Mark derived from initials of generic wine varietals held to be inherently distinctive

In a precedential opinion, Baroness Small Estates Inc v American Wine Trade Inc (Cancellation No 92051369, September 17 2012), the US Trademark Trial and Appeal Board (TTAB) has denied a petition to cancel a registration for the mark CMS for wine, finding that the mark was neither generic nor merely descriptive despite its use as an abbreviation for a cabernet sauvignon, merlot and Syrah wine blend by other wine makers.

The respondent first adopted CMS as a trademark in 2001 in connection with a red wine blend of cabernet, merlot and Syrah varietals, and later expanded use of the mark to a white wine blend of chardonnay, marsanne and sauvignon blanc. The petitioner, a competitor in the wine-selling business, sought to cancel the respondent’s registration on the ground that the mark was generic or at least merely descriptive.

As to the genericness issue, the petitioner contended that the public understood cabernet, merlot and Syrah to be generic names of wine varietals, and thus consumers would understand CMS to refer to those generic terms. In support of this argument, the petitioner submitted internet evidence of third-party use of the term 'CMS' for similar wine blends by other wine makers, as well as a definition of 'CMS' as 'Cabernet Merlot Syrah' from the website Abbreviations.com.

While acknowledging that the respondent’s mark was derived from the generic names for wine varietals, the TTAB noted that “the fact that a term is derived from individual generic words or even a listing of generic words does not necessarily make the derived term generic”. Rather, the proper inquiry is whether the initials are also generally recognised and used as an accepted abbreviation for the generic terms themselves by the consuming public. The TTAB found that the evidence of third-party use submitted by the petitioner was mixed and failed to show to extent to which the public had been exposed to the cited uses, particularly because many of the third parties had ceased use of CMS upon the respondent’s objection. Therefore, the petitioner’s evidence was insufficient to show that the relevant public understood CMS as generic.

The TTAB similarly dismissed the petitioner’s descriptiveness argument, noting that the mark could be considered merely descriptive only if consumers would immediately understand that wine associated with the mark contained those particular varietals. Although some consumers might have believed the mark was derived from the varietals comprising the wine, “the process of recognising that derivation requires some thought”, which is “the very essence of a suggestive mark”. The TTAB thus concluded that the respondent’s mark was inherently distinctive and dismissed the petition.

Charlene R Swartz, Kilpatrick Townsend & Stockton LLP, Atlanta