WYHA? Section 2(d) and Faulty Specimen Refusals Sink SCARLET Wine Application

The Board affirmed two refusals to register the mark shown below, for wines [2009 LAKE COUNTY RED WINE disclaimed], finding the applied-for mark likely to cause confusion with the registered mark THE SCARLET LETTER for wine, and also finding applicant's specimen of use to be inadequate. Would you have appealed? In re Steele Wines, Inc., Serial No. 85683619 (August 23, 2013) [not precedential].

Likelihood of confusion: Examining Attorney Fred Carl III maintained that the cited mark is the  name of the classic American novel, The Scarlet Letter, by Nathanial Hawthorne, which concerns an accused puritan adulteress who must wear a scarlet-colored “A” on her clothing, and that applicant’s mark connotes the same novel.

Applicant Steele argued that the cited mark is weak and merits only a narrow scope of protection, in view of third-party registrations for the marks SCARLOT HARLOT, SCARLET RIDGE, and SCARLATTA, all for wine.

The Board observed that since the involved goods are identical, it must presume that they travel through the same, normal channels of trade to the same classes of consumers. As to the marks, the imagery in applicant's mark - use of the color red letter “A” and word SCARLET - "unmistakably evoke the novel The Scarlet Letter." The evidence did not reveal any other possible connotation for applicant's mark. The Board concluded that the marks are "highly similar in connotation and, as a whole, convey highly similar commercial impressions."

The marks in the third-party references cited by applicant differ in connotation, appearance, and sound from the two marks at issue here. Moreover,third-party registrations are not proof that consumers are familiar with the marks and accustomed to the existence of the same or similar marks in the marketplace.

And so the Board found confusion likely and it affirmed the Section 2(d) refusal.

Specimen of Use: The Examining Attorney rejected applicant's specimen of use [depicted below] because it fails to display the entire applied-for mark. Under Rule 2.51(a), "the drawing of the mark must be a substantially exact representation of the mark as used on or in connection with the goods and/or services."

Here, the specimen displays only a portion of the word SCARLET,  with only part of the letter "S" visible and none of the letter "T" visible. Moreover, the specimen does not fully display the second puritan figure appearing on the left side of the mark in the drawing.

In short, most, but not all, of the applied-for mark appears on the specimen of use. These are "major, significant" differences between the drawing and the specimen, and consequently the Board agreed with the examining attorney that the mark shown on applicant’s drawing is not a substantially exact representation of the mark appearing on the specimen of use.

And so the Board affirmed the second refusal to register.

TTABlog note: Certainly the second refusal could have easily been avoided by soaking a label off one of the bottles and submitted the entire label as the specimen.

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Text Copyright John L. Welch 2013.