Mecca Grade Growers, LLC

Trademark Trial and Appeal Board

Mar 12, 2018

No. 86358219 (T.T.A.B. Mar. 12, 2018)

This Opinion is a
Precedent of the TTAB

Mailed: March 12, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Mecca Grade Growers, LLC
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Serial No. 86358219
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Matthew R. Wilmot of Stoel Rives LLP,
for Mecca Grade Growers, LLC.
Dawn Feldman Lehker, Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.
_____

Before Zervas, Lykos and Masiello,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
Mecca Grade Growers, LLC (“Applicant”) seeks to register as a mark on the
Principal Register MECHANICALLY FLOOR-MALTED in standard characters for
“[m]alt for brewing and distilling” in International Class 31 and “[p]rocessing of
agricultural grain” in International Class 40.1 Applicant has appealed the Trademark

1 Application Serial No. 86358219, filed August 5, 2014, under Section 1(a) of the Trademark
Act, 15 U.S.C. § 1051(a), alleging July 14, 2014 as the date of first use anywhere and in
commerce.

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Examining Attorney’s final refusal to register the mark on the Principal Register
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that
it is merely descriptive of the identified goods and services and, alternatively, to
register the mark on the Supplemental Register, under Sections 23 and 45 of the
Trademark Act, 15 U.S.C. §§ 1091(c) and 1127, on the ground that the proposed mark
is generic, and is thus incapable of distinguishing the identified goods and services.
The appeal is fully briefed.
I. Procedural Background
The Examining Attorney initially refused registration under Trademark Act
Section 2(e)(1) on the ground that Applicant’s mark is merely descriptive of the
identified goods and services. The Examining Attorney also advised Applicant that
because the mark appeared to be generic, she could not suggest an amendment to
seek registration under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), or on
the Supplemental Register. In response, Applicant presented arguments that its
applied-for mark is neither merely descriptive nor generic; however, it did not amend
its application to seek registration under Section 2(f) or on the Supplemental
Register. Unconvinced, the Examining Attorney made final the descriptiveness
refusal under Section 2(e)(1).
Applicant then timely filed a notice of appeal and brief. Instead of briefing the
descriptiveness refusal, Applicant focused solely on the issue of genericness. 4
TTABVUE. The Examining Attorney correctly pointed out in her appeal brief that
because Applicant never formally sought to amend its application to seek registration
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on the Principal Register under Section 2(f) or on the Supplemental Register, the
issue of genericness was not before the Board. 6 TTABVUE. See Trademark Manual
of Examining Procedure (“TMEP”) §§ 1209.02(a)(i) and (ii) (Oct. 2017). This prompted
Applicant to file a request for remand and a formal amendment of its application to
seek registration in the alternative on the Supplemental Register. 7 & 9 TTABVUE.
Following the amendment, the Examining Attorney issued a refusal of registration
on the Supplemental Register under Trademark Act Sections 23 and 45 on the ground
that the mark is generic and therefore incapable of distinguishing the identified goods
and services, and the Examining Attorney ultimately made that refusal final. After
the appeal resumed, the Examining Attorney and Applicant then filed a second set of
appeal briefs. In this subsequent round of briefing, Applicant again focused solely on
the issue of genericness and failed to present arguments in its brief to refute the
descriptiveness refusal. 13 & 16 TTABVUE. Nonetheless, during prosecution,
Applicant made clear that its amendment to the Supplemental Register was made in
the alternative:
In amending to the Supplemental Register, Applicant makes no
admissions as to the distinctiveness (or the alleged lack thereof)
of its MECHANICALLY FLOOR-MALTED mark and this
amendment should not be interpreted or construed as such. All
arguments as to the distinctiveness of the mark are hereby
expressly reserved and retained by Applicant. (9 TTABVUE 1.)
This statement, along with Applicant’s statements in its brief (13 TTABVUE 5 at
n.2), indicate that Applicant does not concede that its mark is merely descriptive.
Thus, for purposes of completeness, we have exercised our discretion to consider
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Applicant’s arguments made during prosecution with regard to the descriptiveness
refusal.
II. Descriptiveness Refusal
We commence with the question of whether Applicant’s standard character mark
MECHANICALLY FLOOR-MALTED is merely descriptive of “[m]alt for brewing and
distilling” in International Class 31 and “[p]rocessing of agricultural grain” in
International Class 40.
