Premiere Distillery, LLC

Trademark Trial and Appeal Board

Jul 18, 2012

No. 77928717 (T.T.A.B. Jul. 18, 2012)

Mailed:
July 18, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Premiere Distillery, LLC
________

Serial No. 77928717
_______

Michael G. Kelber of Neal Gerber & Eisenberg LLP for
Premiere Distillery, LLC.

Ramona Ortiga Palmer, Trademark Examining Attorney, Law
Office 117 (Brett Golden, Managing Attorney).
_______

Before Holtzman, Kuhlke and Mermelstein, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Premiere Distillery, LLC has filed an application to
register the mark REAL RUSSIAN in standard character format
on the Principal Register for “vodka” in International
Class 33.1
The examining attorney has refused registration on the
ground that the mark is primarily geographically

1 Application Serial No. 77928717, filed February 5, 2010, under
Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on
an allegation of a bona fide intention to use the mark in
commerce.
THIS OPINION IS A
PRECEDENT OF THE TTAB
Serial No. 77928717
2
deceptively misdescriptive under Trademark Act Section
2(e)(3), 15 U.S.C. § 1052(e)(3).
To maintain a refusal under Section 2(e)(3), the
Office must establish that (1) the primary significance of
the mark is a generally known geographic location, (2) the
relevant public would be likely to believe the place
identified by the mark indicates the origin of the goods
bearing the mark, when in fact the goods do not come from
that place, and (3) the misrepresentation would be a
material factor in the consumer’s decision to purchase the
goods. In re California Innovations Inc., 329 F.3d 1334,
66 USPQ2d 1853, 1858 (Fed. Cir. 2003).
Primary Significance
The examining attorney has established that Russia is
a geographic location known to the relevant public. See,
e.g., http://dictionary.reference.com based on Random House
Dictionary (2011);2 and www.wikipedia.org “Russia” attached
to January 12, 2011 Office Action.
In evaluating the likely meaning of REAL RUSSIAN we
must consider the mark in relation to the goods with which

2 The examining attorney’s request for judicial notice of the
dictionary definition attached to her brief is granted. The
Board may take judicial notice of dictionary definitions. In re
Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). See also
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).
Serial No. 77928717
3
the mark is (or will be) used and from the perspective of
the relevant purchasers. In re Jonathan Drew Inc., 97
USPQ2d 1640, 1643 (TTAB 2011). Applicant has applied for
the phrase REAL RUSSIAN for use in connection with vodka.
Applicant argues that the primary significance of
RUSSIAN is not a generally known geographic location
because the definitions of record “include multiple
meanings for the term ‘Russian,’ ... [and] geography is
merely one of a number of meanings the term can have.” Br.
p. 5. Without evidentiary support, applicant argues:
the Mark refers to various aspects of
Applicant’s heritage, business model
and goods. For example, Applicant’s
distillery is the only American
distillery known to Applicant that is
completely owned by persons of Russian
ancestry ... [and] according to the
evidence submitted by the Examining
Attorney, the term “Russian” can, and
often does, refer to a specific ethnic
group, which is exactly the case in
this matter. Because Applicant’s Mark
creates a separate, readily understood
meaning that does not refer to
geography, but rather ethnicity, it
should not be refused registration.

App. Br. 2-3.
The definitions of record include the following:
Russian noun 1 a : a native or
inhabitant of Russia b: a member of the
dominant Slavic-speaking ethnic group
of Russia c : a person of Russian
descent 2 : a Slavic language of the
Russian people spoken as a second
Serial No. 77928717
4
language by many non-Russian ethnic
groups of the Soviet Union and its
successor states; Russian adjective;3
and

Russian adjective 1 Of or pertaining to
Russia, an empire in eastern Europe
with large possessions in northern and
central Asia, or the Russians or their
language.4

