Durney Winery Corp.

Trademark Trial and Appeal Board

Dec 20, 2001

No. 75570906 (T.T.A.B. Dec. 20, 2001)

12/20/01 Paper No.
CEW

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Durney Winery Corporation
___________

Serial Nos. 75/704,360 and 75/570,906
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John S. Hale of Hale & Gipple for applicant.

Zhaleh Sybil Delaney, Trademark Examining Attorney, Law
Office 101 (Jerry Price, Managing Attorney).
____________

Before Quinn, Walters and Rogers, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

Durney Winery Corporation has filed two trademark
applications to register the marks HELLER VINEYARD1 and
HELLER ESTATES2 for “wine.” The applications include
disclaimers of, respectively, VINEYARD and ESTATES.
The Trademark Examining Attorney has issued a final
refusal to register under Section 2(e)(4) of the

1 Serial No. 75/704,360, in International Class 33, filed May 13, 1999,
based on an allegation of a bona fide intention to use the mark in
commerce.

2 Serial No. 75/570,906, in International Class 33, filed October 14,
1998, based on an allegation of a bona fide intention to use the mark in
commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial Nos. 75/704,360 and 75/570,906

2
Trademark Act, 15 U.S.C. 1052(e)(4), on the ground that
HELLER is a surname and each of applicant’s marks is
primarily merely a surname.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register in
each application.
It is the Examining Attorney's position that the
primary significance of each of applicant's marks is that
of a surname. First, the Examining Attorney contends
that “Heller” is primarily merely a surname. In support
thereof, she has made of record surname listings of
“Heller” from Phonedisc Powerfinder USA One 1998 (4th
edition), a nationwide computerized database of names and
phone numbers, showing 12,645 individuals, out of
approximately 115 million listings, with this surname.
She has also submitted numerous excerpts of articles
retrieved from the LEXIS/NEXIS database, all of which
demonstrate use of the term “Heller” as a surname.
Regarding the mark HELLER VINEYARD, the Examining
Attorney contends that VINEYARD is highly descriptive, if
not generic, in connection with wine. As proof, she
submitted a dictionary definition of “vineyard” as “land

Serial Nos. 75/704,360 and 75/570,906

3
devoted to the growing of grapevines,”3 and excerpts of
articles retrieved from the LEXIS/NEXIS database
demonstrating use of the term “vineyard” in connection
with wine and wineries. The Examining Attorney also
submitted copies of six third-party registrations for
marks identifying wines that include the term VINEYARD,
and four of the marks precede the term VINEYARD with what
the Examining Attorney contends is a surname.4 Each of
these marks is registered on the Supplemental Register or
on the Principal Register under Section 2(f), and each
includes a disclaimer of VINEYARD.
Similarly, regarding the mark HELLER ESTATES, the
Examining Attorney contends that ESTATES is highly
descriptive, if not generic, in connection with wine. As
proof, she submitted the following excerpt from The Wines
of America, by Leon D. Adams (Houghton Mifflin Company,
1973):
What does “Estate Bottled” on wine labels mean?
Originally this was the rare designation
permitted only for use by the small wine-growing
estates. … But recent Federal rulings in
individual cases have allowed certain vintners
to label whole assortments of wines as “Estate
Bottled” when the grapes came from vineyards
they do not own … [t]he rulings only limit

3 The Complete Beverage Dictionary, 2nd edition.

4 PHELPS VINEYARD, SHEA VINEYARD, PONZI VINEYARDS, and SANGIACOMO
VINEYARD.

Serial Nos. 75/704,360 and 75/570,906

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“Estate Bottled” to mean that the vineyards are
in the same county as the winery and that the
grapes are grown under the winery’s control.

She also submitted excerpts of articles retrieved from
the LEXIS/NEXIS database demonstrating use of the term
“estate” and “estates” in connection with wine and
wineries.
The Examining Attorney concludes that the primary
significance of HELLER is as a surname, and that VINEYARD
and ESTATES in the respective marks neither detract from
that surname significance nor render the marks HELLER
VINEYARD and HELLER ESTATES more than primarily merely
surnames.
On the other hand, applicant contends that the
primary significance of HELLER is not as a surname,
stating that HELLER is not a common surname, it does not
have the clear look and feel of a surname, and it has
other meanings. Applicant submitted two separate
dictionary definitions of “heller” as “a person who
behaves recklessly”5 and “a small coin formerly current in
Germany.”6
Additionally, applicant contends that neither
VINEYARD nor ESTATES is generic in connection with wines

