Teaspoonful, LLC

Trademark Trial and Appeal Board

Aug 12, 2020

87848808 (T.T.A.B. Aug. 12, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 12, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Teaspoonful, LLC
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Serial No. 87848808
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Tommy SF Wang of Wang IP Law Group, P.C.,
for Teaspoonful, LLC.
Rhoda Nkojo, Trademark Examining Attorney, Law Office 117,
Hellen Bryan-Johnson, Managing Attorney.
_____

Before Bergsman, Goodman and Hudis,
Administrative Trademark Judges.

Opinion by Hudis, Administrative Trademark Judge:
As its application originally was filed, Teaspoonful, LLC (“Applicant”) sought
registration of the proposed mark OOLONG TEA COLLECTIVE (in standard
characters) on the Principal Register for:
Tea; tea bags; tea extracts; tea pods; tea-based beverages; tea-based iced
beverages; beverages with a tea base; coffee and tea; herb tea; herbal
tea; iced tea; instant tea; Jasmine tea; mixes for making tea; oolong tea;
sparkling tea; white tea in International Class 30 (based on use); and
Restaurant; Restaurant and café services (based on intent-to-use).1

1 Application Serial No. 87848808 filed on March 25, 2018, under Trademark Act Section 1(a),
15 U.S.C. § 1051(a), for the goods in Class 30 based upon Applicant’s claim of first use
Serial No. 87848808
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The Trademark Examining Attorney refused registration under Trademark Act
Section 2(e)(1), 15 U.S.C. § 1052(e)(1), on the ground that Applicant’s proposed mark,
as applied to the goods and services identified in the application, is merely descriptive
of them.2
After the Examining Attorney’s refusal was made final, Applicant filed a Request
to Divide the Application.3 The U.S. Patent and Trademark Office (“USPTO”)
processed the Request to Divide4 such that:
(1) Parent (original) Application Serial No. 87848808 contains the
following services under Trademark Act Section 1(b): Restaurant; Restaurant
and café services in International Class 43.
(2) Child Application Serial No. 87981236 contains the following goods
under Trademark Act Section 1(a): Tea; tea bags; tea extracts; tea pods; tea-
based beverages; tea-based iced beverages; beverages with a tea base; coffee
and tea; herb tea; herbal tea; iced tea; instant tea; Jasmine tea; mixes for
making tea; oolong tea; sparkling tea; white tea in International Class 30.

anywhere and first use in commerce since at least as early as October 24, 2017, and under
Trademark Act Section 1(b), 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona
fide intention to use the mark in commerce.
2 Office Action of July 17, 2018 at TSDR 2-3. Page references herein to the application record
refer to the online database of the USPTO’s Trademark Status & Document Retrieval
(“TSDR”) system. All citations to documents contained in the TSDR database are to the
downloadable .pdf versions of the documents in the USPTO TSDR Case Viewer. See, e.g., In
re Peace Love World Live, LLC, 127 USPQ2d 1400, 1402 n.4 (TTAB 2018). References to the
briefs on appeal refer to the Board’s TTABVUE docket system. Before the TTABVUE
designation is the docket entry number; and after this designation are the page references, if
applicable.
3 Request to Divide of May 7, 2019.
4 Notice that Processing of Request to Divide Application is Completed of June 17, 2019, at
TSDR 1.
Serial No. 87848808
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Child Application Serial No. 87981236 proceeded to registration on the Supplemental
Register.5
On the same day that Applicant filed its Request to Divide, it also requested
reconsideration6 of the refusal to register. After the Examining Attorney denied the
Request for Reconsideration,7 Applicant appealed to this Board. Applicant and the
Examining Attorney filed briefs. We affirm the refusal to register as to the services
in International Class 43.
I. Applicable Law – Merely Descriptive
In the absence of acquired distinctiveness, Section 2(e)(1) of the Trademark Act,
15 U.S.C. § 1052(e)(1), precludes registration of a mark on the Principal Register
which, when used in connection with the applicant’s goods, is merely descriptive of
them. A mark is “merely descriptive” within the meaning of § 2(e)(1) “if it immediately
conveys information concerning a feature, quality, or characteristic of the goods or
services for which registration is sought.” In re N.C. Lottery, 866 F.3d 1363, 123
USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing In re Bayer AG, 488 F.3d 960, 82 USPQ2d
1828, 1831 (Fed. Cir. 2007)). “A mark need not recite each feature of the relevant

