Emndee, Inc.

Trademark Trial and Appeal Board

Dec 3, 1999

No. 75058039 (T.T.A.B. Dec. 3, 1999)

Paper No. 13
GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB DEC. 3, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Emndee, Inc.
________
Serial No. 75/058,039
_______
Michael A. Grayson of Herzog, Fisher, Grayson & Wolfe for Emndee,
Inc.
Susan J. Kastriner, Trademark Examining Attorney, Law Office 113
(Meryl L. Hershowitz, Managing Attorney).
_______
Before Hohein, Walters and Holtzman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
An application has been filed by Frank H. Robinson &
Company, Inc. to register the term "THE GRILL" as a service mark
for "restaurant services".1

1 Ser. No. 75/058,039, filed on February 14, 1996, which alleges dates
of first use of January 1984. Although registration was originally
sought on the Principal Register on the basis of a claim of acquired
distinctiveness pursuant to Section 2(f) of the Trademark Act, 15
U.S.C. §1052(f), in view of a refusal under Section 2(e)(1) of such
act, 15 U.S.C. §1052(e)(1) on the ground of genericness, applicant
subsequently sought amendment of the application to seek registration
on the Supplemental Register. Although the Examining Attorney has
refused to allow such an amendment, it is pointed out that applicant
is entitled to so amend its application in response to a refusal to
register on the Principal Register, and that the appropriate response,
if the Examining Attorney believes that registration on the
Supplemental Register is not permissible, is to refuse registration on
Ser. No. 75/058,039
2
Registration has been finally refused under Section 23
of the Trademark Act, 15 U.S.C. §1091, on the basis that the term
"THE GRILL" is generic and thus is not capable of distinguishing
applicant's services.2
Applicant has appealed. Briefs have been filed,3 but
an oral hearing was not requested. We affirm the refusal to
register.
It is well settled that a term must be capable of
serving as an indicator of source in order for it to be
registrable on the Supplemental Register. Whether a term has the
capacity necessary for registration on the Supplemental Register
is determined by considering the meaning thereof as applied to

such register. Accordingly, we have treated the application as having
been amended to one seeking registration on the Supplemental Register.
2 While the Examining Attorney has actually made final, as noted above,
her "refusal to allow the applicant to amend the application to the
Supplemental Register," we have construed such action as a final
refusal to register the term "THE GRILL" on the Supplemental Register
on the ground of genericness.
3 Although applicant devotes a substantial portion of its initial brief
and part of its reply brief to the contention that the evidence which
it has submitted establishes that the term "THE GRILL" has acquired
distinctiveness and that such term is therefore registrable on the
Principal Register, the only issue properly before the Board, in view
of the election to amend the application to the Supplemental Register,
is whether such term is capable of distinguishing applicant’s
services. Likewise, the Examining Attorney takes, in part, the same
erroneous approach by arguing that, aside from the issue of "whether
the applicant’s mark is generic and therefore incapable of
registration on the Supplemental Register," a second issue before the
Board, "assuming arguendo that the mark were capable, is whether the
applicant has demonstrated that the mark has acquired distinctiveness
under Section 2(f) so as to be registrable on the Principal Register."
Nevertheless, while it is pointed out that even if applicant were
presently seeking registration on the Principal Register rather than
the Supplemental Register, the issue of genericness would be the same,
in view of the confusion on the part of applicant and the Examining
Attorney we will also decide whether applicant, if it were seeking
registration on the Principal Register and the term "THE GRILL" is not
generic for restaurant services, has established that such term has
acquired distinctiveness.
Ser. No. 75/058,039
3
the goods or services, the context in which it is used on any
specimens filed with the application, and the likely reaction
thereto by the average customer upon encountering the term in the
marketplace. See In re Cosmetic Factory, Inc., 208 USPQ 443, 447
(TTAB 1980). "The test is not whether the mark is already
distinctive of the applicant’s goods [or services], but whether
it is capable of becoming so." In re Bush Brothers & Co., 884
F.2d 569, 12 USPQ2d 1058, 1059 (Fed. Cir. 1989), citing In re
Simmons Co., 278 F.2d 517, 126 USPQ 52, 53 (CCPA 1960).
Furthermore, as noted in H. Marvin Ginn Corp. v. International
Association of Fire Chiefs, Inc., 728 F.2d 987, 228 USPQ 528, 530
(Fed. Cir. 1986), a generic term is incapable of registration on
either the Principal Register or the Supplemental Register.
Moreover, in the case of a term asserted to be
incapable because it is generic, the burden is on the Patent and
Trademark Office to show the genericness of the term by "clear
evidence" thereof. In re Merrill Lynch, Pierce, Fenner & Smith,
Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987). See
also In re American Fertility Society, ___ F.3d ___, 51 USPQ2d
1832, 1835-36. As stated in American Fertility Society, id. at
1836, "[a]ptness is insufficient to prove genericness"; instead,
"the correct legal test, as set forth in Marvin Ginn, requires
evidence of ’the genus of goods or services at issue’ and the
understanding by the general public that the mark refers
primarily to ’that genus of goods or services.’" Specifically,

