RiGO Trading S.A.Download PDFTrademark Trial and Appeal BoardMay 25, 2017No. 86712605 (T.T.A.B. May. 25, 2017) Copy Citation THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: May 25, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re RiGO Trading S.A. _____ Serial No. 86712605 _____ Mark J. Liss and Caroline L. Stevens of Leydig, Voit & Mayer, Ltd. for RiGO Trading S.A.. John C. LaMont, Trademark Examining Attorney, Law Office 123 (Susan Hayash, Managing Attorney). _____ Before Lykos, Kuczma and Adlin, Administrative Trademark Judges. Opinion by Adlin, Administrative Trademark Judge: RiGO Trading S.A. (“Applicant”) seeks a Principal Register registration for the proposed mark GUMMIX, in standard characters, for “confectionery, namely, fruit gum in the nature of gummy candies, confectionery made of sugar in the form of sweet foam, licorice and chewing gum” in International Class 30.1 The Examining Attorney refused registration on the ground that Applicant’s proposed mark is merely descriptive of the identified goods under Section 2(e)(1) of the Act. After the refusal 1 Application Serial No. 86712605, filed August 3, 2015 under Section 1(b) of the Trademark Act based on an alleged intent to use the mark in commerce. Serial No. 86712605 2 became final, Applicant appealed and Applicant and the Examining Attorney filed briefs. The Record The Examining Attorney relies, inter alia, on a dictionary definition of “mix” as “a combination of diverse elements” and “a mixture of ingredients packaged and sold commercially.” Office Action of November 21, 2015 at 2-10.2 He also relies on evidence that third parties combine the term “gum,” which is included in Applicant’s identification of goods, with the term “mix” to describe an assortment of gum or candy sold together: 2 http://www.ahdictionary.com/word/search.html?q=mix. Serial No. 86712605 3 Serial No. 86712605 4 Serial No. 86712605 5 Serial No. 86712605 6 Office Actions of June 28, 2016 and November 21, 2015. Finally, the Examining Attorney relies on 12 third-party registrations for marks containing the word MIX in connection with candy or gum, in which the term MIX is disclaimed, including: MINIS MIX & Design for confectionery, namely candy (Reg. No. 2977742); PIÑATA MIX DE LA ROSA & Design for candy and chewing gum (Reg. No. 3503651); FUN MIX & Design for candy and lollipops with or without bubble gum (Reg. No. 2897349); ARCOR FIESTA PARTY MIX in standard characters for candies and chewing gum (Reg. No. 3146521); MONSTER MIX in standard characters for candy (Reg. No. 3332129); KIDDIE MIX in standard characters for candy (Reg. No. 3985237); and PARODISE MIX in standard characters for candy (Reg. No. 4576249). See Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1797 & n.1 (Fed. Cir. 1987) (“Third-party registrations are admissible and competent to negate a claim of exclusive rights in ‘sweats’ and the disclaimers are evidence, albeit not conclusive, of descriptiveness of the term.”). Decision The record establishes that GUMMIX immediately conveys knowledge of a quality, feature, function, characteristic or purpose of Applicant’s goods. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (quoting In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009)); and In re Abcor Development, 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). Specifically, the term immediately conveys that Applicant intends to offer a variety package of chewing gum. Serial No. 86712605 7 Applicant’s argument that consumers will perceive the mark as unitary and arbitrary, and not understand from the mark that Applicant offers candy and gum, focuses on the wrong question and is not well taken. The question here “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). Here, someone who knows that Applicant offers gum will immediately understand that GUMMIX refers to a variety or combination package of gum. Indeed, a number of third parties use “gum mix” in exactly this way. In other words, each component of the proposed mark retains its merely descriptive significance in relation to the goods, and therefore the combination results in a composite term that is itself merely descriptive. See e.g., In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1374 (Fed. Cir. 2004) (PATENTS.COM merely descriptive of computer software for managing a database of records that could include patents, and for tracking the status of the records by means of the Internet); In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1341 (TTAB 2009) (BATTLECAM merely descriptive for computer game software). Applicant also argues that its predecessor-in-interest previously owned a now- cancelled registration for the same mark for “confectionery, namely, jellies, gelatin like candy, liquorices” (Reg. No. 