Thursday, October 09, 2014

Test Your TTAB Judge-Ability: Is THE VINTNER GROUP Generic for a Wine Distributorship?

The USPTO refused registration on the Supplemental Register, of the designation THE VINTNER GROUP for "Import agency and wholesale distributorship featuring wine," on the ground of genericness. Is THE VINTNER GROUP a compound word (e.g., Gould's SCREENWIPE) or a phrase (American Fertility's AMERICAN SOCIETY FOR REPRODUCTIVE MEDICINE )? Does the relevant public include general consumers, or only winemakers and retailers? How do you think this came out? In re The Country Vintner, Serial No. 85567206 (October 8, 2014) [not precedential].

Both applicant and the examining attorney agreed that the genus of the services at issue is "wholesale distributorship featuring wine." Because "wholesale" refers to sale of goods to retailers, the Board agreed with applicant that sale of wine to the public is not included in the genus.

The Board found THE VINTNER GROUP to be a phrase rather than a compound word. "'Gould is limited, on its facts, language, and holding, to compound terms formed by the union of words.' In re American Fertility Society, 51USPQ2d at 1837. Here, there is no union of THE, VINTNER and/or GROUP into a compound term, nor is there a joinder (as described in American Fertility) of the 'most pertinent and individually generic terms applicable' to Applicant’s services.'"

Under American Fertility, dictionary definitions of the constituent words are not sufficient to establish genericness. The evidence must show that the relevant public refers to wholesale distributorship services featuring wine as THE VINTNER GROUP. The examining attorney bears the burden to prove genericness by a "strong" showing, with "clear evidence."

Dictionary definitions, third-party registrations, website evidence, and applicant’s own specimen of use established that THE VINTNER GROUP is merely descriptive of applicant’s services." It is also quite apt for wholesale distributorship services featuring wine," but aptness is not the test for genericness.

The evidence submitted by the examining attorney did not show use of the exact phrase THE VINTNER GROUP. Thirteen items showed "vintner group" in connection with association services, not distributorship services. The closest item,, was not used in this country. In fact, the only evidence of use THE VINTNER GROUP in the United States referred to applicant.

In sum, clear evidence of genericness was lacking. "'Much of the Examining Attorney’s evidence appears to illustrate little more than 'the thoroughness with which NEXIS [and the Internet] can regurgitate a [term] casually mentioned in the news.'"

The Board observed that this is a "close and difficult case," and it acknowledged that on a different record (e.g., in an inter partes proceeding) it might well reach a different conclusion. But on the current record, it reversed the refusal to register.

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Text Copyright John L. Welch 2014.


At 1:19 PM, Anonymous Anonymous said...

Unclear to me how this is a close or difficult case. Yes, it's a highly descriptive mark that's probably unprotectable against everything except the exact mark for the exact services, but generic? Not at all.

Nobody uses that phrase generically.


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