Happy House Sales Corp.

Trademark Trial and Appeal Board

Nov 2, 2015

No. 86411376 (T.T.A.B. Nov. 2, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: November 2, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Happy House Sales Corp.
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Serial No. 86411376
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Matthew H. Swyers and Elisabeth Sawyer of The Trademark Company PLLC
for Happy House Sales Corp.
Zachery Bello, Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.
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Before Bucher, Mermelstein and Lykos,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
On October 1, 2014, Happy House Sales Corp. (“Applicant”) filed an application
to register the mark WAFFLETTES in standard character format on the Principal
Register for “waffles” in International Class 30.1
The Trademark Examining Attorney has refused registration of the mark under
Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that the
mark is merely descriptive of Applicant’s identified goods.

1 Application Serial No. 86411376, filed pursuant to Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b).
Serial No. 86411376
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Applicant has appealed and both Applicant and the Examining Attorney have
filed briefs. For the reasons set forth below, we affirm the refusal to register.
Whether the Mark is Merely Descriptive?
Section 2(e)(1) of the Lanham Act precludes registration of a mark that, when
used in connection with the goods or services of the applicant, is merely descriptive
of them. 15 U.S.C. § 1052(e)(1) (2006). Citing to a 1985 Trademark Trial and Appeal
Board (“Board”) decision,2 Applicant in its appeal brief maintains that the Board
has adopted a three-part test to determine whether a mark is descriptive or
suggestive:
(1) The degree of imagination necessary to understand the product;
(2) A competitor’s need to use the same terms; and
(3) Competitors’ current use of same or similar terms.
Applicant’s Appeal Brief, p. 11; 4 TTABVUE 12. While these various tests for
determining the difference between descriptive and suggestive terms have been
used by an array of Federal courts,3 the correct test as set forth by our primary
reviewing court, the Court of Appeals of the Federal Circuit, is articulated as
follows: “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)). The Board has repeatedly stated that “the

2 No Nonsense Fashions, Inc. v. Consolidated Food Corp., 226 USPQ 502 (TTAB 1985).
3 See 2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION §§ 11:66-11.71 (4th ed. 2015).
Serial No. 86411376
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[only] test for descriptiveness is whether a term ‘immediately conveys knowledge of
a quality, feature, function, or characteristic of the goods or services with which it is
used,’” and this is the test we have applied here. Anheuser-Busch Inc. v. Holt, 92
USPQ2d 1101, 1104 n.8 (TTAB 2009) (citing In re Carlson, 91 USPQ2d 1198, 1203
(TTAB 2009)).
We further add that the determination of whether a mark is merely descriptive
must be made in relation to the goods or services for which registration is sought,
not in the abstract. In re Chamber of Commerce, 102 USPQ2d at 1219; In re Bayer,
82 USPQ2d at 1831. This requires consideration of the context in which the mark is
used or intended to be used in connection with those goods or services, and the
possible significance that the mark would have to the purchasers of the goods or
services in the marketplace. In re Chamber of Commerce, 102 USPQ2d at 1219; In
re Bayer, 82 USPQ2d at 1831; In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d
1859 (Fed. Cir. 1987). Evidence that a term is merely descriptive to the relevant
purchasing public “may be obtained from any competent source, such as
dictionaries, newspapers, or surveys.” In re Bayer, 82 USPQ2d at 1831 (quoting In
re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818, 819 (Fed. Cir. 1986)).
In reviewing the evidence of record, we highlight first the entries for “waffle” and
the suffix “-ette” which are as follows:
Waffle
A waffle is a leavened batter or dough cooked between two
plates, patterned to give characteristic size, shape and surface
impression. There are many variations based on the type of
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waffle iron and recipe used. Waffles are eaten throughout the
world, particularly in Belgium, France, … the United States …”
The word “waffle” first appears in the English language in
1725….
Source: Entry entitled “Waffle” from Wikipedia
(www.wikipedia.com).4
Definition of –ette in English:
Suffix
Forming nouns:
(1) Denoting relatively small size: kitchenette.
Source: Oxford Dictionary (American English) (U.S)
(www.oxforddictionaries.com).5
When the two terms are combined, the result is a descriptive mark which
immediately conveys to the consumer that Applicant’s waffles are relatively small
or miniature in size. See In re Marine Protein Corp., 183 USPQ 62, 63 (TTAB 1964)
(“The most popular and widespread use of ‘ETTE’ as a suffix is to indicate
something of a diminutive size or form, and would in the instant context be the
meaning ascribed to ‘SALMONETTE’ by the purchasing public.”). This is so despite
the fact that “wafflette” does not appear in any dictionary. See id. at 63 (Board
found the mark SALMONETTE merely descriptive or deceptively misdescriptive of
fish, even though “is not a dictionary word and, as far as is presently known, it has
never been used by anyone else for any product of any kind …”). Indeed, since the
identification is unrestricted and broadly worded as “waffles,” it necessarily
encompasses all types of waffles, including those smaller in size. See In re Amer.

