Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA747820
`
`Filing date:
`
`05/20/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91225185
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Plaintiff
`NouvEau Inc.
`
`THOMAS O PEYTON
`NOUVEAU INC
`324 FERRY STREET SUITE 204, PO BOX 1685
`LAFAYETTE, IN 47902-1685
`UNITED STATES
`tpeyton@nouv-eau.com
`
`Other Motions/Papers
`
`Thomas O Peyton
`
`tpeyton@nouv-eau.com, peyton.tom@gmail.com
`
`/Thomas O. Peyton/
`
`05/20/2016
`
`Attachments
`
`Amend. Not. of Opp. VINEAU mark Proc. no. 91225185 (2).pdf(1528968 bytes )
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEALS BOARD
`
`In the matter of trademark application Serial No. 86643989
`For the mark VINEAU
`Published in the Official Gazette on October 20 2015
`
`NouvEau Inc.
`V.
`
`Don Sebastiani & Sons International Negotiants CORPORATION CALIFORNIA
`
`AMENDED NOTICE OF OPPOSITION
`
`Proceeding no. 91225185
`
`OPPOSER: NouvEau lI1c., INDIANA CORPORATION, PO Box 1685 Lafayette, IN 47902
`
`The above identified Opposer, NouvEau Inc. (“NouvEau”), will be damaged by registration of
`
`the VINEAU mark shown in the above-identified application and hereby opposes Applicant’s
`
`VINEAU mark in International Class 032 non-alcoholic beverages,
`
`flavored waters and water
`
`beverages for four primary reasons: a) because VINEAU has the same meaning as Eau de Vin, water
`
`of wine or wine water,
`
`that
`
`is the statement of identity for Opposer’s unique product under its
`
`composition of matter patent made generic by Nouveau’s invention, b) because Opposer has prior use
`
`of the statement of identity using water from wine to describe its unique product under various brand
`
`names including Eau de Vin and Aqua Vin Naturale meaning water of wine and natural water of wine,
`
`c) because under the Lanham Act 2(d), Applicant’s proposed mark is confusingly similar if not
`
`identical to Opposer’s equivalent marks in prior use, and d) because Applicant is attempting to do by
`
`trademark what it cannot do by patent. Therefore, VINEAU should not be allowed registration as a US
`
`trademark.
`
`In support of its opposition, Opposer states:
`
`1) VINEAU is clearly recognized in the French language as “wine water” and French
`
`trademarks have existed for Eau De Vin defined as “water wine” (Exhibit 1) since 2005 (Exhibit 2)
`
`and “wine water” (Exhibit 3). Such marks are presently included in the license of Opposer’s French
`
`patent and other intellectual property to a French company. See Statement 3 below.
`
`2) NouvEau clearly owns with 2004 priority rights US Patent T569146-Claim 20 (Exhibit 4), a
`
`unique composition of matter product by process patent,
`
`that filters the liquids remaining after
`
`distillation of alcohol from fermented sugar (fruit) and starch (grain) feedstock to make a gum
`
`patented potable water product. Said sugar includes grapes fermented to make wine whereby the wine
`
`alcohol from its sugars is distilled off the top, to make wine alcohol, leaving on the bottom the water of
`
`

`
`wine that Nous/Eau filters to make its potable water of wine product, hence wine water, a unique
`
`singular product made generic by virtue of Opposer’s product patent. See 37 CFR 2113: Product-By-
`
`Process Claims.
`
`[Elven though product-by-process claims are limited by and defined by the process,
`
`determination of patentability is based on the product itself. The patentability of a
`
`product does not depend on its method of production. If the product in the product-by-
`
`process claim is the same as or obvious from a product of the prior art, the ciaim is
`
`unpatentable even though the prior product was made by a different process. BTCFR
`
`2113: Product-By—Process Claims.
`
`3) NouvEau also owns French Patent 1748835 with the same methods as US Patent 7569146
`
`to make a unique potable wine water which patent has been in practice in France by NouvEau since
`
`2008 and 2009 and marked as French wine water or water from wine (Exhibit 5) and with brand name
`
`“Eau de Vin” as US Trademark serial no. 86810563 and as sold on November 4, 2015 (Exhibit 6).
`
`4) Since 200?, Opposer has been engaged in research and commercial development of its
`
`patented manufactured product referred to as Eau de Vin in both France and the United States (Exhibit
`
`7", 8) and has published its inventions and statement of identity to make wine water and water from
`
`wine on its web site (www.nouv-eau.com) and by reference to its American and French patents in the
`
`public domain. This water from wine product was sold in commerce as early as 2008, and prototype
`
`bottles labeled with the statement of identity “water from wine” as the basis for registered trademark
`
`T7076194 Aqua Vin Naturale (natural water of wine) entered into interstate commerce in 2009 with
`
`label (Exhibit 5 and 9).
`
`5) Appiicanfs proposed VINEAU (wine water) mark is an imitation and willful attempt
`
`to
`
`appropriate by trademark Opposer's patented water of wine product and is substantially if not identical in
`
`name, leading to a false and misleading statement made by Applicant in commerce causing harm to the
`
`Opposer and violating the Lanham Act (counterfeiting)1 with a iikelihood of confusion under the Lanham
`
`Act 2 (d).
`
`In Kellogg Co. V National Biscuit Co. (305 U.S. ll], 59 S. Ct. 109, 83 L. Ed. 7'3 (1938)), it
`
`is clear a product name made generic by a patent is carried with the patented product that manufactures
`
`it until off—pater1t when it comes into the public domain. The Supreme Cotnt noted (note 11 (305 U.S.
`
`111, 59 S. Ct. 109, 83 L. Ed. 73 (1938))
`
`from the cessation of the monopoly and the falling of the
`
`' Under the “Stop Counterfeiting in Manufactured Goods Act." PL 109-181 (2006), the US Department of Justice
`investigates and prosecutes the counterfeiting of intellectuai property and goods (18 USC 2320).
`
`

