estta tracking number: estta1095807 11/16/2020

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

ESTTA Tracking number: ESTTA1095807

Filing date: 11/16/2020

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 92068562

Party PlaintiffCrossroad Company LLC

CorrespondenceAddress

J SANDY BARTLETTLAW OFFICE OF SANDY BARTLETT LLCPO BOX 546LAUREL, MD 20725UNITED STATESPrimary Email: [email protected]

Submission Brief on Merits for Plaintiff

Filer's Name J. Sandy Bartlett

Filer's email [email protected]

Signature /J Sandy Bartlett/

Date 11/16/2020

Attachments Plaintiffs Trial Brief.pdf(428758 bytes )

http://estta.uspto.gov

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE

TRADEMARK TRIAL AND APPEAL BOARD

CROSSROAD COMPANY LLC, )

Petitioner, )

v. ) Cancellation No. 92068562

QUALITY DAIRY FARMS INC., d/b/a ) Registration No. 5358576

MERCER’S DAIRY CORPORATION, )

Respondent. )

________________________________________________________________________

PLAINTIFF’S TRIAL BRIEF

On the Brief:

J. Sandy Bartlett, Esq.

Attorney for Petitioner

Law Office of Sandy Bartlett, LLC

P.O. Box 546

Laurel, MD 20725

Cancellation No. 92068562

Petitioner’s Trial Brief

Page 2 of 26

Table of Contents

I. INTRODUCTION 5

II. DESCRIPTION OF THE RECORD 5

III. STATEMENT OF THE ISSUES 9

A. Whether the mark WINE ICE CREAM is generic because the term WINE ICE CREAM primarily refers to

the genus of Registrant’s goods, “ice cream combined with wine,” making the mark incapable of functioning

as a source-identifier? 9

B. In the absence of relevant evidence of acquired distinctiveness and lack of continuous and substantially

exclusive use, whether the mark WINE ICE CREAM is merely descriptive and thus unregistrable regardless of

the 2(f) Declaration? 9

IV. RECITATION OF FACTS 9

A. History of Crossroad Company, LLC 9

B. Petitioner’s wine ice cream business 10

C. Ser. No. 77/267,372 for mark containing WINE ICE CREAM 10

D. Reg. No. 5,358,576 for WINE ICE CREAM 11

E. Third Party Use of “WINE ICE CREAM” 11

V. STANDING 12

VI. ARGUMENT 13

A. SUMMARY OF THE ARUMENT 13

B. The Genericness Standard 14

1. The Two-prong Genericness Test Applies to Compound Marks and Respondent’s mark 14

C. Respondent’s Mark – WINE ICE CREAM Does Not Overcome the Two-Prong Genericness Test 15

1. Ice cream made with wine is the genus of goods for “Wine ice cream.” 15

2. Respondent’s mark is understood by the relevant public primarily to refer to ice cream combined with

wine. 16

D. Due to the generic nature of WINE ICE CREAM for “ice cream combined with wine, the mark is incapable

of acquiring Secondary Meaning. 19

E. Mercer’s Does not have Acquired Distinctiveness for Wine Ice Cream 20

1. Substantial Sales Do Not Evidence Acquired Distinctiveness of a Generic Mark 20

F. Respondent should not be afforded a claim of exclusive rights to terms that others in the industry need to

describe their goods or services in the marketplace. 21

VII. Fraud Standard 22



Page 3 of 26

A. The Exclusivity Claim in Mercer’s Office Action Response and Acquired Distinctiveness Declaration was

Fraudulent 22

VIII. CONCLUSION 23

IX. Certificate of Service 25



Page 4 of 26

Cases

Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F. 2d 4, Court of Appeals, (2nd Circuit 1976) 19,20

Bayer Co. v. United Drug Co., 272 F. 505, (S.D.N.Y. 1921) .................................................................. 14

Clairol, Inc. v. Roux Distributing Co., Inc., 280 F.2d 863, 126 USPQ 397 (CCPA 1960) ....................... 15

Cummins Engine Co., Inc. v. Continental Motors Corp., 359 F.2d 892, 149 USPQ 559 (CCPA 1966) ... 15

Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ 2d 1047, 1051 (Fed.Cir. 1991) ....... 21

H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 783 F.2d 987 (Fed. Cir. 1986) .................... 14,15

In re Aug. Storck KG., 218 USPQ 823, 825 (TTAB 1983) ..................................................................... 21

In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009) ................................................................................... 22

In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1344 (Fed. Cir. 2001)........................................ 14

In re Helena Rubinstein, Inc., 410 F.2d 438, 161 USPQ 606 (CCPA 1969) ............................................ 15

In re Seats, Inc., 757 F.2d 274, 225 USPQ 364 (Fed. Cir. 1985) ............................................................. 20

Nationstar Mortgage LLC v. Mujahid Ahmad, 112 USPQ 2d 1361, 1374 (TTAB 2014) ........................ 22

Royal Crown Co. v. CocaCola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1044-45 (Fed. Cir. 2018) ......... 19

Weiss Noodle Co. v. Golden Cracknel and Specialty Co., 290 F.2d 845, 847; 129 U.S.P.Q. 411, 413 (CCPA

1961)……………………………………………………………………………………………………………………………………………………..16

Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ 2d 1001, 1005 (Fed. Cir. 1988) ...... 19

Statutes

The Lanham Act, 15. U.S.C. §1064(3) ....................................................................................................... 6

