Le Chateau de la Mere, S.A.

Trademark Trial and Appeal Board

Mar 27, 2009

No. 79009981 (T.T.A.B. Mar. 27, 2009)

Mailed: March 27, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re LE CHÂTEAU DE MA MERE, société anonyme
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Serial No. 79009981
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Frederick W. Meyers of Ladas & Parry LLP for LE CHÂTEAU DE MA
MERE, société anonyme.

Zachary R. Bello, Trademark Examining Attorney, Law Office 111
(Craig D. Taylor, Managing Attorney).
_______

Before Seeherman, Holtzman and Cataldo, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Applicant, LE CHÂTEAU DE MA MERE, société anonyme, has filed
an application to register on the Principal Register the mark
ROUGE TOMATE, in standard character form, for goods ultimately
identified as "dried and cooked fruits," in Class 29; and

THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Serial No. 79009981
2
"sauces, barbecue sauce, and ketchup," in Class 30.1 The
application states, "The English translation of ROUGE TOMATE is
'tomato red.'"
The trademark examining attorney has refused registration as
to the goods in Class 30 on the ground that the mark is merely
descriptive of the goods under Section 2(e)(1) of the Trademark
Act.2
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs.
We first address some procedural and evidentiary matters.
Applicant, in its reply brief, requests to amend its
identification to delete "ketchup" from the Class 30 goods. The
request to amend is denied. The amendment is not only untimely,
but was not properly made by a separate request for a remand.
Furthermore, the amendment would serve no useful purpose. As
discussed below, even without this item in the identification of
goods we affirm the refusal.

1 Application Serial No. 79009981, filed January 12, 2005, based on a
request for extension of protection under Section 66(a) of the
Trademark Act. The application originally included additional goods in
Classes 29 and 30; goods in Class 32; and services in Classes 41 and
43; all of which were at some point during prosecution divided out of
this application and into "child" applications under Serial Nos.
79975040 (Classes 29 and 30); 79975049 (Class 32); and 79975024
(Classes 41 and 43).

2 The refusal applies only to the goods in Class 30. The examining
attorney's initial refusal as to "dried and cooked fruits" in Class 29
was subsequently withdrawn.
Serial No. 79009981
3
As an evidentiary matter, we note that applicant submitted a
list of 28 third-party registrations for marks containing the
term "TOMATO" with its response of September 29, 2006; and
applicant provided certain information about a third-party
registration and a pending application, both for marks containing
"ROUGE," with its response of February 21, 2006. Because
applicant did not submit copies of the referenced registrations
and application, this evidence is not properly of record. See In
re Carolina Apparel, 48 USPQ2d 1542, 1542 n.2 (TTAB 1998) ("The
Board does not take judicial notice of third-party registrations,
and the mere listing of them is insufficient to make them of
record"); and In re Consolidated Cigar Co., 35 USPQ2d 1290, 1294
n.4 (TTAB 1995) ("the Board does not take judicial notice of
either applications or registrations merely because they reside
in the Patent and Trademark Office"). However, inasmuch as the
examining attorney did not advise applicant of the evidentiary
insufficiency of the listings at a point where applicant could
have corrected the problem, we will consider the information
provided by applicant with regard to the application and
registrations for whatever probative value it may have.3

3 We have considered the evidence in this application file only insofar
as it is relevant to the particular goods remaining in this application
and to which the refusal to register applies. Thus, the propriety or
probative value of any evidence in this file relating to goods which
have been moved into a separate application (e.g., "fruit juices"), or
goods for which the refusal has been withdrawn ("dried and cooked
fruits") need not be considered or addressed.
Serial No. 79009981
4
Moreover, both applicant and the examining attorney attached
untimely evidence to their appeal briefs. Applicant submitted a
printout of its Registration No. 3329775 (which issued from its
"child" application Serial No. 79975024) and, in a filing
separate from its appeal brief, a printout of its Registration
No. 3509055 (which issued from "child" application Serial No.
79975040).4 The examining attorney, for his part, attached
and/or referenced without attachments, a Wiktionary entry for
"tomato"; Wikipedia entries for "tomato (color)," "ketchup" and
"tomato sauce"; the website bbq.about.com/cs/sauces with an entry
for "tomato based sauces"; and an entry for "ketchup" from
dictionary.reference.com. Neither applicant nor the examining
attorney objected to the timeliness of the evidence submitted by
the other. To the extent the evidence has been addressed on the
merits, we deem such evidence to have been stipulated into the
record.5 Thus, we will consider the registrations submitted by

4 While these registrations may have issued after the record in this
case closed, the proper procedure would have been for applicant to
request a remand to introduce this new evidence. We recognize that
these registrations issued from applications which originally formed
part of the file in this case. However, once applications are divided
out of a file, they proceed as separate applications, and neither the
applications nor any subsequent history of the applications will be
considered of record unless such evidence is timely and properly made
of record.

