Sazerac Company, Inc.

Trademark Trial and Appeal Board

Sep 30, 2005

No. 76328505 (T.T.A.B. Sep. 30, 2005)

Mailed: September 30, 2005

Hearing: July 13, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sazerac Company, Inc.
________

Serial No. 76328505
_______

James V. Callahan and Jason S. Shull of Banner & Witcoff,
Ltd. for Sazerac Company, Inc.

Samuel E. Sharper, Jr., Trademark Examining Attorney, Law
Office 108 (Andrew Lawrence, Managing Attorney).
_______

Before Quinn, Chapman and Zervas, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:
Sazerac Company, Inc. has appealed from the final
refusal of the examining attorney to register on the
Principal Register FRENCH KISS (standard character drawing)
as a trademark for the following goods, as amended:
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF THE TTAB
Serial No. 76328505
2
alcoholic beverages, namely, bottled liqueurs, namely
vanilla flavored schnapps.”1
The trademark examining attorney has refused
registration under Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1), on the grounds that, when used on
applicant's goods, the mark FRENCH KISS would be merely
descriptive of such goods, or, alternatively, the mark
would be deceptively misdescriptive of such goods.
Both applicant and the examining attorney have fully
briefed the case. An oral hearing was held before the
Board on July 13, 2005.
The examining attorney maintains that the mark is
merely descriptive because the evidence of record
demonstrates that “FRENCH KISS describe[s] a type of
alcoholic beverages [sic] [and] Applicant's goods consist
of a type of alcoholic beverage.” He also maintains:
… a single producer often sells pre-mixed
cocktails in the alcoholic beverage industry in
bottles. For example, daiquiri, whiskey sour,
bloody Mary or margarita are types of alcoholic
beverages sold in bottles. … The examiner
contends that people familiar with the alcoholic
beverage, “FRENCH KISS” will assume that
applicant's beverage is merely a pre-mixed
version of a FRENCH KISS, such as many other
popular cocktails.

1 Application Serial No. 76328505 was filed on October 22, 2001,
based on applicant's assertion of its bona fide intention to use
the mark in commerce.
Serial No. 76328505
3
With respect to his alternative refusal on the basis
of deceptive misdescriptiveness, the examining attorney
maintains that the evidence shows that FRENCH KISS is the
name of an alcoholic beverage; that applicant's
identification of goods includes “vanilla f[l]avored
schnapps”; that “schnapps” is defined in The American
Heritage Dictionary of the English Language, Third Edition
(1992) as “[a]ny of various strong, dry liquors, such as a
strong Dutch gin”; and that consumers “confronted with the
term ‘FRENCH KISS’ for alcoholic beverages would assume
that the applicant's goods are pre-mixed alcoholic
cocktails, not schnapps ….”
Applicant has argued against both of the examining
attorney’s refusals. With respect to the refusal of the
mark as being merely descriptive, applicant maintains:
Applicant's FRENCH KISS mark is not descriptive
of any of the various alcoholic beverages that
are found in the wide variety of individually
prepared concoctions made from the myriad [of]
recipes found on the web and cited during the
prosecution of this application. The recipes
vary greatly and have a multitude of ingredients
(about thirty different ingredients) mixed in
numerous combinations. No member of the
purchasing public could reasonably expect to
receive the same cocktail when ordering a “french
kiss” at any given drinking establishment because
the recipes, when known at all, vary from
establishment to establishment.

Serial No. 76328505
4
Applicant concludes that an “individual who encounters
Applicant's FRENCH KISS mark would be unable to immediately
determine that applicant's goods are bottled vanilla
liqueur [and] would require imagination and luck … to draw
the conclusion that the goods are bottled vanilla liqueur.”
Thus, according to applicant, “[w]hile the FRENCH KISS mark
may suggest or hint at the nature of Applicant's goods, it
does not in any clear or precise way, serve to describe
Applicant's goods and, when used in the context of bottled
vanilla liqueur, the FRENCH KISS mark does not describe any
ingredient, quality, function, feature, or use of the
goods.”2
With respect to the examining attorney’s deceptively
misdescriptive refusal, applicant maintains that even if
“the FRENCH KISS mark is found to be descriptive of a mixed
drink (which it is not), T.M.E.P. §1209.04 makes clear that
‘[t]he examining attorney must consider the mark in

2 As evidence in support of its arguments, applicant submitted a
copy of the following dictionary definition of “french kiss,”
identified as having been taken from Webster’s Ninth New
Collegiate Dictionary: “an open-mouth kiss usu. involving
tongue-to-tongue contact.” Applicant points out that “[t]his
definition has no relationship whatsoever to an alcoholic
beverage, namely, a liqueur.”
In view of the evidence submitted by the examining attorney and
the involved goods, applicant's dictionary definition is not
particularly relevant. Also, we are not persuaded that “french
kiss” is not a cocktail simply because it does not appear in the
dictionary definition of “french kiss.”