5 Registration No. 5853571 issued on the Supplemental Register on September 3, 2019, with
the following disclaimer: “No claim is made to the exclusive right to use ‘OOLONG TEA’ apart
from the mark as shown.”
6 Applicant’s Request for Reconsideration of May 7, 2019 was not accompanied by any
evidence and contained no argument in support of registration. Applicant’s Request for
Reconsideration at TSDR 3-6 only provided the Filing Receipt for its Request to Divide.
7 The Examining Attorney’s Refusal of Reconsideration of July 18, 2019 does not specify that
the mere descriptiveness refusal, after the Application was divided, only pertains to the
services in International Class 43. However, Applicant’s and the Examining Attorney’s briefs
on appeal clarify this is the case. Applicant’s Brief, 4 TTABVUE 5-6; Examiner’s Brief, 6
TTABVUE 2-4.
Serial No. 87848808
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goods or services in detail to be descriptive, it need only describe a single feature or
attribute.” In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217,
1219 (Fed. Cir. 2012) (citation and internal quotations omitted).
Terms that describe the provider of a product or service also may be merely
descriptive of the product or service. See In re Chamber of Commerce, 102 USPQ2d
at 1220 (affirming Board’s finding that NATIONAL CHAMBER was merely
descriptive of online service providing directory information for local and state
chambers of commerce and business and regulatory data analysis services to promote
the interest of businessmen and businesswomen); In re Major League Umpires, 60
USPQ2d 1059, 1060 (TTAB 2001) (holding MAJOR LEAGUE UMPIRE merely
descriptive of clothing, face masks, chest protectors and shin guards: “[T]here can be
no question that MAJOR LEAGUE UMPIRE describes the provider of the identified
goods.”). Conversely, a mark is suggestive if it “requires imagination, thought, and
perception to arrive at the qualities or characteristics of the goods or services.” In re
Franklin Cty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012).
“The major reasons for not protecting … [merely descriptive] marks are: (1) to
prevent the owner of a mark from inhibiting competition in the sale of particular
goods [or services]; and (2) to maintain freedom of the public to use the language
involved, thus avoiding the possibility of harassing infringement suits by the
registrant against others who use the mark when advertising or describing their own
products [or services].” In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1090
Serial No. 87848808
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(Fed. Cir. 2005) (quoting In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 217
(CCPA 1978)).
Whether a mark is merely descriptive is evaluated “in relation to the particular
goods for which registration is sought, the context in which it is being used, and the
possible significance that the term would have to the average purchaser of the goods
because of the manner of its use or intended use.” In re Chamber of Commerce, 102
USPQ2d at 1219 (quoting In re Bayer AG, 82 USPQ2d at 1831) and “not in the
abstract or on the basis of guesswork.” In re Fat Boys Water Sports, LLC, 118 USPQ2d
1511, 1513 (TTAB 2016) (citing In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215,
218 (CCPA 1978)). We ask “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 and services are will understand the mark to convey
information about them.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695
F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (citation and internal quotation
omitted).
Where a mark consists of multiple words, the mere combination of descriptive
words does not necessarily create a non-descriptive word or phrase. In re Phoseon
Tech., Inc., 103 UPQ2d 1822, 1823 (TTAB 2012); In re Associated Theatre Clubs Co.,
9 USPQ2d 1660, 1662 (TTAB 1988). A mark comprising a combination of merely
descriptive components is registrable if the combination of terms creates a unitary
mark with a unique, suggestive, or otherwise non-descriptive meaning, or if the
composite has a bizarre or incongruous meaning as applied to the goods or services.
Serial No. 87848808
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See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968); In re Shutts,
217 USPQ 363 (TTAB 1983). However, 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. See, e.g., In re Oppedahl & Larson
LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372, 1374 (Fed. Cir. 2004) (PATENTS.COM
merely descriptive of computer software for managing a database of records that
could include patents and for tracking the status of the records by means of the
Internet).
Moreover, a mark comprising more than one element must be considered as a
whole and should not be dissected; however, we may consider the significance of each
element separately in the course of evaluating the mark as a whole. See DuoProSS
Meditech, 103 USPQ2d at 1756-57 (noting that “[t]he Board to be sure, can ascertain
the meaning and weight of each of the components that makes up the mark.”).
It also has long been held that business entity designations indicating the type of
goods or services produced, rendered or sold by an applicant are merely descriptive
of those goods or services produced, rendered or sold. See In re Taylor & Francis
[Publishers] Inc., 55 USPQ2d 1213, 1216 (TTAB 2000) (“We have repeatedly held that
‘a mark which names the type of commercial establishment from which particular
goods come is merely descriptive of those goods.’”) (citing In re Phone Co., 218 USPQ
1027, 1028 (TTAB 1983)); see also In re Paint Prods. Co., 8 USPQ2d 1863, 1866 (TTAB
1988) (“purchasers encountering the words ‘PAINT PRODUCTS CO.’ on the goods for
which registration is sought would view those words not as a trademark, but in their
Serial No. 87848808
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ordinary dictionary sense: a company that sells paint products.”); In re Martin’s
Famous Pastry Shoppe, 221 USPQ 364, 367 (TTAB 1984), aff’d, 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984) (PASTRY SHOPPE “conveys a clear and immediate
impression of the character of applicant’s baked goods as products likely to emanate
from a pastry shop”).
Evidence that a term is merely descriptive to the relevant purchasing public “may
be obtained from any competent source, such as dictionaries, newspapers, or
surveys,” In re Bayer AG, 82 USPQ2d at 1831, as well as “labels, packages, or in
advertising material directed to the goods.” In re Abcor Dev. Corp., 200 USPQ at 218.
It may also be obtained from websites and publications, and an applicant’s own
specimen of use and any explanatory text included therein. In re N.C. Lottery, 123
USPQ2d at 1710; In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1565 (Fed.
Cir. 2001).
It is the Examining Attorney’s burden to show that a term is merely descriptive
of an applicant’s goods or services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010
(Fed. Cir. 1987). Once a prima facie case is established, the burden of rebuttal shifts
to Applicant. Id.
II. Analysis
Applicant argues that:
the Examining Attorney fails to demonstrate how the words “Oolong,”
“Tea,” and “Collective”, taken separately or together, immediately
convey the type of goods [sic]8 sought to register without engaging some

