Hy-Vee, Inc.

Trademark Trial and Appeal Board

Feb 14, 2018

No. 86945526 (T.T.A.B. Feb. 14, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: February 14, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Hy-Vee, Inc.
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Serial No. 86945526
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Timothy J. Zarley of Zarley Law Firm P.L.C.,
for Hy-Vee, Inc.
Lauren E. Burke, Trademark Examining Attorney, Law Office 106,
Mary I. Sparrow, Managing Attorney.
_____

Before Wolfson, Gorowitz, and Masiello,
Administrative Trademark Judges.

Opinion by Masiello, Administrative Trademark Judge:
Hy-Vee, Inc. (“Applicant”) seeks registration on the Supplemental Register of the
proposed mark NORI SUSHI in standard characters for “Asian food products,
namely, sushi,” in International Class 30.1

1 Application Serial No. 86945526 was filed on March 18, 2016 under Trademark Act
Section 1(b), 15 U.S.C. § 1051(b), based on Applicant’s asserted bona fide intention to use the
mark in commerce. Applicant originally sought registration on the Principal Register.
Applicant filed an allegation of use on July 7, 2016, stating April 1, 2016 as the date of first
use and first use in commerce; and amended the application to request registration on the
Supplemental Register.
Serial No. 86945526
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The Examining Attorney has refused registration under Sections 1, 2 and 45 of
the Trademark Act, 15 U.S.C. §§ 1051, 1052, and 1127, on the ground that Applicant’s
proposed mark is generic and thus incapable of distinguishing the identified goods.
The Examining Attorney asserted, as an “alternative” ground for refusal of
registration, that the proposed mark is merely descriptive of Applicant’s goods under
Section 2(e)(1), 15 U.S.C. § 1052(e)(1). When the Examining Attorney made the
refusals final, Applicant appealed to this Board. Applicant and the Examining
Attorney have filed briefs.
I. Procedural issue.
As an initial matter, we note that the Examining Attorney’s “alternative” ground
for refusal, under Section 2(e)(1), is procedurally unnecessary. Applicant seeks
registration on the Supplemental Register, and the contention that Applicant’s mark
is merely descriptive of the identified goods is not a ground for refusing registration
on the Supplemental Register. See Trademark Act Section 23(a) and (c), 15 U.S.C.
§ 1091(a) and (c).2
Throughout the examination process, Applicant argued that its mark was not
merely descriptive but, instead, suggestive. In the face of such arguments, the
Examining Attorney might have felt it necessary to maintain a refusal on grounds of
mere descriptiveness. Nonetheless, it is clear that Applicant seeks registration on the
Supplemental Register only, and that there is no alternative request for registration

2 Under Section 23, a mark may be registered on the Supplemental Register provided that it
is “capable of distinguishing applicant’s goods or services” and not within the enumerated
prohibitions set forth in Section 23. Mere descriptiveness is not an enumerated prohibition.
Serial No. 86945526
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on the Principal Register. In its last submission before bringing its appeal, Applicant
stated, “It is further submitted that, while applicant is merely seeking registration on
the Supplemental Register at this point, the mark is not merely descriptive, but is
suggestive of applicant’s goods and services.”3 Where an applicant seeks registration
on the Supplemental Register, the question of whether the mark is inherently
distinctive or merely descriptive is a nonissue. The only question is whether the mark
is “capable of distinguishing applicant’s goods” (and not within one of the enumerated
statutory prohibitions). Cf. Yamaha Int’l Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d
1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988) (in proceedings under Section 2(f),
inherent distinctiveness is a nonissue under the statute). Accordingly, we give no
further consideration to the Examining Attorney’s alternative refusal under Section
2(e)(1).
II. Applicable Law.
In order to qualify for registration on the Supplemental Register, a proposed mark
“must be capable of distinguishing the applicant’s goods or services.” 15 U.S.C.
§ 1091(c). Generic terms do not so qualify. “[G]eneric terms by definition are
incapable of indicating a unique source.” In re La. Fish Fry Prods., Ltd., 797 F.3d
1332, 116 USPQ2d 1262, 1267 (Fed. Cir. 2015) (citing In re Merrill Lynch, Pierce,
Fenner, & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987) (“Generic
terms, by definition incapable of indicating source, are the antithesis of trademarks,
and can never attain trademark status.”)). A term is generic if it refers to the class or

