Nuova Castelli S.p.A.

Trademark Trial and Appeal Board

Oct 27, 2004

No. 76365834 (T.T.A.B. Oct. 27, 2004)

Hearing: Mailed:
Sept. 14, 2004 Oct. 27, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Nuova Castelli S.p.A.
________
Serial No. 76365834
_______
James V. Costigan of Hedman & Costigan, P.C. for Nuova
Castelli S.p.A.
Brendan D. McCauley, Trademark Examining Attorney, Law
Office 101 (Margaret Le, Managing Attorney).
_______
Before Hohein, Walters and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark TIRAMISÙ (in typed form, including the
diacritical mark) for goods identified in the application,
as amended, as “cheese, milk and milk beverages containing
coffee.1 At issue in this appeal is the Trademark Examining
1 Serial No. 76365834, filed February 1, 2002. The application
is based on applicant’s asserted bona fide intention to use the
mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76365834
2
Attorney’s final refusal to register the mark on the ground
that it is merely descriptive of applicant’s goods. See
Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1). The
appeal has been fully briefed, and applicant’s attorney and
the Trademark Examining Attorney presented arguments at an
oral hearing on September 14, 2004. We affirm the refusal
to register.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act Section
2(e)(1), if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services. See, e.g., In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and
In re Abcor Development 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 applicant’s
goods or services in order to be considered merely
descriptive; it is enough that the term describes one
significant attribute, function or property of the goods or
services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
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
Ser. No. 76365834
3
being (or 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 its use. That a term
may have other meanings in different contexts is not
controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979). Moreover, it is settled that “[t]he question
is not whether someone presented with only the mark could
guess what the goods or services are. Rather, the question
is whether someone who knows what the goods or services are
will understand the mark to convey information about them.”
In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
See also In re Patent & Trademark Services Inc., 49 USPQ2d
1537 (TTAB 1998); In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re American
Greetings Corporation, 226 USPQ 365 (TTAB 1985).
The evidence of record establishes that “tiramisu” is
an Italian dessert.2 The Merriam-Webster Online Dictionary
2 Applicant’s mark, as depicted on the drawing page, includes a
diacritical mark over the final letter. We note that in each of
the numerous references to “tiramisu” which appear in the
evidence of record, the word is depicted without any diacritical
mark. Similarly, when referring to “tiramisu” products in their
briefs, both applicant and the Trademark Examining Attorney omit
any use of the diacritical mark. The significance of the
diacritical mark in applicant’s depiction of its mark is not
apparent. In any event, applicant has not argued that the
diacritical mark affects the commercial impression created by
applicant’s mark, or our mere descriptiveness analysis, in any
Ser. No. 76365834
4
defines “tiramisu” as “a dessert made with ladyfingers,
mascarpone, chocolate, and espresso.”3 Also of record is a
printout from the website “www.heavenlytiramisu.com”
(introduced by the Trademark Examining Attorney, but
specifically relied on by applicant as well). The website
informs its visitors, in pertinent part, that “Tiramisu is
a cool, refreshing Italian dessert that once tasted, leaves
an indelible impression on you”; that “[t]he basic
ingredients are eggs, mascarpone cheese, ladyfingers,
cream, espresso coffee, liquor – brandy, marsala, rum are
some of the spirits used – and a little bit of sugar, and
cocoa or shaved chocolate”; and that “today, Tiramisu can
be found in restaurants throughout the [United States].”
The Trademark Examining Attorney also has submitted
way. Indeed, in all papers applicant has filed during
prosecution of the application, including its main appeal brief
and its reply brief, applicant has referred to its mark as
TIRAMISU, without the diacritical mark. In view thereof, and in
the absence of any contrary evidence, we deem applicant’s mark
TIRAMISÙ (with the diacritical mark) to be legally equivalent to
TIRAMISU (without the diacritical mark). We also deem the
evidence of record which refers to “tiramisu” (without the
diacritical mark) to be probative evidence on the question of the
mere descriptiveness, vel non, of applicant’s mark TIRAMISÙ (with
the diacritical mark).
3 The Trademark Examining Attorney submitted a printout of this
online dictionary definition with his appeal brief and requested
that we take judicial notice thereof. Applicant has not
objected, and has treated the definition as being of record.
Accordingly, we shall as well. The Board may take judicial
notice of dictionary definitions. See, e.g., University of Notre
Dame du Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser. No. 76365834
5
excerpts of articles from the NEXIS electronic database
which show that tiramisu is a dessert known to Americans.
See, for example, the following:
With a meal such as that, none of us would have
wanted appetizers. However, I couldn’t resist
ordering a tiramisu dessert ($5.50) to
celebrate the birthday of GH. Our waitress was
most willing to bring extra plates and forks so
that we could all taste it.
