IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
TRADEMARK EXAMINING DIVISION

In the matter of

Serial No. : 77/659,694

Mark : Design Only

International Class : 33

Applicant : Bronco Wine Company

Filed : January 29, 2009

Trademark Examining : Morgan Laura Wynne, Esq.
Attorney

Law Of?ce : 117

Commissioner for Trademarks
PO. Box 1451
Alexandria, Virginia 22313-1451

RESPONSE TO OFFICE ACTION

This is in response to the Of?ce Action mailed April 22, 2009 (Of?ce Action No. 1).

DISCUSSION

I. APPLICANT’S MARK IS NOT MERELY ORNAMENTAL

A. Background

The Trademark Examining Attorney indicated that registration of the

subject mark may be refused under Sections 1, 2, and 45 of the Trademark Act, 15 U.S.C.

§§ 1051-1052, 1127, because the applied for mark is allegedly merely ornamental.

The question of whether an applied for mark is merely ornamental must be

resolved on a case by case basis, taking into consideration the likely impression of the

mark on the ordinary purchaser of the product to which it is applied. Application ofSwift
& C0,, 42 C.C.P.A. 1048, 1052, 223 F.2d 950 (C.C.P.A. 1955). A mark that renders the

label or packaging to which it applies more ornamental than it would be absent such mark

is not always merely ornamental. Id. A mark that may have some decorative qualities is

not always merely ornamental under Sections 1, 2, and 45 of the Lanham Act, and

therefore, the determination of whether a mark is merely ornamental can only be made

after determining the primary signi?cance of the mark to the purchasing public after

taking into consideration factors such as whether the mark contains a design that is a

common basic shape or design; whether the design is a mere re?nement of a well—known

design for such goods viewed by consumers simply as a decoration for such goods; and

whether the design contained in the mark is capable of creating a distinct commercial

impression. Seabrook Foods, Inc. v. Bar-Well Foods, Ltd, 568 F.2d 1342, 1344, 196

U.S.P.Q. 289, 291 (C.C.P.A. 1977). The only time a design may be considered merely

ornamental is when the signi?cance of the design when applied to a product is perceived

by a consumer to be pleasing ornamentation and ornamentation only. McCarthy on

Trademarks and Unfair Competition Section 7.24 (4th ed. 2006) (emphasis added).

Applicant respectfully submits, as set forth in greater detail below, that the

factors to be considered in determining the signi?cance of a mark to the purchasing

public weigh against a ?nding that Applicant’s mark is merely ornamental. In particular,

Applicant’s mark is not merely ornamental because: (1) the design in Applicant’s mark is

not a common basic shape or design; (2) the design is not a mere re?nement of a

commonly-adopted and well-known form of ornamentation for wine and is not viewed as

a decoration for wine; and (3) the design is capable of creating a distinct commercial

impression.
B. The Design is not a Common Basic Shape or Design

Applicant’s design consists of much more than common basic shapes such

as circles, ovals, squares, or triangles. Applicant’s design consists prominently at its

center, of two deer standing in water, surrounded by trees and mountains in the horizon.

In cases where the design at issue does not consist of common basic shapes and where it

is not obvious that the design is common, the Examining Attorney must submit evidence

to make a primafacie case that an applicant’s mark is not inherently distinctive. In re

Creative Beauty Innovations Inc, 56 U.S.P.Q.2d 1203, 1205-1206 (T.T.A.B. 2000); In re

Lenaerts, 2007 WI. 3336399 (T.T.A.B. 2007). The Examining Attorney has not met her

burden as she has not presented any evidence that Applicant’s design is not inherently

distinctive.

In Application ofSwift, the Court of Customs and Patent Appeals reversed

a decision of the Examiner—in—Chief of the USPTO refusing registration of an application

of a mark consisting of two horizontal bands of polka dots, which when showed on the

label serving as the specimen for the application, covered the lower third and upper part

of such label. The design in that application was comprised of the common geometric

shapes, rectangles and circles, but the court in that case held that the design was

“distinctive and [did] not retain its purely abstract signi?cance as a common and merely

ornamental design when applied in its particular form to the label of a can of household

cleaner.” 42 C.C.P.A. at 1053; See In re Corning Glass Works, 6. U.S.P.Q.2d 1032, 1033

(T.T.A.B. 1988)

In this case, unlike in Swift, Applicant‘s design is not comprised of

common basic shapes. Since Applicant’s design contains creative design elements that

consist of more than common basic shapes and is not obviously a common design,
Applicant respectfully submits that its design is not merely ornamental but is rather

inherently distinctive as applied to wine bottles, serves as a source indicator, and is

entitled to registration.

