Foster’s Wine Estates Americas CompanyDownload PDFTrademark Trial and Appeal BoardJun 16, 2010No. 77018496 (T.T.A.B. Jun. 16, 2010) Copy Citation Hearing: Mailed: March 30, 2010 June 16, 2010 Bucher UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Foster’s Wine Estates Americas Company ________ Serial No. 77018496 _______ Gary D. Krugman of Sughrue Mion, PLLC for Foster’s Wine Estates Americas Company. Karen K. Bush, Trademark Examining Attorney, Law Office 105 (Thomas G. Howell, Managing Attorney). _______ Before Bucher, Grendel and Cataldo, Administrative Trademark Judges. Opinion by Bucher, Administrative Trademark Judge: Foster’s Wine Estates Americas Company seeks registration on the Principal Register of the mark CELLAR 360 (in standard character format) for goods identified as “wine” in International Class 33.1 The Trademark Examining Attorney refused registration under Sections 1, 2 and 45 of the Trademark Act on the ground the specimen does not show the applied-for mark in 1 Application Serial No. 77018496 was filed on October 11, 2006 based upon applicant’s allegation of a bona fide intention to use the mark in commerce. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77018496 - 2 - use in commerce as a trademark for the identified goods. 15 U.S.C. §§ 1051, 1052 and 1127. After the Trademark Examining Attorney made the refusal final, applicant appealed to this Board. We affirm the refusal to register. The specimen of use submitted by applicant in support of the Statement of Use was a catalogue mailed to prospective customers, of which we evidently have in the record only the front and back covers and a cropped image showing most of the two, centerfold pages, as follows: Serial No. 77018496 - 3 - It is uncontroverted that this specimen shows the CELLAR 360 designation prominently on the top, right edge of the front cover, which cover has a picture of two wine bottles and two poured glasses of wine. This mailer, having a return address of 600 Airpark Rd, Napa, CA 94558, also provides applicant’s contact information such as an Internet website,2 telephone and fax numbers, email address, etc., on the centerfold page captioned “Guide to Ordering and Services.” On this 2 http://www.cellar360.com/ Serial No. 77018496 - 4 - page, the “How to Order” section provides prospective customers with additional information about payment options, shipping terms, return information, etc. Applicant based most of its briefing and time at oral argument on Land's End Inc. v. Manbeck, 797 F. Supp. 501, 24 USPQ2d 1314 (E.D.Va. 1992), as modified by In re Sones, 590 F.3d 1282, 93 USPQ2d 1118, 1124 (Fed. Cir. 2009). This Board and its reviewing courts have long recognized a clear “line of demarcation” between mere advertising materials, which have been found unacceptable as specimens showing use of a mark for goods, and point-of-purchase promotional materials, which have been found acceptable as a display associated with the goods [see also In re Anpath Group, Inc., ___ USPQ2d ____ (TTAB, SN 77004809 issued May 13, 2010)]. In keeping with the Land's End / Sones line of cases, applicant argues that this “specimen is precisely the type of material that should be acceptable as … a display associated with the goods.” By contrast, the Trademark Examining Attorney argues that this designation, as seen on these specimens, functions only as a service mark associated with the consumers’ ordering and purchasing of wine. On this crucial point, we agree with the Trademark Examining Attorney. Serial No. 77018496 - 5 - We actually view the basis for the refusal herein to be less analogous to the line of cases focused on displays associated with the goods, growing out of the nuanced case law surrounding Trademark Rule 2.56(b), and rather more like factual situations where an applicant has misapprehended the nature or correct categorization of the term. Here, the applied-for matter clearly functions as a service mark for retail store services, but not as a trademark for wine. Applicant minimizes the difference between the nature of specimens for a trademark and for a service mark. As to how the involved specimens are characterized, applicant does not argue that these specimens are labels, tags, or product inserts, or point- of-sale material such as banners, trade show handouts, shelf-talkers, window displays, or similar devices. Rather, applicant agrees that they are catalogues mailed (or made available in other ways) to applicant’s prospective customers. This advertising mailer would likely serve as an excellent specimen for applicant’s retail store services featuring wines.3 The Trademark Examining Attorney concludes that prospective purchasers would clearly view the term as identifying the source of applicant’s retail 3 Registration No. 3406872 issued on April 1, 2008. Serial No. 77018496 - 6 - service, but would not perceive CELLAR 360 as a trademark for wine. In its reply brief and at oral argument, applicant argues that it is outcome-determinative herein that applicant is not simply an aggregator of wines produced by third-parties, but that substantially all the wines sold in connection with the involved mark (e.g., through its catalogue, wine shop, wine clubs, tasting rooms and public events) are produced by and/or originate with applicant. As a result, applicant argues that consumers will recognize that this entire inventory comprises wines sourced from one and only one wine producer -- applicant. Ergo, applicant argues that this applied-for term “ … is the essence of the function of a trademark, that is, to engender an association in the minds of consumers between a product (i.e., wine) and a single source (i.e., applicant).” We do not agree that our determination in this appeal turns upon whether the listed wines are produced by applicant. As an aside, based on this record, we cannot be sure what portion of applicant’s population of prospective purchasers knows that all of the more than sixty different brands of wine that applicant markets are also produced by applicant and its related companies. In Serial No. 77018496 - 7 - any case, the factual question before us is basically whether consumers will recognize CELLAR 360 as a source indicator for particular bottles of wine. In reflecting on how one measures the goodwill associated with a particular bottle of wine, it is the vineyard, the winery and/or the product mark that serve(s) as the consumer’s promise of the consistent quality of a bottle of wine. Whether ordered through applicant’s website, one of the many competing online websites, or even purchased at one’s local brick-and-mortar purveyor of wines, it is the product mark on the label that will be relied upon by the consumer. For example, Stags’ Leap is the trademark of importance to consumers on the two bottles on the front of the specimen. The Stags’ Leap trademark retains the identical source indicating function, whether applicant markets it under its CELLAR 360 service mark or some third-party aggregator sells an identical bottle of wine under its own service mark, e.g., wine.com. As noted by the Supreme Court almost a century ago, a trademark is generally “ … applicable to a vendible commodity to which it is affixed … ” American Steel Foundries v. Robertson, Comm’r of Pats., et al., 269 U.S. 372 (1926). Serial No. 77018496 - 8 - Applicant concedes that the designation CELLAR 360 does not appear on the labels of its bottles of wine. Of course, if indeed the term CELLAR 360 appeared as the most prominent feature on a wine label submitted as a specimen herein, the Office unquestionably would never have made the current refusal. And while applicant is correct in arguing that a single product may contain multiple marks [Safe-T Pacific Company v. Nabisco, Inc., 204 USPQ 307, 315 (TTAB 1979)], this is not the usual practice. See In re Walker Process Equipment Inc., 233 F.2d 329, 332, 110 USPQ 41, 43 (CCPA 1956), aff’g 102 USPQ 443 (Comm’r Pats. 1954). Nonetheless, if a wine bottle having the Stags’ Leap label shown above featured prominently the designation CELLAR 360, the greater prominence of the Stags’ Leap mark would not necessarily prevent the applied-for mark, CELLAR 360, from retaining source-indicating ability. But of course, this is all hypothetical in the instant case inasmuch as the designation CELLAR 360 appears nowhere on applicant’s wine labels. Furthermore, the fact that applicant already has a service mark registration for the CELLAR 360 designation is not by itself fatal to applicant’s position herein. On the other hand, the fact that the applied-for term may Serial No. 77018496 - 9 - serve as a service mark to identify retail or online store services does not necessarily show that the term is also a trademark for applicant’s goods. In re Supply Guys Inc., 86 USPQ2d 1488, 1493 (TTAB 2008). The Trademark Examining Attorney contrasts the facts of applicant’s product marking of its wines as featured in the specimen of record, with a reported decision involving Giant Food’s retail grocery market services. In this latter case, the grocer’s service mark also appears individually on hundreds of product labels: [I]f a retail store also uses the name of the store on the goods themselves, the same mark can serve both a trademark and service mark function. Giant Food Inc. v. Rosso and Mastracco, Inc., 218 USPQ 521, 524 (TTAB 1982) [“The word GIANT appears on several hundred products marketed in opposer’s stores”]. The mere fact that the name of a store appears on the sign outside or inside the store does not convert the service mark into a trademark for all the goods that are sold in those stores. In the same way, even if applicant offers over 300 different wines from over 40 wine growing regions [Applicant’s brief at page 4] through [its] catalogue, this does not make applicant's service mark into a trademark for the various wines being offered. Trademark Examining Attorney’s appeal brief, at unnumbered 4. Accordingly, what does preclude registration of this applied-for matter is simply that it is not used as a Serial No. 77018496 - 10 - trademark on the specimen of record. Unlike the thrust of applicant’s argument, this is not merely a matter of measuring on the front cover of the catalogue the proximity of the applied-for term to the image of a Stags’ Leap wine bottle. A critical element in determining whether this term functions as a trademark is the impression the term makes on members of the relevant public. In reaching our decision herein, we are focused on the totality of the perceptions of the prospective consumer upon receiving this mailer with its attendant offerings from CELLAR 360. We conclude that CELLAR 360 will be seen as a service mark for retail store services featuring wines, but not as a trademark for wine. Decision: The refusal to register under Section 1, 2 and 45 of the Act is hereby affirmed. Copy with citationCopy as parenthetical citation