Naturally Fresh, Inc.

Trademark Trial and Appeal Board

Jan 28, 2008

No. 78662753 (T.T.A.B. Jan. 28, 2008)

Decision Mailed:
January 28, 2008
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Naturally Fresh, Inc.
________

Serial No. 78662753
_______

Laurence P. Colton of Smith, Gambrell & Russell, LLP for
Naturally Fresh, Inc.

Dominic R. Fathy, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
_______

Before Hohein, Hairston and Walters, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Naturally Fresh, Inc. has filed an application to
register on the Principal Register in standard character form the
term "NATURALLY FRESH" for "fruit and vegetable salads; garden
salads; potato salad; pre-cut vegetable salad; [and] salads
except macaroni, rice and pasta salad" in International Class 29
and "macaroni salad, rice salad and pasta salad" in International
Class 30.1

1 Ser. No. 78662753, filed on July 1, 2005, which is based on an
allegation of a bona fide intention to use such term in commerce.

THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser. No. 78662753
2
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
ground that, when used in connection with applicant's goods, the
term "NATURALLY FRESH" is merely descriptive thereof.
Applicant has appealed and briefs have been filed. We
affirm the refusal to register.
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it forthwith conveys
information concerning any significant ingredient, quality,
characteristic, feature, function, purpose, subject matter or use
of the goods or services. See, e.g., In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987); and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). It is not necessary that a term describe all of the
properties or functions of the goods or services in order for it
to be considered to be merely descriptive thereof; rather, it is
sufficient if the term describes a significant attribute or idea
about them. Moreover, whether a term is merely descriptive is
determined not in the abstract but in relation to the goods or
services for which registration is sought, the context in which
it is being used or is intended to be used on or in connection
with those goods or services and the possible significance that
the term would have to the average purchaser of the goods or
services because of the manner of such use. See In re Bright-
Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Thus, "[w]hether
consumers could guess what the product [or service] is from
Ser. No. 78662753
3
consideration of the mark alone is not the test." In re American
Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Applicant, in its main brief, contends that the term
"NATURALLY FRESH" is not merely descriptive of its goods because
such term, as a whole, does not immediately describe a
significant ingredient, quality or characteristic of salads nor
otherwise convey information about the goods with particularity
and that there is no need by competitors to so describe their
salads. Although, among other things, applicant in this regard
"acknowledges ... that the words 'naturally' and 'fresh' have
significance in the marketplace" for processed or prepared
salads, applicant "maintains that the combined term 'naturally
fresh' does not have any significance in the marketplace."
Specifically, applicant claims that:
While the terms "natural" (or "naturally")
and/or "fresh" may be descriptive on their
own, Applicant's Mark NATURALLY FRESH (as a
whole) is not descriptive because Applicant's
Mark creates a unique commercial impression
that is greater than the sum of its parts.
.... Tellingly, the Examining Attorney ...
has not even proffered a definition for the
combined term "naturally fresh" because there
is no such definition.

Applicant insists that, instead, "the Examining Attorney was
forced to engage in a multi-stage reasoning analysis," by relying
on definitions of record of the separate words "naturally" and
"fresh," in order to present an argument which "makes Applicant's
Mark non-descriptive."
According to applicant, the "main flaw in the Examining
Attorney's reasoning is that, while salad can be described as
natural and/or fresh, salads grammatically cannot be described as
Ser. No. 78662753
4
'naturally fresh.'" Thus, while "salads can be 'fresh' and/or
'natural' in various permutations," applicant asserts that "the
term 'naturally fresh' cannot and does not describe any
particular aspect of the ingredients connected with salads" with
any degree of particularity. Moreover, even if the constituent
words are regarded as merely descriptive individually, applicant
argues that the "combination of descriptive elements as a
composite results in a mark that is non-descriptive, [inasmuch]
as the words are inventive and evoke a unique commercial
impression and have an incongruous meaning as applied to the
goods." In sum, applicant contends that (emphasis in original):
Applicant's Mark as a whole does not describe
anything immediately connected with ...
salads. The combination of the words
"naturally" and "fresh" is essentially so
ambiguous that the term cannot immediately
describe any aspect of salads. Without the
immediacy component, Applicant's Mark cannot
be descriptive.

