Benjamin L. McClung

Trademark Trial and Appeal Board

May 4, 2012

No. 77723599 (T.T.A.B. May. 4, 2012)

Mailed: 5/4/12

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Benjamin L. McClung
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Serial No. 77723599
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Michael B. Bressman of Vanderbilt Legal Clinic of the
Vanderbilt University Law School for Benjamin L. McClung.

William T. Verhosek, Trademark Examining Attorney, Law
Office 114 (K. Margaret Le, Managing Attorney).
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Before Quinn, Grendel and Wellington,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Benjamin L. McClung filed an application to register
the mark TATER DOG (in standard characters) (“DOG”
disclaimed) for “freshly prepared sandwich consisting of
meat with or without condiments inserted into the hollowed
cavity of an edible bread roll” (in International Class
30).1

1 Application Serial No. 77723599, filed April 28, 2009, alleging
first use anywhere and first use in commerce on March 17, 2009.
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Ser. No. 77723599
2
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the ground that applicant’s mark, when used
in connection with applicant’s goods, is deceptively
misdescriptive thereof.
The examining attorney maintains that applicant’s
proposed mark describes “something that is a hot dog and
potato food combo.” (Brief, unnumbered p. 2).2 According
to the examining attorney, the main ingredients of a “tater
dog,” as shown by third-party usage in the food industry,
are a hot dog and a potato; inasmuch as applicant’s product
does not include a potato or “tater,” the mark misdescribes
an ingredient of the product, namely the lack of a potato.
Thus, the examining attorney concludes, the goods are not a
“tater dog,” but rather a mere hot dog in a potato bun. In
the words of the examining attorney: “The applicant’s
goods are not ‘tater dogs,’ but hot dogs...applicant
tout[s] its goods as a hot dog, albeit on a potato bread
bun, but nonetheless a hot dog. If it smells like a dog,
looks like dog, barks like a dog, then it is a dog.”
(Brief, unnumbered p. 7). In support of the refusal the

2 We recognize that in determining the issue of deceptive
misdescriptiveness we necessarily consider mere descriptiveness.
So as to be clear, however, the examining attorney did not make
an alternative final refusal that the proposed mark is merely
descriptive.
Ser. No. 77723599
3
examining attorney introduced dictionary definitions of
“tater” and “hot dog”; and excerpts of several third-party
websites and articles retrieved from the Lexis/Nexis
database showing a variety of hot dog and potato
combination food products referred to as “tater dog.”
Applicant has confirmed that his sandwich basically
comprises a hot dog inserted into a hollowed cavity of a
potato roll; according to applicant, the hot dog product is
designed to minimize condiment spills. Applicant argues
that his proposed mark is suggestive, not conveying
forthwith an immediate idea of the characteristics of his
product. In any event, even if not suggestive, the mark
fails the first prong [of the two-prong
deceptively misdescriptive test]
because the TATER DOG product contains
a potato-flavored edible bread roll and
a meat component and thus does not
misdescribe an ingredient, feature or
component of the goods. Likewise, it
fails the second prong. Consumers
would not be likely to believe the
alleged misrepresentation (i.e., a
TATER DOG is a hot dog and a visible
potato) because goods bearing the TATER
DOG mark are sold in person to
consumers who have the opportunity to
visibly inspect and inquire about the
products before purchasing them. Thus,
the mark neither misdescribes the goods
nor deceives consumers. (Brief, p. 5).

