Interbake, LLC

Trademark Trial and Appeal Board

Apr 14, 2008

No. 78808715 (T.T.A.B. Apr. 14, 2008)

Mailed:April 14, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re Interbake, LLC
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Serial No. 78808715
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Mary Dalton Baril of McGuireWoods for Interbake, LLC.

Mark Rademacher, Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney).
_______

Before Quinn, Cataldo and Bergsman, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Interbake, LLC filed an intent-to-use application to
register the mark LEMONADES for “cookies.”1
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the ground that applicant’s mark, as
applied to applicant’s goods, is merely descriptive
thereof.

1 Application Serial No. 78808715, filed February 7, 2006.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 78808715
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When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Applicant analyzes the issue in terms of degree of
imagination, competitors’ need, and competitors’ use.
Applicant concedes that while LEMONADES is suggestive of
the flavor of its cookies, the examining attorney
incorrectly categorized “lemonade” as a flavor; and that
the examining attorney’s reliance on competitive need to
use “lemonade” is misplaced given the long history of
nonuse of the term as a mark for cookies. The essence of
applicant’s suggestiveness argument is as follows:
[W]hen a consumer hears or sees the
mark “LEMONADES,” even in the context
of a box of cookies, the drink and not
the flavor springs to mind. The
consumer may then make the connection
that the cookies might taste like
lemonade. This multistep process,
first thinking of the drink and only
then thinking of the taste,
demonstrates that “LEMONADES” is
suggestive of a flavor for cookies, not
descriptive of it.

(Brief, p. 5). Applicant submitted three dictionary
definitions of “lemonade.”
The examining attorney maintains that LEMONADES merely
describes the flavor of applicant’s cookies, that is, the
cookies taste like lemonade. In support of the refusal,
the examining attorney introduced excerpts of applicant’s
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website, dictionary definitions, an encyclopedia entry, and
cookie recipes retrieved from the Internet.
At the outset we must consider two procedural matters.
The first relates to the nature of the statutory refusal,
and the second to evidence attached to applicant’s brief.
In the first Office action, the examining attorney
refused registration on the ground of mere descriptiveness.
The examining attorney went on to indicate “[m]oreover, the
proposed mark appears to be generic as applied to the goods
and, therefore, incapable of functioning as a source-
identifier for applicant’s goods.” The examining attorney
stated, “the attached evidence shows that the proposed mark
‘lemonades’ is the common generic name for cookies made
with lemonade.” Applicant, in its response, confined its
arguments to the issue of mere descriptiveness. In the
final refusal, virtually the entire Office action addressed
the mere descriptiveness refusal. However, the examining
attorney concluded the Office action as follows: “As
stated in the initial Office action, the mark also appears
to be generic as applied to the goods and, therefore,
incapable of functioning as a source-identifier for
applicant’s goods. Under these circumstances, neither an
amendment to proceed under Trademark Act Section 2(f), nor
an amendment to the Supplemental Register can be
Ser No. 78808715
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recommended.” [citations omitted]. Applicant, in its
appeal brief, addressed both of the issues of mere
descriptiveness and genericness. The examining attorney,
in his brief, addressed only the issue of mere
descriptiveness; no mention was made of genericness.
We view the only issue on appeal to be mere
descriptiveness. To the extent that the final refusal may
be read as encompassing a refusal grounded on genericness,
we regard the refusal as being subsequently withdrawn given
the examining attorney’s silence on this issue in his
brief.
The second preliminary matter concerns the late-filed
evidence. Applicant submitted several exhibits for the
first time with its brief. Applicant stated the following:
“Applicant is aware that the TTAB rules do not normally
allow a party to attach new evidence on appeal. However,
the Examining Attorney changed his argument in the second
Office action from stating that lemonade was an ingredient
of Applicant’s cookies to stating that lemonade was a
flavor of Applicant’s cookies, and so Applicant prays leave
to submit evidence refuting the Examining Attorney’s new
argument.” (Brief, pp. 4-5).
Trademark Rule 2.142(d) provides that the record in an
application should be complete prior to the filing of the
Ser No. 78808715
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appeal. Even assuming arguendo that applicant is
submitting evidence in response to a new argument in the
final refusal, applicant had an opportunity to file a
request for reconsideration, accompanied by the new
evidence, prior to the appeal. It is also possible to
request remand of an application to submit additional
evidence after appeal, if good cause can be shown. See
TBMP §1207.02 (2d ed. rev. 2004). What is not acceptable
is for an applicant simply to submit evidence with an
appeal brief, at a point where the examining attorney has
no opportunity to submit evidence in response. Applicant’s
submission of the evidence with its appeal brief is
untimely. Accordingly, the exhibits accompanying
applicant’s appeal brief have not been considered in
reaching our decision.2
At this point we should add that we have considered
the evidence attached to the examining attorney’s brief.
Dictionary and thesaurus entries are subject to judicial
notice. See In re Styleclick.com, 58 USPQ2d 1523, 1525
(TTAB 2001). Further, while the present listing is from an
on-line resource, the thesaurus is available in a printed
volume. See In re Total Quality Group Inc., 51 USPQ2d

