Klickitat Valley Chianina, LLC

Trademark Trial and Appeal Board

Sep 24, 2019

87553899 (T.T.A.B. Sep. 24, 2019)

Mailed: September 24, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
In re Klickitat Valley Chianina, LLC
_____

Serial No. 87553899
_____

Michael J. Folise of Lowe Graham Jones PLLC,
for Klickitat Valley Chianina, LLC.
Samuel R. Paquin, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
_____

Before Ritchie, Pologeorgis, and Larkin,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
Klickitat Valley Chianina, LLC (“Applicant”) seeks registration on the
Supplemental Register of the designation CERTIFIED CHIANINA BEEF (in
standard characters; CHIANINA BEEF disclaimed) for “Meat and processed foods,
namely, dressed beef from Chianina cattle” in International Class 29.1
The Trademark Examining Attorney has refused registration under Section 23(c)

1 Application Serial No. 87553899, filed on August 2, 2017, based on a claim of use in
commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming July 2006
as the date of first use and July 11, 2006 as the date of first use in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 87553899
-2-
of the Trademark Act, 15 U.S.C. § 1091(c), on the ground that Applicant’s proposed
mark, in its entirety, is a generic name of the identified goods and, as such, is
unregistrable.
When the refusal was made final, Applicant appealed. The appeal is fully briefed.
We reverse the refusal to register.2
I. Preliminary Issue – Evidentiary Objections
We first turn to evidentiary objections lodged by both the Examining Attorney and
Applicant regarding evidence purportedly presented by both for the first time with
their respective briefs. We initially address the objection lodged by the Examining
Attorney, who objects to the untimely submission of the declaration of Robert E.
Morrow, Applicant’s manager, and the declaration of Nancy Becker, D.O, an alleged
wholesale customer of Applicant.3 In response, Applicant maintains that since the
Examining Attorney referenced a prior application filed by Applicant in the
Statement of Facts of the Examining Attorney’s brief and because the declarations
were filed in the prior application, the Examining Attorney has made these
declarations of the record.4 Applicant is mistaken. Mere reference to Applicant’s prior
application in the Examining Attorney’s Statement of Facts for this appeal did not
make the prior application, or the file contents thereof, of record, such that Applicant
may take advantage of those contents. Beech Aircraft Corp. v. Lightning Aircraft Co.,

2 All TTABVUE and Trademark Status and Document Retrieval (“TSDR”) citations reference
the docket and electronic file database for Application Serial No. 87553899. All citations to
the TSDR database are to the downloadable .PDF version of the documents.
3 Examining Attorney’s Brief, pp. 4-5, 6 TTABVUE 4-5.
4 Applicant’s Reply Brief, p. 1, 7 TTABVUE 2.
Serial No. 87553899
-3-
1 USPQ2d 1290, 1293 (TTAB 1986) (“[W]e do not take judicial notice of application
and registration files that reside in the Patent and Trademark Office on the basis of
their mere identification in briefs, pleadings and evidentiary submissions.”).
In addition, it is well-settled that the record in an ex parte proceeding should be
complete prior to appeal. Trademark Rule 2.142(d); 37 CFR § 2.142(d). Exhibits or
other evidentiary material that are attached to or included with a brief but not made
of record during examination are untimely, and will not be considered. See In re Fitch
IBCA, Inc., 64 USPQ2d 1058, 1059 n.2 (TTAB 2002); see also TRADEMARK TRIAL AND
APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) §§ 1203.02(e) and 1207.01 (2019).
To the extent Applicant wished to introduce additional evidence after its appeal had
been filed, Applicant should have filed a written request with the Board to suspend
the appeal and remand the application for further examination pursuant to
Trademark Rule 2.142(d). Applicant did not do so. Accordingly, the Examining
Attorney’s evidentiary objection is sustained, and we give the declarations of Mr.
Morrow and Ms. Becker no further consideration in our analysis.
We now turn to Applicant’s evidentiary objection. Applicant contends that the
Examining Attorney included in his brief for the first time matter from two websites,
namely, www.financialtimes.com and www.issuu.com. As such, Applicant argues
that since this evidence was not submitted during the prosecution of Applicant’s
application, this material should be given no consideration. We note that the contents
of both the www.issuu.com website and the Financial Times website were in fact
Serial No. 87553899
-4-
submitted during the prosecution of Applicant’s application.5 Accordingly, Applicant’s
objection is overruled.
II. Genericness - Applicable Law
We now turn to the genericness refusal. A mark proposed for registration on the
Supplemental Register must be capable of distinguishing the applicant's goods or
services. 15 U.S.C. § 1091. “Generic terms do not so qualify.” In re Emergency Alert
Sols. Grp., LLC, 122 USPQ2d 1088, 1089 (TTAB 2017); see also Real Foods Pty Ltd.
v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1372 n.3 (Fed. Cir. 2018)
(citing In re Am. Fertility Soc’y, 188 F.3d 1341, 51 USPQ2d 1832, 1833 (Fed. Cir.
1999)); In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810
(Fed. Cir. 2001) (generic terms “are by definition incapable of indicating a particular
source of the goods or services”).
The Office must demonstrate a term is generic by “clear evidence” of generic use.
See In re Hotels.com LP, 573 F.3d 1300, 91 USPQ2d 1532, 1533 (Fed. Cir. 2009).
“[R]egistration is properly refused if the word is the generic name of any of the goods
or services for which registration is sought.” In re Cordua Rests., Inc., 823 F.3d 594,
118 USPQ2d 1632, 1638 (Fed. Cir. 2016) (quoting 2 J. Thomas McCarthy, MCCARTHY
ON TRADEMARKS AND UNFAIR COMPETITION § 12:57 (4th ed. 2016)).
A generic term “is the common descriptive name of a class of goods or services.”
Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827,
1830 (Fed. Cir. 2015) (citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc.,

