Shenandoah Growers, Inc.

Trademark Trial and Appeal Board

Feb 14, 2008

No. 76620753 (T.T.A.B. Feb. 14, 2008)

Mailed:
February 14, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Shenandoah Growers, Inc.
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Serial No. 76620753
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Edward W. Rilee of MacCord Mason PLLC for Shenandoah
Growers, Inc.

Alicia P. Collins, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
_______

Before, Hairston, Zervas and Kuhlke, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

Shenandoah Growers, Inc. filed an application (Serial
No. 76620753) on November 16, 2004 to register
FRESHHERBS.COM (in standard character form) for
“unprocessed culinary herbs” in International Class 31.
Applicant has claimed dates of first use anywhere and first
use in commerce on June 7, 1997.
The examining attorney has finally refused
registration under (i) Section 2(e)(1) of the Trademark
THIS OPINION IS NOT
A PRECEDENT OF
THE T.T.A.B.
Ser No. 76620753
2
Act, 15 U.S.C. §1052(e)(1), on the ground that applicant's
proposed mark, if applied to applicant's goods, would be
merely descriptive of them, and (ii) Sections 1, 2 and 45
of the Trademark Act, 15 U.S.C. Sections 1051, 1052 and
1127, on the ground that applicant's proposed mark does not
function as a trademark.
Applicant has appealed the final refusals. Both
applicant and the examining attorney have filed briefs.
Before addressing the merits of the examining
attorney’s refusals, we consider one evidentiary matter.
Applicant has submitted additional material with its brief,
in contravention of Trademark Rule 2.142(d), 37 C.F.R.
§ 2.142(d), which provides that the record should be
complete prior to the filing of a notice of appeal.
Because the examining attorney has not objected to the late
submission of this evidence, and in fact has considered
some of applicant's submissions, we deem the examining
attorney to have waived any objection to this late-filed
evidence and have considered it in arriving at our
decision.
We now turn to the merits of each refusal to register,
beginning with the Section 1, 2 and 45 refusal. The
specimen of use in the application consists of packaging
inserts and is duplicated below:
Ser No. 76620753
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The examining attorney maintains “the proposed mark
‘FRESHHERBS.COM’ is not prominently placed on the front of
the packaging as an indicator of source for the goods (as
is the Applicant’s … mark KATERI’S). Instead, consumers
will view the proposed mark ‘FRESHHERBS.COM’ as merely the
web site address that they may ‘visit’ in order [to] get
information about using the Applicant's goods.” Brief at
p. 7.
Ser No. 76620753
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“The question whether the subject matter of an
application for registration functions as a mark is
determined by examining the specimens along with any other
relevant material submitted by applicant during prosecution
of the application.” In re The Signal Companies, Inc., 228
USPQ 956, 957 (TTAB 1986). Also,
An important function of specimens in a trademark
application is, manifestly, to enable the PTO to
verify the statements made in the application
regarding trademark use. In this regard, the
manner in which an applicant has employed the
asserted mark, as evidenced by the specimens of
record, must be carefully considered in
determining whether the asserted mark has been
used as a trademark with respect to the goods
named in the application.