`
`patented device into the domain of things public that along with the public ownership of the device
`
`there must also necessarily pass to the public the generic designation of the thing which has arisen
`
`during the monopoly.”
`
`6) A trademark cannot serve as a substitute for a patent.
`
`In AJ. Canfield Co. v. I-lonickman,
`
`808 F. 2d 291 (3rd Cir. 1986)), the court notes the nexus between trademark law and patent protection:
`
`The genericness doctrine prevents trademarks from serving as the substitutes for
`patents, and protects the pubiic right
`to copy any non-patented, functional
`characteristic of a competitor's product. See Sears, Roebuck & Co. v. Stiffel
`Co., _:_3_?s _u__$._ 225, 230, 84 S.Ct. 784, 788, 11 L.Ed.2d 661 (1964); Compco Corp. v.
`Day—Brite Lighting, Inc., 3?6 U.S. 236;, 84 S.Ct. 779, 11 L.Ed.2d 669 (1964). Trademark
`law seeks to provide a producer neither with a monopoly over a functional characteristic
`it has originated nor with a monopoly over a particularly etiective marketing phrase.
`Instead the law grants a monopoly over a phrase oniy if and to the extent it is necessary
`to enable consumers to distinguish one producer's goods from others and even then
`only if the grant of such a monopoly will not substantially disadvantage competitors by
`preventing them from describing the nature of their goods. See Ideal Toy Corp. v.
`Plawner Toy Mfg. Corp., 685 F.2d_‘/8, 84 (3d Cir.1982) (trademark law remedies must
`"avoid affording undeserved patent protection"). Accordingly, if a term is necessary to
`describe a product characteristic that a competitor has a right to copy, a producer
`may not effectively preempt competition by claiming that term as its own.
`|_l;igi_._at
`paragraph 55.
`
`7) Opposer has a US government granted patented product monopoly with a functional
`
`characteristic (wine water) and Applicant does not have a “right to copy” Opposer’s unique patented
`
`product by using a confusingly similar generic trademark without license from Now/Eau. Applicant's
`
`mark is generic by itself to simply describe wine flavored water (wine water), which is a combination
`
`of a flavor and a non-descript water source to make a mixture of two or more ingredients and not a
`
`singular unique product. Applicant has no right to copy Opposer’s unique singular product made by
`
`patent which,
`
`in effect, constitutes a patent infringement of Opposer‘s unique patented product by
`
`trademark.
`
`8)
`
`It
`
`is unnecessary for Applicant
`
`to use Winewater to brand or describe its product.
`
`Applicant can select from any trademark name suggestively related to wine, such as “Meritage Water,”
`
`to describe its mixed ingredient wine and water beverage, rather than the generic “wine water”.
`
`9) VINEAU is confusingly similar to Opposer‘s unique singular patented product, brand and
`
`statement of identity and the public will be misled if Applicant's mark is approved to the detriment of
`
`NouvEau’s manufactured product.
`
`Wherefore, Noui/Eau respectfully requests the Board to review Applicant’s appiication to
`
`register VINEAU as a U.S. trademark in light of Oppose1"s evidence herein set forth and find that
`
`