5 See October 9, 2018 Final Office Action, TSDR p. 8 and 10.
Serial No. 87553899
-5-
782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986)). Specifically, a generic term names
the good or service. Id.; see also 2 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS
AND UNFAIR COMPETITION § 12:20 (5th ed. Sept. 2019 update) (“MCCARTHY”). There
is a two-part test used to determine whether a designation is generic: (1) what is the
genus (class or category) of goods or services at issue?; and (2) does the relevant public
understand the designation primarily to refer to that genus of goods or services?
Princeton Vanguard, 114 USPQ2d at 1803 (citing Marvin Ginn, 228 USPQ at 530);
Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1462
(TTAB 2014). “The critical issue in genericness cases is whether members of the
relevant public primarily use or understand the term sought to be protected to refer
to the genus of goods or services in question.” Marvin Ginn, 228 USPQ at 530.
Any term that the relevant public uses or understands to refer to the genus of
goods, or a key aspect or subcategory of the genus, is generic. Royal Crown Co., Inc.
v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1046-47 (Fed. Cir. 2018). “[A]
term is generic if the relevant public understands the term to refer to part of the
claimed genus of goods or services, even if the public does not understand the term to
refer to the broad genus as a whole.” Cordua, 118 USPQ2d at 1638 (holding
CHURRASCOS, a word that is generic for a type of grilled meat, to be generic for
restaurant services because it referred to a key aspect of those services); see also In
re Nordic Naturals, Inc., 755 F.3d 1340, 111 USPQ2d 1495 (Fed. Cir. 2014)
(CHILDREN’S DHA generic for DHA supplements for children); In re Northland
Serial No. 87553899
-6-
Aluminum Prods., Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985) (BUNDT
generic for ring cake mixes, i.e., the subcategory “bundt cakes.”).
“Evidence of the public’s understanding of the term may be obtained from any
competent source, such as purchaser testimony, consumer surveys, listings in
dictionaries, trade journals, newspapers and other publications.” Royal Crown, 127
USPQ2d at 1046 (quoting In re Merrill Lynch, Pierce, Fenner, and Smith Inc., 828
F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987)); see also Cordua, 118 USPQ2d at
1634; Princeton Vanguard, 114 USPQ2d at 1830; In re Reed Elsevier Props. Inc., 482
F.3d 1376, 82 USPQ2d 1378, 1380 (Fed. Cir. 2007) (finding third-party websites
competent sources for determining what the relevant public understands mark to
mean).
A. What is the Genus of the Goods at Issue?

Our first task is to determine the proper genus. In defining the genus, we
commonly look to the identification of goods in the application. See Reed Elsevier, 82
USPQ2d at 1380; Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552
(Fed. Cir. 1991) (a proper genericness inquiry focuses on the identification set forth
in the application or certificate of registration); In re Serial Prodcast, LLC, 126
USPQ2d 1061, 1063 (TTAB 2018) (proper genus generally is “set forth by the
recitation of services in each subject application.”). Applicant has identified its goods
as “Meat and processed foods, namely, dressed beef from Chianina cattle.” There is
no dispute that the identification of goods adequately defines the genus.
Serial No. 87553899
-7-
B. Who are the Relevant Purchasers?
The second part of the Marvin Ginn test is whether the term sought to be
registered is understood by the relevant public primarily to refer to that genus of
goods or services. “The relevant public for a genericness determination is the
purchasing or consuming public for the identified goods.” Frito-Lay N. Am., Inc. v.
Princeton Vanguard LLC, 124 USPQ2d 1184, 1187 (TTAB 2017) (citing Magic Wand,
19 USPQ2d at 1552); Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341,
1351 (TTAB 2013). Because there are no restrictions or limitations to the channels of
trade or classes of consumers for Applicant’s identified goods, the relevant consuming
public consists of U.S. consumers who purchase meat for personal consumption or
U.S. institutional customers such as restaurants who serve Chianina beef.
C. How does the Relevant Public Perceive the Wording CERTIFIED
CHIANINA BEEF?