In urging that the refusal be reversed, applicant submitted
his declaration and the declarations of several customers,
Ser. No. 77723599
4
copies of third-party registrations, the recipe and
ingredients (including potato) of his bread rolls, and
website screen shots of applicant and third parties.
Before turning to the merits of this appeal, a brief
review of the relevant prosecution history is illuminating.
Applicant originally submitted his application with a
disclaimer of the word “dog.” When the application was
first examined, the application was approved for
publication. However, shortly thereafter, the Office
withdrew the application for publication and the examining
attorney issued an Office action indicating that “a new
issue had arisen regarding the descriptiveness of the
mark.” The examining attorney refused registration on the
ground of mere descriptiveness or, in the alternative,
genericness. Applicant responded, contending that its mark
was only suggestive, and applicant supplied information
about its product. The examining attorney then maintained
the mere descriptiveness refusal, and also asserted a new
alternative ground for refusal, namely that the mark is
deceptively misdescriptive. Applicant argued against the
refusals. Once again, the application was approved for
publication, and subsequently the approval was withdrawn.
The examining attorney then issued a final refusal on the
ground of deceptive misdescriptiveness only (essentially
Ser. No. 77723599
5
withdrawing the mere descriptiveness/genericness refusal);
the deceptively misdescriptive refusal forms the sole basis
of this appeal. Applicant filed a notice of appeal and a
request for reconsideration. After the request was denied,
proceedings in the appeal were resumed. Both applicant and
the examining attorney filed briefs.
The test for deceptive misdescriptiveness has two
parts. Hoover Co. v. Royal Appliance Manufacturing Co.,
238 F.3d 1357, 57 USPQ2d 1720 (Fed. Cir. 2001). First it
must be determined if the matter sought to be registered
misdescribes the goods or services. If so, then it must be
ascertained if it is also deceptive, that is, if anyone is
likely to believe the misrepresentation. In re Quady
Winery Inc., 221 USPQ 1213, 1214 (TTAB 1984). See In re
Phillips-Van Heusen Corp., 63 USPQ2d 1047 (TTAB 2002). The
Board has applied the reasonably prudent consumer test in
assessing whether a mark is deceptively misdescriptive
under Section 2(e)(1). See R. J. Reynolds Tobacco Company
v. Brown & Williamson Tobacco Corporation, 226 USPQ 169,
179 (TTAB 1985) (“On this evidence, we do not believe
reasonably prudent purchasers are apt to be deceived.”).
“[F]or a term to misdescribe goods or services, the
term must be merely descriptive, rather than suggestive, of
a significant aspect of the goods or services which the
Ser. No. 77723599
6
goods or services plausibly possess but in fact do not.”
In re Phillips-Van Heusen, 63 USPQ2d at 1051. See In re
Shniberg, 79 USPQ2d 1309 (TTAB 2006). The examining
attorney bears the burden of showing that a term is merely
descriptive (and, thus is potentially deceptively
misdescriptive) of the relevant goods. In re Merrill,
Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4
USPQ2d 1141, 1143 (Fed. Cir. 1987). A term is descriptive
if it "forthwith conveys an immediate idea of the
ingredients, qualities or characteristics of the goods."
Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4,
189 USPQ 759, 765 (2d Cir. 1976) (emphasis added). See In
re Abcor Development Corp., 616 F.2d 525, 200 USPQ 215
(CCPA 1978). Moreover, in order to be descriptive, the
term must immediately convey information as to the
qualities, features or characteristics of the goods with a
"degree of particularity." Plus Products v. Medical
Modalities Associates, Inc., 211 USPQ 1199, 1204-1205 (TTAB
1981). See In re Diet Tabs, Inc., 231 USPQ 587, 588 (TTAB
1986); Holiday Inns, Inc. v. Monolith Enterprises, 212 USPQ
949, 952 (TTAB 1981); In re TMS Corp. of the Americas, 200
USPQ 57, 59 (TTAB 1978); and In re Gourmet Bakers, Inc.,
173 USPQ 565 (TTAB 1972).
Ser. No. 77723599
7
The dictionary definitions of record reveal the
meanings of the terms comprising the mark, in relevant
part, as follows: the term “tater” is defined as “potato”
(www.dictionary.reference.com); and the term “dog” is
defined as a slang term for “hot dog.”
(www.dictionary.infoplease.com).
According to applicant’s website, his product is made
as follows:
The fresh potato roll is spiked on a
heated metal spike to create a hollowed
cavity inside the roll. Once the
requested condiments are inserted into
the hollowed cavity, you’re ready to
“put the hot dog in the bun” and throw
in the frank. Completely enclosed and
served in a paper sleeve, your Tater
Dog is now ready to be enjoyed without
the typical mess and hassle of a
normal, open-faced hot dog!
(www.thetaterdog.com)