The Lanham Act, 15 U.S.C. §1052(e) ........................................................................................................ 6

Section 2(e)(1) of the Lanham Act (15 U.S.C. §1052(e)(1)) ............................................................. 20, 21

Trademark Act Section 6, 15 U.S.C. §1056…………………………………………………………….. 20

TMEP §§1213 and 1213.03(a) ............................................................................................................... 20

Other Authorities

Merriam-Webster.com Dictionary, Merriam-Webster, https://www.merriam-webster.com/dictionary/ice

cream ................................................................................................................................................ 17

Merriam-Webster.com Dictionary, Merriam-Webster, https://www.merriam-

webster.com/dictionary/wine ........................................................................................................... 17



Page 5 of 26

I. INTRODUCTION

Pursuant to 15 U.S.C. §1052(e); and 1064(3), Petitioner, Crossroad Company, LLC

(“Crossroad”) seeks to cancel registration of Registration No. 5,358,576 for “WINE ICE

CREAM” for “ice cream combined with wine” on the grounds that (1) WINE ICE CREAM is

generic to the goods offered; (2) Registrant’s 2(f) declaration is an admission that “WINE ICE

CREAM” is entirely descriptive, but Registrant was not the required “substantially exclusive”

user during the relevant 2012-2017 2(f) interval.

II. DESCRIPTION OF THE RECORD

A. Evidence submitted into the Record by Petitioner 1

• Document #29 - Notice of Reliance - filed June 3, 2020 (ESTTA1059763)

o Exhibit A Copy of Crossroad’s application - Ser. No. 87/572,627 filed on

August 17, 2017

o Exhibit B - Copy of Office Action against Crossroad - dated November

17, 2017

o Exhibit C - Online news article regarding Green Creek Winery’s creation

of wine ice cream - published January 20, 2015

o Exhibit D – Plaintiff’s Interrogatories numbers 23 and 24 and

Respondent’s Answers thereto

o Exhibit E – Merriam-Webster dictionary definition of words “wine” and

“ice-cream”

o Exhibit F – 2(f) Declaration of Ruth Mignerey filed in Response to

Priority Action issued on June 12, 2017 relating to application No.

87/369,190 for WINE ICE CREAM & Design

1 Per 37 CFR § 2.122(b)(1), additional items are already part of the record such as the file of

each application or registration specified in the petition for cancellation as well the allegations

in the application for registration, or in the file of a registration at issue.



Page 6 of 26

o Exhibit G - Registration of Respondent's Trademark - Reg. 5,358,576

resulting from Ser. No. 87/369,190

• Document #30 - Notice of Reliance - filed June 3, 2020 (ESTTA1059767)

o Exhibit H

Respondent’s Application No. 77/267,372 - filed August 29, 2007

Drawing of the mark in Application No. 77/267,372

Office Action in Application No. 77/267,372 -issued December 6,

2007

Notice of Abandonment in Application No. 77/267,372 - issued

June 7, 2008

• Document #31 – Plaintiff’s Notice of Filing Testimony for Sharon Gallagher -

filed June 3, 2020 (ESTTA1059771)

o Exhibit I - Internet screenshots reflecting third party use of “wine ice

cream”

• Document #32 – Declaration of Daniel Jack Gorham - Testimony for Plaintiff

(ESTTA1059774) filed June 3, 2020

• Document #33 - Notice of Reliance - June 4, 2020 (ESTTA1059893)

o Exhibit J - Internet screenshots about “wine ice cream” from internet blogs

and magazines during the year 2015, including the 2(f) interval (2012-

2017).

• Document #53 - Second Declaration of Sharon Gallagher - September 15, 2020

(ESTTA1081993)

o Exhibit K - Temporary Food Permit for “Taste of the Valley Food & Wine

Festival” - issued June 2, 2015 for the sale of “wine ice cream.”

o Exhibit L – Howard County Health Department Bureau of Environmental

Health Temporary Food Service Application for “Wine in the Woods” -

dated April 1. 2019 for the sale of “wine ice cream.”

o Exhibit M - Carroll County Health Dept. Bureau of Environmental

Health Vendor Form for “Wine Stroll” for the sale of “wine ice cream.”



Page 7 of 26

• Document #54 -Declaration of Katrin Gorham - Testimony for Plaintiff -

September 8, 2020 (ESTTA1082443)

o Exhibit N - Food Festival Food License Application for “MD Seafood

Fest.” - dated August 25, 2015

• Document #55 - Notice of Reliance - September 17, 2020 (ESTTA1082659)

o Exhibit O - Louisiana House Bill No. 471 - Information Page

o Exhibit P - Louisiana House Bill No. 471

o Exhibit Q - New York State Assembly Bill A10132

o Exhibit R - New York State Assembly Bill S7168



Page 8 of 26

B. Summary of Petitioner’s Proffered Testimony

Petitioner proffered direct testimony of three owners of Crossroad, Mrs. Sharon

Gallagher, Ms. Katrin Gorham and Mr. Daniel Jack Gorham, each testimony provided under the

penalty of perjury. The owners are the proprietors of a winery and dairy company.