In support of the refusal, the Examining Attorney submitted various evidence to
demonstrate that relevant consumers would view the wording CERTIFIED
CHIANINA BEEF as the generic designation for Applicant’s identified goods. The
evidence includes the dictionary definition of the term “certified” which is defined as
“genuine, authentic.”6 Additionally, the Examining Attorney submitted evidence
which provides information regarding “Chianina beef,” including its origin,7 and the
manner in which such meat produced in Europe is classified by a European agency

6 Id., TSDR p. 5.
7 April 6, 2018 Office Action, TSDR pp. 10-12.
Serial No. 87553899
-8-
and certified by Italian governmental body as genuine or authentic Chianina beef.8
The Examining Attorney also submitted excerpts from numerous websites
purportedly showing use of the designation CERTIFIED CHIANINA BEEF as the
generic name of Applicant’s goods. The evidence is summarized below:
• a review from the website www.rackcd.com regarding a steakhouse in
Long Beach, California that serves “certified Chianina beef;”9
"
• an inquiry from a traveler posted on the website www.tripadvisor.com
requesting whether a particular restaurant in Florence, Italy serves
“certified Chianina beef;”10

• a travel article from the Financial Times which includes information
about a butcher from the Italian town of Pienza who offers “certified
Chianina beef;”11

• excerpt from the website www.florencedailynews.com that provides
information regarding which restaurants in Florence, Italy and its
environs serve “certified chianina beef;”12

• excerpt from the website www.ussuu.com stating that a local
supermarket in the town of Gaiole, located in the Chianti region in Italy,
sells “certified Chianina beef;”13

• the home page of the website www.agricolasandgiobbe.com concerning
the Italian region of Valichiana stating the following: “For thousands of
years, the Valichiana has been associated with Chianina cattle farming.

8 Id., TSDR p. 10. The Examining Attorney also submitted information from the United
States Department of Agriculture website, as well as other U.S. websites, regarding
certification programs concerning meat produced or sold in the U.S. See id., TSDR pp. 6-9.
However, this evidence does not mention any U.S. certification programs associated with
Chianina beef, whether produced in Italy or domestically. Accordingly, the evidence
regarding U.S. meat product certification programs has no probative value to our analysis.
9 Id., TSDR p. 6.
10 Id., TSDR p.7.
11 Id., TSDR p. 8.
12 Id., TSDR p. 9.
13 Id., TSDR p. 10.
Serial No. 87553899
-9-
To protect and continue the tradition, San Giobee sells only PGI certified
Chianina beef, a guarantee for consumers of the origin of the meat.”;

• excerpt from the website of the Italian restaurant La Bucaccia located
in Cortona, Italy (www.labucaccia.it) that discusses its cuisine that
includes “IGP certified Chianina beef;”14

• excerpt from the website www.cortonamia.com that provides reviews of
restaurants in Cortona, Italy which includes the restaurant La Bucaccia
and states that this restaurant offers typical Tuscan cuisine including
“I.G.P. certified Chianina beef;”15

• excerpt from the Italian food blog Maddie Loves Food
(www.maddielovesfood.blogspot.com/trattoria-mario-florence.html)
discussing a steak cooked using “pure certified Chianina beef;16 and

• an excerpt from the website www.ubmriatuscnyreview.com reviewing a
restaurant named Le Grotee Del Funaro located in Orvieto, Italy that
includes “certified Chianina beef” as part of its menu.17

In traversing the refusal, Applicant argues that the Examining Attorney has
failed to demonstrate by clear evidence that its applied-for mark is generic.
Specifically, Applicant contends that all but one of the references are to websites and
vendors in Italy, where this term is apparently controlled under the European PGI
classification system.18 Applicant further maintains that the only U.S. reference is to
the Chianina Steak House in Long Beach, California and that this particular
restaurant is a customer of Applicant.19 Finally, Applicant references in its brief a list