5 The American Heritage Dictionary, 3rd ed., 1993.

6 The Compact Edition of the Oxford English Dictionary, vol. 1, 1971.
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and, thus, even if HELLER is a surname, the marks in
their entireties are registrable. Applicant argues,
further, that, regardless of whether the terms VINEYARD
and ESTATES are generic or descriptive, the PTO has
registered, for wines, marks that include disclaimers of
those terms. In support of this statement, applicant
submitted copies of third-party registrations of marks
for wines that include the disclaimed terms VINEYARD and
ESTATE, respectively. Many of these registrations are
not pertinent because the marks clearly do not involve
surnames, include design elements, or are on the
Supplemental Register or on the Principal Register under
Section 2(f). However, there are a small number of
third-party registrations in this submission that are for
marks that appear to be surnames followed by either
VINEYARD or ESTATE.7 These marks are on the Principal
Register and include a disclaimer of VINEYARD or ESTATE.
It is well established that the Office has the
burden of establishing a prima facie case that a term is
primarily merely a surname, and that the test for
determining whether a mark is primarily merely a surname

7 For example, COLLINS VINEYARD, CUTRER VINEYARD, KENDON ESTATE,
CRANSWICK ESTATE, MISCHLER ESTATES, PELLER ESTATES, LEETON ESTATE, and
GAUER ESTATE VINEYARD.

Serial Nos. 75/704,360 and 75/570,906

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is the primary significance of the mark as a whole to the
purchasing public. In re BDH Two Inc., 26 USPQ2d 1556
(TTAB 1993) and cases cited therein. As stated by our
principal reviewing court, the question of whether a mark
is primarily merely a surname can only be made on a case-
by-case basis.8 In
re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ
652, 653 (Fed. Cir. 1985). Further, the inclusion in a
mark of a generic or merely descriptive term does not
preclude its surname significance if, when considered as
a whole, the primary significance of the mark to the
purchasing public is that of a surname. See In re
Hutchinson Technology Inc., 852 F.2d 552, 7 USPQ2d 1490,
1492 (Fed. Cir. 1988); In re Woolley's Petite Suites, 18
USPQ2d 1810, 1812 (TTAB 1991); and In re E. Martinoni
Co., 189 USPQ 589, 591 (TTAB 1975). See also In re
Hamilton Pharmaceuticals Ltd., 27 USPQ2d 1939, 1942-43
(TTAB 1993); and In re Pickett Hotel Co., 229 USPQ 760,
761-62 (TTAB 1986).

8 The imperative to consider each case on its particular facts is
readily apparent in this case where both the Examining Attorney and
applicant have cited third-party registrations, which would appear to be
contradictory in support of their respective positions. Clearly, we do
not know the facts in those cases and, thus, we rely on the facts
herein.
Serial Nos. 75/704,360 and 75/570,906

7
The Examining Attorney has clearly established,
prima facie, that the primary significance of HELLER is
as a surname. Applicant’s evidence of obscure meanings
of the term “heller” does not persuade us otherwise.
Further, it is not necessary for us to determine that
HELLER is a “common” surname.
We disagree with applicant's assertions that the
addition to HELLER of VINEYARD and ESTATES, respectively,
renders the marks in their entireties not primarily
merely surnames. As the evidence establishes, the terms
VINEYARD and ESTATES are at least merely descriptive of
wine. As applicant is undoubtedly aware, numerous
wineries and other wine-makers use these terms, in both
the singular and plural, as essentially generic
designations for the place or establishment where wine is
produced. Additionally, with respect to ESTATE, wineries
and wine-makers use this term to signify that they
control or own the vineyards which are the source of the
grapes for the identified wine. Thus, as a synonym for
winery, it clearly cannot be disputed that any wine
producer, including applicant, has the right to use the
words VINEYARD or ESTATES to denote the place,
establishment and/or entity where its wine is produced.
Similarly, as a synonym for vineyards under the control
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of the winery or wine-maker, any wine producer has the
right to use the word ESTATE. As such, the addition of
the highly descriptive, if not generic, terms VINEYARD
and ESTATES to the term "HELLER," which the Examining
Attorney has shown has primarily merely a surname
connotation, simply does not create marks with other than
surname significance when each is designation is
considered as a whole. The primary significance of each
such designation, in its entirety, is only that of a
surname rather than any other meaning asserted by
applicant.
Decision: The refusal under Section 2(e)(4) of the
Act is affirmed in each application.