In the absence of a showing of acquired distinctiveness, Section 2(e)(1) of the
Trademark Act precludes registration of a mark on the Principal Register that, when
used in connection with the goods or services of the applicant, is merely descriptive
of them. 15 U.S.C. § 1052(e)(1). “A term is merely descriptive if it immediately
conveys knowledge of a quality, feature, function, or characteristic of the goods or
services with which it is used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297,
102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer AG, 488 F.3d 960, 82
USPQ2d 1828, 1831 (Fed. Cir. 2007)); see also In re TriVita, Inc., 783 F.3d 872, 114
USPQ2d 1574, 1575 (Fed. Cir. 2015). By contrast, a mark is suggestive if it “requires
imagination, thought, and perception to arrive at the qualities or characteristics of
the goods [and services].” In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed.
Cir. 1987).
The determination of whether a mark is merely descriptive must be made in
relation to the goods and services for which registration is sought, not in the abstract.
In re Chamber of Commerce, 102 USPQ2d at 1219; In re Bayer, 82 USPQ2d at 1831.
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This requires consideration of the context in which the mark is used or intended to
be used in connection with those goods or services, and the possible significance that
the mark would have to the average purchaser of the goods or services in the
marketplace. In re Chamber of Commerce, 102 USPQ2d at 1219; In re Bayer, 82
USPQ2d at 1831; In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir.
1987). In other words, the question is not whether someone presented only with the
mark could guess the goods and services listed in the identification. Rather, the
question is whether someone who knows what the goods and services are will
understand the mark to convey information about them. DuoProSS Meditech Corp.
v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012)
(quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)); see also In
re Patent & Trademark Servs. Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home
Builders Ass’n of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re Am. Greetings
Corp., 226 USPQ 365, 366 (TTAB 1985).
Evidence that a term is merely descriptive to the relevant purchasing public “may
be obtained from any competent source, such as dictionaries, newspapers, or
surveys,” In re Bayer, 82 USPQ2d at 1831, as well as “labels, packages, or in
advertising material directed to the goods….” In re Abcor Dev. Corp., 588 F.2d 811,
200 USPQ 215, 218 (CCPA 1978). It may also be obtained from Applicant’s own
specimen of use and any explanatory text included therein. In re N.C. Lottery, 866
F.3d 1363, 123 USPQ2d 1707, 1710 (Fed. Cir. 2017); In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564, 1565 (Fed. Cir. 2001).
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Based on the evidence of record, we find that Applicant’s mark immediately
conveys to prospective consumers characteristics of both the goods and the services.
With regard to the International Class 31 goods, “mechanically floor-malted”
immediately conveys to prospective consumers an attribute of “[m]alt for brewing and
distilling.” With respect to the International Class 40 services, Applicant’s proposed
mark serves as an adverbial phrase that immediately conveys how the “[p]rocessing
of agricultural grain” is performed.
The adverb “mechanically” is derived from the adjective “mechanical” which is
defined as “of or relating to machinery” or “produced or operated by a machine or
tool.”2 Merriam-Webster (www.merriam-webster.com/dictionary/mechanical).“Floor-
malted” is the adjectival form of the verb “floor malting.” In the brewing and distilling
industry, “floor malting” refers to “the practice of germinating (malting) steeped
barley on the floor of the malt house,” which can be performed manually or with
machinery. Midwest Supplies Homebrewing & Winemaking
(www.midwestsupplies.com), November 20, 2014 Office Action, TSDR p. 2. The
traditional method of floor malting is highly labor intensive:
Floor malting takes its name from the practice of germinating
(malting) steeped barley on the floor of the malt house. The
steeped grains would be deposited on one end of the floor. As the
grains began to germinate, and heat would build, skilled workers
would spread the malt out in thin layers on the floor. The
germinating grains would then be turned periodically to prevent
the emerging rootlets from growing into a solid mass, and to
maintain the proper temperature and humidity for malting. …

2 We take judicial notice of the dictionary definition from the online version of Merriam-
Webster. In re Thomas White Int’l Ltd., 106 USPQ2d 1158, 1160 n.1 (TTAB 2013) (judicial
notice taken from dictionary existing in print format).
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This process was replaced by the more consistent and uniform
industrial malting practices in use today, but is still practiced by
a few artisanal malting houses.

