Société des Produits Nestlé S.A.

Trademark Trial and Appeal Board

Nov 18, 2013

No. 85509120 (T.T.A.B. Nov. 18, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
November 18, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Société des Produits Nestlé S.A.
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Serial No. 85509120
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Thomas A. Polcyn of Thompson Coburn LLP for Société des Produits Nestlé S.A.

Jessica Ellinger Fathy, Trademark Examining Attorney, Law Office 110 (Chris A.F.
Pedersen, Managing Attorney).
_____

Before Bergsman, Wellington and Hightower, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Société des Produits Nestlé S.A. (“applicant”) filed an intent-to-use
application to register the mark KID SELECTS, in standard character form, for the
following goods:
Dairy-based beverages; Dairy-based snack foods excluding
ice cream, ice milk and frozen yogurt; Dehydrated fruit
snacks; Dried fruit and vegetables; Dried fruit-based
snacks; Drinking yogurts; Fruit leathers; Fruit purees;
Fruit-based snack food; Milk based beverages containing
fruit juice; Milk products excluding ice cream, ice milk
and frozen yogurt; Prepared and packaged food kits
composed of vegetables, soups, fruit salads and/or
vegetable salads; Prepared food kits composed of meat,
poultry, fish, seafood, and/or vegetables, ready for cooking
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and assembly as a meal; Preserved, frozen, dried or
cooked vegetables; Processed fruit- and nut-based food
bars; Processed vegetables and fruits; Soy-based snack
foods; Vegetable puree; Vegetable-based snack foods;
Yogurt drinks; Yogurt-based beverages; Yogurts, in Class
29;
Bakery products; Cereal-based snack foods; Cheese
flavored puffed corn snacks; Cookies and crackers; Grain-
based snack foods; Prepared and packaged meal kits
consisting primarily of pasta or rice; Ready to eat, cereal
derived food bars; Ready-to-eat cereals, in class 30; and
Bottled drinking water; Fruit drinks and fruit juices;
Fruit-based beverages; Vegetable juices; Vegetable-fruit
juices, in Class 32.
The Trademark Examining Attorney refused to register applicant’s mark on
the ground that the mark KID SELECTS for the goods in the application is merely
descriptive. See Section 2(e)(1) of the Trademark Act of 1946, 15 U.S.C. §
1052(e)(1). According to the Trademark Examining Attorney, the mark KID
SELECTS directly conveys to the consumer that “[a]pplicant’s food and beverage
items are for kids and are of a special quality or value.”1
Applicant, on the other hand, argues that “the pairing of the term KID with
the term SELECTS creates a unique, non-descriptive commercial impression in the
context of such products.”2 According to applicant, consumers “will have to
speculate as to what type of kid-related goods are offered in connection with the
KID SELECTS mark, because the term SELECTS doesn’t complete the mental

1 Examining Attorney’s Brief, p. 5 (unnumbered).
2 Applicant’s Brief, p. 2.
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picture for them,”3 KID SELECTS is incongruous because consumers do not expect
the two terms to be used together,4 and the mark is subject to multiple
interpretations.5
A term is merely descriptive if it “immediately conveys … knowledge of the
ingredients, qualities, or characteristics of the goods … with which it is used." In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). Whether a
particular term is merely descriptive is determined in relation to the goods or
services for which registration is sought and the context in which the term is used,
not in the abstract or on the basis of guesswork. In re Abcor Dev. Corp., 588 F.2d
811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224
(TTAB 2002). This requires consideration of the context in which the mark is used
or intended to be used in connection with those goods, and the possible significance
that the mark would have to the average purchaser of the goods in the marketplace.
See In re Chamber of Commerce of the United States of America, 675 F.3d 1297, 102
USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Bayer Aktiengesllschaft, 488 F.3d 960, 82
USPQ2d 1828, 1831 (Fed. Cir. 2007); In re Abcor Dev. Corp., 200 USPQ at 218; In re
Venture Lending Assocs., 226 USPQ 285 (TTAB 1985). The question is not whether
someone presented only with the mark could guess the products listed in the
description of goods. Rather, the question is whether someone who knows what the
products are will understand the mark to convey information about them. In re

3 Applicant’s Brief, p. 4.
4 Id.
5 Applicant’s Brief, p. 10.
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Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent &
Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders
Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re American
Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
When two or more merely descriptive terms are combined, the determination
of whether the composite mark also has a merely descriptive significance turns on
the question of whether the combination of terms evokes a new and unique
commercial impression. If each component retains its merely descriptive
significance in relation to the goods or services, the combination results in a
composite that is itself merely descriptive. In re Oppedahl & Larson LLP, 373 F.3d
1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004), quoting, Estate of P.D. Beckwith, Inc.
v. Commissioner, 252 U.S. 538, 543 (1920). See also In re Tower Tech, Inc., 64
USPQ2d at 1318 (SMARTTOWER merely descriptive of commercial and industrial
cooking towers); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001)
(AGENTBEANS merely descriptive of computer programs for use in developing and
deploying application programs); In re Putman Publishing Co., 39 USPQ2d 2021
(TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of news and
information services in the food processing industry). However, a mark comprising
a combination of merely descriptive components is registrable if the combination of
terms creates a unitary mark with a unique, nondescriptive meaning, or if the
composite has a bizarre or incongruous meaning as applied to the goods or services.
See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR &
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SPICE for “bakery products”); In re Shutts, 217 USPQ 363 (TTAB 1983) (SNO-
RAKE for “a snow removal hand tool having a handle with a snow-removing head at
one end, the head being of solid uninterrupted construction without prongs”). Thus,
we must consider the issue of descriptiveness by looking at the mark in its entirety.
“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 at 364-65; In re Universal Water Systems, Inc., 209
USPQ 165, 166 (TTAB 1980). In this regard, “incongruity is one of the accepted
guideposts in the evolved set of legal principles for discriminating the suggestive
from the descriptive mark.” In re Shutts, 217 USPQ at 365. See also In re Tennis in
the Round, Inc., 199 USPQ at 498 (the association of applicant’s mark TENNIS IN
THE ROUND with the phrase “theater-in-the-round” creates an incongruity
because applicant’s services do not involve a tennis court in the middle of an
auditorium).
The following evidence has been made of record.
1. The word “kid” is defined, inter alia, as “a child.”6
2. The word “select” as a verb is defined as “to make a choice or
selection.”7 “Selects” is also a verb conjugated in present indicative form (e.g., my
kid, Nicholas, selects pencils over pens as his writing instrument of choice.).8

