Tuesday, December 17, 2013

TTAB Reverses Genericness Refusal of "BOURGOGNE DES FLANDRES" for ... Guess What?

Okay, okay. That's not a fair question. BOURGOGNE DES FLANDRES could be not generic for a lot of things. I was just trying to inject some life into the discussion of this enervating decision. The question here was simply this: is BOURGOGNE DES FLANDRES generic for beer? The PTO said yes. The Board said not enough proof. Reversed. In re Martin, Serial No. 85501340 (December 9, 2013) [not precedential].

The English translation of BOURGOGNE DES FLANDRES is BURGUNDY OF FLANDERS. The Examining Attorney maintained that "Burgundy of Flanders" refers to a type of beer that is "a typical and common beer in West Flanders."

The Board, not surprisingly, found the genus of goods at issue to be "beer." The relevant public,, not surprisingly, comprises ordinary consumers who drink beer. The question then was how the consuming public understands the term BOURGOGNE DES FLANDRES.

The Board began its analysis by observing that "the foreign equivalent of a generic English term is no more registrable than the English term itself." Applying the doctrine of foreign equivalents, it found that the ordinary American purchaser who is knowledgeable in French would translate the term "Bourgogne Des Flandres" into English.

The PTO must prove genericness by clear evidence, but its proofs fell flat.

The Examining Attorney relied on excerpts from five websites that made reference to "burgundy of flanders." Only two brands identified BOURGOGNE DES FLANDRES as a type of beer, and those two brands appear to be related. Two beer reviewers identified BOURGOGNE DES FLANDRES as a type of beer. But none of the evidence showed the advertisement or promotion of a "Bourgogne Des Flandres" or "Burgundy of Flanders" style of beer. The Global Beer Network website listed eleven "beer styles," but "Burgundy of Flanders" was not one of them.

[W]e find that this evidentiary record falls short of proving that the term BOURGOGNE DES FLANDRES is a generic term for beer or, more precisely under the language of Section 23, that it is not "capable of distinguishing the applicant’s goods or services." 15 U.S.C. §1091(c).

And so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlog note: I thought this case was going to be more interesting than it turned out to be. Given the high standard of proof, genericness cases are more appealable (though not necessarily more appealing) than, say, mere descriptiveness cases.

Text Copyright John L. Welch 2013.


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