Gustavo Dias Breda’s

Trademark Trial and Appeal Board

Aug 3, 2017

No. 86765437 (T.T.A.B. Aug. 3, 2017)

Mailed:
August 3, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Gustavo Dias Breda’s
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Serial No. 86765437
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Renata Prates, in pro per,
for Gustavo Dias Breda’s.

Angela M. Micheli, Trademark Examining Attorney, Law Office 101
Ronald R. Sussman, Managing Attorney.
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Before Kuhlke, Ritchie, and Heasley, Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Gustavo Dias Breda’s (“Applicant”) filed an application to register on the
Principal Register the mark TROPICAL ACAI, in standard character format,
for “frozen fruits; fruit pulp,” in International Class 29.1 The Trademark

1 Serial No. 86765437, filed on September 23, 2015, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s assertion of a bona fide
intent to use the mark in commerce, and disclaiming the exclusive right to “ACAI”
apart from the mark as shown.
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser. No. 86765437
2
Examining Attorney refused registration on the ground that the applied-for
mark is merely descriptive of the goods pursuant to Section 2(e)(1) of the
Trademark Act, 15 U.S.C. § 1052(e)(1). When the refusal was made final,
Applicant filed this appeal, which is fully briefed. For the reasons set forth
herein, the refusal is affirmed.
Mere Descriptiveness
A term is deemed to be merely descriptive of goods or services, within the
meaning of Section 2(e)(1), if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function, purpose or use of the
goods or services. See In re Chamber of Commerce of the U.S., 675 F.3d 1297,
102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citing In re Gyulay, 820 F.2d 1216,
3 USPQ2d 1009 (Fed. Cir. 1987)); see also In re TriVita, Inc., 783 F.3d 872,
114 USPQ2d 1574, 1575 (Fed. Cir. 2015) and In re Abcor Dev. Corp., 588 F.2d
811, 200 USPQ 215, 217-18 (CCPA 1978). Whether a term is merely
descriptive is determined not in the abstract, but in relation to the goods or
services for which registration is sought, the context in which it is being used
on or in connection with those goods or services, and the possible significance
that the term would have to the average purchaser of the goods or services
because of the manner of its use. In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979). That a term may have other meanings in different contexts is
not controlling. Id. Moreover, it is settled that “[t]he question is not whether
someone presented with only the mark could guess what the goods or services
Ser. No. 86765437
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are. Rather, the question is whether someone who knows what the goods or
services are will understand the mark to convey information about them.” In
re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002). See also In re
Patent & Trademark Services Inc., 49 USPQ2d 1537 (TTAB 1998); In re
Home Builders Ass’n of Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re
American Greetings Corp., 226 USPQ 365 (TTAB 1985). On the other hand, if
a mark requires imagination, thought and perception to ascertain the nature
of the goods or services, then the mark is suggestive. DuoProSS Meditech
Corp. v. Inviro Med. Devices, Ltd, 695 F.3d 1247, 103 USPQ2d 1753, 1755
(Fed. Cir. 2012) (citing In re Abcor Dev. Corp., 200 USPQ at 218).
A composite of descriptive terms is registrable only if it has a separate,
non-descriptive meaning. In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ
382, 385 (CCPA 1968) (holding SUGAR & SPICE not merely descriptive of
bakery products). The Examining Attorney argues that the applied-for mark
TROPICAL ACAI is descriptive because it describes a feature or
characteristic of Applicant’s goods, namely that “the frozen fruit and the pulp
are made from the Acai fruit that comes from the Tropics and as such it is
tropical.”2 To this end, the Examining Attorney submitted the following
relevant dictionary and encyclopedic definitions:
Tropical: 1. Of, occurring in, or characteristic of the tropics. 2.
Hot and humid; torrid. n. A tropical plant.3

2 January 19, 2016 Office Action.
3 The American Heritage Dictionary. Attached to January 19, 2016 Office
Action, at 2.
Ser. No. 86765437
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Acai: tree, Euterpe oleracea, of the family Arcaceae (palm family)
and its fruit, grown chiefly in Para state in the Amazon region of
Brazil.4

The Examining Attorney submitted a number of third-party web
pages that refer to acai as a tropical fruit which is used to make juice.
The following images, from Fruitsinfo.com, and Fruitero.com, as
attached to the July 6, 2016 Final Office Action, at 42 and 56,
respectively, are illustrative:

4 The Columbia Encyclopedia. Attached to January 19, 2016 Office Action, at
7.
Ser. No. 86765437
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The Examining Attorney also submitted copies of third-party registrations
including the term “TROPICAL” where the term was disclaimed, or where
the registration claimed acquired distinctiveness under Section 2(f), or was
registered on the Supplemental Register. See The Inst. Nat’l des Appellations
D’Origne v. Vintners Int’l Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed.
Cir. 1992), and cases cited therein. While numerous, we find most relevant
the registrations that identify frozen fruits, TROPICAL MIX (Registration
No. 4404873) for “mix frozen chopped mango, pineapple chunks, papaya
chunks and seedless grapes” registered on the Supplemental Register, and
ECO TROPICALS, and design (Registration No. 4244936) for, inter alia,
frozen fruit and extracts thereof, and disclaiming “Tropicals.” Because of the
nexus of “tropical” and “acai” and the resulting disclaimer, we also find
relevant the third-party registration TROPICAL TRIBE (Registration No.
4873498) for “processed acai berries” and “juice bar services,” which disclaims
Ser. No. 86765437
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“Tropical.” Although the file histories of these third-party registrations are
not of record in this proceeding, we note that TROPICAL MIX, at least, is
registered on the Supplemental Register. Taken together with the third-party
web evidence, this indicates consumer perceptions of the term “tropical” as
possibly being capable of indicating source, rather than as indicating the
source, of Applicant’s identified frozen fruits.
Applicant argues a test based on the earlier Board case No Nonsense
Fashions, Inc. v. Consolidated Food Corp., 226 USPQ 502 (TTAB 1985). 5
TTAB 12. We base our analysis, however, on the current test of mere
descriptiveness as set forth by the Court of Appeals for the Federal Circuit in
more recent case law. See Chamber of Commerce of the U.S., 102 USPQ2d at
1219; DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd, 103 USPQ2d at
1755; see also In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1514
(TTAB 2016). In this regard, we find that the term “TROPICAL ACAI,” when
viewed as a whole, conveys information about the goods for which Applicant
seeks registration, namely that Applicant offers frozen fruits and fruit pulp
that may include, or be likened to, the tropical acai fruit.
The term as a whole is thus merely descriptive of a feature or
characteristic of the identified goods, and we affirm the refusal to register.
Decision: The refusal to register under Section 2(e)(1) is affirmed.