Id. The process of floor malting evolved with the substitution of machinery for manual
labor; the mechanical process of floor malting has been explained as follows:
With the advent of modern power, the first changes that occurred
were the introduction of ventilating fans and water pumps into
the older type houses as described. Later, more modern buildings
were introduced incorporating the various devices made
available by the new power. In these earliest modern houses,
steel tanks were substituted for the old-fashioned cisterns, large
fans were employed for ventilation, and adequate sprinkler
systems installed. However, the old-fashioned masonry floor still
persisted with the consequent heavy work of hand shoveling. It
was under these semi-modern methods that malt acquired its
present status.

The next step was the modern construction known as the
compartment system. Here the steeped barley is deposited on
perforated floors in a single bed through which moist cool air is
drawn by fans to control temperatures as desired. Agitation is by
means of large turning machines which periodically agitate and
redistribute the malt. When germination is completed, the malt
is scooped into mechanical conveyors by mechanical shovels. The
conveyor deposits it in the kiln house, which again has
perforated metal floors through which hot air is drawn by other
fans. In this case, however, the floors are sectional, so that they
can be opened, and the malt dropped through. It is possible in a
modern kiln to reduce the moisture content to 3 percent.

After drying, the malt is dropped directly from the floor to
hoppers located beneath, which feed conveyors, which, in turn,
transport the finished malt to the cleaning and storing house.
The prime object of modern houses is not only to give maximum
production in a given area, but to decrease manual labor by the
use of mechanical devices.

Id. at 6-7. See also web site excerpt from Briess Malt & Ingredients Co.
(www.briess.com/food/Processes/malthistory.php) “Floor Malting is Born” and
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“Malting Goes Modern,” July 2, 2015 Final Office Action, TSDR pp. 3-5. Applicant’s
specimen explains in further detail what “floor-malted” malt is as well as the
particular process of “mechanical floor-malting” it employs to produce this kind of
malt:
The practice of malting grain for use in beer and spirits reaches
back into ancient history, and is a tradition historically bound to
America’s identity. Did you know Samuel Adams worked in his
family’s malthouse, not as a brewer? Some of the world’s most
sought after malt is still prepared in this traditional manner.
Commonly referred to as “floor-malting,” grain that has been
soaked in water for up to 48 hours is spread over a cement floor
to an even depth of 8”-12” inches. The grain is turned by hand
every 8 hours so that the heat generated from the growing barley
does not kill the grain. After the main shoot, or acrospire, has
grown the length of the grain, the entire batch is dried in a kiln
and then roasted to stop the grain from growing, dry the grain,
and to develop flavors and color. Think about eating a plain piece
of bread compared to one that has been toasted for just the right
amount of time and you will have a fairly good picture of this
process.

Floor-malting is considered the pinnacle of “artisanal” malting …
however, there are very few sources for this type of premium malt.
Even if you happen to find a craft malt that has been floor-malted,
inconsistencies occur from batch to batch.

By combining the old world approach to floor-malting with today’s
modern technology, we have designed a malting machine capable
of producing the finest quality, consistent malt available. We call
this proprietary process: “Mechanical Floor-Malting.”

Our Mechanical Floor-Malters are capable of producing 10-15
tons of finished malt. Our grain bed depths are shallow, 12-16”,
just like traditional floor malting systems. Most commercial malt
is produced in deep grain beds anywhere from 3 to 4 feet. Hot air
is forced up through this bed in order to kiln the malt resulting in
a large use of energy. Stratification also occurs because this grain
isn’t turned completely over during the malting process. Our
Mechanical Floor-Malter is a continuously moving circuit of grain
inside a closed system. Each step of the malting process takes
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place within this system, making our machines a “uni-malter.”
Continuous movement and shallow grain beds equal reduced
energy consumption and more consistent malt.

