Tuesday, September 11, 2007

Precedential No. 55: Wine Not? TTAB Gives Registrant a Break, Denies Fraud Claim

In this precedential ruling, the Board dismissed a petition for cancellation, finding that Respondent had not committed fraud in obtaining and maintaining its registration for the mark RUSTICO for "wines and sparkling wines." Although Respondent had used the mark only on sparkling wines and not on any other wines, the Board found its statement of use on "wines and sparkling wines" to be truthful and not fraudulent. Tri-Star Marketing LLC v. Nino Franco Spumanti S.R.L., 84 USPQ2d 1912 (TTAB 2007) [precedential].

The Board observed that "[t]he essence of this case is a rule of construction regarding an identification of goods in an application or registration." It noted that a label for Respondent's sparkling wine could serve as a proper specimen for an application covering "sparkling wine" and/or an application covering "wine." Indeed, Respondent could have filed two applications, each supported by the same label from a bottle of sparkling wine.

"As long as the general product terminology encompasses the specific product terminology in an identification of goods, and there is use on the specific product, there can be no fraud; that is, there is nothing fraudulent in providing an identification of goods that includes both a broad product term and a specific product term so long as the applicant/registrant is using it mark on the specific product ...."

Since Respondent could have obtained a registration for "wines," it has not obtained any rights to which it is not entitled.

Unlike Medinol Ltd. v. Neuro Vasx, Inc., 67 USPQ2d 1205, 1209 (TTAB 2003), "this is not a case in which the trademark was used on less than all of the goods." The Board was mindful of the meaning of "and," but nonetheless found that Respondent's statement that it was using its mark on "wines and sparkling wines" was a truthful statement.

Therefore there was no fraud.

Text Copyright John L. Welch.


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