SV Spirits, Ltd.

Trademark Trial and Appeal Board

Nov 28, 2012

No. 85006865 (T.T.A.B. Nov. 28, 2012)

Hearing: Mailed:
August 30, 2012 November 28, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re SV Spirits, Ltd.
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Serial No. 85006865
_______

Christopher J. McGeehan of McGeehan Technology Law, Ltd.
for SV Spirits, Ltd.

Michael P. Keating, Trademark Examining Attorney, Law
Office 101 (Ronald R. Sussman, Managing Attorney).
_______

Before Zervas, Kuhlke and Shaw, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

On April 6, 2010, SV Spirits, Ltd. (“applicant”) filed
an application to register PORNSTAR (in standard character
form) on the Principal Register for the following
International Class 33 goods:
Alcoholic beverages except beers; Distilled
Spirits; Gin; Japanese white liquor (shochu);
Liquor; Sake; Tequila; Vodka; Whiskey; Wines and
sparkling wines.

THIS DECISION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Ser. No. 85006865
2
Applicant seeks registration under the intent-to-use
provisions of Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b).
The examining attorney issued a final refusal under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1), on the ground that applicant's mark is merely
descriptive of a type of beverage made by combining various
types of liquor or alcoholic beverages which are within the
scope of applicant’s identification of goods. Brief at
unnumbered p. 3.
Applicant has appealed the final refusal. After the
examining attorney denied applicant’s request for
reconsideration, both the examining attorney and applicant
filed briefs. We reverse.
“A term is merely descriptive if it immediately
conveys knowledge of a quality, feature, function, or
characteristic of the goods or services with which it is
used.” In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009
(Fed. Cir. 1987). Whether a particular term is merely
descriptive is determined in relation to the goods or
services for which registration is sought and the context
in which the term is used, not in the abstract or on the
basis of guesswork. In re Abcor Development Corp., 588
F.2d 811, 200 USPQ 215 (CCPA 1978); In re Remacle, 66
Ser. No. 85006865
3
USPQ2d 1222 (TTAB 2002). In other words, the question is
not whether someone presented only with the mark could
guess the products listed in the description of goods.
Rather, the question is whether someone who knows what the
products are will understand the mark to convey information
about them. In re Tower Tech, Inc., 64 USPQ2d 1314 (TTAB
2002); In re Patent & Trademark Services Inc., 49 USPQ2d
1537 (TTAB 1998); In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990); In re American
Greetings Corp., 226 USPQ 365 (TTAB 1985). If, on the
other hand, a mark requires imagination, thought, and
perception to arrive at the qualities or characteristics of
the goods, then the mark is suggestive. In re MBNA America
Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778 (Fed. Cir. 2003);
see also In re Tennis in the Round, Inc., 199 USPQ 496
(TTAB 1978).
The examining attorney submitted the following
Internet evidence providing recipes or other information
for a “pornstar” cocktail:
• supercocktails.com (blue curacao liquor and
Sour Puss raspberry liquor) (first Office
action);

• freedrinkrecipes.com (blue curacao liquor and
Sour Puss raspberry liquor) (first Office
action);

Ser. No. 85006865
4
• cookthatfood.com (blue curacao, Sour Puss
raspberry liqueur, ice) (final Office action);

• drinkoftheweek.com (cherry vodka, blue curacao,
and grenadine, Sprite or 7-up) (final Office
action), posted by “Meghan”;

• 1001cocktails.com (blue curacao and raspberry
liquor) (denial of request for reconsideration);

• thedrinkmaker.com (blue curacao,
Sour Puss raspberry liquor) (denial of request
for reconsideration);

• barmandrinks.com (blue curacao and raspberry
Sour Puss liquor) (denial of request for
reconsideration);

• thebartend.com (blue curacao and Sour Puss
raspberry liquor) (denial of request for
reconsideration); and

• wikipedia.org (identifying “Pornstar” as a
drink with blue curacao under the entry for
“cocktails”) (denial of request for
reconsideration).1

According to the examining attorney, the recipes are
consistent in their ingredients and proportions. He
maintains that the drink is “common in the same way as
beverages such as the Bloody Mary, Tom Collins, or Screw
Driver.” Brief at 5.

1 The examining attorney states that the evidence he submitted
into the record “is only a small sample of the evidence
available, all of which clearly establishes the existence of the
drink and is clear evidence of how the term is being used by the
relevant public.” Brief at 4. Because the Board bases its
decision on the existing evidentiary record and not on
representations by the examining attorney, we give no further
consideration to this statement; the better practice is for an
examining attorney to place an appropriate amount of evidence in
the record to satisfy his or her burden.
Ser. No. 85006865
5
For the reasons provided below, not all of this
evidence has probative value or is evidence we can
consider.
First, the wikipedia.org webpages containing an entry
for “blue curacao” and listing “pornstar” as a cocktail
containing blue curacao were submitted too late for us to
consider the webpages. Although Wikipedia entries have
inherent limitations because an article at any given time
may contain significant misinformation, “the Board will
consider evidence taken from Wikipedia so long as the
nonoffering party has an opportunity to rebut that evidence
by submitting other evidence that may call into question
the accuracy of the particular Wikipedia information.” In
re IP Carrier Consulting Group, 84 USPQ2d 1028, 1032 (TTAB
2007). See also TBMP § 1208.03 (3d ed. rev. 1 2012). In
this case, the examining attorney submitted the Wikipedia
entry with his denial of applicant's request for
reconsideration. Inasmuch as applicant did not have an
opportunity to rebut the Wikipedia evidence, it has no
probative value.2
Second, as noted, the examining attorney submitted an
“article” from ehow.com with the first Office action

