Snowizard, Inc.

Trademark Trial and Appeal Board

Jun 16, 2010

No. 77524268 (T.T.A.B. Jun. 16, 2010)

Mailed:
June 16, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Snowizard, Inc.
________

Serial No. 77524268
_______

Kenneth L. Tolar, Esq. for Snowizard, Inc.

James Ringle, Trademark Examining Attorney, Law Office 111
(Craig D. Taylor, Managing Attorney).
_______

Before Seeherman, Walters and Zervas, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Snowizard, Inc. has appealed from the final refusal of
the trademark examining attorney to register COOKIE DOUGH
in standard character format for “food flavorings.”1
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 its goods.

1 Application Serial No. 77524268, filed July 16, 2008,
asserting first use and first use in commerce as early as
April 21, 2007.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77524268
2
Specifically, the examining attorney asserts that COOKIE
DOUGH describes a feature or characteristic of the goods
offered, namely, the particular flavor of the flavorings,
and that it is a descriptive term of art in the relevant
industry.
In support of the refusal, the examining attorney has
submitted a Google search summary which includes the
following entries:
Ben & Jerry’s flavors—Wikipedia, the
free encyclopedia
Chocolate Chip Cookie Dough, Vanilla
Ice Cream with Gobs of Chocolate Chip….
en.wikipedia.org

Blue Bunny Family Flavors Chunky &
Gooey Premium Premium [sic] Ice Cream….
Whoever thought raw cookie dough could
be topped? Our scrumptious homespun
cookie dough-flavored ice cream is
overloaded with gobs of semi-sweet
chocolate…
www.bluebunny.com

Dreyer’s FUN FLAVOR Cookie Dough Ice
Cream
This is a New and Exciting Fun Flavor,
Frozen Dairy Dessert …
www.dreyers.com

1200+ Fundraising Companies: Cookie
Dough & Cookie Mix Fund…
Your customers will choose from 10
favorite gourmet cookie dough flavors
and your group earns 50% profit on
every sale!
www.fundraisingweb.org

MHP Probolic COOKIE DOUGH flavor—
Bodybuilding.com Forums
Ser No. 77524268
3
MHP Probolic COOKIE DOUGH flavor
Product Reviews—Help Out!
forum.bodybuilding.com

Pop Tarts Gets AN Updated Flavor
Kellogg’s Chocolate Chip…
I like that it’s different from the
normal fruit and Brown Sugar Cinnamon
flavors. I never get tired of the
chocolate chip cookie dough flavor and
feel that….
www.epinions.com

The examining attorney has also submitted a webpage,
www.benjerry.com, listing “Ben & Jerry’s Top Ten Flavors”
which includes
1. Cherry Garcia® Ice Cream
2. Chocolate Chip Cookie Dough Ice
Cream
3. Chocolate Fudge Brownie™ Ice Cream
4. Chunky Monkey® Ice Cream
5. Half Baked™ Ice Cream
6. Phish Food® Ice Cream

We note that the listed flavors, with the exception of
Cookie Dough, have an “®” or “™” symbol.
In addition, the examining attorney has submitted
pages from applicant’s website, www.snowizard.com, which
are headed “Flavor Description,” under which are the
subheads “Flavor,” “Color” and “Description.” The flavors
include the following:
Almond, with the description “Smooth,
rich Almond flavor”;

Apricot, with the description “Fresh,
RIPE Apricot taste”;

Ser No. 77524268
4
Blue Coconut, with the description “Our
great Coconut flavor colored blue”; and

Butterscotch, with the description
“Rich Butterscotch flavor.”

The description for Cookie Dough is “The delicious and
playful taste of cookie dough just like Mom used to make,
but without the mixing bowl. Made with real Ronald
Reginald’s Vanilla.”
Applicant has, in response to the first Office action,
referred to statements made in various websites, but did
not submit the actual pages from the websites. Although
applicant included links to the websites, the webpages
themselves are not actually of record because the linked
websites can be changed at any time. Anyone reviewing the
file at any point must be able to know what information was
in the file at the time a decision to refuse or approve an
application is made. Further, the application file must be
complete in and of itself, without reference to evidence
residing elsewhere. Accordingly, we have not considered
the content that may be contained in the websites to which
applicant has merely provided the links. However, because
the examining attorney did not advise applicant that merely
including links to websites was unacceptable at a point
when applicant could have properly made the material of
record, we will consider statements from the websites that
Ser No. 77524268
5
are quoted in applicant’s response. Cf. TBMP §1208.02. We
have also considered the entire entry for “Cookie dough,”
which was referenced in applicant’s response, because the
examining attorney made it of record.
The material that applicant has referred to states
that “cookie dough refers to a blend of cookie ingredients
which has been mixed into a solid yet malleable form but
has not yet been hardened by heat.”
http://en.wikipedia.org. In its response, applicant
characterizes Cookie Dough Creations’ website,
www.cookiedoughcreations.com, as offering edible cookie
dough in “8 flavors.” Citing http://donnab.com, applicant
also says that
Donna B’s Gourmet Cookies and Bakery
Boutique advertises the following
cookie dough flavors:

Chocolate Chip
Chocolate Chip Walnut
Sugar Cookie
Snicker Doodle
Oatmeal Raisin
Oatmeal Toffee
Fudge Cookie
Peanut Butter
Donna’s Decadent
White Chip Macadamia Nut.

