WhiteWave Services, Inc.

Trademark Trial and Appeal Board

Jan 27, 2015

No. 86008622 (T.T.A.B. Jan. 27, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: January 27, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re WhiteWave Services, Inc.
_____

Serial No. 86008622
_____

Betsy D. Proffitt and Larry H. Tronco of Holland & Hart LLP,
for In re WhiteWave Services, Inc.
Rudy R. Singleton, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
_____

Before Zervas, Taylor and Gorowitz,
Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
WhiteWave Services, Inc. (“Applicant”) seeks registration on the Principal
Register of the mark CLASSICMAC (in standard characters) for
Macaroni and cheese, in International Class 30.1
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(e)(1) of the Trademark Act on the ground that the mark is
merely descriptive of Applicant’s goods. When the refusal was made final, Applicant

1 Application Serial No. 86008622 was filed on July 12, 2013, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
Serial No. 86008622
- 2 -

appealed and requested reconsideration. After the Examining Attorney denied the
request for reconsideration, the appeal was resumed. We reverse the refusal to
register.
I. Discussion
A term is deemed to be merely descriptive of goods or services, within the
meaning of Section 2(e)(1) of the Trademark Act, if it forthwith conveys an
immediate idea of an ingredient, quality, characteristic, feature, function, purpose
or use of the goods. DuoProSS Meditech Corp. v. Inviro Medical Devices Ltd., 695
F.3d 1247, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); In re Chamber of Commerce of
the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). Whether a
term is merely descriptive is determined not in the abstract, but in relation to the
goods for which registration is sought, the context in which it is being used on or in
connection with the goods, and the possible significance that the term would have to
the average purchaser of the goods because of the manner of its use; that a term
may have other meanings in different contexts is not controlling. In re Chamber of
Commerce of the U.S., 102 USPQ2d at 1219 (citing In re Bayer Aktiengesellschaft,
488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); In re Bright-Crest, Ltd., 204
USPQ 591, 593 (TTAB 1979). The burden is on the United States Patent and
Trademark Office to make a prima facie showing that the mark in question is
merely descriptive. See In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1090
(Fed. Cir. 2005) (citing In re Abcor Development); see also In re Merrill Lynch,
Serial No. 86008622
- 3 -

Pierce, Fenner, and Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1144 (Fed. Cir.
1987).
We need to analyze each portion of the composite mark to determine whether
such portion is merely descriptive of the goods and then look at the composite mark
in its entirety.
We look first at the term MAC. To establish that the term MAC is merely
descriptive of an ingredient of Applicant’s goods, the Examining Attorney has
submitted copies of the following “third party registrations which demonstrate that
the term ‘mac’ is the equivalent of macaroni and is descriptive of pasta foods and is
commonly disclaimed because it describes macaroni products.” Examining
Attorney’s Brief, unnumbered p. 8; 6 TTABVUE at 9.
Reg. No. 3091478 - INSTA MAC
Goods: Packaged entrees consisting primarily of pasta
Disclaimer: MAC
Status: Section 8 &15 accepted and acknowledged;

Reg. No. 3584788 - MEGA MAC
Goods: Macaroni and cheese mix
Disclaimer: MAC
Status: Registered;

Reg. No. 3079121 – SWIFT MAC
Goods: Dry macaroni and cheese
Disclaimer: MAC
Status: Section 8 &15 accepted and acknowledged;

Reg. No. 4128393 - SUPERGRAIN MAC & CHEESE
Goods: Packaged meal mixes consisting primarily of pasta
or rice
Disclaimer: MAC & CHEESE
Status: Registered;

Serial No. 86008622
- 4 -

Reg. No. 4332851 – JOE’S MAC & CHEESE
Goods: Macaroni and cheese
Disclaimer: MAC & CHEESE
Status: Registered; and

Reg. No. 4070157 -
Goods: Prepackaged macaroni and cheese meals
Disclaimer: THE SOUTHERN MAC & CHEESE TRUCK
Status: Registered;

Exhibits to Office Action dated October 11, 2013. These registrations support the
Examining Attorney’s contention that the word “MAC” is considered descriptive by
the USPTO when used in connection with pasta products. Third-party registrations
can be used to demonstrate that a term may have a commonly accepted meaning.
“Such third party registrations 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.” Institut National Des Appellations
D'Origine v. Vintners International Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed.
Cir. 1992). See also In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006)
(“Third-party registrations can be used in the manner of a dictionary definition to
illustrate how a term is perceived in the trade or industry.”); Trademark Manual of
Examining Procedure (TMEP) §§ 1213 and 1213.03(a) (January 2015) (disclaimers
are required of unregistrable components, e.g., a merely descriptive term).
Moreover, Applicant does not deny that MAC means macaroni.
Serial No. 86008622
- 5 -

