Pan American Grain Mfg. Co., Inc.

Trademark Trial and Appeal Board

Feb 6, 2013

No. 85035510 (T.T.A.B. Feb. 6, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Hearing: January 10, 2013 Mailed:
February 6, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Pan American Grain Mfg. Co., Inc.
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Serial No. 85035510
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Samuel F. Pamias of Hoglund & Pamias PSC for Pan American Grain Mfg. Co., Inc.

Robin M. Mittler, Trademark Examining Attorney, Law Office 117 (Brett J. Golden,
Managing Attorney).
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Before Zervas, Kuhlke, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Pan American Grain Mfg. Co., Inc. has applied to register on the Principal
Register the mark set forth below for goods identified as “Enriched rice; Rice; Rice
flour,” in International Class 30.1

1 Application Serial No. 85035510 filed on May 11, 2010 with claims of first use and first
use in commerce of September 29, 1967.
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No claim is made to the exclusive right to use ARROZ apart from the mark as
shown. All agree that “arroz” is the Spanish word for “rice.”
The trademark examining attorney refused registration under Section 2(a) of
the Trademark Act, 15 U.S.C. § 1052(a), on the ground that applicant’s mark
comprises deceptive matter. When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed appeal briefs, and applicant has
filed a reply brief. An oral hearing was held on January 10, 2013. We affirm the
refusal of registration.
Evidentiary objection.
Applicant submitted its brief with evidence attached, and subsequently filed
an “Informative Motion”2 containing additional evidence. The examining attorney
objected to this evidence on the ground that it is untimely. There is disagreement
between the applicant and the examining attorney as to whether all of the evidence
so submitted had previously been submitted as part of applicant’s responses to
Office actions.
The objection is sustained. We have considered all evidence that applicant
submitted prior to the filing of applicant’s notice of appeal but we have not
considered evidence filed thereafter. “The record in the application should be
complete prior to the filing of an appeal. The Trademark Trial and Appeal Board
will ordinarily not consider additional evidence filed with the Board by the
appellant or by the examiner after the appeal is filed.” 37 C.F.R. § 2.142(d). See

2 Filed May 2, 2012.
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also TBMP § 1207.01 (3rd ed., June, 2012). We have not sought to determine to
what extent evidence filed with applicant’s brief or its Informative Motion may have
been merely duplicative of evidence previously filed. The applicant has the
responsibility to make sure that the record is complete prior to filing a notice of
appeal. In re Van Valkenburgh, 97 USPQ2d 1757, 1768 n. 32, 1769 (TTAB 2011).
The Merits.
The examining attorney contends that the term VALENCIA, appearing in
applicant’s mark, is deceptive matter within the meaning of Section 2(a) of the
Trademark Act because the term “Valencia” is understood to designate a type of rice
and applicant’s rice is not Valencia rice. A mark is deceptive if:
(1) it contains matter that is misdescriptive of the character, quality,
function, composition or use of the goods;

(2) prospective purchasers would be likely to believe that the
misdescription actually describes the goods;

(3) the misdescription would be likely to affect a significant portion of the
relevant consumers’ decision to purchase the goods.

In re Budge Mfg. Co., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988),
aff’g 8 USPQ2d 1790 (TTAB 1987); In re Spirits Int’l, N.V., 563 F.3d 1347, 90
USPQ2d 1489 (Fed. Cir. 2009).
In order to demonstrate the perception of the term VALENCIA among
consumers of rice, the examining attorney has made the following evidence of
record:
1. Product listing from showing a package marked
“GOYA California Pearl Rice Arroz Tipo Valenciano.” The image is captioned
“Goya Valencia style rice 14 oz.” Text below (in English and Spanish) reads
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“Valencia type rice. The perfect rice for Arroz con Pollo or for that delicious
paella. Excelent [sic] quality.”

2. Product listing from showing a package marked
“Mahatma VALENCIA SHORT GRAIN ENRICHED RICE.” The product
description states, “Valencia (Short Grain). 14 oz (397g) Valencia rice takes
its name from Valencia, a province of Spain. … Valencia rice is also known
as short grain rice, pearl rice, or occasionally as round rice. … Mahatma
Valencia rice is grown in the U.S.A. ….