The fact that the word RUSSIAN may have other meanings
in other contexts does not alter its geographic
significance in the context of the relevant goods. See In
re Opryland USA Inc., 1 USPQ2d 1409 (TTAB 1986). Moreover,
the other meanings, a language or ethnic group, ultimately
relate back to the geographic location, Russia. Id. at
1413 (“While Nashville may have other connotations, these
meanings are all so closely connected to the city of
Nashville that they do not, in our opinion, obviate that
term’s primary geographical sense.”) Finally, considered
in the context of the goods, the relevant consumers would
view REAL RUSSIAN used on vodka as meaning “of or
pertaining to Russia.” Id. It is well-established that
adjectival forms of geographic terms are also considered
primarily geographically descriptive. In re Joint-Stock
Co. “Baik,” 80 USPQ2d 1305 (TTAB 2006) (BAIKALSKAYA

3 Office Action (May 15, 2010) Merriam-Webster Online Dictionary.

4 Office Action (January 11, 2011) Wordnik www.wordnik.com.
Serial No. 77928717
5
equivalent of “from Baikal” primarily geographically
descriptive of vodka); In re Jack’s Hi-Grade Foods, Inc.,
226 USPQ 1028, 1029 (TTAB 1985) (NEAPOLITAN for sausage
emanating from United States primarily geographically
deceptively misdescriptive); Ex Parte La Union Agricola
Sociedad Anonima, 73 USPQ 233 (Comm’r Pats. 1947) (La
Tarragonesa adjectival form of Tarragona indicating
something from Tarragona geographically descriptive of
brandy from Tarragona). Vodka emanating from Russia would
be called Russian vodka; thus, the adjectival form retains
the primary geographic significance. This is particularly
true here given the strong historical and cultural
connection of vodka with Russia. See infra.
Applicant’s alternative contention that RUSSIAN simply
connotes the “style” of vodka (which if that were the case
would have prompted a refusal under Section 2(e)(1) based
on mere descriptiveness) is not supported by the record.
The excerpts simply discuss the various components of vodka
generally used in different vodka producing regions
(Russia, Poland, Sweden, etc.). For example, the excerpt
submitted by applicant from the website Tastings.com
includes the following:
Vodka is the dominant spirit of Eastern
Europe. ... Rye and wheat are the
classic grains for Vodka, with most of
Serial No. 77928717
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the best Russian Vodkas being made from
wheat while in Poland they are mostly
made from a rye mash. Swedish and
Baltic distillers are partial to wheat
mashes. Potatoes are looked down on by
Russian distillers, but are held in
high esteem by some of their Polish
counterparts. Molasses, a sticky,
sweet residue from sugar production, is
widely used for inexpensive, mass-
produced brands of Vodka. American
distillers use the full range of base
ingredients. ... There are no uniform
classifications of Vodka ... In Russia
Vodka that is labeled osobaya (special)
usually is a superior-quality product
that can be exported, while krepkaya
(strong) denotes an overproof Vodka of
at least 56% ABV. ... Vodka Regions ...
Eastern Europe is the homeland of Vodka
production. Every country produces
Vodka, and most also have local
flavored specialties. Russia, Ukraine
and Belarus produce the full range of
Vodka types, and are generally
acknowledged to be the leaders in Vodka
production. ... Vodka in Russia ...
Russians firmly believe that Vodka was
created in their land. ... Vodka
production became an integral part of
Russian society. ... By the 18th and
well into the 19th century the Russian
Vodka industry was probably the most
technologically advanced industry in
the nation. ... Vodka production in the
current Russian Federation has returned
to the pre-Revolutionary pattern.5

Rather than discussing a “style” of vodka the article
points to how vodka is distinguished depending on the
geographic origin.

5 Applicant Response (November 12, 2010) Exh. A (All About Vodka,
www.tastings.com/spirits/vodka.html).
Serial No. 77928717
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The determination of whether a mark is geographically
deceptively misdescriptive (or geographically descriptive)
must be based on the mark as a whole. In re Sharky’s
Drygoods Co., 23 USPQ2d 1061 (TTAB 1992). To the extent
there would be any doubt that the primary significance of
the word RUSSIAN used on vodka is a geographic location,
the addition of the word REAL serves to underscore the
meaning of geographic origin. REAL is defined as “not
artificial, fraudulent, or illusory : genuine” and “being
precisely what the name implies.”6 Far from detracting from
the primary geographic significance, the word REAL
emphasizes the geographic significance by underscoring that
the vodka is genuinely of RUSSIAN origin.
In view of the above, we find that the primary
significance of the mark REAL RUSSIAN used in connection
with vodka is geographic.
Goods/Place Association
Turning then to consider the goods/place association,
we first note that there is no dispute that the goods do
not emanate from Russia. See Applicant’s Response dated
August 27, 2008 (“...Applicant states that its goods will
not be manufactured or originate in or have any other
geographic connection with the locations named in the

