Sobon Wine Company LLC

Trademark Trial and Appeal Board

Apr 25, 2013

No. 76702722 (T.T.A.B. Apr. 25, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
April 25, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Sobon Wine Company LLC
_____

Serial No. 76702722
_____

Robert G. Roomian for Sobon Wine Company LLC

Emily K. Carlsen, Trademark Examining Attorney, Law Office 103 (Michael
Hamilton, Managing Attorney).
_____

Before Kuhlke, Ritchie and Hightower, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, Sobon Wine Company LLC, filed an application to register on the
Principal Register the mark shown below for “wines,” in International Class 33. 1

1 Application Serial No. 76702722, filed on April 29, 2010, based on allegations of first use
on May 24, 2001 and use in commerce, on June 18, 2001, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a). The assignment from the original applicant,
Shenandoah Vineyards, LP, to Sobon Wine Company LLC is recorded at Reel/Frame No.
4562/0007.

Serial No. 76702722

2

The application includes the following disclaimer: “No claim is made to the
exclusive right to use REZERVE, the phonetic equivalent of RESERVE, or to use
ZIN apart from the mark as shown.”2 In addition, applicant claims ownership of
prior Registration No. 3016599 for the mark for the same
goods. This registration includes a disclaimer for “RESERVE, the phonetic
equivalent of REZERVE.”
The examining attorney initially refused registration based on mere
descriptiveness under Section 2(e)(1) of the Trademark Act, Trademark Act, 15
U.S.C. §1052(e). In response to this refusal applicant sought, in the alternative, to
register the mark under Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f),
based on a claim of acquired distinctiveness. Thereafter, the examining attorney
refused registration on the additional ground that the proposed mark is generic for
the applied-for goods.3
The examining attorney has now made final the refusal of the application
under Section 2(e)(1) on the grounds that (1) the proposed mark is generic for the
applied-for services, or, in the alternative, (2) the proposed mark is merely
descriptive and applicant’s showing of acquired distinctiveness is not sufficient to
allow registration under Section 2(f) of the Trademark Act.

2 The disclaimer appears in the electronic TSDR file as “‘REZERVE’, the phonetic
equivalent of RESERVE, or ‘ZIN.’”

3 Where an applicant responds to a mere descriptiveness refusal under Section 2(e)(1) by
asserting acquired distinctiveness and the examining attorney determines the designation
is generic, the examining attorney must issue a new nonfinal action refusing registration
under Section 2(e)(1). TMEP §1209.02(a)(ii) (October 2012).

Serial No. 76702722

3

When the refusal was made final, applicant appealed. The appeal is fully
briefed.
As noted above, applicant owns the registration for the mark ,
registered on the Principal Register without a showing of acquired distinctiveness
and with the word RESERVE disclaimed. This registration issued on November 22,
2005. In addition, applicant owned the now cancelled Registration No. 2576226 for
the same mark as the applied-for mark, also registered on the Principal Register
without a showing of acquired distinctiveness and with the wording REZERVE ZIN
disclaimed. That registration issued on June 4, 2002 and was cancelled on March 2,
2011 for failure to file a Section 8 declaration of continuous use.4
In view of the disclaimer for the wording REZERVE ZIN, the only issue to be
decided is whether the stylization in the proposed mark is either sufficiently
inherently distinctive to permit registration on the Principal Register or has
acquired distinctiveness.5
“It is settled that a display of descriptive or otherwise unregistrable matter is
not registrable on the Principal Register unless the design features of the asserted
mark create an impression on the purchasers separate and apart from the
impression made by the words themselves, or if it can be shown by evidence that

4 During examination of the applied-for mark, the examining attorney also refused
registration because the subject application was a duplicate of this prior registration that
had not yet been cancelled. This refusal was withdrawn after cancellation of the prior
registration.

5 There is ample evidence in the record to support a finding that the wording RESERVE
ZIN is generic for wine and the phonetic misspelling alone does not change this. In re
Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009).
Serial No. 76702722

