Snowizard, Inc.

Trademark Trial and Appeal Board

Feb 17, 2011

No. 77471425 (T.T.A.B. Feb. 17, 2011)

Mailed:
February 17, 2011
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Snowizard, Inc.
________

Serial No. 77471425
_______

Kenneth L. Tolar for Snowizard, Inc.

Janice L. McMorrow, Trademark Examining Attorney, Law Office
115 (John T. Lincoksi, Acting Managing Attorney).
_______

Before Seeherman, Bucher and Zervas, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Snowizard, Inc. seeks registration on the Principal
Register of the term WHITE CHOCOLATE & CHIPS (in standard
character format) for “food flavorings” in Int. Class 30.1
The Trademark Examining Attorney refused registration on
the ground that the term is merely descriptive under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1).
At the same time as applicant filed this Notice of
Appeal, it also filed with the Trademark Examining Attorney a
Request for Reconsideration of the refusal to register in
which, in the alternative, it amended its application to the

1 Application Serial No. 77471425 was filed on May 12, 2008,
based upon claims of first use anywhere and first use in commerce
at least as early as May 1, 1986.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77471425
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Supplemental Register. The Trademark Examining Attorney has
stated explicitly that she finds this proposed mark
registrable on the Supplemental Register. Hence, based upon
our analysis, infra, we find this proposed mark to be merely
descriptive under Section 2(e)(1) of the Act, and affirm the
refusal to register this application on the Principal
Register, but a registration will issue in due course on the
Supplemental Register.
The Trademark Examining Attorney takes the position that
“the designation ‘white chocolate & chips’ immediately, and
without conjecture or speculation, describes two of the most
notable characteristics or features of the applicant’s goods,
namely, the type of flavor of the food flavorings, and the
fact that they contain ‘chips.’ ”
In partial support of her refusal, the Trademark
Examining Attorney has submitted a dictionary definition of
the term “white chocolate” as “cocoa butter combined with
milk and a sweetener, often flavored with vanilla.”2
Applicant does not take issue with the conclusion that the
term “white chocolate” alone immediately conveys information
about the flavor of the involved goods. On the other hand,
applicant argues that its goods do not contain “chips.”

2 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE, 4th Edition,
2000.

Serial No. 77471425
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Hence, our determination turns on whether the word “chips”
describes a characteristic of the goods, and whether the
phrase, as a whole, is merely descriptive.
We turn then to applicant’s website, where under the
heading of “Literature / Flavor Descriptions,” applicant
lists alphabetically all of its food flavoring concentrates.
The entry for “White Chocolate & Chips” flavoring identifies
the color as “White with Specks” and describes the flavor as
“A luscious Swiss Chocolate flavor with little specks.”3

3 http://www.snowizard.com/ and
http://www.snowizard.com/literature/flavordescrip.htm

Serial No. 77471425
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Applicant has explained that the specks occur naturally
because of the manufacturing process for its vanilla extract,
which can leave behind tiny specks of spent vanilla bean
seeds. These seeds are no longer whole seeds, but have
actually been ground into very small particles.
The question then, as applicant and the Trademark
Examining Attorney have framed it, is whether the word
“Chips” describes these “specks.” In connection therewith,
the Trademark Examining Attorney and applicant have submitted
several dictionary definitions, of which the following are
most relevant:
5. a. A thin, usually fried slice of food, especially a potato chip. Often used in the plural.
b. A very small piece of food or candy. Often used in the plural: chocolate chips… . 4

1. a. a small, slender piece, as of wood, separated by chopping, cutting, or breaking.
2. a very thin slice or small piece of food, candy, etc.: chocolate chips. 5

1. a small piece removed by chopping, cutting, or breaking
5. (US), (Canadian) ,,, a very thin slice of potato fried and eaten cold as a snack
6. a small piece or thin slice of food6

1. small piece broken or cut off: a small piece that has been broken, chopped, or cut off
something hard or brittle
3. piece of thin crisp snack food: a very thin crunchy slice of a starchy food, usually potato or
corn, that has been fried until it is crisp
corn chips7

4 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE, 4th Edition
(2000).

5 www.dictionary.com, Unabridged, Based on the RANDOM HOUSE
DICTIONARY (2011).

6 www.dictionary.com, Based on the COLLINS ENGLISH DICTIONARY -
Complete & Unabridged 10th Edition (2009).

7 http://encarta.msn.com/encnet/features/dictionary/

Serial No. 77471425
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1 … a : a small usually thin and flat piece (as of wood or stone) cut, struck, or flaked off
b: a small piece of food: as (1): a small thin slice of food; especially: potato chip (2):
french fry 8 (3): a small cone-shaped bit of food often used for baking 9

Referring specifically to the Merriam-Webster dictionary
entry shown immediately above, applicant takes the position
that in the context of foods, the word “chips” can mean only
“cone-shaped baking morsels, fries or potato chips.”
Applicant’s brief at 4-7.
The above entries show that there are two recurring
usages of the word “chips” as applied to food items in the
United States, namely, ‘thin fried slices of food, such as
potato chips or corn chips’ or ‘small pieces of food or
candy, e.g., chocolate chips.’ However, the Trademark
Examining Attorney takes the position that these are not the
only possible meanings of the word “chips” as applied to
foodstuffs. She contends that the word “chips” describes the
appearance of “specks, flakes, bits, morsels, fragments [or]
smidgens.” Trademark Examining Attorney’s appeal brief at
unnumbered 4.
We agree with the position of the Trademark Examining
Attorney. Whether one focuses on the primary dictionary
definitions above of ‘small pieces cut off of something hard’

8 Because this is chiefly a British usage of the term “chips,”
and we are concerned with the meaning of the term to consumers in
the U.S., we have given this particular definition no
consideration.