A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052(e)(1), if it forthwith
Ser No. 77524268
6
conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the
goods or services. In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 217-18 (CCPA 1978). A term need not
immediately convey an idea of each and every specific
feature of the applicant’s goods or services in order to be
considered merely descriptive; rather, it is sufficient
that the term describes one significant attribute, function
or property of the goods or services. In re H.U.D.D.L.E.,
216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338
(TTAB 1973). Whether a term is merely descriptive is
determined not in the abstract, but in relation to the
goods or services for which registration is sought, the
context in which it is being used on or in connection with
the goods or services, 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; that a term
may have other meanings in different contexts is not
controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979).
We find that the examining attorney has demonstrated
that COOKIE DOUGH is merely descriptive of applicant’s
identified “food flavorings.” The evidence of record shows
that “cookie dough” is a term used to describe a flavor,
Ser No. 77524268
7
and therefore consumers will understand, when they see the
mark used in connection with food flavorings, that this is
the taste of the flavoring. As noted above, bluebunny.com
describes its product as “scrumptious homespun cookie
dough-flavored ice cream” and Dreyer’s states that it has a
new and exciting Fun Flavor, “FUN FLAVOR Cookie Dough Ice
Cream.” Moreover, applicant’s own description of its
“Cookie Dough” flavoring, “the delicious and playful taste
of cookie dough,” shows applicant’s expectation that
“cookie dough” would be understood as describing the
flavor.
In concluding that applicant’s mark is merely
descriptive, we have considered applicant’s argument that
“cookie dough” is the raw batter that is baked to form
cookies, but does not identify a particular flavor because
cookies can have a wide variety of flavors. It points to
the listing of “chocolate chip cookie dough” ice cream on
the Ben & Jerry’s website, and the eight cookie dough
flavors listed on the Donna B’s website (e.g., sugar
cookie, snicker doodle, oatmeal raisin), arguing that one
could not sell different flavors of raw dough if all dough
had the same flavor.
A similar argument was raised and discussed in In re
Entenmann's Inc., 15 USPQ2d 1750 (TTAB 1990), aff'd in
Ser No. 77524268
8
opinion not for publication, Appeal No. 90-1495 (Fed. Cir.
February 13, 1991). The application to register OATNUT for
bread was refused on the ground that the mark was merely
descriptive of two ingredients in the bread, namely, oats
and hazelnuts. Applicant argued that OATNUT was not merely
descriptive because the term OATNUT “does not tell
purchasers which type of nut is used in the bread, for
example, walnuts, almonds or pecans.” Id. at 1751. The
Board stated:
While it is true that in order to be
held merely descriptive, a term must
describe with some particularity a
quality or ingredient of the product in
question, it need not describe it
exactly. Cf. In re Analog Devices
Inc., 6 USPQ2d 1808, 1810 (TTAB 1988),
aff'd 10 USPQ2d 1879 (Fed.Cir. 1989)
(unpublished) (“However, while we
readily concede that the category of
products which the term ‘analog
devices’ names encompasses a wide range
of products in a variety of fields, we
do not believe this fact enables such a
term to be exclusively appropriated by
an entity for products, some of which
fall within that category of goods. For
example, while terms such as ‘digital
devices,’ ‘computer hardware,’
‘computer software’ and ‘electronic
devices,’ just to name a few, may be
broad and even nebulous terms,
nevertheless, these terms may not be
exclusively appropriated but must be
left for all to use in their ordinary
generic sense.”).

We believe that the term OATNUT readily
informs purchasers, with the required
Ser No. 77524268
9
degree of particularity, of two not
inconsequential ingredients in
applicant's bread. By way of analogy,
the term “nut bread” does not inform
purchasers of the particular type of
nuts found in a particular loaf of nut
bread. Nevertheless, the fact that the
term “nut bread” does not inform
purchasers of the precise type of nuts
in the bread does not mean that the
term “nut bread” is not descriptive of,
and indeed generic for, bread.

See also In re Patent & Trademark Services Inc., 49 USPQ2d
1537 (TTAB 1998), in which PATENT & TRADEMARK SERVICES,
INC. was found merely descriptive for “legal representation
in the area of Intellectual Property administered by
representing others before the Patent and Trademark Office
and the Copyright Office.” The Board rejected applicant’s
argument that the phrase was so broad that applicant’s mark
would give no specific description of the types of services
that applicant performed, stating that “the fact that the
phrase does not specify exactly which patent and trademark
services applicant offers does not mean that applicant is
entitled to exclusively appropriate the phrase.” Id. at
1539.
The same reasoning applies here. “Cookie dough” is
used by third parties to describe the flavoring of their
products. See the previously noted use of “cookie dough”
by bluebunny.com and dreyers.com. And although the term
Ser No. 77524268
10
“chocolate chip cookie dough” used by Ben & Jerry’s
provides further information, it is not necessary that a
term have that degree of specificity in order for it to be
found merely descriptive.
As a final point, we note that in its brief applicant
has explained that its COOKIE DOUGH product “is a flavored
concentrate that is purchased by snowball vendors, or
snowball vendor suppliers, to produce a ready-to-use
flavored syrup” and that “applicant does not sell flavored
concentrate to the general public.” Brief, p. 3. Although
applicant may in fact be limiting its sales to this class
of customers, its identification of goods is not so
restricted, and therefore we must determine the question of
mere descriptiveness with respect to anyone who may
purchase “food flavorings,” including the public at large.
However, even if the identification were restricted, the
evidence shows that “cookie dough” would be understood by
both the general public and those in the trade to describe
a flavor. As such, COOKIE DOUGH is merely descriptive of
food flavorings.
Decision: The refusal of registration is affirmed.