14 Id., TSDR p. 12.
15 Id., TSDR p. 13.
16 Id., TSDR p. 14.
17 Id., TSDR p. 15.
18 Applicant’s Appeal Brief, p. 3, 4 TTABVUE 4.
19 Id.
Serial No. 87553899
-10-
of third-party marks that purportedly have been registered by the Office.20 The list
of registrations are as follows: “Acadian Certified Cajun” (Reg. No. 5,571,171);
“Certified Heritage Pork” (Reg. No. 5,382,687); “Hopi Certified Beef” (Reg. No.
5,253,788); “Certified Dorper Lamb” (Reg. No. 4,603,427); “Certified Piedmontese
Beef” (Reg. No. 4,024,146). Applicant argues that because these marks have been
registered, its applied-for mark cannot be deemed generic.21
III Analysis
Because the wording “beef from Chianina cattle” is included in Applicant’s
identification of goods, we find the designation “CHIANINA BEEF” is generic for
Applicant’s goods and has been appropriately disclaimed by Applicant. See
TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 1213.03(b) (October
2018) (“If a mark is comprised in part of matter that, as applied to the goods or
services, is generic or does not function as a mark, the matter must be disclaimed to

20 Id.
21 Id. The mere submission of a list of third-party registrations does not make these
registrations part of the record. See In re Compania de Licores Internacionales S.A., 102
USPQ2d 1841, 1843 (TTAB 2012) (mere listing of third-party registrations in brief
insufficient to make them of record); In re 1st USA Realty Prof'ls, Inc., 84 USPQ2d 1581, 1583
(TTAB 2007); In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974). To make registrations of
record, copies of the registrations or the complete electronic equivalent (i.e., complete
printouts taken from the USPTO's Trademark database) must be submitted. See In re Ruffin
Gaming LLC, 66 USPQ2d 1924, 1925 n.3 (TTAB 2002). Accordingly, we have given no
consideration to the list of registrations referenced in Applicant’s appeal brief.
Moreover, Applicant’s argument that the Long Beach, California restaurant is Applicant’s
customer is predicated on its attorney’s assertion, which is not evidence. See Gemtron Corp.
v. Saint-Gobain Corp., 572 F.3d 1371, 91 USPQ2d 1409, 1415 (Fed. Cir. 2009) (a party's
“unsworn attorney argument . . . is not evidence”); Zheng Cai v. Diamond Hong, Inc., 901
F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018) (“Attorney argument is no substitute for
evidence.”) (citation omitted). Thus, this mere argument has no probative value in our
analysis.

Serial No. 87553899
-11-
permit registration on the Principal Register (including registration under §2(f) of the
Act) or on the Supplemental Register.) (emphasis added). The issue before us then
is to determine whether the combination of the dictionary definition and Internet
materials submitted by the Examining attorney constitutes “clear evidence”
demonstrating that the addition of the term CERTIFIED to the generic wording
CHIANINA BEEF maintains the generic nature of the designation CERTIFIED
CHIANINA BEEF as a whole in relation to the identified goods. We find it does not.
While the evidence submitted by the Examining Attorney shows that the wording
“certified Chianina beef” appears together, this evidence alone does not necessarily
support a finding that the wording, when viewed its entirety, is generic for “dressed
beef from Chianina cattle.” In fact, the word “certified” has often been held to be only
a merely descriptive term in connection with a variety of goods and services. In re
88Open Consortium Ltd., 28 USPQ2d 1314, 1316 (TTAB 1993) (“[T]he words
COMPATIBILITY CERTIFIED are descriptive”); In re Eden Foods Inc., 24 USPQ2d
1757, 1761 (TTAB 1992) (“Accordingly, because the term ‘DOUBLE CERTIFIED
ORGANIC’ conveys forthwith the notion that its goods are doubly certified as an
organic food product, applicant's mark is merely descriptive of pasta”).
We do recognize, however, that the Board has held in other contexts that the
addition of the term “certified” to other generic matter will render a mark incapable
of functioning as a source indicator, when the applied-for mark is considered as a
whole. More specifically, when the term “certified” is used in connection with
certification services, the term has been found to be generic for such services. See,
Serial No. 87553899
-12-
e.g., In re Software Publishers Ass’n, 69 USPQ2d 2009 (TTAB 2003) (CERTIFIED
SOFTWARE MANAGER found generic for an applied-for certification mark for
“software asset and licensing management”); In re Mortg. Bankers Ass’n of Am., 226
USPQ 954, 956 (TTAB 1985) (“[A]pplicant’s services comprise an examination and
testing procedure for mortgage banker[s], the successful completion of which
‘certifies' that is, that he or she has achieved a certain level of quality of fitness in the
mortgage banking field. In our view, the designation sought to be registered
[CERTIFIED MORTGAGE BANKER] is so highly descriptive of applicant's services,
which essentially are the providing of a certification program for mortgage bankers,
as to be incapable of identifying the source of those services”).
Unlike these latter cases, Applicant is not seeking to register a certification mark
nor is there any evidence of record showing that Applicant is certifying the meat
products it sells under its applied-for mark as authentic Chianina beef. The evidence
demonstrates that the certification of Chianina beef is controlled in Europe under the
European PGI classification of “white veal of the Central Apennines” and is
administered by an Italian governmental organization, i.e., Consorzio Produttori
Carne Bovina Pregiata delle Razze Italianea.22 As discussed above, however, there is
no comparable evidence that there is a U.S. certifying body for domestically produced
Chianina beef.
Here, we find that the term “certified” is an adjective that merely describes the
wording “Chianina beef,” which of course, identifies the goods at issue. See

