China Grill, Inc.

Trademark Trial and Appeal Board

Aug 4, 1999

EX (T.T.A.B. Aug. 4, 1999)

Hearing: Paper No. 22
August 11, 1998 BAC
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________
In re China Grill, Inc.
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Serial No. 74/725,766
Serial No. 74/725,767
Serial No. 75/015,078
_______
David Friedland of Lott & Friedland, P.A. for China Grill,
Inc.
Karen Kuhlke, Trademark Examining Attorney, Law Office 105
(Thomas Howell, Managing Attorney).
_______
Before Simms, Hairston, and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Three applications were filed by China Grill, Inc. to
register three different marks, each of which includes the
words CHINA GRILL, and all three of which are for services
identified as “restaurant and cocktail lounge services.”
Application Serial No. 74/725,766 was filed on
September 6, 1995, to register the mark CHINA GRILL based
on a claimed first use date of October 1, 1987.
Ser. Nos. 74/725766, 74/725767 & 75/015078
2
Application Serial No. 74/725,767 was filed on
September 6, 1995, to register the mark shown below
based on a claimed first use date of October 1, 1987. The
application includes a statement that “the lining in the
mark is a feature of the mark and does not indicate color.”
Application Serial No. 75/015,078 was filed on
November 6, 1995, to register the mark shown below
based on applicant’s bona fide intention to use the mark in
commerce. The application includes a statement that “the
stippling in the mark is a feature of the mark and does not
indicate color.”
Registration of the word mark has been finally refused
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the basis that, when used on applicant’s
services, the applied-for mark CHINA GRILL is merely
descriptive of them.
Ser. Nos. 74/725766, 74/725767 & 75/015078
3
Registration of the two marks which include designs
has been finally refused based on applicant’s failure to
comply with a requirement to disclaim the words “China
grill” apart from the mark as shown, under Section 6 of the
Trademark Act, 15 U.S.C. §1056.1
Applicant has appealed, and briefs have been filed.
An oral hearing was held before the Board on August 11,
1998.
Applicant’s motion for consolidation was granted by
the Board on June 23, 1997. Thus, we have issued this
single opinion. We affirm the refusal to register in all
three cases.
The Examining Attorney contends that the word CHINA is
descriptive of a type of cuisine, and conveys to the
average purchaser that the restaurant serves food that has
a Chinese quality and characteristic; and that the word
GRILL is generic for a particular type of eating

1 The Board notes that in the two use-based applications (for the
marks CHINA GRILL and CHINA GRILL and design) the Examining
Attorney both initially and throughout the examination process
suggested that applicant submit a claim of acquired
distinctiveness based on five years substantially exclusive and
continuous use with regard to the word CHINA and disclaim the
word GRILL. We note the following comment by the Court of
Appeals for the Federal Circuit in the case of In re K-T Zoe
Furniture Inc., 16 F.3d 390, 29 USPQ2d 1787, 1789 (Fed, Cir.
1994): “The purpose of the disclaimer practice is to enable, not
to bar, registration. ... the practice can facilitate the
commercial purposes of the trademark law, by enabling
Ser. Nos. 74/725766, 74/725767 & 75/015078
4
establishment, a type of food served at a restaurant, the
method by which the food is prepared, and the apparatus on
which the food is prepared. Thus, the combined words CHINA
GRILL immediately describe a characteristic, feature or
quality of applicant’s restaurant services.
In support of her refusals to register, the Examining
Attorney submitted (i) several third-party registrations to
show that marks for restaurant services which include the
word “CHINA” (or other words denoting a country, e.g.,
“India,” “Mexico,” “Japan,” “France”) registered under
Section 2(f) or with a disclaimer2; (ii) copies of several
excerpted articles from Nexis to show that applicant in
fact serves Chinese food in addition to its other
offerings; (iii) several third-party registrations to show
that marks for restaurant services which include the word
“grill” registered on the Supplemental Register, but also
included a disclaimer of the generic word “grill” 3; (iv)
copies of several excerpted articles from Nexis to show

