Gruma, S.A.B. de C.V., and Azteca Milling, L.P.v.Instamasa Sociedad Anonima

Trademark Trial and Appeal Board

Jul 6, 2017

No. 91216812 (T.T.A.B. Jul. 6, 2017)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: July 6, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Gruma, S.A.B. de C.V., Azteca Milling, L.P.

v.

Instamasa Sociedad Anonima
_____

Opposition No. 91216812
_____

John M. Cone of Ferguson Braswell Fraser Kubasta PC,
for Gruma, S.A.B. de C.V. and Azteca Milling, L.P.

Jennifer Parkins Rabin of Akerman LLP,
for Instamasa Sociedad Anonima.

_____

Before Kuhlke, Kuczma and Pologeorgis,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Instamasa Sociedad Anonima (“Applicant”) filed an application to register the
following mark:

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for: Coffee, tea, cocoa and artificial coffee; rice; tapioca and
sago; flour and preparations made from cereals, namely,
tortillas, tamales, arepas; bread, pastry and confectionery,
namely, corn chips and waffle rolls; ices; sugar, honey,
treacle; yeast, baking-powder; salt; mustard; vinegar,
condiments, namely, spices; ice, in International Class 30.1
Gruma, S.A.B. de C.V. and Azteca Milling, L.P. (“Opposers”) oppose registration
of Applicant’s mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1), on the grounds that INSTA MASA is merely descriptive of the goods;
and alternatively, is deceptively misdescriptive when used on non-instant masa flour
products; and is descriptive or deceptively misdescriptive as to others of those goods
which are not made of flour or dough.2
Opposer Gruma S.A.B. de C.V. (“Gruma”) of Mexico is the parent company of the
Gruma Group of Companies which includes Opposer Azteca Milling L.P. (“Azteca”).
Opposer Gruma and its companies distribute flour, tortillas, and other corn and
wheat-based food products, including corn masa flour.
Applicant denied the salient allegations of the Notice of Opposition and pleaded a
couple of affirmative defenses which were not pursued. Accordingly, the affirmative

1 Application Serial No. 86085439 was filed on October 8, 2013, based on an allegation of a
bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act,
15 U.S.C. §§ 1051(b). The application includes the following description of the mark: “The
mark consists of ‘INSTA’ on a top line, followed by ‘MASA’ appearing underneath ‘INSTA,’
all set forth within a rectangle shape.” Color is not claimed as a feature of the mark. “MASA”
is disclaimed and the English translation of “MASA” in the mark is “dough.”
2 The Notice of Opposition also asserted a claim, made on information and belief, that
Applicant did not have a bona fide intention to use the mark INSTA MASA & Design on all
the goods listed in Application Serial No. 86085439. Inasmuch as Opposers did not pursue
this claim at trial nor did they argue it in their Trial Brief, that claim is deemed waived.
Research in Motion Ltd. v. Defining Presence Marketing Group Inc., 102 USPQ2d 1187, 1190
n.6 (TTAB 2012); Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313, 1314 n.4
(TTAB 2005).
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defenses are therefore waived. Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc.,
107 USPQ2d 1750, 1753 (TTAB 2013) aff’d 565 Fed. Appx. 900 (Fed. Cir. 2014);
Trademark Board Manual of Procedure (“TBMP”) § 801.01 (June 2017).
I. Evidentiary Objections
Opposers raise several objections to Applicant’s evidence.3 Opposers first object to
the testimony deposition of Applicant’s witness, Alvaro Viquez Valverde, and move
for its exclusion noting that Mr. Viquez does not speak English, has spent little time
in the U.S. and in retail stores in the U.S., is unfamiliar with the customers or trade
channels for corn flour in the U.S.4, and therefore his testimony regarding sales and
advertising for Applicant’s products is irrelevant because those activities took place
in Costa Rica, not in the U.S.
That Mr. Viquez does not speak English does not matter as he testified through
an interpreter.5 However, Mr. Viquez has spent little time in the U.S. and in U.S.
retail stores, and is not familiar with the customers or trade “sales” channels for corn
flour sold in the U.S.6 This directly impacts the relevance of his testimony and we will
treat his testimony accordingly. Turning to his testimony regarding sales channels
and customers for Applicant’s products which are sold outside of the U.S.7, we agree

3 See III. Objections to Applicant’s Evidence in Opposers’ Trial Brief pp. 3-6 (34 TTABVUE
8-11).
4 Viquez Testimony Dep. pp. 67:9-68:6 (30 TTABVUE 71-72).
5 Viquez Testimony Dep. pp. 5:5-9, 67:9-67:16 (30 TTABVUE 9, 71).
6 Viquez Testimony Dep. pp. 67:19-68:6 (30 TTABVUE 71-72).
7 Viquez Testimony Dep. p. 68:1-68:6 (30 TTABVUE 72).
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with Opposers that such testimony is not relevant to this proceeding which involves
the U.S. market, and will disregard such testimony.
Opposers next object to Applicant’s Exhibits QQQQ, RRRR and SSSS introduced
in Applicant’s Second Notice of Reliance.8 Exhibits QQQQ and RRRR purport to be
copies of trademark registrations owned by Applicant for the trademark
INSTAMASA in El Salvador and the trademark INSTA MASA Y ETIQUETA in
Honduras. Inasmuch as Applicant’s application which is the subject of this proceeding
did not claim priority or base its application on Applicant’s registrations in El
Salvador or Honduras under Section 44(d) or (e), 15 U.S.C. § 44(d) or (e), such
registrations are irrelevant to the registrability of INSTA MASA and Design in the
U.S. and therefore, have no probative value even if they were sufficiently
authenticated as foreign public documents. See Societe Anonyme Marne et
Champagne v. Myers, 250 F.2d 374, 116 USPQ 153, 156 (CCPA 1957); Bureau Nat’l
Interprofessionnel Du Cognac v. Int’l Better Drinks Corp., 6 USPQ2d 1610, 1618
(TTAB 1988). See also Nabisco, Inc. v. George Weston Ltd., 179 USPQ 503, 507 (TTAB
1973); Barash Co. v. Vitafoam Ltd., 155 USPQ 267, 267 n.3 (TTAB 1967), aff’d, 427
F.2d 810, 166 USPQ 88 (CCPA 1970); TBMP § 704.03(b)(1)(A). Additionally,
Applicant’s Exhibit SSSS purports to be a license issued by the Ministry of Health of
Costa Rica allowing export of INSTAMASA brand flour from Costa Rica to
Guatemala. This Exhibit has not been considered as it is not authenticated and is not
relevant to any issue in this proceeding.