6 Office Action (May 15, 2010) Merriam-Webster Online Dictionary.
Serial No. 77928717
8
mark.”) The connection between vodka and Russia has been
considered by this Board on several occasions. See, e.g.,
Joint-Stock Co. “Baik,” 80 USPQ2d 1305. Not surprisingly,
the evidence of record here overwhelmingly supports a
finding that Russia is extremely well known for vodka. We
begin by observing that the word “vodka” in the English
language is adopted from the Russian language.7
In support of this element, the examining attorney
submitted excerpts from various online sources showing
vodka linked with Russia. A few representative samples are
produced below:

Russian Vodka is a famous alcoholic
beverage of exceptional quality, which
is loved and enjoyed by millions of
people around the World. There are
hundreds of vodka brands and cocktail
recipes, still some of the best vodka
is top quality Russian Vodka. ... Vodka
is a Russian word, a diminutive of
“water”;8

Russia, with its long, cold winters, is
known for vodka...;9

Russia is famous for vodka;10 and

7 Merriam-Webster’s Collegiate Dictionary (10th ed. 1999) Vodka n
[Russ. fr. Voda water].

8 Office Action (May 15, 2010) www.russianvodka.com.

9 Office Action (January 12, 2011) www.world66.com.

10 Id. www.wordiq.com.

Serial No. 77928717
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While Russians are most famous for
vodka...11

The examining attorney also submitted excerpts from
newspaper articles from across the United States
referencing Russian vodka, including the following:
Adding sugar is forbidden with Polish
but common with Russian vodkas.;12

The Nets announced a five-year
sponsorship agreement with Russian
vodka Stolichnaya last week and on
Sunday stopped in Moscow as part of the
NBA’s European preseason tour ...;13

Enchanted by that signature Shultz
hospitality, the president and his wife
extended the Shultzes an open
invitation to visit Russia. “If that
ever happens, I asked the president to
promise me something,” Shultz said
later, with a laugh. “That our visit
would include Russian caviar and
Russian vodka.”;14

The neighbors were heading to a Maya
Azucena concert at the Blue Note, and
since Wanda was just finishing up her
salsa class nearby, they impulsively
invited her for a meal. “It’s New
York,” Wanda said. “Salsa music. Thai
food. Then, who knows, maybe some
Russian vodka a little later.”;15

11 Id. www.travelallrussia.com.

12 Id. “Sun-Times Media” (December 29, 2010).

13 Id. “Sun-Sentinel” (October 12, 2010).

14 Id. “San Francisco” Chronicle (July 11, 2010).

15 Id. “New York Times” (May 30, 2010).

Serial No. 77928717
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Party Animals Spirits of the wild
Guests mingle gingerly with zoo
creatures at Wild Wines of the World
benefit ... Perhaps the addition of
Russian vodka, margaritas in Mexico,
Caribbean mai tais and a German
biergarten brought the animal (lover)
out in a few more people...;16

Americans have been warming up to
Russian vodka since the beginning of
the Cold War. The first kiss started
in 1946, when Stolichnaya imported the
wheat-based vodka to the States.;17 and

Everyone knows Russian vodka is the
stuff (the bartender at Irina’s
recommended Quadro $3 on Thursdays),
but we were on a quest to try Russian
beers.18

Applicant argues that the examining attorney’s
evidence merely shows that the term RUSSIAN is often used
in connection with vodka, but not that consumers believe
that all vodkas sold in connection with a mark comprised,
in part, of the term RUSSIAN originate in Russia. In
support of its position, applicant relies on Pernod Picard
USA LLC v. Bacardi USA, Inc., 653 F.3d 241, 99 USPQ2d 1553
(3rd Cir. 2011). However, that case involved a claim of
false advertising under Section 43(a)(1)(B), 15 U.S.C. §
1125, wherein the court stated that “even if the words