In Mrs. Gallagher’s testimony, (Docket No. 34 ESTTA1059902 and corrected at Docket

No. 36 ESTTA 1059952), she testified that the phrase “wine ice cream” is known to her to

identify a wine infused ice cream. She also directly testified that she uses the phrase “wine ice

cream,” to describe her product when completing the company’s applications for food festivals

and County temporary food licenses. (Docket No. 53 ESTTA10). Mrs. Gallagher provided

internet printouts (Exhibit I, Docket No. 34 ESTTA 1059902 and corrected at Docket No. 36

ESSTA 1059952) and testified that the internet printouts accurately reflect the results of her

internet search for wine ice cream recipes from food bloggers or other retailers in the wine or

food industry.

Mr. Daniel Jack Gorham testified, (Docket No. 32 ESTTA1059774 and corrected at

Docket No. 35 ESTTA1059950) that he has worked primarily in the areas of technology and

process at Crossroad and that the phrase “wine ice cream” is known to him to identify a wine

infused ice cream. He testified that he personally conducted internet searches during 2013 thru

2020 and found food bloggers dessert recipes and treats referred to as wine ice cream that were

not Mercer’s products.

Ms. Katrin Gorham testified (Docket No. 54 ESTTA1082443) that she knows the phrase

wine ice cream to be generic of a wine infused ice cream. She also provided internet printouts

(Docket No. 33 ESTTA105989) and testified that the printouts accurately reflect the results of

her internet search for wine ice cream recipes posted by food bloggers or other retailers in the

wine or food industry. She also directly testified that she uses the phrase “wine ice cream” when

completing an application for food festivals.

Petitioner also provided the 2(f) Declaration of Ruth Mignerey as a statement made by a

declarant who is a party to the proceeding. Ms. Mignerey is a Principal at Mercer’s and someone



Page 9 of 26

who has firsthand knowledge of the facts and actual authority to act on behalf of the owner

TMEP §804.04.

Petitioner also proffered self-authenticating evidence under Notice of Reliance under 37

C.F.R. §2.122(e)(1) and (2) and §2.122(g).

C. Summary of Registrant’s Evidence

Registrant’s evidence consists of testimony by owners, former owner, distributors of

Registrant’s WINE ICE CREAM product and a lobbyist for the wine industry. Registrant

provided evidence of sales, numerous marketing information, awards and articles. There is no

evidence that the phrase WINE ICE CREAM is anything other than generic of the genus of

goods.

III. STATEMENT OF THE ISSUES

A. Whether the mark WINE ICE CREAM is generic because the term WINE ICE

CREAM primarily refers to the genus of Registrant’s goods, “ice cream combined

with wine,” making the mark incapable of functioning as a source-identifier?

B. In the absence of relevant evidence of acquired distinctiveness and lack of

continuous and substantially exclusive use, whether the mark WINE ICE CREAM

is merely descriptive and thus unregistrable regardless of the 2(f) Declaration?

IV. RECITATION OF FACTS

A. History of Crossroad Company, LLC

Crossroad is a family owned business founded in 2013. The company was founded as a

seller of consumable grade wine products, dairy and non-dairy products that meet Food and Drug

Administration’s compatibility requirements. The company sells a wine infused ice cream in

connection with the trademark WINECREAM and has sold its product since 2014. (Decl. of

Daniel Jack Gorham, docket no. 32, ESTTA 1059774 and corrected at docket no. 35, ESTTA

1059952).



Page 10 of 26

B. Petitioner’s wine ice cream business

The wine infused ice cream dessert product Crossroad created and sold in connection

with the trademark WINECREAM was born from experimenting to create a wine infused ice

cream that would remain frozen and retain the wine flavor. (Decl. of Sharon Gallagher, Docket

No. 34, ESTTA1059902 and corrected at Docket No. 36, ESTTA1059952). Crossroad first sold

wine infused ice cream in connection with the trademark WINECREAM at festivals and later

through direct sales. (Id. Docket No. 32, ESTTA1059774 and corrected at Docket No. 35,

ESTTA1059950).

On June 2, 2015, Crossroad was issued a temporary food license to sell a “wine ice

cream” in connection with the WINECREAM mark at a “Taste of the Valley Food & Wine

Festival,” (Exhibit K, Docket No. 53, ESTTA1081993). On August 25, 2015, Crossroad was

issued a temporary food license to sell a “wine ice cream” at “MD Seafood Fest,” (Exhibit N,

Docket No.54, ESTTA1082443). On April 1, 2019, Crossroad was issued a temporary food

service facility information sheet for “Wine in the Woods” to sell “wine ice cream,” (Exhibit L,

Docket No.53, ESTTA1081993). In every one of these food festivals licenses Crossroad

described its product as “wine ice cream.” (Sharon Gallagher Declaration, Docket No.53

ESTTA1081993 and Katrin Gorham Declaration, Docket No. 54 ESTTA1082443).

Crossroad has made a substantial financial investment in equipment, retail space,

advertisement, and market research, (Declaration of Sharon Gallagher, Docket No. 34,

ESTTA1059902 and corrected at Docket No. 36, ESTTA1059952).

C. Ser. No. 77/267,372 for mark containing WINE ICE CREAM

Respondent filed an application for MERCER’S WINE ICE CREAM FOR THE

SOPHISTICATED PALATE & Wine Glass Design for use in connection with “ice cream” on

August 29, 2007 (Exhibit H, Docket No.30 ESTTA1059767) and disclaimed the terms “wine ice

cream.”



Page 11 of 26

On December 6, 2007, the application was rejected on the grounds of merely

descriptiveness2 (Id.) Respondent did not file a response to the office action and a Notice of

Abandonment issued on June 7, 2008.