Thus, the explanatory text from Applicant’s own specimen makes clear that it
produces a specific type of malt known as “floor-malted” malt and that Applicant’s
grain processing services substitute mechanization for traditional floor-malting
techniques. See In re N.C. Lottery, 123 USPQ2d at 1710 (“the TTAB did not err by
considering the explanatory text of the specimens in the descriptiveness inquiry”).
In addition, the record shows that it is not uncommon for artisan brewers to
market their beer as “floor malted” (see “Weyermann floor malted Bohemian Pilsner
malt” at www.brooklynbrewery.com July 2, 2015 Office Action, TSDR p. 7) or for malt
producers to use a mechanized version of floor malting (see Briess Malt & Ingredients
Co., www.briess.com/food/Processes/malthistory.php, “Floor Malting is Born” and
“Malting Goes Modern,” July 2, 2015 Final Office Action, TSDR pp. 3-5). For example,
Weyermann touts the benefits of floor malted malt:
Bohemian grown wheat is expertly floor malted in Weyermann’s®
traditional facility in the Czech Republic. Floor malting gives the
malt an earthy, satisfying aroma and intense, malty flavor. High
proportions of floor malted grain provide a smooth mouth feel.

“Weyermann floor malted Bohemian Pilsner malt” at www.brooklynbrewery.com
July 2, 2015 Office Action, TSDR p. 7. This evidence bolsters our finding that the
mark is merely descriptive.
Applicant argues that MECHANICALLY FLOOR-MALTED is suggestive in
relation to the identified goods and services because the juxtaposition of
“mechanically” with “floor-malted” results in an incongruity. As Applicant postulates:
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[T]he term ‘mechanical’ is entirely contradictory to the ‘floor
malting’ method of processing grains by hand - by definition, the
very process of ‘floor malting’ is not mechanized or automated.
The term “mechanical” also carries with it certain industrial
connotations, connotations that stand in stark contrast to the
artisanal, old-world connotations association with the term “floor
malting.” As such, brewers and distillers encountering
Applicant’s mark in the marketplace will necessarily undertake a
“mental pause” in order to reconcile the apparent contradiction in
terms presented by Applicant’s mark.

