KC Brang's Food & Beverage Company LLCv.Casella Wines p

Trademark Trial and Appeal Board

May 24, 2013

No. 91203236 (T.T.A.B. May. 24, 2013)

Goodman

Mailed: May 24, 2013

Opposition No. 91203236
Opposition No. 91203238

KC Brang's Food & Beverage
Company LLC

v.

Casella Wines Pty. Limited

Before Holtzman, Mermelstein, and Lykos, Administrative
Trademark Judges.

By the Board:
KC Brang’s Food & Beverage Company LLC, (hereinafter
“opposer”) has opposed Casella Wines Pty Limited’s
(hereinafter “applicant”) application Serial Nos. 853312231
and 853312262 which seek to register the following standard-
character mark
[]
(“double-bracket marks”) for Class 33 spirits and Class 33
wines, respectively. As grounds for both oppositions,

1 Filed May 26, 2011 under Section 1(b), the subject of
Opposition No. 91203236.
2 Filed May 26, 2011 under Section 1(b), the subject of
Opposition No. 91203238.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT
A PRECEDENT
OF THE TTAB
Opposition Nos. 91203236 and 91203238

2
opposer alleges mere descriptiveness and that the marks
constitute “common basic symbols” that are not protectable
and inherently distinctive.3 In its answers, applicant
denied the salient allegations of the notices of
oppositions and asserted affirmative defenses.
This case now comes up on applicant’s motion for
summary judgment, filed October 31, 2012, and opposer’s
cross-motion for summary judgment, filed November 30, 2012,
on the pleaded grounds for opposition.4
Opposer’s evidence on summary judgment consists of the
declaration of Brian Y. Boyd, counsel, with accompanying

3 We construe opposer’s allegations that [] would not be
perceived as a mark as a claim that the double-bracket marks fail
to function as a trademark.
4 Opposer states in its cross-motion for summary judgment that
applicant’s responses to written discovery state that applicant
is using “variations of Applicant’s Mark” on its webpage but
complains that applicant has refused to produce examples of such
use because it “takes the position that it has not yet used the
‘[]’ marks.” Applicant, in its response to opposer’s motion,
points to its response to opposer’s requests for admission where
it “has confirmed that it does not intend to use left and right
square brackets with any other matter.” We further note that
applicant’s discovery responses submitted in conjunction with
opposer’s motion for summary judgment, state that the [] marks
are presently not in use and it has no documents showing use of
the marks.
We construe applicant’s marks as simply double-brackets
with nothing in between them, or empty brackets, as depicted on
the drawing page of the subject applications. We note that, if,
upon the filing of the statement of use, the mark is displayed
with other matter in between the empty brackets, the drawing
might not meet the substantially exact standard and the mark
might not be capable of amendment under the material alteration
standard. If, as opposer alleges, applicant is using brackets
with other matter between them as a mark, such use is beyond the
scope of this opposition, which concerns only the mark in the
subject applications, i.e., an empty pair of brackets.
Opposition Nos. 91203236 and 91203238

3
exhibits. Applicant’s evidence on summary judgment
consists of the declarations of Jamie L. Bertha, counsel,
with accompanying exhibits.
A party is entitled to summary judgment when it has
demonstrated that there is no genuine dispute as to any
material fact and that it is entitled to judgment as a
matter of law. Fed. R. Civ. P. 56(a). In reviewing a
motion for summary judgment, the evidentiary record and all
reasonable inferences to be drawn from the undisputed facts
must be viewed in the light most favorable to the nonmoving
party. Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d
200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992).
Standing
Although opposer alleged in the notices of opposition
that it uses opening and closing square brackets in
connection with opposer’s spirit and spirit based products,
opposer submitted no evidence of standing in connection
with its motion for summary judgment.
Descriptiveness ground

Turning first to the descriptiveness ground, opposer’s
evidence of descriptiveness of applicant’s double-bracket
marks consists of an excerpt from The Chicago Manual of
Style Online which states that brackets are used “mainly to
enclose material.” Opposer’s arguments regarding
Opposition Nos. 91203236 and 91203238

4
descriptiveness are based on its own use, namely its use of
double brackets in connection with the mark [Krā-zē] to
describe how the brand name of its product is pronounced.
Opposer submits that because it uses brackets in the
context of alcoholic beverages, the brackets have
significance to a consumer of alcoholic beverages and “the
average consumer understands the use of open and closed
brackets describes the pronunciation of that brand name.”
Applicant has pointed out in its response to opposer’s
motion and in its motion for summary judgment, that there
is no evidence that the double-bracket marks “immediately
describe an ingredient, characteristic or feature of wine
or alcoholic beverages.” Applicant submits that
“[r]egardless of whether left and right square brackets
might serve as aids of punctuation or phonetic
transcription in other contexts,” opposer has failed to
show that applicant’s double-bracket marks are descriptive
of wine or alcoholic beverages or “convey any information
to the average purchaser about the nature, function,
purpose or use of wine or alcoholic beverages.”
A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
function, feature or purpose of the products and services
it identifies. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009,
Opposition Nos. 91203236 and 91203238