D. Reg. No. 5,358,576 for WINE ICE CREAM

Respondent filed an application for WINE ICE CREAM & Wine Glass Design on March

3, 2017 for “ice cream3.” Respondent disclaimed exclusive use of the phrase “ice cream” apart

from the mark as shown. On June 12, 2017, the examining attorney issued a Priority Action

based upon a discussion with James P. Youngs, attorney for the applicant. The examiner

summarized the issues as:

• Amendment of Identification of Goods to Avoid Section 2(a) Deceptive

Refusal

• Disclaimer of Descriptive Wording

• Advisory: 2(f) In Part

• Disclaimer of Generic Wording under Section 2(f)

Ruth Mignerey signed a Declaration under 2(f) dated August 9, 2017 claiming acquired

distinctiveness through substantially exclusive and continuous use of the mark at least five years

prior to filing the declaration. (Notice of Reliance Document No. 29, Exhibit F page 5). The

Declaration was filed along with a Response to Office Action on August 18, 2017.

The next day, on August 19, 2017, the application was approved for publication4 and

registration issued on December 19, 2017 under Reg. No. 5,358,576 for the mark WINE ICE

CREAM & Design. (Notice of Reliance, Exhibit G, Docket No. 29, ESTTA 1059763).

E. Third Party Use of “WINE ICE CREAM”

2 In addition, the Examiner in the Office Action of December 6, 2007 refused registration of Ser. No. 77/267,372

WINE ICE CREAM based on a likelihood of confusion with Reg. No. 2,753,987 - MERCER and a possible likelihood of

confusion with Ser. No. 78/880,839 – MERCER. 3 On August 18, 2017, Respondent amended the application identification of goods to “ice cream combined with

wine” and disclaimed “ice cream” in response to the June 12, 2017 Priority Action. 4 See App. No. 87/369,190 Trademark Snap Shot Amendment & Mail Processing Stylesheet, Prosecution History.



Page 12 of 26

The record demonstrates substantial use of “wine ice cream” by wineries, online writers

in the food industry for blogs, digital magazine articles, and online recipes. Third party use

include Bainbridge Island Vineyards who suggested pouring delightful dessert wine over ice

cream in the late 1980’s (Exhibit I, page 4). In August 2005, BBC Goodfood magazine delivered

in the United Kingdom and worldwide, printed a recipe by Mary Cadogan entitled “Almost-

instant Sweet Wine Ice-Cream” (Exhibit I, pages 6-7). Harvest Ridge Winery published a wine

ice cream recipe on April 20, 2017 for “Wine Berry Ice Cream” and reader’s comments include

references to “wine ice cream” (Exhibit I, pages 8-9). Long Pier Ice Cream in New York

advertises its wine ice cream with a large banner on a brick wall (Exhibit I, page 10). Coravin

published several wine ice cream recipes in the Wine O’clock blog: DIY: Wine Ice-Cream by

Rayane Belhabri on August 23, 2016 (Exhibit I, pages 23-26). Internet blogger,

Mybigfathappylife, published an article and digital recipe for wine ice cream (Exhibit I, pages

60-77)

The legislatures in Louisiana and New York refer to wine ice cream when describing an

ice cream combined with wine. NOLA.com published an article entitled “Vote on ‘wine ice

cream’ bill again postponed” on April 10, 2014 about Louisiana state legislators postponing an

alcohol-infused ice cream for a second time on Thursday, April 10, 2014 (Exhibit I, pages 54 -

58). A screen shot of Louisiana House Bill 471 entitled “ALCOHOLIC BEVERAGES:

Authorizes the sale of wine ice cream in the state of Louisiana” should use of the phrase wine ice

cream (Exhibits O and P). Likewise, general use of the phrase wine ice cream is shown in New

York State Assembly Bill No. A10132 Text and Memorandum from the 2008 legislative session

(Exhibit Q) to the point that due to the amount of alcohol in the ice cream, a sign must be posted

that the area contains wine ice cream. New York Senate Bill S7168 widely uses the phrase wine

ice cream to describe ice cream combined with wine. (Exhibit R).

V. STANDING

Petitioner has used its mark “WINECREAM” in U. S. commerce in connection with

“wine infused ice cream” since at least as early as July 2014. As a result of this use, consumers

within the United States have come to associate the “WINECREAM” mark with Petitioner. As



Page 13 of 26

such, Petitioner has exercised its common law rights to its mark continuously in connection with

its goods.

Petitioner filed Application Serial No. 87/572,627 (the “Application”) for its

“WINECREAM” mark in connection with “wine infused ice cream” on August 17, 2017. The

Application is pending and is a part of the record (Document #29 – Notice of Reliance,

ESTTA1059763), Exhibit A). The PTO Examiner issued an office action on November 21, 2017

citing Respondent’s Registration as a bar to registration based on a likelihood of confusion,

thereby interfering with Petitioner’s Application and causing harm to Petitioner. (Id. at Exhibit

B). Consequently, Petitioner has a real interest in seeking cancellation of the Registration and

thus has standing to bring this action.

VI. ARGUMENT

A. SUMMARY OF THE ARUMENT

Respondent did not have acquired distinctiveness over the generic portion of its mark

when filing a 2(f) Declaration and thus the registration should be cancelled. Respondent claimed

acquired distinctiveness over the common descriptive name of a class of goods. Wine ice cream

is the common descriptive name of ice cream combined with wine. Crossroad and many others,

including Respondent’s witnesses have used the phrase wine ice cream to describe “ice cream

combined with wine” or interchangeably “wine infused ice cream.” Mercer’s claim of acquired

distinctiveness as the exclusive user of wine ice cream is incorrect at best, and fraudulent, at

worse.

