TTAB Affirms Section 2(c) Refusal of MARTIN & WEYRICH ROSSO ALLEGRO for Wine

I don't think we've seen a Section 2(c) decision since the OBAMA BAHAMA PAJAMAS case in 2010, but we've got one here. A divided panel of the Board affirmed a Section 2(c) refusal to register MARTIN & WEYRICH ROSSO ALLEGRO for wine, because the applicant failed to provide the required written consent to registration from Mary Martin Weyrich and David Weyrich, the persons named in the mark. Applicant argued that these two individuals impliedly consented to registration, but the panel majority disagreed. In re O’Neill Beverage Co., Ltd., Serial No. 85152684 (August 15, 2013) [not precedential].

Section 2(c), in pertinent part, provides that: “No trademark ... shall be refused registration on the principal register on account of its nature unless it ... Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent....”

Applicant did not dispute that the term MARTIN & WEYRICH identifies the two particular individuals. The evidence of record provided by Examining Attorney Linda M. Estrada showed that they were previous owners of, and public associated with, the Martin & Weyrich Winery of Paso Robles, California.

Applicant O'Neill Beverage acquired the assets of Martin & Weyrich Winery under a Receivership Order that included a Preliminary Injunction requiring the Winery to surrender possession of its collateral, including all trademarks. However, neither individual was a named party in the proceeding, nor a signatory of those documents.

The panel majority examining the relevant documentation and found that these documents did not meet Section 2(c)'s "clear requirement" that the two individuals expressly consent in writing to registration of the marks at issue here. The Board observed that ownership of a mark does not necessarily entitle the owner to register the mark. Section 2 of the Trademark Act sets forth certain bars to registration of a trademark by its owner. One of those bars is Section 2(c).

The panel majority distinguished the only case in which implied consent under Section 2(c) had been found: In re D.B. Kaplan Delicatessen, 225 USPQ 342 (TTAB 1985). There, Mr. Kaplan had personally signed the buyout agreement, had expressly agreed to transfer the particular mark in question, and had expressly agreed not to use the mark in the future. Given the clear language of Section 2(c), the panel majority found that Kaplan should be read narrowly and limited to its specific facts.

And so the Board affirmed the refusal.

Judge Seeherman, in dissent, would reverse because the documents, considered in their entireties, are sufficient to demonstrate consent. To read the documents otherwise "would essentially eviscerate the purpose of the Order and the Asset Purchase Agreement, and have a deleterious impact on  policy involving use of trademarks as collateral."

Read comments and post your comments here.

TTABlog query: What should or could the receiver and/or O'Neill Beverage have done to secure the right to registration?

Text Copyright John L. Welch 2012.