May 20, 2015 Response to Office Action. Applicant’s argument is unpersuasive.
Applicant has not demonstrated that the relevant public perceives the floor malting
process as one that must be performed by hand to such an extent that they would find
incongruous the suggestion that it could be performed with mechanical assistance.
To the contrary, the evidence demonstrates that mechanical assistance has been used
in the past for some time in order to facilitate the floor malting process.
When two or more merely descriptive terms are combined, the determination of
whether the composite mark also has a merely descriptive significance turns on the
question of whether the combination of terms evokes a non-descriptive commercial
impression. If each component retains its merely descriptive significance in relation
to the goods or services, the combination results in a composite that is itself merely
descriptive. In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir.
2004); see also In re Carlson, 91 USPQ2d 1198 (TTAB 2009); In re Putman Publ’g Co.,
39 USPQ2d 2021 (TTAB 1996). However, a mark comprising a combination of merely
descriptive components is registrable if the combination of terms creates a unitary
mark with a non-descriptive meaning, or if the composite has a bizarre or incongruous
meaning as applied to the goods. In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ
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382 (CCPA 1968). Applying these principles, Applicant’s arguments are belied by the
evidentiary record showing that the process of “floor malting,” while once performed
manually, has evolved to incorporate mechanization. Applicant does not point to an
incongruous meaning of MECHANICALLY FLOOR-MALTED in relation to its goods
and services other than implying, implausibly, that the process of floor malting can
be performed only by hand. As a whole, the mark does not have a separate non-
descriptive meaning.
In sum, no imagination or thought is required by prospective consumers to discern
the nature of Applicant’s goods and services. In other words, Applicant’s proposed
mark immediately conveys, without conjecture or speculation, an attribute of
Applicant’s malt and the mechanical nature of Applicant’s processing services. The
inclusion of a hyphen in Applicant’s mark has no effect on the mere descriptiveness
of the mark as a whole. See In re Vanilla Gorilla, L.P., 80 USPQ2d 1637, 1640 (TTAB
2006).
Accordingly, we find Applicant’s proposed standard character mark
MECHANICALLY FLOOR-MALTED to be merely descriptive of “[m]alt for brewing
and distilling” in International Class 31 and “[p]rocessing of agricultural grain” in
International Class 40, and therefore ineligible for registration on the Principal
Register in the absence of a showing of acquired distinctiveness.
III. Genericness Refusal
Having determined that Applicant’s mark is not eligible for registration on the
Principal Register absent a showing of acquired distinctiveness, which showing has
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not been made because Applicant did not pursue it as an alternative, we now consider
Applicant’s amendment in the alternative to the Supplemental Register. “In order to
qualify for registration on the Supplemental Register, a proposed mark ‘must be
capable of distinguishing the applicant’s goods or services.’” In re Emergency Alert
Sols. Grp., LLC, 122 USPQ2d 1088, 1089 (TTAB 2017) (quoting 15 U.S.C. § 1091(c)).
“Generic terms do not so qualify.” Id. See also Clairol, Inc. v. Roux Distrib. Co., 280
F.2d 863, 126 USPQ 397, 398 (CCPA 1960) (“The generic name by which a product is
known is not a mark which can be registered on the Supplemental Register under
[S]ection 23 because such a name is incapable of distinguishing applicant’s goods
from goods of the same name manufactured or sold by others.”). 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)
(quoting H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228
USPQ 528, 530 (Fed. Cir. 1986)). Because generic terms “are by definition incapable
of indicating a particular source of the goods or services,” they cannot be registered
as trademarks. Id. (quoting In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57
USPQ2d 1807, 1810 (Fed. Cir. 2001)); see also In re Cordua Rests., Inc., 823 F.3d 594,
118 USPQ2d 1632, 1634 (Fed. Cir. 2016). “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.” Princeton
Vanguard, 114 USPQ2d at 1830 (quoting Marvin Ginn, 228 USPQ at 530). Making
this determination “involves a two-step inquiry: First, what is the genus of goods or
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services at issue? Second, is the term sought to be registered ... understood by the
relevant public primarily to refer to that genus of goods or services?” Marvin Ginn,
228 USPQ at 530. See also Princeton Vanguard, 114 USPQ2d at 1829 (“there is only
one legal standard for genericness: the two-part test set forth in Marvin Ginn”). “An
inquiry into the public’s understanding of a mark requires consideration of the mark
as a whole.” Id. at 1831 (quoting In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d
1420, 1421 (Fed. Cir. 2005)). “Even if each of the constituent words in a combination
mark is generic, the combination is not generic unless the entire formulation does not
add any meaning to the otherwise generic mark.” In re 1800Mattress.com IP LLC,
586 F.3d 1359, 92 USPQ2d 1682, 1684 (Fed. Cir. 2009) (quoting In re
Steelbuilding.com); see also Princeton Vanguard, 114 USPQ2d at 1832.
Competent sources to show the relevant purchasing public’s understanding of a
contested term include purchaser testimony, consumer surveys, dictionary
definitions, trade journals, newspapers and other publications. Id. at 1830; In re Bed
& Breakfast Registry, 791 F.2d 157, 229 USPQ 818, 819 (Fed. Cir. 1986). In the ex
parte context, “[a] registration 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, 118
USPQ2d at 1638 (quoting 2 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND
UNFAIR COMPETITION § 12:57 (4th ed. 2016)). The Trademark Examining Attorney has
the burden of proving genericness by “clear and convincing evidence.” Id. at 1635; In
re Hotels.com, 573 F.3d 1300, 91 USPQ2d 1532, 1533 (Fed. Cir. 2009); In re Gould
Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111 (Fed. Cir. 1987); In re Merrill
Serial No. 86358219
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Lynch, Pierce, Fenner and Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed.
Cir. 1987).
We begin by agreeing with the Examining Attorney that the genus at issue in
this case is adequately defined by Applicant’s identification of goods (“[m]alt for
brewing and distilling”) and services (“[p]rocessing of agricultural grain”).3 See Magic
Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) (“[A]
proper genericness inquiry focuses on the description of [goods or] services set forth
in the [application or] certificate of registration.”). We further find based on the
identification, which contains no restrictions as to trade channels or end users, that
the relevant purchasing public for Applicant’s goods comprises persons and entities
that purchase and use malt for brewing and distilling, and that the relevant
purchasers of Applicant’s agricultural grain processing services includes persons and
entities that have or obtain grain and need to have it malted. See also Applicant’s
specimen (“Craft brewers and distillers want local, expect quality, but put the
emphasis on consistency. … Craft brewers and distillers use the enzymes in the
malted grain to produce wort, and the resulting sugars are fed to yeast to produce
alcohol.”).
With this in mind, we must now ascertain whether the designation
MECHANICALLY FLOOR-MALTED is understood by the relevant purchasing