Respondent has not presented any evidence of enforcement of its alleged exclusive rights.

Nor has Respondent presented any direct proof of end consumer trademark recognition.

Respondent fails to show that the primary significance of the phrase “wine ice cream” in the

minds of the consuming public is to identify the producer and not merely the product. The

evidence demonstrates a substantial public understanding that the phrase “wine ice cream” refers

to the genus of goods in question. Consequently, the mark WINE ICE CREAM should be

cancelled as this generic phrase is unregistrable for ice cream combined with wine.



Page 14 of 26

B. The Genericness Standard

1. The Two-prong Genericness Test Applies to Compound

Marks and Respondent’s mark

The standard for determining whether a word mark is generic is provided in H. Marvin

Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 783 F.2d 989 (Fed. Cir. 1986). The U. S. Court of

Appeals for the Federal Circuit reversed the U.S. Patent and Trademark Office Trademark Trial

and Appeal Board’s (“TTAB) decision granting the petition to cancel the registration for the

mark FIRE CHIEF in connection with a “magazine directed to the field of firefighting.” Id

The court determined that a two-step genericness test is applicable to a single word mark

or a compound word mark because the test is for the mark in its entirety. Respondent’s mark

consists of generic terms: “wine,” and “ice cream” to create a compound word mark, WINE ICE

CREAM. The genericness standard from Ginn should be applied here to determine whether

WINE ICE CREAM is generic for wine combined with ice cream or in the alternative wine

infused ice cream and thus incapable of acquired distinctiveness. A generic term cannot function

as an indicator of the source of a product, and thus as a mark, because the relevant public

understands the term primarily as the common name for the product. In re Dial-A-Mattress

Operating Corp., 240 F.3d 1341, 1344 (Fed. Cir. 2001).

The two-step inquiry in Ginn: (1) what is the genus of goods or services at issue? and (2)

is the mark understood by the relevant public primarily to refer to that genus? H. Marvin Ginn

Corp. v. Int’l Ass’n of First Chiefs, Inc., 783 F.2d 989 at 900. Applying the two-prong

genericness test, with an explanation of Bayer Co. v. United Drug Co., 272 F. 505, (S.D.N.Y.

1921), in which the court held the term ASPIRIN to be generic, the issue in Ginn, and the classic

issue in all genericness cases, is “whether members of the relevant public primarily use or

understand the term sought to be protected to refer to the genus of goods or services in question.”

Ginn, at 990.



Page 15 of 26

C. Respondent’s Mark – WINE ICE CREAM Does Not Overcome the Two-

Prong Genericness Test

1. Ice cream made with wine is the genus of goods for “Wine ice

cream.”

The genus of the goods at issue is ice cream. More specifically ice cream combined with

wine. “The name of a thing is the ultimate in descriptiveness.” Weiss Noodle Co. v. Golden

Cracknel and Specialty Co., 290 F.2d 845, 847; 129 U.S.P.Q. 411, 413 (CCPA 1961). A

common descriptive name is not a trademark and is not capable of distinguishing an applicant’s

goods. In re Helena Rubinstein, Inc., 410 F.2d 438, 161 USPQ 606 (CCPA 1969); Cummins

Engine Co., Inc. v. Continental Motors Corp., 359 F.2d 892, 149 USPQ 559 (CCPA 1966);

Clairol, Inc. v. Roux Distributing Co., Inc., 280 F.2d 863, 126 USPQ 397 (CCPA 1960).

In the December 6, 2007 Office Action against the registration of 77/267,372 for WINE

ICE CREAM & Design (Exhibit H, Document No. 32, ESTTA1059767, page 11), the examiner

went so far as to require a disclaimer of “wine ice cream” under Trademark Act Section 6, 15

U.S.C. §1056; TMEP §§1213 and 1213.03(a) on the basis that:

The wording [wine ice cream] is merely descriptive because

applicant’s goods are WINE ICE CREAM, that is wine-flavored ice

cream that actually contains wine as an ingredient. Emphasis added.

Merriam-Webster dictionary describes “wine” as:

a noun, often attributive:

1.a: the alcoholic fermented juice of fresh grapes used as a beverage

b.: wine or substitute used in Christian communion services



Page 16 of 26

2: the alcoholic usually fermented juice of a plant product (such as a fruit) used as

a beverage blackberry wine5

and the Merriam-Webster Dictionary definition of “ice cream” is “a frozen food

containing sweetened and flavored cream. 6” Respondent’s product, ice cream combined with

wine is literally wine ice cream because it is made of wine and ice cream.

2. Respondent’s mark is understood by the relevant public

primarily to refer to ice cream combined with wine.

The understanding of the relevant public may be evidenced by any “competent source,

such as purchaser testimony, consumer surveys, listings in dictionaries, trade journals,

newspapers, and other publications. In re Northland Aluminum Products, 777 F. 2d at 1559, 227

USPQ at 963; Dan Robbins & Associates, Inc. v. Questor Corp., 599 F.2d at 1014, 202 USPQ at

105; In re Thunderbird Products Corp., 406 F.2d 1389, 1390-91, 160 USPQ 730, 731-32 (CCPA

1969).

