between steps two and three.

Our examination
convinces

us that,

of

while

the

the

survey

survey

and

its

might

results

provide

some

evidence of secondary meaning, the district court's treatment

of

the survey

was

not

clearly

finding, that the survey results

association
not

as opposed to

inconsistent with

erroneous.

The

court's

demonstrate a product-place

a product-source
______

the survey

association, is

results,

and provides

viable alternative to the explanation proffered by appellant.

Just
presented

because

with a

list

one-third
of

of those

beers and

surveyed,

when

brewer whose

name

contained the words

"Boston Beer," matched that

Samuel Adams

beer,

does not

Beer,"

in

used

necessarily
___________
probable, as

connection

assumed
the

mean
with

a secondary

district

court

that the

brewer with

words

appellant's
meaning.
lucidly

"Boston

name,

It

is

have

just as

explained,

that

appellant's marks

are still primarily perceived by consumers

as geographically

descriptive terms, and that

simply
beer.5

aware of

the

Moreover,

____________________

the

fact

that Samuel

district

court

Adams

consumers are
is a

observed

Boston

that

the

5. Even assuming that appellant's reading of the survey

results is the correct one, a positive response rate of 36%
is hardly overwhelming.
See generally Callmann, supra,
___ _________
_____
-2020

survey was somewhat suggestive in that it gave the impression

that Boston Beer

Works was a "company,"

like Anheuser-Busch

and Latrobe, as opposed to a restaurant/brew pub.

Furthermore,
establishes
"Boston,"

if

the

survey

unequivocally

secondary meaning in the marks "Boston Beer" and

then we are at a

loss to understand why, when 36%

of those surveyed thought that

Samuel Adams beer was

brewed

by The Boston Beer Company, only 4% of the same group thought

that Boston
marks

Ale was also produced by

have acquired secondary

that company.6

meaning, the same

If the

people who

selected Samuel Adams as one of appellant's brews should have

selected Boston Ale as well.
Because
secondary

meaning

the district
was

based

court's ultimate
upon

its

finding on

consideration

of

circumstantial as well as direct evidence, we briefly discuss

the former.

We have already set forth

the relevant factors

for considering circumstantial evidence of secondary meaning,

as

well

as the

district court's

evidence thereunder.

thorough analysis

The district court's finding

circumstantial evidence

of the
that the

of secondary meaning did not support

an inference favorable to appellant is well-supported.

____________________
19.27.50 at 205 (collecting cases).
6. Additionally, it is possible that there was no
overlap between the people who selected Samuel Adams beer and
those who selected Boston Ale.
-2121

After

reviewing

particular emphasis
error,
that

on appellant's

clear or otherwise,
appellant

the

failed

to

entire

record,

survey, we

in the district
carry

placing

can find

no

court's finding

its

burden

of

proving

that

the

trial

secondary meaning.
Next
committed

appellant

argues

court

legal error by "rejecting" the survey for "failure

to show any consumer identification of `company'."

According

to appellant this
not
name.

was a mistake because the

require that the

As

Lanham Act does

consumer actually know

a preliminary matter, appellant

the producer's

is incorrect when

it states that the district court "rejected" the survey.

district court accepted the survey
careful consideration

The

into evidence and gave it

before concluding that the

survey did

not provide a basis for a finding of secondary meaning.

Furthermore,
legal

error

ourselves,

to

appellant

the

court.

incorrectly
At

the district court

the

risk

attributes
of

repeating

found that appellant

had not

met its burden of proving that its marks had come to identify
a single
geographic

source of beer
origin.

as opposed to simply

This

finding

does

identifying a

not rest

upon

an

erroneous view of the law.

Finally, appellant
around the

district

Appellant maintains

tries

to

court's finding
that because the

execute

an

on secondary

end-run
meaning.

survey demonstrates

-2222

likelihood

of consumer

confusion

between

The Boston

Beer

Company

and

products,

its products

and

secondary meaning

that a finding of a

Boston

Beer Works

must exist.

and

While it

its

is true

likelihood of confusion could only occur

in this case if secondary meaning had attached to appellant's

marks,

appellant's

argument

places

the

cart

before

the

Clydesdale.
The
were
not

district court

not entitled to

found

trademark protection because

attained secondary meaning.

not need to address the

The determination

that appellant's

Accordingly, that court did

as to

whether a

likelihood of

3 (1st Cir. 1993)

Keds Corp. v. Renee International Trading Corp., 888

__________
_________________________________

215,

generally

222

(1st

Cir. 1989)).

based upon eight

factors).

finding on secondary

Because we

determination is
of which

See id. (setting out the

___ ___

affirm

the

meaning, we need not

of likelihood of confusion.
Affirmed.
Affirmed.
________

This

separate factors, each

requires its own factual findings.

eight

confusion

See Aktiebolaget Electrolux v.

___ _______________________

Armatron International, Inc., 999 F.2d 1,

_____________________________

F.2d

they had

question of likelihood of confusion.

exists is a question of fact.

(citing

marks

district court's
address the issue

-2323