RFA Inc.

Trademark Trial and Appeal Board

Oct 26, 2004

No. 76406229 (T.T.A.B. Oct. 26, 2004)

Mailed:
Oct. 26, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re RFA Inc.
________
Serial No. 76406229
_______
Daina J. Nathanson of Drummond, Woodsum & MacMahon for RFA
Inc.
Susan Leslie DuBois, Trademark Examining Attorney, Law
Office 111 (Craig Taylor, Managing Attorney).
_______
Before Chapman, Bottorff and Rogers, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark RAIN FOREST TILAPIA (in typed form) for goods
identified in the application as “fish.”1
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicant’s mark on
the ground that it is merely descriptive of the identified
1 Serial No. 76406229, filed on May 9, 2002. The application is
based on applicant’s assertion of a bona fide intent to use the
mark in commerce. Trademark Act Section 1(b), 15 U.S.C.
§1051(b).
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76406229
2
goods. See Trademark Act Section 2(e)(1), 15 U.S.C.
§1052(e)(1). The appeal has been fully briefed, but no
oral hearing was requested. 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
being 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
Ser. No. 76406229
3
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).
Applying these principles in the present case, we find
that RAIN FOREST TILAPIA is merely descriptive of the goods
identified in the application, i.e., “fish.” It
immediately and directly informs purchasers that
applicant’s fish is tilapia fish, and that it is produced
in the rain forest.
The Trademark Examining Attorney has made of record
the following dictionary definition of “tilapia”: “Any of
various cichlid fishes of the genus Tilapia, native to
Africa but introduced elsewhere as a valuable food fish.”
(The American Heritage Dictionary of the English Language
Ser. No. 76406229
4
(3d ed. 1992)). Applicant itself, on its website
(printouts of which applicant has made of record), uses
“tilapia” descriptively and indeed generically to refer to
its fish:
Rain Forest’s sister company, Aquacorporacion
Internacional, owns and operates a tilapia farm
in Costa Rica. Rain Forest also sources fresh
and frozen product from Tilapia producers in
Ecuador and other countries.
Hailed as “the fish of the new millenium” and
“the new orange roughy,” Tilapia (pronounced
Til AH pe ah) has rapidly gained consumer
recognition in the United States. … Tilapia
traces its origin to the Nile River and has
been farm raised for decades. … Aristotle is
believed to have given the fish its name
Tilapia niloticus (fish of the Nile) in 300 BC.
Legend says that tilapia was the fish Christ
multiplied a thousandfold to feed the masses.
Types of Tilapia
There are many varieties of tilapia. However,
the two best suited for aquaculture are the red
tilapia (Oreochromis mossambica) and the black
tilapia (Oreochromis niloticus). … Fillets of
both red and black tilapia, when raised
correctly, will have a similar, mild taste.
Since Tilapia absorbs flavor from the water its
[sic] raised in, wild tilapia can have a muddy
or inconsistent flavor while aquacultured
tilapia with reliable water sources, the right
feed, and carefully monitored growth will taste
mild and sweet. It is important to buy tilapia
from a company with a reliable water source.
Based on this evidence (including applicant’s own usage),
we find that “tilapia” is a merely descriptive and indeed
generic term as applied to fish.
Ser. No. 76406229
5
We also find that RAIN FOREST is merely descriptive of
applicant’s goods because it immediately and directly
informs purchasers of a characteristic or attribute of
applicant’s tilapia fish, i.e., that it is raised or farmed
in a rain forest setting.2 The Trademark Examining
Attorney has made of record excerpts of articles obtained
from the NEXIS electronic database which inform readers
that tilapia fish can come from the rain forest; indeed,
most of these articles use the term “rain forest tilapia”
generically to refer to such fish:
…cast a wide contemporary American net, with
lots of lighter beef and seafood dishes as well
as pastas. Spice-crusted rain-forest tilapia,
or Hawaiian sunfish, comes with Indian-inspired
basmati pilaf, tomato chutney and raita
($17.50).
(San Jose Mercury News, March 15, 2002);
2 The Board notes that in three registrations already owned by
applicant (printouts of which were attached to the Trademark
Examining Attorney’s first Office action), applicant essentially
acknowledged that RAIN FOREST is not inherently distinctive as
applied to applicant’s fish and seafood products. Reg. No.
2083757, of the mark RAIN FOREST AQUACULTURE PRODUCTS (in typed
form) for “fish and seafood raised by aquaculture,” is registered
on the Principal Register pursuant to Section 2(f) and with a
disclaimer of AQUACULTURE PRODUCTS. Reg. No. 1910872, of the
mark RAIN FOREST AQUACULTURE PRODUCTS, INC. (in typed form) for
“fish and seafood raised by aquaculture,” is registered on the
Supplemental Register. Reg. No. 1911578, of the mark RAIN FOREST
AQUACULTURE PRODUCTS, INC. (and design) for “fish and seafood
raised by aquaculture,” is registered on the Principal Register
with a disclaimer of RAIN FOREST AQUACULTURE PRODUCTS, INC.
Ser. No. 76406229
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…politically correct products from the rain
forest – tilapia fish, Brazil nuts, tropical
fruits…
(The Houston Chronicle, January 11, 1995);
…won’t find anywhere else, at least in the form
offered by Crazy Fish. Among the menu items
