Dos Padres

Trademark Trial and Appeal Board

Dec 11, 1998

No. 75075701 (T.T.A.B. Dec. 11, 1998)

Paper No. 11
BAC
THIS DISPOSITION IS
CITABLE AS PRECEDENT OF THE TTAB DEC. 11, 98

U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Dos Padres, Inc.
________

Serial No. 75/075,701
_______

Marsha G. Gentner of Jacobson, Price, Holman & Stern, PLLC
for Dos Padres, Inc.

Montia O. Givens, Trademark Examining Attorney, Law Office
101 (R. Ellsworth Williams, Managing Attorney)
_______

Before Seeherman, Walters and Chapman, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:

Dos Padres, Inc. has filed an application to register
the mark QUESO QUESADILLA SUPREME for “cheese”.1
Registration has been refused under Section 2(e)(1) of
the Trademark Act, 15 U.S.C. §1052(e)(1), on the basis
that, when used on applicant’s goods, the mark is merely

1 Application Serial No. 75/075,701, was filed March 20, 1996,
alleging a bona fide intention to use the mark in commerce.
Applicant subsequently disclaimed the words “queso quesadilla”.
Ser. No. 75/075701
2
descriptive of them.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm.
In the first Office action, the Examining Attorney,
inter alia, refused registration of the mark as merely
descriptive, asserting that QUESO QUESADILLA is a type of
Mexican cheese, as evidenced by several excerpts from
Lexis/Nexis; and that SUPREME is a laudatory term which is
“nondistinctive and unregistrable without proof of acquired
distinctiveness”. In response thereto, applicant
disclaimed the words “queso quesadilla”; and argued that
the term SUPREME is not merely laudatory, and that third-
party registrations evidence a Patent and Trademark Office
policy of allowing the word SUPREME to be registered
without a disclaimer or a claim under Section 2(f).
Applicant specifically argued that there are 200
registrations in International Classes 29, 30 and 31 in
which the word SUPREME was not disclaimed; of these
applicant provided approximately 45 illustrative examples2.

2 Applicant submitted the approximately 45 listings from a
commercial trademark search report. These types of search
reports are not credible evidence of the existence of the
applications and/or registrations listed in such reports. See
Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992). However,
the Examining Attorney did not object to the evidence, and in
fact, treated it as being of record. Accordingly, we have
Ser. No. 75/075701
3
The Examining Attorney submitted (i) a Random House
Dictionary (1987) listing for the word SUPREME which
includes as one definition, “of the highest quality”; and
(ii) seven examples of registered marks which include
either a disclaimer of the term SUPREME or a claim of
distinctiveness under Section 2(f). The Examining Attorney
argues that the mark QUESO QUESADILLA SUPREME is merely
descriptive of cheese because the mark consists of the
generic term for a type of cheese (QUESO QUESADILLA) plus a
laudatory term (SUPREME). Further, she cites the case of
Supreme Wine Co., Inc. v. The American Distilling Co., 310
F.2d 888, 135 USPQ 481 (2nd. Cir. 1962) wherein the Court
stated that “the word ‘supreme’ is so totally lacking in
distinctiveness, originality and uniqueness that, in the
absence of compelling proof that it has acquired a
secondary meaning to the buying public, it is not entitled
to trademark protection”. While the Examining Attorney
acknowledges that there are several instances of registered
marks which do not include a disclaimer of the word
SUPREME, she contends that each case must be decided on its
own facts.

considered that material for whatever probative value it may
have. See In re Nuclear Research Corp., 16 USPQ2d 1316 (TTAB
1990).
Ser. No. 75/075701
4
Applicant argues that the mark QUESO QUESADILLA
SUPREME, when viewed in its entirety, is not merely
descriptive of applicant’s goods. Applicant specifically
asserts that the Examining Attorney dissected the mark,
analyzed the separate portions, reassembled the mark, and
then concluded that it is merely descriptive. Applicant
argues that merely because each component term may have an
accepted definition does not render a mark merely
descriptive. Applicant also contends that the Examining
Attorney did not show that the mark is likely to be
perceived by the purchasing public as merely describing
applicant’s goods; that the numerous third-party
registrations submitted by applicant “clearly establish a
consistent policy and practice” (brief, page 7) of allowing
the term SUPREME (and foreign equivalents thereof) to
register without a disclaimer or a claim under Section
2(f); and that any doubt on the issue of mere
descriptiveness must be resolved in applicant’s favor.
It is well settled that a term or phrase is considered
merely descriptive of goods or services, within the meaning
of Section 2(e)(1), if it immediately conveys information
concerning an ingredient, quality, characteristic or
feature thereof, or if it directly conveys information
regarding the nature, function, purpose or use of the goods
Ser. No. 75/075701
5
or services. See In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215 (CCPA 1978). Moreover, whether a term or
phrase is merely descriptive is determined in relation to
the goods or services for which registration is sought, the
context in which it is being used on or in connection with
those goods or services, and the possible significance that
the term or phrase would have to the average purchaser of
the goods or services because of the manner of its use.
See In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
See also, In re Consolidated Cigar Co., 35 USPQ2d 1290
(TTAB 1995); and In re Pennzoil Products Co., 20 USPQ2d
1753 (TTAB 1991). Terms which are laudatory are also
regarded as being merely descriptive because these
laudatory terms are seen as a form of describing the
quality of the goods. See J. Thomas McCarthy, Vol. 2,
Trademarks and Unfair Competition, §11:17 (4th Ed. 1998),
and cases cited therein.
The record before the Board establishes that the term
‘queso quesadilla’ is a generic term for a type of cheese.
The Lexis/Nexis excerpts submitted by the Examining
Attorney include several references specifically to ‘queso
quesadilla’ cheese in the lists of ingredients in recipes,
as well as in the context of stories, such as the
following:
Ser. No. 75/075701
6
Imagine a quesadilla, the Mexican grilled cheese
sandwich, pocked with unyielding lumps: It’s times
like these when a cheese’s first duty is to melt.
Mexican cheeses such as queso quesadilla (KAY-so kay-
sa-DEE-yah), the slightly tinted, smooth and buttery
chihuahua (chee-WHA-wha), and the smooth, pale asadero
(ah-sa-DAY-ro), are prime candidates for melting,
“Better Homes and Gardens”, February 1996;