Applicant further maintains that the evidence made of
record by the Examining Attorney, which includes excerpts from
websites and dictionary definitions, fails to demonstrate that
the term "NATURALLY FRESH" is merely descriptive of its goods
with the required degree of particularity, arguing that:
Applicant's Mark does not describe or
convey a real and unequivocal ideal of the
connected goods. Although consumers can be
presumed to have some knowledge about the
general field relating to foods or, more
particularly, salads, consumers are left
guessing the particular goods associated with
Applicant's Mark. .... The Examining
Attorney has not proffered a single
descriptive example of a "naturally fresh
salad". As Applicant's Mark does not convey
the idea of salads (or any characteristic
thereof) to the consumer, consumers
Ser. No. 78662753
5
encountering Applicant's Mark must use a
degree of imagination to arrive at
Applicant's goods and therefore Applicant's
Mark is not descriptive. ....

Although the Examining Attorney has
attached to the 24 August 2008 Office Action
exhibits of alleged commercial uses of the
phrase "naturally fresh," none of these uses
relate[s] to salads. Even with these
examples, the Examining Attorney still cannot
identify or even isolate what Applicant's
Mark is descriptive of. In fact, there is no
evidence that shows that the term "naturally
fresh" is used in connection with salads.
....

Further compounding the error of the
Examining Attorney's position is that the
Examining Attorney's definitional evidence is
inapposite. While the Examining Attorney
alleges reliance on "definitional evidence",
the Examining Attorney has failed to proffer
a single definition of the term "naturally
fresh". Undoubtedly, this shortcoming is
because the phrase "naturally fresh" offers
no real, independent meaning with respect to
a food product or salads, and does not have a
definition.

As acknowledged by the Examining
Attorney, the word "naturally" is an adverb
and the word "fresh" is an adjective. While
a "fresh" salad is one whose ingredients were
harvested recently and a "natural" salad is
one whose ingredients are from nature, the
words "naturally fresh salad" evoke no such
association. By placing the adverb
"naturally" in front of the adjective
"fresh", "naturally" can only modify "fresh",
rather than the underlying good. This
juxtaposition was created by Applicant
decades ago to create a unique commercial
impression and was not designed to describe a
good with particularity.

Accordingly, Applicant's Mark is not
descriptive of the goods of salad because it
does not describe any characteristic or
quality with particularity. The impact of
"naturally" on freshness is readily apparent,
and obviates any particularity of the term.
Without the particularity conveyance,
Applicant's Mark cannot be descriptive.
Ser. No. 78662753
6

Finally, applicant urges that "[t]he Examining
Attorney's position that other competitors need the term
'naturally fresh' to compete is incorrect," noting again its
assertion that "the Examining Attorney has not shown a single
instance in which the term 'naturally fresh' is being used in
connection with salads." Applicant contends, instead, that "[a]t
best, the Examining Attorney's evidence shows that a few people
may be using the term 'naturally fresh' inappropriately," as
"shown [by] some minor use of Applicant's Mark in website
printouts ...." Applicant also asserts that (emphasis in
original):
In this case, the Examining Attorney has
not provided any evidence that anyone, other
than Applicant, has registered the combined
terms "naturally" and "fresh" in connection
with salads (or any food products). This is
evidence of lack of use and is strong
evidence that Applicant's Mark is not merely
descriptive. ....

