Tuesday, August 27, 2019

TTAB Finds "BIG SIX" Generic for . . . . Guess What?

The Board affirmed a refusal to register the term BIG SIX, finding it generic for "wines," or in the alternative, merely descriptive thereof. The Board agreed with Examiner Samuel Paquin that "Big Six" refers to six common types of wine: usually Riesling, Sauvignon Blanc, Chardonnay (white), Pinot Noir (red), Merlot, and Cabernet Sauvignon. In re Plata Wine Partners, LLC, Serial No. 87292254 (August 22, 2019) [not precedential] (Opinion by Judge George C. Pologeorgis).

The Examining Attorney submitted numerous excerpts from various websites, as well as results from a Google search, demonstrating use of "big six" in reference to wines. The Board noted that sometimes the list of six wines varies: e.g., Syrah is substituted for Merlot, Pinot Grigio is substituted for Sauvignon Blanc, and Zifandel is substituted for Riesling, but these variances did not change the Board's analysis.

Applicant contended that the term BIG SIX refers to grape varietals used to make wine and is not a generic designation for wine itself. The Board was unmoved. The evidence amply demonstrated that BIG SIX is used interchangeably to identify both the types of grapes and the types of wine produced by the grapes. "Indeed, it is common knowledge that when one orders a glass of wine, they generally do not ask for a glass of white wine comprising the chardonnay varietal grape; instead, they merely order a glass of chardonnay."

In any case, even if the term BIG SIX referred to the grape used to make wine, it would still be generic for wine because "the generic name of an ingredient of the goods is incapable of identifying and distinguishing their source and is thus unregistrable on either the Principal or Supplemental Register." See Cordua,118 USPQ2d at 1637-38 (affirming the Trademark Trial and Appeal Board’s holding of CHURRASCOS (a type of grilled meat) generic for restaurant services)).

Applicant contended that because the designation BIG SIX is not found in the dictionary or in wine glossaries, it cannot be generic for wines. Not so, said the Board. There is no such requirement for a finding of genericness.

Finally, Applicant's search results purporting to show BIG SIX as a source indicator were not very probative. The Google search results were too truncated to provide proper context. Moreover, there was no indication whether the websites were still operative, nor any evidence regarding the number of consumer views. Some of the truncated results supported the genericness refusal because they appeared to show use of the designation BIG SIX generically for wines or the grape varietals that are the ingredients for wine.

Viewing the entirety of the evidence, the Board found that consumers "would understand the designation BIG SIX primarily to refer to 'wines' or a key aspect, type or ingredient of 'wines.'"

As to the alternative refusal under Section 2(e)(1), the Board had no doubt that BIG SIX is merely descriptive of Applicant’s wines because it "clearly describes a feature or characteristic of Applicant’s wines, namely, the category of wines offered for sale or the types of varietal grapes used to produce Applicant’s wines."

Read comments and post your comment here.

TTABlog comment: Generic? I'm not so sure. The "refer to 'wines'" language is rather broad. You may remember that Professor McCarthy criticized this "refer to" approach to genericness in this TTABlog post from last year. Merely descriptive, yes. But generic?

BTW: Applicant's request, in the alternative, to amend its application to seek registration on the Supplemental Register was denied as moot in light of the finding of genericness.

Text Copyright John L. Welch 2019.


At 7:00 AM, Blogger PaulRapp said...

This is nonsense. No survey? Am I the only one who is finding examiners
increasingly erratic? I'm seeing an uptick in refusals for bizarre reasons. I'm
getting tired of telling clients that their applications have been rejected because
the examiner is insane.

At 7:35 AM, Anonymous Anonymous said...

I don't like where things are heading with some of these recent generic cases at the TTAB. This was a clear whiff by the TTAB, and I think they totally blew that BLUEBERRY MUFFIN for beer one as well.

Try asking your spouse or significant other to pick you up some big six at the store and see what reaction you get.

How about putting in a drink order for a blueberry muffin?

These cases (or the next poorly decided ones) are going to be primed for some CAFC correction before long.

At 10:38 AM, Anonymous Anonymous said...

"primed for some CAFC correction" Let us hope! CAFC is not immune to the insanity virus.

At 11:11 AM, Anonymous Anonymous said...

Unfortunately, this seems to be the overall theme in the Trademark Office. This is definitely the wrong outcome here.

At 11:50 AM, Anonymous Anonymous said...

