Gerald Buchanan

Trademark Trial and Appeal Board

May 15, 2018

No. 86847785 (T.T.A.B. May. 15, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: May 15, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re Buchanan
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Serial No. 86847785
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Phillip Thomas Horton of The Law Office of Phillip Thomas Horton
for Gerald Buchanan.
Alex Seong Keam, Trademark Examining Attorney, Law Office 114,
K. Margaret Le, Managing Attorney.
_____

Before Wellington, Goodman and Heasley,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
Gerald Buchanan (“Applicant”) seeks registration on the Principal Register of the
mark KOPI CHAM MOCHA (in standard characters) for “coffee based beverages”
in International Class 30.1

1 Application Serial No. 86847785 was filed on December 14, 2015, based upon applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act. “Mocha” is disclaimed.

Page references herein to the application record refer to the online version of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs, motions
and orders on appeal refer to the Board’s TTABVUE docket system.
Serial No. 86847785
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The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(e)(1), 15 U.S.C. § 1052(e)(1). When the refusal was made final,
Applicant appealed and requested reconsideration.2 After the Examining Attorney
denied the request for reconsideration, the appeal was resumed. We affirm the refusal
to register.
I. Preliminary evidentiary issue
Before turning to the substantive grounds for refusal, we note that Applicant
submitted third-party registrations with his brief. These registrations were not
previously submitted during prosecution of the involved application and ordinarily
will not be considered. Trademark Rule 2.142(d). However, the Examining Attorney
did not object to the late-filed evidence, and treated the registrations as being of
record in the Examining Attorney’s brief. Accordingly, the third-party registrations
submitted with Applicant’s brief have been considered. In re Litehouse Inc., 82
USPQ2d 1471, 1475 n.2 (TTAB 2007) (third-party registrations submitted for first
time with applicant’s appeal brief considered because examining attorney did not
object in her brief and instead presented arguments in rebuttal of this evidence).
II. Arguments
The Examining Attorney maintains that the term KOPI CHAM MOCHA is merely
descriptive of Applicant’s coffee-based beverages because the goods may be mocha
flavored “kopi cham,” which is coffee mixed with tea as the term is used in Malaysia.

2 The application was abandoned and revived twice during prosecution.
Serial No. 86847785
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Applicant contends that the mark is at most suggestive. While acknowledging that
the terms are “arguably descriptive in-and-of themselves,” Applicant submits that
when combined … [they] evoke a new, non-descriptive commercial impression,
namely coffee products that include tea, and/or chocolate, and/or milk.”3 Applicant
further argues that the combination of the terms creates incongruity by “juxtaposing
discordant elements or ideas by combining mocha ingredients with coffee and tea”
and requires multi-step reasoning “to arrive at a tolerably accurate understanding of
the goods or services being offered in connection with the proposed mark.”4
III. Applicable Law
Section 2(e)(1) of the Trademark Act precludes registration of a mark that, when
applied to the goods or services of the applicant, is merely descriptive of them. 15
U.S.C. § 1052(e)(1). “A term is merely descriptive if it immediately conveys knowledge
of a quality, feature, function, or characteristic of the goods or services with which it
is used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217,
1219 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 82
USPQ2d 1828, 1831 (Fed. Cir. 2007)). Whether a term is merely descriptive is
determined not in the abstract, but “in relation to the particular goods for which
registration is sought, the context in which it is being used, and the possible
significance that the term would have to the average purchaser of the goods because

3 12 TTABVUE 15.
4 12 TTABVUE 14, 15.
Serial No. 86847785
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of the manner of its use or intended use.” In re Bayer Aktiengesellschaft, 82 USPQ2d
at 1831. See also In re Chamber of Commerce, 102 USPQ2d at 1219.5
We now look at the record to determine if Applicant’s mark is merely descriptive.
“The perception of the relevant purchasing public sets the standard for determining
descriptiveness. Any competent source suffices to show the relevant purchasing
public’s understanding of a contested term or phrase.” In re Nett Designs Inc., 236
F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (citations omitted). The Examining
attorney relies on several pieces of evidence.
First, the Examining Attorney included definitions of the separate terms “kopi,”
“cham” and “mocha” as well as the combined term “kopi cham” from the dictionary
and Internet websites. We find the following definitions most probative:
KOPI - “coffee (beverage).”6

