Yarnell Ice Cream, LLC

Trademark Trial and Appeal Board

Jul 9, 2019

86824279 (T.T.A.B. Jul. 9, 2019)

This Opinion is a
Precedent of the TTAB

Mailed: July 9, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Yarnell Ice Cream, LLC
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Serial No. 86824279
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Daniel L. Kegan and Jay Giusti of Kegan & Kegan, Ltd.,
for Yarnell Ice Cream, LLC.
Melissa Sturman, Trademark Examining Attorney, Law Office 125,
Mark Pilaro, Managing Attorney.
_____

Before Kuhlke, Bergsman, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
Yarnell Ice Cream, LLC (“Applicant”) seeks registration on the Principal Register
of the proposed mark SCOOP in standard characters for goods ultimately identified
as “frozen confections and ice cream promoted and distributed by a mascot named
SCOOP at product promotions and distributions of the frozen confections and ice
cream,” in International Class 30.1

1 Application Serial No. 86824279 was filed on November 18, 2015 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), on the basis of Applicant’s claim of first use of the
proposed mark and first use in commerce since at least as early as February 1, 2012. As
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The Trademark Examining Attorney has refused registration of Applicant’s
proposed mark on three grounds:
1. Under Sections 1, 2, 3, and 45 of the Trademark Act, 15 U.S.C. §§ 1051,
1052, 1053, and 1127, on the ground that the applied-for mark fails to
function as a mark for the goods identified in the application;
2. Under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the
ground that the applied-for mark is merely descriptive of the goods
identified in the application and has not acquired distinctiveness under
Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f); and
3. Under Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051 and 1127,
on the ground that Applicant’s specimens do not show use of the applied-
for mark in commerce in connection with the goods identified in the
application.
When the Examining Attorney made the refusal final, Applicant appealed and
requested reconsideration, 4 TTABVUE,2 which was denied. 5 TTABVUE. The appeal
is fully briefed. We affirm the refusal to register on all three grounds.

discussed below, the identification of services was first amended during prosecution and then
again on appeal.
2 Citations to the briefs and other docket entries in this opinion refer to TTABVUE, the
Board’s online docketing system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB
2014). Specifically, the number preceding TTABVUE corresponds to the docket entry
number, and any numbers following TTABVUE refer to the page number(s) of the docket
entry where the cited materials appear.
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I. Prosecution and Procedural History
We summarize below the prosecution history of the application and the procedural
history of the appeal because they provide useful background for our analysis of the
several grounds for refusal.
A. Prosecution History and Record on Appeal
Applicant initially sought registration of its proposed mark for “frozen confections;
ice cream” based on the specimen reproduced below:
3
Applicant described its specimen as a “[p]hoto of mascot SCOOP with Applicant’s ice
cream, in one of his many public appearances with Applicant’s ice cream.”4

3 November 18, 2015 Application at TSDR 3. All citations to the application file record in this
opinion are to pages in the Trademark Status & Document Retrieval (“TSDR”) database of
the United States Patent and Trademark Office (“USPTO”).
4 Id. at TSDR 1.
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The Examining Attorney issued a first Office Action refusing registration on three
grounds: (1) likelihood of confusion with multiple registered SCOOP-formative
marks; (2) mere descriptiveness; and (3) the insufficiency of Applicant’s specimen.5
The Examining Attorney made of record a dictionary definition of the word “scoop,”6
and webpages showing the use of the word “scoop” in connection with ice cream.7
Applicant responded by making of record materials regarding third-party
company spokespersons “The Maytag Repairman,” “The Marlboro Man,” Dos Equis
beer’s “Most Interesting Man in the World,” and the “Culligan Man,”8 pages from the
USPTO’s Trademark Electronic Search System (“TESS”) database regarding third-
party registrations of certain mascot marks,9 a list of the scheduled public
appearances of the mascot Scoop from 2012-2016,10 a Wikipedia entry on the “foot”
unit of measure,11 multiple other photographs or other depictions of, or references to,
the mascot, including photographs at appearances at stores or events,12 a video of an
appearance by the mascot,13 and point-of-sale displays, including displays of other
characters and what Applicant described in its main appeal brief as a “live sampling