`
`Applicanfs mark is confusingly similar if not identical
`
`to Eau de Vin,
`
`that VINEAU has the same
`
`meaning as Eau de Vin,
`
`that Opposer has established prior use of its unique patented product’s
`
`statement of identity, and that Applicant has attempted to preempt Opposer’s patent by registering the
`
`mark VINEAU in violation of the Lanham Act. App1icant’s registration of the VINEAU mark should
`
`be denied without any further proceedings.
`
`
`
`

`
`CERTIFICATE OF SERVICE
`
`TTABK Opposition No. 91225185
`
`I hereby certify that a true and complete copy of Amended Notice to Opposition has been served on
`Warren Dranit, Attorney for Applicant, Don Sebastiani & Sons International Wine Negociants, by
`transmitting such copy filed electronically with the Trademark Trial and Appeals Board on May 20,
`2016 by email and by certified mail to:
`
`
`
`-5’-
`'
`By:
`Thomas . Peyton, Ph I
`President & CEO
`
`NouvEau Inc.
`
`NouvEau Inc.
`
`PO Box 1685
`
`Lafayette, IN 47902-1685
`(t) (765) 532-3272
`
`(D (765) 423-2748
`(e) tpeyton@nouv-eau.com
`attorney pro se’
`
`Warren L. Dranit
`
`Spaulding, McCul1ogh & Transil LLP
`90 South E Street, Suite 200
`
`Santa Rosa, CA 95402
`drannfifisnflaunconi
`
`to electronic filing:
`Trademark Trial and Appeal Board
`PO Box 1451
`
`Alexandria, VA 223134451
`
`

`
`EXHIBITS 1, 2, 3
`
`FRANCE-Intellectual Property Office (Institut national de la propriété industrielle + INPI)
`
`3aJ dc Vin
`
`EAU DE VIN
`
`F rem h bra PIE!
`
`Mam
`mm:
`
`Frenx: h brand
`
`mum
`mum
`
`wine water
`
`Submitter:
`Number:
`Class:
`status:
`
`LJDR.-1 GROUP Union Agne: UIIUFE1 Cooperatives
`4234?'44
`32‘
`appir: anon pubhsiwed
`
`“MJERVWNE
`
`!.1icha:=.§F’aetzoh:l
`Submitter:
`3329823
`Number:
`3 32 33
`Class:
`status: Not in force
`
`lfatqw Iranwlio
`
`EAU DE VIN
`
`ox.
`
`--
`
`.--«mu.--.:—_:
`
`.-'_\:'.-Jr--.'
`
`‘
`
`'.-E
`
`lhqul fl-Inplu non un IIISIIII
`f-hrnur
`-'-.<.-
`far--.!.
`Classfliuflon UINIC-D
`Produ-is III sorwcos
`. rm .-
`\"r -2-
`I-.--
`_.
`Dlmsann 3»
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`Marlcnulro
`"-
`Humim '
`Snu:
`r.|:l|'!!o -«em-u‘-E9
`DIR do dlp|':l:'ErI'lni5tIomIrH 33'?-I I.‘
`Llou 6| dtpix nu I L'\(‘.'-¢'_".-_::- .:<
`Hmovlewo
`,'-‘xv -< '1 1-""
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`u,-4-.
`. F rr¢\':-5» A --.-r.> .1-. ¢.- _'nr:1sf.
`u_uy_qu( P:-aruellsc
`
`In
`.1Er25-ii-3'-'
`Ftanre . H49:
`92 IHPE - Dérét E42-\.‘tI'a-‘lithe
`FR
`
`32
`A1.’d'C-libel‘: rublushea
`
`Irude marl:
`Lisrol lllflds and slfvktfi
`OWN“
`Renrescnuuvv
`Curn'I-numlu-.nt.n u1IdI'l.|\\
`‘iitllkwih’
`fxh Ihltlull DI’iDI«V
`Plinelll
`HI IQ‘ rI'I.1l Inn 3! ru.-almtralluu hm D sfonnaboa
`Fuhflcnfion
`UFP95-P‘iA!l|
`
`lplu-nlfi
`Hon man
`
`cllcl here 0! II-e I090 In-mu :- vn-_-u ‘
`:lu's trade marl: in the office ol orioin
`
`J nxunadfl
`-.....u.«..
`
`F.-.'-arsam _fi'.-*r.Ic9.‘$I
`
`EAU DE VIN
`
`L_. Trafit mark
`
`Ea_1.I_d§_\‘1£l
`Eau de Vi n
`{nn],a:nn1Anp'|iraIio1I nulllber
`{no} indication larwuao!
`{J 291 Ilvlicaliotl duh
`‘hark Iluwk oifkz
`[:Iao1Filiml lilac!
`um Registration nl'llI:£
`(550) Trade mark HP!
`In D Nice classification
`(urr-mt trade mark status
`
`!-1 :=noJI.i9t of ooods an! servkes
`Classification vusion
`Hark stamiani chlraclar
`
`El FR
`_[_SI1!_Nk__! I_:l_Iss n!,_:gu_:hq_r
`
`

