Kellogg Co.v.Paul Ralston

Trademark Trial and Appeal Board

Oct 17, 2000

No. 91111903 (T.T.A.B. Oct. 17, 2000)

THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT
OF THE T.T.A.B.
10/17/00
Mermelstein
Opposition No. 111,903
Kellogg Company
v.
Paul Ralston
Before Hohein, Rogers, and McLeod, Administrative
Trademark Judges.
By the Board:
Applicant, Paul Ralston, has filed an application to
register the mark CAR FOOD for a wide variety of food and
beverages in International Classes 29, 30 and 32.1 An

1 Application Serial No. 75/204,310, filed November 26, 1996,
alleging a bona fide intent to use the mark in commerce. The
word FOOD is disclaimed. The goods identified in the
application are as follows:
Crystallized fruit, processed dates, entrees consisting
primarily of meat, fish, poultry or vegetables, processed
fruit, fruit chips, jerky, kefir, candied fruit snacks,
crystallized ginger, package combinations consisting of
cheese, meat and/or processed fruit, potato chips,
processed pumpkin, sunflower and edible fruit and
vegetable seeds, raisins, fruit and vegetable rinds, snack
dips (excluding salsa and other sauces used as dips),
dairy based beverages, namely, chocolate milk, strawberry
milk and flavored milk drinks and other beverages used as
milk substitutes, namely, flavored soy milk drinks and
bean-based snack food. (International Class 29)
UNITED STATES DEPARTMENT OF COMMERCE
Patent and Trademark Office
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
Opposition No. 111,903
2
opposition has been filed by Kellogg Company on the
grounds that, inter alia, the mark CAR FOOD, as applied
to the identified goods, is a merely descriptive term
without acquired distinctiveness. Opposer also alleges,
among other things, that it is engaged in the manufacture
and sale of a variety of food products, and that
registration of CAR FOOD by applicant would be
inconsistent with opposer’s right to use the term
descriptively. Applicant has denied the salient
allegations in the notice of opposition.
Now before the Board is opposer’s motion for summary
judgment, filed September 7, 1999. The motion has been
fully briefed.2

Grain-based and herbal food beverages, tea, bakery goods,
bakery products, caramels, cheese flavored puffed corn
snacks, coffee, coffee substitutes, cookies, corn chips,
corn curls, crackers, doughnuts, entrees consisting
primarily of pasta or rice, ready to eat food bars,
granola, mints, muffins, package combinations consisting
of primarily bread, crackers and/or cookies, pretzels,
puffed corn snacks, cheese flavored puffed corn snacks,
rice based snack foods, tortilla chips, truffles
(chocolate), wheat-based snack foods, brownies and cereal
bars. (International Class 30)
Non-alcoholic and de-alcoholized drinks, namely, beer
substitute, fruit drinks and fruit juices, syrups and
preparations for making the above named beverages.
(International Class 32)
2 The parties’ October 1, 1999, stipulated motion to extend the
period for response to the summary judgment motion is GRANTED.
Applicant’s motion for suspension of proceedings was withdrawn
in light of the Board’s September 24, 1999, order granting the
Opposition No. 111,903
3
Opposer contends that the term CAR FOOD is used “to
refer to food items which are readily eaten in a car.”
In support of its position, opposer offers dictionary
definitions of the terms “car” and “food,” seventeen
stories extracted from the NEXIS® database, using the term
CAR FOOD, and the declarations of Rosemary Burt and David
A. Herdman, Kellogg product manager and Corporate
Counsel-Trademarks, respectively. Attached to Mr.
Herdman’s affidavit were photocopies of several of
opposer’s trademark registrations.
In response, applicant contends that “triable issues
of fact exist as to whether CAR FOOD is inherently
distinctive and entitled to registration on the Principal
Register.” Applicant has submitted three stories from
the NEXIS® database,3 a list of the subcategories
available in the LEXIS® and NEXIS® databases, opposer’s
responses to applicant’s requests for admissions and
interrogatories, a copy of a pending application from the
PTO web site, and the affidavit of Paul Ralston.
Applicable Law