A term may be generic for a genus of goods or services if the relevant public understands

the term to refer to a key aspect of that genus. TMEP §1209.03(v.) A generic term lacks the

basic trademark function of “distinguishing the applicant’s goods from those of others” by

identifying the source of the goods. Retail Services, Inc. v. Freebies Publishing, 364 F.3d 535

(4th Cir. 2004) citing Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S.Ct. 2753,

120 L.Ed.2d 615 (1992). A generic mark merely employs “the common name of a product or

service,” Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 464 (4th Cir. 1996).

In the 2008 legislative session, the New York Assembly passed S7168 into law as

Chapter 189 permitting the manufacture and sale of ice cream made from wine in the state of

5 (Notice of Reliance, Exhibit E, page 9, ESSTA92068562.) “Wine.” Merriam-Webster.com Dictionary, Merriam-

Webster, https://www.merriam-webster.com/dictionary/wine. Accessed 3 Jun. 2020. 6 (Notice of Reliance, Exhibit E, page 4, ESSTA92068562.) “Ice Cream.” Merriam-Webster.com Dictionary, Merriam-

Webster, https://www.merriam-webster.com/dictionary/ice cream. Accessed 3 Jun. 2020.

https://www.merriam-webster.com/dictionary/wine

https://www.merriam-webster.com/dictionary/ice%20cream



Page 17 of 26

New York. Respondent’s witnesses, Jim Trezise of WineAmerica, a not-for-profit organization

that represents the interests of wineries and winemakers throughout the U.S. through lobbying

efforts, refers to the success of the passage of this bill in his testimony and testifies that the bill

has become known as “Mercer’s Law.” (Testimony for Defendant, Document No. 38,

Attachment No. 3, paragraph no. 10, ESTTA1072353). Roxaina Hurlburt also testified under

penalty of perjury as to the “regulatory hurdle” Mercer’s overcame by working with legislators

to pass the bill into law. (Testimony for Defendant, Document No. 38, Attachment No. 2,

paragraph no.17, ESTTA1072353).

As noted in Plaintiff’s evidence, the bill includes a strict requirement wherever wine ice

cream is sold:

(iii) the following advisory, on a sign or poster not less than eleven

inches by eight and one half inches in a format to be established or

approved by the commissioner, is displayed prominently at each

location where packages of wine ice cream are made available to the

public: ‘THIS AREA CONTAINS WINE ICE CREAM’

Bold Emphasis added (Notice of Reliance, Document No. 55, Exhibit R page 2).

The drafters of the bill used the generic phrase “wine ice cream” throughout the bill to

refer to any ice cream made with wine. New York law requires the prominent display at each

location where wine ice cream is sold to the public in words that the public will understand, thus

the words THIS AREA CONTAINS WINE ICE CREAM are the required words to notify the

public that ice cream combined with wine (wine ice cream) is either manufactured or sold in the

proximity.

Several of Respondent’s own witnesses used the generic terms “wine ice cream” to

describe their product.7 Dalton Givens, Chief Operating Officer for Respondent, Quality Dairy

7 See Respondent’s Declaration of Ms. Ruth Mignerey , Testimony for Defendant, Document No. 38, Mignerey

Declaration, page 2, ESTTA 1072353, page 2, paragraph 11 “I wanted in on the concept and the effort before I had

even tried the wine ice cream…,”



Page 18 of 26

Farms, Inc. d/b/a Mercer’s Dairy Corporation, since 2013 and Chief Operating officer for

Mercer’s, testified that “[o]ur consumers don’t just think of wine-infused ice cream when they

hear the phrase Wine Ice Cream; they associate those words with our product specifically and

exclusively.” (Testimony for Defendant, Document No. 38, Attachment No. 1, page 4,

paragraph 13, ESTTA1072353.) Mr. Givens goes on to say that sometime prior to 2007, “we

[Ruth Mignerey and Dalton Givens] saw some blogs and articles discussing home recipes”

(Givens Declaration, paragraph 8 page 2, ESTTA 1072353). He describes the uniqueness and

difficulties of developing the product, but he fails to demonstrate that the MARK is unique as a

trademark such that it is a source identifier. The Board must look at evidence that shows that in

the minds of the public, the primary significance of the mark is to identify the source of the

product, rather than the product itself. In re Louisiana Fish Fry Products v. Triumph Learning

LLC, 668 F.3d 1356 101 USPQ 2d 1713, 1729 (Fed. Cir. 2012).

The owner and former owner of Mercer’s refer to wine ice cream as a product and not a

trademark. Ms. Roxaina Hurlburt, self-proclaimed “inventor of wine ice cream,” is referring to

the product and not the mark in her testimony. (Testimony for Defendant, Document No. 38,

Attachment No. 13, page 5, paragraph 20, ESTTA1072353). Ms. Mignerey even states in her

Declaration, “[w]ine ice cream remains a unique product on the market and is the only product of

its kind that enjoys a nationwide market presence, exposure and popularity. (Testimony for

Defendant, Document No. 38, Attachment No. 3, page 1, paragraph 2, ESTTA1072353).

The phrase wine ice cream is such a common description, many of Respondent’s

witnesses refer to wine ice cream as a product at some point in their testimonies. In his

testimony, Douglas Pinckney, a marketing executive, states “though the phrase “wine ice cream”

was descriptive of Mercer’s product, the fact that there simply was nothing like it in the market

presented a relatively unique opportunity to create consumer identification and association

between Mercer’s and the product itself. (Testimony for Defendant, Document No. 38,

Attachment No. 4, page 2, paragraph 7, ESTTA1072353).



