Sirob Imports, Inc.

Trademark Trial and Appeal Board

May 7, 2010

No. 78647047 (T.T.A.B. May. 7, 2010)

Mailed:
May 7, 2010
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sirob Imports, Inc.
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Serial No. 78647047
_______

Thomas A. O’Rourke of Bodner & O’Rourke, LLP for Sirob
Imports, Inc.

Ronald E. Aikens, Trademark Examining Attorney, Law Office
112 (Angela Wilson, Managing Attorney).
_______

Before Holtzman, Kuhlke and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

Sirob Imports, Inc. (applicant) has applied to
register the term NaturaLemon in standard characters, now
on the Supplemental Register, for goods identified as
“lemon juice” in International Class 32. The application
was filed on June 9, 2005, for registration on the
Principal Register. Applicant has asserted first use of
the mark anywhere and first use of the mark in commerce on
May 21, 2004, under Trademark Section 1(a), 15 U.S.C.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 78647047
2
§ 1051(a), as its basis for registration.
On March 13, 2006, applicant amended the application
to seek registration on the Supplemental Register in
response to the Examining Attorney’s refusal to register
NaturaLemon on the Principal Register under Trademark Act
Section 2(e)(1), 15 U.S.C. § 1052(e)(1), on the grounds
that NaturaLemon was merely descriptive. The Examining
Attorney then issued a final refusal to register
NaturaLemon on the Supplemental Register under Trademark
Act Section 23(c), 15 U.S.C. § 1091(c), on the grounds that
NaturaLemon is not capable of functioning as a mark for
lemon juice because it is generic.
Applicant appealed. Applicant and the Examining
Attorney have filed briefs. We affirm.
First, we must delineate the issues before us. The
Examining Attorney spends considerable effort in defending
his determination that NaturaLemon is not registrable on
the Principal Register. Although applicant’s statement of
the issues is far from a model of clarity, we find no basis
to conclude that applicant is arguing in this appeal that
NaturaLemon should be registered on the Principal Register,
with or without a showing of acquired distinctiveness under
Trademark Act Section 2(f), 15 U.S.C. § 1052(f).
Serial No. 78647047
3
There is no indication in the record that applicant
has elected to argue in the alternative for registration on
both the Principal Register and the Supplemental Register.
Applicant did not state so when it filed its amendment to
seek registration on the Supplemental Register, nor did
applicant state so in its appeal brief, nor at any other
point after that amendment. Accordingly, we will confine
our consideration to the issue of applicant’s entitlement
to registration on the Supplemental Register. In re
Central Sprinkler Co., 49 USPQ2d 1194, 1195 n.3 (TTAB
1998).
To address that issue, we must consider first whether
NATURAL LEMON is generic for lemon juice. If we determine
that it is, secondly we must consider whether the
“telescoped” spelling of NaturaLemon, that is, merging the
two words and dropping one “l,” is sufficient to render
NaturaLemon capable of functioning as a mark and
registrable on the Supplemental Register.
Nonetheless, it is worth noting that when we conclude
that both NATURAL LEMON and NaturaLemon are generic and not
registrable on the Supplemental Register, as we do, we also
effectively resolve the question of the registrability of
NaturaLemon on the Principal Register in the negative. A
term which is not registrable on the Supplemental Register,
Serial No. 78647047
4
by definition, is also not registrable on the Principal
Register.
First, with regard to NATURAL LEMON, to support its
position that NATURAL LEMON is not generic for lemon juice,
applicant argues, “The product is not a natural lemon. The
combination of ‘natura’ and ‘lemon’ does not unequivocally
designate lemon juice and the term is certainly not used by
the public as the designation for lemon juice – instead,
‘lemon juice’ is the recognized name for the product.
Moreover, ‘natural lemon’ can be used to refer to a wide
array of products including flavoring in all kinds of food
products, fragrances in cosmetics and cleaning supplies,
and even used to refer to a natural lemon color.”
Applicant’s Brief at 3. Applicant also points out that
NaturaLemon is not in the dictionary. Id.
A term is generic if it identifies the class, genus or
category of goods or services at issue. See In re Dial-A-
Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807
(Fed. Cir. 2001), citing H. Marvin Ginn Corp. v.
International Association of Fire Chiefs, Inc., 782 F.2d
987, 228 USPQ 528 (Fed. Cir. 1986).
The Court of Appeals for the Federal Circuit provided
a framework for determining whether or not a term is
generic in the Fire Chief case. Specifically, the Court
Serial No. 78647047
5
dictated a two-step inquiry: “First what is the genus of
goods or services at issue? Second, is the term sought to
be registered or retained on the register understood by the
relevant public primarily to refer to that genus of goods
or services.” H. Marvin Ginn Corp. v. International Assn.
of Fire Chiefs, Inc., 228 USPQ at 530.
The ultimate test for determining whether a term is
generic is the primary significance of the term to the
relevant public. Section 14(3) of the Act, 15 U.S.C. §
1064(3). See also In re American Fertility Society, 188
F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999) and Magic Wand
Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir.
1991). The Examining Attorney has the burden of
establishing by clear evidence that the term is generic.
See In re Merrill Lynch, Pierce, Fenner and Smith, Inc.,
828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987). Evidence of
the relevant public’s understanding of a term may come from
any competent source, including direct testimony of
consumers, consumer surveys, newspapers, magazines,
dictionaries, trade journals, catalogs, and other
publications. See In re Northland Aluminum Prods., Inc.,
777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985).
The fact that the genus is conceptually broader or
narrower than the identification of goods does not
Serial No. 78647047
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inexorably lead to the conclusion that a term, such as
NATURAL LEMON, is not generic. Micro Motion Inc. v.
Danfoss A/S, 49 USPQ2d 1628 (TTAB 1998) (MASSFLO held
generic for flowmeters for the measurement of flow of mass
of fluids); In re Central Sprinkler Co., 49 USPQ2d at 1197
(ATTIC held generic for automatic sprinklers for fire
protection); Stromgren Supports Inc. v. Bike Athletic Co.,
43 USPQ2d 1100 (TTAB 1997) (COMPRESSION held generic for
hosiery); In re Reckitt & Colman, North America Inc., 18
USPQ2d 1389 (TTAB 1991) (PERMA PRESS held generic for soil
and stain removers for permanent press fabrics); In re
Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988), aff’d, 10
USPQ2d 1879 (Fed. Cir. 1989) (ANALOG DEVICES held generic
for a wide range of electronic products in International
Class 9).
There is no real dispute here as to the genus of
goods, the first inquiry under Fire Chief. The genus of
goods and the identification of goods are one and the same
– lemon juice. For the record, we reject applicant’s
argument that “lemon juice” is the one and only term which
is generic for this genus of goods. See, e.g., In re
Central Sprinkler Co., 49 USPQ2d at 1194 (ATTIC held
generic for automatic sprinklers for fire protection).
Serial No. 78647047
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Turning to the second inquiry under Fire Chief,
whether NATURAL LEMON designates a category of goods within
this genus, we conclude that it does. The Examining
Attorney has submitted a dictionary definition of “natural”
as “… 6. not altered, treated or disguised: natural
coloring; natural produce.” Attachment to Office Action of
January 25, 2008, from the online version of The American
Heritage Dictionary of the English Language (4th ed.). We
also take judicial notice of the definition of “natural”
from Merriam-Webster’s Collegiate Dictionary (11th ed. 2003)
which states, “… 10b : existing in or produced by nature :
not artificial… c : relating to or being natural food.”1
Furthermore, applicant’s label states prominently
“100% Lemon Juice,” an explicit claim that its product, in
fact, is produced by nature and not artificial. In
addition, applicant provided a document identified as its
“Quality Assurance Certificate” which states: “This juice
is 100 pct natural and added no additive and
preservatives.” Attachment to Response of February 2,
2009.

