Dairyfood USA, Inc.

Trademark Trial and Appeal Board

May 14, 2018

No. 86787312 (T.T.A.B. May. 14, 2018)

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.
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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
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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.
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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.
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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.
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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.
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(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.
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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.
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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
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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.”
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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.”).
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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).
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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.
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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.
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August 3, 2016 Office Action at 17-18.

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August 3, 2016 Office Action at 42.

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August 3, 2016 Office Action at 45-46.

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February 17, 2017 Office Action at 21.

February 17, 2017 Office Action at 24.

February 17, 2017 Office Action at 35.
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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
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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.
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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.
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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
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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
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“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
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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
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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
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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
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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
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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
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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
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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
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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
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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
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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
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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.