are rain forest tilapia (a white fish wrapped
in bok choy leaves), shrimp and voodoo pasta
(squid ink blackens the pasta and…)
(St. Louis Post-Dispatch, November 13, 1994);
and
…mustard greens, blue prawns from Singapore,
squab with fish sauce, miniature lobster with
Chiu Chow vinegar-garlic sauce, and rain forest
tilapia fillets with sauteed foie gras.
(The Houston Chronicle, April 6, 1994).
Another NEXIS excerpt refers specifically to applicant,
reporting on applicant’s presence at The International
Boston Seafood Show: “Tilapia seemed to be around every
corner, promoted, too, by Rain Forest Aquaculture, a
company in Damariscotta, Maine, that farms the fish in the
rain forests of Costa Rica.” (Providence Journal-Bulletin
(Rhode Island), March 19, 2003.) The accuracy of this last
statement, i.e., that applicant “farms the fish in the rain
forests of Costa Rica,” is corroborated by information from
applicant’s website:
Our Costa Rican Farm:
Rain Forest Aquaculture’s sister company has
developed over 250 acres of ponds and
infrastructure at its Canas, Costa Rica site.
Our unique farm utilizes the pure, crystal-
Ser. No. 76406229
7
clear rain water from the cloud forests of
Costa Rica.
Based on the evidence discussed above, we find that
RAIN FOREST and TILAPIA are merely descriptive terms as
applied to applicant’s goods, i.e., “fish.” We also find
that the composite mark, RAIN FOREST TILAPIA, is merely
descriptive of tilapia fish which is raised or farmed in a
rain forest setting, like applicant’s.
Applicant argues that the tilapia fish is “an aquatic
African fish species having no natural nexus to terrestrial
rain forests,” and that the combination of “rain forest”
and “tilapia” therefore results in a composite with a
bizarre and incongruous meaning, like “desert lobster.” We
are not persuaded by this argument; indeed, RAIN FOREST
TILAPIA appears to us to be a straightforward description
of any tilapia, like applicant’s, which in fact is farmed
in the rain forest. According to applicant’s own website,
the rain forest environment is ideal for the farming of
tilapia. One of the NEXIS stories specifically identifies
tilapia fish as a “product from the rain forest,” and the
other stories show that “rain forest tilapia” is already a
featured menu item at restaurants.
Applicant also argues that RAIN FOREST TILAPIA is not
merely descriptive because it does not immediately inform
Ser. No. 76406229
8
purchasers in detail of the full scope of applicant’s
activities, i.e., “the operation of a fish farm utilized
for the growing and harvesting of tilapia, the operation of
a fishmeal and fish oil plant which is used by others in
the production of animal feed, and the operation of a fish
processing, packaging and distribution plant.” (Brief at
4.) This argument is unpersuasive, however, because the
issue in this case is whether the mark is merely
descriptive of the goods identified in the application,
i.e., “fish.” The evidence of record establishes that it
is. The mere descriptiveness, vel non, of the term when it
is considered in a different context or as applied to any
other goods and services is irrelevant here.
Finally, we have considered the third-party
registrations made of record by applicant, which are of
marks which include either TILAPIA or RAIN FOREST and
which, according to applicant, demonstrate that applicant’s
mark should be registered too. We are not persuaded. It
is settled that we must decide each case on its own record
and merits; the existence of other registered marks which
arguably might have characteristics similar to applicant’s
Ser. No. 76406229
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mark does not bind the Board. See In re Nett Designs Inc.,
236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001).3
In summary, we find that the evidence of record
establishes that RAIN FOREST TILAPIA is merely descriptive
of applicant’s goods, i.e., “fish.”
Decision: The refusal to register under Trademark Act
Section 2(e)(1) is affirmed.
3 In any event, these third-party registrations do not support
applicant’s argument because, in each of them, the terms TILAPIA
or RAIN FOREST either are disclaimed, are registered pursuant to
Section 2(f), or (in one registration) are depicted in such a
stylized manner that a disclaimer apparently was deemed to be
unnecessary. Only one of the third-party registered marks, i.e.,
Reg. No. 1729630 of the mark ROCKY MOUNTAIN WHITE TILAPIA (WHITE
TILAPIA disclaimed) for “fish,” appears to be constructed
somewhat similarly to applicant’s mark. We must presume,
however, that the record in that case did not include the type of
clear evidence of mere descriptiveness of the composite mark
which is present in this case. In its briefs, applicant also has
referred to two additional third-party registrations which were
not made of record prior to the appeal and which therefore will
not be considered. See Trademark Rule 2.142(d). Even if we were
to consider them, however, they would be of no avail to
applicant. The mark CALIFORNIA TROUT (Reg. No. 2656014), for
services related to the conservation of water resources for
sustaining wild trout populations, is registered pursuant to
Section 2(f). The mark IDAHO TROUT (and design) (Reg. No.
2604538), for fresh frozen trout, is registered with a disclaimer
of IDAHO TROUT. In short, none of the third-party registrations
cited by applicant would support a finding that applicant’s mark
RAIN FOREST TILAPIA is inherently distinctive.