Brown-Forman Corporation

Trademark Trial and Appeal Board

Nov 14, 2006

No. 78638129 (T.T.A.B. Nov. 14, 2006)

Mailed:
Nov. 14, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Brown-Forman Corporation
________

Serial No. 78638129
_______

Christopher C. Larkin of Seyfarth Shaw LLP for Brown-Forman
Corporation.

Margery A. Tierney, Trademark Examining Attorney, Law
Office 111 (Craig D. Taylor, Managing Attorney).
_______

Before Seeherman, Grendel and Drost, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark GALA ROUGE (in standard character form) for
goods identified in the application as “alcoholic
beverages, namely, wines.”1 The application record includes

1 Serial No. 78638129, filed May 26, 2005. The application was
filed on the basis of intent-to-use under Trademark Act Section
1(b), 15 U.S.C. §1051(b). Applicant subsequently filed an
Amendment to Allege Use, in which it alleged September 6, 2005 as
the date of first use of the mark anywhere and the date of first
use of the mark in commerce.
THIS OPINION IS CITABLE
AS PRECEDENT OF THE
TTAB
Ser. No. 78638129
2
the following translation statement, derived from
applicant’s June 21, 2006 submission: “The word ‘rouge’
means ‘red’ in French. The word ‘gala’ means ‘a festive
celebration, especially a public entertainment marking a
special occasion,’ and has its etymology in Italian, from
Middle French.”2
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicant’s mark
absent submission of a disclaimer of ROUGE apart from the
mark as shown. See Trademark Act Section 6, 15 U.S.C.
§1056. The Trademark Examining Attorney required a
disclaimer because of her finding that ROUGE (i.e., “red”)
is merely descriptive of the color or type of wine to which

2 Although it is not clear from the translation information
submitted by applicant, we note that ‘gala’ is a French word as
well as an English word, and that it means the same thing in both
languages. See Cassell’s New French Dictionary (1951) at 363.
The Board may take judicial notice of dictionary definitions.
See University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983). We thus have treated GALA as a French word,
despite applicant’s suggestions that it is not a French word.
See, e.g., applicant’s comments in its April 21, 2006 response:
“To Applicant’s knowledge, the word ‘gala’ does not have a
specific meaning in any foreign language...”; and “These elements
give ‘GALA ROUGE’ a distinctively French and festive feel even if
the word ‘gala’ does not have any meaning in French.” However,
whether GALA is treated as a French word or an English word in
the mark GALA ROUGE, the final result on the disclaimer issue in
this case is the same. Indeed, if we were to treat GALA as an
English word, and assume that the public would view the mark as a
combination of a French word and an English word, this particular
composite is arguably even less unitary than the mark is if
regarded as an all-French composite.

Ser. No. 78638129
3
applicant applies its mark. The appeal is fully briefed.
After careful consideration of the evidence of record and
the arguments of counsel, we affirm the requirement for a
disclaimer of ROUGE.
The evidence of record includes the following.
We take judicial notice that “gala” is a French word that,
translated into English, means “gala.” Cassell’s New
French Dictionary (1951) at 363. According to the online
English dictionary definition made of record by applicant,
“gala,” as a noun, is defined as “a festive celebration;
especially : a public entertainment marking a special
occasion.” (Merriam-Webster OnLine Dictionary). We take
judicial notice that another English dictionary defines
“gala” as a noun meaning “a festive occasion, especially a
lavish social event or entertainment”; defines it as an
adjective meaning “marked by lavish or festive celebration”
or “characterized by sumptuous social pleasure.” (The
American Heritage Dictionary of the English Language (4th
ed. 2000).
“Rouge” is French for “red,” as is shown by the entry
from WordReference.com Dictionnaire Francais-Anglais
submitted by applicant, and by the Babel Fish Translation
entry submitted by the Trademark Examining Attorney. In
its response to the first Office action, applicant stated
Ser. No. 78638129
4
that “[a]pplicant agrees with the Examining Attorney that
the word ‘rouge’ principally means ‘red’ in French.”
Also of record are TARR printouts of four currently
extant third-party Principal Register registrations,
submitted by applicant with its response to the first
Office action. As pointed out by applicant, none of these
registrations includes a disclaimer of ROUGE. They are:

Reg. No. 2611801, of the mark LE MULET ROUGE (in
standard character form) for “table wine”; the
registration includes the following translation
statement: “The English translation of the mark
is ‘THE RED MULE’”;

Reg. No. 2291835, of the mark POINT ROUGE (in
standard character form) for “white wine”;
translation statement: “The English translation
of ‘POINT ROUGE’ is ‘red dot’”;

Reg. No. 2077467, of the mark TERRE ROUGE (in
standard character form) for “wine”; translation
statement: “The English translation of ‘TERRE
ROUGE’ is ‘red earth’”; and

Reg. No. 0177419, of the mark CORDON ROUGE and
design, for “champagne wine.” This registration
has no translation statement.