8 21 TTABVUE 5-16.
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Opposers object to Applicant’s Exhibit No. 70 contending it should not be admitted
because it is not fully legible. Applicant’s counsel apparently agrees that the Exhibit
is illegible. During cross-examination of Applicant’s witness about wording contained
in Applicant’s Exhibit No. 70, Applicant’s counsel instructed Applicant’s witness not
to answer Opposers’ counsel’s questions about the wording on the ground that such
wording was not legible.9 Despite Opposers’ subsequent requests to Applicant for a
fully legible copy of the Exhibit, Applicant failed to produce a fully legible copy. In
view of the foregoing, Opposers move that any testimony from Mr. Viquez relating to
Applicant’s Exhibit No. 70, and the Exhibit itself, not be admitted into evidence.10
Federal Rule of Evidence 106 provides that if a party introduces part of a writing,
an adverse party may require the introduction of any other part of the writing which
ought in fairness be considered contemporaneously with it. Beech Aircraft Corp. v.
Rainey, 488 U.S. 153, 172 (1988) (noting that Rule 106 is “a reaffirmation of the
obvious: that when one party has made use of a portion of a document, such that
misunderstanding or distortion can be averted only through presentation of another
portion, the material required for completeness is ipso facto relevant and therefore
admissible under Rules 401 and 402.”). “[T]he rule of completeness was stated
succinctly by Wigmore: ‘[T]he opponent, against whom a part of an utterance has
been put in, may in his turn complement it by putting in the remainder, in order to
secure for the tribunal a complete understanding of the total tenor and effect of the

9 Viquez Testimony Deposition pp. 84:17-85:21 (30 TTABVUE 88-89).
10 Opposers’ Trial Brief p. 4 (34 TTABVUE 9).
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utterance.’” Id. at 171 (citation omitted). Thus, Opposers were entitled to present
evidence of additional language in Applicant’s Exhibit No. 70. Inasmuch as the
additional language in Applicant’s Exhibit No. 70 that Opposers may have introduced
was not legible, and Applicant did not produce another copy of its Exhibit No. 70
where such language was legible, Applicant’s Exhibit No. 70 and all testimony
regarding the Exhibit will be given no consideration.
Opposers also object to Applicant’s Exhibits JJJ through NNN submitted with
Applicant’s First Notice of Reliance11 requesting they be “excluded as irrelevant.”
According to Opposers, “Spanish-English dictionaries that do not include a
translation of the word INSTA are not relevant or probative of the meaning ascribed
by U.S. consumers to the word INSTA appearing on packaging or labels for food
products, particularly masa/corn flour.”12 Additionally, Opposers argue the fact that
Google, Dictionary.com and Babylon (Exhibits WW, XX and YY to Applicant’s First
Notice of Reliance13) offer “Urges Mass” as a translation of “Insta Masa” is not
probative of the public’s understanding of those words when they are seen on a
package of corn flour in a U.S. retail store.14 Opposers also assert that Applicant’s
Exhibits HHH, III and OOO (in Applicant’s First Notice of Reliance15), showing that
the Spanish language includes a verb “instar” meaning to “urge,” the third person

11 Applicant’s First Notice of Reliance (20 TTABVUE 12, 322-339).
12 Opposers’ Trial Brief p. 5 (34 TTABVUE 10).
13 Applicant’s First Notice of Reliance (20 TTABVUE 273-283).
14 Opposers’ Trial Brief pp. 5-6 (34 TTABVUE 10-11).
15 Applicant’s First Notice of Reliance p. 11 (20 TTABVUE 12, 314-325, 341).
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singular form of which is “insta,” has no relevance to the meaning ascribed by U.S.
consumers to INSTA appearing on packaging for corn flour. Applicant’s Exhibit WW
will be given no consideration as it is a copy of a search results page which does not
provide information identifying where the translation shown originated. Although
Opposers summarily object to the rest of the foregoing Exhibits on the grounds of
relevancy, they are admissible, but they have little, if any, probative value to the
issues in this case.
Opposers next assert that Exhibits TTT through VVV should be excluded.
Applicant offers these Exhibits “[t]o demonstrate that a significant number of
individuals from Central America, where Applicant’s products have been sold and
distributed, have immigrated to and reside in the United States.”16 Mr. Viquez
testified that he sold products in Costa Rica, Honduras and El Salvador. However,
after he built two factories in Honduras and El Salvador, he stopped selling in those
two countries.17 With no further testimony regarding the duration or volume of sales
in Honduras and El Salvador, Applicant’s activities in those two countries are not
substantiated. As to Costa Rica, the articles offer little information regarding the
number of immigrants coming to the U.S. from Costa Rica except that in 2009, 3% of
Central American immigrants coming to the U.S. were from Costa Rica.18 Due to the
limited number of immigrants from Costa Rica that came to the U.S., the information

16 Applicant’s First Notice of Reliance p. 12 (20 TTABVUE 13, 360-396).
17 Viquez Testimony Dep. p. 68:7-68:21 (30 TTABVUE 72).
18 Applicant’s Exhibit TTT (20 TTABVUE 362).
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provided in Exhibits TTT through VVV regarding immigrants from Central America
will be considered for whatever limited probative value it may have.
Lastly, Opposers argue that Applicant’s Exhibit RRR should be excluded as
irrelevant to contested issues. Exhibit RRR is a Company Description for “Gruma
S.a.b.-B” (presumably the same company as Opposer Gruma, S.A.B. de C.V.)
published at http://www.bloomberg.com/research/stocks/snapshot/snapshot_arti
cle.asp?ticker=GPAGF... containing the statement:
Competition: Within the corn industry, the brands of the
company’s main competitors are: Del Comal, Doña Blanca,
Selecta, Bachosa, Más Tortilla, Chortimasa, Instamasa
and Doñarepa.19
(from highlighted section of 20 TTABVUE 348)
Applicant offers Exhibit RRR “[t]o demonstrate that, within the corn flour industry,
INSTAMASA is considered a competing brand and trademark used by Opposer
Gruma’s competitor, Instamasa, S.A. [Applicant].”20 In view of the information
provided therein, we consider Exhibit RRR for whatever limited probative value it
may have.
II. The Record
The record includes the pleadings and, by operation of Trademark Rule
2.122(b)(1), 37 C.F.R. § 2.122(b)(1), Applicant’s application file.
Opposer introduced the following testimony and evidence:

19 Applicant’s Exhibit RRR (20 TTABVUE 348).
20 Applicant’s First Notice of Reliance p. 12 (20 TTABVUE 13).
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Testimony deposition of Rogelio Gonzalez on April 6, 2016, with Opposers’
Exhibit Nos. 1-29 and Applicant’s Exhibit No. 30 (22 TTABVUE);21

Rebuttal Testimony deposition of Rogelio Gonzalez on September 8, 2016, with
Opposers’ Exhibit Nos. 79-109;

(Note: Opposers’ Testimony Exhibits are Exhibit Nos. 1-29 and 79-109);

Opposers’ First Notice of Reliance on third-party advertising and promotion of
goods described with the word “instant,” and Exhibit A pp. A-01 to A-44 (27
TTABVUE);

Opposers’ Second Notice of Reliance on goods offered for sale under marks that
include the term “insta,” and which are also described using the term “instant,”
and Exhibit B pp. B-01 to B-24 (28 TTABVUE); and

Opposers’ Third Notice of Reliance on portions of TSDR Case View printouts
showing applications for marks including prefix “insta” and a respective Notice
of Pseudo Mark issued in connection with each such application, and Exhibit
C pp. C-001 to C-418 (29 TTABVUE).

