Consorzio per la Tutela del Formaggio Grana Padano

Trademark Trial and Appeal Board

Sep 9, 2009

No. 79045259 (T.T.A.B. Sep. 9, 2009)

Mailed: September 9, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Consorzio per la Tutela del Formaggio Grana Padano
________

Serial No. 79045259
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Clark W. Lackert of King & Spalding LLP for Consorzio per
la Tutela del Formaggio Grana Padano.

David Yontef, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Cataldo, Mermelstein and Ritchie,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Consorzio per la Tutela del Formaggio Grana Padano has
applied to register on the Principal Register the
certification mark shown below for “cheese” in
International Class 29.1

1 Application Serial No. 79045259 was filed on August 27, 2007,
seeking an extension of protection under Section 66(a) of the
Trademark Act, based upon applicant’s ownership of International
Registration No. 0940996, issued on August 27, 2007.
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 79045259
2

In response to a requirement by the trademark
examining attorney, applicant submitted the following
certification statement:
The certification mark, as used by authorized
persons, certifies that the goods are produced in
accordance with standards codified by the
government of the Republic of Italy and adopted
by the certifier, specifically (i) production
methods (semi-fat cheese with hard, boiled and
slowly-ripened paste, made of soured and curdled
milk from dairy cows fed on green or dried fodder
and milked twice daily, left to rest and
partially skimmed by allowing the cream to rise
naturally; made throughout the year; and
naturally matured in cold stores at temperatures
varying from 15 degrees to 22 degrees C); (ii)
characteristics (cylindrical, with slightly
convex or straight flanks and slightly rimmed
flat faces; diameter 35 to 45 cm. and flank
height 18 to 25 cm., with allowances depending on
the manufacturing technique; 24 to 40 kg. each
(cheeses weighing less than 24 kg. are not
accepted); dark external color, greased or
natural gold-yellow; paste color is white or
straw-yellow; fragrant and delicate aroma and
taste; texture is finely grainy, radial scaly
cut; and minimum 32% fat content in the dry
matter); and (iii) regional origin (the
geographic territory comprised of the Italian
provinces of Alexandria, Asti, Cuneo, Novara,
Turin, Vercelli, Bergamo, Brescia, Como, Cremona,
Mantova on the left bank of the Po River, Milan,
Pavia, Sondrio, Verese, Trento, Padova, Rovigo,
Ser No. 79045259
3
Treviso, Veneto, Verona, Vicenza, Bologna on the
right bank of the Reno River, Ferrara, Forli,
Piacenza and Ravenna).

