Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE LARIOS, S.A.
Serial No. 74/285,865
March 30, 1995
Hearing: October 5, 1994
Kenneth D. Battle
Trademark Examining Attorney
Law Office 14
(R. Ellsworth Williams, Managing Attorney)
Before Seeherman, Hohein and Hairston
Administrative Trademark Judges
Opinion by Hohein
Administrative Trademark Judge
Larios, S.A., a Spanish corporation, has filed an application in which it initially sought to register the mark "GRAN VINO MALAGA LARIOS" and design, as reproduced at left below, for "Malaga sweet wine," based upon its ownership of a Spanish registration for the mark "VINO DE MALAGA LARIOS" and design, as illustrated at right below, for "Malaga wine": [FN1]
The Examining Attorney, diligently noting the discrepancy between the terminology "GRAN VINO" and "VINO DE" in the above marks, refused registration of applicant's "GRAN VINO MALAGA LARIOS" and design mark, stating in his first Office action that:
Registration is refused because the mark Gran Vino Malaga Larios and design shown on the drawing differs from the mark Vino De Malaga Larios and design shown on the certified copy of the foreign registration. Trademark Act Section 44, 15 U.S.C. Section 1126. The drawing must be a substantially exact representation of the mark as it appears in the foreign registration certificate. United Rum Merchants Ltd. v. Distillers Corp. (S.A.) Ltd., 9 USPQ2d 1481 (TTAB 1988); 37 C.F.R. Section 2.51; TMEP section 1011 [sic]. The applicant cannot amend the drawing to conform to the display of the mark in the foreign registration because such an amendment would materially alter the character of the mark. 37 C.F.R. 2.72(a) and (d).
Applicant, disputing the Examining Attorney's material alteration contention, filed in response a substitute drawing so as to amend the mark which it seeks to register to "VINO DE MALAGA LARIOS" and design, as depicted below: [FN2]
The Examining Attorney, however, refused to accept the amendment of the mark. Instead, the Examining Attorney issued a final refusal on the ground that the mark "VINO DE MALAGA LARIOS" and design shown on the substitute drawing constitutes a material alteration of the mark "GRAN VINO MALAGA LARIOS" and design shown on the drawing initially submitted with the application.
Applicant has appealed. Briefs have been filed and an oral hearing was held. We reverse the refusal to register.
As a preliminary matter, however, the Examining Attorney is correct that, inasmuch as the sole basis under which applicant seeks registration is Section 44(e) of the Trademark Act, compliance with Trademark Rule 2.51(a)(3) is required. Such rule specifically requires that:
In an application under section 44 of the Act, the drawing of the trademark shall be a substantially exact representation of the mark as it appears in the drawing in the registration certificate of a mark duly registered in the country of origin of the applicant.
*2 Here, we concur with the Examining Attorney that the mark "GRAN VINO MALAGA LARIOS" and design shown on the drawing originally filed with the application is not, strictly speaking, a substantially exact representation of the mark "VINO DE MALAGA LARIOS" and design depicted in applicant's foreign application. We recognize that the latter mark is a label design and, as stated in TMEP § 1009.01, the substantially exact representation standard permits a limited degree of variance, such as deletion of inconsequential elements like net weight and similar information regarding contents. [FN3] However, in the depiction of the mark sought to be registered, the words "GRAN VINO" and "VINO DE," given their sufficiently prominent arrangement in the respective composite marks, constitute design elements which simply are not substantially the same in sound, appearance, meaning or commercial impression. Consequently, when the respective marks are considered in their entireties, the mark "GRAN VINO MALAGA LARIOS" and design shown on the initial drawing is not a substantially exact representation of the mark "VINO DE MALAGA LARIOS" and design illustrated in the foreign registration. [FN4] See, e.g., In re Abolio y Rubio S.A.C.I. y G., 24 USPQ2d 1152, 1154 (TTAB 1992) and In re Wine Society of America Inc., 12 USPQ2d 1139, 1141 (TTAB 1989). [FN5]
This brings us to consideration of the stated ground of refusal in this case. Amendments to the description or drawing of a mark sought to be registered pursuant to Section 44(e) are governed by Trademark Rules 2.72(a) and (d), which respectively provide that:
(a) Amendments may not be made to the description or drawing of the mark if the character of the mark is materially altered. The determination of whether a proposed amendment materially alters the character of the mark will be made by comparing the proposed amendment with the description or drawing of the mark as originally filed.
