estta tracking number: estta1095807 11/16/2020
TRANSCRIPT
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 )
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
Cancellation No. 92068562
Petitioner’s Trial Brief
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
Cancellation No. 92068562
Petitioner’s Trial Brief
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
Cancellation No. 92068562
Petitioner’s Trial Brief
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.
Cancellation No. 92068562
Petitioner’s Trial Brief
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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.”
Cancellation No. 92068562
Petitioner’s Trial Brief
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
Cancellation No. 92068562
Petitioner’s Trial Brief
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
Cancellation No. 92068562
Petitioner’s Trial Brief
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).
Cancellation No. 92068562
Petitioner’s Trial Brief
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.”
Cancellation No. 92068562
Petitioner’s Trial Brief
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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.
Cancellation No. 92068562
Petitioner’s Trial Brief
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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
Cancellation No. 92068562
Petitioner’s Trial Brief
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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.
Cancellation No. 92068562
Petitioner’s Trial Brief
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.
Cancellation No. 92068562
Petitioner’s Trial Brief
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
Cancellation No. 92068562
Petitioner’s Trial Brief
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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.
Cancellation No. 92068562
Petitioner’s Trial Brief
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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…,”
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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).
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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).
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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
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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.”
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(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
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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
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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
Cancellation No. 92068562
Petitioner’s Trial Brief
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.
1500 AXA Tower I
100 Madison Street
Syracruse, NY 23202
__/j. sandy bartlett/
Signature