3 Applicant does not dispute this, and in fact suggests that the proper genus may be more
narrowly defined as “floor malted malts and floor malting grain processing services.” 13
TTABVUE 7.
Serial No. 86358219
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public as primarily referring to “malt for brewing and distilling” and “the processing
of agricultural grain.”
Applicant argues, relying primarily on the holding in Princeton Vanguard, that
none of the Examining Attorney’s evidence uses the exact term “mechanically floor-
malted” as a generic designation for the identified goods or services, and that only
one source, an excerpt from a book entitled Malt and Malting published in 1992,
includes a single reference to a slightly different term “mechanical floor-malting”
within the context of discussing malting systems in England and Germany. Applicant
maintains that the paucity of third-party uses means that the relevant class of
purchasers does not perceive “mechanically floor-malted” as the genus for Applicant’s
goods and services. Applicant criticizes the Examining Attorney’s genericness refusal
as being based solely on evidence regarding the meaning of the mark’s individual
components. Applicant also asserts that the Examining Attorney’s reliance on third-
party use and Applicant’s own website is misplaced noting that while the terms
“mechanical conveyors,” “mechanical devices” and “mechanical shovels” do appear,
there is no mention of the proposed mark “mechanically floor-malted.” With respect
to Applicant’s use on its website of “Mechanical Floor-Malting” to designate its
“proprietary” malting process, Applicant submits that the initial capitalization is
indicative of trademark, not generic, use.
Applicant misapprehends the holding of Princeton Vanguard. The fact that there
is no evidence of third-party use of the precise term “mechanically floor-malted” is
not, by itself, necessarily fatal to a finding of genericness. As the Court emphasized:
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[T]here is only one legal standard for genericness: the two-part
test set forth in Marvin Ginn. … Regardless of whether the
mark is a compound term or a phrase, the applicable test is the
same and the Board must consider the record evidence of the
public’s understanding of the mark as a whole. Am. Fertility, 188
F.3d at 1348-49. Our decision in Gould merely provides
additional assistance in assessing the genericness of compound
terms where it can be shown that “the public understands the
individual terms to be generic,” and the joining of those terms
into one compound word provides no additional meaning. Id. It
is not a short-cut and does not supplant the two-part test set
forth in Marvin Ginn.”114 USPQ2d at 1830-32.

Princeton Vanguard was explicit in not overruling In re Gould, an ex parte appeal,
where dictionary definitions and Applicant’s explanatory text in its specimen sufficed
to establish genericness. Indeed, the Court emphasized that in In re Gould, “the most
damaging evidence” was applicant’s own specimen, a marketing brochure, and how
this informed public perception of the mark at issue:
The applicant in Gould sought to register the mark
SCREENWIPE for goods identified as “pre-moistened, anti-
static cloth for cleaning computer and television screens.” 834
F.2d at 1017. While the Board looked to the individual
definitions of “screen” and “wipe,” we found that “Gould’s own
submissions provided the most damaging evidence that its
alleged mark is generic and would be perceived by the
purchasing public as merely a common name for its goods rather
than a mark identifying the good’s source.” Id. at 1018-19.
Indeed, Gould described its own product as “a … wipe … for …
screens.” Id. at 1019. Given this admission, we noted that the
“compound immediately and unequivocally describes the
purpose, function and nature of the goods as Gould itself tells
us.” Id. (“Gould has simply joined the two most pertinent and
individually generic terms applicable to its product, and then
attempts to appropriate the ordinary compound thus created as
its trademark.”). In that context, where the mark in its entirety
has exactly the same meaning as the individual words, we stated
that “the PTO has satisfied its evidentiary burden if, as it did in
this case, it produces evidence … that the separate words joined
to form a compound have a meaning identical to the meaning
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common usage would ascribe to those words as a compound.” Id.
at 1018. Because “the terms remain as generic in the compound
as individually,” we concluded that the compound itself was
generic. Id. at 1019.