CHAM - Hokkien (a southern Chinese dialect group) word for “mix.”7

KOPI CHAM - a beverage of coffee mixed with tea.8

5 In its brief, Applicant argues the three-part test based on the Board case No Nonsense
Fashions, Inc. v. Consolidated Food Corp., 226 USPQ 502 (TTAB 1985). However, that test
has been superseded. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1514 (TTAB 2016).
We base our analysis on the current test of mere descriptiveness as set forth by the Court of
Appeals for the Federal Circuit. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed.
Cir. 1987); Chamber of Commerce of the U.S., 102 USPQ2d at 1219; DuoProSS Meditech
Corp. v. Inviro Med. Devices, Ltd, 695 F.3d 1247, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012).
6 April 4, 2016 Office Action pp. 2-4, Wiktionary, a wiki-based open content dictionary.
7 April 4, 2016 Office Action p. 29, (Wikipedia.com), p. 39, (dailycookingquest.com), and p. 61
(tripadvisor.com); September 13, 2017, p. 14 (visitingsingapore.com). See also April 4, 2016
Office Action, pp. 35-36, discussing “cham.”
8 April 4, 2016 Office Action, pp. 29, 33, 43, 46. Also known as Yuan Yang tea which is the
Chinese name for coffee with tea. Id., at 29, 38.
Serial No. 86847785
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MOCHA - “a flavoring made of coffee mixed with chocolate” or “a coffee beverage
flavored with milk, sugar and cocoa.”9

Second, the Examining Attorney introduced two registrations containing the term
“kopi.”10 The Examining Attorney also relies on third-party registrations submitted
by Applicant containing the term “mocha.”11 Third party registrations can be used in
the manner of a dictionary definition to illustrate how a term is perceived in the trade
or industry. See In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006).
The registrations include:
Reg. No. 3982365 for coffee, artificial coffee, coffee flavorings, coffee-
based beverages, “Kopi Luwak” disclaimed.12
Reg. No. 4904448 for coffee and coffee-based beverages, “Kopi Trading
Company” disclaimed.13
Reg. No. 5118431 for iced coffee, “Mocha” disclaimed.14

9 April 4, 2016 Office Action, American Heritage Dictionary of the English Language (5th Ed.
2015), p. 64.
10 September 13, 2017 Denial of Reconsideration, pp. 2-7.
11 12 TTABVUE 18-26.
12 September 13, 2017 Office Action, pp. 2-4.
13 September 13, 2017 Office Action, pp. 5-7.
14 12 TTABVUE 19.
Serial No. 86847785
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Reg. No. 5016862 for HO HO MINT MOCHA for coffee-based beverages, “Mint
Mocha” disclaimed.15
Reg. No. 4691634 for cocoa, coffee and coffee substitutes; instant coffee;
prepared cocoa and cocoa-based beverages; prepared coffee and coffee-based
beverages, “Coconut” and “Mocha” disclaimed.16

Reg. No. 4879610 for AROMA MOCHA for prepared beverages made with
espresso and chocolate flavored milk for consumption on or off premise, “Mocha”
disclaimed.17

Reg. No. 4783596 for MOCHA COLADA, on the Supplemental Register, for coffee-
based beverages flavored with chocolate and coconut; non-carbonated, non-alcoholic
coffee-based beverages flavored with chocolate and coconut; coffee-based beverages;
chocolate based beverages.18

Third, the Examining Attorney provided Internet printouts from various websites
that show use of the term “Kopi Cham.”
One of our personal favorite drinks from Asia is a simple, yet delicious
mix of coffee tea, milk and sugar called Yuanyang. This coffee-tea mix
originated in Hong Kong but quickly became popular in many
surrounding countries like Malaysia and Singapore, where it is referred
to as either yuanyang or kopi cham.19

Kopi Cham: Coffee mixed with tea (Pretty similar to HK’s Yuan Yang).20

15 12 TTABVUE 21.
16 12 TTABVUE 22.
17 12 TTABVUE 26.
18 12 TTABVUE 20.
19 April 4, 2016 Office Action, p. 51.
20 April 4, 2016 Office Action, p. 46; February 7, 2017 Office Action, p. 8.

