Dolce Co. Invest Inc.

Trademark Trial and Appeal Board

Aug 23, 2018

No. 87247895 (T.T.A.B. Aug. 23, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: August 23, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Dolce Co. Invest Inc.
_____

Serial No. 87247895
_____

Laura M. Konkel of Michael Best & Friedrich LLP
for Dolce Co. Invest Inc.

Tarah Hardy Ludlow, Trademark Examining Attorney, Law Office 110,
Chris A.F. Pedersen, Managing Attorney.
_____

Before Zervas, Kuhlke and Ritchie,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Dolce Co. Invest Inc. (“Applicant”) seeks registration on the Principal Register of
the proposed standard character mark DOMAINES & CHATEAUX for “alcoholic
beverages except beers; wine” in International Class 33.1

1 Application Serial No. 87247895 was filed on November 25, 2016 under Sections 1(b) and
44(d) of the Trademark Act, 15 U.S.C. §§ 1051(b) and 1126(d), on the basis of Applicant’s
allegation of a bona fide intention to use the mark in commerce and its filing of an application
to register the mark in the United Kingdom. On September 20, 2017, Applicant elected not
to proceed under Section 44(e), 15 U.S.C. § 1126(d),
Serial No. 87247895
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The Examining Attorney refused registration on the ground that DOMAINES &
CHATEAUX is merely descriptive pursuant to Section 2(e)(1) of the Trademark Act,
15 U.S.C. § 1052(e)(1), because it “merely describes the goods as originating from
domaines and chateaux [and] … also describes a type of wine (e.g. domaine wines,
chateau wines).”2
After the Examining Attorney made the refusal final, Applicant appealed and
requested reconsideration. The Examining Attorney denied the request for
reconsideration and the appeal resumed. Both Applicant and the Examining Attorney
filed briefs. We affirm the refusal to register.
1. Mere Descriptiveness
A term is merely descriptive of goods or services within the meaning of
Section 2(e)(1) if it forthwith conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the goods or services. In re
Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir.
2012). See also In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831
(Fed. Cir. 2007); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
Whether a mark is merely descriptive is determined in relation to the goods or
services for which registration is sought and the context in which the term is used or
intended to be used, not in the abstract or on the basis of guesswork. In re Abcor Dev.
Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d
1222, 1224 (TTAB 2002). A term need not immediately convey an idea of each and

2 12 TTABVUE 4.
Serial No. 87247895
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every specific feature of the goods or services in order to be considered merely
descriptive; it is enough if it describes one significant attribute, function or property
of them. See In re Gyulay, 3 USPQ2d at 1010; In re H.U.D.D.L.E., 216 USPQ 358
(TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). The analysis requires
consideration of the possible significance that the mark would have to the average
purchaser of the goods or services in the relevant marketplace. In re Chamber of
Commerce, 102 USPQ2d at 1219; Bayer, 82 USPQ2d at 1831; Abcor, 200 USPQ at
218. The question is not whether someone presented only with the mark could guess
the goods or services listed in the identification. Rather, the question is whether
someone who knows what the goods or services are will understand the mark to
convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices,
Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012), quoting In re Tower
Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002).
When two or more merely descriptive terms are combined, the determination of
whether the composite mark also has a merely descriptive significance turns on the
question of whether the combination of terms evokes a non-descriptive commercial
impression. If each component retains its merely descriptive significance in relation
to the goods or services, the combination results in a composite that is itself merely
descriptive. Duopross Meditech Corp. v. Inviro Medical Devices, Ltd., 103 USPQ2d at
1753 (SNAP SIMPLY SAFER merely descriptive for “medical devices, namely,
cannulae; medical, hypodermic, aspiration and injection needles; medical,
hypodermic, aspiration and injection syringes”); In re Oppedahl & Larson LLP, 373
Serial No. 87247895
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F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004). See also In re Petroglyph Games,
Inc., 91 USPQ2d 1332 (TTAB 2009) (BATTLECAM merely descriptive of computer
game software); In re Carlson, 91 USPQ2d 1198 (TTAB 2009) (URBANHOUZING
merely descriptive of real estate brokerage, real estate consultation and real estate
listing services); In re Tower Tech, Inc., 64 USPQ2d at 1318 (SMARTTOWER merely
descriptive of commercial and industrial cooling towers); In re Sun Microsystems Inc.,
59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely descriptive of computer
programs for use in developing and deploying application programs). On the other
hand, a mark comprising a combination of merely descriptive components is
registrable if the combination of terms creates a unitary mark with a non-descriptive
meaning, or if the composite has an incongruous meaning as applied to the goods or
services. See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968)
(SUGAR & SPICE for “bakery products”); In re Shutts, 217 USPQ 363 (TTAB 1983)
(SNO-RAKE for “a snow removal hand tool having a handle with a snow-removing
head at one end, the head being of solid uninterrupted construction without prongs”).
“If one must exercise mature thought or follow a multi-stage reasoning process in
order to determine what characteristics the term identifies, the term is suggestive
rather than merely descriptive.” In re Tennis in the Round, Inc., 199 USPQ 496, 497
(TTAB 1978). See also In re Shutts, 217 USPQ at 364-365; In re Universal Water
Systems, Inc., 209 USPQ 165, 166 (TTAB 1980).
In determining the overall meaning of DOMAINES & CHATEAUX for “alcoholic
beverages except beers; wine,” we first consider whether its separate terms have any
Serial No. 87247895
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meanings, and if so, whether they are merely descriptive of Applicant’s goods.
DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 103 USPQ2d at 1758 (“To
determine whether a composite mark such as the SNAP SIMPLY SAFER mark is
merely descriptive, the Board was required to examine the meaning of each
component individually, and then determine whether the mark as a whole is merely
descriptive.”). In doing so, we note that the word “domaine” is defined in the Merriam
Webster Dictionary as meaning “a vineyard especially in Burgundy that makes and
bottles wine from its own grapes”3 and “chateaux” as the plural form of “a French
vineyard estate.”4
The Examining Attorney introduced excerpts of several third-party websites
showing that others use the terms “domaines” and “chateaux” descriptively in the
context of wine. The www.winespectator.com website explains,
Hundreds of wine brands out there have either “chateau”
or “domaine” in their names (and a few even have both).
Often they’re used interchangeably to refer to a place
where wine is made. If you’re looking for a more nuanced
answer, chateau is the French term for a country house or
castl[e] and is most commonly used by the wineries of
Bordeaux, while the term domaine, which refers to a
territory or empire, is typically associated with the
wineries of Burgundy. Remember, though, that in most
countries there are no legal restrictions on the use of these
terms, so there may not b[e an] actual physical “chateau”
at all … much less a “domaine.”5

