Lanza Vineyards, Inc.

Trademark Trial and Appeal Board

Jun 29, 2004

No. 78117536 (T.T.A.B. Jun. 29, 2004)

Mailed:
29 June 2004
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Lanza Vineyards, Inc.
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Serial No. 78117536
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H. Michael Brucker, Esq. for Lanza Vineyards, Inc.
Josette M. Beverly, Trademark Examining Attorney, Law
Office 112 (Janice O’Lear, Managing Attorney).
_______
Before Chapman, Rogers and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On March 26, 2002, Lanza Vineyards, Inc. (applicant)
applied to register on the Principal Register the mark
LANZA VINEYARDS, in typed form, for “wine” in International
Class 33.1 Applicant has disclaimed the term “vineyards.”
The examining attorney refused to register applicant’s
mark on the ground that the mark is primarily merely a
1 Serial No. 78117536. The application is based on applicant’s
allegation of a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 78117536
2
surname under Section 2(e)(4) of the Trademark Act. 15
U.S.C. § 1052(e)(4).
After the examining attorney2 made the refusal final,
applicant filed a notice of appeal.
In order to determine whether a term is primarily
merely a surname, we must determine the impact the term has
or would have on the purchasing public. “[I]t is that
impact or impression which should be evaluated in
determining whether or not the primary significance of a
word when applied to a product is a surname significance.
If it is, and it is only that, then it is primarily merely
a surname.” In re Harris-Intertype Corp., 518 F.2d 629,
186 USPQ 238, 239 (CCPA 1975), quoting, Ex parte Rivera
Watch Corp., 106 USPQ 145 (Comm’r 1955) (emphasis in
original).
“Among the factors to be considered in determining
whether a term is primarily merely a surname are the
following: (i) whether the surname is rare; (ii) whether
anyone connected with applicant has the involved term as a
surname; (iii) whether the term has any other recognized
meaning; and (iv) whether the term has the “look and feel”
2 The current examining attorney was not the original examining
attorney in the case.
Ser No. 78117536
3
of a surname.” In re United Distillers plc, 56 USPQ2d
1220, 1221 (TTAB 2000).3
In this case, because there is little debate about the
surname significance of the term “Lanza,” we will only
briefly address the surname factors. The examining
attorney introduced a printout from a national telephone
directory that showed that there were “More than 1000
Matching Listings” for the name “Lanza.” The printout
included the first fifteen entries. In addition, the
examining attorney made of record a NEXIS printout that
indicated that 716 articles were returned when the term
“lanza” was searched. The first ten stories were
submitted, and they contained stories about Frank C. Lanza
(CEO), Andrew Lanza (councilman), Pedro Lanza (sports
figure), Mario Lanza (“famous Italian singer”), Nina Lanza
(reporter), Dr. Robert Lanza, Kathy Lanza (funeral
announcement next-of-kin), Rev. Steven Lanza, Steven Lanza
(editor), and Jana Lanza (high school honor roll student).
This evidence supports a conclusion that LANZA is not a
rare surname.
3 If the mark is depicted in stylized form, we would also
consider the stylization because if it is “distinctive enough,
this would cause the mark not to be perceived as primarily merely
a surname.” See In re Benthin Management GmbH, 37 USPQ2d 1332,
1334 (TTAB 1995).
Ser No. 78117536
4
Regarding the second factor, no inquiry was made and
applicant offered no information as to whether anyone
associated with applicant is named “Lanza” and, therefore,
this factor does not favor either applicant’s or the
examining attorney’s position. In re Gregory, 70 USPQ2d
1792, 1795 (TTAB 2004) (“[T]hat a proposed mark is not the
applicant's surname, or the surname of an officer or
employee, does not tend to establish one way or the other
whether the proposed mark would be perceived as a
surname”).
Considering the third factor, there is no evidence
that there is any other recognized meaning of the term
LANZA, nor does applicant argue that there is any other
meaning. The fourth factor concerns whether the term has
the “look and feel” of a surname. Here, the evidence
indicates that the public will be exposed to the term Lanza
as a surname and there is some indication that the surname
significance of Lanza will be reinforced because of its
association with a “famous Italian singer” named Mario
Lanza. Therefore, the evidence leads us to conclude that
the term LANZA has the “look and feel” of a surname. See
Gregory, 70 USPQ2d at 1796 (“We conclude that ROGAN has the
look and sound of a surname. It would not be perceived as
an initialism or acronym, and does not have the appearance
Ser No. 78117536
5
of having been coined by combining a root element that has
a readily understood meaning in its own right with either a
prefix or a suffix. Rather, ROGAN appears to be a cohesive
term with no meaning other than as a surname”) (footnote
omitted).
