JCH International, Inc.

Trademark Trial and Appeal Board

Jul 23, 2018

No. 87012651 (T.T.A.B. Jul. 23, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: July 23, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re JCH International, Inc.
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Serial No. 87012651
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Phillip Thomas Horton of The Law Office of Phillip Thomas Horton,
for JCH International, Inc..
John Sullivan, Trademark Examining Attorney, Law Office 114,
Laurie R. Kaufman, Managing Attorney.
_____

Before Ritchie, Greenbaum and Lynch,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
JCH International, Inc. (“Applicant”) seeks registration on the Principal Register
of the mark EDIBLE COFFEE (in standard characters) for
Coffee-based snack foods in International Class 30.1

1 Application Serial No. 87012651 was filed on April 25, 2016 based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
Serial No. 87012651
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The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), as merely
descriptive of the identified goods.
When the refusal was made final, Applicant appealed.2 We affirm the refusal to
register.
I. Evidentiary Issues
Applicant attached to its brief several pages of evidence to which the Examining
Attorney has objected.3 This evidence consists of (1) an entry for “Coffee” from
Wikipedia, (2) a dictionary definition of the word “edible” from Dictionary.com, and
(3) TSDR printouts of third-party registrations including the term “edible” or its
phonetic equivalent. Only evidence filed during examination is timely, Trademark
Rule 2.142(d), 37 C.F.R. § 2.142(d), and it should not be submitted (or resubmitted)
on appeal. See TBMP § 1203.02(e) (June 2018). Accordingly, we give no consideration
to the Wikipedia evidence or the TSDR printouts submitted for the first time with
Applicant’s brief.4

2 After the case was briefed, Applicant requested remand in order to amend its registration
to the Supplemental Register. 10 TTABVUE. However, Applicant has not yet alleged use of
the mark and therefore the mark is ineligible for the Supplemental Register. Trademark Rule
2.47(d), 37 C.F.R. § 2.47(d). Accordingly, Applicant’s request for remand was denied as it did
not include the requisite allegation of use to qualify the mark for the Supplemental Register.
13 TTABVUE.
3 4 TTABVUE 15-24 (evidence attached to Applicant’s Brief); 6 TTABVUE 4-5 (Examining
Attorney’s objection).
4 We add that consideration of this evidence would not have changed the outcome of this
decision because in his brief, the Examining Attorney successfully rebutted the TSDR
evidence (in the alternative) (6 TTABVUE 7-8), and the Wikipedia entry appears to be
substantially identical in substance to the first page of a Wikipedia entry for “coffee” made of
record by the Examining Attorney during prosecution. Once evidence is placed in the record,
Serial No. 87012651
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As for the dictionary definition, the Board may take judicial notice of dictionary
definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ
594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including
online dictionaries that exist in printed format or have regular fixed editions. In re
Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). We do not take judicial notice
of the definition from dictionary.com because the single page provided does not
include the source attribution. We do, however, take judicial notice of the definitions
of “edible” as “fit to be eaten: EATABLE” and “espresso” as “coffee brewed by forcing
steam or hot water through finely ground darkly roasted coffee beans,” both from the
Merriam-Webster Online Dictionary, and as attached to the Examining Attorney’s
brief.5 We note that snack food containing espresso, such as chocolate-covered
espresso beans, fits within the meaning of a “coffee-based snack food.”
II. Applicable Law
A mark is merely descriptive of goods within the meaning of Section 2(e)(1) of the
Trademark Act if it forthwith conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the goods 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); see also In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574, 1575 (Fed.
Cir. 2015); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Whether a

it may be referred to by the Examining Attorney, Applicant or the Board for whatever
probative value it may have.
5 6 TTABVUE 11-12. We also note that the definition of “edible” from dictionary.com comports
with the definition from the Merriam-Webster Online Dictionary. Our decision not to accept
Applicant’s submission thus has no effect on the outcome of this decision.
Serial No. 87012651
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mark is merely descriptive is determined in relation to the goods for which
registration is sought and the context in which the mark is used, not in the abstract
or on the basis of guesswork. In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828, 1831
(Fed. Cir. 2007); see also In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ2d 215, 218
(CCPA 1978). In other words, we evaluate whether someone who is familiar with the
goods will understand the mark to convey information about them. DuoProSS
Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757
(Fed. Cir. 2012). A mark need not immediately convey an idea of each and every
specific feature of the goods in order to be considered merely descriptive; it is enough
if it describes one significant attribute, function or property of the goods. See Gyulay,
3 USPQ2d at 1010. In addition, the descriptiveness analysis concentrates on the
identification of goods set forth in the application. See In re Cordua Rests., Inc. 823
F.3d 594, 118 USPQ2d 1632, 1636 (Fed. Cir. 2016) (quoting Octocom Sys., Inc. v.
Hous. Computs. Servs., Inc., 918 F.2d 937, 16 USQP2d 1783, 1787 (Fed. Cir. 1990)).
III. Analysis
In support of the refusal, the Examining Attorney relies on the dictionary
definition of the word “edible” as “fit to be eaten,”6 of which we have taken judicial
notice, and a Wikipedia entry for “Coffee” stating that “Coffee is a brewed drink
prepared from roasted coffee beans ….”7 The Examining Attorney asserts that “both
the individual components and the composite result are descriptive of applicant’s