`
`EXHIBIT 4 US PATENT 7569146
`
`PRODUCT BY PROCESS CLAIM
`The patentability of a product does not depend on its method of production.
`
`
`3
`
`\Jl
`
`
`. b_tt_.pms._tlirougl'i a process to separate pasteurized still bottom
`'li'qilid "from solid organic and inorganic components by con-
`tinuously subjecting the still bottom liquid to steps that fur-
`ther separate the organic and inorganic concentrate fractions
`of solids of lesser weight from the still bottom liquid with a
`sequence of steps to produce a predetermined composition
`and solids content in a rendered liquid selected from the group
`consisting of solids separation by centrifugation and evapo-
`ration and rriicrofiltration and ultrafiltration and nanofiltra—
`tion and reverse osmosis issuing said rendered liquid. an
`adjustment of pH step of the rendered liquid to a predeter-
`mined level of pH,_ a pressurized reverse osmosis step through
`a semi-permeable membrane of a molecular weight pore size
`between 50- 100 Dalton producing a reverse osmosis concen-
`trate and a reverse osmosis permeate, and a finishing step to
`the reverse osmosis permeate to yield the potable water prod-
`I
`uct of low molecular weight solids of still bottoms used for
`are
`-xsoi s
`t
`i
`
`
`hmtmassflalsds
`'
`
`Lfnitrd States I-‘alt-.nI
`
`Peyton .
`
`er all.
`
`B_v—produi:ts from fermentation still bottoms
`
`Abstract
`
`[Infill
`
`7,569,146
`August 4, 2009
`
`'I'iii:-. disclosed invention is an improved method for treatiiig ethanol distillation still bottoms by
`ri:-i:ovi:ring_ through solids separation and prcssurmed menilirane filtration: potable water from still
`bottoms for human consumption by bottling or for reuse. and concentratiiig the solids with beneficial
`properties recovered such as chemicals. nutrients and mcclicinals before anaerobic digestion The
`invention is an improved process because it can reduce the volume of solids to manage, recovers the
`water from the fennenlaltoli still bottoms while pasteurized, maintaijis the chemical and physical
`properties of solids for beneficial property rcico\'er_\‘, inipi'oves ethanol and energy efiicieticy. and results
`in clean drseliargi: to the eiivironrniznt including carbon dioxide recovery A bioreactor produces a gas
`rich in methane fuel from the concentrate to power the pressuriaecl tiltration process and an aqueous
`ammonia solution to recover or recycle 'l'l:is invention improves eiivironrnental quality, coiiserves
`energy, and produces a beverage water for bottling that can be of an organic origin with reliable somci:
`and quality
`
`Inventors:
`
`Assigiiee:
`Family ID:
`App]. 340.:
`Filed:
`
`5‘;-yton: Thomas 0. {Lain}-'etlc, IN}. Ahring; Birgitta Riser tlloersholm, DK). Rohold:
`Lars Erik (Odense, DR)
`Noi.n'Eai.i Inc. {LaFa_vcttc_. IN}
`38442999
`
`1 1096.536
`April 27. 200?
`
`

`
`EXHIBIT 5 - WATER OF WINE — sales
`
`2008 sale
`
`2009 Product Laund;
`--flgze E%li,£:1m;a%%%%i%iS;e.-Chicago, March
`
`...w-
`
`

`
`Sales Receipt
`
`Date: I
`Receipt No. i
`
`.III.-_=.I.I_Ie_!.7.eII§I!.:II_?_II_1_§..!
`110415
`i
`
`EXHIBIT 6
`
`NOUVEAU INC
`En.U fie UIN
`
`.
`;
`
`I I
`
`la-t-Ir: _s|=’e=_e_L_a_I=.§I£s__
`
`
`
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`I
`
`4
`fiale made by:
`I
`
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`I
`
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`
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`
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`_ I._-.
`Subtotai
`_Dis_c_ount
`Sales Tax Rate
`SaI9s Tax
`Tptal
`
`i
`I
`._
`I
`'
`
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`
`_
`
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`_
`_ _
`
`_
`
`I
`cm-die :;am No. I
`Check I_\Io.;
`Money Order NCLI
`
`_
`
`_
`
`_ _ _ _
`
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`
`Cash on Dellis.-erg
`I Cre_di_t _ca_rd
`ICI19ck
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`
`Thanks (0: your business!
`. ................................................__III.=.>.-_'.tI,€.aII_!.=IsI__F_'!?..I$.*a5_1§§§:..E:f2IIs!.¥sI_!!I!..!_I5?Et% __________________________________________________..
`
`

