MGF Financial, Inc.

Trademark Trial and Appeal Board

Jul 2, 2015

No. 85900620 (T.T.A.B. Jul. 2, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: July 2, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re MGF Financial, Inc.
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Serial No. 85900620
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Kathryn G. Kent of Kent Law Practice PLLC for MGF Financial, Inc.

Dawn Feldman Lehker, Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.
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Before Kuhlke, Taylor and Adlin, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
MGF Financial, Inc. (Applicant) seeks registration on the Principal Register of
the standard character mark EXCEPTIONALE for “coffee,” in International Class
30.1
The Trademark Examining Attorney refused registration of Applicant’s mark on
the ground that EXCEPTIONALE is merely descriptive of Applicant’s goods under
Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1).

1 Application Serial No. 85900620, filed on April 30, 2013, based upon Applicant’s
allegation of first use and first use in commerce on April 1, 2013, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a).
Serial No. 85900620
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When the refusal was made final, Applicant appealed. The Examining Attorney
and Applicant filed briefs. We affirm the refusal to register.
Evidentiary Objection
During examination, in its response to the July 25, 2013 Office Action, Applicant
referenced a third-party registration for the mark EXCEPTIONALE for mattresses
and box springs. In the Final Office Action, the Examining Attorney did not advise
Applicant that reference to a registration, without attaching a copy, is not sufficient
to make it of record. In view thereof, the Examining Attorney’s objection is
overruled to the extent that we may consider the reference in Applicant’s response
which includes the mark and the goods. However, the copy of the registration
attached to Applicant’s brief on appeal was not made of record during the
prosecution of the involved application and, as such, is untimely and has not been
considered. Trademark Rule 2.142(d). See also In re Houston, 101 USPQ2d 1534,
1537 n. 7 (TTAB 2012), aff’d 731 F.3d 1326, 108 USPQ2d 1226 (Fed. Cir. 2013)
(failure to object during examination constitutes a waiver of an objection only to the
evidence which was improperly submitted during examination, the absence of an
objection to a list is not a waiver of an objection to a future untimely submission of
the registration with the brief).
Mere Descriptiveness
The test for determining whether a mark is merely descriptive is whether it
immediately conveys information concerning a significant quality, characteristic,
function, ingredient, attribute or feature of the product or service in connection with
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which it is used, or intended to be used. In re Chamber of Commerce of the U.S., 675
F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). See also In re Oppedahl &
Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (quoting, Estate
of P.D. Beckwith, Inc. v. Commissioner, 252 U.S. 538, 543 (1920) (“A mark is merely
descriptive if it ‘consist[s] merely of words descriptive of the qualities, ingredients or
characteristics of’’ the goods or services related to the mark.”)) The determination of
whether a mark is merely descriptive must be made “in relation to the goods for
which registration is sought, the context in which it is being used, and the possible
significance that the term would have to the average purchaser of the goods because
of the manner of its use or intended use.” In re Bayer Aktiengesellschaft, 488 F.3d
960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (citing In re Abcor Dev. Corp., 588 F.2d
811, 200 USPQ 215, 218 (CCPA 1978)). It is not necessary, in order to find a mark
merely descriptive, that the mark describe each feature of the goods or services,
only that it describe a single, significant ingredient, quality, characteristic, function,
feature, purpose or use of the goods or services. Chamber of Commerce of the U.S.,
102 USPQ2d at 1219; In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir.
1987).
Laudatory marks are a species of merely descriptive marks. If the purchaser
would view the mark as laudatory, then the mark is deemed to be merely
descriptive rather than inherently distinctive, and it therefore is unregistrable
under Section 2(e)(1) absent a showing of acquired distinctiveness. “Marks that are
merely laudatory and descriptive of the alleged merit of a product are also regarded
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as being descriptive … Self-laudatory or puffing marks are regarded as a condensed
form of describing the character or quality of the goods.” Duopross Meditech Corp. v.
Inviro Medical Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1759 (Fed. Cir.
2012) (SIMPLY SAFER merely serves to laud the safety of the goods in the mark
SNAP SIMPLY SAFER); In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d
1056, 1058 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA for beer and ale found
to be laudatory and incapable of distinguishing source). See also In re Nett Designs
Inc., 236 F.3d 1338, 57 USPQ2d 1564 (Fed. Cir. 2001) (THE ULTIMATE BIKE
RACK found to be a laudatory descriptive phrase that touts the superiority of Nett
Designs’ bike racks); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1173 (TTAB 2013)
(SUPERJAWS merely describes a superior system for grasping and holding work
pieces); In re The Place Inc., 76 USPQ2d 1467 (TTAB 2005) (THE GREATEST BAR
found to be laudatory and thus merely descriptive of restaurant and bar services).
The Examining Attorney argues that “EXCEPTIONALE could be considered a
deliberate misspelling of the word exceptional.” Ex. Att. Br., 9 TTABVUE 5-6.2 She
relies on the following dictionary definitions for the word “exceptional”:
Extremely good or impressive in a way that is unusual;3
Unusual and not likely to happen or exist very often;4

