Alec R. Fernandez

Trademark Trial and Appeal Board

Aug 24, 2015

No. 86176743 (T.T.A.B. Aug. 24, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 24, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Alec R. Fernandez
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Serial No. 86176743
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Frank Herrera of H New Media Law,
for Alec R. Fernandez.
Benji Paradewelai, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
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Before Kuhlke, Cataldo and Kuczma,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Alec R. Fernandez (“Applicant”) seeks registration on the Principal Register of
the mark:

Serial No. 86176743
- 2 -
for: Fast-food restaurant services in International Class 43.1
The Trademark Examining Attorney refused registration of Applicant’s mark on
the ground that the wording “GOOD BUN” must be disclaimed because it is
laudatorily descriptive, and thus is an unregistrable component of the mark under
15 U.S.C. §§ 1052 (e)(1), 1056(a). Although Applicant initially provided the required
disclaimer, it was subsequently withdrawn in a Request for Reconsideration filed
with the Notice of Appeal. After the Examining Attorney denied Applicant’s second
Request for Reconsideration, the appeal was resumed. We affirm the refusal to
register.
The sole issue in this appeal is whether the term “GOOD BUN” is descriptive of
Applicant’s fast-food restaurant services requiring a disclaimer under Sections
2(e)(1) and 6 of the Trademark Act, 15 U.S.C. §§ 1052(e)(1) and 1056(a).
Merely descriptive terms are unregistrable, under Trademark Act Section
2(e)(1), 15 U.S.C. § 1052(e)(1), and, therefore, are subject to disclaimer if the mark
is otherwise registrable. Thus, an examining attorney may require an applicant to
disclaim an unregistrable component of a mark otherwise registrable. Trademark
Act Section 6(a), 15 U.S.C. § 1056(a). Failure to comply with a disclaimer
requirement is grounds for refusal of registration. See In re Omaha National Corp.,
819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Richardson Ink Co., 511 F.2d
559, 185 USPQ 46 (CCPA 1975); In re Ginc UK Ltd., 90 USPQ2d 1472 (TTAB 2007);

1 Application Serial No. 86176743 was filed on January 27, 2014, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act. The mark consists of top and bottom hamburger bun with the word
“goodbun” between each bun and a head of lettuce on bottom of bun. Color is not claimed as
a feature of the mark.
Serial No. 86176743
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In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977); and In re
Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB 1968).
Thus, a term must be disclaimed apart from the mark as shown if it is deemed to
be merely descriptive of the subject goods or services. A term is deemed to be merely
descriptive within the meaning of Section 2(e)(1), if it forthwith conveys an
immediate idea of an ingredient, quality, characteristic, feature, function, purpose
or use of the goods or services. See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009 (Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
217-18 (CCPA 1978).
Applicant’s mark consists of the term GOODBUN and a hamburger bun design
for “fast-food restaurant services.” Applicant describes his mark as “consist[ing] of
top and bottom hamburger bun with the word ‘goodbun’ between each bun and a
head of lettuce on bottom of bun.”
The definition of “bun” is “A small roll, often sweetened or spiced and sometimes
containing dried fruit.”2 The term “good” is defined as “Of high quality,” “Having the
qualities that are desirable.”3 Laudatory terms attribute quality or excellence to
goods and/or services and are considered merely descriptive. As such, laudatory
terms, phrases and slogans are nondistinctive and unregistrable on the Principal
Register without proof of distinctiveness. See In re Nett Designs, Inc., 236 F.3d 1339,
57 USPQ2d 1564 (Fed. Cir. 2001) (holding THE ULTIMATE BIKE RACK a

2 See attachment to May 1, 2014 Office Action regarding definition of “bun” provided by
Houghton Mifflin at https://education.yahoo.com/reference/dictinary/entry/bun (p. 9).
3 See attachment to May 1, 2014 Office Action regarding definition of “good” provided by
Houghton Mifflin at https://education.yahoo.com/reference/dictinary/entry/good (p. 10).
Serial No. 86176743
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laudatory, descriptive phrase that touts the superiority of applicant’s bicycle racks);
In re The Place, Inc., 76 USPQ2d 1467 (TTAB 2006) (holding THE GREATEST BAR
a laudatory, descriptive term for applicant’s restaurant and bar since term
“greatest” immediately informs prospective purchaser that applicant’s
establishment is superior in character or quality when compared to other
restaurants and bars). In this case, the term GOOD BUN is laudatory as it
describes a feature or characteristic of Applicant’s services, namely, that the
restaurant features bread rolls of high quality.
To further support the descriptiveness of GOOD BUN for Applicant’s services,
the Examining Attorney submits evidence showing that restaurants are known for
serving “good buns.”
A good burger needs a good bun and Eataly NYC’s
brioche bun is more than up for the task.
https://www.facebook.com/EatalyNYC/photos/a.134561659921585.
13914.128969973814087/7967296370381144
… In the USA, the hamburger is a creation that embraces
American’s creativity and desire for flavors. Burgers are
made from beef, lamb, chicken, and served on a good
bun, and dressed with a large variety of condiments,
vegetables, and other meats, like bacon.
We at Cheesy Charlie’s, enjoy the unlimited possibilities
of Burger creativity. We are always listing [sic] to our
customers and creating new burgers.
http://www.cheesycharlies.com/CharliesLocationMap.html5

