Donsuemor, Inc.

Trademark Trial and Appeal Board

Jun 7, 2007

No. 78393418 (T.T.A.B. Jun. 7, 2007)

Pa

Mailed:
June 7, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Donsuemor, Inc.
________

Serial No. 78393418
_______

H. Michael Brucker of Law Office of H. Michael Brucker for
Donsuemor, Inc.

Susan Billheimer, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).1
_______

Before Seeherman, Holtzman and Cataldo, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Donsuemor, Inc. (applicant) initially applied to
register THE MADELEINE COOKIE COMPANY on the Principal
Register for “bakery goods, namely madeleines.”2 After the

1 Responsibility for this application was assigned to the
present Examining Attorney at the time the appeal brief had to be
written. A different Examining Attorney examined the
application.
2 Application Serial No. 78393418, filed March 30, 2004,
pursuant to Section 1(b) of the Trademark Act (intent-to-use).

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78393418
2
Examining Attorney issued a final refusal of registration
on the Principal Register pursuant to Section 2(e)(1) of
the Trademark Act, on the basis that the mark is merely
descriptive of the identified goods, applicant, on March 9,
2005, filed an amendment of its application to the
Supplemental Register, and also submitted an amendment to
allege use, asserting first use and first use in commerce
on August 9, 2004. The Examining Attorney thereupon
refused registration on the Supplemental Register on the
basis that the proposed mark is generic. In that action,
the Examining Attorney stated that THE MADELEINE COOKIE
COMPANY is “generic for a kind of cookie produced by a
company and thus incapable of distinguishing the
applicant’s goods.” She also stated that “the mark
immediately informs consumers that the goods are madeleine
cookies produced by a company,” and cited In re Paint
Products Co., 8 USPQ2d 1863 (TTAB 1988), stating that
decision held that PAINT PRODUCTS CO. was “so highly
descriptive as to be incapable of becoming distinctive;
even assuming the term could function as a mark,
applicant’s evidence deemed insufficient to establish
acquired distinctiveness.” After applicant responded to
this Office action, the Examining Attorney issued a final
refusal, again stating that the proposed mark is:
Ser No. 78393418
3
generic for a kind of cookie produced
by a company and thus incapable of
distinguishing the applicant’s goods.
The mark THE MADELEINE COOKIE COMPANY
names the applicant’s “bakery goods,
namely madeleines.” The mark
immediately informs consumers that the
goods are madeleine cookies produced by
a cookie company.

It is from the refusal of registration on the
Supplemental Register that applicant has filed the instant
appeal. The appeal has been fully briefed.
As a preliminary matter, we note that the Examining
Attorney has objected to the recital in applicant’s appeal
brief of a list of third-party registrations. The
Examining Attorney notes that these registrations were
untimely, since they were not made of record during the
prosecution of the application and that, in any event, a
mere listing of registrations is not sufficient to make
them of record. With its reply brief applicant submitted
copies of the registrations taken from the USPTO’s records,
and has requested that the Board take judicial notice of
them.
Trademark Rule 2.142(d) provides that the record in
the application should be complete prior to the filing of
an appeal. Thus, the listing of the registrations in
applicant’s appeal brief, or the submission of copies of
those registrations with its reply brief, is manifestly
Ser No. 78393418
4
untimely, and the registrations cannot be treated as of
record. With respect to applicant’s request that the Board
take judicial notice of the registrations, it is well-
established that the Board does not take judicial notice of
registrations that reside in the Patent and Trademark
Office. See In re Duofold Inc., 184 USPQ 638 (TTAB 1974).
Accordingly, we have not considered the third-party
registrations.3
The Examining Attorney has submitted with her brief
dictionary definitions of “the” and “company,” and has
requested that we take judicial notice of them. Because
dictionary definitions are subject matter of which the
Board takes judicial notice, see University of Notre Dame
du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ
594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983), we grant this request.

