Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 STABILISIERUNGSFONDS FUR WEIN, H. SICHEL SOEHNE GMBH AND DEINHARD & CO.
PETER MEYER WINERY GMBH
August 22, 1988
Hearing: May 18, 1988
Opposition No. 70,176 to application Serial No. 443,144 filed September 6, 1983.
Milo G. Coerper and Cushman, Darby & Cushman for Stabilisierungsfonds fur Wein, H. Siechel Soehne GmbH and Deinhard & Co.
Ladas & Parry for Peter Meyer Winery GmbH
Before Sams, Rooney and Simms
Opinion by Simms
Stabilisierungsfonds fur Wein (hereafter SFW or Wine Stabilization Fund), a public corporation of the Federal Republic of Germany, H. Sichel Soehne GmbH (Sichel) and Deinhard & Co., a private German corporation, have opposed the application of Peter Meyer Winery GmbH, a joint stock company of the Federal Republic of Germany, to register the mark GOLDENER TROPFEN for wines. [FN1] In the opposition, it is alleged that SFW is established by statute to promote the quality of wines produced in certain defined viticultural areas of West Germany and to promote the world distribution of such wines; that SFW has, pursuant to statutory authority, undertaken to protect against misuse of names of geographic origin for German wines; that many German wines designated by names of geographic origin, which function as certification marks, have been exported to and sold in the United States; [FN2] that SFW is the owner of the common law certification marks GOLDTROPFCHEN and PIESPORTER GOLDTROPFCHEN; that these are geographic names of viticultural areas in Germany and function to certify origin in a geographic region in Germany as well as the standards and characteristics of quality; that applicant's mark GOLDENER TROPFEN falsely implies and deceptively designates that applicant's wine originates in the geographic areas Goldtropfchen and Piesporter Goldtropfchen and complies with the characteristics and quality of wines entitled to use those marks; that the public and the trade will confuse applicant's wine with the goods of those authorized by SFW to use the common law certification marks; that these certification marks were used by Sichel and Deinhard prior to applicant's use; and that, in consequence of the above, applicant's mark is geographically deceptively misdescriptive under Section 2(e)(2) of the Act, 15 U.S.C. 1052(e)(2); that applicant's mark is deceptive and falsely suggests a connection with the opposers in violation of Section 2(a) of the Act, 15 U.S.C. 1052(a); that applicant's mark so resembles the pleaded certification marks as to be likely to cause confusion in violation of Section 2(d) of the Act, 15 U.S.C. 1052(d); and that a fraud is being perpetrated on the Patent and Trademark Office because of the false declaration filed in support of the application known by applicant to be untrue. Applicant has denied the essential allegations of the opposition but has admitted, in effect, the standing of SFW.
*2 The record of this case consists of testimony (and exhibits) taken by opposers, and the application file. Applicant has taken no testimony or submitted any other evidence. Opposers have filed a brief and only counsel for opposers appeared at the oral hearing of argument held in connection with this case.
According to the testimony of an employee of the Wine Stabilization Fund, Franz Michel, employed by the Fund for 25 years, that institution is a semi-governmental agency established by German law designed to foster the quality and sales of German wines. Funded by a levy by the West German government on wine growers and the wine trade, SFW is the owner of numerous certification mark registrations in this country. SFW is also the owner of the common law certification mark GOLDTROPFCHEN, officially recognized as a geographical designation of origin by the West German government. [FN3] According to the testimony, the word GOLDTROPFCHEN, the diminutive of "golden drop," i.e., "tiny or little golden drop," is used to identify the geographic source of a famous kind of German wine. Mr. Michel's testimony and other testimony support opposers' position that Goldtropfchen is the most famous vineyard near the town of Piesport, in a specified viticultural region called Mosel-Saar-Ruwer, and is one of the most highly regarded and internationally renowned geographic origins of German wine. The wine from this vineyard is one of the best German wines and commands a higher price than wines from other vineyards in this region which are sold under the label of PIESPORTER MICHELSBURG, Michelsburg being the "grosslage" ("greater or collective vineyard") covering a number of vineyards in Piesport and adjoining villages. Contrary to the custom in this country of selling domestic wines primarily by the producer's name and the varietal name, most German wines are sold by the designation of geographic origin, often combined with the varietal name.
Mr. Michel further testified that any grower who grows wine in the vineyard of Goldtropfchen is entitled under German law to use that designation, as are bottlers who buy wine from that vineyard, provided that at least 85 percent of the wine comes from the vineyard while the remaining 15 percent must come from the region. According to his testimony, the name PIESPORTER (the adjectival form of the community or village of Piesport, meaning "from Piesport"), must, according to German law, be added to the label. Over one hundred different growers and bottlers use the designation PIESPORTER GOLDTROPFCHEN on their wine. There are a number of importers of this wine.