6 Yahoo! Education dictionary (yahoo.com) attached to the February 13, 2012 Office action.
See also the Collins Dictionary (collinsdictionary.com).
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3. The word “select” as an adjective is defined as “of special quality of
value; choice: select peaches.”9 (Emphasis in the original).
4. The word “select” as a noun is defined as “one that is chosen in
preference to others or because of special value.”10 It is often used in the plural.11
5. Twenty (20) third-party registrations consisting of the word “select” or
“selects” where the registrant disclaimed the exclusive right to use the word “select”
or “selects.”12 The registrations listed below are representative.
MARK REG. NO. GOODS

PIERRE SELECT 2437502 Bakery goods, drinking water, meats

SAFEWAY SELECT 3663979 Frozen entrees, bakery goods

FRESH SELECTS
(Supplemental)
2911840 Tortilla wraps; salads

SOUTHERN SELECTS 2751076 Fresh fruits and vegetables

ORCHARD SELECT 1930805 Processed fruits

CAROLINA SELECTS 3513265 Meat

7 Yahoo! Education dictionary (yahoo.com) attached to the February 13, 2012 Office action.
8 Id.
9 Yahoo! Education dictionary (yahoo.com) attached to the February 13, 2012 Office action.
See also Merriam-Webster Dictionary (m-w.com).
10 Yahoo! Education dictionary (yahoo.com) attached to the February 13, 2012 Office action.
11 Merriam-Webster online dictionary (m-w.com). The Board may take judicial notice of
dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213
USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including
online dictionaries that exist in printed format or have regular fixed editions. In re Red
Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
12 February 13, 2012 and September 11, 2012 Office actions. The last three are from
applicant’s August 13, 2012 response to Office action.
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MARK REG. NO. GOODS

BRINEMAKER’S
SELECT
3935585 Salt

6. Nine third-party registrations on the Principal Register [no claim of
acquired distinctiveness] consisting of the word “select” or “selects” where neither
“select” or “selects” is disclaimed.13
MARK REG. NO. GOODS

TURKEY SELECT 1593213 Fresh and processed turkey

SPICE SELECT 1777350 Spices

CHICKEN SELECTS 2338997 Prepared chicken pieces

BAKER’S SELECT 3648581 Chocolate

HAWAIIAN SELECT 3580074 Seafood

ASIAN SELECTS 3014019 Frozen appetizers, entrees and side
dishes

SUB SELECTS 2917395 Sandwiches

FIBER SELECTS 3592551 Crackers

SELECT SLICES 3011105 Cheese

The mark KID SELECTS has at least two meanings. As the Trademark
Examining Attorney has noted, KID SELECTS could mean that “[a]pplicant’s food
and beverage goods are for kids and are of a special quality or value.”14 It could also
mean the child chooses. We cannot say with certainty that any one meaning would

13 August 13, 2012 response to Office action.
14 Examining Attorney’s Brief, p. 5 (unnumbered).
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be clearly understood by consumers over the other meaning. Thus, the mark is a
double entendre.
A “double entendre” is a word or expression capable of
more than one interpretation. For trademark purposes, a
“double entendre” is an expression that has a double
connotation or significance as applied to the goods or
services. The mark that comprises the “double entendre”
will not be refused registration as merely descriptive if
one of its meanings is not merely descriptive in relation to
the goods or services.
TMEP § 1213.05(c) (October 2012).
When the mark KID SELECTS engenders the commercial impression and
meaning that the child chooses, then the mark is not merely descriptive because it
possesses a degree of ingenuity that makes it inherently distinctive. In re Kraft,
Inc., 218 USPQ 571, 573 (TTAB 1983) (even though the word “Light” is merely
descriptive when applied to the goods, a disclaimer of the word “Light” is not
required because consumers will not go through the mental process of breaking the
mark LIGHT N’ LIVELY into its component parts but regard it as a unitary mark).
See also In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968)
(SUGAR & SPICE double entendre for bakery products); and In re National Tea
Co., 144 USPQ 286 (TTAB 1965) (NO BONES ABOUT IT double entendre for fresh
pre-cooked ham). In other words, given this possible interpretation of the mark, the
mark does not immediately convey material information, such as ingredients,
qualities or characteristics, of the various food products identified in the
application. Under such circumstances, we find that the mark KID SELECTS for
the goods in listed in the application is not merely descriptive.
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Decision: The refusal to register is reversed.