Chilay Foods, Inc.

Trademark Trial and Appeal Board

Feb 27, 2002

No. 75699608 (T.T.A.B. Feb. 27, 2002)

2/27/02

Paper No. 12
ejs

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Chilay Foods, Inc.
________

Serial No. 75/699,608
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G. Donald Weber, Jr. for Chilay Foods, Inc.

Mitchell Front, Trademark Examining Attorney, Law Office
111 (Craig Taylor, Managing Attorney)
_______

Before Seeherman, Hairston and Drost, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Chilay Foods, Inc. has appealed from the final refusal
of the Trademark Examining Attorney to register ULTIMATE
SALSA, with the word SALSA disclaimed, for “food products,
namely guacamole dip” in Class 29 and “hot sauce namely
salsa and taco sauce” in Class 30.1 Registration has been
refused on two grounds: 1) that the mark is merely

1 Application Serial No. 75/699,608, filed May 4, 1999, and
asserting a bona fide intention to use the mark in commerce.

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/699,608
2
descriptive of the identified goods, Section 2(e)(1) of the
Trademark Act, 15 U.S.C. § 2(e)(1); and 2) that applicant’s
mark, if used on its identified goods, so resembles the
mark shown below, and registered for “salsa,” as to be
likely to cause confusion or mistake or to deceive.2

The registration includes the following statements:
The English translation of the foreign
wording in the mark, “LA ULTIMA” is
“THE ULTIMATE”; and

No claim is made to the exclusive right
to use “LA ULTIMA” or “SALSA.”

The appeal has been fully brief, but an oral hearing was
not requested.3

2 Registration No. 2,328,282, issued March 14, 2000.
3 In his appeal brief the Examining Attorney objected to our
consideration of third-party registrations which were referenced
in applicant’s brief because copies of the registrations were not
submitted. With its reply brief applicant has attempted to
remedy the objection, stating in the brief that it was submitting
actual copies of the registrations, although, in point of fact,
only a copy of Registration No. 1,671,295 was attached to the
brief. In any event, we have considered the four third-party
Ser No. 75/699,608
3
We turn first to the refusal based on the ground of
mere descriptiveness. A mark is merely descriptive, and
therefore prohibited from registration by Section 2(e)(1)
of the Act, if it immediately conveys knowledge of the
ingredients, qualities or characteristics of the goods or
services with which it is used. In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed Cir. 1987).
With respect to the goods in Class 30, obviously the
word SALSA in applicant’s mark is the generic term for one
of the goods, salsa. Applicant does not seriously dispute
this, and has disclaimed exclusive rights to the word.4 We
also find that the word ULTIMATE is a laudatory descriptive
term. The Examining Attorney has quoted the following
definitions of “ultimate”: “representing or exhibiting the

registrations. Applicant first referenced these registrations in
its response to the first Office action, and the Examining
Attorney did not, at any time in the examination of the
application, advise applicant that the registrations would not be
considered because a mere listing of registrations is not
sufficient to make them of record. Accordingly, we deem the
Examining Attorney to have waived any objection to the form of
the submission.
We also note that, with its reply brief, applicant has
submitted exhibits which it alleges to be labels for its goods.
This evidence is manifestly untimely, and has not been
considered. See Trademark Rule 2.142(d).
4 In its appeal brief applicant does make the point that “salsa”
is also defined as “a kind of Latin American dance music of Afro-
Cuban and Puerto Rican origin influenced by jazz and rock.” p.
8. In its reply brief applicant appears to retreat from any
suggestion that this is the meaning consumers would understand
when seeing ULTIMATE SALSA in connection with its identified
goods. “Applicant is not urging that Applicant’s goods and/or
services relate to a musical term.” p. 7.
Ser No. 75/699,608
4
greatest possible development or sophistication” and
“utmost; extreme.”5 The Examining Attorney has also made of
record a large number of third-party registrations in which
the word ULTIMATE has been disclaimed. These registered
marks include THE ULTIMATE CHEESECAKE and design, with THE
ULTIMATE CHEESECAKE disclaimed, for, inter alia, cakes;6 THE
ULTIMATE CAFÉ and design, with THE ULTIMATE CAFÉ
disclaimed, for, inter alia, espresso coffee and coffee
beans;7 and SER THE ULTIMATE CHOCOLATE CAKE and design, with
THE ULTIMATE CHOCOLATE CAKE disclaimed, for cakes mixes.8
Applicant contends that these third-party
registrations contradict the Examining Attorney’s position
that the word ULTIMATE is descriptive because “each of
these examples represents a Registration—not a refusal of
registration.” Brief, p. 9 (emphasis in original).
However, although the various marks have been registered,
the fact that the word ULTIMATE has been disclaimed in the
registration indicates that this word in each mark has been
considered to be merely descriptive.

5 The American Heritage Dictionary of the English Language, 3d
ed. © 1992.
6 Registration No. 2,098,784.
7 Registration No. 1,925,661.
8 Registration No. 1,689,193.

