Nunn Milling Company, Inc.

Trademark Trial and Appeal Board

Jul 24, 2017

No. 86596764 (T.T.A.B. Jul. 24, 2017)

This Opinion is not a
Precedent of the TTAB

Oral Hearing: May 9, 2017 Mailed: July 24, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Nunn Milling Company, Inc.
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Serial No. 86596764
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Timothy D. Pecsenye, of Blank Rome LLP,
for Nunn Milling Company, Inc.
Matt Einstein, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
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Before Mermelstein, Goodman and Coggins,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
Nunn Milling Company, Inc. (“Applicant”) seeks registration on the Principal
Register of the mark VERY BERRY (in standard characters) for “bird food made in
significant part of suet,” in International Class 31.1 The Trademark Examining
Attorney has refused registration of Applicant’s mark under Section 6(a) of the
Trademark Act, 15 U.S.C. § 1056(a).

1 Application Serial No. 86596764 was filed on April 14, 2015, based upon Applicant’s claim
of first use anywhere and use in commerce since at least as early as April 1, 2015.
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When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. An oral hearing was held on May 9, 2017.
We affirm the refusal to register.
I. Applicable Law
Under Trademark Act Section 6(a), 15 U.S.C. § 1056(a), “[t]he Director may
require the applicant to disclaim an unregistrable component of a mark otherwise
registrable,” such as a component which is merely descriptive under Trademark Act
Section 2(e)(1), 15 U.S.C. § 1052(e)(1). See In re Richardson Ink Co., 511 F.2d 559,
185 USPQ 46, 47 (CCPA 1975) (an applicant is not entitled to register composite word
mark “unless descriptive and unregistrable subject matter contained therein is
disclaimed.”); In re Candy Bouquet Int’l Inc., 73 USPQ2d 1883, 1889 (TTAB 2004)
(“The purpose of a disclaimer is to permit the registration of a mark that is registrable
as a whole but contains matter that would not be registrable standing alone . . . .”).
Failure to comply with a disclaimer requirement is a ground for refusal of
registration. See In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262,
1264 (Fed. Cir. 2015); In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395, 1399-1400
(Fed. Cir. 2006); In re Stereotaxis, Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed.
Cir. 2005); In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859, 1859 (Fed. Cir.
1987); In re Ginc UK Ltd., 90 USPQ2d 1472, 1475-76 (TTAB 2007).
A term is merely descriptive within the meaning of Section 2(e)(1), if it forthwith
conveys an immediate idea of an ingredient, quality, characteristic, feature, function,
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purpose or use of the goods or services. In re Bayer AG, 488 F.3d 960, 82 USPQ2d
1828, 1831 (Fed. Cir. 2007) (quoting In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009,
1009 (Fed. Cir. 1987)); In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 217-18
(CCPA 1978). A term need not immediately convey an idea of each and every specific
feature of the goods or services in order to be considered merely descriptive; rather,
it is sufficient that the term describes one significant attribute, function or property
of the goods or services. In re Chamber of Commerce of the United States of America,
675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re H.U.D.D.L.E., 216
USPQ 358, 359 (TTAB 1982). Whether a mark is merely descriptive cannot be
determined in the abstract or on the basis of guesswork. Descriptiveness must be
evaluated “in relation to the particular 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 Chamber of Commerce, 102 USPQ2d at 1219 (quoting In re Bayer
AG, 82 USPQ2d at 1831). In other words, we evaluate whether someone who knows
what the goods are will understand the mark – or, when a disclaimer is required, a
portion thereof – to convey information about them. DuoProSS Meditech Corp. v.
Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012).
II. Argument and Analysis
The Examining Attorney argues that the term BERRY as used in Applicant’s
mark and in the context of the identified goods, merely describes an ingredient of
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Applicant’s goods. The Examining Attorney submits that the combination of the
terms VERY and BERRY does not change the commercial impression that Applicant’s
goods “contain a lot of berries.” 10 TTABVUE 8. The Examining Attorney argues that
despite the fact that the word BERRY rhymes with the word VERY, the “term BERRY
will still immediately describe an ingredient of the goods” and a disclaimer of BERRY
is required. Id.
As evidentiary support, the Examining Attorney points to Applicant’s specimen2
and website3 (arrows supplied) which reveal that Applicant’s goods contain berries,
and in particular, blueberries:

2 Specimen of April 14, 2015.
3 January 6, 2016 Office Action, p. 2.
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The Examining Attorney also provided third-party registrations to show the Office’s
treatment of marks containing the terms VERY and BERRY with entered disclaimers
of “berry,” none of which are for the same goods, “to show that the rhyming scheme
does not obviate the requirement for a disclaimer.” July 28, 2016 Office Action.
Applicant argues, on the other hand, that VERY BERRY is “a unitary expression
derived from the mark’s strong rhythmic cadence and memorable sound pattern,
which visually and aurally fuse the mark into an inseparable and integrated unitary
whole . . . ” such that no disclaimer of BERRY is required. 7 TTABVUE 9. Applicant
also argues that the third-party registration evidence provided by the Examining
Attorney is not compelling and that consumers are likely to view Applicant’s mark as
unitary.
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If the matter that comprises a mark is unitary, no disclaimer of an element,
whether descriptive, generic, or otherwise, is required. To be considered a unitary
mark, the elements of the mark in question must be so merged “that the mark has a
distinct meaning of its own independent of the meaning of its constituent elements.”
Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 21 USPQ2d 1047, 1052 (Fed. Cir.
1991) (EUROPEAN FORMULA above a circular design on a dark background was
not a unitary mark); In re EBS Data Processing, Inc., 212 USPQ 964, 966 (TTAB
1981) (“[I]f the elements are so merged together that they cannot be regarded as
separable elements, the mark is a single unitary mark and not a composite mark and
no disclaimer is necessary.”). In rare cases, alliterative marks, or those with a
rhyming or other sound pattern, can encourage persons encountering the mark to
perceive the mark as a whole. See, e.g., In re Kraft, Inc., 218 USPQ 571, 573 (TTAB
1983) (finding LIGHT N' LIVELY to be a unitary term not subject to disclaimer
because the mark “as a whole has a suggestive significance which is distinctly
different from the merely descriptive significance of the term ‘LIGHT’ per se,” which
is “lost in the mark as a whole”). It is well-established, however, that alliteration in
and of itself or a rhyming pattern does not render a mark unitary. For example, in
DuoProSS Meditech, 103 USPQ2d at 1759, our primary reviewing court found no
evidence that the alliteration in the term SNAP SIMPLY SAFER creates a
commercial impression that is more than merely descriptive, and in In re Ginc, 90
USPQ2d at 1476, the Board found that the rhyming pattern of ZOGGS TOGGS
imparts no new or different meaning to TOGGS apart from its meaning as a generic
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term for clothing. Thus, a phrase such as Applicant’s VERY BERRY mark would
qualify as unitary in the trademark sense only if the whole is something more than
the sum of its parts. Dena Corp., 21 USPQ2d at 1052 (mark “elements are not so
merged together that they cannot be regarded as separate” and the proximity of the
words to the design feature “does not endow the whole with a single, integrated, and
distinct commercial impression”).
We disagree with Applicant that VERY BERRY is a unitary mark. While the
rhyming pattern employed in Applicant’s mark may assist consumers’ perception of
the mark as a combination of both terms rather than just focusing on one, we find no
separate distinct overall commercial impression as a result. The two terms are
somewhat visually similar, but they are not physically joined or otherwise so visually
integrated that BERRY would not be viewed as a separable element. The two words
rhyme, but the rhyming quality imparts no new or different meaning to BERRY apart
from its use to describe an ingredient in suet cakes that contain berries. We find that
the combination of the terms VERY BERRY does not alter the ordinary meaning of
the term BERRY. When prospective purchasers see Applicant’s mark, they would
readily understand it to be comprised of the two separate words, VERY and BERRY.
The word BERRY retains its descriptive significance in relation to Applicant’s goods.
Accordingly, because the term BERRY is merely descriptive of Applicant’s goods
under Section 2(e)(1) and is not part of a unitary mark, it must be disclaimed
pursuant to Section 6(a).
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Decision: The refusal to register Applicant’s VERY BERRY mark based on the
requirement, made under Section 6(a), for a disclaimer of the term BERRY is
affirmed.
However, this decision will be set aside if Applicant submits the required
disclaimer to the Board within thirty days from the date of this decision.4 Trademark
Rule 2.142(g), 37 CFR § 2.142(g); TBMP § 1218 (June 2017).

4 The disclaimer should read as follows: “No claim is made to the exclusive right to use
BERRY apart from the mark as shown.” TMEP § 1213.08(a)(i) (April 2017).