Kohr Brothers, Inc.

Trademark Trial and Appeal Board

Jan 5, 2009

No. 78963463 (T.T.A.B. Jan. 5, 2009)

Mailed: January 5, 2009
JST

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Kohr Brothers, Inc.
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Serial No. 78963463
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James C. Wray, Esq. for Kohr Brothers, Inc.

Chrisie Brightmire King, Trademark Examining Attorney, Law
Office 109 (Dan Vavonese, Managing Attorney).
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Before Walsh, Taylor and Bergsman, Administrative Trademark
Judges.

Opinion by Taylor, Administrative Trademark Judge:

Kohr Brothers, Inc. has filed an application to
register the mark THE TASTE OF PREMIUM ICE CREAM WITH THE
CALORIES OF YOGURT (in standard character form) on the
Principal Register for goods identified as “frozen
custards.”1 Registration has been refused under Sections 1,
2, 3 and 45 of the Trademark Act, 15 U.S.C. §§ 1051-1053
and 1127, on the ground that the proposed mark, as used in

1 Application Serial No. 78963463.

THIS OPINION IS NOT A
PRECEDENT OF
THE TTAB
Ser No. 78963463
2
the specimen, is informational matter and does not function
as a trademark.
When the refusal was made final, applicant appealed.
Both applicant and the examining attorney have submitted
briefs. We affirm the refusal to register.
As a preliminary matter, we address applicant’s
objection to the examining attorney’s “evidence from Golden
Spoon” as not being presented before trial. (Reply Br. p.
2). The “evidence” consists of web pages2 featuring Golden
Spoon frozen yogurt retrieved from a search of the Google
search engine for the search terms “the taste of premium
ice cream.” The objection is overruled inasmuch as this
evidence is timely, having been submitted, though not
specifically mentioned, with the examining attorney’s final
office action. Accordingly, the web pages have been
considered in this decision. We add that even if we had
not considered the web pages, our decision would be the
same.
We turn then to the merits of the appeal. The sole
issue for consideration is whether the phrase THE TASTE OF
PREMIUM ICE CREAM WITH THE CALORIES OF YOGURT, as depicted

2 The web pages are located at www.hometownstation.com/Golden-
spoon-frozen-yogurt-25.html+%.
Ser No. 78963463
3
in the specimen, is used as a trademark to distinguish the
goods listed in the application from the goods of others.
As stated by the Court in In re Bose Corp., 546 F.2d
893, 192 USPQ 213, 215 (CCPA 1976): “The Trademark Act is
not an act to register mere words, but rather to register
trademarks. Before there can be registration, there must
be a trademark, and unless words have been so used they
cannot qualify.” Therefore, we begin our analysis with
Section 45 of the Trademark Act of 1946, as amended, where
“trademark” is defined as “any word, name, symbol, or
device, or any combination thereof … used by a person … to
identify and distinguish his or her goods, including a
unique product, from those manufactured or sold by others
and to indicate the source of the goods, even if that
source is unknown.” 15 U.S.C. § 1127. This section
further provides that a mark shall be deemed to be in use
in commerce on goods when “it is placed in any manner on
the goods or their containers or the displays associated
therewith … and the goods are sold or transported in
commerce.” Id. The mere fact that a designation appears
on the specimens of record does not make it a trademark.
Id. That is, to be a mark, the term, or slogan [or phrase]
must be used in such a manner that it would be readily
perceived as identifying the specified goods and
Ser No. 78963463
4
distinguishing a single source or origin for the goods. In
re Safariland Hunting Corp., 24 USPQ2d 1380 (TTAB 1992).
A critical element in determining whether a term, or
slogan, is a trademark is the impression that it makes on
the relevant public. Therefore, in this case, the inquiry
becomes whether the phrase THE TASTE OF PREMIUM ICE CREAM
WITH THE CALORIES OF YOGURT will be perceived as a source
indicator or as merely informational.
We determine how the applied-for mark is perceived by
examining the specimen of use along with any other relevant
material submitted by applicant during prosecution of the
application. In re Safariland, supra. Here, the specimen
of record, shown below, is described as a store sign:

Ser No. 78963463
5
Applicant maintains that the applied-for slogan THE
TASTE OF PREMIUM ICE CREAM WITH THE CALORIES OF YOGURT “has
been used as a trademark continuously and exclusively by
Applicant Kohr Brothers, Inc. for more than seven years”
and “is recognized as an indication of source of frozen
custard.” (Applicant’s brief p. 4).
The examining attorney, on the other hand, argues
that, as used on the specimens of record, applicant’s
proposed mark is informational matter and does not function
as a trademark.
As evidence that the applied-for slogan will be
perceived by purchasers as merely informational, the
examining attorney made of record excepts from articles
taken from the Internet which include an excerpt from a
third-party website for Golden Spoon frozen yogurt where
that entity uses the phrase “the taste of premium ice
cream” to impart information about its yogurt.
Specifically, the Golden Spoon website states with regard
to the yogurt: “It’s the taste of premium ice cream,
without the fat and extra calories.” (Attachments to the
Final Office Action).3

3 The examining attorney also made of record Internet articles
which refer to applicant and use applicant’s applied-for slogan
in an informational manner. For example, the website entitled
“Yahoo Answers” references the phrase sought to be registered as
an informational statement, rather than a trademark, in response
Ser No. 78963463
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We agree with the examining attorney that the phrase
THE TASTE OF PREMIUM ICE CREAM WITH THE CALORIES OF YOGURT
as it appears on the specimen does not function as a
trademark, inasmuch as it would not be so perceived by
purchasers. Applicant is correct that a slogan can
function as a trademark. However, if, as in this case, the
slogan is used in a merely informational manner, it cannot
function as a trademark. See Roux Laboratories, Inc. v.
Clairol Inc. 427 F.2d 823, 166 USPQ 34 (CCPA 1970). As
used by the applicant,
[t]he proposed mark does not stand out as a
trademark on the specimen. There are five
bullets on applicant’s informational point of
sale display. They all provide general
information about the applicant’s yogurt.
Applicant’s proposed mark is displayed as the
fifth bullet of information, in the same font
and typeface as the remaining bullets. It is
not distinguished from the other informational
matter on the specimens, such as by being
displayed in a different style, larger font, or
in a bolded form. As displayed, it appears to
be just one more information about the goods,
and would not be viewed as a trademark to
indicate the source of the goods.

(Examining attorney’s brief at unnumbered p. 2.) Simply
put, we find that, as presented on the specimen,
applicant’s applied-for mark does not identify the source

to the question “Do all kohr bros (sic) ice cream have basically
the same nutritional information?” Response: “Their website
boast that their frozen custard has ‘the taste of premium ice
cream with the calories of yogurt.’”

Ser No. 78963463
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the applicant’s goods. Rather, the slogan merely conveys
information about applicant’s goods, i.e., that while
applicant’s frozen custard taste like premium ice cream, it
has the calories of yogurt. See, e.g., In re Melville
Corporation, 228 USPQ 970, 971 (TTAB 1986) (consumer’s will
view BRAND NAMES FOR LESS as a merchandising slogan
conveying information about applicant’s services); In re
Wakefern Food Corp, 222 USPQ at 78 (WHY PAY MORE! would be
perceived as a familiar phrase suggesting that applicant’s
stores offer lower prices); and In re Tilton Warren, Inc.,
221 USPQ 86, 88 (TTAB 1984) (WATCH THAT CHILD is a familiar
safety slogan and would not be perceived as a trademark).
Furthermore, applicant’s unsupported argument that its
applied-for mark has been used as a trademark for more than
seven years is unavailing. Although applicant may have
used the slogan for many years, there is no evidence that
such use was in a trademark manner; that is, that the
purchasing public would recognize the phrase “the taste of
premium ice cream with the calories of yogurt” as a brand
of frozen custard instead of an informational statement.
Indeed, as demonstrated by the previously-referenced Golden
Spoon website, at least one competitor has used a similar
phrase to convey information about frozen confections.
Ser No. 78963463
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Last, and although not argued by applicant, we point
out that applicant’s use of the barely noticeable “TM”
designation next to the applied-for mark on the specimen
does not render it source-indicating. See In re Brass-
Craft Manufacturing Co., 49 USPQ2d 1849 (TTAB 1998); In re
Remington Products Inc., 3 USPQ2d 1714 (TTAB 1987) (The
presence of the letters “TM” cannot transform an otherwise
unregistrable designation into a mark.).
In conclusion, for the reasons discussed above, we are
of the opinion that the phrase, THE TASTE OF PREMIUM ICE CREAM
WITH THE CALORIES OF YOGURT, as used in the specimen of record,
fails to function as a trademark to identify and distinguish
applicant’s frozen custards.

Decision: The refusal to register under Sections 1,
2, 3 and 45 of the Trademark Act is affirmed.