Ser. No. 75/058,039
4
in Marvin Ginn, supra at 530, our principal reviewing court held
that:
Determining whether a mark is generic [and
thus not capable of distinguishing an
applicant’s goods or services] ... involves a
two-step inquiry: 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?
In applying such standard, the Board, in In re Leatherman Tool
Group Inc., 32 USPQ2d 1443, 1449 (TTAB 1994), noted among other
things that "evidence of the relevant public’s understanding of a
term may be obtained from any competent source, including
newspapers, magazines, dictionaries, catalogs and other
publications," citing In re Northland Aluminum Products, Inc.,
777 F.2d 1566, 227 USPQ 961, 963 (Fed. Cir. 1985).
With respect to the first prong of the genericness
test, it is clear, and both applicant and the Examining Attorney
appear to agree, that the category or class of services at issue
is "restaurant services". Thus, the only real issue to be
determined, as both applicant and the Examining Attorney
correctly realize, is whether, under the second prong of the test
for genericness, the term "THE GRILL" is understood by the
relevant public primarily to refer to a category or class (i.e.,
a genus) of restaurant services.
Applicant, while conceding in its initial brief that
"the word ’THE’ in general is not necessarily considered to add
trademark significant [sic]" to an otherwise generic term, argues
that as shown by the various newspaper and magazine articles
Ser. No. 75/058,039
5
which it has made of record concerning the restaurant services
which it offers, "the mark ’THE GRILL’ is sufficiently capable of
distinguishing the Applicant’s services because the phrase ’THE
GRILL’ is different from just simply ... [that of the] word
’Grill’ [alone]." According to applicant, its "entire mark is
’THE GRILL’ and the Examining Attorney has unfairly dissected the
mark" by arguing that the word "’GRILL’ itself is generic and
[that the word] ’THE’ lends nothing to the mark".
We agree with the Examining Attorney, however, that
ordinary consumers, who constitute the relevant public, would
regard the term "THE GRILL" as primarily signifying a particular
kind of restaurant, namely, a grillroom or grill. The Examining
Attorney’s position is amply supported in the record by, inter
alia, applicant’s specimens of use; dictionary definitions of the
words "grill" and "grillroom"; excerpts of articles from the
"NEXIS" database, referring to "grill," "grill-type" and "grill-
style" restaurants as well as to restaurants which have the word
"grill" as part of their names; and third-party registrations of
marks for restaurant services in which the term "GRILL" has been
disclaimed in connection with restaurant services.
Specifically, as the Examining Attorney points out,
applicant’s specimens, which consist of menus, show that its
restaurant services feature various "CHAR-BROILED MEATS" and
"CHAR-BROILED FISH," which are types of grilled cuisine. In
addition, the following dictionaries define the nouns "grill"
and/or "grillroom" in pertinent part as set forth below:
Ser. No. 75/058,039
6
(a) Random House Webster’s College
Dictionary (1992) at 588, which lists "grill"
as meaning "4. GRILLROOM" and defines
"grillroom" as connoting "a restaurant or
dining room, as in a hotel, that specializes
in serving grilled meat and fish";
(b) American Heritage Dictionary of the
English Language (electronic version of 3rd.
ed. 1992), which designates "grill" as
signifying "3. An informal restaurant or a
room in a restaurant where grilled foods are
served; a grillroom";
(c) Webster’s II New Riverside
University Dictionary (1984) at 548-49, which
sets forth "grill" as connoting "3. A
grillroom" and lists "grillroom" as
signifying "A place where grilled foods are
served";
(d) Webster’s New Collegiate Dictionary
(1979) at 501, which sets forth "grill" as
signifying "3 : a usu. informal restaurant or
dining room esp. in a hotel" and lists
"grillroom" as meaning "GRILL 3";
(e) Webster’s New World Dictionary (2d
coll. ed. 1972) at 615, which defines "grill"
as meaning "4. short for GRILLROOM" and lists
"grillroom" as signifying "a restaurant,
club, or dining room that makes a specialty
of grilled foods"; and
(f) The American College Dictionary
(1970) at 533, which sets forth "grill" as
connoting "3. grillroom" and defines
"grillroom" as meaning "a room or restaurant
where meats, etc. are grilled and served".
Thus, in light of the above, there is no doubt that
applicant’s services constitute the kind of a restaurant commonly
known as a grill or grillroom. Articles in which applicant’s
restaurant services are reviewed, and which applicant has made of
record, confirm that, as demonstrated by the examples (emphasis
Ser. No. 75/058,039
7
added) reproduced below, such services and the like services of
others are generically referred to as a "grill":
"In a city that thrives on pushing the
envelope of restaurant style, restaurateur
Bob Spivak had the audacity to open a
traditional American grill. ’Every
cosmopolitan city has a real old-time grill,’
he says. ’We took the spirit of grills like
Tadich’s and Jack’s in San Francisco, and
Musso and Frank’s in Hollywood, and tried to
update it while still staying true to the
tradition’." -- Gourmet, April 1993; and
"The Grill not only brought back an old-
fashioned concept of service but also
reintroduced the old-fashioned American grill
to Los Angeles" and "The ... menu ... is
exactly what an old-time grill menu should
be." -- Gourmet, July 1991.
That ordinary consumers would indeed understand that
the term "THE GRILL" primarily names a specific kind or category
of restaurant services is further shown by the excerpts, a
representative sample of which (emphasis added) is set forth
below, of articles from the "NEXIS" database wherein references
are made to various restaurants which incorporate the word
"grill" as part of their trade names:
"Jesse Padon looks forward to his new
venture in Pelican, Alaska, upgrading Rose’s
Bar and Grill. The restaurant and lounge is
legendary among Alaska fishermen." -- News
Tribune, July 24, 1996;
"It will also include a meal in the
Paddock Grill restaurant." -- Sporting Life,
July 18, 1996;
"There are 70 Macaroni Grill restaurants
around the country ...." -- Commercial Appeal
(Memphis), July 17, 1996;
"’I was struck by it,’ Mr. Bocho said
recently during lunch at the China Grill, the
Ser. No. 75/058,039
8
restaurant that occupies the ground floor of
... CBS’s headquarters in Manhattan." -- N.Y.
Times, July 14, 1996;
"He owns the Buffalo Grill restaurant
...." -- Orange County Register, May 30,
1996; and
"Expect the unexpected at Atomic Grill,
the restaurant that opened at the site of the
legendary Leo’s last October." -- Providence
Journal-Bulletin, July 28, 1995;
Other excerpts of articles from the "NEXIS" database
further demonstrate that, to the purchasing public, the word
"grill" generically designates a particular category or kind of
restaurant services. Representative examples thereof are set
forth below (emphasis added):
"The author ... sought the 25 best grill
restaurants around the world for tips and
recipes for the book" -- Commercial Appeal
(Memphis), July 19, 1998;
"The Edge, a bar and grill-type
restaurant." -- Pantagraph (Bloomington),
July 10, 1998;
"Gone Tomatoes is an excellent Italian
bar and grill. The restaurant provided the
following directions for making the creamy
tomato basil dressing." -- Boston Herald,
June 28, 1998;
"The area’s most eclectic restaurant, an
Argentine pizza and grill restaurant called
La Milonga, has apparently closed ...." --
Atlanta Journal & Constitution, June 19,
1998;
"Orleans now boasts a real wood-fired
grill restaurant called Sunset Grill that
emphasizes takeout barbecue." -- Boston
Globe, June 18, 1998;
"The renovation ... will include a new
veranda for outside dining at the Carlyle on
the Green restaurant, a grill-style
Ser. No. 75/058,039
9
restaurant ...." -- N.Y. Times, June 7, 1998;
and
"The ’grill’ in the restaurant’s [Tako
Grill] name refers to the robatayaki
offerings - small and usually inexpensive
servings of grilled vegetables and seafood."
-- Washingtonian, June 1998.
Finally, as noted previously, the record contains
numerous third-party registrations of marks, such as "DAILY
GRILL" and design,4 "SUB-URBAN GRILL," "MACARONI GRILL,"
"MICKEY’S GRILL," and "LALANI’S RESTAURANT AND GRILL," in which
the term "GRILL" has been disclaimed in connection with
restaurant services. This evidence is additional proof that the
term "grill" is generic for restaurant services.
In view of the above, we concur with the Examining
Attorney that the addition of the word "THE" to the generic term
"GRILL" merely creates a unitary term which has the same meaning,
and hence is generic for restaurant services, as the term "GRILL"
alone. As the Examining Attorney correctly points out in her
brief, it is settled that "[n]o ’unique’ effect is created by the
utilization of the article ’THE’ in association with a ...
generic term" and that, in such a combination, "the word ’THE’
cannot serve as an indication of origin, even if the applicant’s
[goods or] services are the only [goods or] services which use
the wording." See, e.g., Conde Nast Publications Inc. v. Redbook
Publishing Co., 217 USPQ 356, 357 (TTAB 1983) ["THE MAGAZINE FOR
YOUNG WOMEN" held generic for magazines directed to young women];

