Dairyfood USA, Inc.Download PDFTrademark Trial and Appeal BoardMay 14, 2018No. 86787312 (T.T.A.B. May. 14, 2018) Copy Citation This Opinion is Not a Precedent of the TTAB Mailed: May 14, 2018 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Dairyfood USA, Inc. _____ Serial No. 86787312 _____ Richard J. McKenna and Sara Suleiman of Foley & Lardner LLP, for Dairyfood USA, Inc. Tarah Hardy Ludlow, Trademark Examining Attorney, Law Office 110, Chris A. F. Pedersen, Managing Attorney. _____ Before Zervas, Wolfson, and Larkin, Administrative Trademark Judges. Opinion by Larkin, Administrative Trademark Judge: Dairyfood USA, Inc. (“Applicant”) seeks registration on the Principal Register of the mark shown below for (as amended) “Cheese; processed cheese; pasteurized process cheese products, namely, cheese spreads, cheese dips; pasteurized process cheese food; pasteurized Serial No. 86787312 - 2 - process cheese spread; cheese products, namely, spreads and dips; smoked pasteurized process cheddar and Swiss cheese; cheese spreads; and cheese in the form of dips,” in International Class 29.1 The Trademark Examining Attorney has refused registration of Applicant’s mark under Sections 2(e)(1) and 6(a) of the Trademark Act, 15 U.S.C. §§ 1052(e) and 1056(a), without a disclaimer of the words DAIRY FOOD (which she contends is the correct spelling of the compound word DAIRYFOOD in Applicant’s mark),2 on the ground that DAIRY FOOD is a generic term for Applicant’s goods and thus is an unregistrable component of the mark. The Examining Attorney has also rejected Applicant’s evidence that DAIRYFOOD has acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), on the ground that no amount of evidence of acquired distinctiveness could permit registration of Applicant’s mark without a disclaimer of DAIRY FOOD because the term DAIRYFOOD is generic. 1 Application Serial No. 86787312 was filed on October 14, 2015 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), on the basis of Applicant’s claimed first use of the mark and first use of the mark in commerce at least as early as June 30, 2015. Applicant describes the mark as “consist[ing] of the white letters ‘df’ inside a half green, half yellow sphere; the word ‘DAIRYFOOD’ in green and the letters ‘USA’ in yellow below the sphere; and below ‘DAIRYFOOD USA’ the word ‘INCOPORATED’ in black.” The colors white, green, yellow, and black are claimed as features of the mark, and Applicant has disclaimed the exclusive right to use the word INCORPORATED apart from the mark as shown. 2 If “a mark comprises a word or words that are misspelled but nonetheless must be disclaimed, the examining attorney must require disclaimer of the word or words in the correct spelling.” See Trademark Manual of Examining Procedure (“TMEP”) Section 1213.08(c) (Oct. 2017); In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859, 1861 (Fed. Cir. 1987) (affirming requirement of disclaimer of “first tier” in composite word-and-design mark containing the telescoped word “FirsTier”); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (finding that applicant’s voluntary disclaimer of “urban housing” in application to register URBANHOUZING would be the appropriate form of the disclaimer if mark were not merely descriptive). Applicant does not dispute that DAIRY FOOD is the proper form of the disclaimer if one is required. 13 TTABVUE 3. Serial No. 86787312 - 3 - When the refusal was made final, Applicant appealed and requested reconsideration, 4 TTABVUE, which was denied. 5-11 TTABVUE. The case is fully briefed. We affirm the refusal to register without a disclaimer of DAIRY FOOD on the grounds that the term is generic for Applicant’s goods and, alternatively, that if it is not generic, it is merely descriptive of Applicant’s goods and has not acquired distinctiveness as Applicant’s trademark. I. Prosecution History and Record on Appeal The Examining Attorney originally required a disclaimer of the words DAIRYFOOD USA INCORPORATED.3 After Applicant entered a disclaimer of INCORPORATED and amended its application to claim acquired distinctiveness with respect to the words DAIRYFOOD USA,4 the Examining Attorney subsequently required a disclaimer of DAIRY FOOD only.5 The record on appeal consists of: 1. Dictionary definitions of “dairy,” “food,” “USA,” “incorporated,” and “cheese;”6 2. The certificate of registration for Registration No. 1934416 of DAIRYFOOD USA (“DAIRYFOOD” disclaimed) on the Supplemental Register for “pasteurized process cheese food, pasteurized process cheese spread, milk 3 January 20, 2016 Office Action at 1. 4 June 29, 2016 Response to Office Action at 1; July 6, 2016 Voluntary Amendment at 1. 5 August 3, 2016 Office Action at 1. 6 January 20, 2016 Office Action at 2-13; February 17, 2017 Office Action at 12-13. Serial No. 86787312 - 4 - protein, milk fat, milk lactose, and milk minerals used for the manufacture of food additives;”7 3. Two declarations of Applicant’s President, Daniel Culligan, regarding Applicant’s use of the terms DAIRYFOOD USA and DAIRYFOOD, and Applicant’s sales, advertising, and media and public exposure of cheese products under the term DAIRYFOOD, and exhibits thereto;8 4. Pages from wikipedia.com, freedictionary.com, and various websites regarding the meaning and use of the words “dairy product,” “dairy products,” “dairy food,” and “dairy foods;”9 5. The results of a search of the word DAIRYFOOD using the Google search engine;10 7 June 29, 2016 Response to Office Action at 2. The certificate of registration lists Stauffer Cheese, Inc., not Applicant, as the registrant, and there is no assignment in the record, but the record suggests that Applicant is the current owner of the registration by change of name. Applicant claimed ownership of the registration in the involved application, the address for Stauffer Cheese, Inc. (listed in the registration), and Applicant’s address of record in the involved application, appear to be the same, and Applicant’s president Daniel Culligan stated in one of his two declarations submitted during prosecution that Applicant “adopted the corporate name ‘Dairyfood USA, Inc.’ on July 1, 2007 . . . .” 