22 April 6, 2018 Office Action, TSDR pp. 10-12.
Serial No. 87553899
-13-
MCCARTHY, supra, at § 12:20 (“Conceptually, a descriptive term is usually an
adjective that describes a thing, while a generic term names the thing.”). Specifically,
the word “certified” describes a characteristic or quality of Applicant’s goods, namely,
that the meat product sold by Applicant is authentic or genuine Chianina beef. See
In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed.
Cir. 2012) (a mark is merely descriptive of goods or services if it conveys an immediate
idea of an ingredient, quality, characteristic, feature, function, purpose or use of
the goods or services). (emphasis added).
We further find that the evidence submitted by the Examining Attorney does not
amount to clear evidence of genericness. In addition to the dictionary definition of the
term “certified” and articles describing the meat product Chianina beef itself, the
Examining Attorney submitted evidence from only ten websites, as noted earlier, that
show use of the wording “certified Chianina beef.”23 Most of this Internet evidence
originates from Italian websites. We acknowledge that the Italian websites are in
English and that such foreign websites may be probative in certain cases. See, e.g., In
re Bayer AG, 488 F.3d 960, 969, 82 USPQ2d 1828, 1835 (Fed. Cir. 2007) (finding

23 The Examining Attorney also submitted evidence from the website www.cooksinfo.com.
See April 6, 2018 Office Action, TSDR p. 10. This particular website excerpt does not use the
wording “certified chianina beef” as a unitary phrase. Instead, the article explains the
certification process of Chianina beef by an Italian governmental agency.
Moreover, three of the Italian websites, i.e., www.agricolasangiobbe.it,
www.cortonamia.com, and www.labucaaccia.it, refer to Chianina beef not solely as “certified
Chianina beef,” but either as “PGI certified Chianina beef, “IGP certified Chianina beef,” or
“I.G.P. certified Chianina beef.” See October 9, 2018 Final Office Action, TSDR p. 11-12. As
previously mentioned, the PGI or IGP is the European agency charged with the classification
system for white veal products from the Central Apennines mountain range in Italy. The
other Italian websites also appear to refer to Chianina beef produced in Italy.
Serial No. 87553899
-14-
foreign website or foreign news publication evidence carries some probative value as
to prospective consumer perception in the United States because of the “growing
availability and use of the internet as a resource for news, medical research results,
and general medical information”); In re Well Living Lab Inc., 122 USPQ2d 1777,
1781 n.10 (TTAB 2017) (finding foreign website evidence relevant because potential
consumers would likely encounter those English language websites when searching
for companies offering services similar to applicant). We nonetheless find that the
amount and type of Internet evidence submitted, in its totality, does not rise to the
level of clear evidence demonstrating that the relevant U.S. consumer would
understand the designation CERTIFIED CHIANINA BEEF, when viewed in its
entirety, as the genus or sub genus of Applicant’s identified goods. See, e.g., In re
Tennis Indus. Ass’n, 102 USPQ2d 1671, 1680 (TTAB 2012) (five examples found to be
insufficient evidence that TENNIS INDUSTRY ASSOCIATION was generic).
In view of the foregoing, we conclude that, taken as a whole, the wording
CERTIFIED CHIANINA BEEF is descriptive, albeit highly descriptive, of Applicant’s
goods, but not generic.
Decision: The refusal to register Applicant’s applied-for CERTIFIED CHIANINA
BEEF mark on the Supplemental Register on the ground that the designation, in its
entirety, is generic for the identified goods under Sections 23(c) of the Trademark Act
is reversed.