3 February 8, 2018 Office Action, TSDR 6. Page references herein to the application record
refer to the downloadable .pdf version of the United States Patent and Trademark Office
(USPTO) Trademark Status & Document Retrieval (TSDR) system.
4 February 8, 2018 Office Action, TSDR 15.
5 February 8, 2018 Office Action, TSDR 28.
Serial No. 87247895
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The record also includes the following descriptive uses of the terms:
Domaines
www.klwines.com: Jaboulet-Vercherre was established in
1948 near Beaune. With over 150 years’ experience in the
production of wine, the House of Jaboulet-Vercherre
concentrates its production on its domaine wines, but also
has its own monopole, the Comte de Chartogne.6
Chateaux
● www.castlexperience.com: If you are familiar with
French wines you may have heard the term “chateau”, and
if you have some knowledge of French you know the
translation of this word (castle/country estate). However,
in the “world of wine” it has a more profound meaning.
Though, chateau wines mostly do come from France,
nowadays you can call your wine chateau in any part of the
world where wine is produced. However, what it means in
European Union means something different in USA.
Historically, chateau was a palace mansion like where
noble French found their refuge during the war times or
threatening political activity. Later it would refer to a place
which sole purpose was to produce wine. In the European
Union, “chateau” refers to the wineries that use grapes
from the single vineyard of the property, as in contrary to
most of the wineries that apart from using their own
grapes, also buy grapes outside the property. Whilst in the
USA, this term can be used as [a] marketing label. US
requested EU to allow using “chateau” on American wines
that are sold in the EU, which means that “chateau”
standards would mean the same everywhere. However, EU
has fears that American products will take advantage of
the century old foundation, EU Parliament reports.” 7

