Thomas J. Payne Market Develop-ment

Trademark Trial and Appeal Board

Jul 2, 2018

No. 87111890 (T.T.A.B. Jul. 2, 2018)

Mailed: July 2, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
———
In re Thomas J. Payne Market Development
———
Serial No. 87111890
filed July 21, 2016
———
Matthew J. Stark, Price Heneveld LLP for Thomas J. Payne Market Development.
Bernice L. Middleton, Trademark Examining Attorney, Law Office 106, Mary I. Spar-
row, Managing Attorney.
———
Before Mermelstein, Ritchie, and Greenbaum, Administrative Trademark
Judges.
Opinion by Mermelstein, Administrative Trademark Judge:
Thomas J. Payne Market Development seeks registration on the Principal
Register of REAL BLUEBERRIES (in standard characters) for use in connection
with
Promotional services related to food production and manu-
facturing, namely, encouraging the use of specific types of
highbush-grown blueberries to manufacture food products.
International Class 35.1
The Examining Attorney finally refused registration pursuant to Trademark Act

1 Alleging a bona fide intent to use the mark in commerce. Trademark Act § 1(b); 15 U.S.C.
§ 1051(b).
This opinion is not a
precedent of the TTAB
Serial No. 87111890
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§ 2(e)(1), 15 U.S.C. § 1152(e)(1), on the ground that Applicant’s mark is merely de-
scriptive of the identified services. Applicant appealed, and we affirm.
I. Preliminary Issues
A. List of Third-Party Registrations
In its request for reconsideration of the final refusal, Applicant included a list of
forty-two alleged third-party registrations in International Class 35, each “in-
clud[ing] the word ‘REAL’ followed by a term that is also referenced in the description
of services.” Req. for Recon. (Oct. 20, 2017). In denying reconsideration, the Examin-
ing Attorney addressed the list as follows:
[A]pplicant provided a list of registrations containing the
word “real” for services different from those in the present
case. Regardless, the fact that third-party registrations ex-
ist for marks allegedly similar to applicant’s mark is not
conclusive on the issue of descriptiveness. See In re Scho-
lastic Testing Serv., Inc., 196 USPQ 517, 519 (TTAB 1977);
TMEP § 1209.03(a). An applied-for mark that is merely de-
scriptive does not become registrable simply because other
seemingly similar marks appear on the register. In re Scho-
lastic Testing Serv., Inc., 196 USPQ at 519; TMEP
§ 1209.03(a).
Recon. Denied (Nov. 1, 2017; Dec. 5, 2017).2
In its brief on appeal, Applicant set out what appears to be the same list. App. Br.,
5 TTABVUE 10–16. In her responsive brief, the Examining Attorney objected, noting

2 The Examining Attorney issued two apparently identical denials of Applicant’s October 20,
2017, request for reconsideration.
Serial No. 87111890
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that “the mere submission of a list of registrations . . . does not make such registra-
tions part of the record” and “request[ed] that the Board disregard the list of third-
party registrations submitted by applicant with its appeal brief.” Exam. Atty. Br., 9
TTABVUE 7. In its reply brief, Applicant continued its reliance on the listed regis-
trations, and attached copies of the registration certificates3 as an appendix to its
brief. Reply Br., 10 TTABVUE 10–54.
The evidence attached to Applicant’s reply brief is “manifestly untimely,” and will
not be considered. In re Houston, 101 USPQ2d 1534, 1537 (TTAB 2012), aff’d 731
F.3d 1326, 108 USPQ2d 1226 (Fed. Cir. 2013).
As for the list of registrations in Applicant’s opening brief, the Examining Attor-
ney is correct that in order to make the registrations of record, Applicant should have
submitted copies of them prior to appeal (or after appeal, pursuant to a remand
granted for that purpose). Trademark Rule 2.142(d). Nonetheless, she waived any
objection to the list by failing to advise Applicant of the evidentiary issue when the
same list was submitted with Applicant’s request for reconsideration. In re Houston,
101 USPQ2d at 1536. “Accordingly, we will consider the same list of registrations . . .
‘for whatever limited probative value such evidence may have.’ ”4 Id. (quoting In re