5 Contrary to the examining attorney's apparent contention,
Wikipedia/Wiktionary evidence is not proper subject matter for judicial
notice. The Board will not take judicial notice of evidence from
sources which are available only online. See In re CyberFinancial.Net
Inc. , 65 USPQ2d 1789, 1791 n.3 (TTAB 2002). The Board may, however,
take judicial notice of online reference works which exist in printed
Serial No. 79009981
5
applicant and the definition of "tomato (color)" submitted by the
examining attorney.
We turn now to the question of whether ROUGE TOMATE,
translated as "tomato red," is merely descriptive of "sauces,
barbecue sauce and ketchup." The examining attorney argues that
the mark describes the primary ingredient of the identified
goods, namely "red tomato." The examining attorney contends,
pointing to the Wikipedia entry for "tomato (color)," that tomato
"is assumed to be a type of color." The Wikipedia entry for
"tomato (color)" states, "The web color tomato is a medium
reddish-orange color that is the color not of actual tomatoes
(which are redder), but of tomato soup." The examining attorney
concludes that "ripe TOMATO is in red color, or shade of red and
green TOMATO, which is unripe, are [sic] nothing but ingredients
of sauces, barbecue sauce and ketchup."
Applicant argues that the terms ROUGE and TOMATE, which are
French words, translate as "tomato red," not "red tomato," as the
examining attorney seems to claim. Applicant agrees with the
examining attorney's statement that "tomato red" is a color,
contending that the term "tomato" modifies the word "red" to
convey a specific shade of red. Therefore, according to
applicant, the term describes a particular color rather than a

form or have regular fixed editions. See Boston Red Sox Baseball Club
LP v. Sherman, 88 USPQ2d 1581, 1590 n.8 (TTAB 2008).
Serial No. 79009981
6
fruit or vegetable. Noting its prior registrations for ROUGE
TOMATE that include a translation as "tomato red," applicant
argues that the USPTO has previously accepted and acknowledged
the proper English translation of applicant's mark.6
A term is merely descriptive within the meaning of Section
2(e)(1) if it immediately conveys knowledge of an ingredient,
quality, characteristic, function, feature, purpose or use of the
goods or services with which it is used. In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). The
question of whether a particular term is merely descriptive must
be determined not in the abstract or on the basis of guesswork,
but by considering the mark in relation to the goods or services
for which registration is sought, the context in which the term
is used, and the possible significance that the term is likely to
have to the average purchaser as he encounters the goods or
services in the marketplace. See In re Engineering Systems
Corp., 2 USPQ2d 1075 (TTAB 1986).
The evidence shows that the term "tomato" describes a
primary ingredient of sauces, barbecue sauce and ketchup. We
take judicial notice that tomatoes are commonly used "as a

6 Applicant specifically states that the reference to its prior
registrations "is solely as evidence of the correct translation of its
mark" and not to show that the mark is registrable for the goods in
this case.
Serial No. 79009981
7
flavouring and thickener for a range of soups, sauces and other
cooked dishes";7 that "[t]he most common sauces are either
tomato- or cream-based";8 that barbecue sauce is "a piquant sauce
often containing vinegar, tomatoes, sugar, and spices;"9 and that
ketchup is "a thick sauce made from tomatoes, vinegar, [and]
spices,...also called tomato ketchup."10
In addition, the examining attorney has submitted pages from
a number of third-party websites with recipes for various "tomato
sauces" or tomato-based sauces. The recipes include "Basic
Tomato (Pomodoro) Sauce" and "Simple Tomato Sauce
(foodnetwork.com); "How To Make Tomato Sauce"
(howtodothings.com); "Homemade Spaghetti Sauce From Fresh
Tomatoes" (cooks.com); and multiple recipes for "Homemade Tomato
Sauce" from cooks.com. The record also includes recipes for
barbecue sauce, which is often a tomato-based sauce, for example,
"Mango Barbecue Sauce made with fresh tomatoes" called a "Burning
Tomato Barbecue Sauce," "Cliff's Carolina Barbecue Sauce" a

7 Dictionary of Food: International Food and Cooking Terms from A to Z
(Charles Sinclair 1998; Bloomsbury Publishing Plc 2004; A&C Black
Publishers Ltd 2005), from the website credoreference.com.