registration of a distinctive style of displaying words when the
words themselves are not registrable.”
2 Included in these third-party registrations was a copy of
applicant’s Registration No. 1,520,267, issued January 10, 1989
for the mark CHINA GRILL and the design of a shield and
chopsticks (as shown in application Serial No. 74/725,767) for
restaurant and cocktail lounge services, and in which applicant
disclaimed the terms “CHINA GRILL.” This registration was
cancelled under Section 8 in 1995.
3 See TMEP §1213.02(b).
Ser. Nos. 74/725766, 74/725767 & 75/015078
5
that the term “grill” denotes a type of restaurant; and (v)
Webster’s Third New International Dictionary definition of
“grill” as “3: a grillroom or other usu. informal
restaurant.”
Applicant, in urging reversal of the refusals to
register, argues that it serves “‘world cuisine,’ an
adventurous approach to dining that takes ingredients,
flavors and techniques from around the globe and presents
them in a characteristic climate...” (applicant’s July 3,
1996 response to an Office action, pp. 3-4); that applicant
does not serve exclusively or even primarily Chinese
cuisine; that applicant’s restaurants do not have the
appearance of Chinese restaurants as the public might
expect in the United States; and that both applicant’s own
advertisements as well as independent media coverage show
that the term “CHINA” does not describe a significant
characteristic, attribute or feature of applicant’s
services. Based thereon, applicant contends that the term
CHINA is not merely descriptive of applicant’s services.
Applicant further argues that one definition from The
American Heritage College Dictionary of the term “grill” as
a verb is “to broil on a gridiron,” and definitions as a
noun include “a cooking surface of parallel metal bars, a
gridiron” and “food cooked by broiling or grilling”; that
Ser. Nos. 74/725766, 74/725767 & 75/015078
6
none of these definitions are inclusive of or synonymous
with the word restaurant or restaurant services; and
therefore the term “grill” is not a generic term for
applicant’s restaurants.
In support of its arguments, applicant submitted (i)
copies of several articles and restaurant reviews in which
the writers refer to applicant’s “world cuisine,” and/or
make references to applicant’s positioning itself as
neither a grill nor a Chinese restaurant; (ii) the above-
mentioned dictionary definition of “grill”; and (iii) one
of applicant’s advertisements, with an accompanying
declaration of Mr. Ephraim Kadish, applicant’s executive
chef. Also, in each of the two use-based applications,
applicant submitted a videotape of two clips which appear
to be two separate television food or restaurant review
shows, both carried on the “Food Network” television
channel.
It is well settled that a term is merely descriptive
of goods or services, within the meaning of Section
2(e)(1), if it immediately conveys information concerning
an ingredient, quality, characteristic or feature thereof,
or if it directly conveys information regarding the nature,
function, purpose or use of the goods or services. See In
re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215
Ser. Nos. 74/725766, 74/725767 & 75/015078
7
(CCPA 1978). It is not necessary that a term or phrase
describe all of the properties or characteristics or
features or functions of the goods or services in order for
it to be considered merely descriptive thereof; rather, it
is sufficient if the term or phrase describes a significant
attribute or idea about them. See In re H.U.D.D.L.E., 216
USPQ 358 (TTAB 1982).
The question of whether a particular term or phrase is
merely descriptive must be determined not in the abstract,
but in relation to the goods or services for which
registration is sought, the context in which the term or
phrase is being used on or in connection with those goods
or services, and the possible significance that the term or
phrase is likely to have to the average purchaser of the
goods or services because of the manner in which it is
used. See In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB
1979). See also, In re Consolidated Cigar Co., 35 USPQ2d
1290 (TTAB 1995); In re Pennzoil Products Co., 20 USPQ2d