Additionally, Applicant submitted the following testimony and evidence:
Applicant’s First Notice of Reliance on U.S. Trademark Registrations and
Trademark Electronic Search System (“TESS”) reports, and Applicant’s
Exhibits A-PPPP (excluding Exhibits WW and SSSS) (20 TTABVUE);

Testimony of Alvaro Viquez Valverde22 on June 7, 2016, with Applicant’s
Exhibit Nos. 31-48, 52-64, 65 (redacted), 66-69, 71-73, 75-78 (30 TTABVUE);
and

Applicant’s Testimony Exhibits are Exhibit Nos. 30-48 and 52-69, 71-78;
Exhibit 65 is designated Confidential; Exhibit 70 has been excluded. Also,

21 Record citations are to TTABVUE, the Board’s publically available docket history system.
For material or testimony that has been designated confidential and which does not appear
in the publically available TTABVUE, the TTABVUE docket entry number where such
material or testimony is located should be included in any citation. See Turdin v. Trilobite,
Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014).
22 Confidential Testimony of Alvaro Viquez Valverde given at pp. 49 and 84 of his Testimony
Deposition (31 TTABVUE 3, 4) and Applicant’s Exhibit 65 (31 TTABVUE 5-9) were filed
under seal at 31 TTABVUE. No testimony or exhibits designated “confidential” were
discussed or relied on in this decision.
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there is an intentional gap in the numbering of Applicant’s Exhibits; thus,
Exhibit Nos. 49-51 were not assigned.23

Applicant did not submit a trial brief.

III. Standing
To establish standing, Opposers must show both a real interest in the proceedings
as well as a reasonable belief of damage. Empresa Cubana Del Tabaco v. Gen. Cigar
Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Ritchie v. Simpson, 170
F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). A belief in likely damage
can be shown by establishing a direct commercial interest. Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000).
Here, Opposers established that they have sold and continue to sell corn masa
flour in the U.S. under the trademark MASECA which is marketed as “MASECA
Instant Masa Corn Flour.”24 Because Opposers oppose registration of Applicant’s
mark INSTA MASA on the grounds that it is merely descriptive of the goods, they
need only assert an equal right to use the mark for the goods. Proprietary rights
owned by Opposers are not required. Jewelers Vigilance Committee Inc. v. Ullenberg
Corp., 823 F.2d 490, 2 USPQ2d 2021, 2024 (Fed. Cir. 1987); Dewalt, Inc. v. Magna
Power Tool Corp., 289 F.2d 656, 129 USPQ 275, 280 (CCPA 1961).

23 Viquez Testimony Dep. pp. 33:20-34:1 (30 TTABVUE 37-38).
24 Gonzalez Testimony Dep. pp. 6:22-24, 7:14-20, 72:20-25 (22 TTABVUE 8, 9, 74).
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Inasmuch as Opposers have established a commercial interest in their continued
use of the terms “instant” and “masa” in connection with their sale of competitive
goods, they have established a reasonable basis for relief. Therefore, they are not
intermeddlers and have standing to oppose registration of Applicant’s mark. See
Empresa Cubana Del Tabaco v. Gen. Cigar Co., 111 USPQ2d at 1061-62 (Cuban cigar
manufacturer had standing to seek cancellation of competitor’s trademark
registrations); Miller v. Miller, 105 USPQ2d 1615, 1618 (TTAB 2013) (competing law
firm had standing to oppose competitor’s application). See also, e.g., Lipton Industries,
Inc. v. Ralston Purina Co., 213 USPQ at 189 (one basis for standing includes
“descriptive use of term in registered mark”).
IV. Background
Opposer Gruma is a leading producer of tortillas and corn masa flours in the
world. Gruma owns Azteca which manufactures and distributes corn masa products
throughout the U.S.25
Opposers’ witness, Rogelio Gonzalez, has been the Vice President of Sales and
Marketing for Opposer Azteca, since November 2010.26 As a part of his job, he
regularly visits retail stores selling corn masa flour, talks to the retailers and
customers, and is familiar with how the product is sold in the stores.27 According to

25 Gonzalez Testimony Dep. pp. 6:20-24, 7:14-20, 33:9-12 (22 TTABVUE 8-9, 35).
26 Mr. Gonzalez has been employed by Opposer Azteca Milling since 2000. Azteca Milling
manufactures and distributes corn masa products throughout the U.S. and in other countries.
Gonzalez Testimony Dep. pp. 6:20-24, 7:17-8:4 (22 TTABVUE 8-10).
27 Gonzalez Testimony Dep. pp. 8:23-9:8 (22 TTABVUE 10-11).
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Mr. Gonzalez, “masa” is a term that customers in the U.S. use to identify a type of
corn flour, which is called “corn masa flour” sold in grocery stores and supermarkets,
and it is also used to identify “wet masa.” Corn masa flour is the flour that one uses
to make masa. It is different than corn flour which is regular corn meal that is
produced by a different process.28
Years ago, customers would have to make their own masa by “clean[ing] the corn
first, then cook[ing] it with lime, the mineral, and then let[ting] it rest for 4 to 5
hours, and then mill[ing] it and then you will have the masa.” Now, customers can
just buy a bag of corn masa flour, add water and “you will have the same results.”29
The public commonly identifies this type of flour product as masa, corn masa flour,
masa instantánea de maiz or instant masa.30 Opposer Azteca sells corn masa flour to
snack producers, tortilla producers, food chains and retail stores in the U.S.31
Applicant, Instamasa Sociedad Anonima, is a Costa Rican company founded by
Alvaro Viquez Valverde, who served as its president and eventually retired from the
company in 2007. He now advises the company in “business, sales, and the financial
aspect and maintenance” and is familiar with the sales and marketing of its
products.32 Applicant’s products are currently sold in Costa Rica; it has never sold its

28 When corn flour is mixed with water it forms “wet masa” or dough that is used to make
tortillas, sopes, tamales and other dishes. Gonzalez Testimony Dep. pp. 8:10-18, 10:3-22,
35:25-36:8 (22 TTABVUE 10, 12, 37-38); Opposers’ Appeal Brief p. 7 (34 TTABVUE 12). See
also, Viquez Testimony Dep. p. 59:4-24 (30 TTABVUE 63).
29 Gonzalez Testimony Dep. p. 19:8-17 (22 TTABVUE 21).
30 Gonzalez Testimony Dep. pp. 19:21-22, 26:24-27:6 (22 TTABVUE 21, 28-29).
31 Gonzalez Testimony Dep. p. 8:10-13, 8:19-22 (22 TTABVUE 10).
32 Viquez Testimony Dep. pp. 6:13-7:9 (30 TTABVUE 10-11).
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products in the U.S.33 Mr. Viquez testified that “insta” has no meaning and “masa”
means “dough” and is not used to identify or describe the dry corn flour product sold
by the parties. According to Mr. Viquez, corn flour for making “masa” is flour that is
described on product packages as harina de maiz, precooked cornmeal, mixed
cornmeal or cornmeal. Masa, on the other hand, is made from cooked corn that has
been dehydrated and then sold as corn flour. When water is added to the corn flour,
it then forms a dough or “masa.”34
V. Descriptiveness
A term is merely descriptive within the meaning of § 2(e)(1) if it immediately
conveys knowledge of a quality, characteristic, function, feature, purpose or use of the
goods 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); In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009 (Fed.Cir.1987). Whether a particular term is merely descriptive must be
determined not in the abstract, but in relation to the goods and services for which
registration is sought, the context in which the term is used, and the possible
significance that the term is likely to have to the average prospective purchaser
encountering the goods and services in the marketplace. See In re Chamber of
Commerce, 102 USPQ2d at 1219; In re Bayer Aktiengesellschaft, 488 F.3d 960, 82
USPQ2d 1828, 1831 (Fed. Cir. 2007); In re Abcor Development Corp., 588 F.2d 811,

