Sean S. Drudy

Trademark Trial and Appeal Board

Jun 4, 2003

No. 78075491 (T.T.A.B. Jun. 4, 2003)

Mailed: June 4, 2003
Paper No. 15
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UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Sean S. Drudy
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Serial No. 78/075,491
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Stephen J. Horace of Lathrop & Gage, L.C. for Sean S.
Drudy.
Aretha C. Masterson, Trademark Examining Attorney, Law
Office 112 (Janice O'Lear, Managing Attorney).
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Before Simms, Seeherman and Chapman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Sean S. Drudy has appealed from the final refusal of
the Trademark Examining Attorney to register BEEFALOS as a
service mark for a "public bar and restaurant, serving food
and drinks.”1 The application as originally filed was based
on an asserted bona fide intent to use the mark in
1 Application Serial No. 78/075,491, filed July 24, 2001.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 78/075,491
2
commerce; on February 15, 2002 applicant filed an amendment
to allege use, which was accepted on March 13, 2002, in
which applicant asserted first use of the mark on
October 1, 1997, and first use in commerce on July 24,
2001.
Registration has been refused pursuant to Section
2(e)(1) of the Trademark Act, 15 U.S.C. 1052(e)(1), on the
ground that applicant's mark is merely descriptive of his
identified services.2 Specifically, the Examining Attorney
contends that "beefalo" is a type of meat, and that the
mark BEEFALOS describes food that can be served in
applicant's restaurant.
Applicant and the Examining Attorney have filed
briefs.3 Applicant did not request an oral hearing.
2 During the course of prosecution applicant, who was appearing
pro se at the time, filed a response in which he stated that
"I've been using the mark 'BEEFALOS' since 10-1-97 at street
fairs, carnivals, car shows, etc. My name is [sic--was] very
well known for my services while I was operating on a mobile
basis, from my food to my t-shirts." The Examining Attorney did
not view this statement as an attempt to register the mark
pursuant to Section 2(f) of the Act, and applicant, in his
subsequent filings, i.e., his request for reconsideration and
appeal brief, during which time he was represented by counsel,
never referred to a Section 2(f) claim. We do not consider
applicant to have raised, or to have attempted to raise, a claim
that his mark has acquired distinctiveness. It should also be
noted that, as shown by the claimed dates of use in the amendment
to allege use, applicant's use of his mark while operating on a
mobile basis was not use in commerce, and Section 2(f) of the Act
provides for the registration of marks which have become
distinctive of an applicant's goods or services in commerce.
3 In her appeal brief the Examining Attorney has quoted a number
of dictionary definitions, and asked that the Board take judicial
Ser No. 78/075,491
3
A mark is merely descriptive if it immediately conveys
knowledge of the ingredients, qualities, or characteristics
of the goods or services with which it is used. In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). As
applicant points out, the determination of whether a mark
is merely descriptive must be made not in the abstract, but
in relation to the goods or services for which registration
is sought, the context in which it is used, and the
significance that it is likely to have to the average
purchaser of such goods or services. See In re Engineering
Systems Corp., 2 USPQ2d 1075 (TTAB 1986).
The question before us is whether consumers would
understand, upon seeing the mark BEEFALOS on a bar and
restaurant, that BEEFALOS refers to a menu item that can be
served in such a restaurant. The Examining Attorney
asserts that they would, and in support of this position
notice of them. The Board may take judicial notice of dictionary
definitions, see University of Notre Dame du Lac v. J. C.
Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d,
703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), and we have done so
with respect to the definitions in Merriam Webster's Collegiate
Dictionary and The Random House Dictionary, discussed infra.
However, many of the sources quoted by the Examining Attorney
appear to come from on-line dictionaries or encyclopedias.
Because of concerns about the reliability and availability of
such sources, the Board will not take judicial notice of such
material. See In re Total Quality Group Inc., 51 USPQ2d 1474,
1476 (TTAB 1999), in which we specifically stated that "in future
cases, when Examining Attorneys intend to rely on Internet
evidence that otherwise would normally be subject to judicial
notice (such as dictionary definitions), such evidence must be
submitted prior to appeal."
Ser No. 78/075,491
4
has submitted a dictionary definition for "beefalo" as
meaning "a hybrid that results from a cross between the
American buffalo, or bison, and beef cattle and is
typically buffalo and bovine. Beefalo yields leaner beef
than conventional breeds of cattle."4
In addition, we take judicial notice of the following
dictionary definitions:
1. A hybrid animal that is 3/8 to 3/32
buffalo, the remaining genetic
component being domestic cow, bred for
disease resistance and for meat with
low fat content.
2. The meat of such an animal.5
Any of a breed of beef cattle developed
in the U.S. that is genetically 3/8 No.
