Felix Mauro Torres

Trademark Trial and Appeal Board

May 12, 2009

No. 78621656 (T.T.A.B. May. 12, 2009)

Mailed: May 12, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Felix Mauro Torres
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Serial No. 78621656
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Kevin Lynn Wildenstein of SW Intellectual Property
Services, LLP for Felix Mauro Torres.

Christopher L. Buongiorno, Trademark Examining Attorney,
Law Office 102 (Karen M. Strzyz, Managing Attorney).
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Before Bucher, Holtzman and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
An application was filed by the predecessor-in-
interest of Felix Mauro Torres1 to register on the Principal
Register the mark INDIO HISPANO in standard characters for
the following goods, as amended: “agricultural products,

1 Assignment of the involved application to the above-named
applicant is recorded with the Assignment Branch of the United
States Patent and Trademark Office (USPTO) at Reel 3398/Frame
0702.
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 78621656
2
namely, unprocessed fruits and unprocessed vegetables” in
International Class 31.2
The trademark examining attorney rejected the specimen
submitted with applicant’s statement of use on the ground
that it fails to indicate use of the mark in connection
with the goods recited in the notice of allowance.3
Specifically, “the examining attorney’s refusal is based on
the ground that a picture of unprocessed fruits or
unprocessed vegetables is not present on the specimen.”4
Applicant, for its part, argues that the submitted specimen
satisfies the requirements of a display associated with the
goods.
When the examining attorney made final the requirement
that applicant submit an acceptable specimen of use,
applicant appealed. Applicant and the examining attorney
filed briefs on the issue under appeal.

2 Application Serial No. 78621656 was filed on May 3, 2005 based
on applicant’s allegation of a bona fide intent to use the mark
in commerce under Section 1(b) of the Trademark Act. The English
translation of INDIO HISPANO is Indian Hispanic.
3 Following publication of the application on January 3, 2007,
applicant filed a statement of use alleging a date of first use
of April 15, 2005 and a date of first use in commerce of October
2, 2007.
4 Brief, p. 3, emphasis in original.
Ser No. 78621656
3
Applicant’s specimen of use, consisting of a
screenshot of the home page from applicant’s Internet
website,5 is reproduced below.

5 http://ihnfoods.com
Ser No. 78621656
4
Ser No. 78621656
5

Ser No. 78621656
6
Section 45 of the Trademark Act of 1946, 15 U.S.C.
§1127, defines “use in commerce” in relevant part as
follows:
For purposes of this Act, a mark shall be deemed
to be in use in commerce - -

(1) on goods when - -

(A) it is placed in any manner on the goods or
their containers or the displays associated
therewith or on the tags or labels affixed
thereto, or if the nature of the goods makes such
placement impracticable, then on documents
associated with the goods or their sale....

In accordance therewith, Trademark Rule 2.56(b)(1) provides
the following:
A trademark specimen is a label, tag, or
container for the goods, or a display associated
with the goods. The Office may accept another
document related to the goods or the sale of the
goods when it is not possible to place the mark
on the goods or packaging for the goods.

