La Creme, Inc.

Trademark Trial and Appeal Board

Jun 10, 1997

EX (T.T.A.B. Jun. 10, 1997)

THIS DISPOSITION IS NOT CITABLE AS PRECEDENT
OF THE TTAB JUNE 10, 1997
Hearing: Paper No. 20
December 18, 1996 EJS
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re La Creme, Inc.
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Serial No. 74/412,080
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John M. Cone of Strasburger & Price, L.L.P. for La Creme,
Inc.
Nora Buchanan Will, Trademark Examining Attorney, Law Office
101 (E. Ronald Williams, Managing Attorney)
Before Seeherman, Quinn and Walters, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
La Creme, Inc., doing business as La Creme Coffee and
Tea, has applied to register CAFFESORBETTO as a trademark
for "preparations for making mocha and coffee flavored soft
drinks.1 A final refusal of registration has issued
pursuant to Section 2(e)(1) of the Trademark Act, 15 U.S.C.
1052(e)(1), on the ground that applicant's mark is merely

1 Application Serial No. 74/412,080, filed July 13, 1993 and
asserting first use and first use in commerce on June 7, 1991.
Ser No. 74/412,080
2
descriptive of the identified goods. Applicant appealed,
and an oral hearing was held before this Board.2
It is the Examining Attorney's position that, under the
doctrine of foreign equivalents, the entire term
CAFFESORBETTO is merely descriptive in that it immediately
conveys the information that applicant's goods are used for
making coffee-flavored iced drinks. The Examining Attorney
bases this position on the Italian translations of the
individual words, "caffe" and "sorbetto," which are
translated, respectively, as "coffee, coffeehouse, or cafe"
and "ice cream, iced drink, or sherbet." These translations
were provided by applicant, and were confirmed by excerpts
taken from Cassell's Italian Dictionary (1958), which were
submitted with the Examining Attorney's appeal brief and
which we judicially notice. The Examining Attorney has also
made of record excerpts taken from the NEXIS data base which
refer, in part, to "cafe sorbetto" or "caffesorbetto" as
being "like a coffee milkshake,"3 "an expresso-flavored

2 We note that there are certain references in applicant's
papers which would be consistent with a claim of acquired
distinctiveness. Specifically, with its request for
reconsideration applicant submitted a declaration from a
restaurant operator which states that he regards CAFFESORBETTO
as a trademark of applicant's, and that to members of the trade
and purchasing public it means the mix and drinks originating
with applicant. And, in its reply brief, applicant refers to
the NEXIS evidence as supporting the view that applicant's mark
has acquired distinctive recognition. Reply brief, p. 5.
However, applicant has never formally stated that it is seeking
registration pursuant to Section 2(f), and aside from these two
references there is no indication that such is applicant's
intention. Accordingly, the sole issue before us is whether
CAFFESORBETTO is inherently distinctive, or whether it is merely
descriptive of applicant's goods.
3 "The Dallas Morning News," October 23, 1992.
Ser No. 74/412,080
3
granita,"4 "a lightly frozen blend of coffee and cocoa that
has triple the caffeine content of regular coffee,"5 and an
"iced cappucino dessert...made in a granita machine that
whips and freezes the cappucino at the same time."6
Applicant has acknowledged that these references are to
applicant's own product.
A term is merely descriptive, within the meaning of
Section 2(e)(1) of the Trademark Act, if it immediately
conveys information concerning a quality, characteristic,
function, ingredient, attribute or feature of a product or
service. The question is not decided in a vacuum, but in
relation to the goods on which, or the services in
connection with which, the mark is used. In re Venture
Lending Associates, 226 TTAB 285, 286 (TTAB 1985).
Moreover, it is well established that the foreign equivalent
of a merely descriptive English word is no more registrable
than the English word itself, despite the fact that the
foreign term may not be commonly known to members of the
general public in the United States. In re Atavio, 25
USPQ2d 1361 (TTAB 1992); In re Optica International, 196
USPQ 775 (TTAB 1977).
We find that applicant's mark is merely descriptive,
within the meaning of Section 2(e)(1) of the Act. The words
CAFFE SORBETTO translate as "coffee iced drink," and
applicant's product, as the record shows, is used to make a

4 "Supermarket News," May 10, 1993.
5 "Progressive Grocer," March 1995.
6 "The Houston Chronicle," September 23, 1992.
Ser No. 74/412,080
4
coffee-flavored iced soft drink. Although applicant's mark
is depicted as one word, CAFFESORBETTO, rather than as the
two words CAFFE SORBETTO, the running together of the words
does not change the commercial impression of this term as
being comprised of the words "caffe" and "sorbetto." This
is evidenced by the fact that in many of the articles
applicant's product is referred to as "caffe sorbetto" or
"cafe sorbetto." Further, "caffe" and "sorbetto" are
ordinary words which will be recognized by most people who
are familiar with the Italian language, and they will
immediately perceive that CAFFESORBETTO is a combination of
these words, rather than some strange arbitrary term.
As a result, the present situation differs from that
presented in In re Ron Matusalem, Inc., 196 USPQ 458 (TTAB
1977), on which applicant relies. In that case, the Board
found that, although RONCOCO was comprised of the
individually descriptive words RON (rum) and COCO (coconut),
the combination presented a unitary mark that the average
purchaser would not attempt to translate.7
Applicant also argues that there are a multiplicity of
meanings for the words involved, and that the Examining
Attorney has made a contrived translation to reach the

7 Applicant also relies on Jules Berman & Assoc. v.
Consolidated Distilled Products, 202 USPQ 67 (TTAB 1979).
However, the facts presented in that case (it involved the issue
of likelihood of confusion, and whether the fact that CHULA,
which has a meaning in Spanish, would be known to consumers such
that they would be able to distinguish this mark from KAHLUA,
which has no meaning, based on the differences in connotation)
are so different from those before us here that we do not find
this case relevant to our decision herein.
Ser No. 74/412,080
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conclusion that CAFFESORBETTO means coffee iced drinks. We
are not persuaded by this argument. As noted above, the
determination of whether a term is merely descriptive is not
made in a vacuum, but is made in relation to the goods on
which the mark is used. When viewed in connection with
"preparations for making mocha and coffee flavored soft
drinks," CAFFE will not be viewed as "coffeehouse" or
"cafe," nor will SORBETTO be given the translation of "ice
cream" or "sherbet." Rather, when the mark CAFFESORBETTO is
considered in light of the identified goods, consumers will
immediately translate the mark as "coffee iced drink," which
translation is, in fact, merely descriptive of the goods.
Decision: The refusal of registration is affirmed.
E. J. Seeherman
T. J. Quinn
C. E. Walters
Administrative Trademark Judges
Trademark Trial and Appeal Board