In response to further requirements by the examining
attorney, applicant has indicated as follows: “Color is
not claimed as a feature of the mark;” “The mark consists
of the word ‘GRANA’ bisecting a hexagonal polygon formed by
dashes;” and “the foreign wording in the mark translates
into English as ‘grain.’” In addition, applicant claimed
ownership of prior Registration Nos. 1977831, 2823246, and
2912683.
In addition, the trademark examining attorney required
applicant to disclaim the term “GRANA” in applicant’s mark
under Section 6 of the Trademark Act, 15 U.S.C. § 1056, on
the ground that such term is merely descriptive of a
feature or quality of the goods certified thereby.
When the requirement for a disclaimer was made final,
applicant appealed. Applicant and the examining attorney
filed main briefs and applicant filed a reply brief.
Evidentiary Issues
Before turning to the substantive ground for refusal,
we note that applicant submitted, for the first time with
its reply brief, exhibits consisting of printouts from
Internet websites referencing applicant and cheese
certified by it. As often stated, the record in the
Ser No. 79045259
4
application should be complete prior to the filing of an
appeal. See Trademark Rule 2.142(d). The exhibits
attached to applicant’s reply brief were not made of record
during examination, despite the fact that applicant had the
opportunity to do so with its June 5, 2008 and January 8,
2009 communications to the examining attorney.
Accordingly, their submission with the reply brief is
manifestly untimely, and we have not considered this
evidence in reaching our decision. See In re U.S. Cargo
Inc., 49 USPQ2d 1702, 1703 n.2 (TTAB 1998) (third-party
registrations submitted with reply brief not considered);
and TBMP §1203.02(e) (2d ed. rev. 2004).
Issue on Appeal
We turn then to the issue on appeal; namely, whether
applicant must disclaim GRANA apart from the mark as shown
in order to obtain registration.
The examining attorney may require an applicant to
disclaim an unregistrable component of a mark otherwise
registrable. See Section 6 of the Trademark Act, 15 U.S.C.
§1056. Merely descriptive terms are unregistrable under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), and therefore may be subject to disclaimer
apart from a mark otherwise registrable. Failure to comply
with a disclaimer requirement is grounds for refusal of
Ser No. 79045259
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registration. See In re Omaha National Corp., 819 F.2d
1117, 2 USPQ2d 1859 (Fed. Cir. 1987); and In re Box
Solutions Corp., 79 USPQ2d 1953 (TTAB 2006).
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. See, e.g., 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 (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
MBAssociates, 180 USPQ 338 (TTAB 1973). On the other hand,
if imagination, thought or perception is required to reach
a conclusion on the nature of the goods or services, the
mark is suggestive and registrable. See In re Nett
Designs, 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001);
and In re Gyulay, supra. It has long been acknowledged
that there is a thin line between terms that are merely
Ser No. 79045259
6
descriptive and those that are suggestive. See In re
Atavio Inc., 25 USPQ2d 1361 (TTAB 1992).
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 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. That a term may have
other meanings in different contexts is not controlling.
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
The burden is initially on the United States Patent
and Trademark Office to make a prima facie showing that the
term or word in question would be considered descriptive by
purchasers of applicant’s goods or services and, where
doubt exists as to whether a term is descriptive, such
doubt should be resolved in favor of the applicant. In re
Merrill Lynch, Pierce, Fenner, and Smith, Inc., 828 F.2d
1567, 4 USPQ2d 1141, 1144 (Fed. Cir. 1987).
In support of the refusal, the examining attorney has
made of record excerpts of articles from the Lexis/Nexis
computer database. Illustrative samples from these
articles are reproduced below (emphasis added):
Ser No. 79045259
7
Donatella Trotti shares her passion for cooking
at a few coveted tables.
… at dinner, from $12.50 for pasta with garlic,
parsley, pepper and grana cheese to around $22
for entrees such as trout baked with potatoes,
tomatoes, capers and olives or beef filet with
truffle oil. …
(Fort Worth Star-Telegram - September 19, 2007);

… He stacks uber-fresh heirloom tomatoes with
grana cheese in a combination that reminds us
that tomatoes should only be eaten ripe, in
season, and never cold. …
(The Atlanta Journal-Constitution - August 30,
2007);

When I am in a rush, I always make beef
straccetti, which means “ripped up pieces,” with
arugula and grana cheese. It can be done in one
pan – so it is easy to clean up as well. …
(Newsday (New York) - June 24, 2007); and

But once we sit down in a roomy booth and watch
as the tuxedoed waiters roll a wheel of grana
cheese past us to another table, I’m hooked. The
courtly, old-fashioned service is everything it
should be. …
(Los Angeles Times - April 6, 2006).

It is settled that excerpts from articles taken from the
Nexis database are competent evidence of how a term may be
perceived. See In re Shiva Corp., 48 USPQ2d 1957 (TTAB
1998).
In addition, the examining attorney has made of record
articles and advertisements retrieved from his search of
the Google® Internet search engine. Excerpts from these
webpages follow (emphasis added):
Ser No. 79045259
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Caesar Salad $7.95
Classic dressing, brioche croutons, grana cheese
with crispy calamari $10.50
with grilled chicken $ 10.75

Capellini Pasta $9.95
With housemade marinara sauce and grana cheese

Penne Pasta $10.25
With tomatoes, pine nuts, basil pesto cream sauce
and grana cheese
(tastecafebistro.com);

Di Bruno Bros. White Truffle Cream
Our white truffle cream is made with the finest
Italian white truffles, grana cheese and cream.
Use this cream to enhance flavors of omelets,
pasta, risotto, meats, fish and antipasti.
Create bold and distinctive sauces, and
condiments using this white truffle cream as a
main ingredient.
(dibruno.com);

Small Shed Flatbreads
The Q $12.50
Golden Farms all natural, nitrate free,
pepperoni, pancetta, mushrooms, mozzarella and
grana cheese, tomato sauce and herbs.