6 February 8, 2018 Office Action, TSDR 34.
7 February 8, 2018 Office Action, TSDR 26. This webpage appears to be from the United
Kingdom in view of the use of British terms and of the Union Jack flag next to the language
label “English.”
Serial No. 87247895
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● www.delor-bordeaux.com: Les Pépites Delor » (« Pépite »
means gold nugget in French) is the evocative name chosen
for our Château wines.8
● www.beveragemedia.com: “Regional blends have the
great advantage for the consumer of consistency in quality
and taste year after year,” says Roland Quancard of Cheval
Quancard, a Boardeau-based negociant. “For the American
wine merchant, there is the attraction of guaranteed
volume. If the demand is there, we can always source more
wine, which we can’t do with our château wines.”9
Domaines and Chateaux
● www.lifestylelinked.com: Crafted by winemakers in
small domaines and châteaux throughout France, each
wine is carefully chosen to ensure that it delivers the
wonderful experience of that holiday wine find. …
Domaines et Chateaux wines are available from Tesco in
75cl bottles. The selection will change every few months as
wines sell out, enabling curious and adventurous wine
lovers to enjoy a variety of wines from small estates from
all over France. 10
● www.mommessin.com: with a link entitled “Prestigious
Domains and Chateaux” as a category, and stating “Like
Château de Montmelas, other prestigious Domaines and
Châteaux contribute to our quest for excellence and share
our high standards of quality.”11
● www.winestree.com: Wines Tree draw from their own
experience acquired at the family domain Château de
Beaupré to select their range of Domaines and Châteaux.
… In their desire to promote <> domains of
quality, Wines Tree have found their vocation in revealing
talented winemakers via their selection.12

8 February 8, 2018 Office Action, TSDR 35-37.
9 February 8, 2018 Office Action, TSDR 38.
10 February 8, 2018 Office Action, TSDR 42, 44.
11 February 8, 2018 Office Action, TSDR 51.
12 February 8, 2018 Office Action, TSDR 52.
Serial No. 87247895
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● http://waynebottleking.com: Today managed by Laurent
Brotte, grandson of the founder, you will be able to find
Brotte wines through the traditional network such as
restaurants, wine stores and private customers.
“BROTTE” is the family signature for our wines, our
Domaines and Chateaux, our crus of the Southern and
Northern Rhone Valley region.
● www.ferraud.com: Our wines come from our familial
estates, or domaines and châteaux who deal exclusively
with us, and producers with whom we have formed and
nurtured partnership which go back decades.13
● merriam-webster.com/dictionary/domains: “In France,
words like chateau or domaine in the winery’s name are
essentially code for estate-grown,” citing Gar Joseph,
philly.com, “Cheap Buzz: Estate Wines Are Artisanal
Wines,” 20 Sep. 2017.14
In addition, the Examining Attorney submitted approximately 40 third-party
Principal Register registrations for goods identified as or encompassing wine, or wine-
related services, for marks including disclaimers of DOMAINE, CHATEAU,
VINEYARD and ESTATE, or a claim of acquired distinctiveness of DOMAINE
pursuant to Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f).15 Fifteen
registrations include a disclaimer of “chateau,” eight registrations include a
disclaimer of “domaine” and three registrations include a claim of acquired
distinctiveness of “domaine.” Third-party registrations may be used as evidence,
albeit not conclusive, of whether the term is descriptive. See Sweats Fashions, Inc. v.
Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1797 n.1 (Fed. Cir. 1987).

13 February 8, 2018 Office Action, TSDR 54.
14 February 8, 2018 Office Action, TSDR 6.
15 See October 19, 2017 Office Action.
Serial No. 87247895
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Applicant argues that the Examining Attorney’s third-party registrations are for
marks which have other wording which “inform consumers of a product
characteristic, namely, the specific location from which the product originates”;16 and
that its “mark, which is a unique and distinctive combination of the terms DOMAINE
and CHATEAUX, is at most suggestive of France’s wine country and heritage.”17 In
addition, Applicant submitted Principal Register registrations for marks for wine or
encompassing wine containing the terms CHATEAU, DOMAINE, VINEYARD,
ESTATE and VILLAS, without disclaimers of these terms. Three registrations each
are for marks containing CHATEAU, DOMAINE and VINEYARD, four registrations
are for marks containing ESTATE and one registration is for a mark containing
VILLAS.18
The evidence demonstrates that in the context of wine, “domaine” signifies a
terroire and “chateau” signifies a castle property; that both terms are widely used in
connection with wines (particularly with French wines, which are for sale in the
United States); and that “chateau” indicates that the wine was produced from a single
vineyard of a chateau property and “domaine” indicates that the wine is produced
from a terroire. See In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1185 (TTAB
2018) (“The term ‘Chateau,’ a common term for ‘a large French country house or castle
often giving its name to wine made in its neighborhood,’ merely describes a location

