La Salsa Holding Co.

Trademark Trial and Appeal Board

Feb 20, 1998

No. 74586109 (T.T.A.B. Feb. 20, 1998)

Paper No. 13
ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB FEB 20, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re La Salsa Holding Co.
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Serial No. 74/586,109
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Michael A. Painter of Isaacman, Kaufman & Painter for La
Salsa Holding Co.
Robert C. Clark, Jr., Trademark Examining Attorney, Law
Office 108 (David Shallant, Managing Attorney)
_______
Before Seeherman, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
La Salsa Holding Co. applied on October 17, 1994 to
register FRESH MEXICAN GRILL on the Principal Register as a
service mark for restaurant services.1 Exclusive rights to
the word MEXICAN were disclaimed. When the Examining
Attorney refused registration pursuant to Section 2(e)(1) of
the Trademark Act, applicant, on May 15, 1995, amended its

1 The application claims first use and first use in commence on
September 30, 1993.
Ser No. 74/586,109
2
application to seek registration on the Supplemental
Register.
Registration has been finally refused on the
Supplemental Register pursuant to Section 23 of the
Trademark Act, 15 U.S.C. 1091 on the ground that the
proposed mark is incapable of identifying applicant’s
services and distinguishing them from those of others.2
Both applicant and the Examining Attorney have
submitted briefs; an oral hearing was not requested.
The Examining Attorney has asserted that FRESH MEXICAN
GRILL is generic for restaurant services, and is therefore
incapable of distinguishing applicant’s services from those
of others. Essentially, the Examining Attorney contends
that FRESH MEXICAN GRILL refers to a particular type of
restaurant, in the same way that “ice cream parlor” or
“pizza parlor” does. He further states that FRESH MEXICAN
GRILL is generic for Mexican restaurant services which serve
fresh food.

2 In an earlier Office action the Examining Attorney had taken
the position that applicant’s mark was not registrable on the
Supplemental Register because it did not function as a service
mark. That reasoning, as applicant has pointed out, is not
applicable to the question of registrability on the Supplemental
Register, since to be registrable on that register a mark need
only be capable of distinguishing the applicant’s goods or
services. Although the Examining Attorney could certainly have
been clearer in stating the basis for the refusal, applicant has
been aware throughout prosecution of the application that
capability is the issue in question, and has addressed that as
the issue.
Ser No. 74/586,109
3
In support of his position the Examining Attorney has
made of record excerpts from 12 articles taken from the
NEXIS database which include the phrase “Fresh Mexican
Grill”. However, on closer examination, it is clear that in
all but 2 of the articles this phrase forms part of the name
of a restaurant: five of the articles are about Ramon’s
Fresh Mexican Grill; three mention Baja Fresh Mexican Grill;
and two mention Zuma: A Fresh Mexican Grill. The remaining
two articles are also about the Zuma restaurant, and refer
to “fresh Mexican grill” in quotes, as follows:
The tasty eats come by way of Zuma (it
calls itself “a fresh Mexican grill”)
“Rocky Mountain News,” November 17,
1995;
The 500 block of Grant Street sports two
new eateries, Moe’s Broadway Bagel and
Zuma, a “fresh Mexican grill.”
“Rocky Mountain News,” November 10, 1995
The Examining Attorney has also submitted with his
brief dictionary definitions of “fresh”, (“free from taint:
PURE; not altered by processing; not stale, sour, or
decayed”) and “grill” (“a usu. informal restaurant or dining
room esp. in a hotel”).3 The Examining Attorney asserts
that “fresh” as used in connection with restaurant services
is not incongruous.
Finally, the Examining Attorney argues that, as used on
the signage for applicant’s establishment, FRESH MEXICAN
Ser No. 74/586,109
4
GRILL “immediately and unmistakably indicates to the
relevant public to which the services are directed that
applicant is offering a restaurant service which serves
fresh Mexican food.” Brief, p. 3. This is because the
words FRESH MEXICAN GRILL are depicted in block letters
under the words LA SALSA, which is shown in stylized
letters.
A generic term is incapable of indicating source, and
thus is not registrable on the Supplemental Register. It is
the Office’s burden to show that a mark is generic. In re
Merrill Lynch, Pierce, Fenner and Smith Inc., 828 F.2d 1567,
4 USPQ2d 1141 (Fed. Cir. 1987). We find, on the record
presented herein, that the Office has not met its burden of
proving that the phrase FRESH MEXICAN GRILL is generic for
restaurant services.
The Examining Attorney himself has acknowledged that
the NEXIS evidence “is not a very substantial showing of
genericness based on the number of occurrences of this
term.” Brief, p. 5. We would certainly agree that the use
of the phrase only in connection with three restaurants is
indeed sparse evidence of genericness, particularly since
restaurants serving Mexican food have been in existence for
a very long time. One would expect that if FRESH MEXICAN
GRILL were indeed a generic term for restaurants serving

