Wednesday, October 16, 2013

PRÊT À BOIRE Not Generic for Wine, Says TTAB

The Board reversed a refusal to register on the Supplemental Register, the mark PRÊT À BOIRE for wine, finding that the PTO did not prove by clear evidence that it the mark is generic for the goods. Although it describes a characteristic or attribute of wine, "prȇt à boire" (or its English equivalent, "ready to serve") is not the “name” of wine or a sub-genus of it. In re Amuse Bouche LLC Application No. 77965809 (September 30, 2013) [not precedential].

We all know that a mark that is merely descriptive under Section 2(e)(1) may be registered on the Supplemental Register as long as it is "capable of distinguishing applicant's goods or services." A generic term is not so capable, and is therefore ineligible for supplemental registration.

The determination of genericness requires a two-part inquiry: What is the genus of the goods? Is the term at issue understood by the relevant public primarily to refer to that genus of goods? [Marvin Ginn]. Genericness is a question of fact, and the PTO must provide clear evidence thereof. [Professor McCarthy has questioned whether "refer to the genus" is enough. I ask, shouldn't it be "names the genus"? - ed.] The Board, not surprisingly, agreed with the Examining Attorney that the genus of goods is "wine."

The Examining Attorney provided considerable Internet evidence of use of the terms "prȇt à boire" and "ready to drink." Sometimes the phrase refers to the topic of when a particular wine will be at its best. Occasionally, it refers to the packaging of the wine (e.g., an individual serving in a wine glass).

Applicant Amuse Bouche submitted 61 third-party registrations for marks in the form of "PRÊT À ___" or "READY TO ____" for various goods and services, as well as a declaration of a wine buyer who claimed that PRÊT À BOIRE serves as a source indicator for applicant's wine.

The Board found no dispute that "prȇt à boire" is French for "ready to drink," and it deemed it appropriate to apply the doctrine of foreign equivalents in this case.

There is no evidence of record suggesting that that the translation in this application is inaccurate, that “prêt à boire” is so obscure that it would not be easily recognized and translated by French speakers in the U.S. marketplace, or that it is an idiom which is not equivalent to its direct English translation. As noted, the evidence of record shows both the French term and its English translation in use (sometimes side-by-side) in connection with wine. And there can be no doubt that French is a common, modern language. Wine drinkers familiar with French are thus likely to “stop and translate” prêt à boire when encountering it used in connection with wine. We therefore find applicant’s mark to be equivalent to the English phrase “ready to drink” for purposes of determining genericness.

As to the meaning of the mark, the Board noted the CAFC's observation that the boundary between descriptive and generic terms will occasionally be "fuzzy."

The applied-for mark is used as "an adjectival phrase referring to a point in time when a particular wine will be at its peak in quality." Of course, adjectives may be generic (e.g., ATTIC for automatic fire sprinklers). The question was this: does PRÊT À BOIRE, or its English equivalent, "ready to drink," refer primarily to wine? Based on the evidence of record, the Board said no.

[T]he bulk of the examining attorney’s evidence shows use of "prêt à boire," or "ready to drink" in describing a characteristic or attribute of wine. These terms are not used as the “name” of wine or a sub-genus of it (such as “red,” “sparkling,” or “chardonnay”). *** And although we have recognized that like nouns, adjectives can be generic when they "directly name[ ] the most important or central aspect or purpose of the goods," Central Sprinkler, 49 USPQ2d at 1199, the evidence does not show that the relevant public views "prêt à boire," or "ready to drink" as a most important or central aspect of wine. Rather, it merely signifies a point in time when the wine is estimated to be at its best.

The Board therefore reversed the refusal to register.

Read comments and post your comment here.

TTABlog note: I like the label, therefore I think I'll buy a bottle.

Text Copyright John L. Welch 2013.


At 9:27 AM, Anonymous Robert M. O'Connell, Jr. said...

Something in the bouquet of this decision smells off. Seems to me that the proposed mark could (should?) also have been refused as being misdescriptive/deceptive to the extent that it is applied to wines which are not, in fact, ready to drink (by virtue of being too young, or too old, or corked, or whatever).
-- Bob O'Connell


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