Applicant also submitted TARR printouts of four third-party
registrations which are cancelled or expired.3 These are:

3 Expired and/or cancelled registrations generally are
evidence only of the fact that the registrations issued. But
the Trademark Examining Attorney has presented argument in her
brief with respect to the substance of these expired and/or
cancelled registrations, and we therefore shall consider them
for whatever probative value they may have.
Ser. No. 78638129
5
Reg. No. 2087498, of the mark BLANC DES COLLINES
ROUGES (in standard character form; BLANC
disclaimed), for “wine”; translation statement:
The English translation of ‘BLANC DES COLLINES
ROUGES’ is ‘white wine from the red hills’”;

Reg. No. 1290401, of the mark MONT ROUGE
COLLECTION (in standard character form;
COLLECTION disclaimed), for “wine”; translation
statement: “The French word ‘Mont’ may be
translated into English as ‘mount’ or ‘mountain
and the French word ‘Rouge’ may be translated
into English as ‘red’ or ‘rouge (cosmetic)’”;

Reg. No. 1077102, of the mark LA FLEUR ROUGE (in
standard character form) for “wine”; translation
statement: “The English translation of the words
‘LA FLEUR ROUGE’ is ‘THE RED FLOWER’”; and

Reg. No. 0721111, of the mark PRINCE ROUGE (in
standard character form) for “wine”; translation
statement: “‘PRINCE ROUGE’ means ‘RED PRINCE’”.

Also of record are printouts from applicant’s website,
introduced by applicant via the declaration of applicant’s
officer Lee Tatum. Of particular relevance is a page which
encourages customers to “Throw a Gala Rouge Big Red Bash –
Think red! Red napkins, red rose petals, red candles...the
possibilities are endless. Ask your guests to wear
something red...you can even give a prize for the ‘most
out-red-geous’ outfit. Don’t forget to serve your favorite
Gala Rouge wine. Then party red!”
Finally, applicant has requested (in its appeal brief)
that we take judicial notice of the “generally-known facts”
that “Baton Rouge” is familiar to Americans as the name of
Ser. No. 78638129
6
the capital city of Louisiana and the home of Louisiana
State University, and that the “Moulin Rouge” is a world-
famous Parisian nightclub, whose name also served as the
title of the film Moulin Rouge, which starred Nicole Kidman
and was nominated for an Academy Award for Best Picture.
Our review of a standard reference work reveals that “Baton
Rouge” is “the capital of Louisiana.” (The American
Heritage Dictionary of the English Language (4th ed. 2000)).
We therefore take judicial notice of that fact. However,
we do not deem applicant’s assertions regarding the term
MOULIN ROUGE, and the familiarity of U.S. purchasers with
that term, to be matters of which judicial notice is
appropriate. We therefore deny applicant’s request for
judicial notice of such facts.
The Trademark Examining Attorney may require the
applicant to disclaim an unregistrable component of a mark
otherwise registrable. See Trademark Act Section 6, 15
U.S.C. §1056. Merely descriptive terms are unregistrable,
see Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1),
and therefore are subject to disclaimer if the mark is
otherwise registrable. Failure to comply with a disclaimer
requirement is grounds for refusal of registration. See In
re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed.
Cir. 1987); In re Richardson Ink Co., 511 F.2d 559, 185
Ser. No. 78638129
7
USPQ 46 (CCPA 1975); In re Box Solutions Corp., 79 USPQ2d
1953 (TTAB 2006); In re National Presto Industries, Inc.,
197 USPQ 188 (TTAB 1977); and In re Pendleton Tool
Industries, Inc., 157 USPQ 114 (TTAB 1986).
The issue in this case is whether applicant must
disclaim the word ROUGE apart from the mark as shown (GALA
ROUGE). Applicant does not dispute that ROUGE, by itself,
would be understood by purchasers in this country as French
for “red,” and that it thus is merely descriptive of
applicant’s “wines,” which necessarily and legally
encompass red wines. In its brief, applicant states:
“Applicant acknowledged in its response [to the first
Office action] that ‘rouge’ could be descriptive of wine
depending upon its manner of use in a mark, and thus
conceded that the Examining Attorney had established a
prima facie case for a disclaimer.” (Brief at 3.) But
applicant goes on to argue that:

Applicant rebutted this prima facie case,
however, through the submission of dictionary
definitions of ‘gala’ and ‘rouge,’ third-party
registrations of composite marks for wine that
contained the word ‘ROUGE’ but were issued
without a disclaimer, and evidence of Applicant’s
use of its mark as a unitary mark. On the basis
of this evidence, the Examining Attorney should
have concluded that the public would perceive
‘GALA ROUGE’ as a unitary mark meaning ‘red
party’ or ‘red celebration,’ and not as the brand
Ser. No. 78638129
8
name ‘GALA,’ combined with a mere descriptor of
the type of red wine sold by applicant.

(Brief at 4.)
Thus, the real dispute in this case is whether GALA
ROUGE is a unitary mark, such that the admittedly
descriptive word ROUGE need not be disclaimed. Stated
differently, would ROUGE be perceived by purchasers merely
as a descriptor of a characteristic of applicant’s wine,
i.e., its color or type, or would purchasers perceive ROUGE
in applicant’s mark as a modifier of the word GALA,
creating the unitary expression GALA ROUGE which would be
understood as “red party” or “red celebration”?
A mark is unitary when “its elements are inseparable,”
i.e., they

combine to show that the mark has a distinct
meaning of its own independent of the meaning of
its constituent elements. In other words, a
unitary mark must create a single and distinct
commercial impression. This test for unitariness
requires the Board to determine “how the average
purchaser would encounter the mark under normal
marketing of such goods and also ... what the
reaction of the average purchaser would be to
this display of the mark.”