8 As noted above, this appeal concerns the refusal to register the proposed OOLONG TEA
COLLECTIVE mark as to Applicant’s services in International Class 43.
Serial No. 87848808
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multi-stage thinking or imagination on the part of the likely purchasers
seeking such goods. As such, the Examining Attorney does not properly
draw the line between the definition of “suggestive” and “descriptive”
when deciding whether the mark is merely descriptive. … At a
minimum, Applicant has raised clear doubts as to whether the mark is
merely descriptive.
Since Applicant claims the Examining Attorney failed to meet the USPTO’s
burden of demonstrating that the proposed mark OOLONG TEA COLLECTIVE in
connection with restaurant and café services is merely descriptive, we now review the
Examining Attorney’s evidence and arguments therefrom. To begin, the Examining
Attorney made of record the following online dictionary definitions:
 OOLONG – tea made from leaves that have been partially oxidized before
firing.
 TEA – a hot drink made by infusing the dried crushed leaves of the tea plant
in boiling water.
 COLLECTIVE – (adjective) of, relating to, characteristic of, or made by a
number of people acting as a group; (noun) an undertaking, such as a business
operation, set up on the principles or system of collectivism.
 COLLECTIVE – (adjective) of, relating to, or being a group of individuals;
involving all members of a group as distinct from its individuals; shared or
assumed by all members of the group; (noun) a cooperative unit or
organization.9
 CAFÉ – a usually small and informal establishment serving various
refreshments (such as coffee).
 RESTAURANT – a business establishment where means or refreshments may
be purchased.10

9 Definitions of OOLONG, TEA and COLLECTIVE were made of record with the Office Action
of July 17, 2018, at TSDR 5, 10 and 15. Second definition of COLLECTIVE was made of
record with the Office Action of February 28, 2019, at TSDR 8-9.
10 Definitions of CAFÉ and RESTAURANT were included with the Examiner’s Brief at 6
TTABVUE 18 and 27. The Examining Attorney requests that we take judicial notice of these
definitions taken from the online version of the MERRIAM-WEBSTER dictionary, Examiner’s
Brief at 6 TTABVUE 6 n.2, which we do. The Board may take judicial notice of dictionary
definitions, including online dictionaries that exist in printed format or have regular fixed
Serial No. 87848808
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For completeness, as to dictionary definitions, Applicant made of record the
following definition:
 COLLECTIVISM – a political or economic theory advocating collective control
especially over production and distribution.11
The Examining Attorney additionally made of record pages from the following
websites to show that, when included in a business name immediately following the
distinctive name or informational matter about a business, the presence of the term
“COLLECTIVE” is commonly understood to convey information about how the
business is structured or managed:12
 LEN COLLECTIVE – Referring to “Len Collective” as the business name of a
brick and mortar retail shop where the name is comprised of the distinctive
word “Len” and is followed by the descriptive term “Collective” which, because
of its position in the name, indicates the type of business or how it is owned
and managed.
 HASTINGS COLLECTIVE – Retail business providing tea products under the
business name “Hastings Collective” which features distinctive wording
“Hastings” followed by the descriptive term “Collective” to describe the type of
business.
 COFFEE AND TEA COLLECTIVE – Restaurant business with the business
name “Coffee and Tea Collective,” which features descriptive wording that
describes the restaurant’s featured goods, i.e., “Coffee and Tea” and ends with
the descriptive term “Collective” to describe the type of business.
 ESTEEMED TEA COLLECTIVE – Business that specializes in “tea” and has
a business name of “Esteemed Tea Collective”; the entity’s name is comprised
of the distinctive wording “Esteemed”, descriptive wording that describes the
goods offered, i.e., “TEA”, and the term “Collective” at the end to describe the
type of business.