16 Applicant’s brief at 3, 10 TTABVUE 4.
17 Applicant’s brief at 4, 10 TTABVUE 5.
18 Those registrations which do not identify or encompass wines as goods have no probative
value as Applicant’s identified goods encompass wines and the pertinent terms have
significance in the context of wines.
Serial No. 87247895
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where wine is produced ….”). The references in the evidence to unrestricted uses in
the United States for “chateau” and “domaine” noted by Applicant in its reply brief19
do not persuade us that the proposed mark is suggestive. Applicant cites only two
references out of the many references in the record to “chateau” and “domaine,” it is
common knowledge that French wine is widely offered for sale in the United States
and Applicant’s goods as recited in its identification of goods include French wines.
As for the dueling third party registrations, they favor the Examining Attorney who
made of record a larger number of registrations on the Principal Register for marks
including DOMAINE and CHATEAU. We do not agree with Applicant that the
Examining Attorney’s third-party registrations are inapposite because they inform
consumers of the specific location where the product originates while Applicant’s
proposed mark does not – DOMAINE and CHATEAU in the registered marks have
the same meaning as in Applicant’s marks, and identify a particular domaine or
chateau. Also, the three registrations submitted by the Examining Attorney for

19 Applicant cites to the following evidence introduced by the Examining Attorney:
● www.castlexperience.com: “Though, chateau wines mostly do
come from France, nowadays you can call your wine chateau in
any part of the world where wine is produced. However, what it
means in European Union means something different in USA …
In the European Union, ‘chateau’ refers to the wineries that use
grapes from the single vineyard of the property, as in contrary
to most of the wineries that apart from using their own grapes,
also buy grapes outside the property. Whilst in the USA, this
term can be used as [a] marketing label.” 12 TTABVUE 6-7.
● www.winespectator.com: “Remember, though, that in most
countries there are no legal restrictions on the use of these terms
[‘chateau’ and ‘domaine’] so there may not be an actual, physical
‘château’ at all ... much less a ‘domaine.’’’ 12 TTABVUE 7.
Serial No. 87247895
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DOMAINE SELECT, DOMAINE SELECT ESTATES and DOMAINE SELECT
WINE & SPIRITS,20 albeit for wine-related services, have been registered pursuant
to a claim of acquired distinctiveness of DOMAINE SELECT; there is no
identification of a specific location. Overall, regarding the third-party registrations,
it is well-established that the Board must decide each application on its own merits.
In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“[t]he
Board must decide each case on its own merits ... Even if some prior registrations had
some characteristics similar to [Applicant’s] application, the PTO’s allowance of such
prior registrations does not bind the Board or this court.”). “The fact that, whether
because of administrative error or otherwise, some marks have been registered even
though they may be in violation of the governing statutory standard does not mean
that the agency must forgo applying that standard in all other cases.” In re Boulevard
Ent. Inc., 67 USPQ2d 1475, 1480 (Fed. Cir. 2003). Applicant’s third-party
registrations do not convince us that DOMAINE and CHATEAUX are suggestive in
the context of Applicant’s goods.
When DOMAINE and CHATEAUX are used together as in Applicant’s proposed
mark, they do not convey “any distinctive source identifying impression contrary to
the descriptiveness of the individual parts.” In re Oppedahl & Larson, 71 USPQ2d at
1372. To the contrary, from “the perspective of a prospective purchaser or user” of
Applicant’s goods, “because ... the combination of the terms does not result in a

20 Registration Nos. 4981924, 4981924 and 4959646, respectively. October 19, 2017 Office
Action, TSDR 17 – 25.
Serial No. 87247895
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composite that alters the meaning of [any] of the elements ... refusal on the ground of
descriptiveness is appropriate.” In re Petroglyph Games, 91 USPQ2d at 1341. There
is nothing incongruous about the proposed mark; rather, the proposed mark as a
whole immediately describes a characteristic or feature of the goods, namely, that the
wines originate in a chateau property or a domaine property, or both (such as a
blended wine). See, e.g., In re Putman Publ’g Co., 39 USPQ2d 2021 (TTAB 1996)
(FOOD & BEVERAGE ONLINE merely descriptive of news and information services
in the food processing industry).
Thus, upon consideration of all of the Examining Attorney’s and Applicant’s
arguments and evidence in the record, including the arguments and evidence not
specifically discussed in our opinion, we find that not only are the individual terms
“domaines” and “chateaux” merely descriptive of a feature or characteristic of wine,
but that the combination DOMAINES & CHATEAUX likewise immediately brings to
mind a feature or characteristic of such goods, namely that they originate from castle
properties or from estates. The proposed mark is therefore not registrable on the
Principal Register and we affirm the Examining Attorney’s refusal to register
Applicant’s proposed mark under Section 2(e)(1) of the Trademark Act.
Decision: The refusal to register Applicant’s proposed mark is affirmed.