16 Id. “Arkansas Democrat-Gazette” (May 23, 2010).

17 Id. “Plain Dealer” (January 15, 2010).

18 Id. “Des Moines Register” (August 19, 2009).

Serial No. 77928717
11
‘Havana Club,’ taken in isolation, may be understood as
indicating a product’s geographic origin in Havana, Cuba,
those same words cannot mislead a reasonable consumer who
is told in no uncertain terms that ‘Havana Club’ is a brand
of rum made in Puerto Rico.” Id. at 1560. The court
specifically distinguished the circumstances before it in
considering the entire label from circumstances where the
challenged words are considered alone:
Pernod counters, however, that the
words “Havana Club” are misleading as
to the geographic origin of the rum.
If we were dealing with those words in
isolation, we might agree. There are
administrative decisions that do. ...
But, as we have already emphasized, we
are not dealing with those words in
isolation. This is not a trademark
case, and certainly not one addressing
trademark registration ... We are
obligated in this false advertising
case under §43(a)(1)(B) to look at the
words “Havana Club” in the context of
the entire accused advertisement, the
label of the rum.

Id. at 1559-1560.
Applicant argues that the labels associated with its
vodka would, in any regard, dispel any misunderstanding,
because they include the wording “Hand Made in the U.S.A.”
However, this is of no assistance to applicant in this
case. In determining registrability, we make our analysis
based on the applied-for mark, which consists solely of the
Serial No. 77928717
12
words REAL RUSSIAN. Other matter appearing on the label or
specimens “cannot negate the geographic deceptive
misdescriptiveness that may be conveyed by the mark
itself.” In re Compania de Licores Internacionales S.A.,
102 USPQ2d 1841, 1848-49 (TTAB 2012) (rejecting application
of Pernod in similar circumstances). See also In re Budge,
857 F.2d 1988, 8 USPQ2d 1259, 1261 (Fed. Cir. 1988)
(finding wording of advertising not relevant to trademark
significance in deceptiveness analysis).
Applicant also contends that the Court reasoned that
“Havana Club rum has a Cuban heritage, and therefore,
depicting such a heritage is not deceptive.” App. Br. p.
2. In fact, it was the District Court that made that
finding. The Court of Appeals stated that it “may not
agree with every aspect of the [District Court’s] analysis”
and, regarding the issue of whether “geographic origin”
could include the concept of “heritage,” the Court of
Appeals questioned such an analysis and specifically
declined to decide that issue. Id. at 1558 n. 11. Again,
the Court’s finding was made in the context of reviewing
the label overall, including the wording “made in Puerto
Rico,” while we may consider only what applicant seeks to
register.
Serial No. 77928717
13
The examining attorney’s evidence clearly shows that
Russia is well-known for vodka. Based on the record, we
find that there is a strong goods/place association between
vodka and Russia.
Materiality
“[I]n order to establish a prima facie case of
materiality there must be some indication that a
substantial portion of the relevant consumers would be
materially influenced in the decision to purchase the
product or service by the geographic meaning of the mark.”
In re Spirits International N.V., 563 F.3d 1347, 90 USPQ2d
1489, 1495 (Fed. Cir. 2009).
The evidence submitted establishes that vodka is an
important product of Russia and that both the public in
general, and vodka drinkers in particular, would be aware
that Russia is well-known for vodka. In view of this
demonstrated fame and reputation of Russian vodka to the
relevant public, we may infer that a substantial portion of
consumers who encounter REAL RUSSIAN on applicant’s vodka
are likely to incorrectly believe that the vodka comes from
Russia and that such mistaken belief would materially
influence their decision to purchase the vodka. California
Innovations, 66 USPQ2d at 1857-58 (noting that evidence
showing that the goods are, for example, a “principal
Serial No. 77928717
14
product” of the place named in the mark, or that the place
is “noted for” or “renowned for” the goods, has been
sufficient to satisfy the test for materiality).
Conclusion
In view of the above, we conclude that the proposed
mark REAL RUSSIAN for use in connection with applicant’s
vodka is primarily geographically deceptively
misdescriptive.
Decision: The refusal under Section 2(e)(3) is
affirmed.