editions. See In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823
F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016).
11 Definition of COLLECTIVISM was made of record with the Office Action Response of
January 17, 2019, at TSDR 20.
12 See Examiner’s Brief, 6 TTABVUE 7-8.
Serial No. 87848808
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 BONDADOSO COFFEE AND TEA COLLECTIVE – Restaurant business with
the business name “Bondadoso Coffee & Tea Collective” that features the
distinctive term “Bondadoso”, followed by descriptive wording that describes
the restaurant’s featured goods, i.e., “Coffee and Tea”, and ends with the
descriptive term “Collective” to describe the type of business.13
Challenging this third-party use evidence, Applicant states that “it do[es] not
demonstrate that ‘Collective’ was commonly used in the café/restaurant industry to
the degree that it immediately conveys the type of service the business provides. In
addition, the term ‘collective’ represents the concept of collectivism that people can
be connected through a certain hobby.” These statements are unsupported in the
record. Counsel’s arguments are not evidence, and we will not rely on them. See Cai
v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018)
(quoting Enzo Biochem, Inc. v. Gen-Probe Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005)
(“Attorney argument is no substitute for evidence.”)).
Applicant did make of record pages from its own OOLONG TEA COLLECTIVE
website, which contain the following text:
Alishan High Mountain Oolong is a refined and elegant oolong tea.
Grown in the beautiful Alishan Tea Garden in Taiwan, an extraordinary
high altitude terroir, perfectly suited to the cultivation of tea, giving it
complex aromatic properties and rich flavors. Each tea leaf is
handpicked and made with traditional Taiwanese tea craftsmanship.
Directly from farm to your cup, ensuring exceptional quality and
freshness. The tea is vacuum sealed in a multi-layer foil bag, which
prolongs the storage life of the tea by protecting it from humidity and
light. … Origin: Alishan, Taiwan.
* * *

13 Pages from the LEN COLLECTIVE, HASTINGS COLLECTIVE, COFFEE AND TEA
COLLECTIVE, ESTEEMED TEA COLLECTIVE and BONDADOSO COFFEE AND TEA
COLLECTIVE websites were made of record with the Office Action of February 28, 2019, at
TSDR 18-50.
Serial No. 87848808
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As a tea collective, we source all kinds of natural tea from the farmers
in Taiwan. Let us know what you're interested in, and we'll bring it to
your table! (Emphasis added).14
On its website, Applicant clearly is using OOLONG, OOLONG TEA, TEA and
TEA COLLECTIVE in a descriptive manner in connection with its tea products. It
takes little to no stretch or exercise of the imagination for our finding that, if
Applicant were to use the proposed OOLONG TEA COLLECTIVE mark in connection
with restaurant and café services, it would do so in a similar manner as presently
shown on its website – to inform consumers that Oolong tea is served at a restaurant
or café run by Applicant’s business that is operated as a collective.
Based on the evidence made of record we find that the proposed mark OOLONG
TEA COLLECTIVE immediately informs consumers that Oolong tea would be served
at a restaurant or café run by a business operated as a collective. In re N.C. Lottery,
123 USPQ2d at 1709; In re Chamber of Commerce, 102 USPQ2d at 1220. Each
component of the proposed mark retains its merely descriptive significance in relation
to Applicant’s recited Class 43 services; thus the combination results in a composite
that is itself merely descriptive. In re Oppedahl & Larson, 71 USPQ2d at 1372, 1374.
Upon observing Applicant’s proposed mark, no imagination, thought or perception is
necessary for consumers to arrive at the qualities or characteristics of Applicant’s
services. In re Franklin Cty. Historical Soc’y, 104 USPQ2d at 1087.

