GBSI Manage-ment, Inc.

Trademark Trial and Appeal Board

Feb 26, 2004

No. 76376895 (T.T.A.B. Feb. 26, 2004)

Paper No. 11
TJQ
Mailed:2/26/04
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re GBSI Management, Inc.
________
Serial No. 76376895
_______
Joseph L. Strabala for GBSI Management, Inc.
Elizabeth A. Hughitt, Trademark Examining Attorney, Law
Office 111 (Craig D. Taylor, Managing Attorney).
_______
Before Simms, Seeherman and Quinn, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
GBSI Management, Inc., a corporation of the
Philippines, has appealed from the final refusal to
register SARAPINOY for “cooked and uncooked meats and
poultry” (in International Class 29) and “pastries,
specifically cakes, cookies, pies, breads, rolls, and
tarts; [and] powdered mixes for bakery products” (in
International Class 30).1 The application, as originally
1 Application Serial No. 76376895, filed March 4, 2002, based on
an allegation of a bona fide intention to use the mark in
commerce.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76376895
2
filed, included the following statement: “SARAPINOY is
Philippine for ‘GREAT PHILIPPINE TASTE.’” Registration has
been refused on the ground that applicant’s mark, if
applied to applicant’s goods, would be merely descriptive
thereof under Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1).2
Applicant and the Examining Attorney have filed
briefs. An oral hearing was not requested.
The Examining Attorney, relying on applicant’s
statement of the meaning of the term in the original
application, asserts that the term SARAPINOY is a
telescoped form of the two Filipino terms “SARAP” and
“PINOY,” and is properly translated to English as “great
Filipino taste” or “delicious Filipino.” According to the
Examining Attorney, “the mark would be readily perceived by
Filipino-speaking consumers as touting the applicant’s
‘delicious Filipino’ foods or extolling the fact that the
applicant’s foods have a ‘great Filipino taste.’” (brief,
p. 16). Therefore, the Examining Attorney contends, the
2 Earlier in the prosecution of the application, applicant
submitted a proposed disclaimer of “great” and “taste” apart from
the mark. The Examining Attorney noted that the disclaimer of
part of the English translation was unacceptable because the mark
at issue was the unitary foreign wording SARAPINOY and not the
English words “GREAT PHILIPPINE TASTE.” The Examining Attorney
also noted that a disclaimer would have been unacceptable even if
the disclaimed words were a separable element of the mark since
the mark in its entirety is descriptive.
Ser No. 76376895
3
term sought to be registered is merely descriptive. In
support of the refusal to register, the Examining Attorney
submitted dictionary definitions of “great,” “Filipino
(Philippine)” and “taste,” as well as of “sarap” and
“Pinoy”; third-party registrations of marks showing the
Office’s treatment, as merely descriptive, of “great
taste,” “great tasting,” and various terms referring to
ethnic tastes and flavors; and articles retrieved from the
NEXIS database showing usage of “Filipino (Philippine)
taste(s)” and “Filipino (Philippine) flavor(s)” in the
context of discussions about Filipino cuisine.3
In urging that the refusal to register be reversed,
applicant asserts that the term SARAPINOY is not a Filipino
word, but rather is a coined term not found in any
dictionary of the approximately eighty languages of the
Philippines, including the principal language Tagalog.
Applicant goes on to state, however, that “the mark can be
loosely translated as good/delicious (‘sarap’ in Tagalog)
and Filipino (‘pinoy’ in slang).” (brief, p. 2).
Nonetheless, applicant maintains that “Philippine Taste” is
3 The term “Filipino” is defined as “of or relating to the
Philippines or its peoples, languages, or cultures.” The
American Heritage Dictionary of the English Language (3d ed.
1992). Applicant and the Examining Attorney have used the terms
“Filipino” and “Philippine” interchangeably.
Ser No. 76376895
4
“an illusion, an intangible, so it is not descriptive as no
such ‘taste’ exists.” (brief, p. 5).
Before proceeding to the merits of the refusal, we
need to address an evidentiary matter. Three of the
dictionary listings (for the terms “sarap,” “Pinoy” and
“delicious”) were submitted for the first time with the
Examining Attorney’s appeal brief, and the Examining
Attorney has requested that the Board take judicial notice
of them. As a general rule, judicial notice may be taken
of dictionary evidence. University of Notre Dame du Lac v.
J. C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); see
also TBMP §712.01. In the present case, however, the
Filipino/English translations were retrieved from an on-
line dictionary available over the Internet.4 In ruling on
this type of submission in the past, the Board has stated
that judicial notice will not be taken of definitions found
only in on-line dictionaries and not available in a printed
format; however, such definitions will be considered if
made of record during the prosecution of the application.