33 Viquez Testimony Dep. pp. 11:13-20, 68:1-21. (30 TTABVUE 15, 68).
34 Viquez Testimony Dep. pp. 16:4-10, 53:7-25, 57:18-60:21 (30 TTABVUE 20, 57, 61-64).
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200 USPQ 215, 217-18 (CCPA 1978); In re Phoseon Technology Inc., 103 USPQ2d
1822, 1823 (TTAB 2012).
It is settled that “[t]he question is not whether someone presented with only the
mark could guess what the goods or services are. Rather, the question is whether
someone who knows what the goods or services are will understand the mark to
convey information about them.” DuoProSS Meditech Corp. v. Inviro Medical Devices,
Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (citing In re Tower Tech
Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)); In re Swatch Group Management
Services AG, 110 USPQ2d 1751, 1762 n.54 (TTAB 2014) aff’d 599 Fed. Appx. 959
(Fed. Cir. 2015). Finally, when determining whether a mark having multiple
components, is merely descriptive, the Board may ascertain the meaning and weight
of each of the components. Ultimately however, we must consider the commercial
impression of the mark as a whole in the context of the goods at issue. See DuoProSS
Meditech Corp. v. Inviro Medical Devices Ltd., 103 USPQ2d at 1757; In re Nat’l Data
Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985).
Applicant’s mark is a composite mark comprised of the words INSTA MASA
placed on a banner design as shown below:

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Turning first to the design portion of Applicant’s applied-for mark ,
Opposers contend that the Design “components of the mark do not contribute
significantly to its identi[t]y or the commercial impression it creates.”35 Applicant has
not challenged such contention. “It is settled that common basic shapes such as
circles, ovals, triangles, diamonds, stars and other geometric designs, when used as
vehicles for the display of word or letter marks, are not regarded as indicia of origin
for the goods to which they are applied in the absence of a showing of secondary
meaning in the design alone.” See Permatex Company, Inc. v. California Tube
Products, Inc. 175 USPQ 764, 766 (TTAB 1972); see also Nat’l Rural Electric
Cooperative Ass’n v. Suzlon Wind Energy Corp., 78 USPQ2d 1881, 1883 (TTAB 2006)
aff’d 214 Fed. Appx. 987 (Fed. Cir. 2007). We find the banner design to fall into the
category of a non-distinctive common basic shape that merely serves as a carrier for
the wording INSTA MASA and would not be regarded as inherently distinctive. See
In re Wendy’s International, Inc., 227 USPQ 884 (TTAB 1985) (proposed mark
mere background and not inherently distinctive); In re Haggar Co., 217 USPQ 81
(TTAB 1982) (proposed mark mere background and not inherently distinctive).
Inasmuch as the banner design cannot carry the mark, at least without a showing
of secondary meaning, we turn to the wording. We begin by examining the meaning
of each component of Applicant’s applied-for mark individually, and then determine
whether the mark as a whole, including the Design, is merely descriptive. See

35 Opposers’ Appeal Brief p. 1, fn.1. (34 TTABVUE 6).
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DuoProSS Meditech Corp. v. Inviro Medical Devices Ltd., 103 USPQ2d at 1757, 1758;
In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004)
(holding PATENTS.COM merely descriptive of computer software for managing and
tracking the status of database records noting that “the PTO may [separately]
consider the meaning of ‘patents’ and the meaning of ‘.com’ with respect to the goods
identified in the application.”); see also In re Nat’l Data Corp., 224 USPQ at 752.
Applicant maintains that “masa” is not used to identify [on the label of] dry corn
flour sold in Costa Rica, noting Opposer Gruma’s packaging for the MASECA product
shown in Applicant’s Exhibits 71 and 72 [sold in Costa Rica] where the front and back
sides of the packaging do not feature the term “masa.” As Mr. Viquez explained, in
Costa Rica, “they make you write exactly the name of the product.”36 In view of the
fact Mr. Viquez testified through a qualified translator and interpeter that
Applicant’s products are currently sold only in Costa Rica and that it has never sold
its products in the U.S.,37 Applicant’s argument is not relevant to sales in the U.S. It
only addresses labeling used by Opposer Gruma and Applicant on product packaging
used in Costa Rica. Applicant has provided no evidence of the wording used in the
U.S. market to describe dry corn flour used in making masa.
Opposers disagree with Mr. Viquez’s testimony that “masa” only means dough and
is not the term used for a dry corn flour product such as Opposers’ MASECA product
and Applicant’s INSTA MASA product. In the U.S. market, according to Mr.

36 Viquez Testimony Dep. pp. 57:24-62:6, 62:20-22 (30 TTABVUE 61-65); Gonzalez Testimony
Dep. vol. II p. 89:5-14 (33 TTABVUE 10).
37 Viquez Testimony Dep. pp. 5:22-24, 11:13-20, 68:1-21. (30 TTABVUE 9, 15, 72).
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Gonzalez, masa has dual meanings; “it can be a dry corn masa flour or the wet masa.
It has the two meanings.”38 Indeed, the evidence shows that Applicant uses “masa”
in connection with its corn flour product. For example, Applicant’s advertising and
packaging for its INSTA MASA dry corn flour product sold in Costa Rica feature the
slogan “¡La masa de ahora con la tradición de Siempre...!” which means, according to
Mr. Gonzalez, “The masa of now with the tradition of always.”39 Similarly, the
packaging for several of Applicant’s corn flour products use the term “masa”:
packaging for Applicant’s corn flour uses the slogan “Masa Especial para Tamales,”
which translates as “special masa for tamales”40; packaging for Applicant’s Masarepa
brand corn flour uses the slogan “Masa especial para arepas, empanadas y tamales,”
which translates as “special masa for arepas, emapandas and tamales”41; other
packaging contains the wording “100% Masa de Maiz Cascado,” which means “100%
Masa of broken corn” or “100% broken corn masa”42. Thus, Applicant uses “masa” on
its packaging and in its advertising in Costa Rica, to describe its corn flour products.
The inclusion of “masa” as part of Applicant’s applied-for mark for its dry corn
flour, as well as its advertising for the INSTA MASA products featuring the term

38 Gonzalez Testimony Dep. p. 67:15-21 (22 TTABVUE 69), Gonzalez Testimony Dep. vol. II
p. 88:5-18 (33 TTABVUE 9) (“It is a dry corn masa flour and it’s a wet masa.”).
39 Viquez Testimony Dep. p. 15:4-22 (30 TTABVUE 19), Applicant’s Exhibit No. 32 (30
TTABVUE 132) and Gonzalez Testimony Dep. vol. II pp. 89:23-91:17 (33 TTABVUE 10-12),
Opposers’ Exhibit No. 89 (33 TTABVUE 72).
40 Opposers’ Exhibit No. 90, Gonzalez Testimony Dep. vol. II pp. 91:18-92:4 (33 TTABVUE
12-13).
41 Opposers’ Exhibit No. 91, Gonzalez Testimony Dep. vol. II p. 92:5-20 (33 TTABVUE 13).
42 Opposers’ Exhibit No. 91, Gonzalez Testimony Dep. vol. II p. 92:21-93:7 (33 TTABVUE
13-14).
Opposition No. 91216812

