Tuesday, October 18, 2005

"FRENCH KISS" Deceptively Misdescriptive for Vanilla Flavored Schnapps, Says TTAB

In its odyssey through the PTO registration process, New Orleans-based Sazerac Company found itself unable to navigate between the Scylla and Charybdis of Section 2(e)(1): the Examining Attorney deemed its mark FRENCH KISS either merely descriptive or deceptively misdescriptive of "vanilla flavored schnapps." The Board embraced the latter refusal. In re Sazerac Co., Serial No. 76328505 (Sept. 30, 2005) [not citable].

As to mere descriptiveness, Examining Attorney Samuel E. Sharper, Jr., contended that "FRENCH KISS describe[s] a type of alcoholic beverages [sic] [and] Applicant's goods consist of a type of alcoholic beverage." As to the alternative refusal, he argued that consumers confronted with the mark FRENCH KISS "would assume that applicant's goods are pre-mixed alcoholic cocktails, not schnapps."

Sazerac schnapped back, asserting that its mark is not merely descriptive because there is no one recipe for the drink known as a "french kiss," and therefore "[n]o member of the purchasing public could reasonably expect to receive the same cocktail at any given drinking establishment." Therefore the mark FRENCH KISS does not describe Applicant's goods. As to the refusal on deceptively misdescriptive grounds, Sazerac maintained that its bottles are clearly labeled "vanilla liqueur" and so a purchaser would not be deceived as to its goods.

The Board noted that the record evidence identified "french kiss" as a cocktail that may be made from a variety of recipes, a few including raspberry or peach schnapps, but none including vanilla schnapps. Therefore it concluded that FRENCH KISS is not merely descriptive of a function, feature, characteristic, quality, ingredient, purpose or use of Applicant's goods.

As to the alternative refusal, the Board rather awkwardly stated the test to be "whether FRENCH KISS misdescribes a use of the goods" and, if so, "whether prospective purchasers are likely to believe the misdescription actually misdescribes the goods." [sic]. The Board answered both parts affirmatively, for two reasons:

"First, a 'French Kiss' is a cocktail made up of multiple ingredients, and the record does not reflect that 'vanilla flavored schnapps' is one of the ingredients of a 'French Kiss' beverage. Second, a 'French Kiss' beverage is a mix of ingredients, and applicant's 'vanilla flavored schnapps' is not a mix of ingredients."

The Board also found that "prospective purchasers are likely to believe the misdescription."

"... mixes of alcoholic beverages are available for sale on the retail level. Purchasers who know of a 'French Kiss' cocktail will believe that applicant's goods are the 'French Kiss' cocktail containing a mix of ingredients...."

Finally, as to Sazerac's label argument, the Board noted: "it is well established that the mere fact that the nature of the goods is revealed by matter on labels on the goods themselves does not preclude a determination that a mark is deceptively misdescriptive."

Text Copyright John L. Welch 2005.


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