3 January 27, 2017 Response, TSDR at 2.
Serial No. 86945526
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category of goods or services on or in connection with which it is used. In re Dial-A-
Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001) (citing H.
Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528
(Fed. Cir. 1986) (“Marvin Ginn”)). The test for determining whether a mark is generic
is its primary significance to the relevant public. In re Am. Fertility Soc’y, 188 F.3d
1341, 51 USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc. v. RDB Inc., 940 F.2d 638,
19 USPQ2d 1551 (Fed. Cir. 1991); Marvin Ginn, 228 USPQ at 530. Making this
determination “involves a two-step inquiry: First, what is the genus of goods or
services at issue? Second, is the term sought to be registered … understood by the
relevant public primarily to refer to that genus of goods or services?” Marvin Ginn,
228 USPQ at 530. “A registration is properly refused if the word is the generic name
of any of the goods or services for which registration is sought.” In re Cordua Rests.,
Inc., 823 F.3d 594, 118 USPQ2d 1632, 1638 (Fed. Cir. 2016), quoting 2 MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION § 12:57. The Examining Attorney has the
burden of establishing by clear evidence that a proposed mark is generic. In re Merrill
Lynch, 4 USPQ2d at 1141; In re Am. Fertility Soc’y, 51 USPQ2d at 1835. We consider
the proposed mark as a whole. See Princeton Vanguard, LLC v. Frito-Lay N. Am.,
Inc., 786 F.3d 960, 114 USPQ2d 1827, 1831 (Fed. Cir. 2015), citing In re
Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005).
A. The genus of Applicant’s goods.
The identification of goods in the application is clear and is a suitable expression
of the genus of goods at issue. See Magic Wand, 19 USPQ2d at 1552 (“a proper
Serial No. 86945526
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genericness inquiry focuses on the description of [goods] set forth in the [application
or] certificate of registration”) (citing Octocom Sys., Inc. v. Houston Computers Servs.
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). Thus, the genus of goods
in this case is “sushi,” which is a type of “Asian food product.”
B. Public understanding of the term NORI SUSHI.
We next consider whether NORI SUSHI would be understood by the relevant
public to refer to sushi. The Examining Attorney contends that the relevant public
comprises “ordinary consumers who purchase [sushi].”4 Applicant has not argued
against this characterization.
The Examining Attorney has submitted the following dictionary definition of
“nori”: “a dried laver seaweed pressed into thin sheets and used especially as a
seasoning or as a wrapper for sushi.”5 Applicant has submitted additional information
regarding “nori”:
What is nori?
Nori (a.k.a. laver) is a paper like, edible, toasted seaweed
used in most kinds of sushi. The nori is actually the part
that holds the sushi together.
Nori is usually supplied in packs of 10s or 50s. …

4 Examining Attorney’s brief, 6 TTABVUE 6.
5 Definition from , Office Action of June 29, 2016 at 4. We take
judicial notice of the definition of “laver” as “any of several common red algae (genus
Porphyra) with fronds used especially for stewing or pickling.” At https://www.merriam-
webster.com, accessed January 18, 2018. The Board may take judicial notice of dictionary
definitions from references that are the electronic equivalent of a print reference work. Univ.
of Notre Dame du Lac v. J. C. Gourmet Food Imps. Co., Inc., 213 USPQ 594 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Serial No. 86945526
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How to use nori?
Nori is used in most kinds of sushi. It provides the roll with
a unique seaweed flavor, holds many nutritious benefits
and most importantly it plays a functional part by keeping
the roll together.
A fresh nori should come dry, very dry. Once it interacts
with the moist rice, it becomes sticky, hence when
wrapping the rice it acts as a firm yet sticky “skin” for the
sushi roll. …
From the web article “Make my Sushi: Sushi making explained,” at
makemysushi.com.6
The Examining Attorney, noting the generic nature of the term NORI, argues that
“[t]he generic name of an ingredient of the goods is incapable of identifying and
distinguishing their source and is therefore unregistrable …”7 This argument is not
dispositive, because it fails to take into consideration Applicant’s mark as a whole.
Although it is clear from the record that each of the terms SUSHI and NORI are
generic terms in the relevant field for sushi and for a dried laver seaweed, in
determining whether Applicant’s mark is generic we may not “assume[ ] the
genericness of a phrase as a whole based solely on proof of the genericness of its
individual terms.” Princeton Vanguard, 114 USPQ2d at 1831. Rather, our
determination must be based on “evidence of … the understanding by the general
public that the mark refers primarily to [the] genus of goods …” Id. (internal
quotation marks omitted). To demonstrate that NORI SUSHI is the generic name of

6 January 27, 2016 Response, TSDR at 7-8.
7 Examining Attorney’s brief, 6 TTABVUE 7.
Serial No. 86945526
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a type of sushi, the Examining Attorney has submitted evidence from the internet,
consisting of three recipes, one menu item, and the title of a stock photograph,
showing the term “nori sushi” used as follows:8
Nori Sushi Rolls
…
Putting Your Nori Rolls Together:
Place your Nori Sheets in front of you, on the worktop with
the cutting line vertically placed, not horizontal.
Covering about a 3rd of the sheet, spread a horizontal line
of the sunflower seed mayo in the middle of the Nori Sheet;
about 3mm thick.
Then place a flat layer of the cauliflower rice (about 4mm
thick) on top of the sunflower seed mayo.
Website entitled “Jay Halford live long – eat raw” at jayhalford.com.9
Better Than Burritos! Nori Sushi Rolls
…
These easy nori sushi burritos will transform all the
random ingredients hanging around your fridge into a meal
everyone’s excited about.
…
Nori, a sea vegetable, provides a healthy boost of iron,
protein, vitamin B12, and iodine …
Website entitled “MBG mindbodygreen” at mindbodygreen.com, August 23, 2014.10