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“masa,” support the descriptiveness of “masa” for those goods. Moreover, Applicant
has disclaimed the descriptive term “masa.”43 It has long been held that the
disclaimer of a term constitutes an admission of the merely descriptive nature of that
term, as applied to the goods or services in connection with which it is registered, and
an acknowledgment of the lack of an exclusive right therein at the time of the
disclaimer. Quaker State Oil Refining Corp. v. Quaker Oil Corp., 453 F.2d 1296, 172
USPQ 361, 363 (CCPA 1972); In re DNI Holdings Ltd., 77 USPQ2d 1435, 1442 (TTAB
2005); In re Interco Inc., 29 USPQ2d 2037, 2038 (TTAB 1993).
Applicant also submits copies of four third-party registrations to “demonstrate
that the USPTO did not require a disclaimer of ‘MASA’ in third party registrations”
for use in connection with tamales, enchiladas, tacos, tortillas; flour; white and yellow
pre-cooked corn flour; and corn flour, “and that the USPTO did not find the use of the
term ‘MASA’ in th[o]se mark[s] to be merely descriptive”44 Exhibit QQ is Registration
No. 2,020,245 for the mark “MI MASA ES SU MASA” and Exhibit SS is Registration
No. 3,148,486 for SEÑORA MASA; both of these Registrations have been cancelled.
It is well-established that an expired or cancelled registration is evidence of nothing
but the fact that it once issued. Sunnen Prods. Co. v. Sunex Int’l Inc., 1 USPQ2d 1744,
1747 (TTAB 1987). Accordingly, we give those Registrations no consideration. That
no disclaimer was required for the marks in the two remaining registrations

43 March 11, 2014 Response to Office Action.
44 Applicant’s First Notice of Reliance, Applicant Exhibits QQ (Registration No. 2020245 for
MI MASA ES SU MASA), RR (Registration No. 3099692 for MASA BROSA & Design), SS
(Registration No. 3148486 for SEÑORA MASA) and VV (Registration No. 3695599 for HARI
MASA & Design) (20 TTABVUE 9-10, 219-230, 269-272).
Opposition No. 91216812

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introduced by Applicant, Registration Nos. 3099692 for MASA BROSA and 3695599
for HARI MASA, is inconclusive as the USPTO “may require” applicants to enter
disclaimers of descriptive words. 15 U.S.C. § 1056(a). In any event, we note that
Applicant itself has disclaimed “masa,” without objection, in response to the Office
Action of January 31, 2014.
Turning to the term “INSTA,” Opposers use the terms “instant” and “instantánea”
on their packaging to identify their corn flour products. The packaging for Opposers’
products sold under the MASECA trademark shows the names of the products as:
Masa Instantánea de Maíz (Spanish) and Instant Corn Masa Flour (English)45; Masa
Instantánea de Maíz Amarilla (Spanish) and Instant Yellow Corn Masa Flour
(English);46 and Masa Instantánea de Maíz Nixtamalizado (Spanish) and Corn Masa
Flour (English).47 The packaging for Opposers’ MASA NIXTA product identifies the
product as Instant Corn Flour.48 Several competitors selling corn masa flour products
in the U.S. label their products with the term “instant” or the Spanish equivalent,
“instantanea,” placed on their packaging to indicate to purchasers that you just add
water to the corn masa flour to instantly make masa.49 Opposers submit evidence

45 Opposers’ Exhibit Nos. 1, 2, 4, 5 (22 TTABVUE 84-87, 90-93).
46 Opposers’ Exhibit No. 3 (22 TTABVUE 88-89).
47 Opposers’ Exhibit Nos. 6-8 (22 TTABVUE 94-99).
48 Opposers’ Exhibit No. 9 (22 TTABVUE 100-101).
49 Gonzalez Testimony Dep. pp. 20:3-26:18 (22 TTABVUE 22-28).
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showing that third parties sell similar products in the U.S. labelled with the following
descriptive terms, including “instant” and “instantanea”50:
Exhibit No. Brand Description

10 Masabrosa Harina De Maiz
Instant Corn Masa

11 Masabrosa Harina De Maiz Para Tamales
Instant Corn Masa For Tamales

12 Minsa Instant Corn Masa Flour

13 Goya Masarica Masa Instantánea De Maíz
Instant Corn Masa Flour

14 Gonzalez Instant Corn Masa
Instantánea De Maíz

15 Casa Cardenas Instant Corn Masa Flour
Masa Instantánea De Maíz

16 Pueblo Lindo Masa Instantánea De Maíz
Instant Corn Masa Flour

17 La Michoacana Instant Corn Masa Flour

18 Hill Country Fare Instant Masa Instantánea

19 Tío Santi Masa Instantánea De Maíz
Instant Corn Masa Flour

20 Don Pancho Instant Corn Masa Flour

21 Don Pancho Instant Corn Masa Flour

22 Pura Masa Masa Instantánea De Maíz
Instant Corn Masa Mix

23 Tío Flaco Instant· Instantánea Masa

50 Gonzalez Testimony Dep. pp. 20:1-26:15 (22 TTABVUE 22-28) and Opposers’ Exhibit
Nos. 10-25 (22 TTABVUE 102-133).
Opposition No. 91216812

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Corn Masa Flour Mix

24 Shurfine Masa Instantanea De Maiz
Stone Ground Masa Corn Flour

25 La Mas Rica Harina De Maíz
Masa Instantánea De Maíz

Opposers and their competitors sell corn masa flour in U.S. grocery stores in
packaging bearing the wording “instant” and/or “instantánea” to draw attention to
the feature of the product, that when mixed with water it instantly forms a dough,
which can then be baked into tortillas and similar products. Thus, “instant masa” is
a commonly used descriptive name for such products.51
Indeed, “instant” has been used to promote a descriptive attribute of various food
products including: Quaker Instant Oatmeal, Medaglia d’Oro Instant Espresso
Coffee, Bird’s Instant Custard packet, Starbucks Via Instant Refreshers drink, Pero
Instant Natural Beverage, Thick-It Instant Food and Beverage Thickeners, Abuelita
Mexican Style Instant Hot Chocolate Mix, Alpine Instant Spiced Apple Cider, Skinny
Coffee Instant Coffee Mix and Maruchan Instant Lunch Ramen Noodle Soup.52
Based on the foregoing, the public understands that “instant” is used to describe
a feature of many different products that are quickly converted to create or prepare
edible food products. For example, several of the “instant” products identified above
are intended to be mixed with water and then heated to form the final food or
beverage product. As to the term “INSTA” used in Applicant’s mark, Opposers

51 Gonzalez Testimony Dep. p. 26:16-27:6 (22 TTABVUE 28-29).
52 Opposers’ Exhibit Nos. 92-101 (33 TTABVUE 79-80, 87, 90, 95-96, 101, 104, 107, 110-111,
113 and 121); Opposers’ Trial Brief pp. 14-15 (34 TTABVUE 19-20).
Opposition No. 91216812