3 The Board may take judicial notice of dictionary definitions,
Ser No. 74/586,109
5
Mexican food, more references would have been found in the
vast NEXIS database.
Moreover, the references in the NEXIS excerpts which
have been made of record must be characterized as ambiguous.
FRESH MEXICAN GRILL appears as part of the names of each of
the restaurants listed in the excerpts. Thus, one cannot
conclusively determine whether the phrase is being used as
part of a trademark, rather than as a generic term for the
restaurant services. As for the two excerpts where “fresh
Mexican grill” is used as a descriptive phrase, the fact
that it is set out in quotes suggests that FRESH MEXICAN
GRILL is not recognized as a generic term. One would not
expect the same use of quotes if the phrase had been
“Mexican restaurant,” i.e., “The tasty eats come by way of
Zuma (it calls itself ‘a Mexican restaurant’).”
We agree with the Examining Attorney that FRESH is a
not incongruous term to describe food served in a Mexican
restaurant. We also acknowledge that consumers, viewing
applicant’s signage, will immediately understand that
applicant offers restaurant services featuring fresh Mexican
food. However, the question before us here is not whether
FRESH MEXICAN GRILL is merely descriptive of restaurant
services. Applicant has in effect conceded this by seeking
registration on the Supplemental Register. The question we

and we elect to do so in this case.
Ser No. 74/586,109
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must decide is whether the phrase FRESH MEXICAN GRILL is
capable of distinguishing applicant’s restaurant services
from those of others. Although the dictionary definition
submitted by the Examining Attorney shows that GRILL per se
is generic for restaurant services, and applicant has
admitted the generic nature of MEXICAN through its
disclaimer of that word, this record does not show that
FRESH is a generic term for applicant’s services, such that
when it is combined with MEXICAN GRILL the term FRESH
MEXICAN GRILL as a whole is generic. Cf. In re Gould Paper
Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987). Nor,
as we have stated above, is the evidence with respect to use
of the phrase FRESH MEXICAN GRILL sufficient to show that
consumers regard this as a generic term for restaurant
services.
Although we have found that the phrase FRESH MEXICAN
GRILL is, as a whole, capable of identifying applicant’s
restaurant services and distinguishing them from others, the
term GRILL is generic for such services and the refusal of
registration for FRESH MEXICAN GRILL must be affirmed absent
a disclaimer of that word, in addition to the previously
disclaimed word MEXICAN. Accordingly, applicant must submit
a disclaimer of MEXICAN GRILL before a registration may
issue.
Ser No. 74/586,109
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Decision: The refusal of registration without a
disclaimer of MEXICAN GRILL is affirmed. Applicant is
allowed thirty days to submit the required disclaimer,
following which this decision will be set aside.
E. J. Seeherman
P. T. Hairston
C. E. Walters
Administrative Trademark Judges
Trademark Trial and Appeal Board