Milk & Honey LLCv.Melissa Beeson, d/b/a Spoon Tracker

Trademark Trial and Appeal Board

Jul 27, 2017

No. 91221098 (T.T.A.B. Jul. 27, 2017)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: July 27, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Milk & Honey LLC
v.
Melissa Beeson, d/b/a Spoon Tracker
________

Opposition Nos. 91221098 and 91222928
________

CONSOLIDATED PROCEEDINGS1

Robert D. Michaux of Thorsen Hart & Allen LLP for Milk & Honey LLC.
Kerri E. Dobbins of Fears Nachawati PLLC for Melissa Beeson.
_______
Before Shaw, Adlin, and Larkin, Administrative Trademark Judges.
Opinion by Shaw, Administrative Trademark Judge:
Melissa Beeson,2 a sole proprietorship d/b/a Spoon Tracker (“Applicant”), seeks
registration of the mark STILL SPOONING, in standard characters, on the Principal
Register for “Custom imprinting of flatware and fishing lures,” in International Class

1 The proceedings were consolidated by order of the Board on November 17, 2015. In this
decision, TTABVUE citations refer to the record in Opposition No. 91221098.
2 During the course of these proceedings Applicant married and changed her name from
McKeon to Beeson. We have updated the caption accordingly.
Opposition Nos. 91221098 and 91222928
2
40”3 and “On-line retail store services featuring a wide variety of consumer goods,” in
International Class 35.4 Milk & Honey LLC (“Opposer”) opposes registration, inter
alia, on the grounds that STILL SPOONING is merely descriptive, and also that
STILL SPOONING is merely ornamental and thus fails to function as a source
identifier for Applicant’s services.5 Applicant has denied the salient allegations of the
notices of opposition.
I. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the files of the involved applications. Opposer submitted the
following evidence via Notice of Reliance:6
1. Transcript of its discovery deposition of Applicant Melissa Beeson (“Beeson
Dep.”), and exhibits, including copies of Applicant’s web pages, product

3 Application Serial No. 86417226, filed on October 7, 2014, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging a date of first use anywhere and in commerce
of August 28, 2014.
4 Application Serial No. 86547415, filed on February 26, 2015, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging a date of first use anywhere and in commerce
of August 28, 2014.
5 Opposer’s Br., p. 7, 11 TTABVUE 13. Opposer also argues that Applicant’s specimens do
not satisfy the requirements for registration. This is not a valid ground for opposition. See,
e.g., General Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270, 1273 n.6 (TTAB 1992)
(“[T]he question of the sufficiency of the specimens is not a proper ground for opposition.”);
Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1355, 1358 (TTAB 1989) (“[T]he
insufficiency of the specimens, per se, is not a ground for cancellation.”); Century 21 Real
Estate Corp. v. Century Life of America, 10 USPQ2d 2034, 2035 (TTAB 1989) (“[I]t is not the
adequacy of the specimens, but the underlying question of service mark usage which would
constitute a proper ground for opposition.”).
6 7 TTABVUE.
Opposition Nos. 91221098 and 91222928
3
listings, sales figures, and e-mails between Applicant and Opposer and third
parties regarding use of STILL SPOONING;7
2. Excerpts of Applicant’s Responses to Opposer’s Interrogatories; and
3. Excerpts of Applicant’s admissions in response to Opposer’s Requests for
Admission.
Applicant submitted the following evidence via Notice of Reliance:
1. Applicant’s Responses to Opposer’s Interrogatories; and
2. Applicant’s Responses and Amended Responses to Opposer’s Requests for
Production of Documents.8
II. The Parties
Applicant is an online retailer of gifts, primarily flatware and fishing lures, all
imprinted with various personal messages.9 Some of the items are sold with pre-
printed messages celebrating annual events such as anniversaries, whereas other
items are custom-imprinted with messages created by the purchaser.10 Applicant’s
goods are sold primarily through an electronic “storefront” on Etsy.com, an online
retail community. Applicant also sold her goods on Amazon.com, but has discontinued
such sales.

