Spice Depot, Inc.

Trademark Trial and Appeal Board

Jan 3, 2007

No. 78475078 (T.T.A.B. Jan. 3, 2007)

Mailed:
January 3, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Spice Depot, Inc.
________

Serial No. 78475078
_______

Clifford W. Vermette of Vermette & Co. for Spice Depot,
Inc.

Dominick Salemi, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Hohein, Grendel and Bergsman, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark NEW YORK STEAK (in standard character form) for
goods identified in the application as “herbs and spices.”1

1 Serial No. 78475078, filed on August 27, 2004. The application
is based on the intent-to-use provisions of Trademark Act Section
1(b), 15 U.S.C. §1051(b). We note that applicant, in the
application, classified its “herbs and spices” in International
Class 7, and that the Office has assigned the same classification
to the goods. This appears to be incorrect, inasmuch as Class 7
covers machinery items. According the Office’s manual covering
identification and classification of goods, “spices” are
THIS OPINION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 78475078
2
In its response to the first Office action, applicant
submitted a voluntary disclaimer of STEAK apart from the
mark as shown.
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicant’s mark on
the ground that it is merely descriptive of applicant’s
goods. See Trademark Act Section 2(e)(1), 15 U.S.C.
§1052(e)(1). The appeal is fully briefed.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act Section
2(e)(1), if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services. See, e.g., In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and
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

classified in Class 30, as are “processed herbs.” “Fresh herbs,”
“raw herbs,” and “unprocessed herbs” are classified in Class 31.
Thus, it would appear that applicant’s identification of goods is
indefinite as to “herbs.” Because applicant paid the filing fee
for only one class of goods, and because “spices” are classified
in Class 30, we will assume that applicant’s “herbs” are
“processed herbs” in Class 30. We note in any event that whether
applicant’s “herbs” are Class 30 processed herbs or Class 31
unprocessed herbs, the distinction is not material to our
decision herein.

Ser. No. 78475078
3
descriptive; it is enough that the term describes one
significant attribute, function or property of the goods or
services. See 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 those 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).
Moreover, it is settled that “[t]he question is not whether
someone presented with only the mark could guess what the
goods or services are. Rather, the question is whether
someone who knows what the goods or services are will
understand the mark to convey information about them.” In
re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
See also In re Patent & Trademark Services Inc., 49 USPQ2d
1537 (TTAB 1998); In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re American
Greetings Corp., 226 USPQ 365 (TTAB 1985).
Ser. No. 78475078
4
We take judicial notice2 that The Random House
Dictionary of the English Language (Unabridged)(2d ed.
1987) has the following entry for “New York steak” (at page
1296): “See shell steak.” The dictionary’s definition of
“shell steak”(at page 1763) is as follows: “Cookery. A
porterhouse steak with the fillet removed. Also called New
York cut, New York steak.”
We note that applicant, in its reply brief, repeatedly
uses the term “New York steak” generically to name a
particular cut of beef. For example, on page 6 of the
reply brief, applicant makes the following statements: “As
the Examiner has pointed out, NEW YORK STEAK is a term used
to identify a particular cut of beef”; and “As a
consequence, the present mark may be suggestive of the
suitability of the spices for seasoning New York steak but
not merely descriptive of the function of seasoning New
York steak.” At page 7 of the reply brief, applicant
states: “A New York steak is not seasoned in any
particular way”; “A seasoning appropriate for a New York
steak would also be appropriate for a T-bone steak, a
porterhouse, etc.”; and “A porterhouse steak may be cooked

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

Ser. No. 78475078
5
slightly differently from a New York steak depending on
size, thickness, etc.”
Based on this dictionary evidence and on applicant’s
own usage, we find that “New York steak” is a unitary
designation which is the name of a particular type of steak
or cut of beef.3
We also find that NEW YORK STEAK is merely descriptive
of applicant’s “herbs and spices” because it directly and
immediately identifies a purpose or function of the goods,
i.e., they are or may be used to season New York steaks.
The fact that herbs and spices may be used to season
New York steaks, or stated differently, the fact that New
York steaks may be seasoned with herbs and spices, is not
in dispute. However, applicant argues that the mark NEW
YORK STEAK is suggestive of the goods, rather than merely
descriptive, because “[a] New York steak is not seasoned in

3 We are not persuaded by the Trademark Examining Attorney’s
argument that NEW YORK STEAK is a composite mark consisting of
NEW YORK, which is argued to be merely descriptive of “the
origin” of the goods, and STEAK, which is merely descriptive of
the function or purpose of the goods. Instead, we find that NEW
YORK STEAK is a unitary term denoting a type of steak. We note
that the Trademark Examining Attorney’s argument regarding “the
origin” of the goods appears have resulted in or encouraged
applicant’s repeated proffering of the irrelevant argument that
NEW YORK is not primarily geographically descriptive of the goods
under Trademark Act Section 2(e)(2), due to an asserted meaning
of NEW YORK (which is in addition to the geographical meaning) as
connoting sophistication and quality, or due to the lack of a
goods/place association between New York and herbs and spices.

Ser. No. 78475078
6
any particular way,” and/or because “[a] seasoning
appropriate for a New York steak would also be appropriate
for a T-bone steak, a porterhouse, etc.” (Reply brief at
7.) We are wholly unpersuaded by these arguments. The
fact that there may be no particular or single type of
“herbs and spices” which are deemed to be appropriate for
seasoning New York steaks, and the fact that any herbs and
spices which might be used to season New York steaks could
also be used to season different types of steak or cuts of
beef, are immaterial.
Rather, the critical point is simply that “herbs and
spices,” the goods as identified in the application, clearly
are or may be used to season New York steaks. Thus, NEW
YORK STEAK is more than suggestive; it immediately and
directly informs purchasers of a significant purpose or
function of applicant’s herbs and spices, i.e., that they
can be used to season New York steaks. It is well settled
that terms that identify the function or purpose of a
product or service may be merely descriptive or generic
under Section 2(e)(1). See, e.g., In re Gould Paper Corp.,
834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) (SCREENWIPE
held generic for an anti-static cloth used for cleaning
computer and television screens); In re Central Sprinkler
Co., 49 USPQ2d 1194 (TTAB 1998) (ATTIC found generic for
Ser. No. 78475078
7
sprinklers installed primarily in attics); In re Reckitt &
Colman, North America Inc., 18 USPQ2d 1389 (TTAB 1991)
(PERMA PRESS is generic for soil and stain removers for use
on permanent press products); In re Wallyball, Inc., 222
USPQ 87 (TTAB 1984) (WALLYBALL held descriptive of sports
clothing and game equipment); In re National Presto
Industries, Inc., 197 USPQ 188 (TTAB 1977) (BURGER held
merely descriptive of cooking utensils); and In re Orleans
Wines, Ltd., 196 USPQ 516 (TTAB 1977) (BREADSPRED held
merely descriptive of jams and jellies). Similarly, because
an obvious purpose or function of “herbs and spices” is that
they are or may be used to season New York steaks, NEW YORK
STEAK is merely descriptive of the goods. The fact that the
same herbs and spices may be used to season other types of
steaks, or the fact that New York steaks can be seasoned by
more than one particular type of herbs and spices, does not
detract from the simple fact that a function or purpose of
“herbs and spices” is that they may be used to season New
York steaks.
For these reasons, we find that NEW YORK STEAK is
merely descriptive of applicant’s “herbs and spices,” and
that it therefore is unregistrable on the Principal Register
Ser. No. 78475078
8
pursuant to Trademark Act Section 2(e)(1).
Decision: The refusal to register is affirmed.