Huneeus Vintners LLC

Trademark Trial and Appeal BoardAug 3, 2012

No. 78961088 (T.T.A.B. Aug. 3, 2012)

Mailed: August 3, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Huneeus Vintners LLC ________ Serial No. 78961088 _______ Jennifer Lee Taylor, of Morrison & Foerster LLP for Huneeus Vintners LLC. John Kelly, Trademark Examining Attorney, Law Office 117 (Brett J. Golden, Managing Attorney). _______ Before Kuhlke, Lykos and Greenbaum, Administrative Trademark Judges. Opinion by Kuhlke, Administrative Trademark Judge: Huneeus Vintners LLC, applicant, has filed an application to register ILLUMINATION in standard characters on the Principal Register for services ultimately identified as: Entertainment services, namely, guided tours of wineries and vineyards and wine tastings, in International Class 41. The application was filed on August 25, 2006, under Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b), THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 78961088 2 based on an allegation of an intention to use the mark in commerce. The application published for opposition on March 27, 2007, and on June 19, 2007, the USPTO issued a Notice of Allowance. On June 18, 2010, applicant filed its Statement of Use with supporting specimens of use. The examining attorney has refused registration under Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1127, on the ground that “applicant’s specimens do not show the applied-for mark in use in commerce in connection with those services.” Ex. Att. Br. p. 1. As specimens of use, applicant submitted the printout of “an email confirming a guest’s private tour and tasting at Applicant’s vineyard” and “two information sheets handed out during such vineyard tours and tastings.” App. Br. p. 2. Both are reproduced below: Serial No. 78961088 3 Serial No. 78961088 4 Under the Trademark Act, an application must include, “such number of specimens or facsimiles of the mark as used as may be required by the Director.” 15 U.S.C. § 1051(a)(1). See also 37 C.F.R. § 2.56(b)(2). Specimens serve to evidence an applicant’s “use in commerce.” “Use in commerce” is defined, in pertinent part, as follows: ... For purposes of this chapter, a mark shall be deemed to be in use in commerce- (2) on services when it is used or displayed in the sale Serial No. 78961088 5 or advertising of services and the services are rendered in commerce... Trademark Act Section 45, 15 U.S.C. § 1127. A service mark is defined as any word, name, symbol, or device used: ... to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services... Id. The rule implementing the statute provides: A service mark specimen must show the mark as actually used in the sale or advertising of the services. Trademark Rule 2.56(b)(2), 37 C.F.R. § 2.56(b)(2). There must be a “direct association” which “is implicit in the statutory definition of ‘a mark used ... to identify and distinguish the services of one person ... from the services of others and to indicate the source of the services.’” In re Advertising & Marketing Development Inc., 821 F.2d 614, 2 USPQ2d 2010, 2014 (Fed. Cir. 1987), quoting, Trademark Act Section 45, 15 U.S.C. § 1127. This direct association may be achieved when the specimen of use shows the mark in the rendering of the services. In re Metriplex Inc., 23 USPQ2d 1315 (TTAB 1992). When a service mark is used in advertising the services the specimen must show a reference to the services in order to comply with Serial No. 78961088 6 the statutory requirement that the mark “identify and distinguish the services.” A specimen that shows only the mark, with no reference to the services, does not show service mark usage. In re wTe Corp., 87 USPQ2d 1536 (TTAB 2008); In re Duratech Industries Inc., 13 USPQ2d 2052 (TTAB 1989). The examining attorney argues that: [T]he e-mail specimen only shows the applied-for- mark used as the name of a wine, and therefore does not show use of the applied-for-mark in the sale or advertising of applicant’s winery tour, vineyard tour, and wine tasting services ... [and] ... upon seeing ‘Illumination’ used in this matter in the confirmation email, consumers of applicant’s tour and tasting services would immediately perceive that the term ‘Illumination’ is used only as the name of a particular wine, and they would not view it as a source indicator of applicant’s tour and tasting services. Ex. Att. Br. p. 4. With regard to the information sheet, the examining attorney argues that it also “merely shows the applied-for mark to identify a particular wine.” In addition, he points out that the sheet contains no references to the applicant’s winery tour and wine tasting services and: ...even if provided to consumers during the course of applicant’s winery tour or wine tasting services, the sheet still must be regarded as merely functioning to provide informational matter about a particular wine product, and does not demonstrate a sufficient nexus between the applied-for mark and the identified services. Serial No. 78961088 7 Ex. Att. Br. p. 9. It is applicant’s position that: Both the email and information sheets demonstrate use of the ILLUMINATION mark in the actual rendering