Aubergine $12
Oven-roasted eggplant and red peppers, garlic,
tomato sauce, mozzarella and grana cheese,
oregano
(smallshed.com); and

All Cheese Considered: Swiss Mountain Cheese
… The oldest one of them all is what is called
Swiss Mountain Cheese, also known as Sbrinz (the
name comes from an old spelling of the Swiss
market town of Brienz in the Bernese Oberland).
Most cheese sources say that it was likely the
cheese Pliny the Elder was referring to when he
wrote of caseus helveticus, or “Swiss cheese,” in
the first century AD. In any case, the cheese
Ser No. 79045259
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has been around for at least that long and has
always been highly regarded by cheese aficionados
throughout Europe and especially in Italy since
it is closely related in style, texture, and
flavor to their beloved grana-type cheese. Some
upstarts even suggest in may be the ancestral
inspiration for Parmagiano-Reggiano, the greatest
grana cheese of all. …
(allbusiness.com/retail-trade/food-stores).

As shown by the examining attorney’s evidence, the
term “GRANA” describes a type of cheese. In the involved
application, applicant seeks registration of GRANA and
design as a certification mark for cheese. Thus, based
upon the evidence of record the term GRANA merely describes
a characteristic, function or feature of the goods, namely,
cheese, certified by applicant. As such, we find that the
examining attorney has made a prima facie showing that
GRANA is descriptive of the goods certified by applicant.
We are not persuaded by applicant’s assertion in its
brief (p. 4) that “there is no evidence in the record that
the references cited by the Examining Attorney for ‘grana
cheese’ are anything other than references for cheese
certified by Applicant.” In that regard, we note that the
evidence made of record by the examining attorney mentions
neither applicant nor certification of GRANA cheese, but
rather uses the term GRANA merely to describe a type of
cheese. Faced with the examining attorney’s prima facie
showing that GRANA merely describes cheese, it was
Ser No. 79045259
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incumbent upon applicant to timely submit evidence that
such designation points uniquely to applicant or to
otherwise demonstrate that GRANA is not merely descriptive
as applied to the goods applicant seeks to certify.
However, applicant has provided no evidence to support its
assertions that the articles submitted by the examining
attorney “contain incorrect information and are outdated”
(brief, p. 7) or that the term GRANA has geographical or
other significance as applied to cheese (brief, p. 6).
Without supporting evidence, applicant’s arguments simply
fail to rebut the examining attorney’s prima facie showing
that GRANA merely describes a type of cheese.2
In short, the term GRANA in applicant’s applied-for
certification mark, when used in association with the
cheese certified thereby, has a descriptive meaning, and
applicant has submitted no evidence that such meaning is
not applicable to the goods it certifies. In view thereof,
we find that GRANA is descriptive of applicant’s goods and
that the required disclaimer is appropriate.

2 Inasmuch as the examining attorney has made a prima facie
showing that GRANA merely describes a type of cheese, we need not
consider the examining attorney’s additional argument that
consumers would translate the term into “grain” under the
doctrine of foreign equivalents. See Palm Bay Imports, Inc. v.
Veuve Cliquot Ponsardin Maison fondee en 1772, 396 F.3d 1369,
1377, 73 USPQ2d 1689 (Fed. Cir. 2005); and In re Spirits
International N.V., 563 F.3d 1347, 90 USPQ2d 1489 (Fed. Cir.
2009).
Ser No. 79045259
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Decision: The refusal to register based on
applicant’s failure to disclaim GRANA is affirmed.
However, if applicant submits the required disclaimer of
GRANA to the Board within thirty days, this decision will
be set aside, as to the affirmance of the disclaimer
requirement, the application shall be amended to enter the
disclaimer, and the application then shall proceed to
publication.3 See Trademark Rule 2.142(g), 37 C.F.R.
§2.142(g).

3 The standardized printing format for the required disclaimer
text is as follows: “No exclusive right to use GRANA is claimed
apart from the mark as shown.” See TMEP §1213.08(a) (4th ed.
April 2005).