3. Product listing from showing a package marked
“DENOMINACION DE ORIGEN ARROZ DE VALENCIA SANTO TOMAS.”
Product description states, “2.2 pound bag of this delicious Spanish Valencia
Rice! … Some of the best arroz in Spain! –This premium quality rice
produces enhanced flavor and texture! - Ability to absorbs [sic] a large
volume in liquid…and flavor.” (Ellipsis in original.)

4. Product listing from , showing a package marked
“ARROZ Dacsa el Arroz de Valencia.” The product description states,
“Valencia Rice ‘Dacsa’ … Rice with Denomination of Origen [sic] “Arròs de
Valencia.” Rice that grows in Comunidad Valenciana has peculiar
characteristics that are portrayed in its quality. In order to get the
Denomination of Origen [sic], the cultivation of rice has to be
environmentally friendly, but also follow traditional handling, watering and
harvesting of the crops. Valencia Rice is the best choice for paella, no doubt
about it!”

5. Cached website from displaying a seal stating, “ARROS
DE VALENCIA DENOMINACIO D’ORIGEN CONSELL REGULADOR.”
The web site states that the offered rice bears the designation “Arròs de
Valencia” and states that “The ‘Arròs de Valencia’ comes from the Parque
Natural de la Albufera nature park and from many other wetlands of the
Valencia region.”

6. Article from entitled “Type of Rice to Use in Paella,” stating,
“Paella cooks recommend that people who want to cook paella dishes use a
medium grain rice.” … Spanish rice is also known as paella rice. The
preferred traditional Spanish rice for paella dishes is Valencia rice. Valencia
rice is a medium grain rice that absorbs flavors.”

7. Article from entitled “Spanish Flavor,” stating, “Rice:
Spanish rice, sometimes called Valencia rice, is a short grain variety with a
firm texture that readily absorbs flavors from other ingredients, making it
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ideal for paellas. We used white Calasparra rice, although any brand of
Italian Arborio will work.”

8. Entry from for “Valencia Rice,” stating, “A short to medium-
grain rice variety that is cultivated in many areas of Spain, but takes its
name from the province and city of Valencia, which is the largest rice growing
region in Spain. It is slightly sticky when cooked and yet the grains separate
easily, which makes it perfect for the popular Spanish paella dishes that
originated in Valencia. It is available in specialty shops and through mail
order.

9. Article from entitled “Spanish Regional Cuisine of
Valencia,” stating, “Although Valencia is known for the high quality rice it
grows and rice dishes, such as the now world-famous paella, the traditional
gastronomy of the region has much more to offer. … Valencia is well-known
for two of its crops – oranges and rice. In fact, the Valencians are so proud of
the high quality rice they grow that there is a Denomination of Origin for
rice! The rice-producing zone is around the “Parque Natural de la Albufera”
in the province of Alicante, but other areas include Beniparrell, La Alcudia,
Oliva, Prego and Sagunto in Alicante.

10. Excerpt of entry for “Rice” from , including the following sub-
entry: “Spanish rice = paella rice Notes: This is a medium-grain rice
that’s perfectly suited to making paella. Varieties include Granza rice, and
the highly regarded (but difficult to find) Valencia rice. Substitutes: risotto
rice (This is very similar and is a good choice for making paella.) OR short-
grain rice.”

11. Entry for “Valencia” from , stating, “Valencia is
called the ‘garden of Spain’ for its intensive cultivation under irrigation that
was started by the Moors. Citrus and other fruits, rice, vegetables, cereals,
olive oil and wine are now produced.”3

The evidence shows that the term VALENCIA is perceived by U.S. consumers
of rice as indicating a type of rice that has particular qualities that make it suitable
for certain kinds of cooking. Some sources cited by the examining attorney indicate