of these tour and tasting services. These specimens further create a direct association between Applicant’s ILLUMINATION mark and these services, as Applicant’s tours and tastings focus on Applicant’s ILLUMINATION wines. Consumers therefore will perceive the use of the ILLUMINATION mark on Applicant’s specimen as identifying Applicant’s winery tour and tasting services and indicating Applicant as the source of these services. App. Br. p. 7. Applicant contends that the email “explains that a central part of the winery tour focuses on tasting ILLUMINATION wines ... [and] ... [c]onsumers will readily understand from this confirmation email that the vineyard tour and the related wine tasting are inextricably linked to Applicant’s ILLUMINATION wines, especially because the tasting of the ILLUMINATION wines occurs during the tour itself, directly in the vineyard.” App. Br. p. 5. As to the information sheets, applicant argues that “because these information sheets are distributed to guests during the tours and tastings” they “comprise a part of Applicant’s tour and tasting services.” App. Br. p. 6. Applicant contends that consumers will perceive a direct association between the ILLUMINATION mark on the Serial No. 78961088 8 information sheets and the tour and tasting services because the ILLUMINATION wines are “a central focus of these services, and they are tasted directly in the ILLUMINATION vineyard.” App. Br. P. 7. As the examining attorney explains, “the source of the wine is not relevant to the determination of whether the email specimen creates a sufficient association between the term ‘ILLUMINATION’ and the applicant’s identified services such that consumers would perceive the mark as functioning as a service mark.” Ex. Att. Br. p. 4. Moreover, the examining attorney points out that possibly more than one wine is mentioned in the email (“tasting of two vineyard block barrel samples, our current release and one library vintage of Quintessa”), which underscores the perception of ILLUMINATION as simply referring to wine and not to the tour and tasting services where ILLUMINATION is tasted along with other wines. In fact, the email also references the name of the vineyard, Quintessa, culminating in the statement, “We look forward to sharing the Quintessa experience with you.” Under applicant’s logic that term could also be the service mark for the tour and tasting services because the tour occurs at Quintessa. The promotion of the wine during the provision of the wine tour and tasting services is ancillary to the services Serial No. 78961088 9 and the mark for the wine does not also serve as a mark for the touring and tasting services. As the examining attorney noted, similar to the facts in In re El Torito Rests. Inc., 9 USPQ2d 2002 (TTAB 1988), just as a menu item is not a service mark for restaurant services “a term that serves only to identify a particular wine to be served during a tour or tasting does not function as a service mark for those services.” Ex. Att. Br. p. 3. On both specimens, ILLUMINATION clearly designates wine and is in no way connected to the rendering of the actual tour and tasting services. The fact that the wine is a “central focus of the tours” (App. Br. p. 7) does not associate the mark with the provision of the service itself. El Torito, 9 USPQ2d at 2004. The only evidence of use shows the term used to identify the wine which applicant calls ILLUMINATION. Id. The facts here are quite different from the circumstances presented in In re Metriplex, 23 USPQ2d 1315 and In re Eagle Fence Rentals, Inc., 231 USPQ 228 (TTAB 1986). In Metriplex, the applicant’s services were the “transmission of data in various fields (commercial as well as personal) to subscribers to the service by means of information entry software, radio data transmission and portable terminal interface with such subscribers.” Serial No. 78961088 10 Metriplex, 23 USPQ2d at 1316. The mark was displayed on the computer screen during the course of applicant’s rendering of the service and the examining attorney argued that the specimens did not make reference to the service. The Board held that the specimens showed use of the mark in the rendering of applicant’s services and, therefore, the requirements specific to specimens which are advertising are not applicable (i.e., requiring a reference to the services). In Eagle Fence, the issue was the form of the specimen and the Board found the chain link fence in color combinations sufficed as a specimen of use for fencing rental services. Here, the mark appears on documents that are both used in the rendering of the services and also, in the case of the email, make reference to the services. The issue is whether the manner in which it is used on these specimens associate the mark with the rendered and referenced services. For the reasons stated above, we find that they do not. In view thereof, we find that the specimens do not serve to show use of the mark ILLUMINATION as a service mark in connection with the services identified in the application. Serial No. 78961088 11 Decision: The refusal to register under Sections 1 and 45 of the Trademark Act is affirmed.