4 There is no problem with taking judicial notice of the meaning
of the English term “delicious” inasmuch as the definition also
appears in a printed publication. The term “delicious” means
“highly pleasing or agreeable to the senses, especially of taste
or smell.”
Ser No. 76376895
5
See: In re Total Quality Group, Inc., 51 USPQ2d 1474,
1475-76 (TTAB 1999).
Notwithstanding the Board’s general view, we find, in
view of the very specific circumstances in this case, that
the Examining Attorney’s request to take judicial notice
has merit. Firstly, applicant itself provided a
translation (“SARAPINOY is Philippine for ‘GREAT PHILIPPINE
TASTE.’”) of its mark in the original application. Prior
to the appeal, the prosecution centered on the mere
descriptiveness of the English translation of the mark as
originally provided by applicant. It was not until after
the appeal, in its appeal brief, that applicant backtracked
somewhat from the translation which it furnished in the
original application. Accordingly, the Examining Attorney,
prior to her appeal brief, had no reason to introduce into
the record any dictionary evidence. Secondly, the
dictionary evidence submitted by the Examining Attorney
does not suffer from any obvious credibility problem. The
Examining Attorney has submitted a printout of the
dictionary evidence, and applicant has not raised any
objection thereto. The printout of the introduction to the
on-line dictionary indicates that its contents are based on
a printed publication, namely “Dr. Teresita V. Ramos’
Tagalog Dictionary published by the University of Hawaii
Ser No. 76376895
6
Press, 1971.” Thirdly, the dictionary evidence merely
confirms essentially what applicant already provided as the
translation.5
Accordingly, we grant the Examining Attorney's request
to take judicial notice of the dictionary translations of
“sarap” as “delicious,” and “Pinoy” as “Filipino.” Tagalog
Dictionary (1971).
We now turn to the merits of the refusal grounded on
mere descriptiveness. It is well settled that a term is
considered to be merely descriptive of goods, within the
meaning of Section 2(e)(1) of the Trademark Act, if it
immediately describes a quality, characteristic or feature
thereof or if it directly conveys information regarding the
nature, function, purpose or use of the goods. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). It is not necessary that a term describe all of the
5 The Examining Attorney, in connection with her request to take
judicial notice, indicated that she “confirmed with this Office’s
Translations Department that the terms ‘sarap’ and ‘Pinoy’
literally translate to English as ‘delicious’ and ‘Filipino’,
respectively. However, because up-to-date, comprehensive
Filipino (Tagalog) dictionaries are not readily available in
printed form....the Translations Department recommended the use
of more current online dictionaries.” (appeal brief, p. 9, n.
7). Although we cannot take judicial notice of the Examining
Attorney’s report of the translation provided by the Translations
Department, the Department’s comment about why online
dictionaries should be used provides further support for our
taking judicial notice of the online dictionary translations in
this case.
Ser No. 76376895
7
properties or functions of the goods in order for it to be
considered to be merely descriptive thereof; rather, it is
sufficient if the term describes a significant attribute or
feature about them. Moreover, whether a term is merely
descriptive is determined not in the abstract but in
relation to the goods for which registration is sought. In
re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
More specifically with respect to the case at hand,
laudatory terms are treated the same as other merely
descriptive terms. See, e. g.: In re Nett Designs Inc.,
236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001) [THE
ULTIMATE BIKE RACK]; and In re Best Software Inc., 58
USPQ2d 1314 (TTAB 2001) [BEST and PREMIER]. Moreover, when
considering mere descriptiveness under Section 2(e)(1), the
foreign equivalent of a laudatory term is treated no
differently from the English translation of that term.
See, e .g., In re San Miguel Corp., 229 USPQ 617 (TTAB
1986) [SELECTA, which means “select,” held merely
descriptive of beer]; In re George A. Hormel & Co., 227
USPQ 813 (TTAB 1985) [SAPORITO, which means “tasty,” held
merely descriptive of sausage]; and In re Joseph Schlitz
Brewing Co., 223 USPQ 45 (TTAB 1983) [KUHLBRAU, a
combination of KUHL BRAU, which means “cold brew,” held
merely descriptive of beer]. That is to say, the foreign
Ser No. 76376895
8
equivalent of a merely descriptive English term generally
is no more registrable than the English word itself. The
test is whether, to those American buyers familiar with the
foreign language, the term would have a descriptive
connotation.
In the present case, we have applicant’s statement, in
the original application which was accompanied by a
Trademark Rule 2.20 declaration by the president of
applicant (a corporation of the Philippines), that
“SARAPINOY is Philippine for ‘GREAT PHILIPPINE TASTE.’”
