Arguing With the Trademark Office Over Wine? – La Finca Wine Trademark Decision Provides Interesting Lessons Regarding Acceptable Source Material
The TTAB (Trademark Trial and Appeal Board) recently affirmed the decision from the USPTO refusing to register the mark “La Finca” for wines on the basis that the vintner didn’t demonstrate that the brand had acquired distinctiveness since the translation of the term is “the estate” or “the farm” which is descriptive for wines. You can read the opinion here. You can also read the brief submitted on behalf of the winery here. For those regularly trademarking wines, a particularly interesting bit of dicta from the opinion appears to have adopted “estate bottled” and “estate” as a narrower genus of the “wine” category of goods.
The Examining Attorney requests and we take judicial notice of the dictionary definition of “wine,” which in relevant part is “an alcoholic drink made from the juice of grapes.” (http://merriam-webster.com/dictionary/wine) In addition, and as more fully discussed infra, the terms “estate wine” and “estate-bottled wine” refer to an alcoholic drink made of grapes, made from start to finish at the same winery. Accordingly, we find the Examining Attorney’s position that the genus is wine and her narrower interpretation of that term accurate. A generic term can encompass a range of products or a particular product that may be categorized under an all encompassing term. See, e.g., In re Greenliant Sys. Ltd., 97 USPQ 2d 1078, 1082 (TTAB 2010) (NANDRIVE found generic for “electronic integrated circuits” because NAND drives were types of solid state flash drives, a subcategory of applicant’s broadly worded “electronic integrated circuits”); In re Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988), aff’d, 10 USPQ2d 1879 (Fed. Cir. 1989) (ANALOG DEVICES held generic for a wide range of electronic products in International Class 9). Here, the genus of goods is properly identified as wines, but could, by definition, encompass more-narrowly defined goods such as “estate” or “estate-bottled” wines.
Between this acknowledgment and citation to ten different wine marks which had each disclaimed “FINCA” as part of the mark, you would have expected the TTAB to make short work of upholding the refusal to register the mark based on the examining attorney’s notation that “LA FINCA” was generic, but that’s not what happened. The opinion is worth a read because for well over fifteen pages, the TTAB accepted the multiple photographs, wine reviews, demonstrations of use in commerce and other supporting documentation including the TTB’s (Tax and Trade Bureau) proposed rulemaking regarding the phrase “estate” as opposed to “estate bottled” in reaching the decision to reverse the examining attorney’s refusal based on genericness. Certainly a lesson in advocacy.
Unfortunately this didn’t end the determination as the TTAB still considered and rejected the argument that the brand had acquired a secondary meaning sufficient to establish distinctiveness. 5,000,000 bottles sold for over 7 years at Trader Joe’s stores in the U.S. just isn’t enough. While the sales figures were impressive, the TTAB found that “[a]pplicant has not shown that the designation ‘La Finca’ will be perceived as identifying the source of applicant’s wines”. “Accordingly, we find that it has not acquired distinctiveness.”