This BIG SIX genericness finding is unexpected, for sure, but to the poster above's statements concerning "BLUEBERRY MUFFIN", I have to agree with the Board on that one. The argument is based on the premise that someone says "BLUEBERRY MUFFIN" without any context, but the rule is that the relevant purchaser primarily understands the term to refer to a particular genus of goods. There, the goods are beers, which includes the subgenus flavored beers. The relevant purchaser of flavored beers would understand "BLUEBERRY MUFFIN" to refer to a particular good, namely, flavored beers that taste like blueberry muffins. Seems pretty straightforward to me. It would be no different than ice cream -- if a purchaser of ice cream asks for "CHOCOLATE", the relevant purchaser knows that it refers to a particular subgenus of ice cream, namely, chocolate-flavored ice cream.

We have to remember that a finding of descriptiveness means that the mark has the capability of acquiring distinctiveness and thus would refer to a particular source, meaning that the owner of the mark can prevent others from using it to describe their own goods or services. I think we all agree that "CHOCOLATE" could never acquire distinctiveness in connection with ice cream, and thus "CHOCOLATE" cannot be considered merely descriptive -- it is generic. The same holds true for "BLUEBERRY MUFFIN" used in connection with blueberry-muffin-flavored beer. Can the user of "BLUEBERRY MUFFIN" for blueberry-muffin-flavored beers prevent every other maker of blueberry-muffin-flavored beers from indicating the flavor of the goods?

At 2:06 PM, Blogger William said...

I have never been a wine drinker. I recognize some types of wines, but I have never heard of the Big Six, until now. At first "blush", I thought it was a type of six shooter pistol, or a six pack of beer comprised of large individual containers,or perhaps a confederation of six big organizations in some industry. Seems like a very poor decision by the TTAB.

At 2:50 PM, Anonymous John Egbert said...

It's really difficult to see the genericness of BIG SIX for wine.

At 4:15 PM, Anonymous GretchenMcCord said...

I COULD NOT AGREE MORE!!!!! This is absolutely RIDICULOUS!!!! And I hope the correction comes soon, very soon.... WTH's going on over there?!

At 8:18 AM, Anonymous Anonymous said...

Regarding the "blueberry muffin" discussion, then let's rephrase the inquiry as this:

Patron: I'd like to order a beer.
Server: Great, what kind would you like?
Patron: Blueberry muffin.
Server: <>

In comparison with:

Patron: I'd like to order a beer.
Server: Great, what kind would you like?
Patron: A stout.
Server: Sure, we have....

Blueberry muffin is merely descriptive of the flavor of the beer in that previous application. Blueberry muffin is not a generic term to describe beer, even within the genus. Think about it this way - "blueberry muffin" is not a known flavor, let alone a flavor for beer. It is merely descriptive of the flavor of the beer.

I would probably agree that the TTAB would have been right if the mark were just "blueberry," even though "blueberry" also is not a generic term for beer and merely descriptive of the flavor. But the addition of "muffin" is significant, and that opinion was another total TTAB gaff.

Chocolate ice cream is a very well known generic term for a flavor of ice cream. It is descriptive in the sense that it describes the flavor, but it is generically known and used by the public to reference chocolate-flavored ice cream. It's not analogous here because "blueberry muffin" is not a well-known flavor.

If the owner of the "blueberry muffin" beer acquired distinctiveness in that mark through long and exclusive use of the mark, then they would rightfully be entitled to trademark protection for that mark. But if, prior to acquiring distinctiveness, instead that term became widely used by others to describe a beer flavor, then distinctiveness is not acquired and there is no harm to the public or competitors.

I would be confident taking the blueberry muffin case to the CAFC (notwithstanding the observation above the another poster that the CAFC has their own missteps).

At 10:57 AM, Anonymous Anonymous said...

@ Anonymous:

" Blueberry muffin is not a generic term to describe beer, even within the genus."

However, it is a generic term to describe blueberry muffin-flavored beer, just as chocolate is a generic term to describe chocolate flavored ice cream, just as stout is a generic term to describe a much tastier flavor of beer than any others. Your first conversation should have read,

Patron: I'd like to order a beer.
Server: Great, what kind would you like?
Patron: Blueberry muffin.
Server: I'm sorry, we don't carry any blueberry-muffin-flavored beers. Wouldn't you prefer a nice stout?


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