S.A. Establecimientos Vitivinicolas Escorihuela

Trademark Trial and Appeal Board

Nov 24, 2008

No. 78967315re (T.T.A.B. Nov. 24, 2008)

Mailed:
November 24, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re S.A. Establecimientos Vitivinicolas Escorihuela
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Serial No. 78967315
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Request for Reconsideration
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Julie B. Seyler of Abelman, Frayne & Schwab for S.A.
Establecimientos Vitivinicolas Escorihuela.

Michael Litzau, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Rogers, Zervas and Ritchie de Larena, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

On October 17, 2008, S.A. Establecimientos
Vitivinicolas Escorihuela (“applicant”) filed a request for
reconsideration of the Board’s decision issued on September
19, 2008, which affirmed the examining attorney’s final
refusal under Section 2(d) of the Trademark Act to register
THIS OPINION IS NOT
A PRECEDENT OF
THE T.T.A.B.
Ser No. 78967315
2
the mark . The Board also affirmed the examining
attorney’s requirements for a foreign registration in
accordance with Trademark Act § 44(e), 35 U.S.C. § 44(e),
and for a specimen of use that supports applicant's
assertion under Trademark Act § 1(a), 35 U.S.C. § 1(a).
(The application is based on both Section 1(a) and Section
44(e).)1
As grounds for its request for reconsideration of the
Board’s Section 2(d) refusal, applicant points out (as it
had in briefing the case) that it has a prior registration
for the mark GASCON. According to applicant, this evidence
“establishes Applicant's goodwill and continuous use of the
trademark GASCON in commerce for over 10 years.” Request
at p. 2. First, this is reargument of a point that was
raised in applicant's appeal brief and therefore not a
proper subject of a request for reconsideration. See
discussion below regarding reargument in a request for
reconsideration. Second, applicant has not established the
extent of association, if any, by the consuming public with
applicant of the term GASCON and there is no proof of any

1 We note and now correct an error in the original decision’s
discussion of these two requirements. Specifically, on page ten
of the decision, in the fifth line, the words “the examining
attorney” are deleted and replaced with “applicant.”
Ser No. 78967315
3
goodwill associated therewith or of continuous use of the
registered mark in commerce.
Applicant has also challenged the Board’s weighing of
the GASCON component of its mark, consideration of the term
DON, and refusal to accept applicant's evidence untimely
submitted with its appeal brief. The purpose of
reconsideration is to point out errors made by the Board in
making its decision, not to merely reargue the case or ask
the Board to reweigh the evidence:
A motion that merely republishes the reasons that
had failed to convince the tribunal in the first
place gives the tribunal no reason to change its
mind. It’s as if the movant, when he appealed,
had filed two copies of his appeal brief, and
when his appeal was rejected asked us to read the
second copy. Reconsideration is not an
appropriate forum for rehashing previously
rejected arguments ….

Ahmed v. Ashcroft, 388 F.3d 247, 249 (7th Cir. 2004)
(citations and internal quotations omitted. See also In re
Squaw Valley Development Co., 80 USPQ2d 1264, 1268 (TTAB
2006) (“The purpose of a request for reconsideration is to
point out errors made by the Board in reaching its
decision, based on the evidence of record and the
prevailing authorities. It is not merely to allow either
the applicant or the examining attorney to reargue the
case.”) The basis for the Board’s decision is clearly
articulated and we do not find any error in our analysis or
Ser No. 78967315
4
in our decision. While we will not repeat applicant’s
arguments in detail, we note that in our decision we
recognized that GASCON is in applicant's mark, but pointed
out that “by including DON MIGUEL in the manner it has,
applicant’s mark still suggests an association with or
sponsorship by registrant.” Decision at 7. With regards
to the term DON, DON must not be considered alone and
discounted, but in connection with the term MIGUEL and,
more specifically, as part of the composite DON MIGUEL, as
the Board did in its decision. In other words, it is
significant not that the marks share the term DON or the
term MIGUEL, but that they share the composite DON MIGUEL.
In view of the foregoing, applicant's request,
inasmuch as it pertains to the Section 2(d) refusal, is
denied.
Turning to the examining attorney’s requirements,
applicant maintains that it filed a copy of the Section
44(e) registration four days prior to the date of the
Board’s decision. First, while applicant did file the
Section 44(e) registration, it did not include an English
translation thereof, as required by the examining attorney
in each of his Office actions.2 Trademark Rule

2 Applicant stated in its submission of the Section 44(e)
registration that “The signed English translation will follow.”
Ser No. 78967315
5
§2.34(a)(3)(ii), 37 C.F.R. §2.34(a)(3)(ii), provides that
“[i]f the foreign registration is not in English, the
applicant must provide a translation.” See also TMEP
§1004.01(b). Accordingly, applicant has not complied in
full with the examining attorney’s requirements regarding
the Section 44(e) registration. Second, all requirements
not the subject of an appeal should be complied with prior
to the appeal. See Trademark Rule 2.142(c). In this case
the appeal was filed and briefed without applicant having
complied with the requirement. Submission of the
registration under such circumstances should have been
accompanied with a request for suspension of the appeal and
remand of the application to the examining attorney, so
that the submitted registration could have been considered.
See Trademark Rule 2.142(d). Applicant’s request for
reconsideration, inasmuch as it pertains to the examining
attorney’s requirement regarding the Section 44(e)
registration, is also denied.
Finally, we point out that applicant's request for
reconsideration does not address the examining attorney’s
requirement for a specimen of use that supports applicant's

Despite its promise to send the translation two months ago, it
has not done so but rather requested that “the refusal on this
ground be reversed.” Request for reconsideration at p. 5.
Ser No. 78967315
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Section 1(a) basis for registration. Therefore, our
affirmance of the Section 1(a) specimen requirement stands.
Applicant’s request for reconsideration is denied.