Id. at 1831. Princeton Vanguard, by remanding for full consideration of dueling
surveys, simply underscores that all evidence bearing on public perception must be
given appropriate consideration. Id. at 1833. See Frito-Lay N. Am., Inc. v. Princeton
Vanguard, LLC, 124 USPQ2d 1184 (TTAB 2017) (on remand, Board found
defendant's asserted mark PRETZEL CRISPS generic for “pretzel crackers”). Cf. In
re Country Music Ass’n Inc., 100 USPQ2d 1824, 1831 (TTAB 2011) (genericness
refusal reversed; Board considered results from consumer survey showing that 85%
of respondents perceive COUNTRY MUSIC ASSOCIATION as a proprietary or brand
name, and not a generic term).
Here, as in In re Gould, the record consists of dictionary and industry specific
evidence demonstrating the use of the words, ”mechanical,” “mechanically,” “malt,”
“malting,” “malter,” “malted,” “floor-malting,” “floor-malted,” and “floor-malter,” and
demonstrating how these words may be used together. These examples clearly show
the meanings that relevant consumers attribute to those words when they are used
separately and when they are used together. The purchasers in this case are not
members of the general public who might not be familiar with the processing of grain
for brewing or distilling. Here, the customers are those in the brewing and distilling
business who are likely to know exactly what MECHANICALLY FLOOR-MALTED
malt is and the process for producing this type of malt, regardless of the grammatical
form of the word “mechanical” or whether “floor-malted” is spelled with a hyphen.
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Applicant further takes the position that under In re Cordua, Applicant’s own use
of its mark in connection with its own goods and services is of limited probative
weight. However, contrary to Applicant’s reading of In re Cordua, an applicant’s own
website or marketing materials may be probative, or even, as in Gould, “the most
damaging evidence,” in indicating how the relevant public perceives a term. See
Princeton Vanguard and In re Gould, supra; see also In re Empire Tech. Dev. LLC,
123 USPQ2d 1544 (TTAB 2017) (Board considered applicant’s own website and
promotional video in finding COFFEE FLOUR generic). Cf. In re N.C. Lottery, 123
USPQ2d at 1710 (“the TTAB did not err by considering the explanatory text of the
specimens in the descriptiveness inquiry”). On its website specimen, Applicant
admits that “floor-malted” refers to a type of malt (available not only from Applicant
but from others) for brewing and distilling and that “floor-malting” is a process
performed by others:
Floor-malting is considered the pinnacle of “artisanal” malting …
however, there are very few sources for this type of premium malt.
Even if you happen to find a craft malt that has been floor-malted,
inconsistencies occur from batch to batch.
Indeed, Applicant’s suggestion in its brief that a possible genus for the goods is “floor-
malted malts” constitutes an outright admission that “floor-malted” identifies a type
of malt. 13 TTABVUE 7. With regard to its services, Applicant concedes that floor-
malted malt can be produced using machinery to process grain. In Applicant’s own
words:
Some of the world’s most sought after malt is still prepared in this
traditional manner. Commonly referred to as “floor-malting,”
grain that has been soaked in water for up to 48 hours is spread
over a cement floor to an even depth of 8”-12” inches. The grain is
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turned by hand every 8 hours so that the heat generated from the
growing barley does not kill the grain. …
By combining the old world approach to floor-malting with today’s
modern technology, we have designed a malting machine capable
of producing the finest quality, consistent malt available.
Applicant’s specimen. Applicant, citing references to other pneumatic and industrial
malting systems, acknowledges that it “is not the inventor of mechanized malting
systems generally, nor are mechanized malting systems new to the relevant market
or industry.” 16 TTABVUE 4. Consistent therewith, Applicant touts on its web site
the superior technology it uses to process agricultural grain:
Our Mechanical Floor-Malters are capable of producing 10-15
tons of finished malt. Our grain bed depths are shallow, 12-16”,
just like traditional floor malting systems. Most commercial malt
is produced in deep grain beds anywhere from 3 to 4 feet. Hot air
is forced up through this bed in order to kiln the malt resulting in
a large use of energy. Stratification also occurs because this grain
isn’t turned completely over during the malting process. Our
Mechanical Floor-Malter is a continuously moving circuit of grain