(d) In applications under section 44 of the Act, amendments may be permitted only if warranted by the description or drawing of the mark in the foreign registration certificate.
Thus, whether applicant's foreign registration provides a basis, in the circumstances of the present application, for registration in the United States of its "VINO DE MALAGA LARIOS" and design mark depends upon whether amendment of the drawing of the "GRAN VINO MALAGA LARIOS" and design mark to the former constitutes a material alteration of the latter. [FN6] See In re Abolio y Rubio S.A.C.I. y G., supra at 1155.
The Board, in Visa International Service Association v. Life-Code Systems, Inc., 220 USPQ 740, 743-44 (TTAB 1983), articulated the following test for determining whether a change in a mark constitutes a material alteration thereof:
The modified mark must contain what is the essence of the original mark, and the new form must create the impression of being essentially the same mark. The general test of whether an alteration is material is whether the mark would have to be republished after the alteration in order to fairly present the mark for purposes of opposition. If one mark is sufficiently different from another mark as to require republication, it would be tantamount to a new mark appropriate for a new application.
*3 The material alteration test, as is apparent from the above, is not quite as rigorous as the substantially exact representation standard and thus allows for a bit more leeway or flexibility with respect to permissible change in a mark and the concomitant amendment of the drawing thereof.
Applying the material alteration test to the mark shown on the substitute drawing filed by applicant, we agree with applicant that the amendment it seeks is allowable. As applicant points out, the definitions submitted with its reply brief from Cassell's Spanish and English Dictionary "indicate that VINO DE translates to 'wine of' and GRAN VINO translates to 'great wine' ". [FN7] While such terms plainly have different meanings, we disagree with the Examining Attorney's assertion that "the terms create different and distinct connotations when viewed in light of the whole mark[s]." Instead, given the manner in which those terms are used in the overall design schemes of the respective marks, including the identity in both their relative size and their arrangement immediately above the words "MALAGA LARIOS," we think that substituting "VINO DE" for "GRAN VINO" changes nothing of trademark significance. [FN8] The modified mark "VINO DE MALAGA LARIOS" and design still contains the essence of the mark "GRAN VINO MALAGA LARIOS" and design, and creates the impression of being essentially the same mark. The modified mark is also warranted by the mark in the foreign registration.
Applicant, in this regard, maintains in its initial brief that:
The dominant portion of both marks is the phrase "MALAGA LARIOS", and the accompanying tombstone shape is exactly the same, as is the typeface and positioning of the letters. Additionally, both marks employ a grape design above the words MALAGA LARIOS, and a banner design below the same words.
Consequently, the character of the original mark is not materially altered by the modified mark since, as applicant additionally points out in its initial brief:
Merely changing the background words GRAN VINO to VINO DE does not take away from the dominant words MALAGA LARIOS, nor does it affect the overall design which accompanies the words. The commercial essence of the mark remains intact, and the amendment is warranted by the drawing of the mark in the foreign registration.
Furthermore, we observe that had applicant's original mark been published, [FN9] the change in the modified mark would not require republication in order to fairly represent such mark for opposition. We note, moreover, that a new search of the modified mark would not be required [FN10] given, among other things, the presence of the term "VINO" in both marks and the high degree of descriptiveness (and resultant lack of distinctiveness) inherent in the phrases "GRAN VINO" and "VINO DE". Accordingly, amendment of the drawing is permissible inasmuch as the mark "VINO DE MALAGA LARIOS" and design is not a material alteration of the mark "GRAN VINO MALAGA LARIOS" and design.
