Teaspoonful, LLCDownload PDFTrademark Trial and Appeal BoardAug 12, 202087848808 (T.T.A.B. Aug. 12, 2020) Copy Citation 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 _____ Serial No. 87848808 _____ 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 - 2 - 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 - 3 - 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 - 4 - 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 - 5 - (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 - 6 - 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 - 7 - 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 - 8 - 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 - 9 - 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 - 10 - 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 - 11 - 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 - 12 - 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 - 13 - 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 - 14 - 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. Copy with citationCopy as parenthetical citation