13 TTABVUE 32 (Second Culligan Decl. ¶ 4). In any event, the Examining Attorney treated the registration as being owned by Applicant during prosecution and on appeal, 17 TTABVUE 3, so we will do so as well. 8 June 29, 2016 Response to Office Action at 3-4; August 17, 2017 Request for Reconsideration at 10-42 (4 TTABVUE 13-46). Applicant attached copies of Mr. Culligan’s declarations and exhibits to its main appeal brief. 13 TTABVUE 28-29, 35-67. We discourage the resubmission on appeal of materials made of record during prosecution. See In re Thor Tech Inc., 85 USPQ2d 1474, 1475 n.3 (TTAB 2007). We will refer in this opinion to the paragraph numbers and exhibits in Mr. Culligan’s two declarations as they appear in the prosecution history of the application (e.g., “Second Culligan Decl. ¶ 8; Ex. E”). 9 August 3, 2016 Office Action at 2-49; February 17, 2017 Office Action at 14-44; September 5, 2017 Denial of Request for Reconsideration at 2-81 (5-11 TTABVUE). 10 February 3, 2017 Response to Office Action at 12-15. Serial No. 86787312 - 5 - 6. A report from Hoovers, a Dun & Bradstreet company, regarding Applicant’s business;11 and 7. Email correspondence between the Examining Attorney and Applicant’s counsel.12 II. Evidentiary Issue Before proceeding to the merits of the refusal, we must address an evidentiary issue. Applicant attached as Exhibits A and B to its main appeal brief pages from the websites at freedictionary.com and macmillandictionary.com that indicate that there are no definitions in those dictionaries of the term “dairy food,” 13 TTABVUE 20-21, and copies of the certificates of registration of four third-party registrations of marks containing the words DAIRY FOODS. 13 TTABVUE 23-26. These materials were not made of record during prosecution, and the Examining Attorney objects to this new evidence and requests that the Board disregard it. 17 TTABVUE 2. Rule 2.142(d) of the Trademark Rules of Practice, 37 C.F.R. § 2.142(d), provides that the “record in an application should be complete prior to the filing of an appeal” and that “[e]vidence should not be filed with the Board after the filing of a notice of appeal.” “Generally, materials not previously made of record during prosecution of an application are untimely if submitted for the first time at briefing and will not ordinarily be considered by the Board.” In re Pedersen, 109 USPQ2d 1185, 1188 11 Id. at 16-18. 12 Id. at 20-21. Serial No. 86787312 - 6 - (TTAB 2013); see also In re Fiat Grp. Mktg. & Corporate Commc’ns S.p.A., 109 USPQ2d 1593, 1596 (TTAB 2014). Applicant argues in its reply brief that with respect to the four third-party registrations,13 “the Examining Attorney raised the existence of the marks listed in these registrations in the evidence relied upon. Specifically, in the Office Action dated August 3, 2016, the Examining Attorney specifically relied upon Dairy Foods Magazine Internet References and IDFA Internet references in the cited evidence.” 15 TTABVUE 4-5. Applicant argues that it “is not introducing new evidence,” but “[i]nstead . . . simply submitting the actual trademark registrations related to the trademarks found in the Internet evidence that the Examining Attorney has already introduced.” Id. at 5. Applicant further argues that Section 1208.02 of the Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) “suggests that the Board has discretion to take judicial notice of third-party registrations when an applicant or examining attorney requests that such notice be taken during the course of an appeal.” Id. at 4. Applicant analogizes this case to In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681 (Fed. Cir. 2010), in which “the Federal Circuit exercised its discretion to take judicial notice of a third party’s trademark registrations.” 15 TTABVUE 4. 13 With respect to the lack of dictionary definitions of “dairy food, Applicant makes no substantive argument in response to the Examining Attorney’s objection, 15 TTABVUE 3-6, and does not request that we take judicial notice of this evidence, and we have given it no consideration. Serial No. 86787312 - 7 - We acknowledge that in Chippendales, “the Federal Circuit exercised its discretion to take judicial notice of third-party registrations in an ex parte appeal,” id., but “the Board’s well-established practice is not to take judicial notice of registrations that reside in the USPTO, and we do not take judicial notice of applicant’s late-filed registration[s] here.” In re Jonathan Drew, Inc., 97 USPQ2d 1640, 1644 n.11 (TTAB 2011). See also TBMP §1208.04 (“The Board’s well-established practice is not to take judicial notice of third-party registrations when an applicant or examining attorney requests that such notice be taken during the course of an appeal.”); Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 81 Fed. Reg. 69950, 69955 (October 7, 2016) (Board considered but rejected the suggestion of taking judicial notice of USPTO records and discussed various reasons the burden of introduction of information contained in USPTO trademark file records is most appropriately borne by the party seeking to introduce the evidence). In following our well-established practice, we note that Applicant had the opportunity to make the four registrations of record as part of its response to the non-final Office Action in which Applicant alleges that “the Examining Attorney raised the existence of the marks listed in these registrations,” 15 TTABVUE 4, in its subsequent Request for Reconsideration, or on a request to remand, but it did not do so. We have given this untimely evidence no consideration in our decision.14 14 As discussed below, we have considered Applicant’s arguments regarding the Examining Attorney’s evidence of the use of the referenced marks. 