*4 Decision: The refusal to register on the ground that the mark shown on the substitute drawing constitutes a material alteration of the mark shown on the drawing initially filed with the application is reversed.
Administrative Trademark Judges, Trademark Trial and Appeal Board
FN1. Ser. No. 74/285, 865, filed on June 18, 1992, which seeks registration under Section 44(e) of the Trademark Act, 15 U.S.C. § 1126(e), in light of Spanish Reg. No. 1,025,907, issued on November 5, 1983. As filed, the application respectively contains the following disclaimer and description:
No claim is made to the exclusive right to use "GRAN VINO", "MALAGA" and "SWEET WINE" apart from the mark as shown.
The English translation of the words "Gran Vino" is "great wine". The other words in the mark are not translatable.
FN2. Although applicant neglected to set forth appropriate modifications to the disclaimer and English translation of the mark sought to be registered, applicant did amend the application to include the following statement, which the Examining Attorney had requested:
The lining on the mark is a feature of the mark and is not intended to indicate color.
FN3. We note, for instance, that the Examining Attorney understandably has not required that a drawing of the mark to be registered contain all wording shown on the mark in applicant's foreign registration, particularly with respect to those words which appear in the smallest-sized type. Instead, it is apparent that the Examining Attorney would otherwise find acceptable a drawing of the mark to be registered if, at a minimum, it includes the most prominent wording as displayed in the mark appearing in applicant's foreign registration.
FN4. As the Board indicated in United Rum Merchants Ltd. v. Distillers Corp. (S.A.) Ltd., supra at 1483-84, failure to apply strictly the substantially exact representation standard would result in a perversion of Section 44(e):
Further reinforcing our view that the exception to registration procedure set forth in Section 44 of the Act should be construed narrowly is our concern that a foreign applicant might otherwise be able to obtain a U.S. registration for a mark he would not be entitled to register in his country of origin. This could result in a perversion of Section 44(e) from a means of obtaining protection in the U.S. for a foreign registered mark to a means of bootstrapping a foreign registration into a registration for a different mark in the United States.
FN5. We observe, however, that notwithstanding the admonition in the latter case that the correct standard to be applied in this respect is the substantially exact representation test, TMEP § 1009.01 reflects the inappropriate "material alteration" standard and thus needs to be revised.
FN6. As noted earlier, appropriate amendment of the disclaimer and the description of the mark's English translation would also be necessary if amendment of the drawing is permitted. Applicant, subsequent to the oral hearing in this matter, submitted such an amendment and the application is accordingly considered to be so amended.
FN7. Although the submission of copies of the pages containing such definitions is technically untimely under Trademark Rule 2.142(d), we have considered the evidence in our evaluation of this appeal since judicial notice may be taken of dictionary definitions. See, e.g., Hancock v. American Steel & Wire Co. of New Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953) and University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed.Cir.1983).
FN8. Such words, in terms of the trademark import or source-signifying capacity which they project as typically employed on labels for wine, are analogous to the common designations "TABLE WINE" and "FINE WINE". Admittedly, the meanings are different, but the differences in trademark significance, if any, are inconsequential.
FN9. While the test enunciated in Visa Int'l Service Ass'n v. Life-Code Systems, Inc., supra, refers to republication, the test is equally applicable, as both applicant and the Examining Attorney properly recognize, to amendments made to the drawing of a mark prior to publication. As aptly expressed in TMEP § 807.14(a), quoted by the Examining Attorney in his brief:
[T]he examining attorney should evaluate any prepublication amendment as if it were being considered after publication and should determine whether the amendment would so alter the commercial impression that republication would be required. If the amendment would change the essence of the mark, the examining attorney must reject the amendment under the material alteration standard.
FN10. Although the Examining Attorney contends to the contrary in his brief, it is plain that, as to both the original and the modified marks, a search of the register for marks citable as a bar to registration under Section 2(d) of the statute, 15 U.S.C. § 1052(d), would include searching for references containing the term "VINO".