7 The parties stipulated to use of the Beeson Deposition as trial testimony. See also
Trademark Rule 2.120(k)(1).
8 We note that Applicant submitted her own responses to Opposer’s discovery requests as
part of its Notice of Reliance, 8 TTABVUE. However, Trademark Rule 2.120(k)(5), 37 C.F.R.
§ 2.120(k)(5), permits the introduction of discovery responses only by the receiving party,
subject to a limited exception not applicable here.
9 Beeson Dep., pp. 11-12, 7 TTABVUE 16-17.
10 Id. at 8, 7 TTABVUE 13.
Opposition Nos. 91221098 and 91222928
4
Opposer also is an online retailer selling similar goods, identified as “gifts and
housewares, including vintage silverware which has been hand stamped” with words
or phrases.11 Opposer too sells its goods through several online retail sites, including
Etsy.com.12
III. Standing
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015); Lipton
Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
Our primary reviewing court, the U.S. Court of Appeals for the Federal Circuit, has
enunciated a liberal threshold for determining standing, namely that a plaintiff must
demonstrate that it possesses a “real interest” in a proceeding beyond that of a mere
intermeddler, and “a reasonable basis for his belief of damage.” Empresa Cubana Del
Tabaco 111 USPQ2d at 1062 (citing Ritchie v. Simpson, 170 F.3d 1902, 50 USPQ2d
1023, 1025-26 (Fed. Cir. 1999)). A “real interest” is a “direct and personal stake” in
the outcome of the proceeding. Ritchie v. Simpson, 50 USPQ2d at 1026.
In order to establish its standing to object to the registration of an allegedly
merely descriptive or ornamental term, a plaintiff need only show that it is engaged
in the manufacture or sale of the same or related goods as those listed in the
defendant’s involved application or registration or that the product in question is one

11 Opposer’s Notice of Opposition, p. 1, 1 TTABVUE 3.
12 Id. at 2, 1 TTABVUE 4.
Opposition Nos. 91221098 and 91222928
5
which could be produced in the normal expansion of plaintiff’s business; that is, that
plaintiff has a real interest in the proceeding because it has a present or prospective
right to use the term in its business. See Binney & Smith Inc. v. Magic Markers
Indus., Inc., 222 USPQ 1003, 1010 (TTAB 1984) (allegations that a petitioner is
engaged in the manufacture or sale of the same or related products as those listed in
respondent’s involved registration, or that the product in question is one which could
be produced in the normal expansion of petitioner’s business, constitute a sufficient
pleading of standing); Southwire Co. v. Kaiser Aluminum & Chem. Corp., 196 USPQ
566, 572-73 (TTAB 1977).
Like Applicant, Opposer sells housewares imprinted with the wording STILL
SPOONING.13 This establishes its standing. Ritchie v. Simpson, 50 USPQ2d at 1026.
Moreover, Applicant has sought to limit Opposer’s ability to sell its imprinted goods
on sites like Etsy.com by alleging trademark infringement, which also establishes
Opposer’s standing.14 See e.g. Ipco Corp. v. Blessings Corp., 5 USPQ2d 1974, 1976-77
(TTAB 1988). Opposer has therefore established its standing. See Empresa Cubana
Del Tabaco, 111 USPQ2d at 1061-62.
IV. Whether STILL SPOONING is merely descriptive
Citing Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), Opposer first
argues that STILL SPOONING is unregistrable because it is a “descriptive term for
Applicant’s goods.”15 Opposer points to Applicant’s web page and Applicant’s

13 Exh. 7 to Beeson Dep., 7 TTABVUE 216-24.
14 Id.
15 Opposer’s Br., p. 9, 11 TTABVUE 15.
Opposition Nos. 91221098 and 91222928
6
testimony wherein STILL SPOONING is sometimes used to refer to flatware and
lures imprinted with the term STILL SPOONING. In essence, Opposer is arguing
that STILL SPOONING is merely descriptive of Applicant’s services simply because
it appears on the goods and because Applicant stated that STILL SPOONING
“describes the product.”16 This argument is unpersuasive. It conflates common or
ordinary use of the term “describes” with the Trademark Act’s statutory prohibition
on registration of merely descriptive marks.
“Spooning” is defined as the gerund or present participle of the verb “spoon”:
spoon
1. convey (food) somewhere by using a spoon.
“Rosie spooned sugar into her mug”
2. Informal dated
(of two people) behave in an amorous way; kiss and cuddle.
“I saw them spooning on the beach”17
As used on Applicant’s flatware and lures, STILL SPOONING intends to celebrate
interpersonal relationships and thus conveys no information about the services
themselves. By Opposer’s logic, every mark applied to goods could be considered
merely descriptive of the service of creating those goods because the mark could and
probably would be used in referring to the goods. Under this logic, APPLE for
computers and FORD for cars would be merely descriptive because APPLE and
FORD “describe”—in the sense Opposer is using the term—a particular type (brand)
of computer or a car. Such an outcome is anathema to trademark law. The fact that