same relief, and will accordingly be given no further
consideration.
3 Two of the stories are from foreign publications, and thus
have little or no probative value on the question of the meaning
of the mark in the United States. See In re BDH Two Inc., 26
USPQ2d 1556 (TTAB 1993); In re Men's International Professional
Opposition No. 111,903
4
Summary judgment is appropriate in cases where the
moving party establishes that there is no genuine issue
of material fact which requires resolution at trial and
that the moving party is entitled to judgment as a matter
of law. Fed. R. Civ. P. 56(c). An issue is material
when its resolution would affect the outcome of the
proceeding under governing law. Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 248 (1986). A fact is
genuinely in dispute if the evidence of record is such
that a reasonable fact finder could return a verdict in
favor of the nonmoving party. Anderson, 477 U.S. at 248.
The nonmoving party must be given the benefit of all
reasonable doubt as to whether genuine issues of material
fact exist, and the evidentiary record on summary
judgment, and all inferences to be drawn from the
undisputed facts, must be viewed in the light most
favorable to the nonmoving party. See Opryland USA, Inc.
v. Great American Music Show, Inc., 970 F.2d 847, 23
USPQ2d 1471 (Fed. Cir. 1992); Olde Tyme Foods Inc. v.
Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir.
1992). “While the initial burden on such a motion is on
the movant, if the movant supports [its] position, the

Tennis Council, 1 USPQ2d 1917 (TTAB 1986). We have considered
the stories, for what they are worth.
Opposition No. 111,903
5
respondent must come forward with specific materials of
[its] own to show that there are triable issues of fact
or [it] must demonstrate why [it] cannot do so.”
Blansett Pharmacal Co. Inc. v. Carmrick Laboratories
Inc., 25 USPQ2d 1473, 1476 (TTAB 1992).
Under Trademark Act § 2(e)(1), 15 U.S.C.
§ 1052(e)(1), a term is merely descriptive of the
identified goods if it forthwith conveys an immediate
idea of an ingredient, quality, characteristic, feature,
function, purpose or use of the goods or services. E.g.,
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir.
1987); In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 217-18 (CCPA 1978). A term need not
immediately convey an idea of all features of the goods
in order to be considered merely descriptive; it is
enough that the term describes one significant attribute,
function or property of the goods. In re Taylor &
Francis [Publishers] Inc., 55 USPQ2d 1213, 1215 (TTAB
2000); In re H.U.D.D.L.E., 216 USPQ 358, 359 (TTAB 1982);
In re MBAssociates, 180 USPQ 338, 339 (TTAB 1973).
Whether a term is merely descriptive is determined
not in the abstract, but in relation to the goods for
which registration is sought, the context in which it is
being used on or in connection with those goods or
Opposition No. 111,903
6
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. In re Bright-
Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Merely
descriptive marks are unregistrable on the Principal
Register, absent a showing of acquired distinctiveness.
Trademark Act §§ 2(e)(1), 2(f); 15 U.S.C. §§ 1052(e)(1),
1052(f).
Discussion
We find that opposer has carried its burden of
demonstrating that there is no genuine issue of material
fact as to whether the term CAR FOOD is merely
descriptive of the identified goods. In particular,
opposer’s NEXIS® evidence demonstrates that the term is
used to describe FOOD that can be eaten in a CAR.
Moreover, the stories indicate that the term holds this
meaning both within the food trade and in common
parlance. For example (emphasis added):
Manufacturers are playing on consumer’s needs for
convenience, time, efficiency, and tastiness. No
utensils to wash. I’ve been calling these foods car
foods for a while, because a prerequisite for market
entry is the food’s ability to be consumed in a car
while driving 80 mph with a cell phone in your hand.
B. Feig, Food & Beverage Marketing p. 33 (August, 1997).
Not all car foods are created equal. Before you set
off down the path of the roadway gourmet, consider
Opposition No. 111,903
7
the issues of portability, palatability, and
neatness – not necessarily in that order.
The Boston Herald, p. 49 (January 19, 1994).
They have also styled items to fit the latest trend
known as car food – meals eaten while driving.
The Plain Dealer, p. 1G (June 3, 1998).
Very often I’m eating as I’m driving and flinging
stuff in the back seat. Anything that’s going to be
greasy or messy is not car food.
J. Loew, The Times Union, p. D1 (July 8, 1998).
Any fisherman will tell you that part of the ritual
of pre-dawn tanking up the boat with gas is the
accompanying breakfast of boudin. It’s eaten as an
after-school snack by kids walking home, and as
carfood, anytime, by those with messy inclinations.
The Times-Picayune, p. F3 (October 31, 1996).
If it must be done, foods that can be held, such as
burritos and tacos, do best in the car, as to items
like granola bars, single-serving yogurt cups and
fruit muffins. Fresh fruit is a good car food, too.
Pittsburgh Post-Gazette, p. G-6 (April 29, 1999).
Want to experience a culinary cruising nightmare?
Order the Garden Vegi Pita Sandwich, Biggie Fries
and Frosty shake.
* * *
Trying to tighten my grip at the bottom only caused
a terrible reverse reaction. Soon, I was holding
onto the Mount St. Helen’s of car food. The
sandwich erupted, spewing chunks of tomatoes,
cucumbers, lettuce and carrots in a tide of sauce.
* * * Oh, the inhumanity.
Denver Rocky Mountain News, p. 3D (July 28, 1997).
Opposition No. 111,903
8
As can be seen, the stories are consistent in their
use of the term CAR FOOD to describe food conveniently –
or at least commonly – eaten in cars.
In response to opposer’s evidence, applicant raises
several arguments. First, it contends that opposer’s
dictionary evidence is not dispositive. In this regard,
applicant contends that the definitions of the words CAR
and FOOD4 have multiple meanings, and the meaning of the
mark is thus a genuine issue of fact. Applicant proposes
that the term CAR FOOD could, for instance, refer to
gasoline, motor oil, or brake fluid for automobiles, or
even parts for chariots.
While we agree that the dictionary evidence is, by
itself, not dispositive, we do not view it as raising a
genuine issue of material fact. Although applicant
points out that the definitions of record indicate that
the words CAR and FOOD have more than one meaning or
sense, that is also true of almost every word on the

