Simplicity Ventures, Inc.

Trademark Trial and Appeal Board

Jun 13, 2018

No. 86579896 (T.T.A.B. Jun. 13, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: June 13, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Simplicity Ventures, Inc.
_____

Serial No. 86579896
_____

John Pickerill of Fredrikson & Byron, P.A.
for Simplicity Ventures, Inc.

Julie Thomas Veppumthara, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
_____

Before Zervas, Hightower and Coggins,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Simplicity Ventures, Inc. (“Applicant”) seeks registration on the Principal
Register of the proposed standard character mark CHOWFUN for “restaurant and
bar services” in International Class 43.1
The Examining Attorney determined that CHOWFUN is merely descriptive of a
characteristic and feature of Applicant’s identified services, and refused registration

1 Application Serial No. 86579896 was filed on March 28, 2015, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based upon an allegation of a bona fide intention to use
the mark in commerce.
Serial No. 86579896
- 2 -
of Applicant’s proposed mark pursuant to Section 2(e)(1) of the Trademark Act, 15
U.S.C. § 1052(e)(1).
After the Examining Attorney made the refusal final, Applicant appealed and
requested reconsideration. The Examining Attorney denied the request for
reconsideration and the appeal resumed. Both Applicant and the Examining Attorney
filed briefs. We affirm the refusal to register.
1. Preliminary Issue
Applicant submitted materials with its brief. Not all of such materials had been
submitted during examination. The evidentiary record in an application should be
complete prior to the filing of an appeal to the Board. Trademark Rule 2.142(d), 37
C.F.R. § 2.142(d). The Examining Attorney did not object, and, in fact, discussed the
CHIPOTLE registrations Applicant submitted with its brief. In view thereof, we find
that the Examining Attorney waived any objection to the improperly submitted
evidence and we have considered the evidence. See TRADEMARK TRIAL AND APPEAL
BOARD MANUAL OF PROCEDURE (“TBMP”) § 1207.03 (June 2017) and cases cited
therein.
2. Mere Descriptiveness
Section 2(e)(1) of the Trademark Act prohibits registration on the Principal
Register of “a mark which, (1) when used on or in connection with the goods [or
services] of the applicant is merely descriptive . . . of them.” 15 U.S.C. § 1052(e)(1). A
term is “merely descriptive” within the meaning of Section 2(e)(1) if it “immediately
conveys knowledge of a quality, feature, function, or characteristic of the goods or
Serial No. 86579896
- 3 -
services with which it is used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297,
102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer AG, 488 F.3d 960, 82
USPQ2d 1828, 1831 (Fed. Cir. 2007)). “On the other hand, if one must exercise mature
thought or follow a multi-stage reasoning process in order to determine what product
or service characteristics the term indicates, the term is suggestive rather than
merely descriptive.” In re Tennis in the Round, Inc., 199 USPQ 496, 498 (TTAB 1978);
see also In re Shutts, 217 USPQ 363, 364-65 (TTAB 1983); In re Universal Water Sys.,
Inc., 209 USPQ 165, 166 (TTAB 1980).
Whether a mark is merely descriptive is determined in relation to the goods or
services for which registration is sought, not in the abstract or on the basis of
guesswork. Descriptiveness must be evaluated “in relation to the particular goods [or
services] for which registration is sought, the context in which it is being used, and
the possible significance that the term would have to the average purchaser of the
goods [or services] because of the manner of its use or intended use.” In re Chamber
of Commerce of the U.S., 102 USPQ2d at 1219 (quoting In re Bayer AG, 82 USPQ2d
at 1831). In other words, we evaluate whether someone who knows what the goods or
services are will understand the mark to convey information about them. DuoProSS
Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757
(Fed. Cir. 2012); In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
Serial No. 86579896
- 4 -
The Examining Attorney argues that the proposed mark “refers to a Cantonese
stir fry dish, as well as a type of rice noodle used in cuisines from China, Hong Kong,
Malaysia and Singapore”;2 and
a prospective purchaser viewing the mark in connection
with the services would immediately understand that the
mark merely describes a feature of the restaurant and bar
services. A mark that consists of the generic name of a food
or dish that is the specialty of the house or a principal
attraction of the restaurant has been held merely
descriptive of restaurant services. See In re Fr. Croissant,
Ltd., 1 USPQ2d 1238, 1239 (TTAB 1986) (holding LE
CROISSANT SHOP merely descriptive of restaurant
services providing croissants); In re Le Sorbet, Inc., 228
USPQ 27, 28 (TTAB 1985) (holding LE SORBET
descriptive of restaurant and carryout shops which serve
fruit ices) ….3
The Examining Attorney relies on, inter alia, the following evidence:
• Applicant’s answers to the Examining Attorney’s
question set forth in the May 19, 2016 Office Action:4
- Will applicant’s restaurant feature Cantonese
cuisine?
Probably.
- Will applicant’s restaurant feature cuisine from
Southern China or Hong Kong?
Probably.
- Will applicant’s restaurant serve ho fun/hor fun,
otherwise commonly known as wide rice noodles?
Possibly.

