TTAB Rejects Specimen Of Use That Does Not Show Use Trademark Use For Wine.

A recent ruling by the Trademark Trial and Appeal Board (“TTAB”) serves as a good reminder of the importance of ensuring proper and sufficient trademark use on the goods and services for which a registration is sought. Albeit a seemingly simple concept, it threatens to be the achilles heel for many trademark owners who find their registrations canceled, refused, and/or in jeopardy due to inadequate or improper trademark use.

Take for instance, the case of In re Foster’s Wine Estates Americas Company. Serial No. 77018496 (June 16, 2010) [not precedential]. In support of its application to register the mark CELLAR 360 for wine, the company submitted as a specimen of use its retail catalog (which depicted applicant’s wine throughout) with the mark CELLAR 360 prominently displayed on front cover.

Rejecting applicant’s argument that the specimen served as a display associated with the goods, the TTAB refused registration of the mark. It found that the specimen showed use of the mark CELLAR 360 as a service mark for retail store services but not for wine.

Relying on the fundamental tenets of trademark law regarding what constitutes a trademark, the TTAB explained, the relevant issue is not simply whether applicant produced wine but rather whether consumers would recognize the mark CELLAR 360 as a source indicator for applicant’s wine (a trademark must identify the source of the goods).

Virtually sealing its own fate and guaranteeing a refusal of the registration, applicant did not use the mark on its wine bottles but rather on its retail catalog. This, the TTAB held, was insufficient to support a registration for wine (as the mark did not serve as a source identifier for wine). Accordingly, the board upheld the refusal to register the mark, finding that the specimen did not show use of the applied-for mark as a trademark for the goods.

Practice Note: Prior to seeking a trademark registration, clients should be counseled to carefully evaluate and consider the branding strategy that will be used in connection with the desired products/services and to, where possible, involve legal counsel in the marketing decisions regarding the manner in which the trademark will be used. Here applicant clearly intended to produce wine and was desirous of obtaining a registration for wine; however, in not using the mark on its wine labels, it failed to implement a branding strategy that would assure registration for wine. Problems such as these can often be avoided with careful planning, oversight and foresight.



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