16 Beeson Dep., p. 112, 7 TTABVUE 117.
17 8 TTABVUE 258.
Opposition Nos. 91221098 and 91222928
7
Applicant’s services create goods imprinted with STILL SPOONING, and that
Applicant’s web page depicts the goods bearing STILL SPOONING does not make
the mark merely descriptive inasmuch as STILL SPOONING does not “immediately
convey[] knowledge of a quality, feature, function, or characteristic of” Applicant’s
services. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217,
1219 (Fed. Cir. 2012) (emphasis added) (quoting In re Bayer Aktiengesellschaft, 488
F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009, 1009-10 (Fed. Cir. 1987).
For the foregoing reasons, we find that STILL SPOONING is not merely
descriptive when used in connection with the identified services.
V. Whether STILL SPOONING is merely ornamental and thus fails to function as a
source identifier for the identified services
Subject matter presented for registration must function as a trademark or service
mark. 15 U.S.C. §§ 1051, 1052, and 1127. In re Bose Corp., 546 F.2d 893, 192 USPQ
213, 215 (CCPA 1976) (“Before there can be registration, there must be a
trademark.”). Sections 1, 2, and 45 of the Trademark Act provide the statutory bases
for refusal to register on the Principal Register subject matter that, due to its inherent
nature, does not function as a mark to identify and distinguish an applicant’s
services. It is well settled that not every designation that is used in connection with
services necessarily functions as a service mark and not every designation adopted
with the intention that it perform a service mark function necessarily does so. In re
Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013).
Opposition Nos. 91221098 and 91222928
8
Opposer argues that STILL SPOONING is unregistrable for Applicant’s services
because it is “an ornamental feature . . . for Applicant’s goods.”18 That is, inasmuch
as some of Applicant’s products have been imprinted with STILL SPOONING, “the
only possible significance the Still Spooning Designation would have to any purchaser
is as an ornamental feature [of] Applicant’s goods.”19
Applicant counters that “the issue of ornamental usage is irrelevant and does not
apply in this matter.”20 For authority, Applicant cites to Section 1202.03 of the
Trademark Manual of Examining Procedure (“TMEP”) which states: “Generally, the
ornamentation refusal applies only to trademarks, not to service marks.” When read
in its entirety, TMEP Section 1202.03 is not as clear-cut as Applicant suggests.
Indeed, it refers readers to Section 1301.02(a) (Matter that Does Not Function as a
Service Mark) which states: “Matter that is merely ornamental in nature does not
function as a service mark.” This language suggests that whether matter is
ornamental is relevant to service mark registrability determinations. Although the
TMEP is not binding on the Board, West Florida Seafood Inc. v. Jet Rests. Inc., 31
USPQ2d 1660, 1664 n.8 (Fed. Cir. 1994) (“While the TMEP does not have the force
and effect of law, it sets forth the guidelines and procedures followed by the
examining attorneys at the PTO.”), in this instance we concur with the TMEP’s
general proposition that merely ornamental matter does not function as a service

18 Id. at 9, 11 TTABVUE 15.
19 Id. at 10, 11 TTABVUE 16.
20 Applicant’s Br., p. 7, 12 TTABVUE 8.
Opposition Nos. 91221098 and 91222928
9
mark. See In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1684 (Fed.
Cir. 2010) (“Cuffs & Collar [service] mark constitutes ‘a mere refinement of a
commonly-adopted and well-known form of ornamentation for a particular class of
goods.’”); In re Chevron Intellectual Prop. Grp. LLC, 96 USPQ2d 2026 (TTAB 2010)
(affirming that applicant’s gasoline pump signage “is a mere refinement of a
commonly used form of a gasoline pump ornamentation rather than an inherently
distinctive service mark for automobile service station services”); In re File, 48
USPQ2d 1363, 1367 (TTAB 1998) (stating that novel tubular lights used in
connection with bowling alley services would be perceived by customers as “simply a
refinement of the commonplace decorative or ornamental lighting . . . and would not
be inherently regarded as a source indicator.”); and In re Tad’s Wholesale, Inc., 132
USPQ 648 (TTAB 1962) (ornamental wallpaper design was found to be unregistrable
as a service mark for restaurant services).
The critical inquiry in determining whether a potentially ornamental designation
functions as a mark is how the designation would be perceived by the relevant
consumers. To make this determination we look to specimens and other evidence of
record showing how the designation is actually used in the marketplace. In re Eagle
Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); Michael S. Sachs Inc. v. Cordon Art
B.V., 56 USPQ2d 1132, 1135 (TTAB 2000).
Opposition Nos. 91221098 and 91222928
10
Specimens from the two involved applications appear below.
21