6 6 TTABVUE 11.
7 April 28, 2017 Final office Action, TSDR 8.
Serial No. 87012651
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goods and do not create a unique, incongruous, or nondescriptive meaning in relation
to the goods. Specifically, when used in combination, the wording EDIBLE COFFEE
merely describes that applicant’s snack foods contain COFFEE or COFFEE beans
and are ‘fit to be eaten.’”8
In further support of his position, the Examining Attorney submitted evidence
from a Google search of “coffee bean chocolate” displaying photographs of chocolate
covered coffee beans sold as a snack food from retailers such as Godiva, Dean &
DeLuca, Jet.com, and Café Britt.9 The excerpts from the Google search include a link
for a “Chocolate-Covered Espresso Bean Recipe” from the 1912pike.com website, a
link to the Target website listing several brands of “dark chocolate espresso beans,”
and a link to a Wikipedia article about “Chocolate-covered coffee beans” which states:
“Chocolate covered coffee beans are confections made by coating roasted coffee beans
in some kind of chocolate ….”10
In addition, the Examining Attorney submitted screenshots from the Amazon.com
Trader Joe’s Chocolate Covered Espresso webpage11 displaying photographs of dark
chocolate covered espresso beans from Trader Joe’s, Hoosier Hill, South Bend
Chocolate Company, Its Delish, and Wincrest (which offers Green Mint Chocolate and

8 6 TTABVUE 5-6.
9 April 28, 2017 Final Office Action, TSDR 30-32.
10 Id. While a list of Internet search results generally has little probative value because it
does not show the context in which the term is used on the listed web pages, In re Thomas
Nelson, Inc., 97 USPQ2d 1712, 1715 (TTAB 2011), we consider the above-noted excerpts to
provide sufficient context and thus additional support for the refusal.
11 Id., 33-39.
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Dark Chocolate Amaretto varieties). The Trader Joe’s product is ranked third in the
“Amazon Best Sellers Rank” for the “Grocery & Gourmet Food/Candy &
Chocolate/Fruits/Nuts & Snacks” category. The evidence suggests consumer
familiarity with chocolate covered coffee beans as snacks. For example, one user
commented on February 13, 2017, “WOW, you can’t beat the taste of dark chocolate,
and espresso beans. Simply put, these treats cannot arrive fast enough ….” Similarly,
another user commented on January 9, 2017 that “These are on par with some of the
best Chocolate Covered Espresso Beans I’ve had. These are a hit in my family and
make a great post-dinner treat.” And on January 27, 2015, a user called the product
a “Perfect Pick Me Up Snack.” In a side-bar comment, another user gave the product
five stars, and stated “Love the taste. Great snack during the day.”
Based on the foregoing, we have no doubt that consumers who see the proposed
mark EDIBLE COFFEE used on coffee-based snack foods immediately would
understand that the snack food contains or consists of consumable coffee or coffee
beans. The definitions of the words in the mark show their descriptiveness in this
context, and as discussed more fully below, the combination of EDIBLE and COFFEE
does not evoke a new and unique commercial impression. Accordingly, the proposed
mark is merely descriptive of the identified goods.
We do not find persuasive Applicant’s arguments that the proposed mark is
suggestive and incongruous because “the most popular and well-known form of coffee
is a beverage, not as a base for preparing snack foods.”12 As stated above, we must