4

the particular display which applicant has adopted has acquired distinctiveness.”
In re Guilford Mills Inc., 33 USPQ2d 1042, 1043 (TTAB 1994) (stylization of
not sufficient to allow registration). The question of whether the mark
is sufficiently stylized “is very specific to each set of facts and while prior cases
provide same guidance, each case must be determined on its own facts.” In re Bonni
Keller Collections Ltd., 6 USPQ2d 1224, 1227 (TTAB 1987) (stylization in
did “not possess the degree of stylization necessary to warrant
allowance on the Supplemental Register”).
The examining attorney contends that “the degree of stylization in this case
is not sufficiently striking, unique or distinctive so as to create a commercial
impression separate and apart from the unregistrable components of the mark.”6 In
support of this determination the examining attorney points to the cases In re
Sambado & Sons, Inc., 45 USPQ2d 1312 (TTAB 1997) and Bonni Keller, 6 USPQ2d
1224 where the stylization in the marks that were “comprised of two terms entirely
set forth in stylized lettering” was found to be not inherently distinctive.7 She also
distinguishes these facts from cases where the stylization was found to be sufficient.
For example, she notes that in In re Jackson Hole Ski Corp., 190 USPQ 175 (TTAB
1976) there were two letters but only one letter “stands out” in this case, stating
that “it does not stand apart from the rest of the mark such that the generic

6 E.A. Br. p. 13.

7 Id.

Serial No. 76702722

5

meaning of the mark is undercut.”8 She concludes that “the larger font size used for
the letter ‘Z’ and the organization of the terms ‘rezerve’ and ‘zin’ presents only
minimal stylization and do not create a commercial impression separate from the
generic meaning of the mark.”9
Applicant argues that:
[Its] mark contains two fanciful features that combine to make a
striking inherently distinctive commercial impression separate and
apart from the unregistrable components. ... The stylized letter Z in
applicant’s mark is far more than merely larger than the surrounding
lettering. It is dramatically stylized with distinctive features starting
with the short strong downward stroke at the top left of the letter,
followed by a sharp slightly upward slanting stroke to the right that is
followed in turn by a sharp downward widening diagonal slanting
stroke to the left and finishing with a downward curving stroke to the
right that sweeps completely under the letter E immediately to the
right of the letter Z. The surrounding print is smaller and in the
plainest block lettering. As a result, the larger stylized letter ‘Z’ stands
out in a dramatic and sweeping way that is in marked contrast to the
surrounding lettering. These distinctive features are not shared by the
other letters in the mark. The eye is drawn to the stylized letter Z. …
[also] the words REZERVE and ZIN are positioned horizontally and
vertically and connected by a single stylized letter Z.10

We first observe, as noted above, and as demonstrated by the prior
registrations for this mark and its related mark , that “[w]hether or
not the disclaimed literal components of a designation sought to be registered are
displayed in an inherently distinctive fashion is necessarily a subjective matter
which must be determined based on a viewer’s first impression.” In re Sadoru

8 Id. p. 14.

9 Id. at 15.

10 App. Br. pp. 4-5.

Serial No. 76702722

6

Group, Ltd., 105 USPQ2d 1484 (TTAB 2012). For over ten years applicant has had
this Z design integrated with generic wording registered on the Principal Register
without a showing of acquired distinctiveness.
There is no question that the stylized Z by itself would be registrable.

While the words REZERVE ZIN are generic and disclaimed, we find the
stylization of the Z to have a separate and distinct commercial impression. This is
achieved by the stark difference in size and font between the Z and the other
lettering and the flourish in the Z. In addition, the words are presented in
crossword puzzle format which adds to the stylization and focuses the eye on the Z .

The cases relied on by the examining attorney present different facts. In
Sambado & Son, 45 USPQ2d 1312 the generic terms are simply written in the same
cursive script and in Bonni Keller, 6 USPQ2d 1224 the
generic wording is also simply displayed in the same script .
The question is not whether the generic meaning is lost as would be the case
where the issue concerns the combination of generic or merely descriptive words.
See, e.g., In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968)
(SUGAR & SPICE not merely descriptive of bakery products). Rather, the question
Serial No. 76702722

7

here is whether the stylization or design elements have a separate commercial
impression, which they do.
After considering the case law involving the registrability of marks consisting
of merely descriptive or generic words depicted in stylized format, and applying it to
the facts of this case, we find that the stylization, in particular, the Z, in the
designation to be registered, creates a separate and inherently distinctive
commercial impression apart from the words. In re Couriaire Express International,
Inc., 222 USPQ 365, 366 (TTAB 1984) (“That each case must be determined on its
own facts is a proposition so well established that no authority need be cited in
support of it”). See also Jackson Hole, 190 USPQ at 176 (“[W]here the literal
components of a mark are combined in a distinctive design or display it is possible
to disclaim those literal components and still have a mark which is registrable as a
whole.”) Because we consider the stylization to be a separate, non-generic and non-
descriptive element in the applied-for mark, we cannot find the mark as a whole to
be generic or merely descriptive of the goods.
Decision: The refusal to register based on genericness under Section 2(e)(1)
of the Trademark Act is reversed, and the refusal based on mere descriptiveness
and the requirement for a showing of acquired distinctiveness is reversed.