3 Even if we had considered the registrations, they would not
change the result herein. The third-party registrations are for
marks which are not analogous to the mark herein. For example,
Registration No. 1452689 is for THE FLOOR STORE for retail store
services in the field of floor coverings. The fact that FLOOR
and STORE rhymes gives the mark an effect that is more than
simply the meaning of the words. Similarly, the term SUPPLY ROOM
in Registration No. 3078956 for THE SUPPLY ROOM COMPANIES for
retail store services featuring various office supplies is not
the generic term for office supplies, but only identifies where
such supplies may be stored. We will not burden this opinion
with a discussion of the other registrations, since they are not
of record, but we consider them to be distinguishable as well.
Ser No. 78393418
5
This brings us to the substantive ground for refusal,
namely that THE MADELEINE COOKIE COMPANY is not registrable
on the Supplemental Register. Section 23 of the Trademark
Act, 15 U.S.C. §1091, provides, in part, that a mark may be
registered on the Supplemental Register if it is “capable
of distinguishing the applicant’s goods or services.” The
question we must decide, then, is whether applicant’s mark
has this capability.
If a mark is generic, it is not capable of
distinguishing the applicant’s goods. In determining
genericness, we look to the two-part test set out in H.
Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782
F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986): “First,
what is the genus of goods or services at issue? Second,
is the term sought to be registered … understood by the
relevant public primarily to refer to that genus of goods
or services?” Such sources as purchaser testimony,
consumer surveys, dictionary definitions, trade journals,
newspapers, and other publications may be used to show the
relevant public’s understanding of a term. In re Merrill
Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 1570, 4
USPQ2d 1141 (Fed. Cir. 1987).
Applicant has identified its goods as “bakery goods,
namely madeleines.” Thus, madeleines, or madeleine
Ser No. 78393418
6
cookies, are the genus of goods. Moreover, there is no
real question that the term MADELEINE COOKIE is generic for
applicant’s goods, and that consumers would perceive
MADELEINE COOKIE as referring to the genus of goods.
Applicant concedes that MADELEINE is an “admittedly generic
term.” Brief, p. 5. Applicant implicitly also
acknowledges that MADELEINE COOKIE is generic: “even if the
phrase ‘MADELEINE COOKIE’ is viewed as a generic term”
id.; “It is self evident that ‘madeleine cookies’ and THE
MADELEINE COOKIE COMPANY do not have identical meanings and
one is not the generic term for the other.” Reply brief,
p. 2. In any event, the evidence of record clearly
demonstrates the generic nature of the individual words and
the phrase. The Examining Attorney has submitted
dictionary definitions showing that “madeleine” means “a
small, rich cake, baked in a shell-shaped mold” and
“cookie” means “a small, usually flat and crisp cake made
from sweetened dough.”4 She has also submitted excerpts of
articles from the Nexis database, and web pages, that
reference “madeleine cookies,” including the following:
Recipe in Kitchen Emporium.com for
“Madeleine Cookies,”
www.kitchenemporium.com;

4 The definitions are taken from The American Heritage
Dictionary of the English Language, 3d ed. © 1992.
Ser No. 78393418
7
Listing in La Belle Cuisine for
“Madeleine Cookie Mold,”
www.cooksite.com, which refers to
madeleines as “French tea cookies”;

Near the beginning of the masterpiece
In Search of Lost Time, Proust’s
narrator dunks a madeleine cookie into
a cup of tea….
“The Dallas Morning News,” August 2,
2004

…the shape of the madeleine cookie,
taken from a shell that pilgrims wore
on their hats.
“Chicago Tribune,” March 14, 2004

The dispute arises over whether the additional words
in the mark, THE and COMPANY, affect the generic meaning of
MADELEINE COOKIE so that, according to applicant, the
phrase THE MADELEINE COOKIE COMPANY is not a generic term
for cookies; or whether, according to the Examining
Attorney, these words have no source-indicating value, such
that the addition of incapable material to a generic term
does not create a registrable mark. In this connection,
the Examining Attorney has made of record excerpts of
articles from the Nexis database that show “cookie company”
is used to designate an entity that makes or sells cookies.
See, for example:
The Stampers cookies, which started
selling on the Internet in May, are
part of the Cookie Club of America
Inc., a San Diego cookie company.
“The Washington Times,” November 6,
2004
Ser No. 78393418
8

…G.E.T. Cookies, a Colorado-based
cookie company….
“Billings (Montana) Gazette,” June 25,
2004

The Rubins are also the owners of
Claudia’s Kitchen, a gourmet cookie
company that sells to the specialty
food industry.
“Dairy Foods,” March 1, 2004

He launched Famous Amos, which has
become one of the world’s premier
cookie companies.
“Northwest Florida Daily News,”
February 26, 2004

