Tequila Cuervo La Rojena, S.A. de C.V.

Trademark Trial and Appeal BoardFeb 6, 2012

No. 77948331 (T.T.A.B. Feb. 6, 2012)

Mailed: February 6, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Tequila Cuervo La Rojena, S.A. de C.V. ________ Serial No. 77948331 _______ Lawrence E. Abelman, Esq., of Abelman Frayne & Schwab for Tequila Cuervo La Rojena, S.A. de C.V. Linda A. Powell, Trademark Examining Attorney, Law Office 106 (Mary I. Sparrow, Managing Attorney) _______ Before Bergsman, Wellington, and Shaw, Administrative Trademark Judges. Opinion by Wellington, Administrative Trademark Judge: Tequila Cuervo La Rojena, S.A. de C.V. (applicant) has applied to register the mark JOHNNY VEGAS in standard character form on the Principal Register for “non-alcoholic cocktails” in International Class 32 and “alcoholic beverages, namely, alcoholic cocktails containing tequila” in International Class 33.1 1 Serial No. 77948331, filed February 3, 2010, the application, for both classes of goods, is based on a statement of a bona fide intent to use the mark in commerce. Applicant submitted a statement asserting that the mark does not identify a living individual. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77948331 2 The Examining Attorney finally refused registration on the ground that JOHNNY VEGAS merely describes the identified goods in International Class 33 under Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1). Applicant concurrently filed an appeal and a request for reconsideration. The examining attorney denied the request for reconsideration; applicant and the Examining Attorney then filed appeal briefs. Scope of Appeal Before addressing the merits of the descriptiveness refusal to registration, there are several preliminary issues to address. In particular, in addition to refusing registration based on descriptiveness, the office action dated January 11, 2011, sets forth “final” requirements based on an improper identification of the Class 33 goods and the examining attorney’s requests for additional information. In its request for reconsideration, filed on February 15, 2011, applicant amended the identification of goods in Class 33 to that recited above. The amendment was accepted by the examining attorney in her appeal brief (p. 2). Accordingly, this is no longer an issue for appeal. As to the “additional information requirement,” the examining attorney stated in the final office action: Serial No. 77948331 3 The applicant was required to provide additional information about this wording to enable proper examination of the application. Specifically, applicant must respond to the following questions: Are the goods intended for use, in whole or in part, with the JOHNNY VEGAS recipe? Are the applicant’s alcoholic beverages and alcoholic cocktails, in whole or in part, some variation on the JOHNNY VEGAS recipe demonstrated in the attached pages? Are the applicant’s goods, to include the alcoholic cocktails, in whole or in part comprised of tequila? Applicant responded to this requirement in its request for reconsideration: …[the goods in Class 33] will be a prepared alcoholic cocktail. The tequila used in the JOHNNY VEGAS cocktails will be the tequila produced by applicant. Applicant’s recipe for its JOHHNY VEGAS cocktails is proprietary to it. Further, the category of tequila is not yet determined by applicant. In denying the request for reconsideration, the examining attorney did not specifically address applicant’s explanation, but asserts “[t]he requirement(s) and/or refusal(s) made final...are maintained and continue to be final.” In her appeal brief, she does not address the any “additional information” requirement as a continued basis for refusing registration. The additional information requirement has not been argued by either applicant or the examining attorney on appeal. Without any explanation as to why applicant’s most recent attempt to comply the requirement is somehow insufficient, we conclude this requirement is no longer Serial No. 77948331 4 pertinent. We further note that first two questions posed by the examining attorney in the final office action are premised on the existence of an established “JOHNNY VEGAS recipe,” a concept with which applicant asserts is misplaced. Thus, in order for applicant to answer the examining attorney’s question, it would be agreeing to something that it does not believe is true. As to the third and final question posed by the examining attorney, it is superfluous because applicant’s own identification of goods answers the question, i.e., the goods are identified as “containing tequila.” Finally, we note that throughout the prosecution of the application, the examining attorney has only argued that applicant’s mark is descriptive with respect to the alcoholic beverages identified in International Class 33. She has not articulated a refusal with respect to the non- alcoholic beverages in International Class 32. In the request for reconsideration and briefing the appeal, both applicant and the examining attorney focus their arguments exclusively on the class 33 goods. To wit, the examining attorney asserts in her denial of the request for reconsideration, “[r]egistration was refusal (sic) under...and made FINAL for ‘Alcoholic beverages, namely, tequila; tequila; alcoholic cocktails.” In her appeal Serial No. 77948331 5 brief, the examining attorney