The determination of whether a specimen is merely
advertising or a display associated with the goods is a
question of fact. See In re Shipley Co., 230 USPQ 691, 694
(TTAB 1986). A printed or web catalog, web page, or
similar specimen is acceptable to show trademark use as a
display associated with the goods only if it includes (1) a
picture of the relevant goods, (2) the mark appearing
sufficiently near the picture of the goods so as to
associate the mark with the goods, and (3) information
Ser No. 78621656
7
necessary to order the goods (e.g., sales form, price list,
instructions for ordering, etc.) or a visible weblink to
order the goods. See Lands’ End, Inc. v. Manbeck,
797 F. Supp. 511, 514, 24 USPQ2d 1314, 1316 (E.D. Va.
1992); In re Dell, Inc., 71 USPQ2d 1725, 1727 (“we hold
that a website page which displays a product, and provides
a means of ordering the product, can constitute a ‘display
associated with the goods’”); and In re MediaShare Corp.,
43 USPQ2d 1304 (TTAB 1997). See also TMEP §§904.06(a) and
(b).
In this case, the specimen submitted with applicant’s
statement of use prominently displays INDIO HISPANO™ NATIVE
FOODS in large letters at the top of the page. Thus, the
specimen clearly displays the applied-for INDIO HISPANO
mark. The specimen further displays information, in the
form of an address, telephone number, and electronic mail
address, sufficient to order the goods. Indeed, the
examining attorney does not dispute that these second and
third requirements articulated in Lands’ End have been met.
However, the examining attorney argues that the
specimen of use does not satisfy the first requirement set
out in the Lands’ End and Dell line of cases for use as a
display associated with the goods under Trademark Act §45
because it does not display the goods in association with
Ser No. 78621656
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the mark. The examining attorney contends:
Applicant has not provided any evidence which
would show the goods which appear on the specimen
fall within the definition of unprocessed
vegetables. Applicant has not indicated in
applicant’s brief that the specimen includes any
pictures of unprocessed fruit. There is only one
instance in applicant’s entire brief where
applicant specifically makes a reference to an
unprocessed vegetable. … Applicant claims that
the specimen “clearly shows pictures of
unprocessed corn.” However, applicant’s
understanding of the meaning of “unprocessed” is
misplaced. The term “unprocessed” is defined as
“unaltered from an original or natural state; not
processed: fresh, unprocessed food….”6 The
pictures on the specimen unquestionably do not
depict unaltered or fresh corn. The pictures of
corn kernels applicant references show kernels
removed from corn cobs and dried and/or packaged.
Certainly no one would consider packaged corn
kernels used for popping as fresh vegetables. …
Therefore, the record does not show the mark used
in connection with the goods in the notice of
reliance as required by 15 U.S.C. §1051(a);
Trademark Rule 2.88.7

Thus, it is the examining attorney’s position that while
the goods identified in the notice of allowance are
“agricultural products, namely, unprocessed fruits and
unprocessed vegetables,” the specimen of record essentially
displays photographs of processed vegetables.
We find, however, that by equating “unprocessed” with

6 New Oxford American Dictionary, (2d ed., p. 1842). We hereby
take judicial notice of this definition. See In re
CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002).
See also University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
7 Brief, p. 3-4.
Ser No. 78621656
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“fresh,” the examining attorney has taken a very narrow
view of the goods identified in applicant’s statement of
use. Applicant’s specimen of use displays photographs of
bags of its goods, identified as ground corn meal, blue
corn posole (or hominy stew), chicos (or dried corn),
Anasazi Beans®, pinto beans, red chile powder, and white
corn posole (or hominy stew). Information accompanying the
photographs indicates that, for instance, the corn meal has
been ground into different textures; the chicos are oven-
roasted and dried corn kernels; and the red chile powder is
made from hot red chiles that have been dried and ground.
Further information explains various recipes and cooking
techniques applicable to the goods. Thus, it is clear from
the photographs and accompanying information that
applicant’s goods are not fresh vegetables that one would
find in the produce section of a supermarket. Rather, the
goods have been dried, in some cases ground, and packaged.
However, the examining attorney has not demonstrated that
dried foods cannot be considered to be unprocessed.
As applied to food, the term “processed” may be
defined as “subjected to a special process or treatment;
‘prepared ergot’; ‘processed cheeses are easy to spread.’”8

8 Wordnet® 3.0, 2006 by Princeton University. The Board may take
judicial notice of online dictionary definitions if the
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Nothing in applicant’s specimens supports a finding that
the goods identified therein, aside from being dried, have
been subjected to any further alteration or any special
processing or treatment from their natural state. There is
no evidence, for instance, that applicant’s goods contain
any sort of additives, or have been treated in any way.
Even assuming arguendo that drying is a form of processing,
the specimen also includes goods such as “pinto beans”
which are not described as having been dried or otherwise
processed. As such, the record in this case simply does
not support a finding that the goods pictured in close
proximity to applicant’s INDIO HISPANO mark in the specimen
of use are not the goods identified in the statement of
use. We note that while none of the goods listed in the
specimen may be considered fruits, there is no requirement
that a specimen display all of the goods listed within a
single class thereof. See TMEP §904.01(a).
We find, therefor, that applicant’s specimen satisfies
all of the criteria of a display associated with the goods.

dictionary is readily available and verifiable. TMEP §710.01(c).
See also In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006),
where the Board took judicial notice of the Encarta Dictionary
because it was a widely known reference that was readily
available in specifically denoted editions via the Internet and
CD-ROM, holding that it was “the electronic equivalent of a print
publication and applicant may easily verify the excerpt.”

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Decision: The refusal to register on the ground that
the specimen is unacceptable evidence of trademark use in
connection with the identified goods is reversed.