Deinhard & Co. is a wine grower which exports wine to this country, including wine bearing the name PIESPORTER GOLDTROPFCHEN, amounting to 5,600 cases per year. The remaining opposer, Sichel, has bottled and exported PIESPORTER GOLDTROPFCHEN wine to this country since at least 1959 (and probably since 1934). [FN4] In 1985, Sichel sold 5,030 cases of PIESPORTER GOLDTROPFCHEN wine in the United States. Finally, while the testimony is clear that the community name PIESPORTER is always used on wine labels with the name GOLDTROPFCHEN, there is also testimony that the name GOLDTROPFCHEN may appear alone on wine lists and that purchasers, restaurant patrons and the trade have ordered this kind of wine by the name GOLDTROPFCHEN alone.
*3 With respect to the issues of priority and likelihood of confusion, it is clear that the terms PIESPORTER GOLDTROPFCHEN and GOLDTROPFCHEN have been used in this country by persons other than SFW as common law certification marks since prior to the filing date of applicant's application, the date to which applicant is restricted for purposes of priority in the absence of any evidence of use. In view of the identity of the goods on which the respective terms are used, and because of the obvious similarities in sound, appearance and, at least to German-speaking Americans, meaning, we conclude that the mark GOLDENER TROPFEN is likely to cause confusion, mistake or deception among purchasers with GOLDTROPFCHEN. See Bureau National Interprofessionnel Du Cognac v. International Better Drinks Corp., 6 USPQ2d 1610, 1616-17 (TTAB 1988) (COLAGNAC v. COGNAC). Applicant's mark may be perceived by these persons as a misspelling of the vineyard Goldtropfchen. To those American customers who do not speak German and thus do not know how the respective marks translate into English, we agree with opposers' counsel that both marks may be seen as the familiar word "Gold" "followed by a jaw-breaking string of consonants." (Opposers' brief, 19). In this determination, we have considered the testimony of the fame of the name GOLDTROPFCHEN among the relevant purchasing public and the tendency that purchasers will be confused because less care may be taken in purchasing a product under a famous name. Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1284 (Fed.Cir.1984).
With respect to the ground of deceptiveness, the Board has held that a mark is deceptive within the meaning of Section 2(a) of the Act if it misdescribes the goods, purchasers are likely to believe the misrepresentation, and the misrepresentation would materially affect their decision to purchase the goods. In re Quady Winery Inc., 221 USPQ 1213 (TTAB 1984). If a mark is the name of a place known generally to the relevant public, purchasers who encounter goods bearing the mark would think that the goods originate in that place, the goods do not come from the named place, and the deception is material to the purchasing decision, then the mark is deceptive under Section 2(a) of the Act. If the deception is not material to the purchasing decision, then the mark is primary geographically deceptively misdescriptive under Section 2(e)(2) of the Act. Bureau National, supra, at 1615, and cases cited there. We believe that purchasers who encounter applicant's relatively inexpensive German table wine under the designation GOLDENER TROPFEN are likely to believe that the mark is a misspelling of the certification mark GOLDTROPFCHEN and that applicant's product therefore is a wine produced from grapes grown in the Goldtropfchen vineyard of West Germany in accordance with the German wine laws and regulations, when in fact applicant's product does not contain wine from this region. [FN5] Because of the renown of the GOLDTROPFCHEN wine amongst the relevant purchasing public, we believe that the deception will be material to the purchasing decision. See Bureau National, supra.
*4 In view of this holding, we need not consider the registrability of applicant's mark under Section 2(e)(2). Nor do we consider the pleaded claims that applicant's mark falsely suggests a connection with opposers under Section 2(a) of the Act and that applicant has committed fraud, because opposers have failed to raise these issues in their brief on the case.
Decision: The opposition is sustained and registration to applicant is refused.
J. D. Sams
L. E. Rooney
R. L. Simms
Members, Trademark Trial and Appeal Board
FN1. Serial No. 443,144, filed September 6, 1983, claiming use since July 15, 1983. In the application it is stated that "GOLDENER" is a German word meaning "gold" or "golden" and that the word "TROPFEN" is a German word meaning "drop" or "drip."
FN2. Section 45 of the Trademark Act, 15 U.S.C. 1127, defines "certification mark" as follows:
The term "certification mark" means a mark used upon or in connection with the products or services of one or more persons other than the owner of the mark to certify regional or other origin, material, mode of manufacture, quality, accuracy or other characteristics of such goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.
FN3. Counsel for opposers indicates in his brief that SFW owns an application to register this certification mark and that that application is being blocked by the opposed application. However, there is no evidence of record to support this statement.
FN4. According to the testimony, this opposer was incorrectly identified in the caption of this proceeding as H. Sichel & Soehne GmbH. Although opposers' counsel has not formally made a motion to amend, applicant's counsel consented to the amendment of the caption of this proceeding during opposers' testimony (Sichel dep., 4). The caption has been amended.
FN5. According to the testimony of Mr. Sichel (at 23), the managing director of Sichel and the author of several books on wine, nothing on the label of applicant's wine would preclude it from being made from grapes grown anywhere in Germany, from any type of grape varieties, or being blended with wine from any region. Mr. Michel testified that, under German law, the word GOLDTROPFCHEN may not be used on so-called table wine but must be used on wine of a higher quality. As noted above, we have no testimony from applicant concerning its product.