Monday, September 22, 2014

On Summary Judgment, TTAB Finds NAUGHTY GIRL Not Merely Descriptive of Wine

The Board granted Respondent's motion for summary judgment, finding the mark NAUGHTY GIRL to be not merely descriptive of "fortified wines; wines and fortified wines." [sic!]. Petitioner contended that "drinking respondent’s wine, which has a slightly higher alcohol content than some wines, will make women 'naughty.'" Judges Seeherman, Taylor, and Ritchie were not swayed. Alvi's Drift Wine International v. von Stiehl Winery, Cancellation No. 92058100 (September 12, 2014) [not precedential].

Respondent asserted that NAUGHTY GIRL does not immediately convey any knowledge about the ingredients, qualities, functions, features or characteristics of wine. Its vice president averred that the mark was chosen because it is "playful, humorous and imaginative,” not because it will actually make a person a "naughty girl.'" Dictionary definitions of "naughty" and "girl" made no reference to wine, and a LEXIS/NEXIS search failed to disclose a single article using "naughty girl" to describe an ingredient, quality, characteristic, function, feature, purpose or use of wine.

Petitioner argued that the evidence, and particularly respondent’s claim that "the effect of the NAUGHTY GIRL wine might be fun and excitement," created a genuine dispute of material fact that precludes the entry of summary judgment. According to petitioner, respondent's intent in choosing the mark NAUGHTY GIRL was to describe the wine's effect: "after someone drinks a few glasses of high alcohol wine, it is a fine line between 'fun and excitement' and 'act[ing] like a naughty girl.' ... Registrant is also navigating a slippery slope between 'playful' and 'act[ing]' like a “naughty girl.'"

Petitioner submitted pages from a blog which included the following item: "When I saw this wine at the Wisconsin Cheese Chalet, the place I bought my chocolate cheese, I knew I had to try it. It was calling the party girl in me because they had a whole party girl display going by this wine. Here are the bottle toppers that started the whole 'naughty girl' craze." Another entry, entitled “boob wine stoppers," included the same photo as the first entry, and stated: "These are crazy boob party girl wine stoppers...they made me buy Naughty Girl wine."

The Board found the mark to be at most suggestive of the goods. Petitioner's evidence showed "only that one blogger appreciates respondent’s product, not that there is anything about the term that is descriptive."

Moreover, even if one could conclude from petitioner’s evidence that some altered state of behavior may follow ingesting the goods, there is no evidence to show that the term NAUGHTY GIRL or its constituent words, conveys any information about an ingredient, quality, characteristic, function, feature, purpose or use of wine. Rather, a multi-stage thought process would be necessary: 1) respondent’s wine has a higher alcohol content; 2) drinking fortified wine may make one inebriated; 3) inebriated people act inappropriately; 4) people who act inappropriately may be considered naughty; 5) NAUGHTY GIRL describes the result on the drinker of using the wine. Even if one were to follow that thought process, because it obviously takes a multi-stage reasoning process, the mark is not merely descriptive but is at most suggestive.

In short, petitioner failed to rebut respondent's evidence, and so the Board granted the motion for summary judgment.

Read comments and post your comment here;

TTABlog note:  Is this a WYHP? What about that label?

Text Copyright John L. Welch 2014.


At 9:18 AM, Anonymous Anonymous said...

Immoral! Scandalous!

That would have had a better chance of succeeding, given recent TTAB prudishness.

At 9:22 AM, Anonymous Mark Jaffe said...

Why did someone fight this?

At 12:09 PM, Anonymous Joe Dreitler said...

John, I am missing something here. did someone pay for this case to be filed? I read the petition. They were kidding right? An example of why there needs to be a mechanism for summary (not summary judgment) disposition of cases that on their face have no merit. Naughty Girl is descriptive of wine? Perhaps Naughty Girl is descriptive of certain human beings. That's it. I can't think of anything else that those 2 words could be merely descriptive of, whether with a picture or not. I'm sure someone will enlighten me and point out some good or service for which this is merely descriptive. (And I have thought of escort services, but don't think it is merely descriptive even in that case.)

At 2:09 PM, Anonymous Anonymous said...

Because the petitioner was applying for the mark ALVI'S DRIFT NAUGHTY GIRL for wine and apparently its application may have been or was about to be refused registration over respondent's mark. So it figured if it can have respondent's mark declared descriptive, then it's mark and respondent's mark could coexist.

At 2:14 PM, Anonymous Vincent said...

When did "naughty girl" become a craze?
What defines the craze status?


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