However, we must consider the mark as a whole and the
mark for which applicant seeks registration is not LANZA
alone but LANZA VINEYARDS. Applicant’s main argument is
that the “mark formed by the combination of LANZA and
VINEYARDS is not merely a surname.” Applicant’s Brief at 8
(Emphasis in original). Key to applicant’s argument is its
contention that “the term VINEYARDS is ‘capable’ of
functioning as a mark because it is not the generic name
for the goods.” Reply Brief at 2.
The examining attorney responded to applicant’s
arguments by introducing numerous NEXIS articles to show
that winemakers “use the term ‘vineyard,’ in both the
singular and plural as essentially generic designations for
the place or establishment where wine is produced.”
Examining Attorney’s Brief at 5. Indeed, the record
contains numerous references to the use of the word
“vineyards” with respect to wine and winemakers, a sample
of which is set out below.
Ser No. 78117536
6
These wines include the 1999 Sacrashe Vineyard
Cabernet Sauvignon poured by Hill.
Miami Herald, February 28, 2003.
The group has recruited several wineries to pour at
the event, including … Ironstone Vineyards.
Modesto Bee, February 28, 2003.
Enjoy an open bar featuring wine from Sterling
Vineyards.
Orlando Sentinel, February 28, 2003.
Paul Jaboulet’s “Parallele 45” Cotes du Rhone ($9.49),
so named because the vineyards lie at 45 degrees
latitude (where many of the world’s great wine regions
are found).
Philadelphia Inquirer, February 27, 2003.
Wallenbrook, 45, who held positions with Robert
Mondavi Coastal winery and De Loach Vineyards, has
created the Humanitas wine brand.
San Francisco Chronicle, February 27, 2003.
There will be a wine auction on March 22 with Dick
Grace, owner of Grace Family Vineyards, as master of
ceremonies.
Sun-Sentinel, February 27, 2003.
Wine: Landry Vineyard’s new vintage blanc Du Bois
white wine.
Times-Picayune, February 27, 2003.
Wines: Pontchartrain Vineyards wines.
Times-Picayune, February 27, 2003.
But now Bieg faithfully brings the wine each week,
made from his personal vineyard.
Albuquerque Journal, February 26, 2003.
Evening dedicated to the wines of Stimson Lane
Vineyards.
Austin American Statesman, February 26, 2003.
An acknowledged leader in pinot noir, Martinborough
Vineyards crafts an exotically flavored, lush wine.
Boston Globe, February 26, 2003.
Ser No. 78117536
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Wines from Fetzer Vineyards will be matched to a four-
course dinner.
Commercial Appeal (Memphis, TN), February 26, 2003.
Featured Wine: 1998 Rudd Jericho Vineyard.
Dayton Daily News, February 26, 2003.
Wine tasting … Ficklin Vineyards … Bullene Vineyards.
Fresno Bee, February 26, 2003.
Why should I pay Bryant [Family Vineyard of Napa] $150
for their wine … Indeed, Rick Boyer of Jekel
Vineyards in Monterey County acknowledges that the
escalating prices of California wine have “opened the
door for a lot of foreign competition.”
Los Angeles Times, February 26, 2003.
Cal State Fresno oenology students examine grapes at
the school’s 160-acre vineyard and commercial winery.
The wines star in the weekend event.
Los Angeles Times, February 26, 2003.
The term “vineyard” is a synonym for the word “winery”
and we agree with the examining attorney that “it is
essentially a generic term” that simply identifies where
the goods are produced. Any wine producer should be able
to use this term to identify the place were its goods are
produced. As such, it is incapable of distinguishing
applicant’s wine from the wine of others.
In addition, applicant also relies on the case of In
re Hutchinson Technology Inc., 852 F.2d 552, 7 USPQ2d 1490
(Fed. Cir. 1988). Applicant argues that this case stands
for the proposition that “a term, when standing alone, may
be primarily merely a surname, [but it] is not merely a
surname when combined with another element that is not
Ser No. 78117536
8
generic of the goods to which the mark is applied.”