13 TTABVUE 8-9; 15 TTABVUE 5-6. Serial No. 86787312 - 8 - III. The Requirement of a Disclaimer on the Ground of Genericness Under Section 6(a) of the Trademark Act, 15 U.S.C. § 1056(a), “[t]he Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable.” Failure to comply with a disclaimer requirement is a basis for refusing registration. In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395, 1399-1400 (Fed. Cir. 2006); In re Stereotaxis, Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005). The Examining Attorney has required Applicant to disclaim the words DAIRY FOOD as a condition to registration of Applicant’s mark on the ground that it is the generic name for the goods identified in the application. “‘A generic term ‘is the common descriptive name of a class of goods or services.’” In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1634 (Fed. Cir. 2016) (quoting Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827, 1830 (Fed. Cir. 2015) and H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986) (internal punctuation omitted)). The test for determining whether a term “is generic is its primary significance to the relevant public.” In re Empire Tech. Dev. LLC, 123 USPQ2d 1544, 1547 (TTAB 2017). Determining whether a term is generic “involves a two-step inquiry: First, what is the genus of goods or services at issue? Second, is the term sought to be registered understood by the relevant public primarily to refer to that genus of goods or services?” Marvin Ginn, 228 USPQ at 530. Applicant and the Examining Attorney agree that the Examining Attorney must establish that the term DAIRY FOOD is generic by “clear evidence” of generic use. 13 TTABVUE 6; 17 Serial No. 86787312 - 9 - TTABVUE 6. See also In re Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1956 (TTAB 2018). A. The Genus of Goods “The genus of goods is often defined by the identification in the subject application . . . .” Empire Tech., 123 USPQ2d at 1547 (citing In re Meridian Rack & Pinion, 114 USPQ2d 1462, 1463 (TTAB 2015)). The Examining Attorney argues that Applicant’s entire identification of goods “adequately defines the genus at issue,” 17 TTABVUE 4, while Applicant argues that the proper genus is simply “cheese” alone. 13 TTABVUE 6; 15 TTABVUE 6. Because Applicant’s identification of goods includes not just “cheese” per se, but also specific types of cheese,15 and goods made from cheese,16 we find that Applicant’s identification adequately defines the genus of goods. See Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) (“[A] proper genericness inquiry focuses on the description of [goods or] services set forth in the [application or] certificate of registration.”); In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 92 USPQ2d 1682, 1684 (Fed. Cir. 2009) (defining the genus of goods or services at issue as the genus of goods or services for which the applicant sought protection, as set forth in its application). “‘A registration is properly refused if the word is the generic name of any of the goods or services for which registration is sought.’” Mecca Grade Growers, 125 USPQ2d at 1956 (quoting 15 These are “processed cheese” and “smoked pasteurized process cheddar and Swiss cheese.” 16 These are (with redundancies) “pasteurized process cheese products, namely, cheese spreads, cheese dips; pasteurized process cheese food; pasteurized process cheese spread; cheese products, namely, spreads and dips; cheese spreads; and cheese in the form of dips.” Serial No. 86787312 - 10 - Cordua Rests., 118 USPQ2d at 1638 (internal quotation omitted)); see also In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). B. The Relevant Purchasing Public’s Understanding of DAIRYFOOD for Applicant’s Goods17 We turn now to the second Marvin Ginn inquiry, whether DAIRYFOOD is understood by the relevant purchasing public to refer to any of Applicant’s goods. The Examining Attorney argues that the relevant purchasing public consists of “ordinary consumers who purchase [A]pplicant’s goods, because there are no restrictions or limitations to the channels of trade or classes of customers.” 17 TTABVUE 4. Applicant does not address this issue. We find that ordinary consumers of the identified goods comprise the relevant purchasing public. “‘Evidence of the public’s understanding of a proposed mark may be obtained ‘from any competent source, such as consumer surveys, dictionaries, newspapers and other publications.’” Empire Tech., 123 USPQ2d at 1548-49 (quoting Princeton Vanguard, 17 In its main brief, Applicant argues that the Examining Attorney has failed to show that either the phrase “dairy food” or the compound word “dairyfood” is generic, 13 TTABVUE 6- 11, in part because “Applicant’s mark does not use DAIRY and FOOD as two separate and distinct elements.” Id. at 11. In its reply brief, Applicant focuses on whether the phrase “dairy food” is generic. 15 TTABVUE 6-7. “Regardless of whether the mark is a compound term or a phrase, the applicable test is the same and the Board must consider the record evidence of the public’s understanding of the mark as a whole.” Princeton Vanguard, 114 USPQ2d at 1832. See also In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1112 (Fed. Cir. 1987) (in finding SCREENWIPE to be generic for wipes that clean computer and television screens, court noted that “[w]hether compounded as ‘screen wipe’ - - two words - - or ‘screenwipe - - one word - - either is ordinary grammatical construction” in which “the terms remain as generic in the compound as individually, and the compound thus created is itself generic.”). Serial No. 86787312 - 11 - 114 USPQ2d at 1830 (internal quotation omitted)).18 The Examining Attorney made of record dictionary definitions and Internet materials that she claims shows that when the words dairy and food “are combined into one term, i.e., the applied-for terms [sic] DAIRYFOOD, the meaning of the compound term is food containing milk products.” 