...2 cups (8 ounces) grated four-cheese Mexican Blend
(Cheddar, Monterey Jack, queso quesadilla and
asadero)..., appeared under the byline “Homemade Meals
In Minutes Stock Kitchen With Basics”, “Omaha World
Herald” October 4, 1995;

Pizza Mexicana was the appetizer winner in a recent
contest. It uses Sargento 4-cheese Mexican Recipe
Blend, which includes Cheddar, Monterey Jack and two
Mexican cheeses, Queso Quesadilla and Asadero, “The
Des Moines Register”, August 13, 1995;

...No time to make salad? Use one of the salads in a
bag from Fresh Express farms. A new arrival is Fiesta
Salad Kit, which includes fresh lettuce, carrots, red
cabbage, sour cream salsa dressing, lime-chili mini-
tortilla triangles and a blend of four cheeses - Jack,
cheddar, Queso Quesadilla and Asadero, “The Houston
Chronicle”, June 28, 1995;

...The Mexican blend contains the familiar Cheddar and
Monterey Jack with asadero (whole-milk cheese with a
mild flavor) and queso quesadilla (creamy white cheese
that melts well), “The Atlanta Journal and
Constitution”, December 15, 1994; and

...Certain Hispanic cheeses, such as Queso Quesadilla,
melt without separating. That makes them perfect for
melting on nachos or in quesadillas, which are known
as ‘the grilled cheese sandwich of Mexico’...,
“Wisconsin State Journal”, June 2, 1993.

Moreover, applicant disclaimed the words “queso
quesadilla”.
Ser. No. 75/075701
7
While the words “queso” and “quesadilla” each have a
meaning in Spanish, when the words are combined as “queso
quesadilla”, they name a type of cheese, and the evidence
shows that “queso quesadilla” would be understood as such
by the purchasing public. SUPREME, as the dictionary
definition indicates, means “of the highest quality”.
Therefore, the mark QUESO QUESADILLA SUPREME as applied to
“cheese”, would immediately convey to purchasers that the
product is a high quality ‘queso quesadilla’ (creamy white
cheese which melts easily).
We acknowledge that the records of the Patent and
Trademark Office are inconsistent with regard to the Office
treatment of the word SUPREME. It is clear that there are
registered marks which include the word SUPREME with a
disclaimer or a claim of distinctiveness under Section
2(f); and there are registrations which do not include such
treatment of the term SUPREME. While the Office strives
for consistency, we must decide each case on its own facts
and record. See In re Consolidated Foods Corp., 200 USPQ
477 (TTAB 1978). The mere fact that there have been
inconsistencies in how Examining Attorneys treated the word
SUPREME in other applications does not, as applicant
suggests, raise a doubt as to the merely descriptive nature
of the mark now before us.
Ser. No. 75/075701
8
The case of In re Classic Beverage Inc., 6 USPQ2d 1383
(TTAB 1988), cited by applicant, does not require a
different result herein. The three categories of evidence
submitted in that case were specifically discussed in the
opinion, and the evidence showed that ‘classic’ had a
meaning that could describe a characteristic of some
products (such as cars or books), but the evidence did not
link the recognized dictionary meaning of ‘classic’ to
apply to applicant’s soft drinks. (Emphasis added.)
Decision: The refusal to register under Section
2(e)(1) is affirmed.

E. J. Seeherman

C. E. Walters

B. A. Chapman
Administrative Trademark
Judges, Trademark Trial and
Appeal Board