4 Such registration, we note, is indicated in a letter accompanying the
application to be owned by "Grill Concepts, Inc., a company with
common ownership with the Applicant".
Ser. No. 75/058,039
10
In re Computer Store, Inc., 211 USPQ 72, 74-75 (TTAB 1981) [THE
COMPUTER STORE" found generic for computers and computer book
outlet services); and S. S. Kresge Co. v. United Factory Outlet,
Inc., 209 USPQ 924, 928 (D. Mass. 1980) ["THE MART" held generic
for retail discount stores].
In particular, as the Board stated in an analogous case
holding the term "THE PILL" to be generic for oral contraceptive
pills (footnote omitted):
The use of the article "THE" in association
with a name or word such as "PILL" is a
common or usual method adopted to refer to an
object or person previously identified or to
refer to something or someone assertedly
unique; and it is frequently employed to
shorten or eliminate unnecessary use of
repetitious or descriptive wording. And
considering that applicant’s "ENOVID" product
was the only one of its kind then on the
market for commercial sale, the use of the
designation "THE PILL" in association
therewith was essentially as a term of
reference and not necessarily as an
indication of origin. 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" ..., 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" ...
cannot convert a simple notation comprising
ordinary words of the English language used
in their ordinary sense into a registrable
trademark.
In re G. D. Searle & Co., 143 USPQ 220, 222-23, aff’d, 360 F.2d
650, 149 USPQ 619 (CCPA 1966). Likewise, and contrary to
applicant’s contention that the Examining Attorney has engaged in