8 We have not considered the evidence from deliveroo.co.uk (July 27, 2016 Office Action,
TSDR at 5-6), because it appears to be of foreign origin.
9 June 29, 2016 Office Action, TSDR at 5.
10 Id. at 6.
Serial No. 86945526
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Raw Rainbow Nori Sushi Garden Rolls (GF and
Vegetarian!)
…
Sometimes a meal just leaves you feeling better, happier,
and more energized after you eat it. Nothing beats that
feeling! That was exactly the case with these super healthy
vegetarian nori sushi rolls. I can’t even imagine the
nutrients in these raw rainbow rolls!
Website entitled “Tasting Everything” at tastingeverything.com.11
LA MENU
…
Cali Roll
nori sushi with fresh coconut. dulse. pine nuts. cucumber.
bell pepper. served with pickled ginger and tamari sauce
Raw
Restaurant menu at aulac.com.12
Sticky rice and mango rolls, nori sushi, mango sushi and
tofu skin sushi.
Title of stock photograph at stockfood.com.13
The Examining Attorney argues that “the Internet evidence clearly shows that
the general public perception of the term ‘NORI SUSHI’ is as a generic type of sushi,
as it has been used as a menu item and a recipe heading.”14 We do not agree that
these five examples of usage constitute sufficient evidence to clearly establish that

11 July 27, 2016 Office Action, TSDR at 7.
12 Id. at 4.
13 Id. at 8.
14 Examining Attorney’s brief, 6 TTABVUE 8.
Serial No. 86945526
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NORI SUSHI is generic. Considering that sushi rolls are common consumer items
that are abundantly available in the marketplace, five examples are scant evidence
to prove that they are called “nori sushi.” These examples are ambiguous, and could
be interpreted as use of NORI SUSHI as a descriptive phrase for sushi that contains
nori as one of its ingredients, rather than as the name of a class of sushi. Some of the
examples refer to products that may not be conventional sushi: one product is a hybrid
“sushi burrito”; another is a hybrid sushi roll/garden roll. In other words, these
examples appear to show use of NORI SUSHI to describe something other than sushi.
Such evidence casts doubt on whether the term is the common name of a class of
sushi. In some examples, the writers use other terms as alternatives for “nori sushi,”
such as “nori rolls,” “garden rolls,” and “raw rainbow rolls.” The record also shows
that sushi wrapped in nori is sometimes referred to as “Maki-Sushi.”15 Such evidence
suggests that the writers believe that words other than NORI SUSHI are necessary
to convey the intended meaning, rendering the evidence equivocal. In the title of the
photograph “Sticky rice and mango rolls, nori sushi, mango sushi and tofu skin
sushi,” it is not clear whether the items are identified by generic terms or by
descriptive wording. Ultimately, it remains unclear from the context in which “nori
sushi” is used in these examples whether the writers understand the term to be a
class of sushi or merely descriptive of sushi that is made with a seaweed wrapper.
The Examining Attorney has the burden of establishing by clear evidence that a
proposed mark is generic. In re Merrill Lynch, 4 USPQ2d at 1141. On this record, the

15 June 29, 2016 Office Action, TSDR at 7.
Serial No. 86945526
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Examining Attorney has not demonstrated by clear evidence that NORI SUSHI is
generic as applied to Applicant’s goods, and thus has failed to demonstrate that the
mark is ineligible for registration on the Supplemental Register. We note, however,
that on the present record it is manifest that SUSHI is generic as applied to the goods,
which are identified as “sushi.” Accordingly, registration of the mark on the
Supplemental Register is not appropriate without a disclaimer of the exclusive right
to use SUSHI apart from the mark as a whole. The Board, therefore, requires that
Applicant enter such a disclaimer as a precondition to registration of the mark on the
Supplemental Register. See Trademark Act Section 6(a), 15 U.S.C. § 1056(a);
Trademark Rule 2.142(g), 37 C.F.R. § 2.142(g) (“An application which has been
considered and decided on appeal will not be reopened except for the entry of a
disclaimer under section 6 of the Act of 1946 or upon order of the Director …”); TBMP
§ 1218 (June 2017). Therefore, the Board will provisionally affirm the refusal of
registration, pending the submission and entry of the required disclaimer. Applicant
is allowed THIRTY (30) DAYS from the mailing date of this decision to enter a
disclaimer in the following form:
No claim is made to the exclusive right to use SUSHI apart
from the mark as shown.
Once the disclaimer is entered, this decision will be set aside and the application will
proceed to registration on the Supplemental Register.
Decision: The refusal to register Applicant’s mark is AFFIRMED, subject to the
entry of a disclaimer of the exclusive right to use SUSHI apart from the mark as
shown. Upon entry of the required disclaimer, this decision will be set aside.