3 We note that the certificates show the registrations as originally issued, which in many
cases was more than six years ago. They do not indicate whether these marks remain regis-
tered, and if so, whether for all of the originally identified services. See Trademark Act § 8
(requiring the periodic filing of post-registration affidavits and specimens demonstrating use
of the mark in commerce); § 9 (requiring the renewal of registrations every ten years).
4 The probative value of Applicant’s list is indeed limited. For each item, the list includes only
Serial No. 87111890
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Broyhill Furniture Indus. Inc., 60 USPQ2d 1511, 1513, n.3 (TTAB 2001)).
B. Applicant’s Related Applications
The Examining Attorney complains that Applicant omitted from its list of regis-
trations three of Applicant’s own registrations for similar marks and the same or
similar services, which were copending with the application now before us. According
to the Examining Attorney, Applicant entered a disclaimer of REAL BLUEBER-
RIES in each of these registrations, which we are urged to treat as a concession of
descriptiveness. Exam. Atty. Br., 9 TTABVUE 7. Applicant objects to our considera-
tion of its own registrations and the disclaimers in them, arguing that the Examining
Attorney should not be allowed to raise this new argument on appeal, and that in any
event, its disclaimers were not a concession of descriptiveness, but “merely a calcu-
lated compromise offered by the Appellant in order to move the prior registrations
toward allowance.” Reply Br., 10 TTABVUE 5–6.
Whatever the potential evidentiary value of Applicant’s prior disclaimers, we will
not consider them for the more fundamental reason that the registrations containing
them are not of record. The Examining Attorney did not enter copies of these regis-
trations into the record prior to appeal or request remand of the application to do so.
See Trademark Rule 2.142(d).

the registration number, the literal elements of the registered mark, and the Class 35 ser-
vices. The list does not indicate whether the registered marks include stylization or design
elements, were registered subject to disclaimers or claims of acquired distinctiveness, were
registered on the Supplemental Register, or have expired or been cancelled. Thus, while we
will assume that the listed marks are or were registered for the listed services, we cannot
conclude that those registrations demonstrate that the listed marks are non-descriptive of
their respective services, let alone that REAL BLUEBERRIES is non-descriptive of Appli-
cant’s services.
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II. Discussion
A. Applicable Law
A term that is merely descriptive of the identified goods may not be registered on
the Principal Register without a showing of acquired distinctiveness. Trademark Act
§§ 2(e)(1), (f), 15 U.S.C. §§ 1052(e)(1), (f). “A term is merely descriptive if it immedi-
ately conveys knowledge of a quality, feature, function, or characteristic of the goods
or services with which it is used.” In re Chamber of Commerce of the U.S., 675 F.3d
1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer AG, 488 F.3d 960,
82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009, 1009–10 (Fed. Cir. 1987). Whether a particular term is merely descriptive is
determined in relation to the 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). In other words, the question is whether someone who knows
what the goods are will understand the mark to convey information about them. Duo-
ProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753,
1757 (Fed. Cir. 2012); In re Tower Tech, Inc., 64 USPQ2d 1314, 1316–17 (TTAB 2002);
In re Patent & Trademark Servs. Inc., 49 USPQ2d 1537, 1539 (TTAB 1998). “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 indi-
cates, the term is suggestive rather than merely descriptive.” Coach Servs. Inc. v.
Triumph Learning LLC, 96 USPQ2d 1600, 1616 (TTAB 2010) (quoting In re Tennis
in the Round, Inc., 199 USPQ 496, 497 (TTAB 1978)), vacated-in-part on other
Serial No. 87111890
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grounds, 668 F.3d 1356, 101 USPQ2d 1713 (Fed. Cir. 2012).
B. Evidence and Arguments
There is no indication that the words comprising the proposed mark have any-
thing other than their ordinary meaning. The Examining Attorney made of record
dictionary definitions of real meaning, as relevant here, “not fake, false, or artificial,”
and blueberry as “the edible blue or blackish berry of any of several North American
plants (genus Vaccinium) of the heath family.” First Ofc. Action, TSDR 24–27, 6 (Nov.
8, 2016), http://www.merriam-webster.com/dictionary.
The Examining Attorney also submitted several items from the internet discuss-
ing the use of artificial blueberries in a variety of common food products. For instance,
the transcript of a video tells us that
[a] lot of products that imply they’re made with blueberries
contain no blueberries at all. And many that do contain a
tiny amount of blueberries cut their recipes with artificial
blueberry ingredients to make it look like their products
contain more blueberries than they really do.
Id., TSDR 9, 10, Blueberries faked in cereals, muffins, bagels and other food products
— Food Investigations (Jan. 18, 2011), http://tv.naturalnews.com.
Another story laments:
Bad news for blueberry lovers. You know those teeny “blue-
berry” pieces dotting your favorite flavor of muffin, bagel,
cereal, cereal bar or other breakfast treat? It turns out they
may not have ever been actual berries in their sad, small
lives. The ingredient list on some breakfast treats reveals
that these “blueberries” are in fact just sugar, corn syrup,
and food coloring clumped into berry-sized bits.
Id., TSDR 12, Sara Boboltz, Sorry, But Turns Out Your Favorite Blueberries May Be
Entirely Fake, The Huffington Post (Oct. 30, 2014), http://www.huffingtonpost.com.
Serial No. 87111890
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A webpage notes that “[t]he North American Blueberry Council (NABC) developed
the seal [below] to reward use of real blueberries in food products. To date, dozens of
companies have been granted use of the seal in al orts [sic] of categories.”

