Barrie House Coffee Co., Inc.

Trademark Trial and Appeal Board

Apr 11, 2011

No. 76695202 (T.T.A.B. Apr. 11, 2011)

Mailed: April 11, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Barrie House Coffee Co., Inc.
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Serial No. 76695202
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Myron Amer for Barrie House Coffee Co., Inc.

Jaclyn Kidwell Walker, Trademark Examining Attorney, Law
Office 112 (Angela Bishop Wilson, Managing Attorney).
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Before Walters, Bucher and Wellington, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

Barrie House Coffee Co., Inc. has filed an application
to register on the Supplemental Register the standard
character mark MOCCA for “coffee product, namely, coffee
beans, and not including coffee bean-derived coffee,” in
International Class 30.1

1 Serial No. 76695202, filed January 9, 2009, based on use of the mark
in commerce, alleging first use and use in commerce as of December 22,
2008.

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
The examining attorney has issued a final refusal to
register, under Section 23(c) of the Trademark Act, 15
U.S.C. 1091(c), on the ground that the word MOCCA is generic
in connection with applicant’s goods. The examining
attorney has also based the final refusal on the grounds
that the specimen of use does not show use of MOCCA as a
trademark, and the identification of goods is indefinite.
Applicant has appealed. Both applicant and the
examining attorney have filed briefs. We will address each
of the bases for refusal in turn.
Specimen of Use
For completeness, we also address the refusals based on
the specimen of use and the identification of goods.
Considering, first, the specimen, the examining attorney
contends that “the specimen is not acceptable because it is
merely a photocopy of the drawing or a picture or rendering
of the applied-for mark and does not show the applied-for
mark in actual use in commerce on the goods or packaging for
the goods.” (Office Action, February 19, 2009.)
Applicant responds that the specimen is acceptable
because it shows the stamping produced by the rubber stamp
used to affix the mark to the packaging for the goods. The
examining attorney contends that this explanation is
insufficient because it does not show the rubber-stanped
mark affixed to the goods or packaging, which the examining
attorney contends is required to show actual use of the mark
in commerce on the goods or packaging.
Section 45 of the Trademark Act states that a mark is
deemed to be in use in commerce
(1) on goods when –

(A) it is placed in any manner on the goods or
their containers or the displays associated
therewith or on the tags or labels affixed
thereto, or if the nature of the goods makes such
placement impracticable, then on documents
associated with goods or their sale, and

(B) the goods are sold or transported in commerce.