As shown by the evidence relating to third-party uses,
the term “tater dog” refers to a variety of different types
of food products comprising a hot dog and some type of
potato product. The examining attorney’s evidence shows
the use of the term “tater dog” in connection with a
variety of these types of products. In his brief, the
examining highlights several examples, presumably the most
probative ones in support of the refusal: “Tater Dog,
which is on a stick but, rather than battered it’s wound up
Ser. No. 77723599
8
in a spiral-cut potato, deep-fried and coasted with salt.
Or Parmesan cheese.”; “‘Texas tater dog,’ a German sausage
poked through a spiral-cut spud.”; “Tater Dogs (cheese-
filled mini hot dogs in a potato crust).”; “Finally comes a
recipe for tater dogs – similar to corn dogs, but wrapped
in mashed potatoes.”; and “Tater Dogs (russet potatoes,
stuffed with frozen pork sausage links and baked).”3
The record shows that some of the food products are on
a stick, and others include various forms of potatoes
(fries, mashed, baked, spiral cut or batter); in one
instance the meat is actually pork link sausage. In
another instance highlighted by applicant, the term “tater
dog” refers to a vegetarian product where a potato serves
as the hot dog.
We cannot find that the term “tater dog” forthwith
conveys an immediate idea about a product’s characteristics
with a degree of particularity. That is to say, “tater
dog” does not merely describe any one specific type of food
product, even ones comprising a hot dog and some type of
potato product. This finding is highlighted by the
following exchange of ideas on a website: “Anybody ever

3 Other examples are far less probative, given that reference is
made to “Tater Dog” without any indication of the type of product
for which the term is used (see, e.g., “Betty’s Tater Dogs” and
“Ore-Ida Hot Bites Tater Dogs”).
Ser. No. 77723599
9
heard of tater dogs? Like corn dogs?” The inquiry drew
several responses including: “It’s cocktail weenies filled
with cheese all wrapped up in a crispy potato-type crust.”
“Maybe a mash potato batter on a hot dog then fried.” “I
am imagining a hot dog rolled in potato chips and then deep
fried.” (www.yahoo.com). Indeed, as argued by applicant,
the term may conjure up a variety of different images,
including a potato surrounding a hot dog, or a vegetarian
hot dog, or something that accents the hot dog, such as a
potato roll.
In sum, based on the present record, we find that the
mark TATER DOG is just suggestive when used in connection
with the goods.4 The Board has noted on a number of prior
occasions that there is a thin line of demarcation between
suggestiveness and mere descriptiveness (an “element” of

4 In saying this, we should add that we are not convinced by
applicant’s argument that “tater” is another word for “home run,”
and means “an impressive success.” According to applicant, his
mark suggests “an impressive, outstanding, or superlative hot
dog.” (Brief, p. 8). It is telling, however, that none of
applicant’s informational or promotional materials tout his
product in this fashion. Likewise, the third-party registrations
submitted by applicant are not persuasive for the reasons
indicated by the examining attorney in his brief. Further, we
have reached our decision without giving probative value to the
declarations of applicant and customers. The focus of these
declarations is on the conditions of sale of applicant’s product,
namely that informational displays appear at the point of sale,
and that prospective customers can visually inspect and inquire
about the nature of applicant’s product before purchasing it.
Given that there are no such limitations in the identification of
goods, we must presume that the product will not always be sold
directly in person with a display next to it.
Ser. No. 77723599
10
deceptive misdescriptiveness). To the extent that any of
the evidence and arguments based thereon raise doubts about
the merely descriptive character and, thus, the potentially
deceptively misdescriptive character of applicant’s mark,
such doubts are to be resolved in applicant’s favor and the
mark should be published, thus allowing a third party to
file an opposition and develop a more comprehensive record.
See e.g., In re Box Solutions, 79 USPQ2d at 1955; In re
Atavio, 25 USPQ2d 1361 (TTAB 1992); and In re Morton-
Norwich Products, Inc., 209 USPQ 791 (TTAB 1981). The
present appeal presents a close case, and we have doubts
about the issue before us. As mandated, we have resolved
that doubt in favor of applicant. A competitor in the food
industry is in a much better position than the examining
attorney to establish in an opposition proceeding that
applicant’s mark is not registrable.
Decision: The refusal to register is reversed.