21 Serial No. 86417226, Application of October 7, 2014, TSDR p. 4.
Opposition Nos. 91221098 and 91222928
11
22
These web pages present the prospective consumer with a variety of terms used
as possible marks. “Etsy,” in the upper left hand corner, is the name of the third-
party platform through which Applicant sells her goods. The terms
SPOONTRACKER and SPOON TRACKER appear prominently at the top of both
pages and in the largest font. On the Serial No. 86547415 specimen,
SPOONTRACKER appears just below the gray banner followed by the wording

22 Serial No. 86547415, Application of February 26, 2015, TSDR p. 3.
Opposition Nos. 91221098 and 91222928
12
“Personalized spoons, stamped silverware, Unique Gifts.” SPOONTRACKER also
appears immediately after the wording “Shop Info.” And the wording “FEATURED
ITEMS FROM SPOONTRACKER” appears immediately above Applicant’s featured
flatware and a lure. Given the prominence of SPOONTRACKER and SPOON
TRACKER and their close association with wording describing Applicant’s services,
we find that consumers would likely view these terms as identifying the source of
Applicant’s retail services and custom imprinting services inasmuch as they appear
in the same place and manner as service marks are typically used on webpages.
The use of STILL SPOONING is much less prominent than the use of SPOON
TRACKER and is not closely associated with any wording describing or identifying
Applicant’s services. For example, STILL SPOONING appears prominently on both
the fishing lures and on five of the seven “featured” utensil sets, as well as in the
product descriptions accompanying them. The fishing lure product description on the
Serial No. 86417226 specimen reads: Still SpooningTM Since 2009, Personalized
Fishing Lure, Anniversary Gift, stamped spoon fishing lure, Spoon Tracker.”
Similarly, two of the spoon sets are identified by the wording “10 Years Still
SpooningTM. . . .” The wording “STILL SPOONINGTM SETS” also appears on the left-
hand side of the Applicant’s web page under the heading “Shop Sections” alongside
other product categories such as “Anniversary,” “Engagement/Wedding,”
“Personalized Spoons,” “Fishing Lures,” and “Ready to Ship.” None of these uses
associate STILL SPOONING with Applicant’s services. Similarly, STILL
SPOONING appears in the phrase EST. 2011 AND STILL SPOONING in the banner
Opposition Nos. 91221098 and 91222928
13
below the wording SPOON TRACKER, but its use as part of a tagline associated with
the service mark SPOONTRACKER argues against its being perceived as a service
mark.
Based on these specimens, we find that the term STILL SPOONING fails to
function as a service mark because it would be perceived by the relevant public as
merely referring to the inscription on Applicant’s flatware sets and lures, rather than
to Applicant’s retail store or imprinting services. This finding is based, in part, on the
commemorative nature of STILL SPOONING, defined supra, as it appears on the
flatware and lures, which is likely to be perceived by consumers as a sentimental
expression celebrating personal relationships.
Slogans and other terms, such as STILL SPOONING, that are considered to be
merely informational in nature, or that express support, admiration or affiliation, are
generally not registrable. See In re Eagle Crest Inc., 96 USPQ2d 1227, 1232 (TTAB
2010) (“ONCE A MARINE, ALWAYS A MARINE is an old and familiar Marine
expression, and as such it is the type of expression that should remain free for all to
use.”); D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (TTAB 2016) (I ♥
DC fails to function as a trademark because it would not be perceived as an indicator
of the source of the goods on which it appears); In re Melville Corp., 228 USPQ 970,
972 (TTAB 1986) (finding BRAND NAMES FOR LESS, for retail store services in the
clothing field, “should remain available for other persons or firms to use to describe
the nature of their competitive services.”). See also In re Compagnie Nationale Air
France, 265 F2d 938, 121 USPQ 460, 461 (CCPA 1959) (SKY-ROOM is not registrable
Opposition Nos. 91221098 and 91222928
14
as service mark for air transportation of passengers since it is used to connote
particular type of accommodation); In re British Caledonian Airways Ltd., 218 USPQ
737 (TTAB 1983) (SKYLOUNGER identified a type of airplane seat not a service
mark for air transportation services).
Applicant argues that STILL SPOONING nevertheless functions as a mark for its
services because it is closely associated with the services:
[T]he Mark is placed in proximity to the links for features
in rendering those services, i.e. the cart option for
purchasing goods from an online retailer. Furthermore,
Applicant’s Mark is placed in close proximity to the
“Request Custom Order” button which is used by Applicant
to receive and accept offers for custom orders, and to gather
the necessary information from purchaser to render the
Class 040 custom imprinting services.”23
This argument is unavailing. STILL SPOONING, as used on Applicant’s web
sites, would be perceived as an informational or sentimental slogan on Applicant’s
flatware and lures, and not as a service mark. Although we have no doubt that
Applicant is providing the identified services, STILL SPOONING does not appear to
be a service mark for these services. Further, although Applicant may intend STILL
SPOONING to be a service mark for its services, “‘[m]ere intent that a term function
as a trademark [or service mark] is not enough in and of itself . . . to make a term a
trademark.’” In re Manco Inc., 24 USPQ2d 1938, 1941 (TTAB 1992) (quoting In re
Remington Prods. Inc., 3 USPQ2d 1714, 1715 (TTAB 1987)) (THINK GREEN failed
to function as a mark for, inter alia, mailing and shipping cardboard boxes); In re