Trademark Rule 2.56(b)(1), 37 CFR 2.56(b)(1) provides:
(b)(1) A trademark specimen is a label, tag, or
container for the goods, or a display associated
with the goods. The Office may accept another
document related to the goods or the sale of the
goods when it is not possible to place the mark on
the goods or packaging for the goods.
. . .
(c) A photocopy or other reproduction of a
specimen of the mark as actually used on or in
connection with the goods, or in the sale or
advertising of the services, is acceptable.
However, a photocopy of the drawing required by
§ 2.51 is not a proper specimen.
In In re Crucible Steel Co. of America, 150 USPQ 757
(TTAB 1966), the specimen was a tag with the mark stamped
thereon and the Board held that the stamping of a mark on a
tag or container for goods is sufficient to demonstrate use
of the mark in commerce. Section 904.03(b) of the Trademark
Manual of Examining Procedure (TMEP) recognizes the holding
of this case; expressly permits stamping of the mark by
rubber stamp or inking the mark using a stencil of template;
and states, in reference to the situation herein, “[w]hen
the specimen consists of a stamp on paper, the applicant
must explain the nature of the specimen and how it is used.”
Applicant has clearly stated that its specimen is the
stamping of the mark on a piece of paper using the rubber
stamp that is used to affix the mark to the packaging for
the coffee beans. Moreover, applicant has submitted the
declaration of its Chief Operating Officer attesting to this
fact. (Response March 9, 2009.)
The examining attorney has not made a case for the
additional requirement of a photo or other copy of the
actual packaging with the mark stamped thereon. In an
analogous situation, the USPTO accepts labels and tags that
applicant states are affixed to goods without requiring a
photo or other copy of the product with the mark so affixed.
The examining attorney is not in a position to doubt the
veracity of applicant’s statement as to the nature and use
Serial No. 76695202
5
of its specimen and mark – such issues, if they exist, are
more appropriately exposed in inter partes challenges to the
validity of a registration.
Therefore, the refusal based on the requirement for
acceptable substitute specimens is reversed.
Identification of Goods
The goods are identified in the application as “coffee
product, namely, coffee beans and not including coffee bean-
derived coffee.” The Examining Attorney has required
applicant to delete the phrase “and not including coffee
bean-derived coffee” from its identification of goods,
stating that the phrase is unclear because it “can be read
to imply that no goods are being provided.” (Office Action
of February 19, 2009.)
The application is based on applicant’s assertion of
use the mark in commerce on the identified goods. Section
1(a)(2) of the Trademark Act, 15 U.S.C. §1051(a)(2),
requires that the written application specify the goods or
services on or in connection with which applicant uses the
mark. Trademark Rule 2.32(a)(6) requires, in relevant part,
that a trademark application must set forth “the particular
goods” with which the mark is used or is intended to be
used.
Further, the identification of goods or services must
be specific and definite. See TMEP §§805 and 1402.01-
Serial No. 76695202
6
1402.01(a) (7th ed. 2010). It is within the discretion of
the United States Patent and Trademark Office (USPTO) to
require that the goods or services be specified with
particularity. See In re Societe Generale des Eaux
Minerales de Vittel S.A., 1 USPQ2d 1296, 1298 (TTAB 1986),
and cases cited therein, rev’d on other grounds, 824 F.2d
957, 3 USPQ2d 1450 (Fed. Cir. 1998). As stated in TMEP
§1402.01 (7th ed. 2010): “To ‘specify’ means to name in an
explicit manner. The identification should set forth common
names, using terminology that is generally understood. ...
The identification of goods or services must be specific,
definite, clear, accurate and concise. ...”
The USPTO’s Trademark Acceptable Identification of
Goods and Services Manual (“Identification Manual”)
indicates that “coffee beans” is an acceptable
identification of goods. “Coffee products” alone is
indefinite and an unnecessary addition to applicant’s
identification; however, since “coffee products” is clearly
limited by “namely, coffee beans,” that portion of the
identification is acceptable and is not challenged by the
examining attorney. Regardless of whether we consider the
additional phrase “and not including coffee bean-derived
coffee” to modify “coffee beans” or “coffee product,” the
phrase is non-sensical and vague in the context of the
identification of goods. The identification includes only
Serial No. 76695202
7
“coffee beans” so it is illogical to exclude coffee from
that identification. Neither “coffee” (i.e., the drink
derived from coffee beans) nor “coffee substitutes” (i.e., a
drink that is not derived from coffee beans) is encompassed
within “coffee beans.” While we do not necessarily agree
with the examining attorney that the noted phrase has the
connotation she suggests,2 we do agree that the addition of
the phrase “and not including coffee bean-derived coffee” to
the identification of goods renders the identification of
goods as a whole so vague as to be unacceptable.
Therefore, the examining attorney’s requirement for a
more definite identification of goods is proper and well
taken because the language proposed by applicant does not
clearly and with the necessary specificity identify
applicant’s goods. See In re Citibank, N.A., 225 USPQ 612
(TTAB 1985).
Genericness
We start by noting that the examining attorney has also
made an alternative refusal on the ground that the mark is
merely descriptive under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. 1052(e)(1). This refusal, while appropriate
in an application on the Principal Register, became moot
when applicant amended its application to seek registration