5 March 11, 2016 Office Action at TSDR 1.
6 Id. at TSDR 17-28 (MERRIAM-WEBSTER DICTIONARY).
7 Id. at TSDR 29-36.
8 August 4, 2016 Response to Office Action at TSDR 2-23, 27-31.
9 Id. at TSDR 24-26, 32-37.
10 Id. at TSDR 48-51.
11 Id. at TSDR 52-55. Applicant offered this entry to show that historically the human body
has been used as a basis for units of measurement.
12 Id. at TSDR 56-97.
13 Id. at TSDR 98.
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person.” 7 TTABVUE 17.14 Applicant also stated that “SCOOP is not the name of a
particular living individual.”15
The Examining Attorney then issued a second Office Action making final the three
grounds for refusal.16 The Examining Attorney made of record webpages regarding
the use of the word “scoop” to measure a serving portion of ice cream,17 and third-
party registrations of marks in which the exclusive right to use the words “scoop” or
“scoops,” or a pictorial equivalent, were disclaimed.18
B. Procedural History of Appeal
Applicant appealed on all three grounds of the final refusal, 1 TTABVUE, and
requested reconsideration. 4 TTABVUE. In its request, Applicant claimed that its
proposed mark had acquired distinctiveness under Section 2(f) of the Trademark Act,
15 U.S.C. § 1052(f). Id. at 7. Applicant made of record pages from a book entitled
BRAND MASCOTS,19 third-party registrations from the TESS database, and webpages,
regarding the “Burger King” and “Beanie” mascots,20 a schedule of the appearances
of the mascot Scoop from 2012-2016, and photographs taken at some of the

14 Id. at TSDR 99-117.
15 Id. at TSDR 118.
16 August 26, 2016 Final Office Action at TSDR 1.
17 Id. at TSDR 17-30.
18 Id. at TSDR 31-77.
19 4 TTABVUE 15-18.
20 Id. at 19-38.
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appearances,21 and the declaration of Rob Bell (“Bell Decl.”), a principal at Applicant’s
advertising agency, in support of Applicant’s acquired distinctiveness claim.22
The Examining Attorney denied Applicant’s request for reconsideration, 5
TTABVUE, and the appeal was resumed. 6 TTABVUE. After Applicant filed its main
brief, 7 TTABVUE (“Initial Brief”), the Examining Attorney requested suspension of
the appeal and a remand of the application to examine Applicant’s claim of acquired
distinctiveness, to issue a new refusal, and to supplement the record. 9 TTABVUE 1-
2. The Board suspended the appeal and remanded the application. 10 TTABVUE 1-
2.
Following remand, the Examining Attorney issued a new non-final Office Action
in which she continued the likelihood of confusion, mere descriptiveness, and
specimen refusals, and issued new refusals that SCOOP failed to function as a
trademark and that Applicant’s showing of acquired distinctiveness was
insufficient.23 In connection with the new ground of failure to function, the Examining
Attorney made of record webpages that she asserted showed that the term “scoop”
was widely used in connection with ice cream to refer to a unit of measurement for
the goods, which indicated to the Examining Attorney that “consumers will perceive
this term merely as informational matter indicating the applicant offers a serving or
scoop of ice cream.”24 The Examining Attorney also noted that the term, as displayed