Id., TSDR 20, http://www.blueberrytech.org/berrylatest/summer-2013-berrylatest.
htm. The same webpage urges the reader to
[m]ake sure they are real! Blueberry products should con-
tain blueberries. In the past, a few products — especially
in the developing countries — are called blueberry yet have
no blueberry content! This can include blue coloring, dried
apple bits with blue color, and gum and fat bits with blue-
berry coloring. A whole wide range of real blueberry ingre-
dients fit the product specifications of just about every cat-
egory. UHBC research has indicated that customers do de-
mand real blueberries. Blueberry ingredients on the pack
need to be backed up with real blueberries inside the pack
and product.
Id., TSDR 21.
The evidence also indicates that some consumers may find it important to con-
sume real blueberries. According to one website, “a diet rich in blueberries lowers
blood cholesterol levels while improving glucose control and insulin sensitivity, low-
ering the risk of subsequent heart disease and diabetes,” in addition to ten other
health benefits. Id. TSDR 29, Namita Nayyar, Top 10 Health Benefits of Blueberries
(2016), http://www.womenfitness.net/top10/blueberries.
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Based on this evidence, the Examining Attorney argues that the mark is a refer-
ence to real — i.e., genuine, not fake or artificial — blueberries, and that real blue-
berries are a characteristic or purpose of Applicant’s “promotional services related to
food production and manufacturing, namely, encouraging the use of specific types of
highbush-grown blueberries to manufacture food products.” Exam. Atty. Br., 9
TTABVUE 6. Applicant disagrees, contending that “REAL BLUEBERRIES does
not describe promotional services such that the mark is not descriptive of the de-
scribed set of services included within the subject application.” App. Br., 5 TTABVUE
6.
C. Analysis
Applicant’s mark is merely descriptive of its identified services because it imme-
diately identifies the subject or purpose of Applicant’s promotional services. Appli-
cant’s promotional services are explicitly directed to “encouraging the use of specific
types of highbush-grown blueberries to manufacture food products.” The applied-for
mark, REAL BLUEBERRIES, would immediately inform a consumer of Applicant’s
services that Applicant is promoting the use of real — as opposed to artificial or fake
— blueberries in the manufacture of food products. The Examining Attorney’s dic-
tionary evidence establishes the meaning of the constituent elements of Applicant’s
mark, and her internet evidence establishes the meaning of the mark in its entirety.
Applicant proposes no alternate meaning, contending instead that REAL BLUE-
BERRIES is not merely descriptive of its promotional services.
Applicant’s argument relies on an incorrect test for descriptiveness. While we
agree that a person encountering the phrase REAL BLUEBERRIES would not be
Serial No. 87111890
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able to tell from those words alone that Applicant provides “promotional services re-
lated to food production and manufacturing. . . ,” the test for descriptiveness is not
whether a consumer might be able to guess the full nature and extent of the relevant
goods or services from the mark alone, but “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) (quoting In re Tower Tech. Inc., 64 USPQ2d 1314, 1316–
17 (TTAB 2002)). For example, an application to register RED for “automobiles”
would likely be refused as descriptive — despite the fact that the putative mark would
not alone enable one to determine whether the goods are automobiles or apples —
because a consumer who knows that the goods are automobiles will immediately un-
derstand the mark to describe a characteristic of them. Likewise, we have no doubt
that a consumer who knows the nature of Applicant’s services would immediately,
and without conjecture, understand REAL BLUEBERRIES to refer to a feature or
characteristic of those services, namely, promotion of the use of genuine, rather than
false, artificial or some other type of constituted, blueberries in the manufacture of
food products.