23 Applicant’s Br, p. 15, 12 TTABVUE 16.
Opposition Nos. 91221098 and 91222928
15
Niagara Frontier Servs., Inc., 221 USPQ 284 (TTAB 1983) (WE MAKE IT, YOU
BAKE IT! failed to function as a service for grocery store services).
Nor does Applicant’s frequent use of the “TM” symbol support a finding that
Applicant is using STILL SPOONING as a service mark. The use of the “TM” symbol
cannot transform a non-trademark term into a trademark, much less a service mark.
In re Brass-Craft Mfg. Co., 49 USPQ 1849, 1853 (TTAB 1998); In re Remington Prods.
Inc., 3 UPSQ2d at 1715. Here, the use of the “TM” symbol does not negate the
informational nature of STILL SPOONING, which is primarily used on Applicant’s
flatware and lures. Moreover, in the unlikely event that consumers are familiar with
the technical difference between the “SM” and “TM” symbols, Applicant’s use of “TM”
suggests that STILL SPOONING is a trademark rather than a service mark. See
TMEP Section 906.
Applicant’s more recent web pages also support the finding that STILL
SPOONING would be perceived by consumers as merely referring to the inscription
on Applicant’s spoon sets and lures. On one representative page, below, STILL
SPOONING appears variously as: part of the “Still SpooningTM Collection,” displayed
on spoons in a heart-shaped floral design, a product category heading, part of product
descriptions, and as part of the wording “Custom Still SpooningTM.” None of these
uses constitutes service mark usage, rather, these spoons clearly display “spooning”
used in the romantic, relationship sense (i.e., “Still Spooning After 25 Years”).
Opposition Nos. 91221098 and 91222928
16
24

24 7 TTABVUE 197.
Opposition Nos. 91221098 and 91222928
17
On another representative page, STILL SPOONING appears in a revised logo to
the left of “SpoonTracker” Given the likely consumer understanding of the term
STILL SPOONING, the prevalence of STILL SPOONING on Applicant’s flatware and
lures elsewhere on the page, the prominence of SpoonTracker, and the lack of any
connection with the identified services, as with the other web pages, STILL
SPOONING likely would be perceived by the relevant public as merely referring to
the inscription on Applicant’s spoon sets and lures.
25

25 7 TTABVUE 207.
Opposition Nos. 91221098 and 91222928
18
In summary, the manner in which STILL SPOONING is being used does not
support a finding that potential consumers would perceive it as a service mark for
the identified services. As used in the specimens of record and elsewhere in the
record, STILL SPOONING does not convey the commercial impression of a mark
identifying the source of origin of Applicant’s services. Instead, STILL SPOONING
likely would be perceived by the relevant public as merely referring to the romantic
inscription on Applicant’s flatware and lures, not Applicant’s retail store or custom
imprinting services. Accordingly, we find that STILL SPOONING does not function
as a mark to identify and distinguish Applicant’s services under Sections 1, 2 and 45
of the Trademark Act, 15 U.S.C. §§ 1051, 1052, and 1127.
Decision: The Oppositions are sustained and registration of the mark is refused.