Serial No. 76328505
5
relation to the applicant's goods or services to determine
whether a mark is deceptively misdescriptive’”; and that
“the Examining Attorney has only shown examples of the term
‘french kiss’ in reference to cocktails and has not shown
any evidence of the term ‘french kiss’ used in reference to
a liqueur, specifically a bottled vanilla flavored
schnapps.” Also, applicant argues that it “clearly
mark[et]s its bottled FRENCH KISS product with a label
stating that it is a ‘Vanilla Liqueur’”; and “[t]here is
nothing deceptive to a purchaser of Applicant's bottled
FRENCH KISS product with a clearly stated label.”
Merely Descriptive Refusal
A term is deemed to be 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 Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987); and In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978). A term need
not immediately convey an idea of each and every specific
feature of the applicant's goods or services in order to be
considered merely descriptive; it is enough that the term
describes one significant attribute, function or property
of the goods or services. In re H.U.D.D.L.E., 216 USPQ 358
Serial No. 76328505
6
(TTAB 1982); and In re MBAssociates, 180 USPQ 338 (TTAB
1973).
The evidence of record introduced by the examining
attorney includes several excerpts from the Nexis database
which clearly identify “French Kiss” as a cocktail and
which list the ingredients thereof. Some examples are as
follows:
1. “… includes a French Kiss, vodka with
Chambord and pineapple juice ….” (The New York
Times Company, February 11, 2001).

2. “… the French Kiss (dark cream cocoa, vanilla
ice cream and a swirl of chocolate sauce) ….”
(Chicago Sun-Times, December 13, 2000).

3. “For example: … French Kiss (Tanqueray gin,
white Lillet and orange twist) ….” (Chicago Sun-
Times, May 31, 1996).

4. “Selections will include a French Kiss
(champagne and Chambord)….” (Los Angeles Times,
December 20, 1993).

5. “You’ll find Champagne drinks in jewel tones
at Narcisse in River North, and ‘French Kiss’ --
Champagne, with pineapple juice, vodka and
Chambord ….” (Chicago Tribune, December 27,
2000).

6. “… and the French Kiss - cognac, a sugar cube
and champagne.” (Investor’s Business Daily,
February 25, 2000).

7. “… the French [K]iss (cognac with champagne
and a sugar cube).” (The San Francisco
Chronicle, March 26, 1998).

Serial No. 76328505
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The examining attorney also introduced into the record
several recipes for “French Kiss” cocktails taken from the
Internet, examples of which follow:
1. chambord, peach schnapps, vodka, orange
juice, pineapple juice and cranberry juice
(www.cocktail.com).

2. raspberry liqueur, crème de cassis, champagne
and ice cream (www.bhg.com).

3. vodka, chambord, creme de cacao and cream or
half and half (www.drinkoftheweek.com).

4. vodka, raspberry schnapps, creme de cacao and
cream (www.partyschool.com).

5. vodka and chambord (www.geocities.com).

6. vodka, raspberry schnapps and white creme de
cacao (www.okliquor.com).

7. strawberry liquor and vodka with a strawberry
(www.thecreperie.com).

