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TTAB Allows Trademark Registration of French Town Montussan

Montussan France Bordeaux Wine Law TrademarkIn a recent TTAB opinion, the Board reversed a prior decision of an Examining Attorney who refused to register a mark alluding to a French town Montussan. See In re Montussan Apertifs SAS, Serial No. 86172886 (August 12, 2015) [not precedential]. Applicant (Montussan Apertifs SAS) originally filed an application to register the mark MOUNTUSSAN (in standard characters) on the Principal Register in International Class 33 (for, predominantly, alcohol beverages). The Examining Attorney refused registration on the ground that the mark violated Section 2(e)(2) of the Trademark Act 15 U.S.C. §1052(e)(2) because the mark was geographically descriptive. Applicant filed a request for reconsideration and appealed the final refusal; Examining Attorney denied the request.

When is a Mark Geographically Descriptive? 

A mark can be geographically descriptive if the mark conveys to consumers a primarily or immediately geographical connotation and the goods or services come from that geographic area. If a mark is primarily geographically descriptive, it can still be registered on the Supplemental Register, or on the Principal Register if it shows under Section 2(f) that the mark has become distinctive of the party’s goods in commerce. In the foregoing opinion, the Board noted that the test for determining whether a mark is geographically descriptive is as follows:

  1. Whether the mark is the name of a place known generally to the public; and
  2. The public would make a goods/place association (i.e., believe that the goods originate from the named place).

Id. citing In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987). The Board noted that, if the goods do originate from the place named, a goods/place association can be presumed and the Examining Attorney bears the burden of establishing that an Applicant’s mark is geographically descriptive. Id. at 3.

Is Montussan Geographically Descriptive? 

In determining whether Montussan is geographically descriptive, TTAB looked to a prior case known as Vittel and relied, in part, on the holding. In particular: “[I]t is necessary that the purchasers perceive the mark as a place name and this is where the question of obscurity or remoteness comes to the fore.” Id. quoting 3 USPQ2d at 1452. In that case, the Court of Appeals for the Federal Circuit found that Vittel was the name of a French town and queried as to how many people in the U.S. knew Vittel was a French town. Ultimately, the Court determined there was insufficient evidence to determine the relevant public would believe Vittel to be the origin of the goods at issue. 

To support his position that Montussan was geographically descriptive, the Examining Attorney submitted evidence including (but not limited to) the following:

  • A screenshot from the website france-voyage.com that showed Montussan is a town of almost 3,000 residents in the Gironde department of France and is located about 15 kilometers from Bordeaux (the city) and includes vineyards, along with a company featuring viniculture lessons;
  • A screenshot from Wikipedia noting similar facts (i.e., Montussan is located in Gironde portion of France);
  • Screenshots from various travel sites including TripAdvisor, Airbnb, Expedia, and Yelp; and
  • Results of Google Maps to show that Montussan was several miles from Bordeaux.

The above evidence was used to support the Attorney’s position that Montussan is not an obscure or remote location from the point of view of American consumers. Id. at 5. (Other evidence was submitted by the Attorney, but the Board rejected it due to its truncated nature or due to the fact that the content was primarily in a foreign language.)

After reviewing the record, the Board found that the evidence did not support the claim that Montussan is a generally known to the relevant public, especially to prospective purchasers of wine and spirits.  Instead, the Board noted Montussan is “an obscure location” and “would likely be unknown to the relevant American consumer” and instead supports that Montussan may be known by travelers to the region. Id. at 6. The Board noted that the record was absent of American consumer recognition of Montussan and contained no evidence indicating recognition of Montussan by Americans of French ancestry or by those with connections to France, Bordeaux, or French winemaking. 

The Examining Attorney also argued that, given Montussan’s close proximity to Bordeaux city, as well as the fact that Applicant’s wine qualifies as wine from Bordeaux, and given the recognition of Bordeaux wines among American purchasers, such purchasers are likely to know Montussan as a geographic location in Bordeaux that produces Bordeaux wine. Again, the Board refuted this argument and focused on the fact that the Attorney provided no evidence to support his claim that Americans would recognize Montussan as Bordeaux wine. “The location of this town of less than 3000 inhabitants 9 miles from a much larger and more prominent city reveals nothing about what the relevant American purchaser might perceive the word ‘Montussan’ to mean, and is too insignificant to show that Montussan is a place known generally to the American purchasing public.” Id. at 7.

Because the record did not establish that the relevant American consumer is generally aware of the town of Montussan in France, the Board determined that the consumer would not believe the term MONTUSSAN on wine or spirits to be geographically descriptive. The first part of the geographically descriptive test was not met. Thus, the refusal to register the mark on 2(e)(2) grounds was reversed by the Board.

From a more technical perspective—and not surprisingly—the TTB public COLA database currently houses only seven (7) label approvals for wines containing the word “Montussan” somewhere on the label. All of these labels refer to “Bordeaux” (or some variation thereof) as the appellation.

Image property of “Lo Camin” de Montussan.

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

About 

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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