(Grand Forks Herald, March 27, 2002);
… minestrone soup, then diners select an entrée
from three offerings (chicken cacciatore,
grilled calamari skewers or lasagna Bolognese).
Tiramisu is the dessert finale.
(The Daily News of Los Angeles, August 29,
2001);
At meal’s end, we sampled café latte and
vanilla cappuccino, both of which were on the
weak side. With the exception of tiramisu,
desserts are not made in-house, though they are
from small, quality purveyors.
(The Record (Bergen County, NJ), May 4, 2001);
The tortellini di Stefano is a standout, so is
the dentici (snapper) alla Barese. Tiramisu is
the dessert of choice.
(The Orlando Sentinel, January 21, 2001); and
Signature dishes include an appetizer of
bruschetta with Portobella mushrooms, sauteed
shrimp with herbs and linguini and the award-
winning tiramisu dessert.
(Chicago Daily Herald, June 9, 2000).
Based on this evidence, we find that “tiramisu” is the name
of a dessert, and that the term would be recognized as such
by the relevant purchasing public.
Ser. No. 76365834
6
We also find that “tiramisu” is the name of a flavor
which is used in other types of food and beverage products.
That is, the evidence of record shows that the dessert
known as tiramisu has a recognized and desirable flavor,
and that such flavor has been incorporated into a variety
of different food and beverage products such as ice cream,
candies and, of particular relevance in this case, coffee
and cheese. See, for example, the following NEXIS
references:
HEADLINE: A FLAVORED ITALIAN CHEESE IS MADE
FOR DESSERT LOVERS
…
BODY:
What: Fresh Mascarpone Cheese With Tiramisu
Flavor
Maker: BelGioioso (bel-joy-oso) Cheese Inc.
…
PHOTO: BelGioioso Fresh Mascarpone Cheese With
Tiramisu Flavor provides an easy ingredient for
the popular dessert as well as a quick spread
for bread.
(The Philadelphia Inquirer, October 4, 2000);
Recognizing the popularity of classic Italian
desserts, BelGioioso Cheese introduces
Mascarpone with Tiramisu Flavor.
(Dairy Foods, August 1, 2000);
That favorite Italian dessert, tiramisu, is
easier to make thanks to a new cheese from
Wisconsin’s BelGioioso Cheese Inc.: Mascarpone
with Tiramisu Flavor.
(Milwaukee Journal Sentinel, July 30, 2000);
…Market, the holiday trade show for the area’s
home decorating industry, were flavored cheese
balls, after-dinner lollipops, tiramisu coffee
Ser. No. 76365834
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and peanut butter-filled dark chocolate
truffles.
(The Advocate (Baton Rouge, LA), September 9,
1999);
The company has brilliantly combined the taste
of the Italian classic tiramisu dessert with
coffee. Tiramisu Coffee is sold in 1.4-oz.
Bags for 99 cents. Each bag yields 12 cups of
coffee.
(Gorman’s New Product News, August 11, 1997);
The truffle is filled with tiramisu-flavored
buttercream, coated with dark chocolate and
crumbled amaretti (cookies).
(The Seattle Post-Intelligencer, December 4,
2002);
Haagen-Dazs frozen dessert gelato (je-LAH-toh)
– Italian for ice cream – is now available in
pints in some grocery stores. … Taste testers
swooned over the samplings of chocolate,
cappuccino, coconut, raspberry and tiramisu
flavors. Gelato is also available in hazelnut.
(Detroit Free Press, Feb. 13, 2001);
Flavors of the freshly made gelato change, but
favorites include tiramisu (a combination of
espresso, chocolate and marsala wine flavors),
bittersweet (like the chocolate), spumoni,
apple cinnamon and seasonal flavors, …
(Chicago Tribune, September 29, 1996);
Ms. Ang points out that the three most popular
choices however are the warm chocolate cake
with a scoop of tiramisu ice cream…
(Businessworld, December 13, 2001);
Fall: Pumpkin Spice Ice Cream, Maple Walnut
Ice Cream, Cranberry Ice.
Winter: Tiramisu Ice Cream, Egg Nog Ice Cream,
Peppermint Ice Cream.
There are also the classics: Vanilla,
Chocolate Chip Cookie Dough, Rocky Road and…
(Green Bay Press-Gazette, March 5, 2000);
Ser. No. 76365834
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The winning dessert for me is Young’s version
of profiteroles, crisp chocolate cream puffs
filled with tiramisu ice cream and sauced with
espresso custard and warm chocolate.