Applicant consequently "maintains [that] competitors do not need
and have not needed to use Applicant's Mark NATURALLY FRESH in
order to compete in the marketplace." Applicant adds that in any
event, "competitors will not be deprived of the use of the
individual words 'naturally' or 'fresh' to describe their goods";
rather, at most, "competitors merely will be precluded from using
the combination of [such] words in a manner confusingly similar
to that of Applicant."
The Examining Attorney, on the other hand, finds that
the term "NATURALLY FRESH" is merely descriptive because, as set
forth in his brief, it "describes a specific characteristic of
Ser. No. 78662753
7
the goods provided by the applicant, namely naturally fresh
foods." Relying, in particular, upon the dictionary definitions
of record, which in relevant part show that the "MSN Encarta
Dictionary" (2007) defines the word "naturally" as an adverb
meaning "without artificial aid or treatment: occurring as a
natural feature or quality without artificial aid" and lists the
word "fresh" as an adjective connoting "not preserved: not
having been preserved, aged, or processed, e.g. by canning or
freezing,"2 the Examining Attorney maintains that the term
"NATURALLY FRESH" "is descriptive of a feature of good goods that
are without artificial aid and preservation, otherwise known as
NATURALLY FRESH."
In addition, relying upon certain "Internet/marketplace
evidence" which is of record, the Examining Attorney contends
that such evidence "not only shows that the term [NATURALLY
FRESH] is commonly use[d] to describe characteristics of fruits
and salad, but [it] also rebuts the applicant's argument
regarding a lack of competitive need in describing similar
goods." Specifically, while the evidence does not pertain to
salads per se, the following website excerpts all involve or
relate to various foods of which some of those, like applicant's
salads, also have been processed or otherwise prepared for
consumption (emphasis added):

2 The record, we observe, also contains the following definitions which
show that, similarly, The American Heritage Dictionary of the English
Language (2000) sets forth the word "naturally" as an adverb meaning
"[i]n a natural manner" while the Oxford English Dictionary (2d ed.
1989) defines the word "fresh" as an adjective signifying "[r]etaining
its original qualities; not deteriorated or changed by lapse of time;
not stale, musty, or vapid."
Ser. No. 78662753
8
"Melissa's Organic Nectarines, are grown
naturally fresh and juicy without the use of
synthetic fertilizers, pesticides, or
herbicides." -- http://www.melissas.com-
/catalog/index.cfm?info=yes&product_ID=2475;

"The finest Northwest Raspberries are
combined with Pear Brandy to create a
naturally fresh raspberry preserve with ruby
red color." -- http://www.oregongourment.com-
/French-PrairieRaspberry-Preserves-Brandy.-
html;

"As you move from Fresh Fruit Baskets
... to Fruit ... to Pecans ..., be assured
that all fruit is naturally fresh and
wholesome and the other items are of the
highest quality." -- http://www.orchards-
bounty.com/site/1511727/page/45031;

"Naturally fat free. Zapp's salsa is an
authentic mexican recipe using only naturally
fresh ingredients." -- http://www.crescent-
citygifts.com/detail.aspx?product_ID=sn002;
and

"In summer and even into early fall, the
garden is full of organically grown veggies
that will most likely show up in your lunch
salad or on your dinner plate. All veggies
and fruits are prepared to maintain their
nutritional integrity and naturally fresh
flavor." -- http://www.hiddenhollowretreat-
.com/About_Hidden_Hollow.htm.

As further evidence to support his position, the
Examining Attorney has made of record and relies upon copies of
three active registrations owned by applicant for marks which
consist of or include the term "NATURALLY FRESH"3 and which

3 Applicant, in its main brief, has objected to consideration of two of
such registrations (as well as a third registration which it also
allegedly owns, namely, "Registration No. 2,143,769 for, inter alia,
water," but which is not of record) on the basis that while "the
previous registrations were filed under Section 2(f)," "none of the
... marks is for salads." Contending that "prior registration records
are not of record and are not relevant, [and that] this case must be
decided on its own facts and merits," applicant "requests that the
Board ... place no weight on Applicant's prior registrations cited by
the Examining Attorney," notwithstanding its own reliance thereon with
Ser. No. 78662753
9
issued on either (i) the Supplemental Register for "salad
dressing and an egg and dairy based mix to be used as a filling
for quiche" in International Class 29 and "sauces, excluding
apple sauce and cranberry sauce," in International Class 304 or
(ii) the Principal Register pursuant to a claim of acquired
distinctiveness for "salad dressings and an egg and dairy based
mix to be used as a filling for quiche and as an omelette [sic]
mix" in International Class 29 and "sauces excluding apple sauce
and cranberry sauce" in International Class 30.5 The Examining
Attorney argues that "applicant's prior registrations, while not
binding ..., illustrate consistency as to the applicant's prior
acts regarding the descriptiveness of the mark in relation to
related goods."
Based upon the foregoing evidence, the Examining
Attorney maintains that "no significant imagination is needed to
understand" that the term "NATURALLY FRESH" merely describes "a
characteristic or feature of the applicant's goods, namely [that]
the applicant's fruit, vegetable and salad goods are naturally
fresh or otherwise without artificial aid and preservation."