Page 19 of 26

D. Due to the generic nature of WINE ICE CREAM for “ice cream combined with

wine, the mark is incapable of acquiring Secondary Meaning.

A term may have acquired secondary meaning “when in the minds of the public, the

primary significance of a mark or dress is to identify the source of the produce rather than the

product itself,” Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., 280 F.3d 619 (6th

Cir. 2002), quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 944, 851 n. 11, 102 S. Ct.

2182, 72 L.Ed. 2d 606 (1982).

Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a), requires a

disclaimer of an “unregistrable component of a mark,” such as the name of the goods or

services. The PTO examiner in Ser. No. 77/267,372 required Respondent to disclaim “wine ice

cream” because:

The applicant’s goods are WINE ICE CREAM, that is wine-flavored

ice cream that actually contains wine as an ingredient.

No response to the office action was filed and the application went abandoned on June 7,

2008. Approximately nine years after Ser. No. 77/267,372 was abandoned, Respondent filed

another application containing the unregistrable part of its mark Wine Ice Cream. The examiner

issued a Priority Action to which Respondent filed a 2(f) claim of acquired distinctiveness as to

the generic portion of the mark, that is “wine ice cream.” Respondent claimed to have acquired

distinctiveness through substantial and exclusive use of the terms “wine ice cream.”

A Declaration under Section 2(f) of acquired distinctiveness means that the Registrant

admittedly has a descriptive mark, thus the need for an acquired distinctiveness of the descriptive

portion. “… an applicant seeks registration based on acquired distinctiveness under Section 2(f),

the statute accepts a lack of [inherent] distinctiveness as an established fact.” Yamaha Int’l Corp.

v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ 2d 1001, 1005 (Fed. Cir. 1988); accord Royal

Crown Co. v. CocaCola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1044-45 (Fed. Cir. 2018).



Page 20 of 26

If the disclaimed matter becomes distinctive of the goods or services, the registrant’s

rights are not prejudiced in another registration when the disclaimed matter has become

distinctive of his or her goods or services. TMEP §1213(b). Even a mark that is merely

descriptive, but is not the common name of the goods, can be registered if has acquired

distinctiveness. In re Seats, Inc., 757 F.2d 274, 225 USPQ 364 (Fed. Cir. 1985). A generic

mark, on the other hand, is incapable of becoming a source identifier. Abercrombie & Fitch Co.

v. Hunting World, Inc., 537 F. 2d 4, Court of Appeals, (2nd Circuit 1976). Here, WINE ICE

CREAM is the common name for ice cream combined with wine as evidenced by the third party

use of wine ice cream as a product and not a source identifier.

E. Mercer’s Does not have Acquired Distinctiveness for Wine Ice Cream

1. Substantial Sales Do Not Evidence Acquired Distinctiveness of

a Generic Mark

Section 2(e)(1) of the Lanham Act (15 U.S.C. §1052(e)(1)) precludes registration of a

designation if it consists of a mark that, “when applied to the goods of the applicant, is merely

descriptive of them.” A descriptive term that has become distinctive of an applicant’s goods may

be registered under §2(f) of the Lanham Act. However, the Act provides for the cancellation of a

registered mark if at any time it “becomes the common descriptive name of an article or

substance” §14(c). Some merely descriptive marks may be registered with adequate proof of

acquired secondary meaning, but proof of secondary meaning cannot transform a generic term

into a subject for trademark. Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F. 2d 4,

Court of Appeals, (2nd Circuit 1976). With respect to the extent to which generic marks are

unprotectable, Judge Friendly clarified that:

No matter how much money and effort the user of a generic term has poured

into promoting the sale of its merchandise and what success it has achieved



Page 21 of 26

in securing public identification, it cannot deprive competing manufacturers

of the product of the right to call an article by its name.

Id, at 9.

Accordingly, substantial sales, or extensive money poured into advertisement will not

transform Respondent’s use of a common description into a trademark. Respondent submitted

over 300 exhibits including videos, substantial sales performance, marketing awards, and various

advertisements of its products yet failed to submit concrete evidence of consumer perception as

to the mark as a source identifier because the mark is generic and is the common description of

the goods.

F. Respondent should not be afforded a claim of exclusive rights to terms that others

in the industry need to describe their goods or services in the marketplace.

An applicant may not claim exclusive rights to terms that others may need to use to

describe their goods and/or services in the marketplace. See Dena Corp. v. Belvedere Int’l, Inc.,

950 F.2d 1555, 1560, 21 USPQ 2d 1047, 1051 (Fed.Cir. 1991); In re Aug. Storck KG., 218

USPQ 823, 825 (TTAB 1983). Respondent’s goods contain wine and ice cream as primary

ingredients. Ms. Roxaina Hurlburt, testified for Respondent that “integrating wine directly into

an ice cream product, which obviously must be frozen and remain stable throughout

manufacturing, distribution and various retail and point-of-sale conditions was an enormous

challenge.” See Hurlburt Declaration, page 3, paragraph 10, ESTTA1072353.

There are many uses of wine ice cream in the marketplace by third party, despite

Respondent’s claim of exclusivity. It is no secret that many people recommend pairing wine

with desserts. None of the submitted third party use is for the generic phrase wine ice cream to

identify their trademarks, of course.