1 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372,
217 USPQ 505 (Fed. Cir. 1983).

Serial No. 78647047
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Also, there is no serious dispute regarding the fact
that “lemon” is generic for lemon juice, other than
applicant’s semantic argument that, “… the product is not a
natural lemon.” We reject this argument. The implied
proposition that the terms lemon, orange, grapefruit or
apple would not be generic for lemon juice, orange juice,
grapefruit juice and apple juice, respectively is contrary
to both logic and experience.
In sum, we conclude from the dictionary definitions
alone that NATURAL LEMON is a generic term for a category
of lemon juice. In re Gould Paper Corp., 834 F.2d 1017, 5
USPQ2d 1110 (Fed. Cir. 1987) (SCREENWIPE held generic for
wipes that clean computer and television screens). See
also In re Central Sprinkler Co., 49 USPQ2d at 1197 (“The
broad general category of goods involved here is sprinklers
for fire protection. However, a product may be in more
than one category, and here applicant's goods also fall
within the narrower category of sprinklers for fire
protection of attics. We find that the term ‘attic’ would
be understood by the relevant public as referring to that
category of goods….”).
For completeness we note that the Examining Attorney
has also provided listings of search results from certain
search engines for the terms “natural lemon” and “lemon
Serial No. 78647047
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juice.” The Board has often noted that such listings have
limited probative value due to the truncated nature of the
text and the lack of context. See, e.g., In re BetaBatt
Inc., 89 USPQ2d 1152, 1153 n.1 (TTAB 2008), and cases cited
in that case. To the extent that the search results of
record here are probative, they do support the Examining
Attorney’s position that NATURAL LEMON is generic for lemon
juice. For example, a listing from fprojects-organic.com
states ”ORGANIC CERTIFIED NATURAL LEMON JUICE. … The
product is resulting from the processing of 100% fresh
organic lemons.” Another listing from samcgees.com states,
“… Vanilla is a delightful blend of natural lemon juice,
pure vanilla extract and a touch….” Still another from
tncc.com states “… with the zesty taste of natural lemon
juice, nothing refreshes like this bubbly drink on a hot
summer’s day….” Attachments to Office Action of August 28,
2006. We hasten to add that we have not relied on this
evidence in our determination of this case.2