4 See attachment to February 26, 2015 Denial of Request for Reconsideration (p. 120).
5 See attachment to February 26, 2015 Denial of Request for Reconsideration (p. 122).
Serial No. 86176743
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Seattle Kitchen host Thierry Rautureau said his French
tastes have him calling for a good bun.
“To me, a burger should be something with good bread,
good bun,” said Tautureau. “I like to have something a
bit chewy that has been toasted or grilled and have a nice
char.”
http://mynorthwest.com/869/668576/Seattle-Kitchen-recommends-
Best-burgers6
Best Burger: Trencherman (address and info)
When you’re dealing with juicy, house-ground, farm-
raised chuck covered in a liberal layer of Tillamook
Cheddar and house-made pickles, and the star of the
show is the bun, you know you’re dealing with a damn-
good bun (which is also made in-house).
http://www.thrillist.com/eat/chicago/best-chicago-burgers-by-
neighborhood-logansquare-lincoln-park-river-north-restaurants7
Overall, the Huey Burger had some good flavor. It’s a
decent size preformed patty, pressed and delivered daily
from Charlie’s Meat Market. I do believe there are
somethings Huey’s can do to make their burgers better.
One would be to get rid of the sesame bun if its going to
toast up like that. A good bun can make the burger. A
bad one, can kill it. My other suggestion would be to use
more seasoning and make sure those patties are juicy and
bursting with flavor. A lot of flavor resides in that juice.
It’s a shame none was there.
http://www.bestmemphisburger.com/2011/12/05/hueys-midtown/8
But what I really like here are the burgers. The buns [sic]
seems to be a whole grain bun with oats on the top. Very
good bun always fresh.
http://www.yelp.com/biz/good-stuff-burgers-los-angeles9

6 See attachment to February 26, 2015 Denial of Request for Reconsideration (p. 124).
7 See attachment to February 26, 2015 Denial of Request for Reconsideration (pp. 134-135).
8 See attachment to February 26, 2015 Denial of Request for Reconsideration (p. 138).
9 See attachment to February 26, 2015 Denial of Request for Reconsideration (p. 96).
Serial No. 86176743
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A good bun helps a lot, although I eat most of my
burgers without a bun. When I do have a bun it needs to
be substantial enough to hold the burger together without
being intrusive on the taste of the burger itself. I want to
primarily taste the burger, not the bun. Pinegrove Market
gets the balance just right.
http://bestburgerreview.com/tag/jacksonville/10
Each juicy patty is made in-house from Painted Hills
ground beef (grain-fed and handwooed [sic] in Oregon),
and while the origin of the buns is secret, they function
exactly like a good bun should: as a delicately sweet and
spongy edible napkin.
http://www.thestranger.com/seattle/capitol-hill-
burgermadness/Content?oid=1310385010.11
Additionally, the Examining Attorney submitted copies of numerous third-party
registrations for marks containing the term “good” and for marks containing the
word “bun,” all for restaurant services.12 Inasmuch as the wording “good” and “bun”
in the registered marks are either disclaimed, registered on the Supplemental
Register or under Section 2(f) based on a showing of distinctiveness, they provide
further evidence of the descriptiveness of “good” and “bun” for restaurant services.
See Institute National des Appellations D’Origine v. Vintners International Co., 958
F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992); In re Box Solutions Corp., 79
USPQ2d 1953, 1955 (TTAB 2006); In re J.M. Originals Inc., 6 USPQ2d 1393, 1394
(TTAB 1987).

10 See attachment to February 26, 2015 Denial of Request for Reconsideration (p. 109).
11 See attachment to February 26, 2015 Denial of Request for Reconsideration (p. 117).
12 See attachments to February 26, 2015 Denial of Request for Reconsideration (pp. 13-66).
While one of the registrations has been cancelled and a few others are owned by the same
parties, there are numerous remaining supporting registrations.
Serial No. 86176743
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Without evidentiary support, Applicant argues that the GOODBUN portion of
its mark is unitary and is not traditionally dissected in order to require a
disclaimer.13 However, when an entire unitary phrase or slogan is generic,
descriptive or merely informational, it remains unregistrable.
A mark or portion of a mark is considered “unitary” when it creates a
commercial impression separate and apart from any unregistrable component. The
test for unitariness inquires whether the elements of a mark are so integrated or
merged together that they cannot be regarded as separable. See In re EBS Data
Processing, 212 USPQ 964, 966 (TTAB 1981); In re Kraft, Inc., 218 USPQ 571, 573
(TTAB 1983). The inquiry focuses on “how the average purchaser would encounter
the mark under normal marketing of such goods and also ... what the reaction of the
average purchaser would be to this display of the mark.” Dena Corp. v. Belvedere
International, Inc., 950 F.2d 1555, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991) (quoting
In re Magic Muffler Service, Inc., 184 USPQ 125, 126 (TTAB 1974)). The Court of
Appeals for the Federal Circuit has set forth the elements of a unitary mark:
A unitary mark has certain observable characteristics.
Specifically, its elements are inseparable. In a unitary
mark, these observable characteristics must combine to
show that the mark has a distinct meaning of its own
independent of the meaning of its constituent elements.