For instance, MISSOURI WINES is the trademark, and they provide on their blog recipes

and have entitled the article dated July 7, 2015 as “Wine + Ice Cream = A Real Sweet Treat.”



Page 22 of 26

(Plaintiff Testimony, Document #31, Exhibit I, page 2, ESTTA1059771). The Puget Sound

blog post “Dessert wine and ice cream, a grown up treat” goes into Joann Bentryn’s suggestion

of pouring wine over ice cream as far back as the 1980’s. Puget Sound and Bainbridge Island

Vineyards and Winery are wineries and write blogs to engage customers. (Plaintiff Testimony,

Document #31, Exhibit I, page 4, ESTTA1059771). Harvest Ridge Winery published a wine ice

cream recipe on April 20, 2017 for “Wine Berry Ice Cream” and reader’s comments include

references to “wine flavored ice cream” (Exhibit I, pages 8-9). Long Pier Ice Cream in New

York advertises that it sells wine ice cream (not Mercer’s) with a large banner on a brick wall

(Exhibit I, page 10). Coravin Wine preserver published several wine ice cream recipes in the

Wine O’clock blog: DIY: Wine Ice-Cream by Rayane Belhabri on August 23, 2016 (Exhibit I,

pages 23-26). Internet blogger, Mybigfathappylife, published an article and digital recipe for

wine ice cream (Exhibit I, pages 60-77).

VII. Fraud Standard

In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009) provides that fraud occurs when an

applicant knowingly makes false, material representations of a fact in connection with its

application with the intent to deceive the PTO. Direct evidence of deceptive intent to defraud is

not required to show fraud; it can be inferred from the facts and circumstances. Nationstar

Mortgage LLC v. Mujahid Ahmad, 112 USPQ 2d 1361, 1374 (TTAB 2014).

A. The Exclusivity Claim in Mercer’s Office Action Response and Acquired

Distinctiveness Declaration was Fraudulent

Ruth Mignerey declared in a 2(f) Declaration that “wine ice cream” has become

distinctive of the goods/services through the applicant’s substantially exclusive and continuous

use of the mark in commerce that the U.S. Congress may lawfully regulate for at least the five

years immediately before the date of this statement signed on August 9, 2017. Over the span of

ten years, Respondent filed two TEAS Plus applications for marks containing the descriptive

terms wine ice cream for “ice cream.” Respondent was aware that the phrase wine ice cream



Page 23 of 26

describes the common name of the product. The examiner had advised of such in Respondent’s

first application – Ser. No. 77/267,372 for WINE ICE CREAM. The PTO examiner in Ser. No.

77/267,372 required Respondent to disclaim “wine ice cream” because:

The applicant’s goods are WINE ICE CREAM, that is wine-flavored

ice cream that actually contains wine as an ingredient.

Respondent was given the option in a Priority Action in Ser. No. 87/369,190 to enter a

“disclaimer of generic wording under Section 2(f).” Respondent knowingly and fraudulently

submitted a 2(f) acquired distinctiveness Declaration without any evidence except the

Declaration.

Respondent knew of the third party use because, if for no other reason, the New York

State Legislature had passed a bill, which Respondent admits to fighting to have passed in 2008,

that anyone selling or manufacturing wine ice cream must post a prominent display that reads:

THIS AREA CONTAINS WINE ICE CREAM. Thus, Respondent knew that since 2008, any

one of its distributors, manufacturers, or anyone else selling wine ice cream must post that

display.

The fact that the sign must be posted by law, to include the generic phrase “wine ice

cream” to indicate the sale or manufacture of ice cream containing wine indicates that Mercer’s

does not have the exclusive use of the phrase, wine ice cream.

VIII. CONCLUSION

Mercer’s should not have been afforded a registration for the generic phrase Wine Ice

Cream for use in connection with “ice cream combined with wine.” Generic terms should not be

given trademark protection to the exclusion of others in the industry. Respondent thinly secured

registration through a bogus 2(f) Declaration based on nothing other than Respondent’s word.

Others in the food industry should be allowed to use the phrase “wine ice cream” without threat

of interference from Mercer’s. New York law demands that anyone manufacturing or selling an



Page 24 of 26

ice cream combined with 5% wine, but post a prominent sign using the specific phrase “wine ice

cream.”

Petitioner respectfully requests that the Board cancels Registration No. 5,358,576 in its

entirety on the ground that (1) WINE ICE CREAM is generic; (2) in the alternative, cancel

Registration No. 5,358,576 in its entirety on the ground that Wine Ice Cream has not acquired

distinctiveness; and (3) cancel Reg. No. 5,358,576 in its entirety on the ground it was procured

by fraud.

CROSSROAD COMPANY, LLC

Date: November 16, 2020 By:__/j. sandy bartlett/

J. Sandy Bartlett, Esq.

Law Office of Sandy Bartlett, LLC

P.O. Box 546

Laurel, MD 20725

Email address: [email protected]

301-957-3908

Attorney for Petitioner

mailto:[email protected]



Page 25 of 26

IX. Certificate of Service

I hereby certify that a true and complete copy of the foregoing PETITIONER’S TRIAL BRIEF was served on

James P. Youngs, Esq. by forwarding said copy on November 16, 2020, via email to:

James P. Young, Esq.

[email protected]

1500 AXA Tower I

100 Madison Street

Syracruse, NY 23202

__/j. sandy bartlett/

Signature

mailto:[email protected]

estta tracking number: estta1095807 11/16/2020

Documents