8 Encyclopædia Britannica ("Preparation of meal components > Sauce:
frozen-prepared-food"), from Encyclopædia Britannica Online, at
http://search.eb.com.

9 Dictionary.com Unabridged, based on the Random House Dictionary
(Random House, Inc. 2009), from dictionary.com.

10 Chambers 21st Century Dictionary (Chambers Harrap Publishers Limited
2001), from credoreference.com.
Serial No. 79009981
8
"tomato barbecue sauce," and "Basic Barbecue Sauce" a "classic
tomato style barbecue sauce," all from the website about.com; and
recipes for "Homemade Barbecue Sauce from Fresh Tomatoes"
described as "sweet, tomato-based Memphis sauces," from the
website pickyourown.org.
The term "red" describes the color of the tomato.11 Tomatoes
are usually red, but they also come in other colors such as
yellow as well as green, the color of underripe tomatoes used as
ingredients of certain food products.12 We note the link to a
recipe for "green tomato ketchup" which appears on the website
allthingsfrugal.com. The record also includes third-party websites
with recipes calling for red tomatoes, including a recipe for
"Making and Canning Homemade Barbecue Sauce from Fresh Tomatoes"
calling for "peeled, cored, chopped red ripe tomatoes"
(pickyourown.org); and an article entitled "You Say Tomato...how

11 Applicant takes issue with the examining attorney's statement that
"color is always descriptive of goods." The examining attorney cites
no authority for that excessively broad statement but, in any event,
the only question we are concerned with is whether "red" is descriptive
in the context of the mark and goods in this case.

12 We take judicial notice of the following definitions of "tomato."
The American Heritage Dictionary of the English Language (4th ed. 2000):
"A widely cultivated South American plant...having edible, fleshy,
usually red fruit" (Onelook.com); and the Compact Oxford English
Dictionary of Current English (3rd ed. 2005): "a glossy red or yellow
edible fruit, eaten as a vegetable or in salads" (Id.). The Dictionary
of Food: International Food and Cooking Terms from A to Z, supra,
defines "green tomatoes" as "Underripe tomatoes sometimes used to make
chutney."
Serial No. 79009981
9
to make a basic tomato sauce" recommending tomatoes that have "a
deep red color" (digsmagazine.com).
There is no question that the term "red tomato" is merely
descriptive of a primary or basic ingredient of ketchup, tomato
sauce and other tomato-based sauces, such as barbecue sauce,
which consist of or include "red tomatoes."13 Applicant's mark
ROUGE TOMATE, or "tomato red", is simply a reversal of the merely
descriptive term "red tomato." The mere transposition of words
does not automatically turn a descriptive term into a non-
descriptive mark. See In re Away Chemical Corp., 217 USPQ 275,
276 (TTAB 1982) ("the transposition of 'tablets for pans' to
'pan-tablets' is insufficient to overcome the "basic descriptive
cast" of the involved mark); and In re Dairimetics, Ltd., 169
USPQ 572 (TTAB 1971) (ROSE MILK is synonymous in meaning to
"recognized descriptive name" "Milk of Roses" for a rose scented
cosmetic preparation). We do not find that the transposition of

13 Applicant argued in response to the first Office action that "rouge"
has a meaning in English as connoting a cosmetic product "used to
redden a user's lips or cheeks" and that this is the meaning that
consumers who speak only English would associate with the mark.
Applicant did not pursue this argument in any subsequent responses or
in its brief, and in any event, this argument is unpersuasive. The
relevant public, in a case involving a foreign language mark, includes
those who are knowledgeable in English as well as the pertinent foreign
language, in this case French. See In re La Peregrina Ltd., 86 USPQ2d
1645, 1647-48 (TTAB 2008); and In re Thomas, 79 USPQ2d 1021, 1025 (TTAB
2006). Moreover, the goods in this case are food products, not
cosmetics. That a term may have other meanings in different contexts
is not relevant. See In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB
1979).
Serial No. 79009981
10
the words in this case, when viewed in relation to tomato-based
sauces, creates a term with a different meaning or commercial
impression. The term as a whole still signifies a tomato that is
red, regardless of the order of the words.
The single reference to "tomato red" as a "web color," and
with no indication as to the meaning of a "web color," is
insufficient to establish that consumers are aware of "tomato
red" as designating a particular shade of red.14 Furthermore,
there is no evidence that "tomato red" would actually be
perceived by consumers as a color, rather than as a food product,
when the term is applied to tomato-based sauces.15
Applicant argues that "red" does not necessarily refer to
the color of tomatoes, noting that "Merriam-Webster Online lists
122 different definitions for "red," including 'glowing,'
'inciting or endorsing radical social or political change,
especially by force,' 'communist,'....to name a few." In