17 TTABVUE 5. We turn first to the dictionary definitions. A proposed mark consisting of multiple terms “is generic if ‘it can be shown that ‘the public understands the individual terms to be generic,’ and the joining of those terms into one compound word provides no additional meaning.” Mecca Grade Growers, 125 USPQ2d at 1959 (quoting Princeton Vanguard, 114 USPQ2d at 1832 (internal quotation omitted)) (finding MECHANICALLY FLOOR-MALTED to be generic for malt for brewing, and distilling and processing of agricultural grain, based upon dictionary definitions of the words in the claimed mark and industry-specific evidence of use of the words). The Examining Attorney made of record dictionary definitions of the individual words in the compound word DAIRYFOOD that show that each word has an understood generic meaning. “Dairy” means “food containing milk or milk products,” while “food” means “nourishment in more or less solid form as opposed to liquid form.” COLLINS ENGLISH DICTIONARY (collinsdictionary.com).19 18 Applicant argues in its reply brief that “the relevant standard is ‘clear evidence’ not ‘competent evidence.’” 15 TTABVUE 6. Applicant confuses the question of whether the types of evidence relied upon by the Examining Attorney are probative of genericness (i.e., are competent sources) with the question of whether that evidence is sufficiently powerful to prove genericness (i.e., clearly shows it). 19 January 20, 2016 Office Action at 2-3, 5. The definition of “dairy” as “food containing milk or milk products” is alone probative of the meaning of “dairy food” because it defines a certain type of food, but the definition of “food” reinforces the meaning of “dairy food” when the words are combined. The Examining Attorney also made of record a definition of the word “cheese” as “a solid food made from milk.” MACMILLAN DICTIONARY (macmillandictionary.com). Serial No. 86787312 - 12 - Applicant does not acknowledge, much less dispute, these dictionary definitions, or the generic meaning of the words “dairy” and “food” that they establish.20 Instead, Applicant focuses on a dictionary definition and a Wikipedia entry regarding the words “dairy product,” as well as the definition of the word “cheese,” 13 TTABVUE 7, “first point[ing] out that none of these dictionary definitions provide a definition of terms appearing in Applicant’ [sic] mark, specifically ‘DAIRYFOOD’ or ‘DAIRY FOOD,’” and then arguing that “these definitions take us on a multi-step, tortured path of connecting the dots.” Id. at 10. Applicant also argues that the “evidence fails to include any dictionary definitions for DAIRYFOOD (or DAIRY FOOD); instead we must attempt to connect the dots using different definitions of DAIRY PRODUCT.” Id. at 12. These arguments are unavailing. The absence of “any dictionary definitions for DAIRY FOOD (or DAIRY FOOD),” id., does not show that the term is not generic. Although there is no dictionary definition of the compound word DAIRYFOOD per se, or of the phrase DAIRY FOOD, “this fact is not dispositive of the issue.” In re Recorded Books Inc., 42 USPQ2d 1275, 1280 (TTAB 1997) (finding RECORDED BOOKS to be generic for pre-recorded audio tape cassettes featuring literary works despite the fact that “there [was] no listing for the term ‘recorded book’”). Given the definitions of “dairy” and “food” in the record, February 17, 2017 Office Action at 12. This definition shows that cheese is a “food containing milk or milk products.” 20 Applicant argues that “while dictionary definitions may occasionally be instructive, they ‘cannot be conclusive of genericness . . . .’” 13 TTABVUE 11 (quoting J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 12:13 (5th ed. March 2018 update)). Applicant’s argument is not apt because we do not rely here upon the dictionary definitions of “dairy” and “food” as conclusive evidence that the compound word DAIRYFOOD is generic. Serial No. 86787312 - 13 - and the Internet evidence of the use of “dairy food” discussed below, a definition of the compound word DAIRYFOOD or the phrase DAIRY FOOD is not required to show that the term is generic for Applicant’s goods. Mecca Grade Growers, 125 USPQ2d at 1958 (fact that evidence did not show any definitions or use of applicant’s putative mark MECHANICALLY FLOOR-MALTED in its exact form not fatal to finding of genericness where the record “consist[ed] of dictionary and industry specific evidence demonstrating the use of” the words comprising the claimed mark “and demonstrating how these words may be used together.”). Similarly, we need not rely on the evidence of the meaning of the term “dairy product” to find that “dairy food” is generic, although that evidence has some probative value because it shows the meaning of the word “dairy” in the context of food products. Id.21 Contrary to Applicant’s claim, there is a direct path, through the Internet evidence of use of “dairy food” discussed immediately below, from the generic dictionary meanings of the words “dairy” and “food” to the conclusion that the compound word DAIRYFOOD is also generic. The Examining Attorney made of record numerous webpages showing the use of the words “dairy food” in connection with foods containing milk or milk products. 17 TTABVUE 5. We reproduce below the pertinent portions of representative pages from the record (all emphasis supplied by the Examining Attorney): 21 The Wikipedia entry for the term “dairy product” states that it was reached by redirection from the search term “dairy food.” It begins with the statement that a “dairy product or milk product is food produced from the milk of mammals.” August 3, 2016 Office Action at 2. A number of webpages in the record use “dairy food(s)” and “dairy product(s)” interchangeably. See, e.g., August 3, 2016 Office Action at 17, 37, 40, 43, 45-46, and 48. Serial No. 86787312 - 14 - August 3, 2016 Office Action at 17-18. Serial No. 86787312 - 15 - August 3, 2016 Office Action at 42. Serial No. 86787312 - 16 - August 3, 2016 Office Action at 45-46. Serial No. 86787312 - 17 - February 17, 2017 Office Action at 21. February 17, 2017 Office Action at 24. February 17, 2017 Office Action at 35. Serial No. 86787312 - 18 - February 17, 2017 Office Action at 38. August 3, 2016 Office Action at 12. These webpages and other similar ones in the record make it clear that “dairy food” refers to a category of food products made from or containing milk, and that this category of foods includes cheese. Applicant argues that “there are a number of problems with these webpages provided.” 