1753 (TTAB 1991); In re MetPath Inc., 223 USPQ 88 (TTAB
1984); and 2 J. McCarthy, McCarthy on Trademarks and Unfair
Competition, §§11:66-11:71 (1998).
The specimens of record in application Serial No.
74/725,766 (for the mark CHINA GRILL) include applicant’s
menu which lists a variety of items, many of which are
Ser. Nos. 74/725766, 74/725767 & 75/015078
8
Chinese in nature, such as, “Peking duck salad,” “Confucius
chicken salad,” “bamboo steamed vegetables,” “five
vegetable fried rice,” “sizzling whole fish,” “broccoli
rabe dumplings,” “stir fried sesame citrus noodles,” and
“duck pancakes.” In addition, in the videotape submitted
by applicant, when Mr. Kadish, applicant’s executive chef,
showed a prepared dish which he called “Confucius chicken
salad,” the host asked if some places call it “Chinese
chicken salad,” and Mr. Kadish responded “yes.”
The Examining Attorney submitted Nexis stories to show
that applicant in fact serves Chinese food, and that some
publicity so indicates. Three examples of these excerpted
stories follow:
“...Ave. is more known for its
club scene, but in a garish pseudo-
Art Deco structure there stands the
China Grill, a pricey gourmet
Chinese restaurant that has become
popular with some celebrities.
Across the street...,” appearing in
both the Chicago Tribune and The
Plain Dealer, February 23, 1997;
“In the fall, Jeffrey Chodonow,
the owner of China Grill restaurants
in Manhattan and Miami Beach, will
depart from his successful
California-Chinese formula and open
a Chinese-Latino restaurant at
Morgans, Ira Schrager’s hotel at 237
Madison Avenue. ...,” The New York
Times, January 31, 1996; and
Ser. Nos. 74/725766, 74/725767 & 75/015078
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“China Grill is an airy,
clamorous and friendly place with
soaring ceilings and marble floors
where East meets West pleasingly on
the plates...,” The New York Times,
November 3, 1996.
Thus, at least some reviews and media stories refer to
applicant’s restaurants as Chinese restaurants. Even if
the purchasing public sees those reviews and stories
emphasized by applicant, as well as applicant’s own
advertisements for its restaurants, they will not
necessarily make the distinction urged by applicant, that
is, that applicant’s restaurants feature “world cuisine,”
not Chinese or grilled food. Rather, consumers will give
the ordinary meanings to the words which comprise the name
of the restaurants, the words “CHINA” and “GRILL.” This is
especially true of patrons of applicant’s restaurants
inasmuch as applicant’s own menu features many Chinese
dishes (albeit not exclusively), and the food at
applicant’s restaurants is primarily grilled as a method of
preparation.
Even if applicant serves dishes which are a
combination of ethnic influences and ingredients, the
record is clear that there is an oriental overtone, and
that applicant’s restaurants serve Chinese cuisine and are
heavily influenced by Chinese cuisine. In order for the
Ser. Nos. 74/725766, 74/725767 & 75/015078
10
term “CHINA” to be considered merely descriptive for
restaurant services it is not necessary that applicant’s
restaurants have a traditional Chinese decor and that
applicant serve only Chinese food. Thus, while Chinese
food and decor may not be the sole emphasis at applicant’s
restaurants, nonetheless, it is clear that the Chinese
influence is not incidental to applicant’s restaurants.4 It
is a significant characteristic of applicant’s restaurants.
Regarding the question of whether the word “grill” is
generic in reference to restaurant services, the totality
of evidence establishes that it is. See H. Marvin Ginn
Corp. v. International Association of Fire Chiefs, inc.,
782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).
The Examining Attorney submitted Nexis stories wherein
various eating establishments are referred to as a “grill”
or a “bar and grill”; and the dictionary definition in the
record of the term “grill” as “a grillroom or other usu.
informal restaurant.” In addition, applicant’s menu
includes items clearly referring to grilled food, such as
“grilled dry aged Szechuan beef,” “grilled rosemary
scallops,” “grilled organic chicken,” and “grilled garlic