2 9 TTABVUE 5.
3 9 TTABVUE 5-6.
4 November 21, 2016 Resp., TSDR 1.
Serial No. 86579896
- 5 -
- Will applicant’s restaurant serve shahe fen
noodles?
Possibly.
- Will applicant’s restaurant serve stir fried noodle
dishes?
Probably.
• www.wisegeek.org
What is Chow Fun?
Only very wide noodles qualify as chow fun. Most of
the time, they are made from ground rice, and are
typically sold dry either in thick strips or in sheets.5

• www.seriouseats.com
Dry-Fried Chow Fun with Chinese Broccoli.6

•www.seriouseats.com
Wok Skill 101: Dry Fried Chow Fun (Wide Rice
Noodles).7

• “Eating Well” recipe for “Beef Chow Fun.”8
The Examining Attorney also characterizes “chow fun” as “a category of noodle
dishes commonly featured by Asian cuisine restaurants in America.”9 See, for
example, as evidence:10

5 July 1, 2015 Office Action, TSDR 5.
6 July 1, 2015 Office Action, TSDR 10-12.
7 March 21, 2017 Office Action, TSDR 2-6.
8 March 21, 2017 Office Action, TSDR 11.
9 9 TTABVUE 5.
10 March 21, 2017 Office Action, TSDR 17.
Serial No. 86579896
- 6 -

Applicant argues:
The term “chow” is rooted in the world of Asian cuisine, but
it also has more contemporary meaning in English as a
synonym for food and eating, i.e., “chow down.” …
Furthermore, Applicant’s lighthearted Asian fusion
concept is intended to be “fun” and targeted to a young
energetic audience. As a result, the name CHOWFUN™ is
a perfect name for a restaurant/bar that intends to have
fun food and beverages in a lighthearted Asian fusion
atmosphere. Therefore, Applicant’s mark reflects a play on
Serial No. 86579896
- 7 -
words that evokes images of Asian cuisine contrasted
against a young, hip American bar and eatery, creating a
classic double entendre that is immediately protectable on
the Principal Register under the [TRADEMARK MANUAL OF
EXAMINING PROCEDURE] TMEP. The TMEP provision on
double entendres is extremely clear, and it creates
absolutely no “primary significance” exclusion for a 2(e)(1)
refusal if there is a non-descriptive meaning associated
with the mark. In this case, the non-descriptive meaning is
unmistakable, and the Examiner never refuted that such a
nondescriptive meaning exists. The Examiner did not
dispute the fact that the term CHOWFUN has an
alternate, non-descriptive meaning. Rather, the Examiner
argued that, despite the nondescriptive significance, the
Examiner believed consumers would view the “primary
significance” of the mark as relating to Asian noodles and
thus maintained the refusal.11
Applicant points only to dictionary definitions of “chow” and “fun” for support of
its argument and there is little indication of consumer recognition of the connotation
Applicant attaches to its proposed mark; all but a handful of possible uses of
“chowfun” connote a type of Asian noodle. There is very little in the record to suggest
that consumers would recognize the asserted double-entendre and associate
“chowfun” as “fun” and “eating,” derived from “chow down.”12 One Internet posting
provides, “[i]t does not have anything to do with the English slang word, ‘chow,’
meaning ‘food’ and ‘fun,’ meaning ‘fun.’ No, it does not mean ‘food that is fun,’ though

11 7 TTABVUE 9.
12 The evidentiary record contains an entry from October 15, 2014 submitted with the March
21, 2017 Office Action – which Applicant does not mention or rely on – “This dish looks
amazing. And I agree, homemade is so much better! Chow fun!” The reference to “chow fun”
can be taken either as a reference to the Chinese noodles, or to “fun eating” in view of the use
of the exclamation mark. TSDR 12. See also “I love beef chow fun – and the name is fun!” id.;
and “Fun With Chow Fun.” March 21, 2017 Office Action, TSDR 21.
Serial No. 86579896
- 8 -
I do think it is fun to eat and now I am pretty sure it is fun to cook, too.”13 This posting
which recognizes the interpretation offered by Applicant does not help Applicant
because it specifically points out that “it does not mean ‘food that is fun.’”
The dual meaning that makes an expression a “double entendre” must be well-
recognized by the public and readily apparent from the mark itself. See In re Brown-
Forman Corp., 81 USPQ2d 1284, 1287 (TTAB 2006) (finding GALA ROUGE not a
double entendre in relation to wines and affirming requirement to disclaim the word
“Rouge”); In re The Place Inc., 76 USPQ2d 1467 (TTAB 2005) (laudatory and merely
descriptive term, The Greatest Bar, is not registrable as double entendre inasmuch
as the second claimed meaning was not readily apparent from mark itself without
reference to other indicia); In re Carlson, 91 USPQ2d 1198, 1201 (TTAB 2009)
(URBANHOUZING will be seen immediately as the equivalent of the descriptive
term “Urban Housing,” rather than as including the separate word “Zing,” and so the
mark does not convey a double entendre that would prevent it from being merely
descriptive of applicant’s services). These terms (GALA ROUGE, The Greatest Bar,
and URBANHOUZING) – unlike the marks cited by Applicant14 (SUGAR & SPICE,
NO BONES ABOUT IT, THE HARD LINE or THE SOFT PUNCH) – were each found
not to provide a readily apparent second connotation. As in many areas of trademark
law, each case of an alleged double entendre and/or incongruity overcoming the mere
descriptiveness bar must be decided on its own set of facts.