13 TTABVUE 11. “First, these webpages do not clearly establish that ‘DAIRY FOOD’ immediately and unequivocally refers to Serial No. 86787312 - 19 - cheese. Rather, the webpages also refer to a wide variety of non-cheese types of dairy products, including, yogurt, cream, butter, puddings, ice cream, and frozen yogurt.” Id. (bolded emphasis added); see also 15 TTABVUE 6 (discussing various types of non- cheese products listed in Wikipedia entry regarding and dictionary definition of “dairy products”). Applicant argues that this evidence does not meet “the high burden establishing that the relevant public primarily understands DAIRY FOOD to mean cheese.” 13 TTABVUE 12. Applicant’s argument seems to be that because the term “dairy food” refers to products in addition to cheese, and not exclusively or “primarily” to cheese, the term is thus not generic for cheese. Applicant cites no authority for its argument, which is based upon the false premise that the generic name of a category of goods cannot be generic for every item that falls within the category. See, e.g., In re Analog Devices Inc., 6 USPQ2d 1808, 1810 (TTAB 1988) (claimed mark ANALOG DEVICES for multiple goods “name[d] a category or class of devices having analog capabilities” and was generic for various products that fell within that category), aff’d, 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989). Consistent with the dictionary meanings of “dairy” and “food,” and Applicant’s tacit admission that cheese is one of many types of dairy foods, the webpages in the record show that cheese falls within the “dairy food” category. The fact that other foods such as milk, yogurt, ice cream, and butter may also be dairy foods does not make “dairy food” any less generic for cheese.22 22 Under Applicant’s argument, “dairy food” would not be the generic name for any food within that category because “dairy food” arguably does not “primarily” refer to any particular item. Serial No. 86787312 - 20 - Applicant further argues that two webpages within the group made of record by the Examining Attorney, accessible at dairyfoods.com and idfa.org, show “that DAIRY FOOD is not being used in a generic fashion on these webpages; instead, the terms are being used as a trademark and such trademark use supports Applicant’s assertion that DAIRYFOOD is not generic in relation to Applicant’s goods.” 13 TTABVUE 8-9. The referenced webpages appear to be those of the publisher of Dairy Foods magazine, a cover of which is reproduced below23 and of the International Dairy Foods Association, which appears to be a trade association whose logo and slogan are shown below.24 23 August 3, 2016 Office Action at 34. 24 Id. at 35. Serial No. 86787312 - 21 - These pages may show the use of the term DAIRY FOODS as, or as part of, marks for magazines and association services directed to producers of dairy foods, but they do not show a “mixture of some webpages showing trademark uses and others showing generic uses” for the goods for which Applicant seeks registration.25 We are convinced, on the basis of the record as a whole, that the Examining Attorney showed by clear evidence that the terms DAIRY FOOD and DAIRYFOOD are no more than the sum of their generic parts “dairy” and “food” when used in connection with cheese and cheese products. The “combination of the two words . . . results in a designation that has a plain and readily understood meaning when used in connection with the type of category of product sold by” Applicant. Recorded Books, 42 USPQ2d at 1280. The “dairy food” product category name cannot be “exclusively appropriated by [Applicant] for products, some of which fall within that category of goods.” Analog Devices, 6 USPQ2d at 1810. Because “dairy food” is generic for cheese and the cheese products in Applicant’s identification of goods, Applicant’s mark cannot be registered without a disclaimer of the exclusive right to use DAIRY FOOD apart from the mark as shown. 25 Applicant’s reliance upon In re Merrill Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987), 13 TTABVUE 9, is misplaced. The evidence in that case showed a mixture of uses of “cash management account” both as a mark for services rendered by the applicant and as a generic term for services rendered by others. 4 USPQ2d at 1143-44. The Federal Circuit found that the evidence “showed recognition in a substantial number of publications that the source of the CASH MANAGEMENT ACCOUNT was the appellant” and did “not clearly place appellant’s mark in the category of a generic or common descriptive term.” Id. Here, the use of DAIRY FOODS by others in marks for magazines or trade association services relating to the dairy foods industry does not show recognition of DAIRYFOOD as Applicant’s mark for cheese or cheese products. Serial No. 86787312 - 22 - IV. Acquired Distinctiveness Because DAIRYFOOD is generic, no amount of evidence of acquired distinctiveness can give Applicant proprietary rights in the term for the goods for which Applicant seeks registration. Marvin Ginn, 228 USPQ at 530 (a generic term “is incapable of acquiring de jure distinctiveness under § 2(f)”). In the interest of completeness and judicial economy in the event that our determination that a disclaimer of DAIRY FOOD is necessary because DAIRYFOOD is generic is reversed on appeal, we will nevertheless consider whether Applicant’s evidence is sufficient to show that the term has acquired distinctiveness under Section 2(f) as Applicant’s mark for the identified goods (assuming DAIRYFOOD to be merely descriptive rather than generic). See Analog Devices Inc., 6 USPQ2d at 1808 n.3 (finding that claimed mark had acquired distinctiveness if it were found not to be a generic term). Applicant “bears the burden of proving