The dictionary evidence of record shows that the Philippine
terms “sarap” and “Pinoy” mean “delicious” and “Filipino,”
respectively. In its appeal brief, applicant attempts to
backtrack from its original translation, now arguing that
the mark is a coined term; applicant nevertheless concedes
that “the mark can be loosely translated as good/delicious
(‘sarap’ in Tagalog) and Filipino (‘pinoy’ in slang),” and
that while “[a]pplicant suggested to the Trademark Attorney
that SARAPINOY might be ‘great Filipino taste,’ a better
euphemism is ‘delicious Filipino.’” (appeal brief, pp. 2-
3).
We agree with the Examining Attorney that the literal
translation and the translation originally offered by
applicant are essentially synonymous: “delicious Filipino”
Ser No. 76376895
9
food products, and food products with a “great Philippine
taste.” Whether translated literally as “delicious
Filipino,” or loosely translated as “great Philippine
taste,” the mark SARAPINOY is merely descriptive of food
products.
Applicant, in contending that its mark is “coined,”
relies on the fact that it has telescoped two recognized
Philippine words, “sarap” and “Pinoy” to form “SARAPINOY,”
which is not found in any dictionaries. In the past, it
generally has been held that the telescoping of two
descriptive terms does not avoid a determination that the
mark as a whole is merely descriptive. See, e. g., In re
BankAmerica Corp., 229 USPQ 852 (TTAB 1986) [PERSONALINE
held to be merely descriptive of consumer loan services
through which a personal line of credit is provided]; and
In re United States Steel Corp., 225 USPQ 750 (TTAB 1985)
[SUPEROPE found to be merely descriptive of wire rope].
Here, applicant has merely deleted a space between the
terms “sarap” and “Pinoy,” and then has the terms share the
common letter “P”--the last letter of the first term and
the first letter of the second term overlap. However,
telescoping the descriptive term “sarap pinoy,” which
literally means “delicious Filipino,” into SARAPINOY does
not take the term out of the merely descriptive category.
Ser No. 76376895
10
Applicant has not suggested that the telescoped term
“SARAPINOY” has any other meaning in the context of food
products. We find that consumers familiar with the Tagalog
language would immediately recognize SARAPINOY as the
equivalent of SARAP PINOY, and would understand it as
describing a laudatory characteristic of applicant’s goods.
In view of our finding that SARAPINOY would be
translated as “delicious Filipino,” there is no question,
based on the clear meaning of these words alone, that the
term has a laudatorily descriptive meaning. But the
Examining Attorney has also submitted evidence in support
of this conclusion. The ten third-party registrations
submitted by the Examining Attorney show that the Office
has routinely considered terms such as “GREAT TASTE” or
“GREAT TASTING” to be merely descriptive when applied to
food products. Although certainly not dispositive of this
appeal, the evidence tends to show the descriptive meaning
of these terms in the food industry. Institut National des
Appellations D’Origine v. Vintners International Co., 958
F.2d 1574, 22 USPQ2d 1190 (Fed. Cir. 1992). An additional
eight third-party registrations submitted by the Examining
Attorney show the Office’s descriptive treatment of
references to various ethnic tastes or flavors (for
example, “ITALIAN FLAVOR” and “ASIAN TASTE”).
Ser No. 76376895
11
The Examining Attorney also submitted excerpts
retrieved from the NEXIS database showing, not
surprisingly, that there is an ethnic style of Filipino
cuisine. The articles show the following representative
uses in the context of Filipino cuisine:
Saltiness, the second dominant
Philippine taste after sourness....
(Chicago Tribune, September 20, 1990)
Dining here is a party of Filipino
flavors and hospitality.
(The San Francisco Chronicle, January
21, 1994)
Restaurant welcomes diners with
Filipino flavors.
(Albuquerque Journal, January 7, 2000)
This provides insight into Filipino
tastes, both traditional and modern.
(Los Angeles Times, January 26, 1989)
Based on the record before us, we find that the mark
sought to be registered, SARAPINOY, is the readily
recognizable telescoped form of SARAP PINOY, and that this
mark is the foreign equivalent of “Delicious Filipino.”
The mark, when applied to applicant’s food products, touts
the products as being delicious Filipino foods, or, stated
somewhat differently, as foods that have a delicious
Filipino-style taste. Thus, the term SARAPINOY is merely
descriptive of a characteristic or feature of the goods.
Ser No. 76376895
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Decision: The refusal to register under Section
2(e)(1) is affirmed.