Serial No. 86847785
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Kopi Cham (Coffee mixed with Black Tea).21
In Malaysia (and Singapore I believe), this drink has a more literal
Malay-Fujianese name of kopi cham or mixed coffee.22

This decadent coffee/tea beverage from Hong Kong is delicious hot or
iced. . . . Malaysia has a similar treat called “Kopi Cham.”23

Well, YuanYang (in Chinese) also known as Kopi Cham (Cham means
mix) in Malaysia, also a famous beverage in Hong Kong which is made
from seven parts of Coffee and three parts of milk tea.24

Can’t decide if you want coffee or tea to go with your breakfast? Get
yourself a warm cup of yuanyang. This much beloved drink is sometimes
known as kopi cham – ‘cham’ is the Hokkien word for ‘mix’ and
yuanyang is just that. The concoction of milk tea swirled in with a dose
of coffee will give you the best of both worlds.25

Next time you are at a kopitam and do not know what to order, here are
some pointers: . . . Kopi cham is a mixture of kopi with tea.26

A web search later revealed that yuanyang is three parts kopi
(Malaysian coffee) and seven parts teh c (sweet tea with evaporated
milk) and is also known as kopi cham (“coffee mix.”).27

Other names for cofftea …Kopi cham (Malaysia).28

Kopi Cham, a drink of coffee plus tea, commonly served hot or iced in
Malaysia.29

21 April 4, 2016 Office Action, p. 33; February 2, 2017 Office Action, p. 2.

22 April 4, 2016 Office Action p. 39.

23 April 4, 2016 Office Action, p. 43; September 13, 2017 Office Action, p. 8.

24 February 7, 2017 Office Action, p. 14.
25 September 13, 2017 Office Action p. 14.
26 February 7, 2017 Office Action, p. 20.
27 September 13, 2017 Office Action, p. 17.
28 September 13, 2017 Office Action p. 18.
29 February 7, 2017 Office Action p. 25.
Serial No. 86847785
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In starting our analysis, we first consider the applicability of the doctrine of
foreign equivalents, where foreign words (in this case “kopi cham”) are translated
into English to determine genericness or descriptiveness. Palm Bay Imps., Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689,
1696 (Fed. Cir. 2005). “When it is unlikely that an American buyer will translate the
foreign mark and will take it as it is, then the doctrine of foreign equivalents will not
be applied.” Id. at 1696, (citing In re Tia Maria, Inc., 188 USPQ 524 (TTAB 1975)).
See also In re Spirits Int’l, N.V., 563 F.3d 1347, 90 USPQ2d 1489, 1492 (Fed. Cir.
2009) (discussing the doctrine of foreign equivalents). As demonstrated by the
evidence of record, the term “kopi cham” has entered the English language and would
be understood by buyers as naming a type of coffee beverage popular in Malaysia and
nearby Asian countries. The uses of the term “kopi cham” on Internet websites read
by English speaking consumers clearly indicate that the term stands for a coffee
beverage that includes tea and milk; it would be how United States consumers would
ask for or refer to this beverage, and it would be so understood by consumers–without
translating the words.30 Therefore, we find the doctrine of foreign equivalents
inapplicable in this case.