4 In an article submitted by applicant from the November 23, 1995
Sunpost, the writer stated, inter alia, the following: “He [chef
Kadish] takes traditional dishes and adds an oriental flavor.”
Ser. Nos. 74/725766, 74/725767 & 75/015078
11
shrimp”; and in the videotape when a television food show
host asked Mr. Kadish, applicant’s executive chef, if the
cooking at the restaurant is done on grills or woks, he
responded “primarily grills, lots of woks.”
The term “grill” designates a type of establishment
that serves food (as well as the method by which food is
prepared, and the apparatus on which food is prepared); and
that in the context of applicant’s services the term is so
understood by the relevant purchasing public. “Grill” is
generic for applicant’s restaurant and cocktail lounge
services, thus requiring a disclaimer. See In re Medical
Disposables Co., 25 USPQ2d 1801 (TTAB 1992).
We find that the words CHINA GRILL, when used in
connection with the involved services, immediately convey
the idea of restaurant services featuring at least some
grilled Chinese food. That is, these words immediately and
without conjecture or speculation describe a significant
feature or characteristic of applicant’s services. See In
re K-T Zoe Furniture Inc., 16 F.3d 390, 29 USPQ2d 1787(
Fed. Cir. 1994) (wherein the Court upheld the Board’s
holding that “the sofa and chair company” in a stylized
form is “strongly descriptive” of custom manufacturing of
furniture upholstered with fabrics furnished or pre-
selected by customers and thus unregistrable without a
Ser. Nos. 74/725766, 74/725767 & 75/015078
12
disclaimer of the words); In re Omaha National Corporation,
819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1859) (wherein the
Court affirmed the Board’s holding that the words
“FirsTier” in a word and design mark are the equivalent of
“first tier,” which is merely descriptive of banking
services and thus unregistrable without a disclaimer of the
term); and In re Pencils, 9 USPQ2d 1410 (TTAB 1988)
(wherein the Board held the word “pencils” in a word and
design mark is merely descriptive of retail stationery and
office supply services and thus unregistrable without a
disclaimer of the word).
Moreover, the words CHINA GRILL do not involve any
incongruous word combinations, and no imagination is needed
to understand the meaning of CHINA GRILL in reference to
restaurant and cocktail lounge services. See In re
Cryomedical Sciences Inc., 32 USPQ2d 1377 (TTAB 1994)
(SMARTPROBE merely descriptive of disposable cryosurgical
probes); In re Copytele Inc., 31 USPQ2d 1540 (TTAB 1994)
(SCREEN FAX PHONE merely descriptive of facsimile terminals
employing electrophoretic displays); In re Eden Foods Inc.,
24 USPQ2d 1757 (TTAB 1992) (DOUBLE CERTIFIED ORGANIC held
merely descriptive of pasta); Domino’s Pizza Inc. v. Little
Caesar Enterprises Inc. 7 USPQ2d 1359 (TTAB 1988) (SINGLE,
DOUBLE and TRIPLE merely descriptive of applicant’s pizza);
Ser. Nos. 74/725766, 74/725767 & 75/015078
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In re IBP, Inc., 228 USPQ 304 (TTAB 1985) (requirement for
a disclaimer of the merely descriptive terms “select trim”
for pork affirmed); and In re Truckwriters Inc., 219 USPQ
1227 (TTAB 1983), aff’d unpubl’d Appeal No. 84-689 (Fed.
Cir. November 1, 1984) (requirement for a disclaimer of the
merely descriptive term “writers” for insurance agency
services affirmed).
Further, even if applicant is the first (and/or only)
entity to use the term CHINA GRILL in relation to
restaurant and cocktail lounge services is not dispositive
where, as here, the term unquestionably projects a merely
descriptive connotation. See In re Tekdyne Inc., 33 USPQ2d
1949, 1953 (TTAB 1994), and cases cited therein.
Decision: The refusal to register the mark CHINA
GRILL (application Serial No. 74/725,766) under Section
2(e)(1) is affirmed.
The requirement under Section 6 for a disclaimer of
the words CHINA GRILL in application Serial Nos. 74/725,767
and 75/015,078 is affirmed. However, this decision will be
set aside for these two applications and these two word and
design marks will be published for opposition if applicant,
Ser. Nos. 74/725766, 74/725767 & 75/015078
14
no later than thirty days from the mailing date hereof,
submits an appropriate disclaimer of ‘CHINA GRILL.’ See
Trademark Rule 2.142(g).
R. L. Simms
P. T. Hairston
B. A. Chapman
Administrative Trademark Judges,
Trademark Trial and Appeal Board