`
`EXHIBIT 7
`
`Labeis
`
`Tom Peyton *~ne=,'ton.tom@gn1as§.cdm>
`to F::':narc'
`-
`
`Richard,
`
`Here's the presentation I printed 5 copies to start.
`It may be a iittletoo muci':with the gaps vine border
`and bars butl figured I needed something specific
`for the topic.
`
`i am reworking the non-disc losure to Incl ude an
`engagement for ex pens-es and consulting fas.
`
`Tom Peyton
`
`Thomas O. Peyton. PhD
`AmTec ND!-LO
`PO Box 1685
`Lafayette. IN 47902
`765 532-3272 ceil
`IP55 423-2?43 home office
`
`
`
`E Cognncmpdf
`
`'
`
`Business Development Proflsal
`
`A Table Water from
`
`
`
`as Patent Pending.
`
`Cognac
`Aqua Vin Naturale
`Eau Vin Nature!
`eau de lune
`
`March 2007
`Distttiers H20
`Division of Ambiotueis Ltd.
`PO Box 1635
`Lafayette. IN 47902
`
`Thomas O. Peyton. PhD
`President
`(765) 423-2743
`
`Proprietaty Notice: The contents of this proposal are
`protected under the inlettectual property laws of the
`United States Patent Olfioe and European Patent Office
`
`

`
`EXHIBIT 8
`
`Eau de
`
`Inna;
`
`x
`
`MOT in Bordeaux ~='pe=,-ton.tom@gmait.cams
`to-Jeani.-tar? Cf‘-3ri:E -
`
`Dear ltrtr. Olivier.
`
`fl
`
`IE
`
`38093?
`
`as
`
`It appears Revico wouid benefit with a more concentrate [we would provide atter extractingthe Water but we feel Revise is not the appropriate tccation to
`process or mate a bottied water from distiilation of the wine or brouiile and feel the Distiiterie Cnarantaise Jubert has the space and appropriate setting for a
`test production.
`
`I particularly like the traction brouille that is mucii less acidic with a flavour and rigurethere is doupie this quantity than the brand; distiiied and aiready the
`transport infrastructure to haul clean. 33‘; to a"bo'ttli rig ptarrt. in stai niess tankers what we reel meets FDA sanitary standards.
`
`Our question is whether Eieameiobat will permtt this work on your site 1] as agroup eifort to benefit Retrico as a pretreatment ._2} as only_ a limited partner
`investor in the rsd. or 3} as a cotlaborative stakeholder in the improtrment of Cognac technology. We do understand from Mr. Pinet there as not interest to
`market water in the spirit industry which the general partner itould take on with retailers. As
`we are particularly interested in examining some of
`the newer outsoruced sales methods through the web to take orders. such as SalesForc ecom.
`
`I
`
`Itwill of course be required that some form of written understanding [and if a supend can be provided to assist us in our work from thegroup or Beamelopal
`such as preferred stocirl that will aiiow us to proceed in forming investors forthe partnershipto inrtiatethe first phase this season I wiil attempt to meet with
`Mr. Bertalan to see what Eleamelobals opinion is regarding this business development a1:tii.rii~,' Tlianir you again and for the time yresterdayt.
`
`
`
`EXHIBIT 9
`
`Storeiiucooldrypiace
`mime-Ave
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`commwmngdm
`*°‘i°'°P°"'l€‘"d'“°°P
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`MA.0'R.iK.NY.DE.
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`
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`
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`
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`®
`AQUA VIN NATURALE W
`2008
`"'“‘::"‘”°"“"3 “W
`w___,,
`Wed-::u
`
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`
`Qgrigo
`
`2‘:
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`
`NON-ALCOHOL
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`WITH NATLIIUU. MINERALS AND Ai\Tl-OXIDAA-“I'S
`
`PRODUCT OF FRANCE
`
`3.’
`
`U1)
`
`ml '
`
`fl U1
`
`Pt]
`
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`...+-.,
`
`Irgredients:iemtIar'iEl.DS36a}ool'io1
`iiiawater99.9‘%purei)ri‘rornwii-re.
`
`5E§T5\‘?
`
`PROD;
`
`9'
`
`_N 0
`AQUA VIN NATURAL?
`H
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