inside a closed system. Each step of the malting process takes
place within this system, making our machines a “uni-malter.”
Continuous movement and shallow grain beds equal reduced
energy consumption and more consistent malt.
Applicant’s specimen. The evidence demonstrates that the relevant consumers are
familiar with the process of mechanized floor malting and the type of malt produced.
The record as a whole establishes that with regard to the International Class 31
goods, consumers would understand the designation “mechanically floor-malted” to
signify a specific kind of “[m]alt for brewing and distilling.” Similarly, with respect to
the International Class 40 services, this evidence also shows that consumers would
understand Applicant’s proposed mark as a whole to identify “[p]rocessing of
agricultural grain.” As per Gould, a proposed mark is generic if “it can be shown that
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‘the public understands the individual terms to be generic,’ and the joining of those
terms into one compound word provides no additional meaning.” Princeton Vanguard,
114 USPQ2d at 1832 (internal quotation omitted). The fact that the proposed mark
at issue here is not a single compound word does not alter the underlying logic of this
approach. In other words, no other meaning, other than the generic name for the
goods and services can be ascribed to “mechanically floor-malted.” See also Princeton
Vanguard, 114 USPQ2d at 1831. Thus, the record shows that the mark Applicant
seeks to register will be understood by the relevant public primarily as referring to
the identified genus of goods and services.
The fact that Applicant’s proposed mark is not a noun does not render it less
generic. It is well established that generic designations need not be nouns:
[W]e readily acknowledge the sometimes-used distinction that
generic names are nouns and descriptive terms are adjectives. 2
J.T. McCarthy, McCarthy on Trademarks and Unfair
Competition, Section 12:10 (4th ed. 1997) [“A rule of thumb
sometimes forwarded as distinguishing a generic name from a
descriptive term is that generic names are nouns and descriptive
terms are adjectives. However, this “part of speech” test does not
accurately describe the case law results.”]. Here, we recognize
that applicant’s mark does not present the classic case of a generic
noun, but rather a generic adjective. In this case, because the
term ATTIC directly names the most important or central aspect
or purpose of applicant’s goods, that is, that the sprinklers are
used in attics, this term is generic and should be freely available
for use by competitors.
In re Central Sprinkler Co., 49 USPQ2d 1194, 1199 (TTAB 1998); see also Sheetz of
Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341, 1366 (TTAB 2013). Adjectival
phrases are common forms of speech, such that consumers will recognize Applicant’s
proposed mark as the generic designation for the goods and services.
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Applicant may be the first to use the precise phrase “mechanically floor-malted”
to designate “[m]alt for brewing and distilling” in International Class 31 and
“[p]rocessing of agricultural grain.” Applicant might even be the creator of a new
mechanized process for producing floor malt. But whether this is true or not, this does
not affect the generic nature of Applicant’s proposed mark. The record shows that the
relevant public in this market will perceive the designation “mechanically floor-
malted” as the generic designation for such goods and services. See Sheetz of Del., Inc.
v. Doctor’s Assocs. Inc., 108 USPQ2d at 1362 (“Even if applicant was the first and/or
sole user of a generic term or phrase, as it claims, that does not entitle applicant to
register such a term or phrase as a mark.”) (internal citations omitted). See also In re
Greenliant Sys. Ltd., 97 USPQ2d 1078, 1083 (TTAB 2010). Likewise, Applicant’s
attempt to appropriate this term for itself with the use of initial capitalization on its
website is futile. As the Federal Circuit has emphasized: “The test is not only whether
the relevant public would itself use the term to describe the genus, but also whether
the relevant public would understand the term to be generic.” In re 1800Mattress.com
IP LLC, 92 USPQ2d at 1685. We therefore find that Applicant’s proposed mark is
incapable of functioning as a source indicator.
Decision: The descriptiveness refusal under Trademark Act Section 2(e)(1) is
affirmed; the refusal under Trademark Act Sections 23 and 45 to register Applicant’s
proposed mark on the Supplemental Register because it is generic with respect to the
identified goods and services and therefore incapable of serving as a source indicator
is also affirmed.