Trademark Review - Ready to Drink Wine? and What is a Certification Mark? (November 2013)

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Ready To Drink Wine?

Winemaker Amuse Bouche applied to register the mark “PRÊT À BOIRE,” which is French for “ready to drink.”  The Examining Attorney alleged the term is generic when used in connection with wine and rejected the application. 

A mark is generic if it refers primarily to the class, genus, or category of goods in connection with which it is used.  The Examining Attorney submitted a fair amount of evidence to show generic use of “ready to drink” in reference to wine.  The applicant advertised its PRÊT À BOIRE wine as “Ready to Drink” and included a translation of “PRÊT À BOIRE” on the back label of its wine.

Pret a Boire  - ready to drink

Nevertheless, the TTAB reversed the refusal.  The TTAB found that “ready to drink” describes a point in time when a particular wine will be at its peak in quality.  As such, the TTAB found that while the mark describes a characteristic or attribute of wine, it is not used as the “name” of wine or of any category of wine, such as “red” or “chardonnay.”

In re Amuse Bouche LLC, Serial No. 77965809 (TTAB Sept 30, 2012) [not precedential]

What is a Certification Mark?

A certification mark is any word, phrase, symbol or design owned by one party who certifies the nature, origin, quality or other characteristic of goods and services sold by others.  Because certification marks indicate an independent certification of the quality of the product bearing the certification mark, the owner of the certification mark cannot itself sell the goods or services to which the certification mark is applied.  The mark can only be applied to goods and services sold by others.

Examples of certification marks include:

  • GOOD HOUSEKEEPING SEAL OF APPROVAL Good Housekeeping Seal of Approval: which represents that The Good Housekeeping Institute provides a limited warranty to customers as to the quality of the product;
  • COLOMBIAN for coffee: certifying that the coffee bearing the mark does come from Colombia;
  • CE Logo : which indicates the product complies with safety, health or environmental requirements set by the European Commission; and
  • PSE which indicates the product complies with Japanese standards for electric devices.

To register a certification mark in the U.S., the owner must adopt rules and regulations identifying what is being certified by the mark, and required standards for use of the mark.  The owner must also be able to verify if goods and services meet its standards for use of the certification mark, and must enforce against use of the certification mark on any particular product or service does not meet the owner’s required standards.  The applicant for the registration of a certification mark in the U.S. must also show actual use of the mark in commerce.  The specimen showing use of the certification mark must show how a person other than the owner uses the mark to certify the nature, origin, quality or other characteristic of that person’s goods or services.  

The use of certification marks is fairly consistent in most countries, with some exceptions.  The owner of the mark should check local laws before allowing use of its certification mark in a different country.

Topics:  Certifications, Trademarks, Wine & Alcohol

Published In: Civil Procedure Updates, Communications & Media Updates, Intellectual Property Updates, International Trade Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Knobbe Martens Olson & Bear LLP | Attorney Advertising

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