Noting the Examining Attorney’s citation of “several TTAB decisions that purport-
edly show examples of refused registrations where a term is central to services pro-
vided,” Applicant argues that the cases are inapposite because they involve goods or
services “in classes other than class 035.” App. Br., 5 TTABVUE 8. It must be noted,
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however, that the test for descriptiveness does not vary depending on the Interna-
tional Class to which the goods or services are assigned. The classification of goods
and services is for the administrative convenience of the USPTO, and has no effect
on the rights of an applicant in its proposed mark. See Trademark Act § 30, 15 U.S.C.
§ 1112. The analysis of descriptiveness must always be based on the mark in question
in relation to the particular goods or services identified. But whatever those goods or
services may be — and to whichever class they may be assigned — the test is the
same: whether the mark “immediately conveys knowledge of a quality, feature, func-
tion, or characteristic of the [identified] goods or services.” In re Chamber of Com-
merce of the U.S., 102 USPQ2d at 1219.
Applicant points to the Examining Attorney’s citation of In re Fr. Croissant, Ltd.,
1 USPQ2d 1238 (TTAB 1986) (holding LE CROISSANT SHOP descriptive for “res-
taurant services”), and In re Le Sorbet, Inc., 228 USPQ 27 (TTAB 1985) (holding LE
SORBET descriptive for “restaurant and carry-out services”), App. Br., 5 TTABVUE
8. Applicant argues that “[i]n each of these [cases], the services in question are not
promotional, but are related to services for producing [or] delivering goods to custom-
ers (i.e. croissants and sorbet).” Id. To the contrary, Applicant points out that its own
services do not involve producing or delivering REAL BLUEBERRIES. Id.
We agree that the services identified by Applicant do not involve producing or
delivering blueberries to customers. While we do not fault the Examining Attorney
for citing France Croissant or Le Sorbet for the proposition that the name of a good
may sometimes be held descriptive for services involving such goods, her cases are
Serial No. 87111890
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admittedly not factually identical to the case before us. Nonetheless, the cases do not,
as suggested by Applicant, App. Br., 5 TTABVUE 9, establish a rule that a mark
which includes the name of a good is descriptive of services only if the identified ser-
vices involve producing or delivering those goods to customers. The test for descrip-
tiveness under Trademark Act § 2(e)(1) is not so limited, but may, as here, otherwise
merely describe a feature or characteristic of the relevant services.
Finally, there is little more to say about Applicant’s list of registrations. As noted,
the list omits significant details about the registrations, but even if copies of them
had been timely made of record, they would not change our finding that Applicant’s
mark is merely descriptive of the identified services. The question of registrability
must be determined based on the particular mark and the particular goods or services
for which registration is sought. “Even if some prior registrations had some charac-
teristics similar to [applicant’s] application, the PTO’s allowance of such prior regis-
trations does not bind the Board or this court.” In re Nett Designs Inc., 236 F.3d 1339,
57 USPQ2d 1564, 1566 (Fed. Cir. 2001). Applicant “concedes that the citation of other
cases in which similar terms are registered is of little value.” App. Br., 5 TTABVUE
9 (citing In re Quik-Print Copy Shops, Inc., 616 F.2d 523, 205 USPQ 505, 507 n.8
(CCPA 1980)). In this case it has virtually none.
III. Conclusion
We have carefully considered all of the evidence and argument of record. We find
that Applicant’s mark, REAL BLUEBERRIES, is merely descriptive of “promo-
tional services related to food production and manufacturing, namely, encouraging
Serial No. 87111890
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the use of specific types of highbush-grown blueberries to manufacture food prod-
ucts.” Trademark Act § 2(e)(1).
Decision: The refusal to register is AFFIRMED.