21 Id. at 39-94.
22 Id. at 130-32.
23 July 17, 2017 Office Action at TSDR 1.
24 Id.
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on the specimen, would not be perceived as indicating the source of Applicant’s ice
cream, but rather to identify Applicant’s mascot, and thus “does not show a direct
association between the applied-for mark and applicant’s identified goods.”25
Applicant responded to the new non-final Office Action by proposing to amend its
identification of goods from “frozen confections; ice cream” to “frozen confections, ice
cream, as promoted or distributed by a mascot named SCOOP, at product promotions
and distributions of Applicant’s ice cream and frozen confections,”26 and making of
record an email from a member of the public requesting Applicant’s permission to use
what the email described as “Yarnells [sic] trademark” in the phrase “Getting scoops
like Yarnell” on t-shirts for members of a high school football team.27
The Examining Attorney then issued a new final Office Action in which she
withdrew the Section 2(d) refusal, but maintained the other grounds for refusal.28
She made of record an additional dictionary definition of the word “scoop,”29 and
additional webpages regarding use of the words “scoop” and “scoops” in connection
with ice cream.30 In response to Applicant’s proposed amended identification of goods,
the Examining Attorney issued an advisory stating that an “applicant should not use
its own registered or unregistered mark in an identification of goods and/or services,”

25 Id.
26 January 12, 2018 Response to Office Action at TSDR 1.
27 Id. at TSDR 2-3.
28 February 15, 2018 Final Office Action at TSDR 1 (11 TTABVUE).
29 Id. at TSDR 2.
30 Id. at TSDR 3-16.
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and that “[i]dentifications of goods and/or services should generally be comprised of
generic everyday wording for the goods and/or services, and exclude proprietary or
potentially-proprietary wording.”31 The appeal resumed, and Applicant was granted
leave to file a supplemental brief on the new issues raised in the new final refusal. 12
TTABVUE. Applicant addressed the Section 2(f), failure-to-function, and mere
descriptiveness grounds in a supplemental brief. 13 TTABVUE 2-7 (“First
Supplemental Brief”).
Following the filing of the Examining Attorney’s brief, 15 TTABVUE, and
Applicant’s reply brief, 16 TTABVUE, the Board, acting sua sponte, remanded the
application to the Examining Attorney to consider the presence of the word
“Applicant’s” in Applicant’s amended identification of goods. 19 TTABVUE 3-5.32 On
remand, Applicant agreed to delete the word “Applicant’s” from its amended
identification of goods and further amended the identification to read “frozen
confections and ice cream promoted and distributed by a mascot named SCOOP at
product promotions and distributions of the frozen confections and ice creams.”33 The
Examining Attorney entered an Examiner’s Amendment accepting the amended

31 Id. at TSDR 1. Section 1402.09 of the TRADEMARK MANUAL OF EXAMINING PROCEDURE
(“TMEP”) (Oct. 2018) states that “[g]enerally, an applicant should not use its own registered
or unregistered mark in an identification of goods or services,” but that if an applicant chooses
to do so, “the applicant should be careful to use the mark as an adjective modifying the generic
name of the goods or services.” Applicant’s use of SCOOP in the amended identification is not
“as an adjective modifying the generic name of the goods or services,” but the Examining
Attorney’s advisory did not focus on this preferred practice.
32 Section 1402.09 of the TMEP instructs examining attorneys that “the words ‘applicant’ or
‘registrant’ must not appear in the identification of goods or services.”
33 March 6, 2019 Examiner’s Amendment at TSDR 1.
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identification, but maintaining the grounds for refusal, and the Board resumed the
appeal.34
On resumption of the appeal, Applicant was given leave to file another
supplemental brief limited to the impact, if any, of the deletion of the word
“Applicant’s” from its identification of goods, and the Examining Attorney was given
leave to file “a brief limited to responding to Applicant’s supplemental brief.” 20
TTABVUE 1-2. In response, Applicant filed a second supplemental brief stating that
“the amended goods identification, deleting the word ‘Applicant’s’, has no impact on
any of the objections raised by the Examiner, nor on any of the issues raised by
Applicant,” id. at 2, obviating the need for a response from the Examining Attorney.
Applicant noted the absence of a response from the Examining Attorney in a
subsequent and final filing, stating that the “matter is therefore fully briefed and
appears ripe for the Board’s consideration.” 22 TTABVUE 2. We will analyze the
several grounds for the final refusal based on the briefing previously submitted by
Applicant and the Examining Attorney, but in light of the ultimate amended
identification of goods.35
II. Analysis of Grounds for Refusal
A. The Significance of the Ultimate Identification of Goods
Applicant complains in its reply brief that the Examining Attorney has engaged
in what Applicant calls “goods mutilation,” 16 TTABVUE 2, because the Examining

