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TTAB Finds “Naughty Girl” Not Merely Descriptive of Wine

In a recent opinion, the TTAB found a registered mark for “Naughty Girl” in Class 33 (wines and fortified wines) not merely descriptive of wine. Alvi’s Drift Wine International, the petitioner, sought to cancel the registration by von Stiehl Winery for the standard character mark “Naughty Girl.” Alvi’s Drift Wine International v. von Stiehl Winery, Cancellation No. 92058100 (September 12, 2014) [not precedential]. Petitioner alleged mere descriptiveness of the mark, arguing that drinking respondent’s wine (which, as a fortified wine, had a slightly higher alcohol by volume content than standard table or dessert wines) would make women “naughty.” Id. at 1. In its response, respondent denied the allegations sought by petitioner. Id. 

Prior to its request to cancel respondent’s mark, petitioner filed an application for the registration of the mark, “Alvi’s Drift Naughty Girl” for “wine” in Class 33. USPTO issued an Office action refusing registration based on the likelihood of confusion with respondent’s mark, “Naughty Girl.”

Naughty Girl Trademark Dispute Alvi's Drift Wine International von Stiehl WineryIn response to petitioner’s cancellation request, respondent filed a motion for summary judgment with the United States Patent and Trademark Office’s Trademark Trial and Appeal Board (“Board”) on April 28, 2014, seeking judgment as a matter of law with regards to petitioner’s claim for mere descriptiveness. Respondent submitted declarations from its Vice President and co-owner, along with its counsel, as evidence on summary judgment and petitioner submitted declarations from its counsel with several accompanying exhibits.

Summary judgment is commonly used in litigation and is a method by which a party can move to dispose of a case in which there is no genuine dispute as to material facts, entitling the movant to a judgment as a matter of law. More information on Summary Judgment is outlined in the Federal Rules of Civil Procedure, Rule 56. As part of the procedure for summary judgment, all evidence must be viewed in a light most favorable to the non-moving party and the Board cannot resolve disputers of material fact.

In its motion, respondent argued that its mark (NAUGHTY GIRL) does not “immediately convey any knowledge about the ingredients, qualities, functions, features or characteristics of wine.” Id. at 3. Rather, the name was chosen because it is “‘playful, humorous, and imaginative,’ not because it will actually make a person a ‘naughty girl.'” Id. at 4 (quoting declaration of Brad Schmiling, respondent’s Vice President). Dictionary references to “naughty girl” or “naughty” and “girl” provided no reference to wine. Id at 4–5. Further, a LEXIS/NEXIS database search of all U.S. newspapers containing the terms “naughty girl” and “wine” within the same article produced 54 search results, eight of which referred to respondent. Id. at 5. Of those eight results, none used the term “naughty girl” to describe an ingredient, quality, characteristic, function, feature, purpose, or use of the wine. Id. Thus, respondent argued that such was evidence that the terms “naughty” and “girl” separately, or together as “Naughty Girl,” do not have a recognized meaning with respect to wine. Id.

In response, petitioner argued that there was a genuine dispute of material fact as to whether the mark was descriptive of wine because, as petitioner argued, respondent’s intent in selecting its mark was to convey the effect that drinking the wine might have. Id at 5–6. Petitioner pointed to respondent’s claims that “the effect of the NAUGHTY GIRL wine might be fun and excitement” as evidence. Id. at 5. Further, petitioner argued that “after someone drinks a few glasses of high alcohol wine, it is a fine line between ‘fun and excitement’ and ‘act[ing] like a naughty girl.’ . . . Registrant is also navigating a slippery slope between ‘playful’ and ‘act[ing]’ like a ‘naughty girl.'” Id. at 6. If the above is not enough to convey some of the frivolity in this suit, petitioner’s counsel submitted evidence from an Internet search of reviews detailing respondent’s wine, in particular:

When I saw this wine at the Wisconsin Cheese Chalet, the place I bought my chocolate cheese, I knew I had to try it. It was calling the party girl in me because they had a whole party girl display going by this wine. Here are the bottle toppers that started the whole ‘naughty girl’ craze.

Id. (quoting evidence submitted by petitioner’s counsel on Internet wine reviews of respondent’s wine, namely from a site written by Jennifer Stinnett called Jennifer’s Reviews). Petitioner provided additional evidence, which can be accessed by reading the original opinion of the Board here

Further, petitioner argued that respondent only provided evidence that contained “unsubstantiated opinions” in support of its argument that the mark was not descriptive and that additional evidence shows respondent’s intent in naming its wine “NAUGHTY GIRL” portrays the significance said mark has on consumers. Respondent replied that petitioner’s evidence did not create a genuine dispute of material fact but instead supports respondent’s argument that its mark is suggestive.

In its decision, the Board noted that “[w]hether a particular term is merely descriptive is determined in relation to the goods for which a registration is sought and the context in which the term is used, not in the abstract or on the basis of guesswork” and the Board’s decision of whether a mark is merely descriptive is a finding of fact. Id. at 8–9. In this case, the Board noted that the evidence submitted denotes the mark to be “at most” suggestive and not descriptive of the goods. Id. at 9. In its analysis, the Board noted that the combination of dictionary and newspaper sources did not establish any direct connection between the term “Naughty Girl,” “Naughty,” or “Girl” and wine. Id. The Board further noted that the petitioner did not meet its burden, as petitioner did not present any “competent” evidence to augment its allegations; instead, as the Board noted, petitioner’s evidence only indicates that one blogger “appreciates respondent’s product, not that there is anything about the term that is descriptive.” Id. 

Finally, the Board noted that “even if one could conclude from petitioner’s evidence that some altered state of behavior may follow ingesting the goods,” no evidence shows that the term “Naughty Girl” relays any information at to the ingredients, quality, characteristics, function, feature, purpose of use of the wine. Rather,

[A]  multi-stage through process would be necessary: 1) respondent’s wine has a higher alcohol content; 2) drinking fortified wine may make one inebriated; 3) inebriated people act inappropriately; 4) people who act inappropriately may be considered naughty; 5) NAUGHTY GIRL describes the result on the drink of using the wine. Even if one were to follow the thought process, because it obviously takes a multi-stage reasoning process, the mark is not merely descriptive but is at most suggestive

Id. at 9–10.

The Board found the respondent met its burden in establishing the absence of any genuine despite of material fact and, as such, respondent’s mark is not merely descriptive of the goods and that evidence submitted by respondent did not convey any meaning between wine and the “ordinary meaning of the term ‘young woman who misbehaves.'” Id. at 10. In turn, the petitioner failed to rebut respondent’s evidence and did not raise any genuine disputes of material fact. As a result, the Board granted respondent’s motion for summary judgement and dismissed petitioner’s petition to cancel the mark with prejudice.

Image property of the Alcohol and Tobacco Tax and Trade Bureau.

For more information on wine or alcohol law, labeling, or trademark, please contact Lindsey Zahn.

DISCLAIMER: This blog post is for general information purposes only, is not intended to constitute legal advice, and no attorney-client relationship results. Please consult your own attorney for legal advice.

Lindsey A. Zahn

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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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