Thursday, May 10, 2018

ROSSO GRANATO Merely Descriptive, Fails to Function as a Trademark for Wine, Says TTAB

The Board affirmed the USPTO's refusal to register the mark ROSSO GRANATO for wine, finding it to be merely descriptive of the goods, and further finding that it fails to function as a trademark. The Board rejected applicant's argument that the "ordinary American purchaser" would not stop and translate the mark into "red garnet," pointing out that the correct question is whether the ordinary consumer familiar with Italian would stop and translate the term. In re V & C, LLC, Serial No. 86321427 (May 8, 2018) [not precedential] (Opinion by Judge Angela Lykos).

Mere Descriptiveness: The Board has held that Italian is a common modern language for purposes of the doctrine of equivalents. Moreover, Examining Attorney Andrea P. Butler submitted evidence that American consumers of wine, especially younger ones, are more likely to seek out the meaning of foreign wording on a wine label. And so the Board agreed with her that application of the doctrine of equivalents was appropriate.

The question, then, was whether "red garnet" is merely descriptive of wine. The evidence showed that "red garnet" is commonly used to describe an attribute of wine, namely a particular shade of red. In fact some in the industry use both "rosso granato" and "red garnet" to describe a particular hue of red wine. Applicant's own website explains that "'Rosso Granato', in Italian meaning 'Red Garnet' embodies the beautiful color of this Petite Syrah and Zinfandel blend."

The Board concluded that the applied-for mark immediately conveys an attribute of applicant's wine, and therefore it is merely descriptive under Section 2(e)(1).

Failure to Function: "The critical question in determining whether a designation functions as a mark is how the designation would be perceived by the relevant public." This requires consideration of how the designation is actually used in the marketplace.

The Board found the opinion in In re APO LLC to be instructive. [TTABlogged here]. There, the Board found that AOP (an acronym for "appellation d'origine protégée," which translates as "protected designation of origin") was merely informational in nature and failed to function as a mark. In reaching that decision, the Board considered the placement of the term AOP on the wine label, as well as the applicant's own use of the term.

Here, on applicant's label (see photo above), the term ROSSO GRANATO appears on the left side along with other informational matter, below the year "2012" and above "Red Wine" and "Columbia Valley." Applicant's mark MARYHILL appears on the right side in relatively larger letters. Although a product or label may bear more than one mark, the question is whether ROSSO GRANATO will be recognized as a source indicator.

The predominance of the mark MARYHILL on Applicant’s wine label makes it unlikely that the “Rosso Granato” “will be recognized in itself as an indication of origin for the particular product . . . .” ***  Indeed, this pattern of displaying informational matter to the left is consistent with Applicant’s labeling and marketing of other wines such as the bottle of merlot reproduced below:

Thus, as in AOP, the applied-for mark appears in the midst of "clearly informational matter" and is presented in an "informational manner" to inform consumers about the color of the wine, rather than as a source identifier.

Its close proximity to the other informational matter on the label, coupled with the translation and explanatory text on Applicant’s website means that ROSSO GRANATO is likely to be perceived as merely conveying information about the color of the wine and not as a source indicator.

Finding that ROSSO GRANATO lacks source-identifying significance, the Board affirmed the failure-to-function refusal.

Read comments and post your comment here.

TTABlog comment: Applicant's only hope was a survey, I think.

Text Copyright John L. Welch 2018.


At 8:40 AM, Anonymous Anonymous said...

I have no doubt the Board reached the correct result here, but this decision also demonstrates the Board’s unfortunate tendency to decide the outcome, and then put its thumb on the scales by molding its fact-finding to support that outcome. In this case, the Board stated:

"[T]he Examining Attorney submitted evidence that U.S. consumers of wine, especially those in the younger demographic, are more likely to seek out the meaning of foreign wording on a wine label. See Wine Region Law Blog article 'In the News: Wine and Millennials (The Wine Drinkers of Today and Tomorrow.'"

But go read that blog article from the Law Offices of Stephan Passalacqua, located at pages 89-90 of the Office Action dated December 12, 2015. That article (which is essentially a sole practitioner’s attorney advertising) says nothing whatsoever about U.S. consumers being “more likely to seek out the meaning of foreign wording on a wine label.” Nothing at all.

Right result, but disingenuous fact-finding.

At 2:15 PM, Anonymous John Egbert said...

Although I feel that the doctrine of foreign equivalents is overused by Examiners to reject applications, this decision seems to be correct. I just had a case where the examiner required that we enter the Finnish translation of "whale" in a case in which the goods are chocolates. I feel there are too many times when the terms from an obscure foreign language are translated and then the application is rejected because of prior registrations of the translated word. I wish the USPTO would provide a reasonable list of what would be "non-obscure" foreign languages.

At 1:05 PM, Anonymous Anonymous said...

Could they just file for GRANATO by itself?

and put the word ROSSO above it or as a separate element?


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