American bison and 5/8 domestic bovine.6
Applicant, on the other hand, asserts that consumers
would not be aware of this meaning, and would be unaware of
the existence of beefalo. Applicant contends that to the
average patron BEEFALOS is likely to be perceived as a
fanciful creature mascot for his establishment, or as the
nickname of the owner, or a coined term that suggests a
Western motif restaurant where one can find red meat on the
4 The American Heritage Dictionary of the English Language, 3d
ed. © 1992.
5 The Random House Dictionary of the English Language, 2d ed.
unabridged, © 1987. The Examining Attorney did not ask the Board
to take judicial notice of this listing; rather, we have taken
such notice sua sponte.
6 Merriam Webster's Collegiate Dictionary, 10th ed.
Ser No. 78/075,491
5
menu, or a possible menu item. Applicant also asserts that
the mark combines the words "beef" and "buffalos" to create
a unique unitary term.
Having reviewed the evidence of record, we find that
the Examining Attorney has met the Office's burden of
demonstrating that BEEFALOS is a merely descriptive term.
Although applicant has suggested a variety of fanciful
interpretations for the mark BEEFALOS, countering those
speculative suggestions is the clear evidence that
"beefalo" has a recognized meaning as being both a type of
animal and the meat from such an animal. This meaning
appears in a variety of standard dictionaries, so we cannot
accept applicant's assertion that this is a technical term
that would not be familiar to restaurant customers.
Moreover, as the Examining Attorney notes, even applicant
has acknowledged that, among the various ways in which
applicant has suggested the mark BEEFALOS can be perceived,
one is as a menu item.
Applicant also argues that because the mark is
BEEFALOS, with an "s", it is "likely to be perceived as a
plural or possessive, suggesting to the average consumer
either a herd of fanciful 'beefalo' creatures or that the
proprietor is nicknamed 'Beefalo.'" We are not persuaded
by these arguments. Although the animal/animals are
Ser No. 78/075,491
6
referred to as "beefalo" rather than "beefalos," the
addition of the "s" does not change the real animals into
imaginary ones, any more than the addition of an "s" would
make "deers" imaginary creatures. In other words, the
addition of the "s" does not change the merely descriptive
nature of the term; whether BEEFALO or BEEFALOS, consumers
would still perceive the mark as describing meat served in
the restaurant. Nor do we think consumers would view
BEEFALOS to refer to the nickname of the proprietor. Aside
from the fact that BEEFALO is not generally understood to
be a name or nickname, there is no apostrophe in the mark
to indicate that it is in the possessive form, and
therefore there is even less likelihood that consumers
would view it in this manner.
Applicant also argues that the mark is a double
entendre. However, because there is no evidence that
BEEFALOS would have the meaning of a mascot, an imaginary
animal, or any of the other ideas that applicant has
suggested, consumers would not view the mark as having any
meaning other than the dictionary one, that of the animal.
Further, when this term is used in connection with bar and
restaurant services, consumers would immediately understand
it to refer to a meat item served in the restaurant.
Ser No. 78/075,491
7
Applicant has asserted that his mark is no more
descriptive than other marks which have been registered
"without evidence of acquired distinctiveness." Brief,
p. 4. The only third-party registration properly made of
record is one for HOGS & HEIFERS SALOON for, inter alia,
saloon services. Aside from the fact that the
registrability of other marks is not before us in this
appeal, we observe that this mark is distinguishable from
the present mark. One does not order "heifer" or "hog" in
a restaurant or saloon. However, as the Random House
dictionary definition shows, the term "beefalo" is, in
fact, the appropriate term to use to order meat from a
beefalo. The other third-party registrations were merely
indicated by mark and registration number in applicant's
request for reconsideration. The submission of a list of
registrations is insufficient to make them of record. In
re Duofold Inc., 184 USPQ 638 (TTAB 1978). In any event,
it is noted that in most of these registrations the term
which describes the food item served in the restaurant has
been disclaimed, which is evidence of the descriptive
nature of the word. See, for example, "pizza" in PIZZA
HUT, "fried chicken" in KENTUCKY FRIED CHICKEN and "corned
beef" in CORNED BEEF & CO.7
7 These registrations all issued prior to the Office's adoption
Ser No. 78/075,491
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Because BEEFALOS would be immediately understood by
consumers to refer to the animal and meat from the animal,
and because beefalo meat is an item that may be served in a
restaurant, we find that BEEFALOS is merely descriptive of
a feature of applicant's identified services.8
Decision: The refusal of registration is affirmed.
of the policy that an applicant could disclaim even inherently
distinctive matter.
8 Applicant has stated that his restaurant does not serve
beefalo meat. However, because this is a food item that can be
served in a restaurant and bar, and because the menu for his
restaurant (which currently features bison meat) can be changed
at any time, the mark is merely descriptive, rather than
deceptively misdescriptive, of the services.