Tuesday, April 08, 2008

TTAB Reverses Mere Descriptiveness Refusal of "PETIT-PETITE" for Wine

Finding that the PTO had failed to carry its burden to show the mark PETIT-PETITE to be merely descriptive of wine, the Board reversed a 2(e)(1) refusal. In re Phillips Farms, LLC, Serial No. 78669171 (March 26, 2008) [not precedential].

Syrah grapes

The PTO first squashed Applicant's argument that the case was not ripe for appeal: the subject application was filed under Section (1)(b) and, since a specimen of use had not yet been filed, the PTO incorrectly "conducted a preliminary review and found that the mark PETIT-PETITE is descriptive for wine, all wines, in all market conditions, absent the realities of the mark used in commerce." Applicant cited no authority for that proposition and the Board found none.

The Examining Attorney relied on a translation showing that "petit" is the French word for "petite," and on a handful of Internet references in which the words "petit" or "petite" appear in connection with wine or grapes.

The Board, however, found the PTO's evidence to be insufficient to support the refusal to register. Although excerpts from Internet articles may be competent evidence, "most of the instances in which 'petite' appears are in the context of direct references to 'Petite Sirah' (or 'Petite Syrah') grapes and wine or 'Petit Verdot' grapes." A single Internet article referring to "Petite" grapes is insufficient to establish a prima facie case. Likewise references to "petite" grapes in the Department of Agriculture's GRIN database were of dubious evidentiary weight since it is not clear that ordinary consumers would be aware of, or consult, that database; in any case, the PTO's evidence would still fall short of proving mere distinctiveness.

Observing that any doubt regarding mere descriptiveness must be resolved in favor of the applicant, the Board reversed the refusal.

Text Copyright John L. Welch 2008.


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