Applicant’s Brief at 5. In Hutchinson Technology, 7 USPQ2d
at 1493 (footnote omitted), the Court concluded as follows:
The term "technology" does not convey an immediate
idea of the "ingredients, qualities, or
characteristics of the goods" listed in Hutchinson's
application. Therefore, the term "technology" is not
"merely descriptive" of Hutchinson's goods, and we
conclude that the board's finding that the term
"technology," standing alone, is merely descriptive of
Hutchinson's goods is clearly erroneous. The board
offered no other evidence to support its findings on
the effect of the inclusion of "technology" in
Hutchinson's mark as a whole. Consequently, the
board's findings on the effect of the inclusion of
"technology" in the mark, as a whole, also are clearly
erroneous.4
The term “vineyards” for “wine” is a much different
term than the term “technology” for “flexible circuits.”
The Court found that the term “technology” did not
immediately convey a characteristic or feature of the
goods. In the Hutchinson Technology case, the Court
emphasized the lack of evidence concerning the
descriptiveness of the term. In the present case, there is
a substantial amount of evidence demonstrating that the
term “vineyard” is commonly used in association with wine
to state the obvious, that the goods originate from a
vineyard. Rather than supporting applicant’s case,
Hutchinson Technology supports the examining attorney’s
Ser No. 78117536
9
position because in this case there is significant evidence
that “vineyard” is a common term in the relevant field that
would not be capable of distinguishing the goods of
applicant from those of others. Such commonly used terms
are not sufficient to convert a term that is primarily
merely a surname into inherently distinctive marks. See In
re Pickett Hotel Company, 229 USPQ 760, 762 (TTAB 1986)
(“[I]t is clear to us that the term [suite hotel] is, at
least, merely descriptive, and perhaps generic of
appellant’s services;” PICKETT SUITE HOTEL primarily merely
a surname); In re Possis Medical, Inc., 230 USPQ 72, 73
(TTAB 1986) (“Since we believe that PERFUSION CUP is an apt
descriptive name for applicant’s devices, the requirement
for a disclaimer of these words is proper;” POSSIS
PERFUSION CUP primarily merely a surname).5
4 The Court did require the applicant to submit a disclaimer of
the term “technology.”
5 Applicant also relies on TMEP 1211.01(b)(vi) as support for its
argument that its proposed mark is registrable. The TMEP
indicates that “[i]f the wording combined with the surname is
incapable of functioning as a mark (i.e., a generic name for the
goods or services), the examining attorney should refuse
registration on the ground that the entire mark is primarily
merely a surname under §2(e)(4).” On the other hand, the same
section goes on to say that if “the wording combined with the
surname is capable of functioning as a mark (i.e., matter that is
arbitrary, suggestive or merely descriptive of the goods or
services), the mark is not considered to be primarily merely a
surname under §2(e)(4).” Here, the term “vineyards” could not be
capable of distinguishing the source of one entity’s wine from
the wine of other parties. Accord Goodyear’s India Rubber Glove
Mfg. Co. v. Goodyear Rubber Co., 128 US 598, 602-03 (1888)
(“[P]arties united to produce or sell wine, or to raise cotton or
Ser No. 78117536
10
The only remaining question then would be whether the
combined term LANZA VINEYARDS when used on wine would be
considered primarily merely a surname. We find that the
evidence demonstrates that LANZA is a common surname and
that the addition of the commonly used term “vineyards”
would not overcome the surname significance of the term.
Therefore, we conclude that applicant’s term LANZA
VINEYARDS is primarily merely a surname.
Decision: The refusal to register applicant’s mark
LANZA VINEYARDS on the ground that it is primarily merely a
surname is affirmed.
grain, might style themselves Wine Company, Cotton Company, or
Grain Company; but by such description they would in no respect
impair the equal right of others engaged in similar business to
use similar designations”); In re Boston Beer Co., L.P., 198 F.3d
1370, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999) (“[A] phrase or
slogan can be so highly laudatory and descriptive as to be
incapable of acquiring distinctiveness as a trademark”).
Producers of wine would similarly not be prevented from using the
term “vineyards” to identify their products.