30 “Information originating on foreign websites or in foreign news publications that are
accessible to the United States public may be relevant to discern United States consumer
impression of a proposed mark.” In re Bayer Aktiengesellschaft, 82 USPQ2d at 1835. “Various
factors may inform the probative value of a foreign website in any given case, such as whether
the website is in English (or has an optional English language version), and whether the
nature of the goods or services makes it more or less likely that U.S. consumers will encounter
foreign websites in the field in question.” In re Well Living Lab Inc., 122 USPQ2d 1777, 1781
n.10 (TTAB 2017). We find the foreign websites here are probative of the United States
consumer’s understanding of the term “kopi cham” in relation to Applicant’s goods. While
some of the print-outs from the Internet websites are from Malaysia or about Malaysia or
Serial No. 86847785
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Next we consider whether the composite term KOPI CHAM MOCHA is merely
descriptive. While we must consider whether the mark as a whole is merely
descriptive and not just the individual elements, we “may weigh the individual
components of the mark to determine the overall impression or the descriptiveness of
the mark and its various components.” In re Oppedahl & Larson LLP, 373 F.3d 1171,
71 USPQ2d 1370, 1372 (Fed. Cir. 2004). If the combination retains the descriptive
significance of the individual parts, the mark as a whole must be considered merely
descriptive. See e.g., In re Petroglyph Games Inc., 91 USPQ2d 1332, 1341 (TTAB 2009)
(BATTLECAM merely descriptive for computer game software); see also In re Phoseon
Tech., Inc., 103 USPQ2d 1822, 1824 (TTAB 2012) (holding SEMICONDUCTOR
LIGHT MATRIX merely descriptive of light and UV curing systems composed
primarily of light-emitting diodes for industrial and commercial applications).
The mark Applicant seeks to register, KOPI CHAM MOCHA, is a composite
designation consisting of two merely descriptive components, i.e., “kopi cham” and
“mocha.” Applicant’s goods are identified as “coffee based beverages.” The record
establishes that “kopi cham” is a beverage of coffee mixed with tea and milk. Thus,
“kopi cham,” at the very least, is merely descriptive of the type of coffee-based
beverage. The record also establishes that “mocha” is a type of flavoring for coffee in
which chocolate is added to the coffee. Therefore, this term also is merely descriptive

Singapore, they are in English and are aimed at United States consumers either in terms of
news stories or articles involving coffee, Asian beverages, Asia, or travel stories directed to
the reading audience who might travel as tourists to Asia. In addition to English-speaking
people exposed to the articles about Malaysia and nearby countries such as Singapore, the
term “kopi cham” would have a descriptive meaning to Malaysian and Singaporean people
who now live in the United States.
Serial No. 86847785
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of an ingredient of Applicant’s coffee-based beverages, in that they include chocolate
flavoring.
We find that combination of these merely descriptive terms into the composite
KOPI CHAM MOCHA does not negate the mere descriptiveness of either of them,
nor does it create a composite which is unique, incongruous or otherwise inherently
distinctive. The composite designation KOPI CHAM MOCHA directly and merely
describes a significant feature of Applicant’s goods, namely a coffee-based beverage
that combines mocha flavored coffee with milk and tea. No imagination or multi-step
reasoning is required in order to understand the nature of the goods from
consideration of the proposed trademark for them.
In conclusion, we agree with the Examining Attorney that prospective consumers
would immediately perceive the term KOPI CHAM MOCHA as describing significant
characteristics of the goods in this case.
In his brief, Applicant requests that he be afforded an opportunity to file an
amendment to allege use and amend his application to the Supplemental Register if
the Board affirms the Section 2(e)(1) refusal. Such a request, which asks that an
amendment to the application be considered only after the Board has considered and
decided the appeal, is by its terms untimely. The Board lacks the power to re-open
the application to allow Applicant to file an amendment to allege use and to propose
the amendment to the Examining Attorney. See Trademark Rule 2.142(g) (“An
application which has been considered and decided on appeal will not be reopened
except for the entry of a disclaimer... or upon order of the Director”).
Serial No. 86847785
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Decision: The refusal to register Applicant’s mark KOPI CHAM MOCHA is
affirmed.