Barteca Restaurants, LLC

Trademark Trial and Appeal Board

Feb 1, 2013

No. 85202583 (T.T.A.B. Feb. 1, 2013)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: February 1, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Barteca Restaurants, LLC
________

Serial Nos. 85202482 and 85202583
_______

Joseph G. Fortner, Jr. of Halloran & Sage LLP for Barteca
Restaurants, LLC.

Tracy Cross, Trademark Examining Attorney, Law Office 109
(Dan Vavonese, Managing Attorney).
_______

Before Bucher, Cataldo and Hightower,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Barteca Restaurants, LLC, has filed
applications to register on the Principal Register the mark
BARTACO
(in standard characters) and the mark displayed below

Ser. Nos. 85202482 and 85202583
2
both for “restaurant and bar services” in International
Class 43.1
Registration has been finally refused as to the mark
in application Serial No. 85202482 under Section 2(e)(1) of
the Trademark Act, 15 U.S.C. §1052(e)(1), on the ground
that the mark is merely descriptive of applicant’s
services. Similarly, registration has been finally refused
as to the mark in application Serial No. 85202583 based on
applicant’s failure to comply with the requirement to
disclaim BARTACO on the ground that it is merely
descriptive of applicant’s services within the meaning of
Section 2(e)(1) of the Trademark Act, 15 U.S.C. 1052(e)(1).
Applicant has appealed the refusal to register both
applications and the appeals are fully briefed. Because
the refusals to register are based upon common issues of
law and fact, as well as essentially identical records and
briefs, they are hereby consolidated, and we will address
them in a single opinion. Citations to the briefs refer to
the briefs filed in application Serial No. 85202482, unless

1 Application Serial Nos. 85202482 and 85202583 both were filed
on December 21, 2010 based upon applicant’s assertion of December
18, 2010 as the date of first use of the applied-for mark
anywhere and in commerce in connection with the recited services.
Application Serial No. 85202583 contains the following
statements: “Color is not claimed as a feature of the mark;” and
“The mark consists of the single word bartaco with the stylized
image of a dragonfly in close proximity.”

Ser. Nos. 85202482 and 85202583
3
otherwise noted; however we have, of course, considered all
arguments and evidence filed in each case.
The trademark examining attorney argues that the term
BARTACO in applicant’s marks is merely descriptive of
applicant’s services inasmuch as the “term TACO is the
generic name of a food that is featured at the applicant’s
bar and is descriptive of the applicant’s restaurant and
bar services.”2 The examining attorney further argues that
“[b]usinesses and competitors should be free to use
descriptive language when describing their own goods and/or
services to the public in advertising and marketing
materials.”3
In support of her position, the examining attorney has
made of record dictionary definitions of the terms BAR and
TACO. According to these definitions, BAR is defined,
inter alia, as “a counter or place where beverages, esp.
liquors, or light meals are served to customers: a snack
bar, a milk bar.”4 TACO is defined as “a usually fried
tortilla that is folded or rolled and stuffed with a
mixture (as of seasoned meat, cheese, and lettuce).5 In
addition, the examining attorney made of record

2 Examining attorney’s brief, p. 5.
3 Id at 4.
4 Dictionary.infoplease.com
5 Merriam-webster.com

Ser. Nos. 85202482 and 85202583
4
“screenshots” from applicant’s Internet website and social
media webpage, as well as Internet articles and blog posts
reviewing applicant’s services under its marks. From these
Internet postings, it is clear that applicant’s bar and
restaurant menu prominently includes tacos among the
various food items available under its involved marks.
Applicant, for its part, argues that the examining
attorney has improperly dissected the unitary term BARTACO
into two terms, reversed them, and engaged in a “leap
regarding which goods and services are offered”6 in order to
support her refusal to register. Applicant further argues
that “the imaginative leap on the part of the prospective
purchaser is what makes the mark fanciful, or at the very
least suggestive, rather than descriptive as the Examiner
suggests.”7
In support of its position, applicant made of record
photographs of its restaurant/bars, copies of its menu, and
a sample of the results of its search of the Google search
engine for the term “bartaco,” with all the results
discussing applicant and its services under its marks.
A mark is merely descriptive if “it forthwith conveys
an immediate idea of the ingredients, qualities or