acquired distinctiveness.” In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015) (affirming refusal to register composite mark LOUISIANA FISH FRY PRODUCTS BRING THE TASTE OF LOUISIANA HOME and design without a disclaimer of FISH FRY PRODUCTS). Applicant “must demonstrate that the relevant public understands the primary significance of [DAIRYFOOD] as identifying the source of a product or service rather than the product or service itself.’” Apollo Med. Extrusion Techs., Inc. v. Med. Extrusion Techs., Inc., 123 USPQ2d 1844, 1851 (TTAB 2017) (quoting In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005)). Serial No. 86787312 - 23 - “The amount and character of evidence required to establish acquired distinctiveness depends on the facts of each case and the nature of the mark sought to be registered.” In re Gen. Mills IP Holdings II, LLC, 124 USPQ2d 1016, 1018 (TTAB 2017). “The higher the degree of descriptiveness of the designation in question, the higher the burden Applicant faces in proving acquired distinctiveness.” Apollo Med. Extrusion, 123 USPQ2d at 1849. Because “a more descriptive term requires more evidence of secondary meaning,” Steelbuilding.com, 75 USPQ2d at 1424, the “initial question before us in our analysis of whether [DAIRYFOOD] has acquired distinctiveness is the degree of descriptiveness of that phrase as used in connection with Applicant’s goods.” Apollo Med. Extrusion, 123 USPQ2d at 1849. “DAIRYFOOD,” a compound of the generic terms “dairy” and food,” immediately and unequivocally describes the essential feature, attribute, and quality of all of Applicant’s identified goods, namely, that they contain milk or are made from milk. As a result, if DAIRYFOOD is not generic for cheese and cheese-related products, it is highly descriptive of those goods. Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1765 (TTAB 2013), aff’d mem. 565 F. App’x 900 (Fed. Cir. 2014); Apollo Med. Extrusion, 123 USPQ2d at 1851. Thus, Applicant’s “evidence of acquired distinctiveness must be weighed against the highly descriptive nature of the wording comprising Applicant’s proposed mark.” Id. at 1856. The Board recently described how an applicant may establish that a term has acquired distinctiveness as follows: To prove acquired distinctiveness, an applicant may show not only the length and exclusivity of its use of its marks, Serial No. 86787312 - 24 - but also its sales success, unsolicited media coverage, copying, and any similar evidence showing wide exposure of its marks to consumers in a manner that would educate them to view the marks as source indicators, coupled with evidence of the effectiveness of these measures in inducing the purchasing public to identify the marks with their source. In re Serial Podcast, LLC, 126 USPQ2d 1061, 1071 (TTAB 2018). Of course the “ultimate test in determining whether a designation has acquired distinctiveness is Applicant’s success, rather than its efforts, in educating the public to associate the proposed mark with a single source.’” Id. (quoting Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1480 (TTAB 2016)). Applicant’s evidence that DAIRYFOOD “is widely known among consumers as a source identifier of [Applicant’s] cheeses,” 13 TTABVUE 12, consists of Registration No. 1934416 on the Supplemental Register for the mark DAIRYFOOD USA (“DAIRYFOOD” disclaimed) for pasteurized process cheese food, pasteurized process cheese spread, and other dairy products,26 the results of a search of the word DAIRYFOOD using the Google search engine,27 a report from Hoovers, a Dun & Bradstreet company, regarding Applicant’s business,28 and two declarations of its president, Daniel Culligan, and exhibits thereto, regarding the history, nature, and 26 June 29, 2016 Response to Office Action at 2. 27 February 3, 2017 Response to Office Action at 12-15. 28 Id. at 16-18. Serial No. 86787312 - 25 - extent of Applicant’s use of the terms DAIRYFOOD USA and DAIRYFOOD.29 13 TTABVUE 24-64. A. Length and Exclusivity of Use Applicant claims in its main brief that it “has provided extensive evidence of use of the [sic] DAIRYFOOD as a single term for over 20 years” and that the term “has acquired distinctiveness as a result of its substantially exclusive and continuous use of the mark in commerce for more than 20 years.” 13 TTABVUE 11. Applicant refers to “its 2(f) statement of over 20 years use,” id. at 12, but there is no such statement, or other evidence, of use of DAIRYFOOD for 20 years in the record. Mr. Culligan’s first declaration claims that Applicant first made use of DAIRYFOOD USA “since at least as early as 2007.” First Culligan Decl. ¶ 4. In his second declaration, which Applicant claims establishes use of DAIRYFOOD “over the past 20 years,” 13 TTABVUE 11, Mr. Culligan similarly states that “Dairyfood USA, Inc. adopted the corporate name ‘Dairyfood USA, Inc.’ on July 1, 2007 and since that time, has made extensive and widespread use of the term DAIRYFOOD in association with the promotion and sale of its products in the marketplace.” Second Culligan Decl. ¶ 4 (emphasis added). The record thus establishes use of DAIRYFOOD for a little more than 10 years at the time of Mr. Culligan’s second declaration. Assuming, without deciding, that 29 June 29, 2016 Response to Office Action at 3-4; February 3, 2017 Response to Office Action at 10-11; August 17, 2017 Request for Reconsideration at 10-42. Serial No. 86787312 - 26 - Applicant’s use of DIARYFOOD has been exclusive,30 “[i]t is well settled that an applicant’s use of wording for a long time does not necessarily establish that the wording has acquired distinctiveness as a mark.” Apollo Med. Extrusion, 123 USPQ2d at 1855. Given the highly descriptive nature of the term DAIRYFOOD, 10 years of use is insufficient, in and of itself, to establish acquired distinctiveness. See La. Fish Fry, 116 USPQ2d at 1265 (30 years of use of highly-descriptive term FISH FRY PRODUCTS insufficient to show acquired distinctiveness); Apollo Med. Extrusion, 123 USPQ2d at 1855 (25 years of use of