13 March 21, 2017 Office Action, TSDR 21.
14 7 TTABVUE 8.
Serial No. 86579896
- 9 -
Another problem with Applicant’s argument is that the merely descriptive
significance of the term “chowfun,” which the evidence reflects is not some obscure or
insignificant type of noodle, is not lost when the proposed mark is used in connection
with Asian-inspired restaurants, but in fact is reinforced.
Applicant also asserts that the Examining Attorney has not provided “argument
that Applicant’s mark does not possess the non-descriptive meaning established by
Applicant with respect to a ‘fun’ atmosphere in which ‘to eat’ or ‘chow down.’”15 What
Applicant seeks is not necessary because Applicant has not established that
consumers will understand the “fun atmosphere in which to eat or chow down”
meaning which Applicant offers.
We now turn to the registration evidence in the record beginning with the third-
party registrations for CHOW-formative marks which, according to Applicant,
demonstrate that the USPTO does not require a disclaimer for such marks used in
connection with restaurants. We find them unpersuasive because the issue here is
whether CHOWFUN as a single term is merely descriptive of restaurant and bar
services. The registrations do not include both CHOW and FUN.
Applicant’s arguments based on third-party marks for terms such as ALFREDO,
RED PEPPER, CHIPOTLE, GUMBO’S, GEMELLI, FARFALLE and BONEFISH for
services comprising or including restaurant services are also not persuasive.16 Two

15 7 TTABVUE 10.
16 Applicant reasons at p. 5 of its brief that “[c]onsumers would go to a market, rather than a
restaurant, to buy such food ingredients as red peppers, bonefish or noodles like farfalle,
gemelli or chow fun, so there is no consumer confusion, which is why the Trademark Office
Serial No. 86579896
- 10 -
submissions (LE FARFALLE and GEMELLI) are applications, not registrations, and
applications are evidence only of the fact that they have been filed. Interpayment
Servs. Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003). One
registration does not necessarily refer to a food item (DA I GEMELLI, in stylized
form, translated as “from the twins”). The registered mark is
stylized and has a design component and the wording is in the possessive form. The
CHIPOTLE word mark was registered pursuant to the provisions of Section 2(f) of
the Trademark Act, 15, U.S.C. § 1052(f), which applies to merely descriptive terms;
and the term ALFREDO in the mark ALFREDO 100 THE ORIGINAL has
significance as a name. The remaining three Principal Register registrations without
disclaimers for RED PEPPER, and are insufficient in
number to allow us to make any conclusions about USPTO practice regarding marks
including food terms for restaurant and bar services. Further, as if often stated, the
Board must decide each case on its own facts and record. In re Nett Designs Inc., 236
F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); see also In re Rodale Inc., 80
USPQ2d 1696, 1700 (TTAB 2006) (“Although consistency in examination is a goal of

has historically found such types of ingredient marks inherently distinctive in connection
with restaurant services.” 7 TTABVUE 6.
Serial No. 86579896
- 11 -
the Office, the decisions of previous Trademark Examining Attorneys are not binding
on us, and we must decide each case based on the evidence presented in the record
before us.”).
Upon consideration of all of the Examining Attorney’s and Applicant’s arguments
and evidence in the record, including the arguments and evidence not specifically
discussed in our opinion, and because the evidence establishes that “chow fun” is a
common type of noodle as well as a category of noodle dishes featured by Asian cuisine
restaurants, we conclude that a prospective purchaser viewing the proposed mark in
connection with the services would immediately understand that the proposed mark
merely describes a feature and characteristic of Applicant’s restaurant and bar
services. We have no doubts in arriving at our conclusion. We therefore affirm the
Examining Attorney’s refusal to register Applicant’s proposed mark under Section
2(e)(1) of the Trademark Act.
Decision: The refusal to register Applicant’s proposed mark is affirmed.