In In re G. D. Searle & Co., 143 USPQ 220 (TTAB 1964),
aff’d. 360 F.2d 650, 149 USPQ 619 (CCPA 1966), the Board
considered the effect of the addition of the definite
article THE on the registrability of a word that is
otherwise a common descriptive term for the goods. In that
case, the applicant attempted to register “the pill” for
“pharmaceutical preparations in tablet form containing
norethynodrel.” The Board stated, at 143 USPQ 222-23:
If we were to give any weight to
applicant's arguments concerning the
“unique” effect created by the
utilization of the article “THE” in
association with the mark “PILL” and by
the use of quotation marks around the
unitary phrase, it would seem to follow
that an automobile manufacturer could
register the designation “THE
AUTOMOBILE” or an appliance
manufacturer the phrase “THE
REFRIGERATOR”. Manifestly, the
utilization of the article “the” and of
Ser No. 78393418
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quotation marks cannot convert a simple
notation comprising ordinary words of
the English language used in their
ordinary sense into a registrable
trademark.

See also In re The Computer Store, Inc., 211 USPQ 72 (TTAB
1981), in which the Board held that THE COMPUTER STORE is
the common descriptive name of the “computers and computer
book outlet services” offered by applicant, and therefore
cannot distinguish such services as those of any single
proprietor. The Board specifically discussed whether use
of the definite article, “The”, converted the merely
descriptive term into a registrable service mark, and also
considered an argument similar to that made by applicant
herein, namely, that “the article ‘THE’ lends the phrase
the connotation of uniqueness (The one), while the word
‘COMPANY’ lends the concept of a business entity,” so that,
“taken together, the words of the mark elicit in the minds
of consumers a preeminent business entity for baked goods
in the form of madeleines.” Brief, p. 5. The Board was
not persuaded by such arguments in The Computer Store, and
found that the word THE simply limited the noun STORE to
the application specified by the adjective COMPUTER. In
the present case, the analogy is that THE simply limits the
word COMPANY to a specific type of company, namely, one
which sells madeleine cookies.
Ser No. 78393418
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With respect to the inclusion of the word COMPANY in
applicant’s mark, it has long been held that the addition
of an entity designator, such as COMPANY, will not make an
unregistrable term registrable. As far back as 1888, the
Supreme Court, in Goodyear’s India Rubber Glove Mfg. Co. v.
Goodyear Rubber Co., 128 U.S. 598, 602-03 (1888), held:
[P]arties united to produce or sell
wine, or to raise cotton or grain,
might style themselves Wine Company,
Cotton Company, or Grain Company; but
by such description they would in no
respect impair the equal right of
others engaged in similar business to
use similar designations, for the
obvious reason that all persons have a
right to deal in such articles, and to
publish that fact to the world. Names
of such articles cannot be adopted as
trade-marks, and be thereby
appropriated to the exclusive right of
any one; nor will the incorporation of
a company in the name of an article of
commerce, without other specification,
create any exclusive right to use of
the name.5

This same principle has been reiterated in subsequent
cases. In In re E. I. Kane, Inc., 221 USPQ 1203 (TTAB
1984), in which the applicant sought to register OFFICE
MOVERS, INC. for moving services, including the moving of
office facilities, the Board found that the addition of the

5 In In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420
(Fed. Cir. 2005), the Court acknowledged this language of the
Supreme Court, although it distinguished it from the situation
where a top level domain name (TLD), as opposed to the word
COMPANY, appears in the mark.
Ser No. 78393418
11
term INC. to OFFICE MOVERS did not add any trademark
significance:
Office movers move offices. Any
dictionary can tell us this much. The
addition of the term “INC.” does not
add any trademark significance to the
matter sought to be registered. The
complete term “OFFICE MOVERS, INC.” is
so highly descriptive that it is
incapable of distinguishing applicant's
services.6

The case that is perhaps most similar to the present
situation is In re Paint Products Co., supra, in which
applicant sought registration on the Principal Register,
under the provisions of Section 2(f), for “PAINT PRODUCTS
CO.” for “interior and exterior paints and coatings,
namely, alkyd, oil, latex, urethane and epoxy based paints
and coatings.” Registration was refused on the basis that
“applicant's mark is so highly descriptive of the goods to
which it is applied that it cannot function to identify and

6 At the time this decision issued the Board generally used the
phrase “so highly descriptive” for refusals of registration on
the Principal Register for proposed marks that were generic or
were not capable of functioning as a trademark. It was not until
1992, in In re Women's Publishing Co. Inc., 23 USPQ2d 1876 (TTAB
1992), that the Board made clear that the phrase “so highly
descriptive that it is incapable of acting as a trademark” should
not be used, and that, where an applicant seeks registration on
the Principal Register, the Examining Attorney may refuse
registration under Section 2(e)(1) of the Act on the basis that
the mark sought to be registered is generic. When registration
is sought on the Supplemental Register, of course, the standard
is whether the proposed mark is “capable” of distinguishing
applicant’s goods or services from those of others.