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maintain that “[t]oday ‘insta’ used as a prefix is generally understood to be a short
form of ‘instant’ and is used that way in connection with numerous products,
particularly food products.”53
Applicant disagrees with Opposers’ interpretation of “insta,” introducing eight
dictionary extracts showing that the term “insta” has no definition.54 The absence of
a dictionary definition however, is not determinative of the meaning of a term
particularly where Opposers have submitted a dictionary definition and other
informational listings showing that “insta” has a descriptive and slang meaning
similar to “instant”:
● insta - indicating instant or quickly produced

Word Origin
C21: from instant
http://www.collinsdictionary.com/dictionary/english/insta-55

● insta: 1. (slang) instant
Definition from Wiktionary
https://en.wiktionary.org/wiki/insta-56

53 Opposers’ Brief p. 15 (34 TTABVUE 20).
54 Applicant’s Exhibits ZZ OxfordDictionaries (US English) http://www.oxforddiction
aries.com/us/spellcheck/american_english/?q+insta, AAA dictionary.com http://www.
dictionary.com/misspelling? term=insta&s=t, BBB Merriam Webster Dictionary http:
//www. merriam-webster.com/dictionary/suggestions/insta, CCC Cambridge Dictionaries
Online http://dictionary.cambridge.org/us/spellcheck/english?q=insta, DDD Babylon’s
English Dictionary http://dictionary.babylon-software.com/english/, EEE Longman
Dictionary of Contemporary English http://www.doceonline.com/spellcheck /?q=insta, FFF
Free Dictionary http://www.freedictionary.org/?Query=insta &button =Search, and GGG
Dictionary.net http:// www.dictionary.net/ (20 TTABVUE 10-11, 284-312).
55 Gonzalez Testimony Dep. p. 29:4-12 (22 TTABVUE 31), Opposers’ Exhibit No. 28 (22
TTABVUE 141-142), the definition submitted by Opposers appears to be the British English
definition for the term “insta” published by Collins English Dictionary. Inasmuch as
Applicant did not object to the use of the definition during the testimony of Opposers’ witness,
Mr. Gonzalez, we have considered it.
56 Gonzalez Testimony Dep. p. 28:9-19 (22 TTABVUE 30), Opposers’ Exhibit No. 26 (22
TTABVUE 134-135); Applicant did not object to the accuracy of the definition from the
Opposition No. 91216812

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● Urban Dictionary: insta
Top Definition: A prefix usually preceding a verb emphasizing and often
exaggerating the haste of something, especially a performed task.
http://www.urbandictionary.com/define.php?term=insta57

Based on the foregoing online definition and listings, “insta” may be recognized by
some consumers as a synonym, or a shortened expression, for “instant.” This is
supported by the testimony of Opposers’ Vice President of Sales and Marketing that
“insta” is a shortened term for “instant” in both the English and Spanish languages.58
In support of the public’s familiarity with the use of “insta” as a shortened term
for “instant,” Opposers submit evidence of various products advertised for sale under
brand names that include the term “INSTA” where the description of the product or

Wiktionary reference. See In re Cook Medical Technologies LLC, 105 USPQ2d 1377, 1382 fn.2
(TTAB 2012) (Wiktionary.com definition considered inasmuch as examining attorney, as the
non-offering party, had an opportunity to rebut that evidence).
57 Gonzalez Testimony Dep. pp. 28:22-28:25 (22 TTABVUE 30), Opposers’ Exhibit No. 27 (22
TTABVUE 138). The Board will consider dictionary definitions taken from Urban Dictionary,
a collaborative online dictionary of slang terms, so long as the non-offering party has an
opportunity to rebut that evidence by submitting other definitions that may call into question
the accuracy of the particular Urban Dictionary definitions. Our consideration of the Urban
Dictionary definitions is with the recognition of the limitations inherent in this dictionary,
given that anyone can submit or edit the definitions. In re Star Belly Stitcher, Inc., 107
USPQ2d 2059, 2062 fn.3 (TTAB 2013). Applicant did not object to the accuracy of the
definition from the Urban Dictionary.
58 Gonzalez Testimony Dep. p. 27:19-27:23 (22 TTABVUE 29). The translations of “insta
masa” Applicant submitted from the Internet (Applicant’s Exhibits XX and YY indicating
“urges mass” and “urges earth” (20 TTABVUE 276-283)), provide only the translated
language; no additional information was provided. On the otherhand, the testimony of
Opposers’ witness and Opposers’ Exhibits including Exhibit Nos. 1-5, 10-25, 81-82, 85, 87 pp.
11:2-16:4, 20:3-26:11, 96:22-97:2, 98:22-99:6, 102:13-103:7, 103:22-104:4 (22 TTABVUE 13-
18, 22-28, 33 TTABVUE 17-18, 19-20, 23-25) provide more probative support for the meaning
of “insta masa.”
Opposition No. 91216812

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service reveals that a feature of the product or service is that it provides an “instant”
result59:
Exhibit No. Brand Description
102 INSTAX Instant photo system
103 InstaFire Fire Starter packs, faster … way

104 INSTA-SNOW Instant snow polymer
105 InstaCredit Auto Finance
106 INSTA-BEER Instant Beer
107 INSTA-FIX Instant skin retoucher
108 INSTA-TOX Gives an instant temporary lift
109 InstaKool Instant Cold Pack
Rather than showing “Insta” used descriptively as Opposers contend, these third-
party uses show “Insta” used in a suggestive manner. It is the descriptive language
accompanying each “Brand” name that describes the goods as “instant.” Thus, this
evidence does not support the descriptiveness of “Insta.”
In further support of the meaning of the term “insta,” Opposers argue that the
USPTO recognizes that INSTA means INSTANT when it includes the term
INSTANT as a pseudo mark for marks containing the term INSTA. As set forth in
§104 of the Trademark Manual of Examining Procedure (April 2017):

59 Gonzalez Testimony Dep. vol. II pp. 112:6-115:16 (33 TTABVUE 33-36); Opposers’ Exhibit
Nos. 102-109 (33 TTABVUE 123-146).
Opposition No. 91216812

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For some marks, the USPTO has added a pseudo mark to
the search data to assist users in identifying relevant
marks related to their search term. The “pseudo mark”
field, which is not displayed, often contains spellings that
are very similar or phonetically equivalent to the word
mark. For example, if “4U” appears in the mark, the term
“for you” would be added to the pseudo-mark field. This
provides an additional search tool for locating marks that
contain an alternative or intentionally corrupted spelling
for a normal English word. Pseudo mark entries are not
displayed or printed in the search results and are not part
of the official application or registration.
Opposers submit numerous examples of applications where the USPTO generated a
pseudo mark replacing INSTANT for INSTA in the applied-for mark.60 However, the
USPTO states in the copies of the Notices of Pseudo Marks submitted by Opposers,
“[t]he practice of generating such pseudo marks is without legal significance.”
Moreover, a notice of pseudo mark was not issued in connection with Applicant’s
application. Thus, this evidence is not relevant.
Applicant submits copies of 54 third-party registrations for marks containing
“INSTA” “to demonstrate that the USPTO did not require a disclaimer of ‘INSTA’”
and that “the USPTO did not find the term ‘INSTA’ in [these] mark[s] to be merely
descriptive”61. Seven of the registrations are for marks used on food or food-related