3359879).3 This is irrelevant, as the cancelled 3 While Applicant failed to properly introduce this registration into evidence, the Examining Attorney has not objected to it and specifically addressed it in the June 28, 2016 Office Action. We have accordingly considered this registration. However, we have not considered the third- party registrations Applicant provided for the first time with its Appeal Brief, to which the Examining Attorney has objected. Trademark Rule 2.142(d). Serial No. 86712605 8 registration has no probative value. Black & Decker Corp. v. Emerson Electric Co., 84 USPQ2d 1482, 1487 n.9 (TTAB 2007). In any event, “gum” was not included in that registration’s identification of goods. Here, by contrast, Applicant’s identification of goods includes gum. See generally, In re Taylor & Francis (Publishers) Inc., 55 USPQ2d 1213, 1215 (TTAB 2000) (PSYCHOLOGY PRESS & Design found merely descriptive of nonfiction books in the field of psychology, in part because the applicant’s “identification of goods expressly states that the series of non-fiction books upon which applicant uses its mark are ‘in the field of psychology.’ The word PSYCHOLOGY therefore is merely descriptive of the subject matter of applicant’s books, as identified in the application ….”). Even if Applicant is the first and only user of the term GUMMIX, that does not obviate a mere descriptiveness refusal. In re Greenliant Systems Ltd., 97 USPQ2d 1078, 1083 (TTAB 2010); In re Nat'l Shooting Sports Found., Inc., 219 USPQ 1018, 1020 (TTAB 1983). Furthermore, there is no evidence that combining “gum” and “mix” into a single term without a space between the constituent words results in the mark creating a commercial impression any different from GUM MIX with a space between the constituent words, especially where “gum mix” has been shown to be commonly used by third-parties and to have a specific meaning consistent with Applicant’s goods. See, e.g., In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987) (FIRSTIER merely descriptive of banking services); In re Carlson, 91 USPQ2d 1198, 1200 (TTAB 2009) (URBANHOUZING merely descriptive of real estate brokerage, real estate consultation and real estate listing services); In Serial No. 86712605 9 re Cox Enterprises Inc., 82 USPQ2d 1040, 1043 (TTAB 2007) (“Applicant’s mark THEATL is simply a compressed version of the descriptive term THE ATL without a space between the two words. Without the space, THEATL is equivalent in sound, meaning and impression to THE ATL and is equally descriptive of applicant’s goods. We disagree with applicant that the single word creates a new meaning or a nonsensical expression or that it changes the commercial impression of the term in any significant way.”); In re A La Vieille Russie Inc., 60 USPQ2d 1895, 1897 n.2 (TTAB 2001) (“the compound term RUSSIANART is as merely descriptive as its constituent words, ‘Russian Art’”); In re Gagliardi Bros., Inc., 218 USPQ 181, 184 (TTAB 1983) (BEEFLAKES merely descriptive of thinly sliced beef); In re Orleans Wines, Ltd. 196 USPQ 516, 517 (TTAB 1977) (BREADSPRED merely descriptive of jellies and jams). Applicant’s argument that “ix” is a “common, nondescript suffix” is unsupported by any evidence. And to the extent “ix” is, in Applicant’s words, “nondescript,” that would only highlight that Applicant’s goods include gum.4 Conclusion The evidence reveals that Applicant’s competitors use “gum mix” to describe their variety packages of gum and other candy, and those competitors should, like 4 Applicant’s reliance on Ex Parte Pillsbury Flour Mills Company, 23 USPQ 168 (Comm’r Pat. 1934) and In re On Tech. Corp., 41 USPQ2d 1475 (TTAB 1986) is misplaced at best. Pillsbury Flour applied on outdated test of descriptiveness (“a descriptive term is any one that would normally and naturally be employed by a manufacturer in describing the particular goods upon which the mark is used”), and unlike this case, there was apparently no evidence that third-parties used the term. In On Tech, which was not precedential, the term AUDITTRACK “creates an ambiguity or incongruity,” whereas in this case there is neither. Serial No. 86712605 10 Applicant, have the opportunity to continue using “gum mix” or variations thereof to describe their gum. See, In re Boston Beer Co. L.P., 47 USPQ2d 1914, 1920-21 (TTAB 1998), aff’d, 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999); In re Abcor Development, 200 USPQ at 217 (“The major reasons for not protecting [merely descriptive] marks are … to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products.”). Decision: The descriptiveness refusal to register Applicant’s proposed mark under Section 2(e)(1) of the Trademark Act is affirmed. Copy with citationCopy as parenthetical citation