Burns Philip Food Inc.

Trademark Trial and Appeal Board

Dec 23, 2003

No. 75874861 (T.T.A.B. Dec. 23, 2003)

Mailed: December 23, 2003
Paper No. 14
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Burns Philip Food Inc.
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Serial No. 75874861
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Michael J. Hughes of IPLO Intellectual Property Law Offices
for Burns Philip Food Inc.
Andy Corea, Trademark Examining Attorney, Law Office 112
(Janice O’Lear, Managing Attorney).
_______
Before Simms, Cissel and Hairston, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by Burns Philip Food
Inc. to register the mark RAPIDRISE in the form shown below
for as a trademark for “yeast.”1
1 Serial No. 75874861, alleging first use and first use in
commerce at least as early as August 31, 1983.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75874861
2
Applicant asserts that the mark it seeks to register is
inherently distinctive but, in the alternative, claims
pursuant to Section 2(f) of the Trademark Act, that the
mark has acquired distinctiveness.
The Examining Attorney has refused registration under
Section 2(e)(1) of the Act on the ground that the mark,
when used in connection with applicant’s goods, is merely
descriptive of them. The Examining Attorney further
contends that the evidence of acquired distinctiveness is
insufficient to support registration on the Principal
Register.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney submitted briefs. An
oral hearing was not requested.
It is the Examining Attorney’s position that the term
“rapid rise” is highly descriptive or generic of the
identified goods because it identifies a type of yeast;
that combining the words “rapid” and “rise” to form the
term RAPIDRISE does not change the merely descriptive
connotation of the two terms; and that the display of the
mark is not sufficiently distinctive to create a commercial
impression apart from the term RAPIDRISE. Thus, the
Examining Attorney maintains that applicant’s mark is
merely descriptive of applicant’s goods.
Ser No. 75874861
3
Applicant contends that its mark is not highly
descriptive or generic, but rather, is inherently
distinctive. According to applicant, the term “rapid rise”
is neither descriptive nor generic, but rather suggestive
of yeast; that the common designation for yeast which rises
quickly or rapidly is “quick rising”; that there is no
evidence that competitors use the term “rapid rise” to
describe a type of yeast; and that the majority of the
excerpts submitted by the Examining Attorney are recipes
derived from applicant’s own website. Without conceding
that the mark is descriptive, applicant submitted an
alternative claim of acquired distinctiveness.
The Record
The Examining Attorney has submitted over 100 excerpts
retrieved from the NEXIS data base which the Examining
Attorney maintains show use of “rapid(-)rise” to identify a
type of yeast. These excerpts consist of recipes and
articles about baking. 2 The following are representative
examples:
Yeast conversion
When substituting rapid-rise yeast for granular
yeast, use 25 percent less.
(The Commercial Appeal; July 24, 2002);
2 We note that several of the excerpts are duplicates in the
sense that they appear in more than one newspaper.
Ser No. 75874861
4
Bread machine yeast is a highly active yeast
Recommended for all bread machine cycles. It
also can be used interchangeably in conventional
baking with rapid-rise or fast-acting yeast.
(The Oregonian; March 26, 2002);
Basic pizza dough
Makes 4 individual pizzas
1 teaspoon rapid-rise yeast
2 cups bread flour, plus more as needed
…..
(San Jose Mercury News; February 6, 2002);
“You want a long, slow rise, which is why I
don’t advocate the use of rapid-rise yeast.
It defeats the purpose.”
(The Pantagraph; January 9, 2002);
This is an important consideration in December,
so this recipe uses a batter method - - no
kneading required --- in addition to the time-
saving advantages of rapid rise yeast.
(Topeka Capital Journal; December 15, 2001);
Southwest Braided Bread Wreath
1 package rapid-rise yeast
3 ½ cups flour
… .
(Austin American Statesman; November 28, 2001);
Active dry yeast comes in two forms: regular and
quick. Sometimes called quick rising or rapid rise,
quick active dry yeast is less common and more
difficult to find but can be worth the effort
because it leavens bread in about half the time
as its standard counterpart.
(The Times Union; November 18, 2001);
Egg Casserole Bread
This recipe is relatively fast and easy with
fluffy texture.
6 cups all-purpose flour
3 tablespoons sugar
2 envelopes rapid-rise yeast
2 teaspoons salt
….
(Telegraph Herald; May 30, 2001);
Ser No. 75874861
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Q. What’s the difference between rapid-rise and
regular yeast sold in small packages labeled
“active dry”?
(Chicago Tribune, December 13, 2000);
Cake Mix Sweet Rolls
4-5 cups flour
1 (9 ounce) white cake mix (Jiffy)
2 packages rapid-rise yeast
1 teaspoon salt
… .