highly-descriptive term MEDICAL EXTRUSION TECHNOLOGIES insufficient to show acquired distinctiveness); Alcatraz Media, 107 USPQ2d at 1766 (20 years of use of highly-descriptive term ANNAPOLIS TOURS insufficient to show acquired distinctiveness). B. Applicant’s Non-Probative Evidence of Acquired Distinctiveness Certain portions of Applicant’s evidence are not probative of whether DAIRYFOOD has acquired distinctiveness. A claim of acquired distinctiveness cannot be based upon a Supplemental Register registration, In re Canron, Inc., 219 USPQ 820, 822 n.2 (TTAB 1983), so Registration No. 1934416 for the mark DAIRYFOOD USA does not aid Applicant. Applicant cites the Hoover’s report to show that Applicant “has an estimated $103.01 million of annual sales,” 13 TTABVUE 13, but both of Mr. Culligan’s declarations are silent on the dollar amount of Applicant’s sales, and neither declaration authenticates or discusses the Hoover’s report. We 30 As discussed above, Applicant argues that others have used DAIRY FOOD as a trademark. 13 TTABVUE 8-9; see also 15 TTABVUE 5 (arguing that the “prominence and placement of the marks demonstrate that these marks would be perceived by consumers as trademarks.”). Serial No. 86787312 - 27 - decline to rely upon an unsubstantiated and unexplained estimate of Applicant’s annual sales in the report in lieu of sworn testimony about actual sales from Mr. Culligan, whose second declaration sets forth other sales-related information derived from his “personal knowledge or taken from the records of Dairyfood USA, Inc., to which I have access.” Second Culligan Decl. ¶ 3. The Google search on the term “dairyfood” returned a number of results regarding Applicant, 13 TTABVUE at 27-29, which Applicant cites as evidence that “this composite term is uniquely and exclusively associated with Applicant.” Id. at 13. The results are not probative of whether DAIRYFOOD has acquired distinctiveness, however, because they are truncated and do not provide the context of any use of the term alone on the listed webpages, see, e.g., In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007); In re Tea & Sympathy, Inc., 88 USPQ2d 1062, 1064 n.3 (TTAB 2008), and because they refer exclusively to Applicant as a corporate entity, by use of its trade names Dairyfood USA or Dairyfood USA, Inc., not to Applicant’s claimed trademark DAIRYFOOD. Finally, Mr. Culligan’s first declaration refers to use since 2007 of “the mark DAIRYFOOD USA.” First Culligan Decl. ¶¶ 4-6. Applicant argues that “the marketplace has been flooded with Applicant’s extensive promotion and use of the composite term DAIRYFOOD as an element of the mark DAIRYFOOD USA,” 13 TTABVUE 14, but the use of “the mark DAIRYFOOD USA” discussed in Mr. Culligan’s first declaration does not establish that DAIRYFOOD alone has acquired distinctiveness. La. Fish Fry Prods., 116 USPQ2d at 1265 (evidence of 30 years of use Serial No. 86787312 - 28 - of LOUISIANA FISH FRY PRODUCTS and extensive sales and advertising of products bearing the words did not “establish that FISH FRY PRODUCTS has acquired distinctiveness.”); see also In re Chem. Dynamics Inc., 839 F.2d 1569, 5 USPQ2d 1828 (Fed. Cir. 1988). We turn now to the remainder of Applicant’s evidence. C. Sales, Advertising, Industry Recognition, and Other Evidence of Acquired Distinctiveness In Mr. Culligan’s second declaration, he testifies about sales, advertising, and promotion under the claimed mark DAIRYFOOD. He first states that Applicant “produces and sells into the marketplace a wide variety of cheese products and over the past eight (8) years, the term DAIRYFOOD has been associated with in excess of 130 million pounds [of] cheese products introduced into the marketplace by” Applicant. Second Culligan Decl. ¶ 5. He states that in “the last year alone, the DAIRYFOOD term has been used on product packaging on in excess of 20 million individual units of dairy products” and that “the total number of individual products bearing the term DAIRYFOOD introduced into the marketplace by Dairyfood USA, Inc. since 2010 undoubtedly exceeds 125 million individual units.” Second Culligan Decl. ¶ 6. His declaration, however, does not explain or show how “the DAIRYFOOD term has been used on product packaging.”31 Articles in the record from the December 18, 2009, September 13, 2013, June 3, 2016, June 2, 2017, and July 14, 2017 editions of 31 Applicant’s specimen of use is not product packaging, but is instead what Mr. Culligan calls a “display shipper” for Applicant’s QUESO DE CASA brand of dipping cheese. Second Culligan Decl. ¶ 7; Ex. A. The display is shown below. Serial No. 86787312 - 29 - Cheese Market News, which Mr. Culligan describes as “the nation’s premier weekly publication for the dairy industry,” Second Culligan Decl. ¶ 8,32 display pictures of cheeses and cheese dips sold by Applicant under the SONOMA JACKS and GLACIER RIDGE FARMS marks, but neither the applied-for mark in its entirety, nor the term DAIRYFOOD per se, is visible on any of the products or their packaging. We reproduce below representative pictures of the products. Second Culligan Decl. ¶ 8; Ex. E. 32 Cheese Market News describes itself as “The Weekly Newspaper of The Nation’s Cheese and Dairy/Deli Business.” Second Culligan Decl. Ex. F. Serial No. 86787312 - 30 - Second Culligan Decl. ¶ 8; Ex. G. We cannot determine from these pictures how the term DAIRYFOOD “has been associated with” Applicant’s products when they are packaged for sale to by the relevant purchasing public, Second Culligan Decl. ¶ 5, much less how any such use of the term on Applicant’s products and their packaging has caused the term to be exclusively associated with Applicant in the market for cheeses and cheese products. Moreover, Mr. Culligan provides no context for Applicant’s unit sales figures, Second Culligan Decl. ¶¶ 5-6, such as Applicant’s relative market share or its Serial No. 86787312 - 31 - sales position vis-à-vis its competitors. Even assuming prominent use of DAIRYFOOD as a source identifier on Applicant’s products