C. The Design is not a Well-Known Decoration for Wine

A second factor to be considered in making a determination of whether a

mark is merely ornamental is whether the design is a mere re?nement of a commonly-

adopted and well-known form of ornamentation for wine and is not viewed as a

decoration for wine. See Seabrook at 1344. For example, in Lenaerts, the TTAB found

that a design of multiple, partial ovals consisting of concentric bands of different shades

of color was not a mere re?nement of a commonly-adopted and well-known form of

ornamentation for drink cans. 2007 WL 3336399 at 2 (T.’l‘.A.B. 2007); See In re

Corning Glass Works at 1033. In Lenaerts, the Examining Attorney argued that the

design was a common form of ornamentation for drink cans because “[i]t is common

knowledge that cans for drinks are not blank and generally contain designs and colors

covering the entire can.” Id. The Examining Attorney, however, failed to introduce

evidence of other drink cans containing similar designs and was unable to support the

argument that any design covering the entire surface of a drink can is a well-known form

of ornamentation of such can. Id.

Similarly here, the design in Applicant’s mark is not a well—known or

commonly-adopted form of ornamentation for wine bottles, and the Examining Attorney

has not put forth any evidence proving such. Rather, numerous trademark registrations

have been issued for marks for wine consisting of designs without literal elements, as

evidenced in the chart below:
—m_ Goods/Services

Alcoholic beverages,
namely, wines
Goods/Services

Aperitif wines

See Declaration of Erica M. Fischer, Exhibit 1.

These registrations on the Principal Register of the USP’I‘O evidence that

such design marks are commonly chosen as marks that serve as indications of source for
wine, rather than as commonly-adopted forms of ornamentation for wine bottles.

Applicant’s mark, like the other marks above, is similarly entitled to registration and is

not merely ornamental.

D. The Design is Capable of Creating a Unique Commercial Impression

Designs that are adopted for the purpose of identifying and distinguishing

a product are not merely ornamental and are entitled to registration. Application ofSwi?

at 1052. In Application of Todd Co., Inc, the court explained that in the safety-paper

product industry, it had long been the practice for designs covering the entire surface of

the products to be used as indications of source for such products. 48 C.C.P.A. 1009,

1013, 290 F.2d 597 (C.C.P.A. 1961). Just as that is the industry standard for safety-paper

products, so too is it the industry standard for designs on wine labels to serve as

indications of source for wine.

Wine producers and manufacturers choose designs to place on the labels

of their bottles in order to allow consumers to recognize and remember the products they

produce — to serve as an indication of source. As articles such as those found on

abcnews. com and BNET explain, label design is the most important aspect of marketing

wine, and the design of such labels, including the images that appear on such labels are

crucial source indicators that are key to the success of a wine. See Fischer Declaration,

Exhibit 2. The fact that such designs are important and valuable to producers of wine in

order to indicate the source of the products is demonstrated by the numerous trademark

registrations for such designs, some of which are listed in the chart above.

In Swift, similar to the marks in the chart above, the applied for design did

not consist of words but consisted of only two horizontal bands of polka dots, which

covered the lower third and upper part of a label on a can of cleanser. See also In re
Lenaerts at 3 (the applicant’s concentric oval design covering the surface of a drinking

can when combined with a literal element would be capable of comprising two separate

distinctive elements). Similar to the mark at issue in Swift, Applicant’s mark does not

contain any words, and the location of Applicant’s mark is also similar to the location of

the band on the lower third of the cleanser label. By choosing as its mark a design that

does not contain any words, Applicant has chosen a design that is not merely ornamental

but instead has the ability to indicate the source of not only one type of wine but also to

be used in connection with different varietals and vintages of wine sold by Applicant in

order to indicate the source of a family of wines offered by Applicant.

Further, the court in Swift explained that designs on labels can draw

attention to a product and allow a consumer to focus on a product when the wording on

the package or label is too small for the consumer to read. The attention of consumers is

drawn to Applicant’s product since its discrete design is emblazoned across the front

center of the wine label. Similar to the purchase of household cleaner, the purchase of

wine is often casual in nature and is sometimes an impulse buy, especially by consumers

unsophisticated about different types of Wine. Applicant’s design, similar to the design in

Swift, can help draw attention to Applicant’s product and help differentiate it from wines

that are sold by other producers, in order to induce such casual and impulse purchasing.

Once a consumer has purchased Applicant’s wine for the ?rst time, it will later recognize

the wine in a store as the bottle with the deer design. Hence, Applicant’s design will be

recognized by the public as a primary means of identification for Applicant’s product.

Therefore, since Applicant‘s mark is capable of creating a distinct

commercial impression, its mark is not merely ornamental and should be entitled to

registration.
III. CONCLUSION

Applicant believes it has satisfactorily addressed all of the issues raised by

the Examining Attorney in the Of?ce Action and, therefore, respectfully requests that its

application be passed to publication.

Respectfully submitted,

ROPES & GRAY LLP

Dated: October 22, 2009 By: M m M
Emilia F. Carmella
Erica M. Fischer

1211 Avenue of the Americas
New York, New York 10036
Tel; (212) 596-9000
E-mail: [email protected]

Attorneys for Applicant,
Bronco Wine Company