Ser No. 78393418
12
distinguish applicant's products from the like products of
others.”7 Although registration was sought on the Principal
Register, the language of the refusal, that the mark cannot
function to distinguish applicant’s products from those of
others, mirrors the language of a refusal on the
Supplemental Register. The Board recognized, 8 USPQ at
1865, that:
when confronted with marks consisting
of generic or highly descriptive terms
coupled with entity designations such
as “Inc.”, the Board has found the
resulting designations incapable of
functioning as service marks. In re
Industrial Relations Counselors, Inc.,
224 USPQ 309 (TTAB 1984) [INDUSTRIAL
RELATIONS COUNSELORS, INC. held so
highly descriptive of “educational
services, namely, conducting seminars
and research in the field of industrial
relations” as to be incapable of
exclusive appropriation and
registration as a service mark]; In re
E.I. Kane, Inc., 221 USPQ 1203 (TTAB
1984) [OFFICE MOVERS, INC. for “moving
services, namely the moving of office
facilities, warehouse facilities,
industrial plant facilities (etc.)”
held so highly descriptive as to be
incapable of distinguishing applicant's
services in commerce].”

The Board also agreed with the Examining Attorney’s
contention that “the abbreviation ‘CO.’, standing for the

7 As noted in footnote 6, this language for refusals was used
prior to 1992. The decision makes clear that the issue of
whether PAINT PRODUCTS CO. is generic was not before the Board.

Ser No. 78393418
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word ‘COMPANY’, when added to the words ‘PAINT PRODUCTS’,
does not serve to create a mark which can serve to identify
and distinguish the source of applicant's paints and
coatings any more than it could serve to identify and
distinguish retail paint store services, because ‘PAINT
PRODUCTS CO’ is ‘clearly applicable to any company which
sells or produces paint products.’” Id. The Board found
that the evidence of record in that case, combined with the
obvious significance of the abbreviation “Co.”, was
sufficient to establish that purchasers encountering the
words “PAINT PRODUCTS CO.” on the goods for which
registration was sought would view those words not as a
trademark, but in their ordinary dictionary sense: a
company that sells paint products. The Board also stated
that, because the phrase describes the goods of any company
selling such products, it should remain available for
applicant's competitors, citing In re Phone Co., Inc., 218
USPQ 1027 (TTAB 1983) [highly descriptive term “THE PHONE
COMPANY” “would ... equally describe [telephone] equipment
emanating from one of applicant's competitors.”].
The Board further held, 8 USPQ2d at 1866, that:
“PAINT PRODUCTS CO.” is no more
registrable for goods emanating from a
company that sells paint products than
it would be as a service mark for the
retail paint store services offered by
Ser No. 78393418
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such a company. Cf. In re Wickerware,
227 USPQ 970 (TTAB 1985) [mark
“WICKERWARE” held not capable of
functioning as a service mark for mail
order distributorship services in the
field of wicker products, the Board
finding “WICKERWARE” is as incapable of
distinguishing the services of selling
wicker as of distinguishing goods made
of wicker]; In re Bonni Keller
Collections, Ltd., 6 USPQ2d 1224 (TTAB
1987) [mark “LA LINGERIE” (French
equivalent of English “lingerie”) held
incapable of functioning as either a
trademark for undergarments or a
service mark for retail clothing store
services]; In re Half Price Books,
Records, Magazines, Inc., 225 USPQ 219
(TTAB 1984) [mark “HALF PRICE BOOKS
RECORDS MAGAZINES” held apt descriptive
term for retail store services
featuring the sale of goods at half
price and less]. We distinguish the
present case from In re Failure
Analysis Associates, supra,8
in that the word “ASSOCIATES” was not
shown there to be a common entity
designation such as the designation
“Co.” in the mark now before us.

Applicant argues that the Paint Products case is
distinguishable from the present situation, asserting that
the Board, because of the concluding language in that
opinion, leaves “the door open to providing evidence of
distinctiveness” and “necessarily qualifies the mark for

8 1 USPQ2d 1144 (TTAB 1986); FAILURE ANALYSIS ASSOCIATES held
registrable for “consulting services in the field of mechanical,
structural, metallurgical, and metal failures, fires and
explosions; engineering services in the field of mechanical
design and risk analysis” and “consulting engineering services in
the metallurgical field.”