5
1009 (Fed. Cir. 1987). Whether a particular term is merely
descriptive is determined in relation to the goods and
services for which registration is sought and the context
in which the term is used, not in the abstract or on the
basis of guesswork. In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66
USPQ2d 1222, 1224 (TTAB 2002).
Thus, the question is not whether someone presented
only with the mark could guess the products listed in the
description of goods. Rather, the question is whether
someone who knows what the products are will understand the
mark to convey information about them. In re Tower Tech,
Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent &
Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998);
In re Home Builders Association of Greenville, 18 USPQ2d
1313, 1317 (TTAB 1990). Opposer bears the ultimate burden
of proving its claim of mere descriptiveness. Hoover Co.
v. Royal Appliance Mfg. Co., 238 F.3d 1357, 57 USPQ2d 1720,
1722 (Fed Cir. 2001); Magic Wand, Inc. v. RDB, Inc., 940
F.2d 638, 19 USPQ2d 1551, 1554 (Fed. Cir. 1991).
Because applicant has pointed out that there is no
evidence of mere descriptiveness in connection with wine or
spirits to prove opposer’s case, the burden shifted to
opposer to establish that a genuine dispute of material
Opposition Nos. 91203236 and 91203238

6
fact remains for trial on the question of descriptiveness.
See, Celotex Corp. v. Catrett, 477 U.S. 317, 325 (1986);
Sweats Fashions, Inc. v. Pannill Knitting Co., Inc., 833
F.2d 1560, 1563, 4 USPQ2d 1793, 1796 (Fed. Cir. 1987).
Opposer has not met its burden, however, as it has
simply not presented any evidence that applicant's double-
bracket marks are merely descriptive in connection with
wine and spirits.
Accordingly, applicant's motion for summary judgment
on opposer's claim of mere descriptiveness is GRANTED and
opposer's cross-motion on the same claim is DENIED.
Opposer's claims of mere descriptiveness in Opposition Nos.
91203236 and 91203238 are hereby DISMISSED WITH PREJUDICE.
Failure to Function as a Trademark
We now turn to opposer’s failure to function as a mark
claim.
Opposer argues that the double-bracket marks are
“functional punctuation” as indicated by their dictionary
definition and are “used to enclose words or figures so as
to separate them from the context” or to modify a
quotation. Opposer submits that both opposer and applicant
use brackets with other terms “to separate their name
brands from other text on labels, advertising literature,
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etc.” which demonstrates that the “brackets function as
described by their dictionary definition.”
Applicant, on the other hand, argues that the double-
bracket marks are inherently distinctive because “they do
not communicate anything about the goods either directly or
indirectly.” Applicant further argues that the marks are
not functional as “[l]eft and right square brackets, by
contrast have no such purpose in relation to Applicant’s
goods” and that “mere speculation, conjecture, or fantasy”
regarding applicant’s intended use is insufficient “to
support opposer’s cross-motion for summary judgment.”
Lastly, applicant submits that if the Board is unable to
make the “ultimate determination of whether the marks are
inherently distinctive (or merely descriptive)” it can
delay consideration until after use has commenced.
It is well-settled that “not every designation that is
placed or used on or in connection with a product
necessarily functions … as a trademark for said product;
not every designation adopted with the intention that it
performs a trademark function and even labeled as a
trademark necessarily accomplishes that purpose; and there
are certain designations that are inherently incapable of
functioning as trademarks to identify and distinguish the
source of the products in connection with which they are
Opposition Nos. 91203236 and 91203238

8
used.” American Velcro, Inc. v. Charles Mayer Studios,
Inc., 177 USPQ 149, 154 (TTAB 1973).
The critical inquiry in determining whether a
designation functions as a mark is how the designation
would be perceived by the relevant public. To make this
determination we look to specimens and other evidence of
record showing how the designation is actually used in the
marketplace. In re Eagle Crest, Inc., 96 U.S.P.Q.2d 1227,
1229 (TTAB 2010) (citing In re Volvo Cars of North America
Inc., 46 USPQ2d 1455 (TTAB 1998)). Thus, the determinative
factor as far as registrability is concerned is the manner
in which the mark is actually used, once use commences.
Michael S. Sachs Inc. v. Cordon Art B.V., 56 USPQ2d 1132,
1135 (TTAB 2000).
In this case, there is no evidence of applicant’s use
in the record as the applications were filed under Section
1(b), intent-to-use, and applicant’s discovery responses
indicate it has not commenced use of the marks.
In the absence of actual use of the double-bracket
marks, we are unable to determine whether the double-
bracket marks would be perceived by consumers as trademarks
or as merely functional symbols of the written language.
In view thereof, opposer’s motion for summary judgment is
DENIED and applicant’s motion for summary judgment is
Opposition Nos. 91203236 and 91203238

9
GRANTED to the extent that Opposition Nos. 91203236 and
91203238 are DISMISSED WITHOUT PREJUDICE to the filing of a
petition to cancel the registration after a statement of
use has been filed. Michael S. Sachs Inc. v. Cordon Art
B.V., 56 USPQ2d at 1132 (dismissing failure to function as
a mark claim without prejudice to filing a petition to
cancel after a statement of use is filed when no evidence
of use in United States commerce existed); Eastman Kodak
Co. v. Bell & Howell, 23 USPQ2d 1878 (TTAB 1992), aff'd,
994 F.2d 1569, 26 USPQ2d 1912 (Fed. Cir. 1993) (on summary
judgment, dismissing opposition without prejudice to filing
a petition to cancel after a statement of use has been
filed as question of descriptiveness could not be resolved
until use commenced).