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Prêt à Boire: A Mark “Ready to Register” on the USPTO Supplemental Register

On September 30, the United States Patent and Trademark Office Trademark Trial and Appeal Board  issued a decision, In Re Amuse Bouche LLC, for Trademark Application No. 77965809, originally filed March 23, 2010. See In Re Amuse Bouche LLC, Application No. 77965809 (September 30, 2013). Scott Bibb was the Trademark Examining Attorney and the appeal was before Administrative Trademark Judges Holtzman, Kuhlke, and Mermelstein.

The applicant, Amuse Bouche LLC of Napa Valley, originally sought to register a standard characters mark for PRÊT À BOIRE in the International Class of “wine,” where applicant claimed intent to use the mark in commerce. Registration was originally refused by the Examining Attorney on the grounds that the applied-for mark, PRÊT À BOIRE, is a generic description of the goods and therefore does not distinguish the applicant’s goods or services. See In Re Amuse Bouche LLC, citing Trademark Act § 23(a); 15 U.S.C. § 1091(a). The Examining Attorney noted that the phrase, “Prêt à Boire,” as translated into English, means, “Ready to Drink,” and is merely descriptive. Id. 

Procedural Posture: Applicant responded and the Examining Attorney issued a final refusal to register PRÊT À BOIRE, upon which applicant filed both a notice of appeal and request for reconsideration. Id. The appeal was stayed and the case remanded to the Examining Attorney who, upon review of the applicant’s arguments and evidence, rejected the request for reconsideration on the grounds of descriptiveness. Id. The appeal resumed and both the applicant and Examining Attorney filed briefs with the Board. Id. Applicant subsequently filed an amendment requesting registration on the Supplemental Register. Id. The Board treated this request as a remand and sent the application back to the Examining Attorney, who issued a refusal on the grounds that the applicant’s mark was generic. Id. The appeal was again resumed after applicant responded and Examining Attorney issued a final refusal to register. Id.

Analysis: The Board noted that if a mark is descriptive and prohibited from registration in the Principal Register, the mark can still be registered in the Supplemental Register “but only if it is ‘capable of distinguishing an applicant’s good or services.’” Id. citing Trademark Act § 23(a). To determine if a mark is generic, the Board applied a two-step test:

First, what is the genus of goods or services at issue? Second, is the term sought to be registered or retained on the register understood by the relevant public primarily to refer to that genus of  goods  or services? Id. citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986).

The Board examined the evidence submitted by both the Examining Attorney and the applicant. In its review of the Examining Attorney’s evidential submission, which consisted of significant internet references and examples, the Board noted that the term, “Prêt à Boire,” is mostly used to designate a wine’s age or readiness to drink. However, the Board recognized that three of the sources provided by the Examining Attorney  used the phrase, “Prêt à Boire,” or, “Ready to Drink,” with reference to how a good is packaged or sold, e.g., “ready-to-drink wine by the glass.” Id. The Board discussed several other uses of the term, “Prêt à Boire,” provided by the Examining Attorney as discussed here.

Screen Shot 2013 10 23 at 1.36.14 PM 300x218 Prêt à Boire: A Mark Ready to Register on the USPTO Supplemental RegisterApplicant, in its response to the Examining Attorney, provided multiple sources of evidence, including an excerpt from Amuse Bouche LLC’s website and a copy of its Certificate of Label Approval (“COLA”) from the Alcohol Tobacco Tax and Trade Bureau, as pictured right. The official COLA is viewable here and here. In its request for reconsideration, applicant submitted sixty-one registrations of third parties demonstrating the use of the term, “PRÊT À ____” or, “Ready to ____” for a variety of goods and services (e.g., “PRÊT À MANGER,” for restaurant services, Reg. No. 2071984). Finally, applicant submitted evidence from Mr. Rhett Gadke, the Wine Director of Bounty Hunter Rare Wine & Provisions in Napa, who certified that the term “Prêt à Boire” is recognized as referring to Amuse Bouche LLC’s wine.

In its review, the Board references the Doctrine of Foreign Equivalents, which translates “foreign words from common language . . . into English to determine genericness, descriptiveness, as well as similarity of connotation in order to ascertain confusing similarity with English work marks.” In Re Amuse Bouche LLC, quoting Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005); In Re Sambado & Son Inc., 45 USPQ2d 1312, 1315 (TTAB 1997). The Board noted, however, the Doctrine is not an absolute rule and is subject to limitations. Generally, speaking, the Doctrine is limited to situations where an American consumer will see a foreign term and translate said term into English. Id. The Board agreed that the term “Prêt à Boire” clearly translates into English as, “Ready to Drink.” Additionally, the Board noted that the applicant translated the term in its application and on the true back side of its wine label. Thus, the Board found it appropriate to apply the Doctrine of Foreign Equivalents to this particular case for some of the following reasons: 

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 . . . . Wine drinkers familiar with French are thus likely to “stop and translate” prêt à boire when encountering it used in connection with wine. Id.

Applicant confirmed that the term “Prêt à Boire” is at least descriptive of wine. In response, the Board highlighted that the true question is whether, as shown by evidence, the term “Prêt à Boire” is also a generic name for wine thus precluding applicant from registering the applied-for mark, PRÊT À BOIRE, on the Supplemental Register. Through evidence provided, the Board noted that the term, “Prêt à Boire,” is used as an adjective to describe the point in time when a wine will be at its peak in quality, but contrasted with the fact that some adjectives have been held to be generic. Id. 

Next, the Board examined whether the term refers primarily to wine (in this case, the genus of goods or services).  The Board reasoned that, the majority of the evidence as provided by the Examining Attorney shows that the term “Ready to Drink” or “Prêt à Boire” describes a characteristic or attribute of wine. “These terms are not used as the ‘name’ of the wine or sub-genus of it (such as ‘red,’ ‘sparkling,’ or ‘chardonnay’). Although we imagine a wine collector may speak about the wines in her cellar that are ‘ready to drink,’ the evidence of record tends to show that the term is used primarily to say something about wine, rather than to name or categorize it.” Id. The Board noted that, while adjectives can be recognized as generic, the evidence as provided in this case did not show public view widely in support of the term “ready to drink” or “prêt à boire” as “a central aspect of wine.” Id. (emphasis added). The Board placed emphasis on the fact that the term designates the absolute best quality of the wine in its lifespan.

Conclusion: In conclusion, the Board determined that, although “Prêt à Boire” is descriptive and frequently applicable to wine, the Examining Attorney did not meet his burden to show that the term “Prêt à Boire” is generic. Thus, the Board reversed the refusal to register “Prêt à Boire.”

Image property of United States Patent and Trademark Office Trademark Trial and Appeal Board, as per In Re Amuse Bouche LLC, Application No. 77965809.

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Lindsey is the founder and author of On Reserve: A Wine Law Blog. She is an alcohol beverage and food attorney and is admitted to the New York State Bar.

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