Looking next at the term CLASSIC, the Examining Attorney defined CLASSIC
as “of a well-known type; typical.”2 In support of this position, she has submitted a
number of recipes for dishes either called “Classic Macaroni and Cheese” or whose
names include the term “Classic” and the terms “Macaroni and Cheese.” Examples
of which are:
Classic Macaroni and Cheese
Author’s comment - “This is the classic baked Mac and
Cheese of my childhood.”
Ingredients: Macaroni, cheddar cheese, butter, salt and
pepper, evaporated milk;
Source: www.allrecipes.com;
Classic Macaroni and Cheese
Author’s comment: “Mac and cheese comes in endless
variations. That might seem like an exaggeration, but
consider the possibilities, from the shape of the pasta to
the combination of cheeses. The addition of meats and
vegetables adds even more variations while also making it
a one-pot meal. There are so many possibilities, but the
most popular way to make mac and cheese simply brings
together elbow macaroni, béchamel, and cheddar. That’s
an Italian noodle, a French sauce, and an English cheese.
This unique combination of foods somehow results in a
delicious dish, one that has become an enduringly popular
and familiar comfort food. The recipe below will tell you
how to make a classic mac and cheese.”
Ingredients: Elbow macaroni, butter, flour, warm milk,
salt and other seasonings, cheddar cheese, topping of your
choice;
Source: http://ezineearticles.com/?Classic-Macaroni-and-
Cheese&id=7548525;
Classic Macaroni and Cheese
Author’s comment: “This dish is a classic twice over – a
classic recipe for a classic comfort food – good old-
fashioned mac ‘n cheese!”

2 Exhibit to Office Action dated October 11, 2013
http://education.yahoo.com/reference/dictionary/entry/classic).
Serial No. 86008622
- 6 -

Ingredients: Elbow macaroni, white onion, butter, flour,
milk, salt, white pepper, hot pepper sauce, mustard,
cheddar cheese, bread crumbs;
Source: www.cooksrecipes.com; and

Classic Creamy Macaroni and Cheese
Ingredients: Macaroni, sour cream, cheddar cheese,
cottage cheese, salt, corn flakes, melted butter;
Source: Recipe.com.

Exhibit to Office Action dated March 2, 2014. Of note, is that while all of the recipes
include “macaroni,” “cheddar cheese,” and “butter,” the other ingredients vary.
Some include “evaporated milk,” while others include “milk,” “cream,” or “sour
cream.” Some include “flour,” others do not. Other ingredients that are used in some
of the recipes are: “seasonings and toppings,” “white onion,” “hot pepper sauce,”
“mustard,” “cottage cheese” “bread crumbs,” and “corn flakes.” Thus, the evidence
reflects no specific well-known type or typical recipe for macaroni and cheese.
To support its position that the term CLASSIC is not descriptive of macaroni
and cheese, Applicant has submitted nineteen third-party registrations for marks
consisting of or containing that the word CLASSIC (with no disclaimer of CLASSIC)
to establish that the USPTO does not treat CLASSIC as a descriptive term when
used in connection with food. In each of these registrations, the term CLASSIC is
the distinctive portion of the mark. The other term(s) in the marks were disclaimed.
As such, inclusion of the term CLASSIC in the marks was the reason the marks
were not considered merely descriptive. See, for example:
Reg. No. 1568658 – CLASSIC CHEESECAKE
Goods: Cheesecakes
Disclaimer: CHEESECAKE
Status: Renewed – January 24, 2000;
Serial No. 86008622
- 7 -

Reg. No. 1768182 – CLASSIC HOAGIES
Goods: Sandwiches
Disclaimer: HOAGIES
Status: Renewed - November 17, 2012;

Reg. No. 2387597 – CLASSIC BREAD
Goods: Bakery goods and breads
Disclaimer: BREAD
Status: Renewed - September 22, 2010;

Reg. No. 2649146 – CLASSIC CANDIES
Goods: Candy
Disclaimer: CANDIES
Status: Renewed – November 29, 2012; and

Reg. No. 3169050 – CLASSIC TACO
Goods: Tacos
Disclaimer: TACO
Status: Registered.

While these registrations have probative value in determining how the USPTO
has treated the term vis-à-vis the listed food items, they do not prove that the term
is not descriptive in this case since each case must be decided on its own facts.
Neither the USPTO – specifically, the Examining Attorney who examined the
application here at issue – nor the Board, is bound by the decision of the Examining
Attorneys who examined the prior applications. See In re Omega SA, 494 F.3d 1362,
83 USPQ2d 1541 (Fed. Cir. 2007); and In re Loew’s Theatres, Inc., 769 F.2d 764, 226
USPQ 865 (Fed. Cir. 1985).
More significant is the meaning of term CLASSIC (of a well-known type; typical)
combined with MAC. To this end, we note that while the evidence reflects that
“macaroni and cheese” is frequently referred to as “mac and cheese,” there is no
evidence, that “mac” alone means “macaroni and cheese.” Therefore, to conclude
Serial No. 86008622
- 8 -

that CLASSICMAC means either a well-known type or a typical macaroni and
cheese dish, a consumer would need to engage in a multistage reasoning process
whereby the consumer realizes that the MAC portion of the mark refers to macaroni
and cheese, not just macaroni, and that [CLASSIC or “the CLASSIC portion of”
with a deletion of “in”] in the mark means that the macaroni and cheese is the
typical version of the dish, which is also a well-known type, which is likely not
possible to prove, since, as discussed above, the evidence reflects no specific well-
known or typical recipe for macaroni and cheese. If, when the goods or services are
encountered under the mark, a multistage reasoning process, or the utilization of
imagination, thought or perception, is required in order to determine what
attributes of the goods or services the mark indicates, the mark is suggestive. See,
e.g., In re Abcor Development Corp, 200 USPQ at 218 and In re Mayer-Beaton Corp.,
223 USPQ 1347, 1349 (TTAB 1984). In this case, because a multistage reasoning
process must be applied to determine the attributes are indicated by the mark, the
mark is suggestive. As such, the Examining Attorney has not met his burden of
establishing that the mark is merely descriptive of macaroni and cheese.
Decision: The refusal to register Applicant’s mark CLASSICMAC is reversed.