2 “Based on the nature of coffee all coffee originally derives from a
coffee bean unless otherwise specifically noted that it is some coffee-
Serial No. 76695202
8
on the Supplemental Register. Such an amendment is,
essentially, an admission that its mark is not inherently
distinctive.
The evidence of genericness submitted by the examining
attorney consists of definitions from four dictionaries of
the term “mocha” as “a rich pungent Arabian coffee”3; and
excerpts from three websites describing the mocha coffee
bean. The following are representative samples:
www.chestofbooks.com:
Among the coffees largely sold upon the American
market are those which go by the name of "Mocha."
Because of the commercial value of the true Mocha
bean, it becomes necessary to indicate the
restrictions which must be placed upon the coffees
put upon the market and sold under the name of
"Mocha." This matter has been fully investigated
and valuable information obtained through the
Department of State and from the consul and
consular agent in those districts where the true
Mocha coffee is grown and whence it is shipped to
America and other parts of the world.

www.coffeeserviceplus.com:
What is Mocha Coffee? True Mocha coffee is
produced in the Yemeni port city of Mocha. … Mocha
was the first type of coffee enjoyed by Europeans.
… Mocha coffee beans are rare and difficult to
obtain. … This is evident in the fact that Mocha
coffee is distinguished for its heavy body and
unique flavors that are absent from the nearby
Ethiopian coffee.

www.ringsurf.com/online/2106-mocha.html:
While Mocha is a type of coffee bean that
originates from the Yemeni port that has the

like substitute.” Trademark Examining Attorney’s brief at unnumbered
14.
3 The American Heritage Dictionary (4th ed 2000). The term is similarly
defined in the excerpts of record from Merriam-Webster Dictionary
(2009), Dictionary of Food: International Food and Cooking Terms from A
to Z (2009), and The Penguin English Dictionary (2000).
Serial No. 76695202
9
distinction of being the type of coffee bean that
made Europe pay attention to the smooth taste of
coffee, the Mocha drink purchased in sophisticated
coffee shops are completely different from this.
While Mocha coffee beans may be used in making a
Mocha drink, a Mocha drink is one that is made
with coffee and cocoa.

“The critical issue in genericness cases is whether
members of the relevant public primarily use or understand
the term sought to be protected to refer to the genus of
goods or services in question.” H. Marvin Ginn Corp. v.
Int’l Association of Fire Chiefs, Inc., 782 F.2d 987, 228
USPQ 528, 530 (Fed. Cir. 1986).
Determining whether a mark is generic therefore
involves a two-step inquiry: First, what is the genus
of goods or services at issue? Second, is the term
sought to be registered or retained on the register
understood by the relevant public primarily to refer to
that genus of goods or services?

