Rainier Fruit Company

Trademark Trial and Appeal Board

Sep 29, 2015

No. 86108344 (T.T.A.B. Sep. 29, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: September 29, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Rainier Fruit Company
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Serial No. 86108344
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Mark W. Hendricksen of Wells St. John PS,
for Rainier Fruit Company.
Linda A. Powell, Trademark Examining Attorney, Law Office 106,
Mary I. Sparrow, Managing Attorney.
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Before Bucher, Lykos and Gorowitz,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
On November 1, 2013, Rainier Fruit Company (“Applicant”) filed an application
to register on the Principal Register the mark displayed below

for “Fresh apples” in International Class 31.1

1 Application Serial No. 86108344, filed under Section 1(a) of the Trademark Act, 15 U.S.C.
§ 1051(a), alleging October 1, 2009, as the date of first use anywhere and in commerce.
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The Trademark Examining Attorney refused registration of the mark under
Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§ 1051, 1052, 1127 on the ground
that the wording comprising the mark constitutes a cultivar name2 for “Fresh
apples.”
In an effort to overcome the refusal, during ex parte prosecution, Applicant
disclaimed the term “Honeycrisp” apart from the mark as shown, and argued that
the unique stylized font of the mark rendered it inherently distinctive. See Response
to Office Action dated August 25, 2014. The Examining Attorney issued a final
refusal on the basis that “the stylization of the mark is not sufficiently distinct to be
recognized as source identifier apart from the wording in the mark when used with
the applicant’s goods.” Final Refusal dated September 10, 2014. Thus, the sole issue
on appeal is whether the stylization of Applicant’s mark renders it inherently
distinctive and registrable on the Principal Register without a claim of acquired
distinctiveness under Section 2(f) of the Trademark Act.
For the reasons explained below, we find that the stylization element does not
render Applicant’s mark inherently distinctive, and therefore affirm the Examining
Attorney’s refusal to register.
Applicant argues that the stylization leaves a “unique commercial impression”
distinct from the words alone, pointing to differences between its stylized mark and

2 “Varietal or cultivar names are designations given to cultivated varieties or subspecies of
live plants or agricultural seeds. They amount to the generic name of the plant or seed by
which such variety is known to the U.S. consumer.” Trademark Manual of Examining
Procedure (“TMEP”) § 1202.12 (July 2015). See, e.g., In re Pennington Seed Co., 466 F.3d
1053, 80 USPQ2d 1758, 1761-62 (Fed. Cir. 2006).
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a standard character version. More specifically, Applicant contends that the
shading gives a three-dimensional depth to the mark, and that the unique
configuration of the letters “H”, “Y”, and “P” results in a different commercial
impression apart from the typed words. The Examining Attorney counters that a
comparison of Applicant’s mark with the identical wording in standard characters
has no bearing here because standard character marks are not limited in case or
font.
It is well settled that when words which are merely descriptive, and hence
unregistrable, are presented in a distinctive design, the design may render the
mark as a whole registrable, provided that the words are disclaimed under Section
6 of the Trademark Act, 15 U.S.C. § 1056(a). See In re Venturi, Inc., 197 USPQ 714
(TTAB 1977); In re Jackson Hole Ski Corp., 190 USPQ 175 (TTAB 1976) (“Jackson
Hole”). Thus, the proper inquiry is not, as the Applicant urges, a comparison of its
applied-for mark with a standard character version. Rather, the proper inquiry here
is whether the stylization of the lettering creates “a separate and inherently
distinctive commercial impression apart from the word itself,” such that the mark
as a whole is not a varietal name. In re Sadoru Group, Ltd., 105 USPQ2d 1484,
1485 (TTAB 2012) (“Sadoru Group”) (internal citations omitted).
In support of its position, Applicant relies upon
Jackson Hole, a case in which the applicant applied to
register the mark shown at right on the Principal
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Register, with a disclaimer of the geographic designation “Jackson Hole.” The
examining attorney refused registration of the mark as primarily merely
geographically descriptive. The Board reversed the refusal to register, agreeing with
the applicant’s position that “its mark consists not only of the mere geographical
designation but also of the letters ‘JH’ displayed in a distinctive and prominent
fashion so as to create a commercial impression in and of themselves ...” Jackson
Hole, 190 USPQ at 176. In particular, in that case, applicant persuasively argued
and convinced the Board
… that the letters “JH” are twice the size of the other letters; that unlike
any of the other letters, they are partly joined together, creating the visual
impression of a monogram; and that they are set down from the rest of the
letters, which positioning has the effect of highlighting the “JH” couplet.

Id. The underlying logic of Jackson Hole is not present in the mark before us. The
letters in Applicant’s mark are not arranged in a manner that creates a separate
and inherently distinctive commercial impression similar to the “JH” monogram.
We further note that In re Miller Brewing Co., 226 USPQ 666 (TTAB 1985)
(“Miller Brewing”) discussed by the Examining Attorney is inapposite because it
involved a different legal posture. The Board found that the subject mark was not
inherently distinctive but registrable on the Principal Register only upon a showing
of acquired distinctiveness under Trademark Act Section 2(f). In other words, the
issue was “whether the evidence submitted by applicant [was] sufficient to show
that applicant’s configuration of ‘LITE’ does in fact function as a trademark.” Miller
Brewing, 226 USPQ at 669 (finding that “applicant has used the mark for more
than ten years, and applicant’s sales and advertising of goods bearing the mark
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have been massive.”). By contrast, in the case before us, Applicant does not seek
registration under Section 2(f); rather the question here is whether the stylization
of Applicant’s mark is inherently distinctive.
While acknowledging that inquiries of this type are subjective and fact specific,
in this case, we think that the mark involved in the case of In re Bonni Keller
Collections, Ltd., 6 USPQ2d 1224 (TTAB 1987) (“Bonni Keller”) presents a more apt
analogy. In that case the Board found that the presentation of the mark
was “rather ordinary” and nondistinctive. Id. at 1227. We similarly
find the stylization in Applicant’s mark “rather ordinary” and not in any manner
projecting a different commercial impression apart from the wording.
In addition, Applicant has not taken into account the Board’s
determinations involving the marks at right which were found
to be insufficiently stylized and therefore not inherently
distinctive.
3
4
Simply put, when we apply the precedent of this Board, we do not find that the
level of stylization in Applicant’s mark creates a separate and inherently distinctive
commercial impression apart from the wording itself.
The determination regarding whether stylization is sufficient to carry a mark is
“in the eyes of the beholder,” Jackson Hole, 190 USPQ at 176, and “a necessarily
subjective one.” Bonni Keller, 6 USPQ2d at 1227. Nonetheless, we find that the

3 See In re Guilford Mills, Inc., 33 USPQ2d 1042 (TTAB 1994).
4 See In re Project Five, Inc., 209 USPQ 423 (TTAB 1980).
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impression conveyed by Applicant’s mark is not separate from the disclaimed
wording in the mark. Accordingly, we do not find the mark as a whole to be
inherently distinctive.
Decision: The refusal under Trademark Act Sections 1, 2, and 45 to register
Applicant’s mark is affirmed.