Monday, July 22, 2013

Precedential No. 29: TTAB Affirms Five (5) Refusals of "AOP" for Wine

WYHA? [Would You Have Appealed?] The Board affirmed a quintet of refusals to register the term AOP for wine, finding it to be deceptive under Section 2(a), and descriptive or deceptively misdescriptive under Section 2(e)(1). The Board also found that the term fails to function as a trademark (Sections 1, 2, and 45), and that applicant failed to comply with Examining Attorney Edward Fennessy's requirement for more specific information regarding the goods (Rule 2.61(b)). In re AOP LLC, 107 USPQ2d 1644 (TTAB 2013) [precedential].

Applicant's original specimen of use

Section 2(a) Deceptiveness: The test for deceptiveness under Section 2(a) has three elements: (1) whether the mark misdescribes the goods; (2) if so, whether consumers would likely believe the misrepresentation; and (3) whether the misrepresentation would materially affect the decisions of potential purchasers to purchase the product. [Or, shorthandedly, "misdescription, belief, and materiality?" - ed.].

The Examining Attorney submitted "a significant amount of evidence" to show that "AOP" is a term used by members of the European Union (EU) to designate a particular quality and geographical origin of wine. Applicant did not dispute the meaning of AOP, but argued that U.S. consumers will not be aware of the significance of the AOP designation because that designation is not yet mandatory, because it does not appear on most European wines distributed here, because AOP is a French-based acronym, and because most American wine consumers do not understand European designations of origin.

Applicant's contention, however, was contradicted by the "substantial evidence" submitted by the PTO, including excerpts from widely-available websites that discuss, in English, the AOP designation, and Internet evidence that demonstrate the sale of wine in bottles bearing the AOP designation.

The Board found that AOP is a designation of origin used by the European Union, and that applicant does not administer the AOP. Applicant admitted that its goods "do not necessarily originate in Europe." Therefore the Board concluded that AOP misdescribes applicant's wine. Based on the same evidence, the Board found that consumers would believe the misdescription of applicant's wine.

Finally, the PTO's evidence showed that a substantial portion of consumers would be interested in the AOP designation, since it is an indicator of quality and origin, and that bloggers and wine aficionados [One can't be both? - ed.] are "keenly aware"of the AOP designation. Therefore applicant's misdescription is material to the purchasing decision.

With all three elements of the deceptiveness test being met, the Board affirmed the refusal to register on the ground of deceptiveness.

Excerpt from above specimen of use

Rule 2.61(b) Requirement: The Examining Attorney required that applicant state "whether applicant's goods originate in Europe" and whether the applied for term AOP indicates whether applicant's goods are certified to meet the AOP standards of the EU. Applicant's responses were "evasive:" "[a]pplicant's goods do not necessarily originate in Europe," and its wines meet "all applicable rules and regulations" regarding origin and authenticity. When the questions were repeated, applicant responded that its goods "do not all originate in Europe," and that it had "no reason to seek certification by a European regulatory body."

In view of these "equivocal" responses, the Board found that applicant failed to comply with the requirement for information, and it affirmed this refusal.

Section 2(e)(1): In view of ambiguity in applicant's responses to the Rule 2.61(b) requirement for information, the Board addressed the mere descriptiveness and deceptive misdescriptiveness refusals in the alternative, based on the assumption that had applicant responded directly and fully to the Examining Attorney's requests for information, the responses would have been unfavorable.

If applicant's wines are AOP-certified then applicant would know this and the use of the term AOP would be known by applicant to be merely descriptive of the wines, and if the wines are not so certified, then the term is deceptively misdescriptive, and applicant is presumed to know this.

The Board, as discussed above, found that consumers would likely understand the term AOP to describe the EU system for indicating quality and geographic origin of certain wines. If applicant's wine is so certified, then its proposed mark is merely descriptive of the wine. If the wine is not so certified, the proposed mark is deceptively misdescriptive because consumers would likely believe the misrepresentation. [Note that, in contrast to Section 2(a) deceptiveness, materiality is not required here. Unlike a term deemed deceptive, a deceptively misdescriptive mark may be registered under Section 2(f) via a showing of acquired distinctiveness.  - ed.]

Failure to Function: The Board reviewed applicant's original specimen of use (above) and its substitute specimen (below), concluding that consumers would view the term AOP as merely informational and not as source-identifying. In the original specimen, AOP appears amidst other informational material at the bottom of the label, and in the substitute specimen AOP again appears far from the name of the wine and adjacent other informational matter. Moreover, Applicant stated to the PTO that its goods bearing the AOP designation "have been deemed by Applicant to meet its high standards for quality, craftsmanship, and satisfaction of all applicable rules and regulations pertaining to the origin and authenticity of the wine," and thus the term is presented "in an informational manner to inform consumers about a certification process rather than as a source identifier." [Query whether applicant's intent in this regard is relevant to how consumers perceive the term? - ed].

And so the Board affirmed this refusal as well.

substitute specimen of use

Read comments and post your comments here.

TTABlog comment: What Gaul! [that's a pun, son]. Well, would you have appealed? BTW: this decision has been appealed to the CAFC.

Text Copyright John L. Welch 2013.


At 8:56 AM, Anonymous Susan said...

John, this one suggests a new catagory: Would You Have Applied?


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