(The Bismark Tribune; December 7, 2000);
From scratch: This sounds daunting, but actually
is very easy, especially if you use a recipe for
a quick-rising crust made with rapid-rise yeast.
(Chicago Tribune; August 16, 2000);
Best-Ever Cinnamon Rolls
For rolls:
2 (1/4-ounce) envelopes rapid-rise or active
dry yeast
2 ½ half cups lukewarm water
… .
(St. Louis Post-Dispatch; May 29, 2000);
There are several genetic strains of the yeast
species used in baking: compressed fresh yeast,
active dry yeast, rapid-rise yeast and instant
yeast; each has different characteristics and
uses.
(The Deseret News; December 14, 1999); and
Making the dough from scratch may sound daunting,
but actually is easy, especially if you use a
recipe for quick-rising crust made with rapid-rise
yeast.
(Milwaukee Journal Sentinel; September 29, 1999).
In addition, the Examining Attorney submitted a
printout from a website (http://allrecipes.com) that
Ser No. 75874861
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contains information about yeast and reads in pertinent
part:
Rapid Rise Yeast, Bread Machine Yeast, and Instant
Yeast are strains of dormant yeast whose main
attribute is the production of lots and lots of
carbon dioxide gas very quickly. (emphasis in
original).
In support of its Section 2(f) claim, applicant
submitted the declaration of George Petty, its Assistant
Secretary, along with exhibits. According to Mr. Petty,
applicant has used the applied-for mark since January 31,
1983; applicant’s yeast is aimed at the general consumer
market and is sold primarily in retail stores; from 1988 to
2000 “consumer loaves of bread baked using RapidRise brand
yeast averaged 62 to 72 million per year, based on industry
estimates”; this represents a growing market share for the
brand from 25% in 1988 to 34% in 2000; applicant has used
the mark in print and television advertising; newspaper and
magazine circulation averaged 27 million per publication,
reaching an estimated 80 to 100 million readers per
publication; applicant has spent approximately $50 million
in advertising and promoting its yeast products over the
past 17 years; and at least one third to one half of this
amount is attributable to advertising related to the
RapidRise brand yeast product. Further, Mr. Petty states
Ser No. 75874861
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that applicant has made “extensive efforts to educate
consumers that RapidRise’s yeast product originates only
with [applicant].” Accompanying Mr. Petty’s declaration
are advertising and promotional materials, including copies
of manufacturer’s coupons, magazine and newspaper
advertisements, and newspaper inserts.
Mere Descriptiveness
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1) of the
Trademark Act, if it forthwith conveys an immediate idea of
an ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services. See In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and In re
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18
(CCPA 1978). A term need not immediately convey an idea of
each and every specific feature of the applicant’s goods or
services in order to be considered merely descriptive; it
is enough that the term describes one significant
attribute, function or property of the goods or services.
See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); and In re
MBA Associates, 180 USPQ 338 (TTAB 1973). Whether a term
is merely descriptive is determined not in the abstract,
but in relation to the goods or services for which
registration is sought, the context in which it is being
Ser No. 75874861
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used on or in connection with those goods or services, and
the possible significance that the term would have to the
average purchaser of the goods or services because of the
manner of its use. In re Bright-Crest, Ltd., 204 USPQ 591,
593 (TTAB 1979).
Contrary to applicant’s contention that the term
“rapid rise” is inherently distinctive, the term
immediately conveys that the yeast is a type which causes
dough to rise rapidly or quickly. The evidence of record
clearly shows that “rapid rise” has a specific and commonly
understood meaning when used in connection with yeast. It
describes a type of yeast, and if not generic, is at least
highly descriptive of applicant’s goods. That applicant’s
yeast is the type that causes dough to rise rapidly is not
in dispute. In this regard, we note that the package
specimens submitted by applicant include the wording
“FASTER RISING” on the back thereof, and a number of
applicant’s advertisements tout the product as being “50%
FASTER!”
We recognize that there is no evidence which shows
that competitors, in particular, are using the term “rapid
rise” to describe their yeast. Although the presence or
absence of evidence that competitors are using a term in a
descriptive manner is a factor in determining the issue of
Ser No. 75874861
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mere descriptiveness, the absence of such evidence is not
determinative in this case. There is a substantial amount
of evidence which shows that cooks, food editors and
columnists use and are exposed to the use of the term
“rapid rise” to describe a type of yeast. Such individuals
are clearly part of the relevant purchasing public.
Moreover, the excerpts are from such newspapers as the
Chicago Tribune, Milwaukee Journal Sentinel, and the St.
