J&B Inc.

Trademark Trial and Appeal Board

Feb 13, 2008

No. 78555821 (T.T.A.B. Feb. 13, 2008)

Mailed: February 13, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

In re J&B Inc.
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Application No. 78555821
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Robert C. Griffin, Crowley, Haughey, Hanson, Toole &
Dietrich, PLLP, for applicant.

Kyle C. Peete, Trademark Examining Attorney, Angela Wilson,
Managing Attorney, Law Office 112.
_______

Before Drost, Cataldo, and Mermelstein, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

J&B, Inc. has filed an application to register on the
Principal Register the mark CITY BREW (in standard
characters) for the following goods and services:
Goods and Services International Class
Ground and whole bean coffee; coffee, tea, herbal tea, cocoa
and espresso beverages, and beverages made with a base of
coffee, tea, herbal tea, cocoa and espresso; baked goods,
namely biscotti, bread, brownies, cakes, cookies, muffins,
pastries, scones, bagels and granola bars; chocolate; candy
30
Coffee kiosk services 35
Coffee house services 43

The examining attorney issued a final refusal to
register, based on two grounds: (1) that applicant’s mark so
resembles the mark CITY BREWS for “restaurant and bar
THIS 0PINION
IS NOT A PRECEDENT
OF THE TTAB
Application No. 78555821
2
services”1 that it would, when used on or in connection with
the identified goods and services, be likely to cause
confusion, pursuant to Trademark Act § 2(d); 15 U.S.C.
§ 1052(d); and (2) that applicant failed to comply with the
examining attorney’s requirement for a disclaimer of the
term “brew,” apart from the mark as shown, pursuant to
Trademark Act § 6, 15 U.S.C. § 1056. The examining attorney
contends that “brew” is descriptive of applicant’s goods and
services.
Applicant timely appealed the refusal to register and
both applicant and the examining attorney filed main briefs.
March 28, 2007, after briefing, the Board issued an order
noting that the cited registration was more than six years
old, and that it did not appear that the registrant had
filed an affidavit of continued use as required by Trademark
Act § 8; 15 U.S.C. § 1058, and that the grace period for
doing so had passed. The Board suspended this appeal
pending action by the post-registration examiner, and on
October 29, 2007, after the registration was cancelled, the
Board issued an order resuming proceedings.
Accordingly, the examining attorney’s refusal to
register because of a likelihood of confusion with the now-
cancelled registration is moot, and will be given no further
consideration. We therefore focus the remainder of this

1 Registration No. 2419465, issued January 9, 2001, based on use
Application No. 78555821
3
decision on the examining attorney’s final requirement for a
disclaimer of “brew.”
Record on Appeal
With his first office action, the examining attorney
submitted a dictionary definition reproduced in significant
part below:
brew

transitive and intransitive verb ….

1. make beer: to make beer or similar alcoholic drinks by a process
of seeping, boiling, and fermenting grain with hops, sugar, and
other ingredients

2. make tea or coffee: to prepare tea or coffee for drinking by infusing it
to develop its flavor

noun ….

1. beer: beer or a type of beer such as lager or ale

2. brewed beverage: a drink such as coffee or tea made by infusion, or a
serving of such a drink (informal)

http://encarta.msn.com (visited August 31, 2005).
Applicant submitted no evidence bearing on the
disclaimer requirement.
Applicable Law
“The Director may require the applicant to disclaim an
unregistrable component of a mark otherwise registrable.”
Trademark Act § 6(a). A term which is descriptive within
the meaning of Trademark Act § 2(e)(1); 15 U.S.C.

in commerce. Cancelled, October 13, 2007 (Trademark Act § 8).
Application No. 78555821
4
§ 1052(e)(1) is unregistrable, and must therefore be
disclaimed if so required by the examining attorney.
A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
function, feature or purpose of the products it identifies.
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir.
1987). Whether a particular term is merely descriptive is
determined in relation to the products for which
registration is sought and the context in which the term is
used, not in the abstract or on the basis of guesswork. In
re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA
1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In
other words, the issue is whether someone who knows what the
products are will understand the mark to convey information
about them. In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-
1317 (TTAB 2002); In re Patent & Trademark Serv. Inc., 49
USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders Ass’n of
Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re American
Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Discussion
As noted, the examining attorney submitted a dictionary
definition of the term “brew,” indicating the significance
of the term respect to coffee. In its brief, applicant
repeated verbatim its response to the first office action
with respect to the disclaimer requirement:
Application No. 78555821
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The plural term “BREWS,” when viewed by a typical
consumer, immediately will be perceived as referring to
beer. Nevertheless, the U.S. Patent and Trademark
Office did not find the use of this term so descriptive
as to require Interstate Hotels to disclaim the term
“BREWS” in its mark CITY BREWS.[2]