(The San Francisco Examiner, November 19,
1999);
…tower of decadence married with mousse and
ringed with Grand Marnier crème anglaise, and –
oh, mercy – a dish of Olympic Mountain’s
tiramisu ice cream.
(Seattle Weekly, April 8, 1999);
The chocolate souffle, topped with tiramisu ice
cream, is a wicked way to finish up.
(Phoenix New Times, September 24, 1998);
Not only can patrons satisfy their cravings for
vanilla walnut fudge, malt truffles and
homemade tiramisu ice cream, but they’re also
treated to…
(Chicago Tribune, July 30, 1995); and
Back then, every self-respecting eatery from
SoHo to Santa Monica, Calif., rushed tiramisu
onto its menu, and such variations as tiramisu
ice cream, tiramisu yogurt, tiramisu sundaes,
Tiramisu liqueur, tiramisu muffins and tiramisu
milkshakes were close behind.
(The Orlando Sentinel, August 26, 1993).
Based on this evidence, we find that “tiramisu” is a
recognized flavor, like “hazelnut” or “cappuccino,” which
can be and has been used in a variety of other food and
beverage products, including cheeses and coffees. There is
nothing incongruous or indefinite about referring to such
food products as being tiramisu-flavored, when they are
designed to taste like the dessert known as tiramisu.
Ser. No. 76365834
9
Applicant’s goods, as identified in the application,
are “cheese, milk and milk beverages containing coffee.”
Although the identification of goods does not specifically
state that the goods are or will be tiramisu-flavored,
neither does the identification of goods preclude the
presence of such flavoring in applicant’s goods. Indeed,
in view of the absence of any limitation in the
identification of goods, we must presume that applicant’s
cheese, its milk, and its milk beverages containing coffee
are or will be tiramisu-flavored. Applicant’s argument to
the contrary, i.e., that we should not assume that
applicant’s goods will be tiramisu-flavored because they
are not identified that way in the application, simply is
incorrect as a matter of law. Nor is applicant’s argument
persuasive as a factual matter, given the nature of the
mark itself. As the court noted in addressing a similar
set of facts in In re Andes Candies Inc., 478 F.2d 1264,
1267, 178 USPQ 156, 157 (CCPA 1973) “We think the only
possible reaction of purchasers, upon being presented with
CRÈME DE MENTHE chocolate wafers, is the expectation that
the wafers will have mint taste something like that of
crème de menthe liqueur. Surely, the purchasers would not
Ser. No. 76365834
10
expect to find a cherry or rum or butterscotch flavor in
the candies.”4
TIRAMISÙ, the mark applicant seeks to register, is
merely descriptive of applicant’s goods because it directly
and immediately informs purchasers of this key
characteristic of the goods, i.e., that they have a
tiramisu flavor. It is irrelevant that applicant’s goods
are not themselves tiramisu, i.e., the dessert. “It is
sufficient to preclude registration that the mark merely
describes the flavor characteristic” of the goods. In re
Andes Candies Inc. supra, 478 F.2d at 1267, 178 USPQ at 157
(CRÈME DE MENTHE merely descriptive of chocolate mint candy
squares). See also In re Gyulay, supra (APPLE PIE merely
descriptive of characteristic of potpourri, i.e., its
scent); and In re International Salt Co., 171 USPQ 832
(TTAB 1971)(CHUNKY CHEESE merely descriptive of cheese-
flavored salad dressing).
Contrary to applicant’s argument, we find nothing
indefinite or incongruous about TIRAMISÙ, as applied to
applicant’s goods. The evidence of record establishes that
at least one other company already sells tiramisu-flavored
4 In any event, if applicant’s goods in fact are not tiramisu-
flavored, then the mark TIRAMISÙ obviously would be deceptively
misdescriptive of the goods and thus would still be unregistrable
under Section 2(e)(1).
Ser. No. 76365834
11
cheese, and that it markets the product as such. Although
there is no evidence that anyone has yet marketed tiramisu-
flavored “milk” or tiramisu-flavored “milk beverages
containing coffee,” that fact is not dispositive. We find
that purchasers who encounter such goods sold under the
designation TIRAMISÙ, being familiar with the dessert and
with the existence of other tiramisu-flavored products on
the market (including such related products as milkshakes
and coffee), will immediately understand that the word
TIRAMISÙ merely describes the flavor or taste of the
products. Indeed, it is hard to imagine that they would
understand the term to mean anything else, as applied to
the identified goods.
In summary, we find that the evidence of record
establishes that TIRAMISÙ is merely descriptive of
applicant’s goods, and that registration of applicant’s
mark therefore is barred under Trademark Act Section
2(e)(1).
Decision: The refusal to register is affirmed.