4 Applicant’s Response dated February 16, 2015.
5 Id.
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Soc’y of Clinical Pathologists, Inc., 442 F.2d 1404, 169 USPQ 800, 801 (CCPA 1971)
(holding that REGISTRY OF MEDICAL PATHOLOGISTS was descriptive of
certain claimed services that were implicitly subsumed within service of providing a
registry of medical pathologists and of additional claimed services that were
“supporting, ancillary or auxiliary to the primary function” of applicant’s registry
services). See also In re Chamber of Commerce, 102 USPQ2d at 1220 (NATIONAL
CHAMBER held descriptive because “substantial evidence supports the TTAB’s
determination that the designated business and regulatory data analysis services
are within the scope of traditional chambers of commerce activities” of “promoting
the interests of businessmen and businesswomen”). We hasten to add that the fact
that Applicant has applied to register the mark in its plural form does not lessen its
descriptiveness. See e.g., In re Oscar Mayer & Co. Inc., 170 USPQ 296, 297 (TTAB
1971) (“WIENER SINGLES” for wieners held merely descriptive where “singles” is
the plural form of the noun “single”).
Our determination is bolstered by the Internet evidence made of record by the
Examining Attorney summarized below:6
Menu and Catering Items:
● An entry from “urbanspoon” in Houston, Texas for the restaurant
Jupiter Pizza & Waffle Co. showing “Wafflettes” as a menu item.7

6 The entry posted on Yelp for a restaurant called the “Wafflette Café” is of minimal value
because it is the designation for the name of a restaurant. In addition, we have discounted
the evidence from Pleasantville Creamery offering for sale “Ice Cream Wafflettes” in
Toronto, Canada and the photo of waffles entitled “Wafflettes Delight” on the Australian
website www.waffleland.com.au as foreign sources.
7 http://www.allmenus.com/tx/sugar-land/404191-jupiter-pizza--waffle-co/menu/. Office
Action dated January 24, 2015.
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● A restaurant called Maison des Crepes located in Brooklyn listed on
the food delivery website www.seamless.com showing “Savory
Wafflettes” and “Sweet Wafflettes” as menu items consisting of “mini
waffle sandwiches.”8
● Debbie’s Deluxe Cookies and Cakes, a custom baker, offering for sale
“Fried Wafflettes.”9
Recipe Blog Entries:
● A website entitled eathealthylowercholesterol.com showing a blog
entry consisting of a photograph and recipe for making “sprouted grain
wafflettes” posted by an individual user who is tracking her daily
weight loss.10
● An anonymous blog entry posted on Tumblr in which the individual
states that he/she is using “my waffle maker” to make a “spinach egg
wafflette.”11
● An anonymous blog entry posted on Iheartfood.blogonia.com for a
recipe for “Cinnamon Roll Wafflettes.”12
Third-party Websites:
● An anonymous query on the website democraticunderground.com
“What are ‘wafflettes’? Why am I seeing ads for these things
everywhere?”13

8 https://www.seamless.com/menu/maison-des-crpes-287-bedford-ave-brooklyn/299285.
Office Action dated January 24, 2015.
9 http://debbiesdeluxecookiesandcakes.com/deluxe-cookies/51-fried-wafflettes. Office Action
dated March 9, 2015.
10 http://www.eathealthylowercholesterol.com/sprouted-Grain-wafflettes.html. Office Action
dated January 24, 2015.
11 https://www.tumblr.com/search/wafflettes. Office Action dated January 24, 2015.
12 http://lheartfood.blogonia.com/2012/03/31/cinnamon-roll-wafflettes/. Office Action dated
March 9, 2015.
13 http://www.democraticunderground.com/discuss/duboard.php?az=view. Office Action
dated March 9, 2015.
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While the term “wafflette” may not be in our everyday lexicon, the aforementioned
evidence suggests its emergence as a descriptive term for a waffle diminutive in
size.
Applicant contends that by combining the English word “waffle” with the foreign
sounding suffix “-ette” with no specific English translation, it has coined an
incongruous mark. Applicant’s argument is belied by the evidence noted above
showing that the suffix “-ette” when combined with a noun has a well-understood
meaning in the English language.14 In addition we reiterate the often cited principle
that when two descriptive terms are combined, if each component retains its
descriptive significance in relation to the goods or services, the combination results
in a composite mark when considered as a whole that is itself descriptive. See e.g.,
In re Finisar Corp., 78 USPQ2d 1618 (TTAB 2006), aff’d per curiam, 223 Fed. App'x
984 (Fed. Cir. 2007) (SMARTSFP held merely descriptive of optical transceivers); In
re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely
descriptive of computer software for use in development and deployment of
application programs on global computer network); In re Entenmann’s Inc., 15
USPQ2d 1750 (TTAB 1990), aff’d per curiam, 928 F.2d 411 (Fed. Cir. 1991) (holding
OATNUT merely descriptive of bread containing oats and hazelnuts). Such is the
case here where the suffix “-ette” is juxtaposed with the noun “waffle” to result in a
merely descriptive term in plural form.

14 For this same reason, Applicant’s argument that the doctrine of foreign equivalents
should not be applied is irrelevant. As made clear above, we have not based our
determination that Applicant’s mark is merely descriptive on the doctrine of foreign
equivalents.
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This evidence of record supports a determination that Applicant’s mark,
WAFFLETTES, when considered in relation to Applicant’s goods, immediately
conveys that Applicant’s goods consist of waffles in miniature form.
Decision: The descriptiveness refusal under Section 2(e)(1) of the Trademark
Act to register the mark WAFFLETTES on the Principal Register for “waffles” is
affirmed.