2 The Examining Attorney also asks that we take judicial notice
of certain documents he provided with his brief, including a
notice from the Federal Register of January 18, 2007, and a
policy directive issued by the U.S. Department of Agriculture.
Although the documents in question would be proper subject matter
for judicial notice, they are of limited, if any, relevance and
probative value. Consequently, we have not relied on them in
this decision.

Serial No. 78647047
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We also take judicial notice of certain regulations
regarding food labeling, specifically, 21 C.F.R. § 101.22,
which discuss “artificial flavor and artificial flavoring”
and distinguish those terms from “natural flavor or natural
flavoring” as applied to food products, including fruit and
fruit juices.3 These regulations further support the
conclusion that relevant purchasers of lemon juice would
recognize NATURAL LEMON as a category of lemon juice.
Accordingly, we conclude that NATURAL LEMON is a
generic term for lemon juice.
Therefore, we must now consider whether the display of
NATURAL LEMON as NaturaLemon is capable of functioning as a
mark for lemon juice. We conclude that there is no
meaningful distinction between the two, and therefore, that
NaturaLemon, like NATURAL LEMON, is generic and incapable
of functioning as a mark for lemon juice. The mere merging
of the words and dropping of one “l” is insufficient to
elevate this generic term from the generic status and
render it capable of functioning as a mark.
In the MASSFLO case the Board stated:
Further, the fact that MASSFLO is a telescoped,
slightly misspelled version of “mass flow” does
not compel a different result. The deletion or
change in one letter normally does not transform

3 See University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., Inc., 213 USPQ at 596.
Serial No. 78647047
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a generic form into a source indicator. See,
e.g., In re Stanbel, Inc., 16 USPQ2d 1469 (TTAB
1990), aff'd without pub. op., 20 USPQ2d 1319
(Fed.Cir. 1991) [where the record established
that the term “ice pack” was a generic
designation for a “nontoxic reusable ice
substitute for use in food and beverage coolers,”
applicant's asserted mark ICE PAK was held
generic and, therefore, unregistrable]. See also
cases cited at McCarty on Trademarks and Unfair
Competition, supra at Sections 11:31 and 12:38.
Moreover, the misspelling here still results in
the phonetic equivalent of the generic term. The
terms “mass flow” and “massflo” are pronounced
the same and, given the commonly understood
meaning of the term “mass flow” in the trade, we
have no doubt that the two terms would be viewed
as having the same meaning. That is to say,
applicant's use of the term MASSFLO would be
understood by relevant purchasers as primarily
naming a category of meters, namely mass
flowmeters.

Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d at 1631.
Likewise in this case, neither the merger of the
terms, that is, the deletion of a space between NATURAL and
LEMON, nor the dropping of one “L,” can transform NATURAL
LEMON into something which is capable of functioning as a
source identifier. In re 3Com Corp., 56 USPQ2d 1060, 1061
(TTAB 2000) (ATMLINK held generic for computer hardware
components used for enabling connection of asynchronous
communication networks). The pronunciation of either
version is identical, and the difference in appearance
between the two versions is subtle to the point of being
imperceptible. Accordingly, we conclude that NaturaLemon,
Serial No. 78647047
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like NATURAL LEMON, is generic and incapable of functioning
as a trademark for lemon juice.
During the prosecution of this application, applicant
also submitted copies of a number of third-party
registrations, most notably registrations for REALEMON, and
argued that we should reverse the refusal here in light of
those registrations. We reject this argument. In
rejecting similar arguments based on actions taken in
earlier applications, the Court of Appeals for the Federal
Circuit stated, “… the Board (and this court in its limited
review) must assess each mark on the record of public
perception submitted with the application. Accordingly,
this court finds little persuasive value in the
registrations that Nett Designs submitted to the examiner
or in the list of registered marks Nett Designs attempted
to submit to the Board.” In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). Thus, we are
not bound by the actions that examining attorneys have
taken with regard to applications which are not before us,
but rather, we must decide this, and every other case, on
the record and the particulars of the case before us.
Lastly, contrary to applicant’s argument, the absence
of a dictionary definition for NaturaLemon in no way
dictates the conclusion that NaturaLemon is not generic.
Serial No. 78647047
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In re Recorded Books Inc., 42 USPQ2d 1275, 1280 (TTAB
1997).
Decision: We affirm the refusal under Trademark Act
Section 23 to register NaturaLemon on the Supplemental
Register on the grounds that NaturaLemon is generic.