12 4 TTABVUE 10.
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consider the meaning of a term in relation to the identified goods, not in the abstract.
See Bayer, 82 USPQ2d at 1831; Abcor, 200 USPQ at 218. When consumers encounter
the term EDIBLE COFFEE on Applicant’s identified goods, the evidence supports a
finding that they would immediately understand that the coffee-based snack foods
contain coffee or coffee beans and are “fit to be eaten.” This is particularly true given
the plethora of chocolate covered coffee bean snack products in the marketplace, as
discussed above.
Applicant also contends that the term EDIBLE COFFEE is incongruous because
it “juxtapose[es] discordant elements or ideas by suggesting coffee can be eaten, as
opposed to drinking coffee.”13 Applicant further argues that this combination creates
a “new, unitary trademark [that] creates a new, non-descriptive meaning, namely
snack foods that incorporate coffee and the coffee flavor.”14 However, as the
Examining Attorney aptly notes,
Applicant’s stated impression of the mark is precisely why
the mark is descriptive. Consumers are familiar with
COFFEE as something that is ingested, in both beverage
and EDIBLE form. When the word COFFEE is combined
with EDIBLE, it creates the impression of food that either
contains or is comprised of COFFEE, COFFEE beans, or
COFFEE flavoring, which immediately describes
applicant’s “Coffee-based snack foods.”15
A combination of descriptive terms may be registrable if the composite creates a
unitary mark with a separate, nondescriptive meaning. In re Colonial Stores, Inc.,

13 Id. at 12.
14 Id. at 13.
15 6 TTABVUE 8.
Serial No. 87012651
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394 F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR & SPICE for “bakery products”);
In re Shutts, 217 USPQ 363, 365 (TTAB 1983) (SNO-RAKE for “a snow removal hand
tool having a handle with a snow-removing head at one end, the head being of solid
uninterrupted construction without prongs”). In this regard, “incongruity is one of the
accepted guideposts in the evolved set of legal principles for discriminating the
suggestive from the descriptive mark.” Shutts, 217 USPQ at 365; see also In re Tennis
in the Round, Inc., 199 USPQ 496, 498 (TTAB 1978) (the association of applicant’s
mark TENNIS IN THE ROUND with the phrase “theater-in-the-round” creates an
incongruity because applicant’s services do not involve a tennis court in the middle of
an auditorium). However, the mere combination of descriptive words does not
necessarily create a nondescriptive word or phrase. In re Associated Theatre Clubs
Co., 9 USPQ2d 1660, 1662 (TTAB 1988). If each component retains its descriptive
significance in relation to the goods, the combination results in a composite that is
itself descriptive. In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370,
1372 (Fed. Cir. 2004) (quoting Estate of P.D. Beckwith, Inc. v. Comm’r, 252 U.S. 538,
543 (1920)); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006)
(holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses,
box springs, and pillows where the evidence showed that the term “breathable”
retained its ordinary dictionary meaning when combined with the term “mattress”
and the resulting combination was used in the relevant industry in a descriptive
sense). We find that to be the case here.
Serial No. 87012651
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IV. Conclusion
For the reasons discussed, we conclude that consumers would immediately
understand EDIBLE COFFEE, when used on Applicant’s identified coffee-flavored
snack foods, to describe a key feature of them. Furthermore, Applicant’s competitors
who also might offer similar goods should have the opportunity to use “edible coffee”
or variations thereof to explain a significant feature or characteristic of their goods.
See In re Boston Beer Co., L.P., 47 USPQ2d 1914, 1920-21 (TTAB 1998), aff’d, 198
F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999); Abcor, 200 USPQ at 217 (“The major
reasons for not protecting [merely descriptive] marks are … to maintain freedom of
the public to use the language involved, thus avoiding the possibility of harassing
infringement suits by the registrant against others who use the mark when
advertising or describing their own products.”). While Applicant urges us to resolve
doubt in its favor, on this record, we have no such doubt to resolve.
Decision: The refusal to register Applicant’s proposed mark EDIBLE COFFEE
is affirmed on the ground that it is merely descriptive of Applicant’s identified
goods.16

16 Applicant cannot make a conditional request for remand based on the outcome of the
Board’s decision on appeal. See Adlon Brand Gmbh & Co., 120 USPQ2d 1717, 1724 (TTAB
2016). Accordingly, Applicant’s embedded conditional request for remand to allow it time to
file an acceptable Allegation of Use and an amendment to the Supplemental Register (4
TTABVUE 13) is denied. See In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1047 n.2
(TTAB 2002); see also In re Integrated Embedded, 120 USPQ2d 1504, 1511(TTAB 2016) (in
denying a conditional request to amend to the Supplemental Register, Board stating the
“[a]pplicant cannot ‘reserve a right’ that does not exist”).