4 We again note that applicant has disclaimed the term FOOD
apart from the mark as shown. Applicant also made no argument
that it believed FOOD to be distinctive. We view applicant’s
unqualified disclaimer as an admission that FOOD is at least
descriptive of the identified goods. See, e.g., Quaker State
Oil Refining Corp. v. Quaker Oil Corp., 453 F.2d 1296, 172 USPQ
361, 363 (CCPA 1972); In re Interco Inc., 29 USPQ2d 2037 (TTAB
1993); In re Consolidated Cigar Corp., 13 USPQ2d 1481 (TTAB
1989). Applicant cannot now argue that the term FOOD is not
descriptive of its identified food items.
Opposition No. 111,903
9
reproduced dictionary pages, and indeed, virtually every
word in the English language.
Our law is clear on this issue. The descriptiveness
of a trademark must be considered in the context of the
goods on which it is used or intended to be used, and not
in the abstract. In re Omaha National Corp., 819 F.2d
1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor
Development Corp., 200 USPQ at 216; In re Venture Lending
Associates, 226 USPQ 285 (TTAB 1985). What the mark
could mean in another context is irrelevant. When viewed
in the context of the goods identified in the subject
application – a wide variety of snack and ready to eat
foods – the relevant purchasers are not likely to believe
the mark to be a veiled reference to motor oil or
anything else other than food for consumption in a car.
Moreover, applicant’s highly speculative arguments
about what the mark might mean are not supported by any
evidence of how the term actually is or will be perceived
by the relevant purchasers.5 This is in contrast to