respect to its previously mentioned argument that it is the only
entity to have used the term "NATURALLY FRESH" as a mark and that
there is no need by competitors to use such term descriptively in
connection with their goods. Suffice it to say, however, that to the
extent to which the registrations owned by applicant and made of
record by the Examining Attorney arguably have a bearing on the
asserted mere descriptiveness of the term "NATURALLY FRESH" in
connection with processed or prepared foods, applicant's objection is
overruled and such registrations have been considered.

4 Reg. No. 1,254,865, issued on October 18, 1983, which sets forth a
date of first use anywhere and in commerce of March 21, 1980; renewed.

5 Reg. Nos. 1,398,682 and 1,398,683, both of which issued on June 24,
1986, setting forth in each instance a date of first use anywhere and
in commerce of March 21, 1980; both renewed.
Ser. No. 78662753
10
Rather than impermissibly dissecting applicant's asserted mark,
the Examining Attorney insists that "combining the terms
NATURALLY and FRESH creates no separate [or incongruous] meaning"
and that "no imagination [or multi-stage reasoning] is required
to understand the nature of the goods" as merely described by the
term "NATURALLY FRESH." The Examining Attorney, in this regard,
correctly points out that:
The fact that a term is not found in the
dictionary is not controlling on the question
of registrability. In re Gould Paper Corp.,
834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir.
1987); In re Orleans Wines, Ltd., 196 USPQ
516 (TTAB 1977); TMEP §1209.03(b).

Thus, contrary to applicant's argument, the Examining Attorney
contends that the immediacy requirement for a mark to be
considered to be merely descriptive of the associated goods is
satisfied in this instance.
Similarly, the Examining Attorney urges that the term
"NATURALLY FRESH" merely describes applicant's goods with the
requisite particularity, properly noting that:
For the purpose of a Section 2(e)(1)
analysis, a term need not describe all of the
purposes, functions, characteristics or
features of the goods to be merely
descriptive. In re Dial-A-Mattress Operating
Corp., 240 F.3d 1341, ... 57 USPQ2d 1807
(Fed. Cir. 2001). It is enough if the term
describes only one significant function,
attribute or property. In re Oppedahl &
Larson LLP, 373 F.3d 1171, 1371, 71 USPQ2d
1370, 1371 (Fed. Cir. 2004). ....

Because the term "NATURALLY FRESH" readily conveys that
applicant's goods are processed or prepared without the use of

Ser. No. 78662753
11
synthetic fertilizers, pesticides or herbicides, the Examining
Attorney urges that "applicant's mark describes the applicant's
goods with sufficient particularity whereby no imagination is
required by consumers to understand the descriptiveness of the
mark as applied to the goods."
Finally, as to applicant's assertion that competitors
do not need to use the term "NATURALLY FRESH" in order to compete
in the prepared salad business as demonstrated by the absence of
any evidence in the record of use thereof by a third party in
connection with such goods, the Examining Attorney again properly
points out that:
The fact that an applicant may be the first
and sole user of a merely descriptive ...
designation does not justify registration
where the evidence shows that the term is
merely descriptive of the identified goods.
In re Acuson, 225 USPQ 790 (TTAB 1985)
(COMPUTED SONOGRAPHY descriptive of
ultrasonic imaging instruments); In re
National Shooting Sports Foundation, Inc.,
219 USPQ 1018 (TTAB 1983) (SHOOTING, HUNTING,
OUTDOOR TRADE SHOW AND CONFERENCE held ...
descriptive ... for conducting and arranging
trade shows in the hunting, shooting and
outdoor sports products field); TMEP
§1209.03(c). ....

