Chi-Chi’s

Trademark Trial and Appeal Board

Mar 30, 2001

No. 75536690 (T.T.A.B. Mar. 30, 2001)

03/30/01
Paper No. 10
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Chi-Chi’s, Inc.
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Serial No. 75/536,690
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Corrine M. Freeman of Lyon & Lyon LLP for Chi-Chi’s, Inc.
Anna Erenburg, Trademark Examining Attorney, Law Office 115
(Tomas Vlcek, Managing Attorney).
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Before Hairston, Wendel and Bottorff, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by Chi-Chi’s, Inc. to
register the term SALSAFIED for “restaurant services.”1
The Trademark Examining Attorney has refused
registration under Sections 1, 2, 3 and 45 of the Trademark
Act on the ground that the term, as used on the specimens
of record, fails to function as a mark for the identified
services.
1 Serial No. 75/536,690, filed August 14, 1998, alleging dates of
first use of March 1997.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/536,690
2
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs in
the case.2
The specimens of record consist of applicant’s menu.3
Applicant maintains that the term SALSAFIED functions as a
mark for its restaurant services because the term is unique
and fanciful, and is used repeatedly and in a prominent
manner on the menu. Also, applicant argues that in
addition to the term SALSAFIED, it uses other variations of
the word “salsa” on the menu, e.g., SALSAFY and
SALSAFICATION, and this will cause customers to identify
all the variations, including SALSAFIED, with applicant.
There is no dispute that the term SALSAFIED appears in
the menu a number of times. As applicant points out in its
brief, the term SALSAFIED appears as part of the menu
heading “Salsafied Specialties;” in text which applicant
2 Applicant, for the first time with its reply brief, submitted
the affidavit of its Senior Vice-President for Marketing along
with several exhibits. Under Trademark Rule 2.142(d), evidence
submitted for the first time with a brief on appeal is generally
considered untimely and therefore usually given no consideration.
In view thereof, we have not considered this evidence in reaching
our decision herein.
3 We note that the menu is a substitute specimen and that the
specimen submitted with the application consists of an
advertisement. Applicant, however, has not argued that the term
SALSAFIED, as used on the advertisement, functions as a mark. In
view thereof, and since both applicant and the Examining Attorney
have focused their arguments on use of the term SALSAFIED on
applicant’s menu, we likewise have considered only applicant’s
menu in reaching our decision.
Ser No. 75/536,690
3
denotes as “The Declaration of Salsafication;” as part of a
description provided under the “Lexicana de Chi-Chi’s;” and
several times in the descriptions of various food items.
Reproduced below are examples of some of these uses.
Ser No. 75/536,690
4
As noted by the Board in In re Remington Products
Inc., 3 USPQ2d 1714, 1715 (TTAB 1987):
To be a mark, the term, or slogan, must
be used in a manner calculated to project to
purchasers or potential purchasers a single
source or origin for the goods [or services]
in question. Mere intent that a term function
as a trademark [or service mark] is not enough
in and of itself, any more than attachment of
the trademark symbol would be, to make a term
a trademark.
A critical element in determining whether
a term is a trademark is the impression the
term makes on the relevant public.
In this case, we disagree with applicant that the term
SALSAFIED, as used on the menu, functions as a mark for
applicant’s restaurant services. Contrary to applicant’s
contention, the only fairly prominent use of the term on
the menu is as part of the phrase “Salsafied Specialties”
which even applicant acknowledges is a menu heading. The
menu heading serves to identify the type of specialty
dishes applicant offers in its restaurant, rather than the
restaurant services themselves. The remaining uses of
SALSAFIED in the menu are decidedly less visible as they
are buried in text. These uses simply do not stand out
among the over fifty appetizer and entrée listings and
accompanying descriptions. While it is not necessary that
the term be more prominent than everything else on the
menu, where as here, it is so intermingled among text,
Ser No. 75/536,690
5
customers would be unable to discern that this particular
term is a service mark. Further, because applicant has
used the term SALSAFIED in so many diverse ways on the
menu, e.g., as part of a menu heading; within food and
drink descriptions; and to describe the nature of
applicant’s patrons, i.e., “salsafied people;” we believe
that customers and potential purchasers would view the term
SALSAFIED, as used on the menu, as simply a clever play on
the word salsa, and not as a source of origin of
applicant’s restaurant services.
In reaching our decision, we have not overlooked the
fact that applicant uses other “variations” of the word
salsa in the menu. However, we are not persuaded that such
uses would cause customers and prospective purchasers to
regard the term sought to be registered here, SALSAFIED, as
denoting source. In this regard, we note that there is no
evidence properly before us of applicant’s promotion of the
term SALSAFIED and the other variations of the word salsa
in connection with applicant’s restaurant services.
Decision: The refusal to register is affirmed.