Clive Baillie

Trademark Trial and Appeal Board

Jul 2, 2013

No. 85563995 (T.T.A.B. Jul. 2, 2013)

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

Mailed: July 2, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Clive Baillie
________

Serial No. 85563995
_______

Aaron T. Borrowman of Kelly & Kelly LLP for Clive Baillie.

John S. Yard, Trademark Examining Attorney, Law Office 115
(John Lincoski, Managing Attorney).
_______

Before Holtzman, Cataldo and Adlin,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Clive Baillie, has filed an application to
register in standard characters on the Principal Register
the mark PASTRY WANDS for “household utensils, namely,
pastry thickness measurement utensils” in International
Class 9.1
Registration has been finally refused under Section

1 Application Serial No. 85563995 was filed on March 8, 2012,
based upon applicant’s assertion of a bona fide intent to use the
applied-for mark in commerce in connection with the goods.

Ex Parte Appeal No. 85563995

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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
goods. Applicant has appealed the refusal to register and
the appeal is fully briefed.
The trademark examining attorney argues (brief,
unnumbered p. 3) that the term PASTRY WANDS “combines the
descriptive elements PASTRY and WANDS, respectively.” The
examining attorney further argues (Id. at 4) that “both the
individual components and the composite result are
descriptive of applicant’s goods … namely, that they are
stick-like tools or utensils used to make pastry.”
In support of his position, the examining attorney has
made of record dictionary definitions of the terms PASTRY
and WANDS. According to these definitions, PASTRY is
defined as “dough or paste consisting primarily of flour,
water and shortening that is baked and often used for foods
such as pies or tarts” and “baked sweet foods made with
pastry.”2 WAND is defined as “any tool that has the shape
of a thin stick.”3 Furthermore, and in response to the
examining attorney’s request for information under
Trademark Rule 2.61(b), applicant submitted (September 6,
2012 communication) a copy of the intended product

2 American Heritage Dictionary on Education.yahoo.com
3 Macmillandictionary.com
Ex Parte Appeal No. 85563995

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packaging for its goods, reproduced below, identified as
“an illustration of a box, with instructions and using the
mark, which applicant intends on using with the goods of
the present application at the appropriate time.”4

The examining attorney notes that this intended packaging
indicates that the goods are as identified in the
application, namely, “pastry thickness measurement
utensils” and that they have the appearance of a thin
stick. The examining attorney further notes that the
intended packaging indicates that they are used to produce
“perfect pastry thickness every time” and are “an essential
tool for pastry chefs of any level.”

4 Applicant further clarified as required that its goods have not
yet been produced or sold, and indicated that its goods “are not
specifically used for making edible pastry wands, and are not
edible pastry wands.” (Id.)
Ex Parte Appeal No. 85563995

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Applicant, for its part, argues that its mark does not
immediately convey information regarding the nature of its
goods, but rather is suggestive thereof.
A mark is merely descriptive if “it forthwith conveys
an immediate idea of the ingredients, qualities or
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. 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). The examining
attorney bears the burden of showing that a mark is merely
descriptive of the identified goods or services. See In re
Ex Parte Appeal No. 85563995

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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 and evidence that PASTRY WANDS is
merely descriptive of the identified goods. The dictionary
definitions of record and proposed packaging clearly
indicate that PASTRY is, at best, highly descriptive of a
feature, characteristic or use of the goods. However, and
notwithstanding that applicant’s goods are depicted as
sticks of varying length, it is not clear that WANDS merely
describes the goods. More importantly, there is no
evidence of record to support a finding that consumers will
view the combination of terms comprising the mark PASTRY
WANDS as merely describing “household utensils, namely,
pastry thickness measurement utensils.”
In this case, there is no evidence to indicate that
the relevant purchasers of applicant’s goods would perceive
PASTRY WANDS to be a descriptive term for measurement
devices of any kind. Simply put, the evidence of record –
including evidence consisting of the proposed packaging for
the goods – does not establish that PASTRY WANDS merely
describes them, notwithstanding the dictionary meanings of
PASTRY and WANDS and the applicability of the term PASTRY
to applicant’s goods.
Ex Parte Appeal No. 85563995

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Our 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 cooking supplies has used PASTRY WANDS 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)
[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
Ex Parte Appeal No. 85563995

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that the term is, in fact, descriptive, may oppose and
present evidence on this issue to the Board.
Nonetheless, and as discussed above, the evidence made
of record by the examining attorney clearly indicates that
the term PASTRY in applicant’s mark is, at best, highly
descriptive of a function, feature or use of the recited
goods. Accordingly, we affirm the refusal to the extent
that the mark is not entitled to registration in the
absence of a disclaimer of the word PASTRY. See In re
Country Music Association Inc., 100 USPQ2d 1824, 1835 (TTAB
2011).
Decision: The refusal to register is affirmed to the
extent that the word PASTRY in the mark is merely
descriptive.
Applicant is allowed thirty days from the mailing date
of this decision to submit the required disclaimer of
PASTRY to the Board, in which case the refusal to register
will be set aside.5 See Trademark Rule 2.142(g).

5 The standardized printing format for the required disclaimer
text is as follows: “No claim is made to the exclusive right to
use PASTRY apart from the mark as shown.” TMEP 1213.08(a)(i)
(October 2012).