2 We hasten to add, however, that even if the evidence were
considered, it does not compel a different result in this appeal.
Ser No. 78808715
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1474, 1476 (TTAB 1999). See also TBMP §1208.04 (2d ed.
rev. 2004).
We now turn to the Section 2(e)(1) issue of whether or
not LEMONADES is merely descriptive as applied to cookies.
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. In re Abcor Development, 588
F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). A term need
not immediately convey an idea of each and every specific
feature of the applicant’s goods or services in order to be
considered merely descriptive; rather, it is sufficient
that the term describes one significant attribute, function
or property of the goods or services. In re H.U.D.D.L.E.,
216 USPQ 358 (TTAB 1982); and In re MBAssociates, 180 USPQ
338 (TTAB 1973). 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
the 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; that a term
may have other meanings in different contexts is not
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controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979). Contrary to the gist of some of applicant’s
arguments, 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.”
In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
The “average” or “ordinary” consumer is the class or
classes of actual or prospective customers of applicant’s
goods or services. In re Omaha National Corporation, 819
F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987).
Applicant supplies cookies to the Girl Scouts of
America for its annual cookie sale campaign. Among the
cookies is a recent low-fat entry sold under the mark
LEMONADES. On its website applicant describes its cookies
as “savory slices of shortbread with a refreshingly tangy
lemon icing.” In another advertisement, applicant states
“[s]avory shortbread slices with a refreshingly tangy lemon
icing make any day feel like a sweet summer break.”
The term “tangy” is defined as “having a taste
characteristic of that produced by acids.” (Roget’s II:
The New Thesaurus (3d ed. 2003)). The record includes the
ingredient list for applicant’s cookies that appears on the
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box. The ingredients include natural and artificial
flavors and citric acid. The term “lemon” is defined as
“one of the citrus fruits.” (The Columbia Encyclopedia
(2004)).
Applicant submitted dictionary definitions of the term
“lemonade.” The definitions show the term defined as “a
drink made of lemon juice, water and sugar” (The American
Heritage Dictionary of the English Language (4th ed. 2000);
and “a beverage of sweetened lemon juice mixed with water”
(www.m-w.com).
The record further includes three recipes for
“Lemonade Cookies.” In each instance, frozen lemonade
concentrate is an ingredient in the recipe. In two
Internet excerpts, various blog entries and articles refer
to applicant’s cookies as having a “lemonade flavor.”
Also of record is a printout of the results of a
search of www.froogle.com (apparently a branch of the
www.google.com search engine that searches only for
products that are available for purchase). The search
shows that while numerous lemon-flavored cookies are
available in the marketplace, no manufacturer uses the term
“lemonade” in connection with its cookies.
The record establishes that lemonade has been used as
an ingredient in cookies, and that the term “lemonade” has
Ser No. 78808715
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been used in connection with such cookies. Although
applicant does not use lemonade as an ingredient in its
cookies, the cookies are, in fact, lemon-flavored, and
consumers have referred to “lemonade” as their flavor. In
view of this evidence, we find that consumers would equate
“lemonade” with the lemon flavor of applicant’s cookies.
The language of the predecessor of our primary
reviewing court in In re Andes Candies Inc., 478 F.2d 1264,
178 USPQ 156 (CCPA 1973) is instructive in the present
case. In that case, the court found CREME DE MENTHE to be
merely descriptive of candy:
A mark is “merely descriptive” under
Section 2(e)(1) if it merely describes
a characteristic (flavor) of the goods
(candy).

We think that the only possible
reaction of purchasers, upon being
presented with CREME DE MENTHE
chocolate wafers, is the expectation
that the wafers will have a mint taste
something like that of crème de menthe
liqueur. Surely, the purchasers would
not expect to find a cherry or rum or
butterscotch flavor in the candies.
Whether or not the public is aware of
the dictionary definition of “crème de
menthe” made of record by the examiner
[footnote omitted], the words clearly
connote a mint flavored liqueur. Of
course, the purchaser knows the product
is a candy not a liqueur, but, as
appellant admits, the average purchaser
would “expect the candy to have a
flavor similar” to that of crème de
menthe liqueur.
Ser No. 78808715
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Appellant argues that its mark only
suggests a flavor similar to that of
the liqueur. If that were so,
registration would be proper. We think
however that the mark demands that, and
only that, flavor. Appellant’s
citations of cases requiring that the
mark be the “common descriptive name”
of the goods to merit the proscription
of Sec. 2(e)(1) are inapt where, as
here, the mark is the common
descriptive name of a liqueur whose
flavor the public expects when it sees
the mark. That other candy makers may
not have employed “crème de menthe” so
widely as to make it a common flavor
designation for candy is not material
where appellant itself has so employed
the mark. Whether or not the mark is
misdecriptive in leading the public to
expect the actual liqueur in the candy
is not before us. It is sufficient to
preclude registration that the mark
merely describes the flavor
characteristic. [emphasis in original]

Id. at 157.
Similarly, in the present case, consumers, upon
encountering LEMONADES for cookies, expect that the cookies
will have a lemon taste something like that of the beverage
lemonade. Again, the issue of mere descriptiveness is
analyzed in relation to the goods. Thus, the consumer
knows that the product is a cookie and not a beverage, but
the consumer would expect that the cookie has a flavor
similar to that of the beverage lemonade.
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Accordingly, we conclude that LEMONADE merely
describes the flavor of applicant’s cookies. The term
immediately describes, without conjecture or speculation, a
significant characteristic or feature of the goods, namely,
the lemonade-like flavor of the cookies.
As pointed out by the examining attorney, that
applicant may be the first and only user of a merely
descriptive term does not justify registration if the only
significance conveyed by the term is merely descriptive.
See In re National Shooting Sports Foundation, Inc., 219
USPQ 1018 (TTAB 1983).
Decision: The refusal to register is affirmed.