60 Opposers’ Trial Brief pp. 15-16 (34 TTABVUE 20-21); Opposers’ Third Notice of Reliance,
Exhibit C (29 TTABVUE 2-422) (consisting of numerous examples of the Notices of Pseudo
Mark issued in connection with pending applications where the pseudo mark INSTANT was
generated by the USPTO for INSTA in the applied-for marks to assist in identifying relevant
marks related to the applied-for marks).
61 Applicant’s First Notice of Reliance pp. 1-8, 13-16 (20 TTABVUE 2-9, 14-17). Six of the
registrations have been cancelled and are not considered. See Applicant’s First Notice of
Reliance including Exhibits covering cancelled registrations: C, K, L, Z, EEEE, FFFF (20
TTABVUE 28-30, 61-63, 65-67, 135-138, 445-451). Thirty-nine of the third-party
registrations Applicant submits are for marks where “INSTA” either forms part of a single
wordmark, or is hyphenated with another word. See Trademark Manual of Examining
Opposition No. 91216812

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products, including products such as breath freshener and chemical food additives for
food manufacturing and for curing meat, fish and poultry62, and are evidence that the
term “INSTA” is not regarded as descriptive of Applicant’s food products. The
remaining 47 registrations, covering a wide range of products, provide additional
support for the non-descriptiveness of “INSTA.” Significantly, the term “INSTA” is

Procedure (“TMEP”) §§ 12.13.05, 1213.05(a) and 1213.05(a)(ii) (no disclaimer of an element
of a unitary mark is required; no disclaimer necessary when a compound word is formed by
hyphenating two words or terms, one of which would be unregistrable alone). Applicant’s
First Notice of Reliance including Exhibits covering hyphenated marks: A, D, F-H, J, M, Q,
S, W, EE-HH, KK-LL, OO, YYY-ZZZ, BBBB-DDDD, GGGG, IIII, NNNN-OOOO (20
TTABVUE 20-22,32-34, 40-50, 57-59, 69-72, 89-92, 99-102, 120-123, 160-178, 190-198, 210-
213, 421-427, 433-443, 453-455, 461-463, 484-491); and Exhibits covering single-word marks:
U, V, AA-DD, JJ, NN, PP, HHHH, KKKK-MMMM (20 TTABVUE 109-113, 115-118, 140-158,
185-188, 205-208, 215-218, 457-459, 470-482). The remaining fifteen third-party
registrations are for marks containing the stand-alone term “INSTA.” See Applicant’s First
Notice of Reliance including Exhibits B, E, I, N, O-P, R, T, X-Y, II, MM, AAAA, JJJJ, PPPP
(20 TTABVUE 24-26, 36-38,52-55, 74-87, 94-97, 104-107, 125-133, 180-183, 200-203, 429-431,
465-468, 493-495).
62 See Applicant’s First Notice of Reliance showing: Registration No. 1536586 for the mark
INSTA-BAKE for “Flour baking mix” (Applicant’s Exhibit A (20 TTABVUE 19-21));
Registration No. 1,754,585 for the mark INSTA GRAINS for “Processed grains in the form of
flour, flakes or whole grain” (Applicant’s Exhibit B (20 TTABVUE 23-25)); Registration No.
4,079,825 for the mark INSTA CREM for “Arrangements of cut fruit comprised of fresh fruits
cut into flower shapes and at least partially coated with chocolate; Beverages with a chocolate
base; Bread; Chocolate; Cocoa beverages with milk; Coffee and tea; Coffee beverages with
milk; Coffee-based beverage containing milk; Ice cream; Ice milk; Spices and ice” (Applicant’s
Exhibit O (20 TTABVUE 78-81)); Registration No. 4777897 for INSTA-CUP for “Coffee sold
in single serve pod containers for use in brewing machines” (Applicant’s Exhibit HH (20
TTABVUE 174-177)); Registration No. 4859688 for INSTA FRESH for “Breath freshener”
(Applicant’s Exhibit No. II (20 TTABVUE 179-182)); Registration No. 4933772 for
INSTA*POTATO for “Maltodextrin food additive for food manufacturing” (Applicant’s
Exhibit No. OO (20 TTABVUE 209-212)); Registration No. 2325544 for INSTA CURE for
“Chemical compound consisting of a mixture of sodium nitrites for curing meat, fish and
poultry” (Applicant’s Exhibit No. AAAA (20 TTABVUE 428-430)).
Opposition No. 91216812

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not disclaimed in any of the fifteen registrations showing “INSTA” as a separate word
(i.e., not part of single-word or hyphenated marks)63.
The line between a mark that is merely descriptive and may not be registered
absent secondary meaning, and one that is suggestive and may be registered, is that
a suggestive mark “requires imagination, thought and perception to reach a
conclusion as to the nature of the goods,” while a merely descriptive mark “forthwith
conveys an immediate idea of the ingredients, qualities or characteristics of the
goods.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 103 USPQ2d at 1755
(quoting In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978)
quoting Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 189 USPQ 759,
765 (2d Cir. 1976)); see also See also In re George Weston Ltd., 228 USPQ 57 (TTAB
1985) (SPEEDI BAKE for frozen dough found suggestive because it only vaguely
suggests a desirable characteristic of frozen dough, namely, that it quickly and easily
may be baked into bread).
Reviewing the evidence, Opposers have submitted one dictionary definition and a
Wiktionary definition64 together with the testimony of its witness, which indicate that

63 See Applicant’s First Notice of Reliance including Exhibits B, E, I, N, O-P, R, T, X-Y, II,
MM, AAAA, JJJJ, PPPP (20 TTABVUE 24-26, 36-38,52-55, 74-87, 94-97, 104-107, 125-133,
180-183, 200-203, 429-431, 465-468, 493-495).
64 Wiktionary https://en.wiktionary.org/wiki/Wiktionary:Main_Page 6/22/2017: “Welcome
to the English-language Wiktionary, a collaborative project to produce a free-content
multilingual dictionary. It aims to describe all words of all languages using definitions and
descriptions in English. ... Wiktionary is a wiki, which means that you can edit it, … In
particular, we have strict layout conventions and inclusion criteria. Learn how to start a
page, how to edit entries, experiment in the sandbox and visit our Community Portal to see
how you can participate in the development of Wiktionary.” However, as indicated by the
foregoing language on Wiktionary’s home page, it is an Internet source whose contents are
continuously subject to change via collaborative user-input. See In re Jimmy Moore LLC, 119
Opposition No. 91216812

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some people may understand “insta” to mean quickly or instantly produced65. In
response, Applicant submitted evidence from eight dictionaries, showing no listing of
a definition for the term “insta,” together with 54 registrations for marks containing
the undisclaimed term “Insta” for food products and a wide variety of other goods.
Third-party registrations can be submitted to demonstrate the meaning of a word
or term which comprises a mark, or a portion thereof, in the same way dictionary
definitions are used to illustrate how a term is perceived in the trade or industry.
Registration evidence may show that a term carries a highly suggestive connotation
in the relevant trade or industry and therefore may be considered somewhat weak.
Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium
Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (evidence of
third-party registrations is relevant to “show the sense in which a mark is used in
ordinary parlance;” that is, some segment that is common to both parties’ marks may
have “a normally understood and well-recognized descriptive or suggestive
meaning”); Juice Generation, Inc. v. GS Enterprises LLC, 794 F.3d 1334, 115 USPQ2d
1671, 1675 (Fed. Cir. 2015). Even if “there is no evidence of actual use” of “third-party
registrations,” such registrations “may be given some weight to show the meaning of
a mark in the same way that dictionaries are used.” Tektronix, Inc. v. Daktronics,