14 Pages from Applicant’s website made of record with Office Action Response of January 17,
2019, at TSDR 13-14, 16.
Serial No. 87848808
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The Examining Attorney met the USPTO’s burden of demonstrating that
Applicant’s proposed mark is merely descriptive for restaurant and café services, and
Applicant’s evidence does not change this result. In addition to making of record
pages from its own website, Applicant also submitted copies of third-party
registrations of “marks incorporating the terms ‘Oolong,’ ‘Tea,’ or ‘Collective’ ….”
From this evidence, Applicant argues that “[j]ust as these marks are not merely
descriptive of their goods, Applicant’s mark is not descriptive. Thus, for the same
reason that each of these marks is registrable, Applicant’s mark Oolong Tea
Collective should likewise be deemed capable of registration.”15
The third-party registrations Applicant made of record are:
Trademark Registration No. Goods & Services

(OOLONG TEA HEY LONG
CHA)
(The English translation of
“Hei Long Cha” in the mark is
“OOLONG TEA”)
(“OOLONG TEA” and
“CHA” disclaimed)

5269959 IC 043: Bar services; Boarding house
services; Cafés; Canteen services; Cocktail
lounge services; Hotel accommodation
services; Hotels; Outside catering services;
Tea bars; Tourist home services.

OOLONG & MATCHA TEA
EGCG CALORIE-BURNING
DIET
(“OOLONG & MATCHA TEA
EGCG” and “DIET”
disclaimed)

4970749

IC 005: dietary supplements; food
supplements; herbal supplements;
nutritional supplements; vitamin
supplements; mineral supplements;
multivitamin/mineral supplements.

OOLONG LA
(“OOLONG” disclaimed)

5138452 IC 003: Non-medicated skin care
preparations containing oolong

SLIMFUL CHOCOLATE
DECADENCE OOLONG TEA
(“CHOCOLATE” and
“OOLONG TEA” disclaimed)
4197476
(Cancelled)
IC 030: Tea

15 Applicant’s Brief, 4 TTABVUE 8-9. Third-party registrations made of record with Office
Action Response of January 17, 2019, at TSDR 22-28.
Serial No. 87848808
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Trademark Registration No. Goods & Services

FRENCH SPICE
QUARTET OOLONG TEA
(“FRENCH SPICE” and
“OOLONG TEA” disclaimed)

4185659
(Cancelled)
IC 030: Tea

As noted above, Registration Nos. 4197476 and 4185659 have been cancelled. A
cancelled registration is not evidence of any existing rights in a mark. See Action
Temp. Servs. v. Labor Force, 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989).
An expired or cancelled registration is evidence of nothing but the fact that it once
issued. Sunnen Prods. Co. v. Sunex Int'l Inc., 1 USPQ2d 1744, 1747 (TTAB 1987).
Of the third-party registrations remaining for consideration, the fact that some
third-party registrations exist for marks allegedly similar to Applicant’s proposed
mark is not conclusive on the issue of descriptiveness. See In re Scholastic Testing
Serv., Inc., 196 USPQ 517, 519 (TTAB 1977). A mark that is merely descriptive must
not be registered on the Principal Register simply because other such marks appear
on the register. In re theDot Commc’ns Network LLC, 101 USPQ2d 1062, 1067 (TTAB
2011). The question of whether a mark is merely descriptive must be determined
based on the evidence of record at the time registration is sought. See In re Nett
Designs Inc., 57 USPQ2d at 1566.
Moreover, the marks of Registration Nos. 4970749 and 5138452 are registered for
goods unrelated to the restaurant and café services for which Applicant seeks
registration of the proposed OOLONG TEA COLLECTIVE mark, rendering those
third-party registrations irrelevant for purposes of our analysis. See In re Merrill
Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 4 U.S.P.Q.2d 1141, 1142 (Fed.
Serial No. 87848808
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Cir. 1987) (“While ownership of one or more prior registrations on the Principal
Register ... of the same [or a similar] mark may be accepted as prima facie evidence
of distinctiveness, ownership of a registration does not of itself authorize the grant
of another registration for different goods.” (internal quotations and citations
omitted)).
We also note that, in every third-party registration Applicant made of record, the
terms OOLONG or OOLONG TEA has been disclaimed apart from each respective
mark as a whole. “Third party registrations [that include such disclaimed terms]
show the sense in which the word is used in ordinary parlance and may show that a
particular term has descriptive significance as applied to certain goods or services.”
In re UST Global (Singapore) Pte. Ltd., 2020 U.S.P.Q.2d 10435, at *3 (TTAB 2020)
(citing Institut National Des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d
1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992)).
Decision
The refusal to register Applicant’s proposed mark OOLONG TEA COLLECTIVE
for the services in International Class 43 on grounds of mere descriptiveness under
Trademark Act Section 2(e) is affirmed.