Ser No. 78393418
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registration on the Supplemental Register.” Brief, pp. 8-
9. We disagree. The concluding language to which
applicant refers is as follows:
Even had we found applicant's mark not
so highly descriptive that it cannot
function as a trademark, we would
nonetheless affirm the refusal to
register on the ground that the
evidence submitted in support of the
Section 2(f) claim is insufficient to
convince us that such a highly
descriptive term has become distinctive
through use in commerce. While there
has been use of the term on applicant's
products since 1957 and not
insubstantial sales and advertising of
goods bearing the words “PAINT PRODUCTS
CO.,” such use alone does not convince
us that ordinary purchasers of
applicant's goods have come to view
“PAINT PRODUCTS CO.” as a trademark.
The affidavit evidence from ten of
applicant's customers, while certainly
evidence tending to show acquired
distinctiveness as a trademark, must be
weighed against the highly descriptive
nature of the words that compose the
mark. To put the matter simply, that
ten of applicant's customers through
many years of doing business with
applicant, have come to recognize
applicant's trade name “PAINT PRODUCTS
CO.” as a trademark for paints and
coatings is less persuasive evidence on
the issue of distinctiveness than is
the inherently descriptive nature of
applicant's mark. Assuming “PAINT
PRODUCTS CO.” could function as a
trademark, a good deal more evidence
than that offered here would be
necessary to establish the
distinctiveness of such a term.

Ser No. 78393418
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It is clear from the language preceding this paragraph
(e.g., purchasers encountering the words PAINT PRODUCTS CO.
on the goods for which registration is sought would view
those words not as a trademark; the phrase should remain
available for applicant's competitors; PAINT PRODUCTS CO.
is no more registrable for goods emanating from a company
that sells paint products than it would be as a service
mark for the retail paint store services offered by such a
company) that the Board considered PAINT PRODUCTS CO. as
not capable of distinguishing the applicant’s goods from
those of others. Rather, the final paragraph was included
in order to render a complete opinion that considered both
the issues that were before the Board. But the fact that
the Board addressed this secondary issue in no way suggests
that the Board believed that PAINT PRODUCTS CO. was capable
of functioning as a trademark, and could be registrable
upon the submission of additional evidence.9

9 Applicant makes a similar argument with respect to The
Computer Store case, asserting that the last line of the opinion
“implicitly qualifies the mark for registration on the
Supplemental Register.” Brief, p. 7. We are not persuaded by
applicant’s argument. The Board clearly stated, at 211 USPQ 75,
that “the phrase ‘THE COMPUTER STORE’ is the common descriptive
name of the services offered by applicant, wherefore it cannot
distinguish such services as those of any single proprietor.”
The following, and last line of the opinion, is “We further
decide that even could this phrase be capable of functioning as a
mark, the record here is clearly insufficient to show that it has
become distinctive as to applicant's services.” We view this
sentence, on which applicant relies, as reiterating the Board’s
Ser No. 78393418
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Applying the principles set out in the case law to the
record in the present application, we find that the
evidence shows that “madeleine” and “madeleine cookie” are
generic terms for that type of cookie. We further find
that “cookie company” is a commonly used phrase to refer to
a company that makes cookies, and that, as in the PAINT
PRODUCTS CO. case, the phrase should remain available to
applicant’s competitors. Moreover, as the Supreme Court
has held, one cannot obtain the right to the use of the
name of an article simply by including the word “company”
with that name. Finally, the inclusion of the word THE, as
discussed in the G.D. Searle and The Computer Store
opinions, does not add any source-identifying significance.
Thus, the additional words THE and COMPANY in
applicant’s mark do not serve to remove the generic
significance of MADELEINE COOKIE. The mark as a whole is
without source-identifying significance and is therefore
incapable of distinguishing applicant’s goods.
We note that applicant and the Examining Attorney have
disputed whether the issue of genericness should be
analyzed according to In re American Fertility Society, 188

view that the proposed mark is incapable, but, as in Paint
Products, the Board has also addressed the issue of acquired
distinctiveness in order to render a complete opinion.

Ser No. 78393418
18
F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999) or In re Gould
Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987).
However, the real question here is whether the addition of
the words THE and COMPANY, which have no source-indicating
significance, to clearly generic terms, results in a term
that has the capability of distinguishing applicant’s goods
from those of others. As we have said, it does not.
Decision: The refusal of registration is affirmed.