Ser No. 75/699,608
5
When these descriptive words ULTIMATE and SALSA are
joined in the mark ULTIMATE SALSA, we find that the mark as
a whole is merely descriptive of applicant’s goods, in that
it immediately conveys to consumers that applicant’s salsa
is the best. This situation presented here is very similar
to that discussed in In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564 (Fed. Cir. 2001). In that case, the
Court of Appeals for the Federal Circuit, our principal
reviewing court, held that THE ULTIMATE BIKE RACK is a
laudatory descriptive phrase for a bike rack.
We note that there are four registrations, all owned
by the same entity, for the marks ULTIMATE, THE ULTIMATE
JUICE and THE ULTIMATE TASTE9, for fruit juices, which were
not registered on the basis of acquired distinctiveness
and/or for which a disclaimer of ULTIMATE was not required.
We do not know the circumstances under which these
registrations issued but, as the Court noted in In re Nett
Designs, supra, the Board must assess each mark on the
record submitted with the particular application. The fact
that another entity was able to obtain registrations for
ULTIMATE for fruit juices without disclaimer or resort to
the provisions of Section 2(f) does not outweigh the

9 This registration was cancelled in 2001 for failure to file a
Section 8 affidavit of use.
Ser No. 75/699,608
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evidence of descriptiveness of ULTIMATE as shown by the
dictionary definitions and numerous third-party
registrations submitted by the Examining Attorney in which
ULITMATE was disclaimed.
Accordingly, we affirm the refusal of registration
with respect to the application in Class 30 on the ground
that ULTIMATE SALSA is merely descriptive of applicant’s
identified salsa.
Because the application is in two classes, we must
also consider whether the mark is merely descriptive of the
goods in Class 29, which are identified as “guacamole dip.”
Although applicant states that SALSA is not descriptive of
guacamole, we note that applicant agreed to a disclaimer of
SALSA for both classes in the application, thereby
indicating that the term is, in fact, descriptive of
guacamole dip as well as salsa, i.e., that salsa is an
ingredient in the dip. As noted previously, a mark is
merely descriptive if it describes an ingredient of the
goods. See In re Engineering Systems Corp., 2 USPQ2d 1075
(TTAB 1986). In view of the evidence previously discussed,
we find that consumers, upon seeing the mark ULTIMATE SALSA
in connection with guacamole dip, will immediately
understand that the guacamole dip contains the best salsa.
Accordingly, we affirm the refusal of registration based on
Ser No. 75/699,608
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Section 2(e)(1) with respect to the Class 30 application as
well.
This brings us to the refusal based on Section 2(d) of
the Trademark Act. Our determination is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors set forth in In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In
any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods. Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976).
With respect to the marks, we note that although the
Examining Attorney refers to the cited mark as LA ULTIMA
SALSA, the words LA ULTIMA are clearly separated from the
word SALSA, and this separation is recognized by the form
of the disclaimer of the words, which is not for the phrase
LA ULTIMA SALSA, but for LA ULTIMA and SALSA separately.
The Examining Attorney points out that the words LA
ULTIMA in the cited mark translate as THE ULTIMATE, such
that the meaning of the words of the marks are in effect
identical. However, we also note that the words LA ULTIMA
SALSA are descriptive (LA ULTIMA) and generic (SALSA) for
the goods, and that applicant has disclaimed rights to the
Ser No. 75/699,608
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exclusive use of these words. Thus, we find it difficult
to base a finding of likelihood of confusion on the mere
fact that applicant’s mark contains the English version of
words to which registrant has no exclusive rights.
Moreover, we do not agree with the Examining Attorney
that the design in the center of the registered mark, which
appears to be an abstract depiction of chili peppers, is
subordinate to the word portion, and deserves less weight
in the comparison of the marks as a whole. Rather, the
picture occupies a prominent position in the mark, both
because of its placement in the center of the mark,
separating the words, and because of its size.
Further, because of the placement of the design, the
cited mark appears to be the words LA ULTIMA, with the word
SALSA as a subordinate part of the mark, indicating the
name of the product, SALSA.
Accordingly, the marks are different in appearance,
pronunciation and commercial impression. Although when the
words are translated they have the same meaning, because of
the manner in which the registered mark is displayed, there
is even some degree of difference in connotation of the
marks as a whole, with the cited mark, as noted above,
emphasizing LA ULTIMA, while the applied-for mark is the
phrase ULTIMATE SALSA.
Ser No. 75/699,608
9
Accordingly, and because the cited mark is entitled to
a very limited scope of protection, we find that
applicant’s mark is not likely to cause confusion with the
cited registration even if they are used on identical
goods, salsa. If applicant’s mark is used on guacamole
dip, the goods of its Class 29 application, this adds an
additional degree of difference.
Decision: The refusal of registration pursuant to
Section 2(e)(1) on the ground that applicant’s mark is
merely descriptive of its goods in both classes is
affirmed; the refusal of registration pursuant to Section
2(d) on the ground of likelihood of confusion is reversed
as to both classes.10

10 We note that in its appeal brief applicant states that it has
not declined the Examining Attorney’s suggestion (made during the
course of examination) that it may want to consider amending the
application to the Supplemental Register “but, rather, is merely
holding such action in abeyance until the present discussions are
considered by the TTAB.” Brief, p. 10. Applicant is reminded
that Trademark Rule 2.142(g) provides, in relevant part, that an
application which is decided on appeal, as has this one, will not
be reopened except upon order of the Commissioner, and a petition
to the Commissioner to reopen an application will be considered
only upon a showing of sufficient cause for consideration of any
matter not already adjudicated.