Several of the recipes on the Internet include raspberry
schnapps or peach schnapps, but none includes vanilla
flavored schnapps. Also, none of the lists of ingredients
in the Nexis evidence includes schnapps.
From the foregoing, we find that the examining
attorney has established that there is an alcoholic
beverage known by the name of “French Kiss,” and that the
“French Kiss” beverage is composed of a mixture of
alcoholic beverages, and sometimes includes a non-alcoholic
beverage.
Serial No. 76328505
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The examining attorney, however, has not made a prima
facie case that the mark FRENCH KISS is merely descriptive
of applicant's goods, i.e., “alcoholic beverages, namely,
bottled liqueurs, namely vanilla flavored schnapps.” The
record only contains a handful of recipes calling for
schnapps, and there are far more “French Kiss” recipes in
the record that do not call for schnapps than list schnapps
as an ingredient. Further, although several of the recipes
for a “French Kiss” cocktail include raspberry or peach
schnapps, none of the recipes of record call for just any
flavor of schnapps or specifically for vanilla flavored
schnapps.
Moreover, the examining attorney’s argument that the
mark is merely descriptive because “FRENCH KISS describe[s]
a type of alcoholic beverages [sic] [and] Applicant's goods
consist of a type of alcoholic beverage” is unpersuasive.
From the record before us, vanilla flavored schnapps is not
called for as any ingredient in a “French Kiss” cocktail.
Similarly, the examining attorney’s argument that
applicant's mark, as applied to its goods, describes a
“pre-mixed FRENCH KISS,” such as “other popular cocktails,”
e.g., daiquiris, whisky sours, bloody marys or margaritas,
is unpersuasive. There simply is no evidence in the record
that applicant's identified goods, i.e., bottled vanilla
Serial No. 76328505
9
flavored schnapps, would be considered a necessary
ingredient of a “French Kiss” cocktail.
In view of the foregoing, we find on this ex parte
record that applicant's mark “FRENCH KISS” is not merely
descriptive of a function, feature, characteristic,
quality, ingredient, purpose or use of applicant's
identified goods. The examining attorney’s refusal to
register under Section 2(e)(1) on the basis of mere
descriptiveness is reversed.
Deceptively Misdescriptive Refusal
The test to be applied in determining whether or not a
mark is deceptively misdescriptive under Section 2(e)(1) is
set forth as follows: (1) whether the term misdescribes a
characteristic, quality, function, composition or use of
the goods, and (2) if so, whether prospective purchasers
are likely to believe the misdescription actually describes
the goods. See In re Berman Bros. Harlem Furniture Inc., 26
USPQ2d 1514 (TTAB 1993); and In re Quady Winery, Inc., 221
USPQ 1213 (TTAB 1984). In the context of the mark in issue
here, we must determine whether FRENCH KISS misdescribes a
use of the goods, i.e., “bottled liqueurs, namely vanilla
flavored schnapps,” and if so, whether prospective
purchasers are likely to believe the misdescription
actually misdescribes the goods.
Serial No. 76328505
10
Applicant contends that the examining attorney has not
established what the specific ingredients of a “French
Kiss” beverage are, and that the recipes of record “have a
multitude of ingredients (about thirty different
ingredients) mixed in numerous combinations.” The
examining attorney essentially maintains that “French Kiss”
drinks are “mixed alcoholic cocktails” and applicant's
goods are simply one liqueur, specifically schnapps, which,
according to the dictionary definition of record, is
defined as “[a]ny of various strong, dry liquors, such as a
strong Dutch gin.”
The record indeed reflects that a “French Kiss”
cocktail is made from a combination of ingredients. The
photocopy of the three pages from BIN, Beverage Industry
News Magazine, April 2004 edition, introduced into the
record by the examining attorney, shows that pre-mixed
alcoholic cocktails are sold to the consuming public. See
p. 83 of April 2004 edition of BIN (“By introducing new
flavors, promotions and packaging, mix marketers are
seeking fresh ways to solve old problems. The resurgence
of the cocktail culture has sparked new interest in the
pre-mixed category, as retailers who stock them will
testify.”) We find that the mark misdescribes applicant's
goods for two reasons. First, a “French Kiss” is a
Serial No. 76328505
11
cocktail made up of multiple ingredients, and the record
does not reflect that “vanilla flavored schnapps” is one of
the ingredients of a “French Kiss” beverage. Second, a
“French Kiss” beverage is a mix of ingredients, and
applicant's “vanilla flavored schnapps” is not a mix of
ingredients.
Based on the evidence of record, we find that
prospective purchasers are likely to believe the
misdescription. As the pages from BIN establish, mixes of
alcoholic beverages are available for sale on the retail
level. Purchasers who know of a “French Kiss” cocktail
will believe that applicant's goods are the “French Kiss”
cocktail containing a mix of ingredients, when applicant's
goods are not a complete “French Kiss” cocktail, but are
instead vanilla flavored schnapps.
As noted above, applicant has argued that applicant
“mark[et]s its bottled FRENCH KISS product with a label
stating it is a ‘Vanilla Liqueur’”; and “[t]here is nothing
deceptive to a purchaser of Applicant's bottled FRENCH KISS
product with a clearly stated label.” However, it is well
established that the mere fact that the nature of the goods
is revealed by matter on labels on the goods themselves
does not preclude a determination that a mark is
deceptively misdescriptive. See Tanners’ Council of
Serial No. 76328505
12
America, Inc. v. Samsonite Corporation, 204 USPQ 150 (TTAB
1979) (“We are not persuaded, therefore, that the labels
identifying the material as ‘urethane vinyl’ dispel the
impression that respondent's goods are made of leather.”),
citing R. Neumann & Co. v. Overseas Shipments, Inc., 326
F.2d 786, 140 USPQ 276 (CCPA 1964). Thus, applicant's
argument is not well taken.
We find that the phrase FRENCH KISS is deceptively
misdescriptive of applicant's goods.
Decision: The refusal to register the mark as merely
descriptive under Section 2(e)(1) of the Trademark Act is
reversed, and the refusal to register the mark as
deceptively misdescriptive under Section 2(e)(1) of the
Trademark Act is affirmed.