Id. See also In re Steelbuilding.com, 415 F.3d 1293,
75 USPQ2d 1420, 1421 (Fed. Cir. 2005); and In re Dial-A-
Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807
(Fed. Cir. 2001).
The examining attorney has the burden of establishing
by clear evidence that a mark is generic and thus
unregistrable. “Evidence of the public's understanding of
the term may be obtained from any competent source, such as
purchaser testimony, consumer surveys, listings in
dictionaries, trade journals, newspapers, and other
publications.” In re Merrill Lynch, Fenner and Smith Inc.,
Serial No. 76695202
10
828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987). See
also In re American Fertility Society, 188 F.3d 1341, 51
USPQ2d 1832 (Fed. Cir. 1999); and Magic Wand Inc. v. RDB
Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991). “Doubt
on the issue of genericness is resolved in favor of the
applicant.” In re DNI Holdings Ltd., 77 USPQ2d 1435, 1437
(TTAB 2005).
The examining attorney contends MOCCA is only a slight
misspelling of the word “mocha,” which is a type of coffee
bean; that the misspelling does not create a unique
commercial impression or play on words; that the connotation
and pronunciation of MOCCA is likely to be identical to that
of “mocha”; and that MOCCA and “mocha” are equally generic
terms in connection with the identified goods.
Applicant contends that the genus of goods is “a coffee
beverage derived from coffee beans” and, therefore, since
applicant has excluded coffee-bean derived coffee, its goods
are not within this genus; and that the evidence is
inapposite due to the different spelling of its mark.
As discussed in connection with the acceptability of
the identification of goods herein, “coffee product, namely,
coffee beans” is definite and acceptable; whereas, the
addition of the phrase “and not including coffee bean-
derived coffee” renders the identification as a whole non-
sensical. Therefore, in conducting our analysis of the
Serial No. 76695202
11
issue of genericness, we have focused on the definite
portion of the identification of goods, i.e., applicant’s
goods are coffee beans.
The examining attorney has clearly established that
“mocha” is a type of coffee bean. Considering the
identification of goods in the context of the first part of
the Marvin Ginn test for genericness, there is no question
that the genus or class of goods involved herein is coffee
beans.
We turn now to the second part of the Marvin Ginn test,
i.e., does the relevant public understand the word MOCCA to
refer primarily to this genus of goods. There is no
question that the relevant public for coffee beans is the
general public, which encompasses all levels of purchasing
care and sophistication.
We take judicial notice of the additional dictionary
definition of “mocha” from the Random House Dictionary
(2011):
[moh-kuh]
1. Also, Mukha, a seaport in the Republic of
Yemen on the Red Sea. 25,000.
2. A choice variety of coffee, originally grown
in Arabia.
3. A flavoring obtained from a coffee infusion or
a combined infusion of chocolate and coffee.

While “mocha” may also describe a coffee drink that
blends coffee and chocolate flavor, within the genus of
coffee beans, the evidence clearly establishes that
Serial No. 76695202
12
purchasers will understand the word “mocha” as identifying a
type of coffee bean and, thus, that “mocha” is a generic
term in connection with coffee beans.
However, the question remains whether MOCCA is also a
generic term in connection with coffee beans, i.e., whether
the misspelling renders it capable of functioning as a
source-indentifier.
The words MOCCA and “mocha” differ by only one letter
in the middle/latter part of each word. The accepted
pronunciation of “mocha,” noted in the Random House
Dictionary excerpt, is with the “ch” having a soft “k”
sound. MOCCA is likely to have the same pronunciation as
“mocha,” regardless of whether it is the accepted
pronunciation or another pronunciation. There is no
evidence that MOCCA would be understood as having a
different connotation from “mocha.”
We conclude that the misspelling of the generic term
“mocha” as MOCCA is immaterial; that among members of the
relevant public who even notice the misspelling, MOCCA will
be understood as naming the “mocha” coffee bean; and that,
thus, under the two-part Marvin Ginn analysis, MOCCA is a
generic term in connection with coffee beans, as identified
in the application, because nothing is left for speculation
or conjecture. See In re Carlson, 91 USPQ2d 1198 (TTAB
2009) (URBANHOUZING would be perceived by consumers as the
Serial No. 76695202
13
equivalent of merely descriptive URBAN HOUSING); In re Ginc
UK Ltd., 90 USPQ2d 1472 (TTAB 2007) (generic meaning of
“togs” not overcome by the misspelling of the term as
TOGGS); and In re Hubbard Milling Co., 6 USPQ2d 1239 (TTAB
1987) (MINERAL-LYX held generic for mineral licks for
feeding livestock).
Decision: The refusal is affirmed based on the grounds
that the mark is generic in connection with the identified
goods, under Section 23(c) of the Act; and that the
identification of goods is unacceptable because it is
indefinite. The refusal is reversed based on the ground
that the specimen of record is unacceptable to show use of
the mark on any goods, under Sections 1 and 45 of the
Trademark Act, 15 U.S.C §§1051, 1127. Because two of the
three grounds for registration have been affirmed,
registration to applicant is refused.