Tuesday, December 05, 2006

Citable No. 49: TTAB Upholds Disclaimer Requirement of "ROUGE" in "GALA ROUGE" for Wine

In its 49th citable decision of the year, the Board affirmed a PTO requirement that Applicant Brown-Forman disclaim the word ROUGE in its mark GALA ROUGE for wine. In re Brown-Forman Corp., 81 USPQ2d 1284 (TTAB 2006).

Applicant did not dispute that the word "ROUGE," by itself, would be understood as French for "red," and that it is therefore merely descriptive of Applicant's wines. The real dispute was whether GALA ROUGE is a unitary mark, in which case ROUGE need not be disclaimed.

"Stated differently, would ROUGE be perceived by purchasers merely as a descriptor of a characteristic of applicant's wine, i.e., its color or type, or would purchasers perceive ROUGE in applicant's mark as a modifier of the word GALA, creating the unitary expression GALA ROUGE which would be understood as 'red party' or 'red celebration'?"

Applicant likened its mark to the terms BATON ROUGE and MOULIN ROUGE, and relied as well on registrations (sans disclaimers of "rouge") for the following marks for wine: LE MULET ROUGE ("the red mule"), POINT ROUGE ("red dot"), TERRE ROUGE ("red earth"), CORDON ROUGE, BLANC DES COLINES ROUGE ("white wine from the red hills"), MONT ROUGE COLLECTION, LA FLEUR ROUGE ("the red flower"), and PRINCE ROUGE ("red prince"). The Board, however, was not moved.

With regard to MOULIN ROUGE, the Board refused to take judicial notice as to the familiarity of U.S. purchasers with that term. In contrast, the Board noted that standard reference works named BATON ROUGE as the capital of Louisiana. But BATON ROUGE is distinguishable from GALA ROUGE because the former has a "pre-existing, well-recognized unitary significance (as the name of a city)." GALA ROUGE does not.

As to the previously registered marks, "the word ROUGE in such expressions clearly refers to and modifies the preceding noun, not the wine itself, because those nouns denote things that are or could be colored 'red.'"

"A 'gala,' by contrast, is not a thing which would or could normally be described as being 'red.' 'Red gala' has no obvious, immediate and inherent unitary significance which would cause purchasers to view ROUGE as modifying GALA, rather than as describing the wine." *** The mere grammatical coherence of 'red gala' does not suffice to make GALA ROUGE a unitary expression in the eyes of purchasers."

The Board noted Applicant's marketing efforts ("Don't forget to serve your favorite Gala Rouge wine. Then party red!") but pointed out that the marketing motif "is not part of the mark sought to be registered, and it could be changed or abandoned at any time, leaving simply the words of the mark, GALA ROUGE."

In sum, the Board found that GALA ROUGE for wine is not a unitary mark, and therefore that the requirement for a disclaimer of ROUGE was appropriate.

Text Copyright John L. Welch 2006.


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