34 Id. (20 TTABVUE 1.)
35 The prosecution history and the progress of the appeal are not models of efficiency and are
not templates that should be repeated.
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Attorney’s brief “ignores throughout that Applicant applied for registration for
‘Frozen confections, Ice cream, as promoted or distributed by a mascot,
named SCOOP, at product promotions and distribution of Applicant’s ice
cream and frozen confections,’” id. at 3,36 and “Applicant’s goods description is
not simply for ‘ice cream’ as the Examiner inexplicably overlooks.” Id. (emphasis
supplied by Applicant). Applicant argues that it “does not seek to register its mark
for all ice cream, but only ‘as promoted or distributed by a mascot, named SCOOP, at
product promotions and distributions of Applicant’s ice cream and frozen
confections,’” and that “[n]either the final refusal nor the Examiner’s Brief contend
with the actual description.” Id.
Each of the substantive refusals requires us to apply the pertinent law to the goods
identified in the application, so we will first determine the significance of the
language “promoted and distributed by a mascot named SCOOP at product
promotions and distributions of the frozen confections and ice creams” that was added
to the original goods identification “frozen confections; ice cream.” In making that
determination, we find instructive the Federal Circuit’s analysis of a similarly
unusual clause in a goods identification in In re i.am.symbolic, llc, 866 F.3d 1315, 123
USPQ2d 1744 (Fed. Cir. 2017).

36 Applicant’s reply brief was filed before the word “Applicant’s” was deleted from the
identification following the second remand. We have read all of Applicant’s briefs in light of
that amendment because, as noted above, Applicant’s position is that the deletion of the word
has no impact on the appeal.
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In i.am.symbolic, the applicant included in its identifications of various goods in
Classes 3, 9, and 14 the clause that the goods are “associated with William Adams,
professionally known as ‘will.i.am’.”37 The Board
view[ed] the language “associated with William Adams,
professionally known as ‘will.i.am’” in [Symbolic’s]
identification of goods as merely highlighting an
association with [Symbolic’s] presumed principal, Mr.
Adams. Contrary to [Symbolic’s] assertion, we do not see
the language as imposing a meaningful limitation on
[Symbolic’s] goods in any fashion, most especially with
respect to either trade channels or class of purchasers. The
language does not, in any meaningful way, alter the nature
of the goods identified; nor does it represent that the goods
will be marketed in any particular, limited way, through
any particular, limited trade channels, or to any particular
class of customers. It does not even represent that Mr.
Adams will be named, or otherwise identified, in the
promotion of the goods. The language “associated with
William Adams, professionally known as ‘will.i.am’”
is precatory language, and not binding on consumers when
they encounter Applicant’s mark.
Id. at 1746-47 (quoting In re i.am.symbolic, llc, 116 USPQ2d 1406, 1410 (TTAB
2015)). The Federal Circuit agreed with the Board’s interpretation of the purported
limitation, holding that
The Board . . . did not err in holding that the will.i.am
restriction does not: (1) limit the goods “with respect to
either trade channels or class of purchasers”; (2) “alter the
nature of the goods identified”; or (3) “represent that the
goods will be marketed in any particular, limited way,
through any particular, limited trade channels, or to any
particular class of customers.”