begins by reciting only the goods in Class 33 as being relevant to the refusal and concludes, “applicant’s mark JOHHNY VEGAS for use with [the class 33 goods] is found to be merely descriptive of an already recognized alcoholic beverage cocktail, and would not be understood to serve as an identified of source for applicant’s particular goods.” There is no mention of applicant’s goods in Class 32 or the proposed mark being descriptive of any goods in that class. In view of the above, we construe the descriptiveness refusal to registration of the application as relating solely to the goods in Class 33. Any possible refusal to registration that may have been raised with respect to the identified goods in International Class 32 has been waived. Descriptiveness Refusal A term is merely descriptive of goods within the meaning of Section 2(e)(1) if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods. See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987); and In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). A term need not immediately convey an idea of each and every specific feature of the applicant’s goods in order to Serial No. 77948331 6 be considered merely descriptive; it is enough that the term describes one significant attribute or function of the goods. See In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778 (Fed. Cir. 2003) (MONTANA SERIES and PHILADELPHIA CARD held merely descriptive of credit card services featuring credit cards depicting scenes or subject matter of, or relating to the state of Montana or the city of Philadelphia); In re Busch Entertainment Corp., 60 USPQ2d 1130 (TTAB 2000) (EGYPT held merely descriptive of amusement park services; namely an area within an amusement park). See generally In re H.U.D.D.L.E., 216 USPQ 358, 359 (TTAB 1982); and In re MBAssociates, 180 USPQ 338, 339 (TTAB 1973). The Examining Attorney argues that JOHHNY VEGAS is merely descriptive of alcoholic cocktails containing tequila because it is the name for a specific cocktail that calls for tequila. She argues, “applicant has not asserted or provided any evidence of a proprietary right in the recipe, and for that reason, consistent with the evidence, it would be presumed to be used by consumers as a recipe that is devoid of any association with any particular brand of Tequila. The proposed mark merely describes a Tequila cocktail….” Brief, p. 6. In support, she submitted printouts from various third-party websites showing Serial No. 77948331 7 reference to a “Johnny Vegas” cocktail and recipes to make this cocktail. For the most part, these recipes call for tequila, watermelon liqueur, and an energy drink. On several websites, the recipe specifically mentions using applicant’s brand of tequila, but in several others a different brand of tequila is named. The various websites showing a “Johnny Vegas” cocktail include an online cocktail recipe website (“Alex’s Cocktail Recipes”) and a sports bar website (“Front Page Sports Bar & Grill”). There is even a video clip on one website showing a bartender preparing a “Johnny Vegas” drink by mixing tequila with some watermelon liqueur and energy drink. Applicant, on the other hand, takes issue with the amount of evidence submitted by the examining attorney arguing, “[t]he six JOHNNY VEGAS recipes in the refusal of the request for reconsideration and the sixteen recipes in the final refusal as presented by the Examiner simply is [sic] not sufficient evidence to warrant a finding of descriptiveness.” Brief, p. 1. Applicant also asserts that “there is no particular ‘JOHNNY VEGAS’ recipe,” noting that one recipe calls for whisky instead of tequila and according some importance to other recipes identifying the specific brand of energy drink to be used. Id. Applicant also relies on its own evidence showing that there is no Serial No. 77948331 8 listed “Johnny Vegas” recipe in the Wikipedia online encyclopedia entry for “cocktails with tequila.” Based on the evidence of record, we find that applicant’s mark JOHNNY VEGAS is merely descriptive of an alcoholic cocktail. While the fact that the mark is not listed in the Wikipedia website may be probative, it is not dispositive of whether the mark is merely descriptive. The fact that a term is not found in a dictionary or online encyclopedia is not controlling on the question of registrability if the examining attorney can show that the term has a well understood and recognized meaning. See In re Mine Safety Appliances Co., 66 USPQ2d 1694, 1697 (TTAB 2002); In re Orleans Wines, Ltd., 196 USPQ 516, 517 (TTAB 1977). And despite one recipe of record calling for a brand of whisky instead of tequila, the vast majority of “Johnny Vegas” recipes consistently call for tequila, a watermelon liqueur, and an energy drink. Finally, the fact that the energy drink ingredient is nearly always mentioned by a specific brand name is irrelevant. It remains that “Johnny Vegas” is identified as a cocktail containing tequila falling squarely within applicant’s identified goods in Class 33. Serial No. 77948331 9 Accordingly, we conclude that JOHNNY VEGAS is merely descriptive of “alcoholic beverages, namely, alcoholic cocktails containing tequila.” Decision: We affirm the refusal under Trademark Act Section 2(e)(1) with respect to the goods in Class 33. The application, covering Class 32 goods only, will be forwarded for publication.