and their packaging, in the absence of contextual information, Applicant’s unit sales figures have little, if any, probative value on the issue of acquired distinctiveness. See, e.g., Apollo Med. Extrusion, 123 USPQ2d at 1855-56; Target Brands Inc. v. Hughes, 85 USPQ2d 1676, 1681 (TTAB 2007). Mr. Culligan also states that the applied-for mark has been exposed to consumers through its appearance on display shippers distributed to retailers. The display submitted as Applicant’s specimen of use is depicted below. Serial No. 86787312 - 32 - Second Culligan Decl. ¶ 7; Ex. A.33 Once again, Applicant provides no context for its figures regarding the exposure of DAIRYFOOD through these point-of-purchase materials, and those unit figures have little, if any, probative value. The display also highlights the fact that there is no evidence in the record of any use of the claimed mark DAIRYFOOD separate and apart from the other elements of the applied-for mark. As noted above, Applicant argues that “the marketplace has been flooded with Applicant’s extensive promotion and use of the composite term DAIRYFOOD as an element of the mark DAIRYFOOD USA,” 13 TTABVUE 14, but the record does not even show use of the claimed mark “DAIRYFOOD USA.” Instead, it shows uniform use of the applied-for mark, in which the term DAIRYFOOD appears as part of Applicant’s trade name and in connection with the letters “df.” “Not every word that appears on an entity’s goods, regardless of how prominently it is displayed, functions as a trademark.” Apollo Med. Extrusion, 123 USPQ2d at 1855. The ubiquitous use of the applied-for mark in its entirety impairs Applicant’s ability to show that purchasers of its goods associate the word DAIRYFOOD, apart from the other elements of the applied-for mark such as the letters “df,” exclusively with Applicant. See id. (applicant’s use of claimed mark MEDICAL EXTRUSION TECHNOLOGIES “almost without exception” with “the prominently displayed acronym MET” left the Board unconvinced “that relevant purchasers associate the 33 A display for Applicant’s Sonoma Jacks cheese wedges appears next to this display in the picture in Exhibit A to the second Culligan declaration. The applied-for mark is not visible on the front of the Sonoma Jacks display. Serial No. 86787312 - 33 - designation MEDICAL EXTRUSION TECHNOLOGIES, without the accompanying MET, solely with Applicant.”). Mr. Culligan’s testimony and exhibits regarding industry recognition of Applicant, media exposure, advertising and promotion, and use on signage also do not establish that DAIRYFOOD has acquired distinctiveness. The industry awards all refer to Applicant by its trade name Dairyfood USA, Inc. or Dairyfood USA, Second Culligan Decl. ¶ 8; Exs. B-C,34 and do not show that consumers associate DAIRYFOOD alone exclusively with Applicant. The media coverage of Applicant is confined to a few articles from the trade publication Cheese Market News, and Applicant’s “extensive advertising and promotion” referenced by Mr. Culligan is expressly limited to trade publications. Second Culligan Decl. ¶¶ 8-9; Exs. E-G. There is nothing in the record about the extent of Applicant’s expenditures on advertising and promotion in trade publications or otherwise, or the extent (if any) of any exposure of Cheese Market News or any other trade publications to consumers. Finally, Mr. Culligan’s statement that the “DAIRYFOOD mark has been prominently used and displayed on signage and buildings,” Second Culligan Decl. ¶ 10; Ex. H, is supported by what appear to be aerial photographs of Applicant’s production facility, which displays Applicant’s trade 34 The “Certificates of Registration” certifying Applicant’s compliance with various industry safety and quality standards, Second Culligan Decl. ¶ 7; Ex. D, all refer to Applicant’s trade name Dairyfood USA, Inc., not the claimed mark DAIRYFOOD. As stated in Applicant’s advertisements in Cheese Market News, each of Applicant’s SQF Level 3 certifications “ensures [Applicant’s] customers that our cheese products have been produced and handled in accordance with the highest standards set by the Food Marketing Institute (FMI).” Second Culligan Decl. ¶ 8; Ex. D (August 17, 2017 Request for Reconsideration at 30). They do not show consumer recognition of DAIRYFOOD as Applicant’s trademark for cheese and cheese products. Serial No. 86787312 - 34 - name on the side of a building in what appears to be a rural area. There is no evidence that DAIRYFOOD has been exposed to consumers through other signage. The record is devoid of any direct evidence of the distinctiveness of DAIRYFOOD in the form of testimony from retailers or consumers, or of any survey evidence, and the evidence that is in the record is insufficient to establish that the highly- descriptive term DAIRYFOOD is associated exclusively with Applicant when it is used in connection with cheese and cheese products. Applicant has fallen far short of showing that DAIRYFOOD has acquired distinctiveness as Applicant’s mark. Decision: The refusal to register Applicant’s mark without a disclaimer of DAIRY FOOD is affirmed on the ground that DAIRYFOOD is the generic name for Applicant’s goods, and on the alternative ground that if it is not generic, it is merely descriptive of the goods and has not acquired distinctiveness. If Applicant submits the required disclaimer of DAIRY FOOD within 30 days of the mailing date of this decision,35 the decision will be set aside and the application, as so amended, will be passed to publication for opposition. 35 The current disclaimer states that “No claim is made to the exclusive right to use INCORPORATED apart from the mark as shown.” June 29, 2016 Response to Office Action at 1. As stated by the Examining Attorney during prosecution, August 3, 2016 Office Action at 1, Applicant should submit a disclaimer in the following standardized format: No claim is made to the exclusive right to use “DAIRY FOOD” and “INCORPORATED” apart from the mark as shown. Copy with citationCopy as parenthetical citation