14 The mere appearance of a term in a dictionary does not necessarily
establish that the term is known to an appreciable number of Americans.
See E.I. du Pont de Nemours and Co. v. Sunlyra International Inc., 35
USPQ2d 1787, 1789 (TTAB 1995).

15 Applicant submitted an affidavit from Donald W. Hanley, CEO,
attesting to the translation of ROUGE TOMATE as "tomato red" and
stating that "A body of certificed [sic] translators had collectively
agreed to this opinion and one such comment succinctly captures their
unanimous position [that] 'Rouge tomate' is a shade of red...." While
we accept the translation as accurate, the view of some unidentified
"body of translators" is entitled to little weight on the question of
whether "tomato red" identifies a color or whether it would be
perceived as a color by the purchasing public.
Serial No. 79009981
11
addition, applicant argues that "red" may also be a proper name,
referring to babynamesworld.com which lists the name "Red" as a
derivation of "Redmond." Applicant maintains that in light of
these "alternate definitions," the mark ROUGE TOMATE is not
merely descriptive. (Brief, p. 8.)
This argument is not persuasive. As we have said, the
question of whether the mark is merely descriptive must be
determined, not in a vacuum, but rather in the context of the
mark and in relation to applicant's goods. The word "red," when
considered in the context of the translated mark "tomato red" and
in relation to applicant's tomato-based sauces including barbecue
sauce, would be immediately understood by purchasers of these
food products as referring to a tomato that is red in color, and
not to a person's name or political affiliation.
Applicant argues, pointing to its list of 28 third-party
registrations which include the word "Tomato" and which,
according to applicant, are "registered in Classes 29 and/or 30,"
that applicant's mark should be entitled to register as well.
Applicant also contends that because the mark CHIFFRE ROUGE
translated as "red figure" for jewelry was allowed to register
(Registration No. 2983389); and the mark ROUGE ALLURE for
cosmetics (Serial No. 78645514) was approved for publication, the
term "tomato red" should be similarly found to be not
descriptive. (Brief, pp. 10-11; Response, September 27, 2006.)
Serial No. 79009981
12
First, we point out that third-party applications are not
evidence of anything other than the fact that the applications
were filed on a certain date. See In re Juleigh Jeans Sportswear
Inc., 24 USPQ2d 1694, 1699 (TTAB 1992).
As to applicant's list of registrations, while the list is
considered of record, it is of no probative value because in
addition to lack of information about whether they are on the
Principal or Supplemental Register, or whether the term has been
disclaimed in those registrations, the list fails to include the
goods. Moreover, the examining attorney submitted printouts of
ten of the listed registrations showing in each instance that the
term "Tomato" has indeed been disclaimed. For example,
Registration No. 2770435 for TOMATO NAPOLI (and design) for goods
which include sauces and condiments is registered on the
Supplemental Register, and with a disclaimer of "tomato"; and
Registration No. 2714447 for the mark TOMATO FACE FOODS for
"spaghetti sauce and chili sauce" includes a disclaimer of
"Tomato" and "Foods." It is not sufficient to simply identify
the class of goods for which the marks are registered. At least
one registration, as shown by the printout submitted by the
examining attorney, is for dissimilar goods notwithstanding that
Serial No. 79009981
13
the goods are classified in Class 30.16 See Registration No.
2646282 for the mark ITALIAN TOMATO (and design) for candy and
other unrelated goods. Yet, even in that registration, the word
"Tomato" is disclaimed.
We find that the term ROUGE TOMATE, or "tomato red,"
directly and immediately describes a primary ingredient of
applicant's sauces, barbecue sauce and ketchup.
Decision: The refusal to register under Section 2(e)(1) of
the Trademark Act is affirmed.

16 For the same reason, the additional third-party registrations
submitted by the examining attorney for marks containing the disclaimed
word "tomato" are irrelevant.