Furthermore, and in any event, the Examining Attorney submits
that he "has shown[,] through third party evidence, use in the
marketplace for the particular phrasing at issue here for similar
goods." Such evidence, the Examining Attorney accordingly
insists, demonstrates that the term "NATURALLY FRESH immediately
conveys a specific impression as to the applicant's goods and
creates a competitive need as to the use of the descriptive
language."
Ser. No. 78662753
12
Upon consideration of the evidence and arguments
presented, we agree with the Examining Attorney that, when
considered in its entirety, the term "NATURALLY FRESH" is merely
descriptive of applicant's fruit and vegetable salads, garden
salads, potato salad, pre-cut vegetable salad and various other
prepared salads including macaroni salad, rice salad and pasta
salad. The Internet excerpts noted above and the dictionary
definitions demonstrate that the term "NATURALLY FRESH"
immediately and particularly conveys, without the need for
speculation or conjecture, that a significant characteristic or
feature of applicant's salads is that they are naturally fresh in
the sense of not having been preserved or processed through
artificial aid or treatment such as by canning or freezing. In
the context of applicant's goods, there is nothing in the term
"NATURALLY FRESH" which, to consumers for prepared salads, is
incongruous, ambiguous or even suggestive, nor is there anything
which would require the exercise of imagination, cogitation or
mental processing, or necessitate the gathering of further
information, in order for the merely descriptive significance
thereof to be readily apparent to such customers. Instead, the
term "NATURALLY FRESH" conveys forthwith, and with the requisite
particularity, that a significant characteristic or feature of
applicant's prepared salads is they are fresh through natural
means rather than artificial aids or preservatives and,
therefore, would obviously be considered by purchasers to be more
desirable and wholesome than prepared salads which have been
Ser. No. 78662753
13
frozen, canned or otherwise processed to extend their shelf-life
in grocery stores, supermarkets and convenience stores.
Moreover, as to applicant's argument that its
competitors do not have any need to use the term "NATURALLY
FRESH," and have not done so, to describe a desirable aspect of
their prepared salads, suffice it to say that even if competitors
are able to advertise or market their goods through the use of
other language, that does not mean that such term is not merely
descriptive of applicant's prepared salads. See, e.g., Roselux
Chemical Co., Inc. v. Parsons Ammonia Co., Inc., 299 F.2d 855,
132 USPQ 627, 632 (CCPA 1962). Here, just as the term "NATURALLY
FRESH" has been shown by the record to have a merely descriptive
significance in connection with other foods, ranging from third-
party use thereof for nectarines and other fruits and vegetables
to prepared foods like raspberry preserves and salsa, it is plain
from the meanings of the words "NATURALLY" and "FRESH" that,
contrary to applicant's assertion, those words have a meaning
when combined into the term "NATURALLY FRESH" which ordinary
usage would ascribe to those terms in combination, irrespective
of the apparent absence of such term from any dictionary. See In
re Gould Paper Corp., supra at 5 USPQ2d 1112 and In re Orleans
Wines, Ltd., supra at 517. Clearly, no new and unique commercial
impression is created, and tellingly applicant has not even
attempted to indicate what such might be, inasmuch as nothing in
the combination results in a unitary mark with a unique, bizarre
or otherwise nondescriptive meaning as applied to applicant's
various salads. Rather, the constituent elements retain their
Ser. No. 78662753
14
descriptive significance and their combination is itself merely
descriptive of applicant's prepared salads, just as the term
"NATURALLY FRESH" likewise has been demonstrated to be
unregistrable on the Principal Register, in the absence of a
showing of acquired distinctiveness, in the case of other goods
of applicant's, namely, salad dressings, an egg and dairy based
mix to be used as a filling for quiche and as an omelet mix, and
sauces other than apple sauce and cranberry sauce. See, e.g., In
re Entenmann’s Inc., 15 USPQ2d 1750, 1751 (TTAB 1990), aff’d per
curiam, 928 F.2d 411 (Fed. Cir. 1991) (OATNUT held to be merely
descriptive of bread containing oats and hazelnuts). Thus, even
if applicant intends to be the sole user of the term "NATURALLY
FRESH" in connection with various prepared salads, that does not
entitle it to the registration thereof where, as here, the term
has been shown to immediately and particularly convey only a
merely descriptive significance in the context of applicant's
goods. See, e.g., In re National Shooting Sports Foundation,
Inc., supra at 1020 and In re Mark A. Gould, M.D., 173 USPQ 243,
245 (TTAB 1972).
Decision: The refusal under Section 2(e)(1) is
affirmed.