Ser. No. 75/058,039
11
improper dissection, the term "THE GRILL" in the context of
restaurant services is simply a term of reference used to
categorize the particular style of restaurant operated by
applicant, namely, a grill or grillroom, rather than an indicator
of a specific source. The evidence of record, in summary,
clearly demonstrates that the term "THE GRILL" is generic in
that, to ordinary consumers, the primary significance thereof is
to designate a particular class, kind or category of restaurant
services. As such the term is incapable of registration on the
Supplemental Register.5

5 While, as pointed out earlier, a generic term is also not registrable
on the Principal Register, we note that even if applicant were seeking
registration on the Principal Register instead of the Supplemental
Register and the term "THE GRILL" was not considered to be generic for
restaurant services, applicant’s claim of acquired distinctiveness for
such a merely descriptive term would nevertheless be insufficient to
permit registration on the Principal Register under Section 2(f).
Applicant’s evidence of acquired distinctiveness consists solely of a
declaration from its vice president, attesting that "to the best of
his knowledge and belief the mark ... has become distinctive of the
services through the Applicant’s substantially exclusive and
continuous use in commerce in connection with restaurant services for
at least the five years immediately before the [filing] date" of the
application, and the submission of 13 excerpts from newspapers,
magazines and a cookbook which mention applicant’s restaurant by name.
While several of the excerpts constitute articles which indicate that
"The Grill" is notable as a "power" restaurant among certain
celebrities in the Los Angeles area where applicant renders its
restaurant services, we disagree with applicant’s contention that such
evidence establishes that its restaurant "has become so well known
that everyone associates ’THE GRILL’ with the applicant." Instead, we
concur with the Examining Attorney that (footnote omitted):
[F]rom such material, it is impossible to glean
much except that a small portion of the public,
i.e., "the rich and famous" of Los Angeles, may
frequent the applicant’s restaurant and that it
may enjoy a certain trendiness – none of which
proves that the mark has acquired distinctiveness
among this small circle or beyond.
Given the high degree of descriptiveness inherent in the use of
the term "THE GRILL" in connection with restaurant services, we
further agree with the Examining Attorney that, absent evidence such
as the extent of applicant's annual sales, its level of advertising
Ser. No. 75/058,039
12
Decision: The refusal under Section 23 is affirmed.
G. D. Hohein
C. E. Walters
T. E. Holtzman
Administrative Trademark Judges,
Trademark Trial and Appeal Board

expenditures, representative samples of its promotional materials,
and/or affidavits or declarations attesting to recognition of the term
sought to be registered as a source indicator by customers, it simply
cannot be said, on the basis of a period of use in excess of five
years, that the term "THE GRILL" is perceived by the relevant public
as identifying and distinguishing applicant’s restaurant services from
the grill or grillroom services offered by other restaurants. Absent
a showing of acquired distinctiveness, such term is barred by Section
2(e)(1) of the statute from registration on the Principal Register.