Louis Post-Dispatch. Inasmuch as purchasers of yeast would
include members of the general public who would read these
publications, these articles are evidence of how
prospective purchasers, in general, may perceive the term
“rapid rise.”
Further, even assuming that applicant is the only
company in the field using the term “rapid rise,” this
would not justify registration where, as here, the term is
shown to be merely descriptive of yeast. In re National
Shooting Sports Foundation, Inc., 219 USPQ 1018, 1020 (TTAB
1983). Also, the fact that there may be other terms (e.g.,
“quick rising”) that can be used to designate applicant’s
product does not alter the descriptive character of the
term “rapid rise.”
As to applicant’s contention that many of the excerpts
submitted by the Examining Attorney are recipes derived
Ser No. 75874861
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from applicant’s website, and thus, presumably the uses of
“rapid rise” yeast therein are references to applicant’s
product, there is simply no support for applicant’s
contention.
Further, we are not convinced that the mere combining
of the words “rapid” and “rise” to form the term RAPIDRISE
results in a designation which looses it descriptiveness
when used in connection with yeast. The only connotation
of the combined term is the same as RAPID RISE. Whether
shown as two words or a combined term, the two designations
would be perceived as the same and be viewed as having the
same connotation, namely yeast that causes dough to rise
rapidly. Also, there is nothing particularly unusual or
unique in the style of lettering or the slight shading in
applicant’s mark. Thus, we are not persuaded by
applicant’s argument that its mark is presented in a
distinctive display such that it creates a commercial
impression separate and apart from the term RAPIDRISE.
In sum, we find that the applied-for mark is merely
descriptive of applicant’s yeast in that it immediately and
directly informs purchasers that applicant’s yeast will
cause dough to rise rapidly or quickly.
Ser No. 75874861
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Acquired Distinctiveness
As to acquired distinctiveness, applicant has the
burden to establish a prima facie case of acquired
distinctiveness. Yamaha International Corp. v. Hoshino
Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1006 (Fed.
Cir. 1988). The evidence that the Examining Attorney has
submitted is relevant to the issue of acquired
distinctiveness because the more descriptive the mark, the
greater the evidence needed to establish acquired
distinctiveness. Yamaha, supra, at 1008. As we have
stated, the Examining Attorney’s evidence establishes that
the term “rapid rise” is at least highly descriptive of
applicant’s goods.
As indicated above, applicant submitted the
declaration of its Assistant Secretary, Mr. Petty, setting
forth information about applicant’s use of its mark since
1983.
Applicant’s use and revenues suggest that applicant
has enjoyed a degree of business success. In point of
fact, as Mr. Petty attests, applicant enjoys a 34% share of
the market. Nevertheless, this evidence demonstrates only
the popularity of applicant’s goods, not that purchasers of
such goods have come to view RAPIDRISE in the form sought
to be registered by applicant as its source-identifying
Ser No. 75874861
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trademark. In re Bongrain International (American) Corp.,
894 F.2d 1316, 13 USPQ2d 1727, 1728-29 (Fed. Cir. 1990)
[Sales may indicate the popularity of the product itself
rather than recognition of the mark]. The Court in
Bongrain International also noted that sales may indicate
acceptance of the other trademark associated with the
product. Id. On the package specimens submitted by
applicant, the applied-for mark is shown along with the
mark FLEISCHMANN’S which is shown with a registration
symbol. In addition, although applicant’s advertising and
promotional expenses are substantial, in the advertising
and promotional materials, the applied-for mark is always
used with the FLEISCHMANN’S mark.
The issue here is the achievement of distinctiveness,
and given the highly descriptive nature of applicant’s
mark, the evidence falls short of establishing this.
Applicant’s evidence is outweighed by the other evidence of
record.
To be clear on this point, we emphasize that the
record is completely devoid of direct evidence that
consumers view RAPIDRISE in the form sought to be
registered as a distinctive source indicator for
applicant’s goods. We would need to see a great deal more
evidence (especially in the form of direct evidence from
Ser No. 75874861
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customers) in order to find that the applied-for mark has
become distinctive of applicant’s goods.
Although Mr. Petty states that applicant has made
extensive efforts to educate consumers regarding its mark,
these efforts seem to have consisted of no more than
applicant’s use of the TM designation with its mark. The
mere use of the TM designation cannot convert a descriptive
term into a registrable trademark.
In sum, after careful consideration of the relevant
authorities and the evidence and arguments submitted by
applicant and the Examining Attorney, we find that
RAPIDRISE in the form sought to be registered by applicant
is merely descriptive of applicant’s goods, and that
applicant has failed to submit sufficient evidence of
acquired distinctiveness to warrant registration under
Section 2(f) of the Trademark Act.
Decision: The refusal to register is affirmed.