USPQ2d 1764, 1768 (TTAB 2016) (“Wikipedia is an Internet source whose contents are
continuously subject to change via collaborative user-input”).
65 The top definition provided by Urban Dictionary indicates a somewhat different meaning,
“[a] prefix usually preceding a verb emphasizing and often exaggerating the haste of
something, especially a preformed task,” and thus, is not merely descriptive of Applicant’s
goods.
Opposition No. 91216812

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Inc., 534 F.2d 915, 189 USPQ 693, 694-95 (CCPA 1976); Conde Nast Publications,
Inc. v. Miss Quality, Inc., 597 F.2d 1404, 184 USPQ 422, 424-25 (CCPA 1975) (the
thirty-eight third-party registrations provide at least some evidence that thirty-eight
applicants considered the suffixes of the parties’ marks to be suggestive of electrical
products); Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458,
1471 (TTAB 2014) (registrations have some value because they may be used in the
manner of a dictionary to show that a mark or a portion of a mark is descriptive or
suggestive of goods); In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987)
(“Said third party registrations are of use only if they tend to demonstrate that a
mark or a portion thereof is suggestive or descriptive of certain goods and hence is
entitled to a narrow scope of protection. Used in this proper, limited manner, ‘third
party registrations are similar to dictionaries showing how language is generally
used.’”); United Foods Inc. v. J.R. Simplot Co., 4 USPQ2d 1172, 1174 (TTAB 1987)
(the existence of numerous third party registrations in the food field for marks which
include “QUICK” as a portion thereof, (including a number of marks which include
“QUICK ‘N“), buttresses the conclusion that “QUICK” is a highly suggestive term,
and these registrations are entitled to some weight for that purpose).66

66 If a compound word mark consists of an unregistrable component and a registrable
component combined into a single word, no disclaimer of the unregistrable component of the
compound word will be required; similarly, no disclaimer is required when a compound word
is formed by hyphenating two words or terms one of which would be unregistrable alone. See
In re Driven Innovations, Inc., 115 USPQ2d 1261, 1267 (TTAB 2015); In re Box Solutions
Corp., 79 USPQ2d 1953, 1955 (TTAB 2006); TMEP § 1213.05(a) and 1213.05(a)(i).

Opposition No. 91216812

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Additionally, “INSTA” has been found to be highly suggestive, but not descriptive.
See Goodyear Tire & Rubber Co. v. Dayco Corp., 201 USPQ 485, 491 (TTAB 1978)
(there can be no doubt that the mark “INSTAFIND” is highly suggestive as applied
to opposer’s V-belt measuring gauges, in that it clearly conveys the idea of being able
to find belts quickly); Insta-Foam Products, Inc. v. Instapak Corp., 189 USPQ 793,
799 (TTAB 1976) (“INSTA” is highly suggestive of the goods (polyurethane foam
precursor chemicals and polyurethane foam spraying apparatus, and aerosol
dispenser containers containing materials for producing urethane foam)); see also
General Mills Inc. v. Health Valley Foods, 24 USPQ 1270, 1277 (TTAB 1992)
(“Although the registrations are not evidence of use, the registrations show the sense
in which the term ‘fiber’ is employed in the marketplace, similar to a dictionary
definition.”).
While each case must be decided on its own facts and the Board is not bound by
prior decisions involving different records, In re Nett Designs, Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Merrill Lynch, Pierce, Fenner & Smith
Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987), the number of
registrations containing the stand alone term “INSTA” with no disclaimer or
combined with merely descriptive or generic matter cannot be ignored.
Opposers bear the burden of proving by a preponderance of the evidence that
Applicant’s mark INSTA MASA & Design is merely descriptive. StonCor Grp., Inc. v.
Specialty Coatings, Inc., 759 F.3d 1327, 111 USPQ2d 1649, 1652 (Fed. Cir. 2014); see
also DuoProSS Meditech Corp., 103 USPQ2d at 1756. Although food products are
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commonly advertised and described as “instant,” meaning prepared and/or ready to
eat in a relatively short amount of time, the evidence does not show the word “INSTA”
used in that manner. Instead, the evidence shows “INSTA” being used in product
brand names to suggest that the food items, or the other goods, are readily available.
In view of the foregoing, “INSTA” as used with “MASA” in Applicant’s mark INSTA
MASA & Design renders the mark suggestive.
VI. Deceptive Misdescriptiveness
We next turn to Opposers’ claim of deceptive misdescriptiveness. In order for
Applicant’s mark to be found deceptively misdescriptive within the meaning of
§ 2(e)(1), and thus unregistrable, it must immediately convey an idea about the goods,
but that idea, though plausible, must be false. Anheuser-Busch Inc. v. Holt, 92
USPQ2d 1101, 1108 (TTAB 2009); In re Woodward & Lothrop Inc., 4 USPQ2d 1412,
1413 (TTAB 1987). The test for determining whether Applicant’s applied-for mark is
deceptively misdescriptive as applied to its goods involves a two-part determination
of: (1) whether the matter sought to be registered misdescribes the goods, and (2)
whether anyone is likely to believe the misrepresentation. See Anheuser-Busch Inc.
v. Holt, 92 USPQ2d at 1108; In re Quady Winery, Inc., 221 USPQ 1213, 1214 (TTAB
1984).
Marks, like Applicant’s mark, that contain registrable matter in addition to
deceptively misdescriptive components can be registered with a disclaimer of the
deceptively misdescriptive matter, when appropriate. See In re Aluminum Co. of
America, 197 USPQ 761, 762 (TTAB 1978) (§ 6 of the Trademark Act allows
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registration of deceptively misdescriptive matter as part of composite mark on
Principal Register if such matter is disclaimed); TMEP § 1209.04. As noted above, the
word “MASA,” whether it is considered to be descriptive or deceptively
misdescriptive, is disclaimed and Opposers have made no claim that the application
may not proceed to registration absent a disclaimer for the word INSTA. Indeed, as
addressed above, “INSTA” is not descriptive but suggestive of the goods.
Accordingly, Opposers have failed to meet the first prong of the test by showing
that Applicant’s mark as a whole is deceptively misdescriptive. Opposers have also
not shown that consumers are likely to believe any misrepresentation occasioned by
the wording INSTA, MASA or INSTA MASA contained in Applicant’s word and
design mark.
VII. Conclusion
Descriptiveness and deceptive misdescriptiveness are determined by looking at
Applicant’s applied-for mark in its entirety. The term “masa” is understood to
describe and identify dry corn flour used to make “masa” and the dough made by
mixing that flour with water. “Insta” is a suggestive term used in connection with a
wide variety of products, including food products. Thus, when “insta” and “masa” are
used together with a non-descriptive design, they form Applicant’s suggestive mark
INSTA MASA & Design. In view of Applicant’s disclaimer of “masa,” Opposers’ claim
that Applicant’s mark is deceptively misdescriptive fails.
Decision: The Opposition on the grounds of descriptiveness and deceptive
misdescriptiveness under § 2(e)(1) is dismissed.