California Wineries Denied Effort to Trademark “BIG SIX” for Wine Products
Plata Wine Partners here in California recently attempted to register the trademark “BIG SIX” for their wine products. However, the US Patent and Trademark Office (“USPTO”) denied registration of the trademark as being too “generic.” Indeed, the Trademark examiner even refused registration for the Supplemental Register. On appeal, the Trademark Trial and Appeal Board affirmed. See In re Plata Wine Partners, LLC, Case No. 87292254 (August 22, 2019). As a potential trademark, “BIG SIX” is another good example of how generic and merely descriptive words do not make good trademarks and will result in a denial from the USPTO. An experienced San Diego corporate attorney can provide advice and counsel on how to strengthen proposed trade and service marks and the methods of enhancing an application if you are serious about using a generic/descriptive mark.
In general, trade and service marks must be unique and distinctive enough to identify the commercial source of the goods or services. Descriptive words generally do not function in that manner. In the mind of the consumer, the descriptive words are just that — descriptive words. Likewise, generic words do not function in the minds of the consumer as the identity of the maker/provider of the goods or services. A few somewhat famous examples include:
- CHOCOLATE FUDGE
- LITE BEER
In each example, the words are generic and merely describe what the product is, not what business makes or provides the product. Further, within certain consumer groups, a proposed mark can be generic and merely descriptive. An example here would be the proposed trademark BUNDT. For those who bake cakes, “bundt” is a type of pan used to make a certain kind of cake. Thus, the word is generic and descriptive of a certain kind of cake (at least to the consuming public that makes cakes). As such, the USPTO denied registration to the company that sought to trademark the word BUNDT.
In the case of Plata Wine Partners, this was the problem with the proposed “BIG SIX” trademark. Among the wine buying public, “big six” generally refers to the six most commonly used grape varieties and the wines that come from using those types of grapes. Plata attempted to rebut the claim, but the Trademark examiner was not persuaded and neither was the Trademark Trial and Appeal Board.
That being said, sometimes over a long period of time and use, descriptive words can become a unique identifier in the mind of the consumer. This is the process by which words come to have a “secondary meaning.” In the case of Plata Wine Partners, they originally filed an intent-to-use trademark application. That means that Plata has not been using the mark in commerce. For this reason, Plata could not argue that “BIG SIX” had any secondary meaning with wine-buying consumers. It is possible that, if Plata begins to use the mark in commerce with its wine products, the “BIG SIX” mark might eventually obtain a secondary meaning, but that will take some time, marketing, and effort by Plata. There is risk here, though, because a generic word or phrase can never be registered as a trademark even if the words/phrase obtains secondary meaning with consumers. Again, advice and counsel from a trusted San Diego corporate attorney should be sought.
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For more information, contact attorney Michael Leonard, Esq., of San Diego Corporate Law. Mr. Leonard can be reached at (858) 483-9200 or via email. Mr. Leonard can assist with the formation of your business entity — corporations, LLCs, and other forms — financing through the sale of debt and equity securities, mergers and acquisitions, contract drafting and review including commercial leases, and establishment and licensing of trademarks, copyrights, and trade secrets. Mr. Leonard has been named “Best of the Bar” by the San Diego Business Journal for four years running. Like us on Facebook.