5 Applicant’s three NEXIS® stories are not to the contrary.
None even show use of the term CAR FOOD, although one uses the
similar term “dining-car food.” This latter article – from a
Canadian publication – is of little relevance, although it seems
to support opposer’s argument more than applicant’s.
Opposition No. 111,903
10
opposer, which has come forward with evidence of actual
use of the term in a descriptive manner.
Next, applicant contends that the following response
to one of its requests for admission raises a genuine
issue of material fact:
1. Admit that a “car” is an automobile.
ANSWER Denied.
Whatever the reason for opposer’s denial, it now
seems that both parties agree with the dictionary
evidence of record that a “car” is – among other things –
an automobile. While we find opposer’s strange answer
troubling, it does not alter the fact that in ordinary
parlance, a car is defined as including an automobile.
THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE 201
(1969).
Next, applicant argues that the seventeen stories
submitted by opposer are insufficient to establish the
mere descriptiveness of the proposed mark. We disagree.
We find that opposer’s NEXIS® evidence – particularly when
viewed in conjunction with its dictionary evidence –
makes out a prima facie case of mere descriptiveness.
Opposer’s evidence, while not voluminous, is not
inconsequential, and reflects clear use of the applied-
for term in a descriptive fashion.
Opposition No. 111,903
11
While food has undoubtedly been consumed in cars for
at least a century, it appears from the NEXIS® stories and
Mr. Ralston’s affidavit that CAR FOOD has only recently
emerged as a separate product category discussed or
marketed as such. We therefore view the relatively small
number of published stories of record referencing the
term CAR FOOD as an indication of the recent emergence of
the product category, rather than an indication that
there is a genuine issue as to the mere descriptiveness
of such term. Cf. In re Ferrero S.p.A., 24 USPQ2d 1155,
1156-57 (TTAB 1992). In response to opposer’s evidence,
applicant has come forward with no evidence in rebuttal
or to establish that the term has a non-descriptive
connotation to the relevant purchasers.6
Finally, applicant argues that the term CAR FOOD is
inherently distinctive or, at worst, suggestive of the
identified goods. As evidence for this proposition,
applicant submits the declaration of Paul Ralston. We
find applicant’s reliance on the affidavit misplaced. As
stated in the affidavit (emphasis added):

6 Opposer’s admission that it knows of no third party use of CAR
FOOD as a source identifier is not to the contrary. The fact
that others may not have used the term as a source identifier –
i.e., as a trademark – has nothing to do with whether the term
is descriptive, and instead reflects a general understanding in
the field that the term is descriptive, and therefore not a
trademark.
Opposition No. 111,903
12
When I first conceived of the CAR FOOD snack
concept, my intent was to embrace the ever-
increasing need of consumers to “multi-task” their
time, i.e., to perform multiple activities at one
time. In my first writings about the brand, I
described it as, “[t]he food you eat when doing
something besides eating. (Driving, Watching TV,
Net Surfing or any computer activity.)”
Affidavit ¶ 2.
It was never my intent to market the CAR FOOD
products only as snacks to be consumed in a car. *
* * CAR FOOD will be marketed to be consumed
anywhere, any time.
Affidavit ¶ 5.
Applicant thus admits that the food items to be
marketed under the term CAR FOOD are intended to include
foods which can be eaten while driving in a car, and that
it intends to market the goods as such. The fact that
the foods may also be eaten elsewhere, while doing other
activities, is irrelevant. As stated above, in order to
be found descriptive, a term need not describe all
intended uses or attributes of the goods. It is enough
if the term describes one use or attribute of the goods.
Here, it is clear that, whatever other uses applicant
intends for its food, it also intends at least some of
the items to be consumed in a car.
In conclusion, we find that there is no genuine
issue of material fact, and that opposer is entitled to

Opposition No. 111,903
13
judgment as a matter of law. Fed. R. Civ. P. 56(c).
Accordingly, opposer’s motion is GRANTED, the opposition
is sustained, and registration to applicant is refused.
G. D. Hohein
G. F. Rogers
L. K. McLeod
Administrative Trademark Judges
Trademark Trial and Appeal
Board