13 Applicant’s Appeal Brf. pp. 1-2 (12 TTABVUE 2-3). Counsel for Applicant notes that
Applicant was not represented by counsel when he entered the disclaimer for GOOD BUN
on May 13, 2014. This is of no consequence. The USPTO provides an online warning that
applicants must comply with all substantive and procedural requirements of the
Trademark Act whether or not they are represented by counsel. See Hurley International
LLC v. Volta, 82 USPQ2d 1339, 1342 (TTAB 2007).

Serial No. 86176743
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In other words, a unitary mark must create a single and
distinct commercial impression.

Dena Corp., 21 USPQ2d at 1052.
If the matter that comprises the mark or relevant portion of the mark is unitary,
no disclaimer of an element, whether descriptive, generic, or otherwise, is required.
A phrase such as Applicant’s mark qualifies as unitary in the trademark sense only
if the whole is something more than the sum of its parts. Dena Corp., 21 USPQ2d at
1052 (finding EUROPEAN FORMULA and design for cosmetic products not unitary
because the “elements are not so merged together that they cannot be regarded as
separate” and the proximity of the words to the design feature “does not endow the
whole with a single, integrated, and distinct commercial impression”).
When prospective purchasers see Applicant’s mark, they would readily
understand it to be comprised of the two separate words, “good” and “bun” and the
design of a bun and a head of lettuce. Each of the component terms retains its
descriptive significance in relation to Applicant’s restaurant services, and the
combination GOODBUN results in a composite that is itself descriptive. See In re
Carlson, 91 USPQ2d 1198 (TTAB 2009) (URBANHOUZING merely descriptive of
real estate brokerage, real estate consultation, and real estate listing services); In re
Cox Enterprises Inc., 82 USPQ2d 1040, 1043 (TTAB 2007) (“THEATL is simply a
compressed version of the descriptive term THE ATL without a space between the
two words. Without the space, THEATL is equivalent in sound, meaning and
impression to THE ATL and is equally descriptive of applicant’s goods”); In re
Planalytics Inc., 70 USPQ2d 1453 (TTAB 2004) (GASBUYER merely descriptive of
Serial No. 86176743
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providing on-line risk management services in the field of pricing and purchasing
decisions for natural gas; the absence of the space does not create a different
meaning or perception of the term).
While Applicant initially contends, without evidentiary support, that the
wording GOODBUN could also be construed as a surname, Applicant now asserts
that GOODBUN is neither merely descriptive nor is it primarily a surname.14 In
any event, to the extent GOODBUN may possess any surname significance, the
issue is not before us. With regard to the issue on appeal, descriptiveness of a mark
is not considered in the abstract. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82
USPQ2d 1828, 1831 (Fed. Cir. 2007). Determining the descriptiveness of a mark is
done in relation to an applicant’s goods and/or services, the context in which the
mark is being used, and the possible significance the mark would have to the
average purchaser because of the manner of its use or intended use. See In re The
Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed.
Cir. 2012) (citing In re Bayer Atkiengesellschaft, 82 USPQ2d at 1831).
As applied to Applicant’s services, consumers would view the mark as describing
a feature of the restaurant services, i.e., serving buns that taste good. Additionally,
the mark, containing a design of a hamburger bun, reinforces the commercial
impression of a feature of a restaurant serving, inter alia, hamburger buns. Indeed,
the description of the mark in the application provided by Applicant, reads “The

14 See Applicant’s Appeal Brief pp. 3-4 (12 TTABVUE 4-5).
Serial No. 86176743
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mark consists of top and bottom hamburger bun with the word ‘goodbun’ between
each bun and a head of lettuce on bottom of bun.”
Lastly, Applicant contends that because there are no other GOODBUN marks in
the USPTO records for restaurant services his mark is not laudatory or
descriptive.15 The fact that an applicant may be the first and only user of a merely
descriptive or generic designation does not justify registration if the only
significance conveyed by the term is merely descriptive. See In re Thomas Nelson
Inc., 97 USPQ2d 1712, 1717 (TTAB 2011); In re Hunter Fan Co., 78 USPQ2d 1474,
1476 (TTAB 2006); In re National Shooting Sports Foundation, Inc., 219 USPQ
1018, 1020 (TTAB 1983). In light of the foregoing, it is clear that the wording
GOODBUN in Applicant’s GOODBUN and Design mark is descriptive of his
restaurant services.
Decision: The requirement for a disclaimer of GOOD BUN and the refusal of
registration based on Applicant’s failure to submit such disclaimer, are affirmed.
However, in the event that Applicant submits the required disclaimer16 within
thirty (30) days from the date of this decision, the refusal to register will be set
aside, the disclaimer will be entered, and the application will proceed to publication.

15 See Applicant’s Appeal Brief p. 4 (12 TTABVUE 5).
16 The proper format for the disclaimer is: “No claim is made to the exclusive right to use
GOOD BUN apart from the mark as shown.”