In re Bose Corp., 546 F.2d 893, 192 USPQ 213, 216 (CCPA
1976) (emphasis in original, footnote omitted).
We agree with the examining attorney that the specimen
does not display FRESHHERBS.COM in a manner that indicates
the source of the goods. The phrase “For more great
Freshherb ideas, visit freshherbs.com” appears at the
bottom of the front of the packaging insert and at the
bottom of the back of the insert, just above the UPC
barcode. The inclusion of the word “visit” just before
“freshherbs.com,” and the suggestion that “great Freshherb
ideas” can be found on the website, creates the impression
that “freshherbs.com” is a web address, and not a
Ser No. 76620753
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trademark. Additionally, KATERI’S is the only trademark
identified in the informative statement at the bottom of
the back of the label, “Kateri’s is a brand of Shenandoah
Growers Inc.”; “freshherbs.com” is not included in the
statement. Thus, the overall impression of the phrase “For
more great Freshherb ideas, visit fresherbs.com” on the
specimen is of an invitation to visit a website for ideas
on how to use fresh herbs. As such, “freshherbs.com” does
not function as a source indicator. Applicant itself has
acknowledged, “FRESHHERBS.COM is the address of Applicant's
site for information on herbs and cooking with herbs in
addition to providing background on Applicant's company,
which grows and then sells herbs through retail grocery
stores.” Brief at p. 4.
We now address the examining attorney’s Section
2(e)(1) refusal under the assumption that FRESHHERBS.COM
actually functions as a mark.
A mark is merely descriptive if it immediately
describes the ingredients, qualities, or characteristics of
the goods or services or if it conveys information
regarding a function, purpose, or use of the goods or
services. In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215 (CCPA 1978). See also In re Nett Designs, 236
F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001). To be merely
Ser No. 76620753
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descriptive, a term need only describe a single significant
quality or property of the goods or services. In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
Also, “[t]he perception of the relevant purchasing public
sets the standard for determining descriptiveness. Thus, a
mark is merely descriptive if the ultimate consumers
immediately associate it with a quality or characteristic
of the product or service. On the other hand, if a mark
requires imagination, thought, and perception to arrive at
the qualities or characteristics of the goods or services,
then the mark is suggestive.” In re MBNA America Bank
N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003)
(citations and internal quotation marks omitted).
The examining attorney has located the following
definitions of “fresh” in The American Heritage Dictionary
of the English Language (3d ed. 1992): “3. Recently made,
produced, or harvested; not stale or spoiled: fresh bread.
4. Not preserved, as by canning, smoking, or freezing:
fresh vegetables.” (Italics in the original.) She also
located the following definitions of “herb” from the same
dictionary: “1. A plant whose stem does not produce
woody, persistent tissue and generally dies back at the end
of each growing season. 2. Any of various often aromatic
plants used especially in medicine or as seasoning.”
Ser No. 76620753
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Applicant's goods are described in its specimen of use
as “Fresh Basil.” Basil certainly is an herb, and
applicant itself promotes its goods as being fresh.
Additionally, the examining attorney has made of
record several excerpts she has retrieved from the
Internet, including from applicant's website, which show
use of “fresh” as related to herbs. See:
Fresh herbs are a healthy and natural way to make
food taste better …. Since 1989 Shenandoah
Growers has been dedicated to providing our
customers with the finest fresh-cut culinary
herbs available …. Our outdoor, certified
organic garden produces an abundance of pure,
fresh culinary herbs under the ideal conditions
provided by the Shenandoah Valley …. Celebrate
Flavor with fresh herbs from Shenandoah Growers!
(www.freshherbs.com)
Cooking with fresh herbs really enhances the
flavors of food without adding fat or calories
content. There are hundreds of varieties of
fresh herbs available for the common cook and
growers continue to push the envelope in creating
new varieties …. I have listed many of the most
popular fresh herbs here. (www.awesome-chef-
recipes.com)
Healthy Cooking with Fresh Herbs.
(www.lancaster.unl.edu)
The squash delicacy makes an ideal substitute for
eggplant or carrots in recipes. Enhance flavor
with fresh herbs, such as dill, basil, marjoram,
mint, tarragon or parsley.
(www.specialtyproduce.com)
Enjoyed fresh, the tender shoot tips and leaves
are excellent lightly sautéed in a light cooking
oil. Enhance flavor with fresh herbs and spices.
(www.specialtyproduce.com)
Ser No. 76620753
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Shenandoah Growers was founded in 1989 to bring
fresh culinary herbs to the East Coast
marketplace as a healthy and natural way to make
food taste better. The company is now one of the
top providers of fresh herbs in the United
States. (www.freshherbs.com)

(Emphasis added.) This evidence, together with the
dictionary definitions and applicant's specimen of use
(reproduced infra), establish that “fresh” as used in
conjunction with “herbs” identifies the condition of
applicant's unprocessed culinary herbs.
Applicant's mark also includes a Top-level Domain name
(TLD), “.COM”. The Federal Circuit has stated as follows
regarding TDLs:
When examining domain name marks, the PTO must
evaluate the commercial impression of the mark as
a whole, including the TLD indicator. The
addition of a TLD such as “.com” or “.org” to an
otherwise unregistrable mark will typically not
add any source-identifying significance …. This,
however, is not a bright-line, per se rule. In
exceptional circumstances, a TLD may render an
otherwise descriptive term sufficiently
distinctive for trademark registration.

In re Oppedahl & Larson LLP, 71 USPQ2d 1370, 1374 (Fed.
Cir. 2004). This is not a case where exceptional
circumstances exist so that the addition of the TDL to
FRESHHERBS renders the mark suggestive. In the context of
applicant's mark, the TDL suffix serves merely to suggest
that potential customers can transact business with
Ser No. 76620753
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registrant via the Internet, and therefore has no source
identifying function.
Additionally, the combination of “fresh,” “herbs” and
“.com” does not evoke a unique commercial impression. It
also is not incongruous or bizarre as applied to the goods.
See In re Shutts, 217 USPQ 363 (TTAB 1983). We therefore
find that the examining attorney has established prima
facie that applicant's mark is at least descriptive and
that applicant has not rebutted the prima facie case.
Accordingly, we find that applicant's mark is a merely
descriptive mark and unregistrable under Section 2(e)(1).
Decision: The refusals to register under Section
2(e)(1) and under Sections 1, 2 and 45 of the Trademark Act
are affirmed.