3 Items numbered 2 and 8 were made of record with the examining attorney’s Office action
of June 29, 2010. Items numbered 4, 5, 9, 10, and 11 were made of record with the Office
action of January 30, 2011. Items numbered 1, 3, 6, and 7 were made of record with the
examining attorney’s final Office action of August 29, 2011.
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that VALENCIA describes rice that was grown in Valencia, Spain, and that the
term may indicate that the rice bears an official “denomination of origin” (e.g., item
No. 9). Other sources indicate that VALENCIA is perceived as describing a
category of “Spanish rice” or “paella rice” that is similar in type to rice traditionally
cultivated in Valencia, Spain (e.g., items Nos. 6 and 7). The record shows that some
rice is marketed as rice grown in Valencia, Spain under the denomination of origin
“Arròs de Valencia” (i.e., the brands DACSA, SANTO TOMAS, and MONTORO).
However, other brands (GOYA and MAHATMA) are clearly grown domestically but
are marketed as Valencia rice or rice of the Valencia “style” or “type.” We need not
decide whether authentic Valencia rice is grown only in Valencia, Spain; we express
no opinion on that point. However, the evidence indicates that in the U.S.
marketplace, VALENCIA, as applied to rice, is perceived as an indicator of the type
of the goods. That applicant’s goods are not of the type designated by the term
VALENCIA was established during prosecution of the application, when applicant
asserted that “the rice packed, sold and distributed by Pan American is not rice of
the Valencia type….”4
In an analysis under Section 2(a), we must consider what information
customers believe they derive from the term VALENCIA, and whether that
information would materially affect their decision to purchase the goods. The
evidence indicates that Valencia rice is considered to be especially suitable for
certain Spanish dishes. GOYA rice is touted as “The perfect rice for Arroz con Pollo

4 Applicant’s response filed December 29, 2010.
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or for that delicious paella.” SANTO TOMAS rice is described as having “Ability to
absorb a large volume in liquid… and flavor.” DACSA brand is promoted with the
statement, “Valencia Rice is the best choice for paella, no doubt about it!” Internet
discussions of Spanish cooking state:
The preferred traditional Spanish rice for paella dishes is
Valencia rice. (Item 6.)
Spanish rice, sometimes called Valencia rice, is a short
grain variety with a firm texture that readily absorbs
flavors from other ingredients, making it ideal for paella.
(Item 7.)
It is slightly sticky when cooked and yet the grains
separate easily, which makes it perfect for the popular
Spanish paella dishes…. (Item 8.)
Spanish rice “is a medium-grain rice that’s perfectly
suited to making paella. Varieties include… Valencia
rice.” (Item 10.)
This evidence indicates that customers perceive Valencia rice as having certain
characteristics that affect its suitability for use in certain dishes (in particular,
paella). Moreover, the quality of Valencia rice is described in highly laudatory
terms (“preferred,” “ideal,” “perfect,” “perfectly suited,” “highly regarded”). This
indicates that customers are likely to find rice marked VALENCIA more appealing
or desirable than other rice products, and that the designation would be a material
factor in a customer’s decision to purchase the rice and rice products on which the
designation appears. In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1698-
99 (TTAB 1992).
Applicant urges us to view its trademark in its entirety, including the design
element and the grammatical relationship among the component words ARROZ
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VALENCIA G. We agree that if the mark as a whole has characteristics that
counteract the misdescriptive nature of the term VALENCIA, then the mark would
not be deceptive. See, for example, A.F. Gallun & Sons Corp. v. Aristocrat Leather
Prods., Inc., 135 USPQ 459 (TTAB 1962) (the term CALF in the mark COPY CALF
not deceptive for goods of artificial leather). Nonetheless, it is also well established
that a mark may be found deceptive on the basis of a single deceptive term that is
embedded in a larger mark. American Speech-Language-Hearing Association v.
National Hearing Aid Society, 224 USPQ 798, 808 (TTB 1984). We see nothing in
the design element of applicant’s mark or in the letter G, which is segregated from
the other wording, that would affect the interpretation of the term VALENCIA in
the context of applicant’s entire mark. As to the grammatical presentation of the
wording ARROZ VALENCIA, applicant urges that the only proper way to designate
“Valencia rice” of the type that originates in Valencia, Spain would be to use the
words “ARROZ DE VALENCIA.” We disagree. Markings that appear on
commercial products frequently lack any grammatical context. The words ARROZ
and VALENCIA appearing on a package of rice would likely project the same
meaning regardless of whether they were presented in a complete sentence (e.g.,
“This is Valencia rice”), or as the two-word phrase “arroz Valencia,” or as two
isolated words presented far apart from each other. There is nothing in applicant’s
mark, viewed in its entirety, to contradict the impression that the word VALENCIA
designates the type of the rice on which the mark appears.
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Applicant argues further that its mark has been used over many years in an
arbitrary manner as a source indicator, and that it has acquired public recognition
or “secondary meaning” as such. In our analysis under Section 2(a), we must
consider the perceptions of prospective customers. If, as perceived by relevant
customers, a term has descriptive meaning with respect to the goods, then it is not
“arbitrary” as to those goods, despite the intentions of applicant. As to public
recognition of the mark, applicant has not presented evidence of the ways in which
members of the public perceive and interpret the mark.5 Consequently, there is
nothing in the record to contradict the examining attorney’s evidence showing that
“Valencia” designates a type of rice.
Applicant also argues that VALENCIA has recognized meanings other than
as a type of rice: applicant argues that VALENCIA may be a surname, a female
given name, the name of a region in Venezuela, or the Spanish equivalent of the
English word “valence.” There is no aspect of applicant’s mark that would lead a
customer to interpret VALENCIA in any of these alternative ways. Nor is there
any evidence in the record to show that applicant’s goods and mark have been
promoted in such a way as to promote such interpretations, or to show that
customers do in fact interpret the mark in these ways. We must consider that
applicant’s mark will appear on or in close proximity to a package of rice or rice
flour. In that context, the evidence of record indicates that VALENCIA will be