2 This type of evidence is distinct from the Internet evidence
submitted with the denial of the request for reconsideration in
In re Davey Products Pty Ltd., 92 USPQ2d 1198 (TTAB 2009), which
did not allow users to submit content.
Ser. No. 85006865
6
providing a recipe for a “pornstar” cocktail. Applicant’s
attorney stated in a declaration filed with applicant’s
request for reconsideration that he could not locate the
“article” on the ehow.com website. In view thereof, and
because applicant has not had an opportunity to fully
investigate this “article,” we do not further consider the
“article.”
Third, the webpages from cocktailmaking.co.uk, a
United Kingdom website, have no probative value; we are
interested in use of the applied-for term in the United
States, not abroad.
Next, we consider applicant’s objection to any website
submitted by the examining attorney that contains “user-
generated content,” i.e., where users may upload
information to a site such as reviews, comments or text.
According to applicant, there is no way to assess how many
other people accord the same meaning to a term offered by
the person posting information; and a “highly motivated
individual or small group could be responsible for posts on
multiple sites.” For support, applicant relies on an
unpublished Board decision submitted with applicant’s
request for reconsideration, In re Future First LLC, Serial
Ser. No. 85006865
7
No. 78769110 (TTAB 2008).3 In Future First, the Board found
evidence from Internet forums and blogs had little
probative value because the Board could not determine
whether the websites referenced applicant’s goods; and
because the use of a term in lower-case letters on a
posting on an Internet forum did not establish that the
term is a common commercial name, or evidence that the
readers of the posting regard it as such.
We are not persuaded that all of this type of website
evidence which may have user-generated content must be
accorded limited probative value. First, the Board
regularly accepts website evidence to demonstrate that a
term is merely descriptive. See In re Reed Elsevier
Properties Inc., 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir.
2007) (third-party websites are competent sources to show
what the relevant public would understand a term to mean,
and “they provide substantial evidence to support the
Board's findings.”). Second, in Future First, the Board
did not articulate a blanket prohibition on evidence taken
from Internet forums or blogs; the examining attorney
offered forum and blog evidence to demonstrate that a term
was being used descriptively, and the Board considered that

3 Decisions which are not designated as precedent are not binding
on the Board, but may be cited for whatever persuasive weight to
which they may be entitled. TBMP Section 101.03 (3d ed. rev. 1
2012).
Ser. No. 85006865
8
the term in question was a reference to applicant’s goods.
Here, there is no doubt that the use of PORNSTAR in the
website evidence is not a reference to applicant’s goods;
the application declares an intent to use the mark and the
term is used in the context of a drink recipe, with one or
more of the ingredients of the drink allegedly encompassed
within applicant’s identification of goods. Third, the
websites with user-generated content demonstrate how the
public uses a term and public exposure to the term.
Fourth, not all of the websites allows users to submit
recipes and the content on such websites is consistent with
the user-generated submissions.
We are aware of applicant’s point that a nefarious
party may “plant” such evidence on blogs or public forums,
but we know of no reason why to automatically exclude such
evidence if an applicant has had an opportunity to offer
rebutting evidence and there is no evidence that any
competitor or other party has “planted” the evidence
applicant challenges. The danger to an applicant is
mitigated too if a webmaster reviews submissions from the
general public, as is the case with the supercocktails.com
and the freedrinkrecipes.com websites. See request for
reconsideration at 38 and 40.
Ser. No. 85006865
9
At this point, we note that the examining attorney
submitted wepages from the barmandrinks.com web site with
his denial of the request for reconsideration. This web
site allows user-generated content,4 and applicant has not
had an opportunity to present evidence contesting the
probative value of these webpages. We therefore treat this
web site evidence in the same manner we treat wikipedia.com
evidence submitted with a denial of a request for
reconsideration, for the same reasons. The
barmandrinks.com webpages therefore have no probative
value.
In sum, we consider the webpages submitted by the
examining attorney, including those webpages with user-
generated content submitted prior to the denial of the
request for reconsideration, for the fact that the public
uses the term “pornstar” to refer to a cocktail and is
exposed to the recipes set forth under the name “pornstar.”
Turning now to applicant’s arguments on the merits of
the refusal, applicant argues that PORNSTAR does not denote
a quality, characteristic, function, feature or purpose of
the goods and that it does not immediately describe,
without conjecture or speculation, a significant feature or

