Foster’s Wine Estates Americas Company

Trademark Trial and Appeal Board

Jun 16, 2010

No. 77018496 (T.T.A.B. Jun. 16, 2010)

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
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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
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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
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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
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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.

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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
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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
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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
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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
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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.