5 We further note that proposed marks prohibited under Section 2(a) are not afforded the
option of registration under Section 2(f) on the basis of acquired distinctiveness.
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interpreted as an indicator of the type of rice on which it appears, or the type of rice
from which the flour on which it appears was made.
In a related vein, applicant argues that rice “is not the only product for which
[Valencia, Spain] is known. In fact, the Valencia region in Spain is known for its
oranges. Therefore, consumers are not going to make an automatic relation with
the name of Valencia and a particular good, namely rice.”6 That Valencia is known
for oranges is shown in the record.7 What is lacking in the record is any evidence
supporting applicant’s contentions as to how customers would interpret the term
VALENCIA. As a result, the examining attorney’s evidence indicating that relevant
customers know Valencia rice as a particularly desirable type of rice remains
unrebutted.
Finally, applicant has submitted a copy of its Puerto Rico registration of the
trademark VALENCIA, Reg. No. 14,556. Applicant argues that Puerto Rico
trademark law is derived primarily from the Lanham Act and notes that under this
standard of examination the Puerto Rico Department of State found the mark
VALENCIA to be inherently distinctive.8 Applicant further urges that under the
laws of Puerto Rico “a valid certificate of registration shall stand as prima facie
evidence of the trademarks validity.”9 It is well established that the Board gives no
probative weight to state or foreign registrations because the Board’s determination

6 Applicant’s brief at 16.
7 See entry for Valencia from The Columbia Gazetteer of the World, submitted with the
examining attorney’s Office action of January 30, 2011.
8 Applicant’s brief at 18.
9 Id.
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regarding the registrability of a mark under the Trademark Act is predicated on the
facts before us in this application, not on the basis of a decision by the Puerto Rico
Department of State on an unknown set of criteria. Philip Morris Inc. v. Liggett &
Myers Tobacco Co., 139 USPQ 240, 243-244 (TTAB 1963) (“COUPON” held merely
descriptive of cigarettes containing premium redemption coupons despite state
registration). See also In re Anania Associates, 223 USPQ 740, 742 (TTAB 1984)
(rejecting argument that a state registration should be taken as prima facie
evidence of distinctiveness); In re Tilcon Warren, Inc., 221 USPQ 86, 88 n.2 (TTAB
1984). The procedural and administrative facts underlying such registrations are
unknown to the Board and accordingly there is no reasonable ground upon which to
interpret them.
The term VALENCIA, interpreted as we discuss above, is misdescriptive of
the applicant’s goods. When the term VALENCIA is set forth on packaged rice,
prospective purchasers would be likely to believe that this misdescriptive term
describes the contained goods, because the evidence shows that customers perceive
the term as designating a type of rice. As VALENCIA is perceived as designating a
product of premium quality that is particularly suited to certain uses, the
appearance of this misdescriptive term on the product would be likely to materially
affect such customers’ decision to purchase the goods. Accordingly, on the record
before us, we find that the term VALENCIA appearing in applicant’s mark is
deceptive matter within the meaning of Trademark Act § 2(a), 15 U.S.C. § 1052(a).
Decision: The refusal to register is affirmed.