Dena Corp. v. Belvedere International Inc., 950 F.2d 1555,
1561, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991), quoting from
In re Magic Muffler Serv., 184 USPQ 1225, 126 (TTAB 1974).
Ser. No. 78638129
9
We have carefully considered applicant’s arguments,
but we are not persuaded that GALA ROUGE would be perceived
by purchasers as a unitary expression such that ROUGE loses
its merely descriptive significance as applied to the
goods, which include red wines.
BATON ROUGE, the prominent example relied on by
applicant, is distinguishable from GALA ROUGE because, as
applicant has noted, it has a pre-existing, well-recognized
unitary significance (as the name of a city).4 GALA ROUGE,
by contrast, has no pre-existing and well-recognized
meaning or significance, but exists and has meaning only as
part of applicant’s current marketing campaign as reflected
on its website. That marketing campaign or motif is not
part of the mark sought to be registered, and it could be
changed or abandoned at any time, leaving simply the words
of the mark, GALA ROUGE. Cf. In re The Place Inc., 76
USPQ2d 1467, 1471-72 (TTAB 2005)(trade dress and other
marketing indicia which are not part of the mark sought to
be registered (THE GREATEST BAR) cannot be considered in
determining whether mark is a double entendre).

4 In this respect, BATON ROUGE, with its pre-existing and well-
known significance, is similar to the BLACK MAGIC example of a
unitary mark given in TMEP §1213.05 (4th ed. 2005). “Red”
equivalents of such pre-existing and well-known phrases might be
RED HERRING and RED TAPE.
Ser. No. 78638129
10
Similarly, the French expressions which comprise the
third-party registered marks (for wine) are distinguishable
from applicant’s GALA ROUGE mark because, even if these
expressions have no pre-existing and well-known meaning
(like BATON ROUGE, or BLACK MAGIC), there is a readily-
perceived and inherently unitary significance to, e.g., LE
MULET ROUGE (the red mule), LA FLEUR ROUGE (the red
flower), or TERRE ROUGE (red earth).5 The word ROUGE in
such expressions clearly refers to and modifies the
preceding noun, not the wine itself, because those nouns
denote things that are or could be colored “red.” A
“gala,” by contrast, is not a thing which would or could
normally be described as being “red.” “Red gala” has no
obvious, immediate and inherent unitary significance which
would cause purchasers to view ROUGE as modifying GALA,

5 With respect to these third-party registrations, we note as
well that Registration No. 2291835, of the mark POINT ROUGE, is
for goods identified as “white wine,” and that Registration No.
0177419, of the mark CORDON ROUGE, is for goods identified as
“champagne wine.” It is logical to suppose that no disclaimer of
ROUGE was required in these two registrations because the goods
identified therein clearly do not include red wine. These two
registrations, and their treatment of the word ROUGE, therefore
are not partciularly relevant to our analysis in the present
case, in which the identification of goods (“alcoholic beverages,
namely, wines”) legally encompasses red wine. In any event, even
if the other third-party registered marks of record, in which no
disclaimer of ROUGE appears, were not readily distinguishable
from applicant’s mark for the reasons discussed herein, it is
settled that we are not bound by the decisions made by examining
attorneys in previous cases. See In re Nett Designs Inc., 236
F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001).

Ser. No. 78638129
11
rather than as describing the wine. Outside of applicant’s
marketing campaign, there is no such thing as a “red bash”
or the concept of “partying red,” and purchasers therefore
are unlikely to accord that meaning to GALA ROUGE. The
mere grammatical coherence of “red gala” does not suffice
to make GALA ROUGE a unitary expression in the eyes of
purchasers.
For these reasons, we find that purchasers will not
view GALA ROUGE as a unitary expression. We instead find
that purchasers encountering GALA ROUGE, as applied to
wine, will view GALA as the brand name, and ROUGE as the
color or type of wine.6 Applicant’s combining of GALA with
ROUGE does not suffice to eliminate or negate the merely
descriptive significance of ROUGE as applied to wine, and
ROUGE therefore must be disclaimed apart from the mark as
shown.

Decision: The refusal to register absent a disclaimer
of ROUGE is affirmed. However, this decision will be set
aside if, within thirty days of the mailing date of this
order, applicant submits to the Board a proper disclaimer

6 The fact that applicant may also use GALA ROUGE in connection
with white wine does not avoid the descriptiveness of ROUGE when
the mark is used for red wine; red wine is encompassed by
applicant’s identification of goods.

Ser. No. 78638129
12
of ROUGE.7 See Trademark Rule 2.142(g), 37 U.S.C.
§2.142(g); TBMP §1218.

7 A proper disclaimer would read: “No claim is made to the
exclusive right to use ROUGE apart from the mark as shown.”