Kikkoman Sales USA, Inc.

Trademark Trial and Appeal Board

Apr 29, 2013

No. 85129910 (T.T.A.B. Apr. 29, 2013)

THIS OPINION IS A NOT
PRECEDENT OF THE TTAB

Mailed: April 29, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Kikkoman Sales USA, Inc.
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Serial No. 85129910
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Michael J. Gratz of Boyle Fredrickson S.C. for Kikkoman Sales USA, Inc.

Alyssa Steel, Trademark Examining Attorney, Law Office 107 (J. Leslie Bishop,
Managing Attorney)
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Before Grendel, Kuhlke and Bergsman, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, Kikkoman Sales USA, Inc., filed an application to register on the
Principal Register the mark SOYSALT in standard characters for goods ultimately
identified as “seasonings, namely, soy sauce flavored seasonings” in International
Class 30.1
Registration has been refused on the ground that SOYSALT is merely
descriptive of applicant’s goods under Section 2(e)(1) of the Trademark Act, 15
U.S.C. § 1052(e)(1).

1 Application Serial No. 85129910, filed on September 15, 2010, based on an allegation of a
bona fide intention to use the proposed mark in commerce, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
Serial No. 85129910

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“A mark is merely descriptive if it ‘consist[s] merely of words descriptive of
the qualities, ingredients or characteristics of’ the goods or services related to the
mark.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed.
Cir. 2004), quoting, Estate of P.D. Beckwith, Inc. v. Commissioner, 252 U.S. 538, 543
(1920). See also In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778,
1780 (Fed. Cir. 2003). The determination of whether a mark is merely descriptive
must be made in relation to the goods or services for which registration is sought.
In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219
(Fed. Cir. 2012). The test for determining whether a mark is merely descriptive is
whether it immediately conveys information concerning a significant quality,
characteristic, function, ingredient, attribute or feature of the product or service in
connection with which it is used, or intended to be used. In re Engineering Systems
Corp., 2 USPQ2d 1075 (TTAB 1986); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB
1979). It is not necessary, in order to find a mark merely descriptive, that the mark
describe each feature of the goods or services, only that it describe a single,
significant ingredient, quality, characteristic, function, feature, purpose or use of
the goods or services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
Where a mark consists of multiple words, 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 merely descriptive significance in relation to the goods or services, the
combination results in a composite that is itself merely descriptive. In re Oppedahl
Serial No. 85129910

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& Larson LLP, 71 USPQ2d at 1371. However, a mark comprising a combination of
merely descriptive components is registrable if the combination of terms creates a
unitary mark with a unique, nondescriptive meaning, or if the composite has a
bizarre or incongruous meaning as applied to the goods or services. See In re
Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968); In re Shutts, 217
USPQ 363 (TTAB 1983); and TMEP § 1209.03(d).
The dictionary definition for SALT is “1. A crystalline compound .. used for
seasoning food … 2. Table salt mixed with a particular herb or seasoning for which
it is named: garlic salt; celery salt …” and the definition for SOY is “1. soy sauce. 2.
the soybean.”2 Thus, SOYSALT describes a salt or seasoning that tastes like soy
sauce. The record shows use of the term Soy Salt to describe precisely that, dried
seasonings that have the flavor of soy sauce. See, e.g., www.atthemeadow.com/shop
(“Soy Salt - Kamebishi Soy Salt … Soy Salt; Crispy, frothy, mild, savory, and
suavely unassuming.”); www.nymtc.com, www.saltnews.com, chefshop.com,
(articles from various websites discussing the third party Kamebishi’s soy salt) all
attached to the Office Action (December 23, 2010).
Applicant’s argument that “neither soy nor salt is a required ingredient of the
[soy sauce flavored seasonings]” is beside the point, SOY means SOY SAUCE, soy
sauce is composed of, inter alia, fermented soy beans and salt, SALT is a seasoning

2 Random House Dictionary (2010), retrieved from dictionary.refernce.com attached to
Office Action (December 23, 2010) TSDR pp. 12, 22.

Serial No. 85129910

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and applicant’s seasonings have a soy sauce flavor.3 No steps are needed to
immediately understand a significant feature of the seasonings, namely the soy
sauce flavor, in particular when used in the context of the goods which are
specifically identified as “seasonings, namely, soy sauce flavored seasonings.”
Moreover, we are not persuaded by applicant’s argument that the replacement of
the term sauce with salt results in a play on words that creates a unique
impression, or that the alliteration and “symmetry” of the mark removes the
descriptive nature of the terms. This is not remotely like the mark SUGAR &
SPICE that called to mind a common saying from a nursery rhyme. In re Colonial
Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968).
Applicant’s reliance on third-party registrations with marks that contain the
word SALT is misplaced. In each example the word SALT is disclaimed. In
addition, in some of them additional matter is disclaimed, see, e.g., Reg. No. 675651
for the mark OLD HICKORY SMOKED SALT with SMOKED SALT disclaimed,
and in others the mark includes stylization, see, e.g., Reg. No. 1268110 for the mark
NOSALT and Reg. No. 2937870 for the mark HOT SALT. Further, as is well
established each case must stand on its own merits. In re Nett Designs Inc., 236
F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001).
Finally, the fact that applicant may be the first and only user does not
obviate a mere descriptiveness refusal. In re Nat’l Shooting Sports Found., Inc., 219

3 While misdescriptiveness was not issued as a refusal, it appears unusual that seasoning
with soy sauce flavor does not include either soy or salt as an ingredient, and certainly one
would think use of the word salt on goods that do not contain salt would be misdescriptive.
We note that applicant never stated that the goods cannot or even do not contain these
ingredients only that they are “not required.”
Serial No. 85129910

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USPQ 1018 (TTAB 1983). In addition, the fact that a term is not found in the
dictionary is not controlling on the question of registrability. In re Gould Paper
Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987); In re Orleans Wines, Ltd.,
196 USPQ 516 (TTAB 1977).
Based on this record, SOYSALT immediately describes a significant feature
of the goods, namely that they are seasonings with a soy sauce flavor.
Decision: The refusal to register under Section 2(e)(1) of the Trademark Act
is affirmed.