6 Applicant’s brief, p. 3.
7 Id.
Ser. Nos. 85202482 and 85202583
5
characteristics of the goods [or services].” Abercrombie &
Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 189 USPQ 759,
765 (2nd Cir. 1976) (emphasis added). See also In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA
1978); and In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002).
In other words, the issue is whether someone who knows what
the goods or services are will understand the mark to
convey information about them. DuoProSS Meditech Corp. v.
Inviro Medical Devices, Ltd., ___ F.3d ___, 103 USPQ2d
1753, 1757 (Fed. Cir. 2012); In re Tower Tech, Inc., 64
USPQ2d 1314, 1316-17 (TTAB 2002); and In re Patent &
Trademark Servs. Inc., 49 USPQ2d 1537, 1539 (TTAB 1998).
If, however, when goods or services are encountered
under a mark, a multistage reasoning process, or resort to
imagination, is required in order to determine the
attributes or characteristics of the product or services,
the mark is suggestive rather than merely descriptive. See
In re Abcor Development Corp., 200 USPQ at 218; and In re
Atavio, 25 USPQ2d 1361, 1362 (TTAB 1992). To the extent
that there is any doubt in drawing the line of demarcation
between a suggestive mark and a merely descriptive mark,
such doubt is resolved in applicant’s favor. In re Atavio,
25 USPQ2d at 136. The examining attorney bears the burden
of showing that a mark is merely descriptive of the
Ser. Nos. 85202482 and 85202583
6
identified goods or services. See In re Merrill, Lynch,
Pierce, Fenner, and Smith Inc., 828 F.2d 21567, 4 USPQ2d
1141, 1143 (Fed. Cir. 1987).
In this case, we are not persuaded by the examining
attorney’s arguments that BARTACO is merely descriptive of
the identified services. First, we observe that the term
BARTACO as it appears in both involved marks is unitary,
and it is not clear on this record whether prospective
consumers will perceive that BARTACO consists of the
component terms BAR and TACO, and that the combination of
terms merely describes applicant’s services. This is not
to say that the mere telescoping of the term BARTACO is
sufficient to overcome a refusal to register based upon
mere descriptiveness. See, e.g., In re Omaha National
Corporation, 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987)
(FirsTier, the equivalent of “first
tier,” is merely descriptive of banking
services). Rather, there is no evidence of record to
support a finding that consumers will view the term BARTACO
or BAR TACO as merely describing restaurant and bar
services, even those featuring tacos.
That is to say, even if we accept that BARTACO is a
combination of the individual words BAR and TACO, and that
these terms have descriptive significance inasmuch as
Ser. Nos. 85202482 and 85202583
7
applicant’s restaurant and bar services feature, inter
alia, tacos on their menu, our analysis does not end here.
As the Board stated in In re Wisconsin Tissue Mills, 173
USPQ 319, 320 (TTAB 1972):
It does not follow as a matter of law that
because component words of a mark may be
descriptive, the composite is unregistrable. The
established rule is that a composite must be
considered in its entirety and the question then
is whether the entirety is merely descriptive.
(citation omitted).

In this case, there is no evidence to indicate that the
relevant purchasers of applicant’s services would perceive
the term BARTACO as it appears in applicant’s marks to be a
descriptive term therefor. Simply put, the evidence of
record – including evidence consisting of reviews and
comments by the customers of applicant’s services under its
mark – does not establish that BARTACO merely describes
them, notwithstanding the dictionary meanings of BAR and
TACO and the applicability of those terms to applicant’s
services.
We note that if the term in question was TACOBAR, we
may come to a different result, inasmuch as that
combination of terms would immediately describe a feature
of applicant’s restaurant and bar services featuring tacos.
We further note that the mere reversal of those terms into
BARTACO does not necessarily avoid a finding of mere
Ser. Nos. 85202482 and 85202583
8
descriptiveness. However, when we consider the term
BARTACO in applicant’s marks, we find on this ex parte
record that it is only suggestive of the identified
services. We reach this conclusion because of the
unnatural order of the words comprising BARTACO in
applicant’s marks and the fact that some mental reasoning
is required in order to determine the nature of applicant’s
services therefrom.
This conclusion is buttressed by the fact that this
term does not appear to be needed by applicant’s
competitors in order to describe their products or services
as it has not been shown that any third party in the
crowded field of restaurants and bars has used BARTACO in
this manner. See Minnesota Mining and Mfg. Co. v. Johnson
& Johnson, 454 F.2d 1179, 172 USPQ 491 (CCPA 1972)
[“SKINVISIBLE” for transparent medical adhesive tape is not
needed by competitors]; Sperry Rand Corp. v. Sunbeam Corp.,
442 F.2d 979, 170 USPQ 37 (CCPA 1971) [“LEKTRONIC” for
electric shavers not needed by competitors]; Aluminum
Fabricating Co. of Pittsburgh v. Season-All Window Corp.,
259 F.2d 314, 119 USPQ 61, 63 (2d Cir. 1958) [“SEASON-ALL,”
unlike the term “ALL-SEASON,” is not merely descriptive of
aluminum storm windows and doors]; and In re Reynolds
Metals Co., 480 F.2d 902, 178 USPQ 296 (CCPA 1973)
Ser. Nos. 85202482 and 85202583
9
[registration of “BROWN-IN-BAG” for transparent plastic
bags is suggestive as it will not prevent competitors from
informing buyers that goods may be browned in their bags].
Finally, if doubt exists as to whether a term is
merely descriptive, it is the practice of this Board to
resolve doubts in favor of the applicant and pass the
application to publication. See In re Gourmet Bakers Inc.,
173 USPQ 565 (TTAB 1972). In this way, anyone who believes
that the term is, in fact, descriptive, may oppose and
present evidence on this issue to the Board.
Decision: The examining attorney’s refusal of
registration is reversed in both cases. Accordingly, the
involved applications will be forwarded for publication for
opposition in due course.