Tuesday, June 29, 2010

TTAB Affirms Rejection of Catalogue Specimen for "CELLAR 360" for Wine

Applicant submitted, as its specimen of use for the mark CELLAR 360 for wine, a catalogue mailed to prospective customers, with the mark appearing on the cover (see below). Examining Attorney Karen K. Bush refused registration under Sections 1, 2, and 45 of the Trademark Act on the ground that the specimen does not show use of the applied-for mark as a trademark for the goods. The Board affirmed the refusal. In re Foster's Wine Estates Americas Company, Serial No. 77018496 (June 16, 2010) [not precedential].


Applicant argued that the specimen is proper under Land's End and Sones as a display associated with the goods. The Board, however, agreed with the Examining Attorney that the mark "functions only as a service mark associated with the consumers’ ordering and purchasing of wine." (emphasis in original).

We actually view the basis for the refusal herein to be less analogous to the line of cases focused on displays associated with the goods, growing out of the nuanced case law surrounding Trademark Rule 2.56(b), and rather more like factual situations where an applicant has misapprehended the nature or correct categorization of the term. Here, the applied-for matter clearly functions as a service mark for retail store services, but not as a trademark for wine.

Applicant asserted that substantially all of the wine in the catalogue is produced by Applicant itself, and therefore that the mark functions as a source indicator for wine -- i.e., a trademark.

The Board, however, did not agree that the case turned on whether the wines are produced by Applicant. Rather the question was "whether consumers will recognize CELLAR 360 as a source indicator for particular bottles of wine." Noting that the mark does not appear on the bottles of wine, where trademarks for wine normally appear, the Board reasoned as follows:

A critical element in determining whether this term functions as a trademark is the impression the term makes on members of the relevant public. In reaching our decision herein, we are focused on the totality of the perceptions of the prospective consumer upon receiving this mailer with its attendant offerings from CELLAR 360. We conclude that CELLAR 360 will be seen as a service mark for retail store services featuring wines, but not as a trademark for wine.

And so the Board affirmed the refusal.

TTABlog comment: Is it just me, or are these catalogue/website specimen cases getting to be confusing? For example, how is this case different from the Odom's sausage case TTABlogged here?

Text Copyright John L. Welch 2010.

3 Comments:

At 1:16 PM, Blogger Brendan said...

This is clearly a step away from the sausage case (the result of which makes no sense to me whatsoever), and I think this is a correct decision. How can a catalog serve as a specimen for "wine" when the merchant is not offering its own branded wine in connection with the mark? Retail services, sure. But this specimen is clearly deficient for goods.

 
At 5:00 PM, Anonymous Marta Randall said...

It's difficult to see from the thumbnail in the Odom's case, but the Odom's design does show up on the packages for the sausages (see, http://www.tnpride.com/products.asp). Here, the Cellar 360 mark didn't show up on the bottles, just on the catalog. Seems pretty clear-cut to me.

 
At 6:54 PM, Anonymous John L. Welch said...

Maybe, Marta, but the Board didn't rely on the sausage packages, but just on the appearance of the mark at the bottom of the webpage.

 

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