37 For example, the applicant’s Class 9 identification read “sunglasses and sunglass cases
associated with William Adams, professionally known as will.i.am.” 123 USPQ2d at 1746.
Serial No. 86824279
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Id. at 1750 (quoting the Board’s opinion in i.am.symbolic, 116 USPQ2d at 1410).
Although the Federal Circuit construed the identification in the context of a
likelihood of confusion refusal, the court’s analysis is useful in deciding whether the
identification here “limit[s] the goods with respect to either trade channels or class of
purchasers,” “alter[s] the nature of the goods identified,” or “represent[s] that the
goods will be marketed in any particular, limited way, through any particular, limited
trade channels, or to any particular class of customers.” Id.
The language “as promoted and distributed by a mascot named SCOOP at product
promotions and distributions of the frozen confections and ice creams” in the final
goods identification at most specifies “that the goods will be marketed in [a]
particular, limited way,” id., namely, through “product promotions and distributions”
of the goods “by a mascot named SCOOP.”38 It does not “alter the nature of the goods
identified” in any meaningful way, id., or restrict the nature or type of the “frozen
confections and ice creams” that are “promoted or distributed by a mascot named
SCOOP at product promotions and distributions.” Similarly, the identification does
not “represent that the goods will be marketed . . . to any particular class of
customers.” Id. The record shows that members of the general public who consume
ice cream and frozen confections are present at the “product promotions and

38 The record shows that these “promotions and distributions” occur in a variety of settings,
including in retail stores and restaurants, at public events such as football games, festivals,
races and triathlons, farmers markets, fishing derbies, and fairs, and at media events. August
4, 2016 Response to Office Action at TSDR 49-51, 59-78, 81-92; 4 TTABVUE 40-70, 74-93,
130-34 (February 22, 2017 Request for Reconsideration (Bell Decl. ¶¶ 6-8)).
Serial No. 86824279
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distributions” of the goods.39 We acknowledge that the additional language in the
identification specifies that SCOOP is the name of Applicant’s mascot, but Applicant
seeks registration of SCOOP for “frozen confections and ice cream,” not live
appearances by a mascot. Accordingly, notwithstanding the limitation that the goods
are marketed by a mascot named Scoop at product promotions and distributions, we
must assess the registrability of Applicant’s proposed mark for “frozen confections
and ice cream” consumed by members of the general public.
B. Mere Descriptiveness
Section 2(e)(1) of the Trademark Act prohibits registration on the Principal
Register of “a mark which, (1) when used on or in connection with the goods of the
applicant is merely descriptive . . . of them,” unless the mark has been shown to have
acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f).
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 Aktiengesellschaft, 488 F.3d
960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). “A mark need not recite each feature
of the relevant 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 quotation omitted).

39 August 4, 2016 Response to Office Action at TSDR 59-63, 65-67, 70-71, 74-75, 78, 81, 83-
85, 88, 90, 92; 4 TTABVUE 40-55, 60-67, 70, 80-84.
Serial No. 86824279
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Whether a mark is merely descriptive is “evaluated ‘in relation to the particular
goods for which registration is sought, the context in which the mark is used, and the
possible significance that the term would have to the average consumer of the goods
because of the manner of its use or intended use,’” id., (quoting Bayer, 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).
The Examining Attorney argues that SCOOP is merely descriptive of the
identified goods “because the mark conveys an immediate idea of a unit or serving of
applicant’s frozen confections and ice cream.” 15 TTABVUE 7. She argues that “a
‘scoop of ice cream’ is a commonly understood serving or unit of measurement, and
thus this wording merely describes the manner and portion size in which applicant’s
goods are served.” Id. She cites a dictionary definition of “scoop” as “a quantity taken
up by a scoop ‘an apple pie with scoops of ice cream on top’,”40 third-party uses of
“scoop” to “describe a serving size of ice cream,” including news articles using “scoop”

40 February 15, 2018 Final Office Action at TSDR 2 (OXFORD LIVING DICTIONARIES (US
English)). Another dictionary defines a “scoop” as “the amount held by a scoop