4 Barmandrinks.com contains a link to “submit a recipe,” and
there is no indication on the webpages that the drink submissions
are reviewed prior to their inclusion on the website.
Ser. No. 85006865
10
characteristic of the goods. Further, applicant maintains
that it submitted rebuttal evidence demonstrating that the
webpages submitted by the examining attorney do not reflect
the public perception of the mark.
Applicant submitted seven declarations from seven
individuals residing in Las Vegas, Nevada or Rochester, New
York who have had experience in the beverage or hospitality
trade and who collectively state, inter alia, that (i) they
are not familiar with “pornstar” as the name of a
beverage, (ii) that Mr. Boston: Official Bartender’s &
Party Guide (November 2008) is the standard reference used
in the hospitality industry for cocktail recipes, and (iii)
that there is no reference to a PORNSTAR cocktail in any of
the standard reference works for cocktail recipes,
including Mr. Boston: Official Bartender’s & Party Guide.
In addition, one declarant, Mr. Anthony Capomaccio, states
he has more than thirty years of experience in the
bar/nightclub industry; that he searched the online indexes
of recently published works at the top of the Amazon.com
sales charts for “bartending”; and that he did not locate
any entry for “porn star” or “pornstar” in the indexes of
these works available online.
The declarations of these individuals, particularly
those who have long tenure in the entertainment and
Ser. No. 85006865
11
hospitality industries, are probative especially in view of
the fact that the individuals reside in different parts of
the United States and the length of time some of them have
spent in this industry. In light of their relevant
experience and time in the industry, they cannot be readily
dismissed as self-serving, and as establishing only that
these seven individuals are not familiar with a “pornstar”
cocktail (as the examining attorney urges us to do) and
that the referenced books with cocktail recipes do not
contain the term “pornstar.” Thus, we do not completely
discount the declarations but give them the probative
weight they are due in our deliberations.
Applicant also maintains that the examining attorney
must demonstrate that a “substantial portion” of the
relevant consuming public views the mark as descriptive,
citing Rockland Mortgage Corp. v. Shareholders Funding Inc.
835 F.Supp. 182, 30 USPQ2d 1270 (D. Del. 1993)5, and that
the examining attorney has not done so. Applicant has not
cited any Federal Circuit or relevant Board case in support
of its argument that the examining attorney must
demonstrate that a “substantial portion” of the relevant
consuming public views the mark as descriptive, and we have

5 Applicant also cites In re Recovery, Inc., 196 USPQ 830 (TTAB
1977) but Recovery does not support the proposition that a
“substantial portion” of the relevant consuming public must view
the mark as descriptive.
Ser. No. 85006865
12
not been able to locate one. The Federal Circuit, our
primary reviewing court, requires that for purposes of
registration, descriptiveness must be determined from the
perspective of the relevant class or classes of actual or
prospective customers of applicant's goods. See In re
Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed.
Cir. 1987). See also In re Nett Designs Inc., 236 F.3d
133, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“The perception
of the relevant purchasing public sets the standard for
determining descriptiveness”); In re Abcor Development
Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (CCPA 1978)
(“descriptiveness ... is to be determined from the
standpoint of the average prospective purchaser”). The
case law reflects that the “substantial portion”
requirement is a requirement to establish materiality, and
materiality is not a necessary element under Section
2(e)(1). Cf., In re Miracle Tuesday, LLC, 695 F.3d 1339,
104 USPQ2d 1330, 1334 (Fed. Cir. 2012) (“The third and
final element of a Section 2(e)(3) refusal focuses on
materiality and asks ‘whether a substantial portion of the
relevant consumers is likely to be deceived’ by the mark's
misrepresentation of a goods/place association.”). We
hence do not accept applicant’s contention that the
examining attorney must demonstrate that a “substantial
Ser. No. 85006865
13
portion” of the relevant consuming public views the mark as
descriptive.
Upon consideration of the evidence of record and the
above, we find that applicant has overcome the prima facie
case of descriptiveness established by the examining
attorney largely through its declarations from seven
individuals in the hospitality and entertainment
industries. The declarations are from individuals who have
had significant experience in the industries, are not
limited to one geographic area and are based not only on
their experience but also on a review of other reference
materials, issued prior to the date of their declarations
and at the time of their declarations. In contrast, the
examining attorney’s evidence consists largely of a handful
of recipes taken from web sites. He has not presented any
publications, references in newspapers or magazines, or
even recipe books which refer to or contain a recipe for a
“pornstar” cocktail. After weighing this evidence, and
considering the sources of the examining attorney’s
evidence, we have doubts as to whether the average
prospective purchaser of applicant’s goods would
immediately understand that applicant’s liquor could be
used to make a cocktail known as a “pornstar.” Because we
have doubt as to the mere descriptiveness of the mark in
Ser. No. 85006865
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connection with the identified goods, we resolve such doubt
in applicant's favor and pass the mark to publication. In
re The Stroh Brewery Co., 34 USPQ2d 1796, 1797 (TTAB 1994)
(“When doubts exist as to whether a term is descriptive as
applied to the goods or services for which registration is
sought, it is the practice of this Board to resolve doubts
in favor of the applicant and pass the mark to publication
with the knowledge that a competitor of applicant can come
forth and initiate an opposition proceeding in which a more
complete record can be established.”).
Decision: The refusal to register is reversed.