Wednesday, May 11, 2011

TTAB Finds AMERICAN HERITAGE Neither Merely Descriptive of, Nor Deceptive for, Wines

Finding that the term "heritage" has no definitive meaning in connection with grapes, the Board reversed a Section 2(e)(1) mere descriptiveness refusal of AMERICAN HERITAGE for wines [HERITAGE disclaimed]. The PTO's alternative refusal on the ground of Section 2(a) deceptiveness also went down the drain, since the Examining Attorney did not establish that AMERICAN HERITAGE describes a significant ingredient of wines and so could not be deceptive. In re Oliver Wine Co., Inc., Serial No. 77681936 (April 15, 2011)[not precedential].

The 2(e)(1) refusal was based on the Examining Attorney's "assumption" that a type of grape known as "heritage" grapes are a significant ingredient of Applicant Oliver's wine. The 2(a) deceptiveness refusal, in turn, was based on the alternative position that Oliver's wine does not "contain" heritage grapes. Consequently,

[w]hether “heritage” merely describes a significant ingredient in wines, i.e., a type of grape, is a threshold question with respect to both alternative refusals.

The Examining Attorney submitted dictionary definitions and a "substantial" amount of Internet evidence in arguing that "heritage" is a term of art "that refers to age, grape varietals and wines derived from grape varietals that are unique and of historic value to their region, and 'American' refers to the origin of the grape varietals or wines in the United States."

Oliver contended that "there is no consensus in the trade or among consumers as to the meaning of the term 'heritage' in connection with wine or grape varieties." Moreover, "American" is not geographically descriptive, said Oliver, but is arbitrary for wines.

The Board first noted that Applicant's disclaimer of "heritage" was not intended as a concession of descriptiveness, and the Examining Attorney did not treat it as such, since she submitted considerable evidence to show that "heritage" is descriptive. [Oliver asserted that its disclaimer was submitted to avoid an existing registration for HERITAGE, but the Board pointed out that a disclaimer does not avoid likelihood of confusion].

The Board ruled that there is no definitive meaning for "heritage" in connection with grapes.

"T]he evidence suggests that “heritage” is used in connection with various different grapes and, rather than clearly describing a particular grape varietal or wine, the connotation is varied. 'Heritage' is used variously in the evidence to refer to grapes that have been associated with a particular country or region; to refer to grapes that are from old-stock vines regardless of their origin; or to denote only those grape varietals grown from root stock indigenous to the United States."

At most, "heritage" suggests tradition in the context of AMERICAN HERITAGE for wines.

As to the word "American," the Board found that it suggests "a tradition that is quintessentially American in nature." The PTO did not assert that American is geographically descriptive, and there was inconclusive evidence that "American" is a wine appellation.

The Board concluded that AMERICAN HERITAGE for wines "suggest an American cultural tradition of wines, which could be understood, in turn, as an homage to the American wine industry." The mark is not merely descriptive of wines.

Since the PTO failed to establish that consumers would view AMERICAN HERITAGE as describing a significant ingredient of wines, "no matter what grapes are contained in applicant's wine the examining attorney cannot prevail on the Section 2(a) alternative ground of refusal.

And so the Board reversed both refusals.

TTABlog comment: I don't have any quarrels with this one, do you?

Text Copyright John L. Welch 2011.


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