The Board affirmed a refusal to register the mark VANILLA JAVA PORTER for beer [PORTER disclaimed] on the ground that applicant, who was seeking registration under Section 2(f) of the Trademark Act, failed to prove acquired distinctiveness. In re Detroit Rivertown Brewing Company, LLC, Serial No. 86640818 (July 10, 2017) [not precedential] (Opinion by Judge Susan J. Hightower).

Applicant conceded that VANILLA JAVA PORTER is not inherently distinctive by amending its application to seek registration under Section 2(f). Thus the only issue for the Board was the sufficiency of applicant's evidence of acquired distinctiveness.

Applicant submitted an affidavit from its president stating that the mark has been in use for 10 years, the beer has been sold in 20 states and the District of Columbia, sales have exceeded $5 million dollars, advertising expenditures have totaled more than $250,000, the beer has been mentioned in numerous media articles, it is the flagship beer of one of the fastest growing craft breweries in the United States, and the first 20 Google hits for "Vanilla Java Porter" refer to applicant and its beer.

The Board observed that more evidence of acquired distinctiveness is required when a mark is so highly descriptive. It deemed VANILLA JAVA PORTER to be a highly descriptive mark, pointing to dictionary definitions of the constituent words and to applicant's own website description:

With a beautifully crafted, copper cored, English Style Porter at its heart, Atwater’s Vanilla Java Porter tips its hat to the modern audience with the addition of vanilla and coffee that is locally brewed cold to eliminate burnt flavors. The beer, vanilla & coffee tumble together, enhancing the smooth nature of each.

Although under Section 2(f) the USPTO may accept five years of “substantially exclusive and continuous use” as prima facie evidence of acquired distinctiveness, it not required to do so. "For highly descriptive marks, passage of time alone may be insufficient to establish secondary meaning."

We find VANILLA JAVA PORTER to be such a phrase. Because it is so highly descriptive of Applicant’s goods, ten years of use – even if it has been substantially exclusive, which we assume without deciding – is insufficient to establish prima facie that the phrase has acquired distinctiveness.

As to the sales, advertising, and other evidence, [t]his evidence does not establish “the effectiveness of such use to cause the purchasing public to identify the mark with the source of the product.'"

And so the Board affirmed the refusal under Section 2(e)(1).