If there was no need to disclaim the term “BREWS”
in Interstate Hotels’ mark CITY BREWS, there is even
less need to disclaim the term “BREW” in the
Applicant’s mark CITY BREW. Unlike the plural “BREWS,”
the singular “BREW” is subject to a number of different
interpretations. It might refer to beer, beer-making
supplies, coffee, tea, other soft drinks, medicinal
preparations, or even computer software. As the result
of this ambiguity, the term “BREW” is suggestive rather
than descriptive when it appears in the mark CITY BREW.
See Public Service Co. of New Mexico v. Nexus Energy
Software, Inc., 36 F. Supp. 2d 436, 438-39 (D. Mass.
1999)(Finding that the mark ENERGY PLACE for the
Internet website providing information about energy was
suggestive rather than descriptive, since it was
susceptible to several different interpretations).
Therefore the Applicant should not be required to
disclaim the term “BREW.”

Applicant’s Brief at 16. As noted, applicant submitted no
evidence on the disclaimer issue, instead (1) relying on the
cited registration (and its lack of a disclaimer); and (2)
arguing that the definition proffered by the examining
attorney was “ambiguous.”
As to applicant’s first point, although the cancelled
‘465 Registration remains part of the record, each case must
be decided on its merits and, thus, the cancelled
registration is not probative of whether a disclaimer is

2 Applicant is apparently referring here to the registration
which was cited as a bar to registration under Trademark Act
§ 2(d). As noted above, that registration was for the mark CITY
BREWS for “restaurant and bar services.” The registration did
not include a disclaimer.
Application No. 78555821
6
appropriate in this case. Further, the Board is not bound
by the actions of an examining attorney. See, e.g., In re
Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001) (“The Board must decide each case on its own merits...
the PTO's allowance of ... prior registrations do not bind
the Board or this court.” (citation omitted)); In re
Wilson, 57 USPQ2d 1863, 1871 (TTAB 2001).
We are likewise unconvinced by applicant’s second
argument – that “brew” is ambiguous because it could refer
to more than one thing. As a glance at most any dictionary
will confirm, many words in the English language have more
than one sense or meaning. But the test of descriptiveness
under the Trademark Act is not whether one could determine
some characteristic of the goods or services from viewing a
term in the abstract; rather, the question is whether, in
the context of the identified goods or services, the term
conveys information about those goods or services. The mere
fact that a term has a different meaning in a different
context is not relevant.
Applicant’s goods include “coffee, tea, herbal tea, ...
espresso beverages, and beverages made with a base of
coffee, tea, herbal tea, ... and espresso” and its goods
consist of “coffee kiosk services” and “coffee house
services.” Obviously, such goods include coffee, tea and
coffee- and tea-related services. Thus, although “brew”
Application No. 78555821
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might refer to beer3 in another context, it is clear that
when seen in the context of applicant’s services, it does
not.
The evidence of record plainly defines “brew” in this
context as referring either to coffee or tea or to the
preparation of such beverages.4 We have no doubt that
potential purchasers of applicant’s goods and services would
immediately recognize the term as describing a feature of
applicant’s goods and services, namely the sale of brewed
coffee and tea beverages and the associated services of
providing these beverages through a “coffee kiosk” or a
“coffee house.” A disclaimer of the term “brew” is
therefore appropriate.
Decision: The refusal to register the mark CITY BREW
based on applicant’s refusal to disclaim the exclusive right
to use “brew” apart from the mark as a whole is affirmed.
However, if applicant submits the required disclaimer of
“brew” to the Board within thirty days of the mailing date
of this decision, this decision will be set aside.5 See
Trademark Rule 2.142(g).

3 Applicant’s statement that “brew” could also refer to computer
software is not supported by any record evidence.
4 Although the first sense is listed as “informal,” there is no
indication that purchasers of applicant’s goods and services
would not immediately understand “brew” in this context to refer
to the identified beverages or the services of providing them, or
that the relevant consumers would expect more formal language in
this context.
5 The standard printing format for the required disclaimer text
in this application is as follows: “No claim is made to the
Application No. 78555821
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exclusive right to use ‘brew’ apart from the mark as
shown.” TMEP § 1213.08(a)(i) (5th ed. 2007).