2 In addition, she argues under the doctrine of foreign equivalents that EXCEPTIONALE
“translates to ‘exceptional’ from the Romanian language.” Ex. Att. Br., 9 TTABVUE 4-5. In
view of our findings, infra, we need not address these arguments and, in particular,
whether consumers knowledgeable in the Romanian language would stop and translate this
term.
3 July 25, 2013 Office Action, TSDR p. 4, MACMILLAN DICTIONARY
(www.macmillandictionary.com).
4 Id.
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Much more or greater than usual;5 and
Better than average: Superior.6
In addition, she attached several third-party use-based registrations “to
demonstrate how the term ‘exceptional’ is treated by the U.S. Patent and
Trademark Office.” Ex. Atty. Br., 9 TTABVUE 9. In these third-party registrations,
the term “exceptional” is disclaimed, including Registration No. 3984788 for the
mark ESTATE SELECT GOURMET COFFEE EXCEPTIONAL COFFEE –
EXPERTLY ROASTED for coffee in which GOURMET COFFEE EXCEPTIONAL
COFFEE – EXPERTLY ROASTED is disclaimed, and Registration No. 4173768 for
the mark MOUNTAIN GROVE COFFEE EXCEPTIONAL ROASTED BLENDS for
coffee in which “EXCEPTIONAL ROASTED BLENDS” is disclaimed.
Based on this evidence, it is the Examining Attorney’s position that the word
exceptional is laudatory and Applicant’s proposed mark EXCEPTIONALE is the
equivalent of the word exceptional, and, as such, is also laudatory.
Applicant “acknowledges [the] Examiner’s arguments that the mark
‘Exceptionale’ is likely to be perceived as the equivalent to ‘exceptional’ by
consumers.” App. Br. p. 2 n. 1., 7 TTABVUE 3. However, it is Applicant’s position
that the proposed mark is suggestive. Specifically, Applicant argues that:
EXCEPTIONALE prompts the consumer to consider what
makes the coffee or the experience of drinking the coffee
“out of the ordinary”, the consumer embarks on a thought
process that indicates the mark is permissibly suggestive,

5 Id.
6 March 18, 2014 Office Action, TSDR p. 4, MERRIAM-WEBSTER (www.merriam-
webster.com).
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but not merely descriptive. … As the examining attorney
noted in the first office action, exceptional can mean
“…impressive in a way that is unusual.”
EXCEPTIONALE is a term that evokes a sense of that
which is out of the ordinary; exceptional is also defined as
“out of the ordinary; uncommon; rare; superior”, which
further illustrates the capacity of the Applicant’s mark to
trigger imagination, thoughts or perceptions as to the
goods.
App. Br. p. 3, 7 TTABVUE 5.
By this argument, Applicant’s acknowledgement of the Examining Attorney’s
position that EXCEPTIONALE is likely to be perceived as the word “exceptional,”
and Applicant’s absence of argument as to this equivalency, Applicant essentially
concedes that EXCEPTIONALE would be perceived to mean the equivalent of what
the Examining Attorney’s dictionary definitions show what “exceptional” means.
Applicant contends that “roundabout reasoning is required to make a
determination as to how the product is so unusual or out of the ordinary that it is
superior in quality [to] other coffee.” Id. at 6. Applicant asserts that to the extent
EXEPTIONALE has a laudatory quality, it only “connote[s] a vaguely desirable
characteristic or quality in connection with coffee or the coffee drinking experience
of the consumer.” Id. at 7. Applicant continues that “[t]he ability of the word to
suggest the unusual, uncommon, or rare is distinct from words which merely laud
goods or services as the very best of their kind.” Reply Br. p. 4, 10 TTABVUE 5.
We find that the proposed mark EXCEPTIONALE would be perceived as a
fanciful spelling of EXCEPTIONAL, and, indeed Applicant does not argue
otherwise. Based on this record, consisting of the dictionary definitions and third-
party registrations we find that EXCEPTIONALE is a laudatory word that would
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be regarded by purchasers not as a trademark but rather as mere puffery touting
the superior quality of Applicant’s coffee. The word EXCEPTIONALE is analogous
to the laudatory words present in the marks in the cases cited above, i.e., BEST,
ULTIMATE, SUPER and GREATEST.
Even if some purchasers view EXCEPTIONALE as meaning, out of the ordinary,
uncommon or rare, the word still is laudatory and mere puffery. While each
definition may seek to capture a nuanced meaning of the term, the basic meaning is
always the same: exceptional means the item is beyond others in a particular
category. In this case, the category is coffee.
The third-party registrations submitted by the Examining Attorney show that
Examining Attorneys have considered the term EXCEPTIONAL merely descriptive
in connection with coffee. This evidence serves to corroborate the dictionary
definition evidence to assist in establishing consumer perception. Applicant’s
reference to a single third-party registration for very different goods has little
probative value. Of course, in reviewing these third-party registrations, we keep in
mind that we must make our decision in each case on its own merits. In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). While we give
little weight to this evidence, the Examining Attorney’s third-party registrations
outweigh Applicant’s single registration for unrelated goods.
We also must consider “the context in which it is being used, and the possible
significance that the term would have to the average purchaser of the goods because
of the manner of its use or intended use.” Chamber of Commerce of the U.S., 102
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USPQ2d at 1219 (emphasis added). Applicant’s manner of use is demonstrated by
its specimen of use shown below:

The manner of use with the “l” angled to separate the last “e” from the word,
underscores that consumers would perceive EXCEPTIONALE as a fanciful spelling
of the word “exceptional.” In addition, its use above the generic term espresso
emphasizes its use as a modifier to describe the quality of the goods.
For the reasons discussed above, we find that the word EXCEPTIONALE
immediately describes a significant feature of Applicant’s coffee, namely that it is
superior coffee and would be viewed by purchasers merely as Applicant’s claim that
its coffee is of superior quality. The word is laudatory and thus merely descriptive.
Decision: The refusal to register Applicant’s mark EXCEPTIONALE as merely
descriptive under Section 2(e)(1) is affirmed.