9 MERRIAM-WEBSTER ONLINE DICTIONARY, http://www.merriam-webster.com/
Serial No. 77471425
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or the somewhat more narrow and later entry of ‘small pieces
of food,’ we find that the word “chips” can be used to
describe the specks that are a notable feature of applicant’s
goods.
Moreover, the record shows descriptive usage of the term
“White Chocolate & Chips” by third parties. The Trademark
Examining Attorney has submitted at least three examples of
such usage for snow cone flavorings by applicant’s main
competitors in the New Orleans metropolitan area:
10

10 http://snow-balls.com/flavors.htm

Serial No. 77471425
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11

12

In addition, the Trademark Examining Attorney included
an excerpt of an article that appeared in the Sunday
edition of The Houston Chronicle on July 21, 1996 (emphasis
supplied):
HEADLINE: In search of vendors, flavors?

11 http://sno-joe.com/flavors.html

12 http://www.tyssno.com/flavors.htm
“Here’s a sample of
snowball vendors in the
Houston area:

“MVP’s New Orleans
Snowballs, 11006 Dorrance
(Highway 59 at Murphy
Road); 530-5544. Open
noon-10 p.m., Mondays-
Saturdays, 1-9 p.m.,
Sundays. Seating: two
benches under a shade …

“… in the front window.

“Probably the fluffiest,
smoothest snow this side of
the Crescent City, made not
too juicy but just right.

“Flavors include vanilla malt,
cranberry, hazelnut, Andes
chocolate mint, white
chocolate and chips,
cantaloupe, butter cream and
creamy coconut. For an extra
30 cents, MVP [Mark
Vincent Paul] will add such
toppings as cream, condensed
milk, Hershey’s chocolate
syrup, cherries and
Knottsberry [sic] Farm
crushed pineapples and
strawberry. Mario
Monterroza uses a gentle
touch with the snow machine
and creates a sublime coffee-
flavored snoball topped with
sweetened condensed milk.
Prices start at $1.00 for small
and go up to $3.85 for 44-
ounce size.”

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These third-party uses support our view that the term
“White Chocolate & Chips” is merely descriptive. Applicant
dismisses these uses by its competitors by asserting that
they are “unlawful use,” although it is not clear what
applicant has done to counteract this usage. In any event,
the fact that third parties consistently use this term to
describe a flavoring is an indication that manufacturers and
retail merchants as well as the ultimate snow cone consumers
in New Orleans and Houston view “White Chocolate & Chips” as
a descriptive term for this particular flavoring. In
determining descriptiveness, tribunals often look to whether
competitors actually use the identical term and/or need to
use the disputed term to compete within an established
product line. See 2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, §§
11.68 and 11.69, 4th Edition (2010).
Thus, we find that “White Chocolate” is highly
descriptive of the flavor of the goods, and that “Chips” is
merely descriptive of the specks, and when joined together
with an ampersand, the resulting term, “White Chocolate &
Chips,” is merely descriptive.
Nonetheless, applicant argues that, even if the involved
term otherwise appears to have a descriptive meaning, it is
registrable on the Principal Register because it conveys a
double entendre. In this regard, applicant likens its
Serial No. 77471425
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alleged mark to the well-known example of SUGAR & SPICE in
arguing that its applied-for term should be found to be non-
descriptive. Indeed, a mark is registrable if it has, in
addition to a descriptive meaning, a unique, incongruous, or
otherwise non-descriptive meaning in relation to the goods.
See The Institut National des Appellations D'Origine v.
Vintners International Co. Inc., 958 F.2d 1574, 22 USPQ2d
1190 (Fed. Cir. 1992) [affirming Board’s position that CHABLIS
WITH A TWIST projects a double meaning, e.g., the unusual
approach of garnishing wine with a citrus flavoring]; In re
Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382, 384 (CCPA
1968) [the term SUGAR & SPICE held not to be merely descriptive
of bakery products]13 and In re National Tea Co., 144 USPQ 286
(TTAB 1965) [NO BONES ABOUT IT for fresh pre-cooked ham]. In
addition to the straightforward and merely descriptive
meaning, the term in each of these cases creates a second,
non-descriptive meaning that members of the public would
readily understand, thereby rendering the term registrable on
the Principal Register as an inherently distinctive mark.

13 In this oft-cited decision of the predecessor to our principal
reviewing court, the Court found this matter clearly functioned as
a trademark because “sugar and spice” is a well-known phrase taken
from a nursery rhyme. The composite mark is inherently distinctive
as applied to bakery products – even ones containing these two
ingredients – precisely because this combination from the nursery
rhyme is familiar to anyone seeing or hearing this mark.

Serial No. 77471425
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However, applicant has not explained what non-
descriptive meaning consumers would ascribe to its mark, and
a non-descriptive meaning is certainly not readily apparent
to us. Therefore, we find that the term “White Chocolate &
Chips” does not consist of a clever or incongruous
combination and conveys no double entendre.
Rather, we find that the Trademark Examining Attorney
has demonstrated that the term, “White Chocolate & Chips,”
when viewed as a whole, immediately conveys readily
understood information about the primary flavor of the goods,
as well the presence of tiny specks in the goods. Hence, we
conclude that applicant’s applied-for mark is merely
descriptive of its identified “food flavorings.”
Genericness
The question of whether this term is capable of
functioning as a source identifier is not before us. The
Trademark Examining Attorney has already determined that this
term is registrable on the Supplemental Register. Hence,
this mark will not be published for opposition, but will
proceed to issuance on the Supplemental Register.
Decision: In view of the above findings, the refusal to
register on the Principal Register is hereby affirmed.
However, the registration will issue on the Supplemental
Register in due course.