Field Roast Grain Meat Company

Trademark Trial and Appeal Board

Sep 6, 2017

No. 86831352 (T.T.A.B. Sep. 6, 2017)

This Opinion is not a
Precedent of the TTAB

Hearing: July 12, 2017 Mailed: September 6, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Field Roast Grain Meat Company
_____

Serial No. 86831352
_____

Thomas A. Fairhall of McDonnell Boehnen Hulbert & Berghoff LLP,
for Field Roast Grain Meat Company.
David Gearhart, Trademark Examining Attorney, Law Office 112,
Angela Bishop Wilson, Managing Attorney.
_____

Before Taylor, Shaw and Heasley,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
Field Roast Grain Meat Company (“Applicant”) seeks registration on the Principal
Register of the mark CHAO (in standard characters) for “non-dairy cheese composed
primarily of filtered water, coconut milk and modified corn and potato starch, and
seasoned with fermented tofu” in International Class 29.1 The Application states that
the English translation of the Vietnamese word “CHAO” is “fermented tofu.”

1 Application Serial No. 86831352 was filed on November 24, 2015, based upon Applicant’s
claim of first use anywhere and use in commerce since at least as early as September 2014.
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The Trademark Examining Attorney has refused registration of Applicant’s mark
CHAO on the ground that it is generic or that it is merely descriptive without
sufficient evidence of acquired distinctiveness to support registration. 15 U.S.C.
§§ 1052(e)(1), (f), and 1127.
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. The matter has been fully briefed, and an oral hearing was
held. We affirm the refusal to register.
I. Genericness
A proposed mark is generic if it refers to the class or category of goods and/or
services on or in connection with which it is used. In re Dial-A-Mattress Operating
Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed. Cir. 2001) (citing H. Marvin Ginn
Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986)).
A generic term is, in fact, “the ultimate in descriptiveness.” Marvin Ginn, 228 USPQ
at 530 quoted in In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262,
1264 (Fed. Cir. 2015). It can never attain trademark status, In re Cordua Rests., Inc.,
823 F.3d 594, 118 USPQ2d 1632, 1634 (Fed. Cir. 2016), because “[t]o allow trademark
protection for generic terms, i.e., names which describe the genus of goods being sold
… would grant the owner of the mark a monopoly, since a competitor could not
describe his goods as what they are.” In re Merrill Lynch, Pierce, Fenner, and Smith
Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987) quoted in Dial-A-Mattress,
57 USPQ2d at 1810.
Serial No. 86831352
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Whether a particular term is generic is a question of fact. In re Hotels.com LP, 573
F.3d 1300, 91 USPQ2d 1532, 1533 (Fed. Cir. 2009). Resolution of that question
depends on the primary significance of the term to the relevant public. “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.” Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114
USPQ2d 1827, 1830 (Fed. Cir. 2015) (quoting Marvin Ginn, 228 USPQ at 530). The
genericness inquiry is a two-part test: “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 re Reed Elsevier Props.
Inc., 482 F.3d 1376, 82 USPQ2d 1378, 1380 (Fed. Cir. 2007) (quoting Marvin Ginn,
228 USPQ at 530); see Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121
USPQ2d 1477, 1483 (TTAB 2017). The Examining Attorney bears the burden of
proving genericness by clear and convincing evidence. In re Cordua Rests., 118
USPQ2d at 1635; In re Tennis Ind. Ass’n., 102 USPQ2d 1671, 1674 (TTAB 2012).
The Examining Attorney posits that the genus of goods should be defined by
Applicant’s identification of goods, i.e., “non-dairy cheese composed primarily of
filtered water, coconut milk and modified corn and potato starch, and seasoned with
fermented tofu.”2 There is substantial authority for this position that the genus of
goods or services may be defined by an applicant’s identification of goods or services.
E.g., In re Cordua Rests., 118 USPQ2d at 1636; Magic Wand Inc. v. RDB Inc., 940

2 Examining Attorney’s brief, 6 TTABVUE 7.
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F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) (“[A] proper genericness inquiry
focuses on the description of [goods or] services set forth in the [application or]
certificate of registration.”); In re Rosemount, Inc., 86 USPQ2d 1436, 1437 (TTAB
2008); TMEP § 1209.01(c)(i). In this case, though, Applicant urges that the genus of
goods be defined more simply as “non-dairy cheese.”3 We find that Applicant’s
succinct statement of its identification of goods―“non-dairy cheese”―captures the
essence of the genus. See In re Empire Tech. Dev. LLC, 123 USPQ2d 1544, 1548
(TTAB 2017) (succinct statement of genus permissible) (citing In re ActiveVideo
Networks, Inc., 111 USPQ2d 1581, 1602 (TTAB 2014)). The relevant public is
ordinary consumers of non-dairy cheese, who would encounter Applicant’s product on
store shelves arrayed with competing non-dairy cheeses. See In re Noon Hour Food
Prods., Inc., 88 USPQ2d 1172, 1178 (TTAB 2008) (“[T]he relevant class of consumers
would be ordinary consumers of cheese, including consumers of specialized, ethnic
cheese – a fact that is also reflected in the record.”).
The second issue is whether the relevant public would understand the term CHAO
primarily to refer to a subcategory of non-dairy cheese―i.e., cheese containing
fermented tofu. As the Federal Circuit explained in Cordua Restaurants, generic
words for subcategories of a genus are ineligible for trademark protection:
Cordua argues that even if “churrascos” is generic as to “churrasco
restaurants” (also known as “churrascarias”), it is not generic as to all
restaurant services. But a term is generic if the relevant public
understands the term to refer to part of the claimed genus of goods or
services, even if the public does not understand the term to refer to the
broad genus as a whole. Thus, the term “pizzeria” would be generic for

3 Applicant’s brief pp. 12, 14, 4 TTABVUE 13, 15.
Serial No. 86831352
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restaurant services, even though the public understands the term to refer
to a particular sub-group or type of restaurant rather than to all
restaurants.

In re Cordua Rests., 118 USPQ2d at 1638 (quoting 1-2 Anne Gilson LaLonde, Gilson
on Trademarks § 2.02[7][a] (2011): A “term need not refer to an entire broad species,
like ‘cheese’ or ‘cake,’ in order to be found generic.”). See RESTATEMENT (THIRD) OF
UNFAIR COMPETITION § 15 comment a (1995) (“A term that denominates a subcategory
of a more general class, such as ‘light’ used with beer or ‘diet’ with cola, is also
generic.”).
“[A] term can be generic for a genus of goods or services if the relevant
public…understands the term to refer to a key aspect of that genus….” In re Cordua
Rests, 118 USPQ2d at 1637; accord In re Meridian Rack & Pinion, 114 USPQ2d 1462,
1464 (TTAB 2015). The Examining Attorney contends that Chao fermented tofu is a
key aspect of Applicant’s non-dairy cheese. Applicant argues that it:
is not seeking registration of the mark CHAO for fermented soybean curd
or tofu. Rather, the applicant is seeking registration of the mark CHAO
for a non-dairy cheese made primarily from filtered water, coconut milk
and modified corn and potato starch, offered in three different varieties
(creamy original, tomato cayenne with spicy pepper, and coconut herb
with black pepper). The applicant has specified the primary ingredients
for the non-dairy cheese in the description of goods, and indeed one of
the ingredients is fermented tofu. But, the Examiner has not adduced
proof that the relevant public would understand the designation CHAO
to refer to the genus of the goods or the common descriptive name for the
product….4

The Examining Attorney maintains, however, that “chao is not a merely incidental
addition to applicant’s goods. Rather, it is prominently advertised as a key ingredient

4 Applicant’s brief p. 18, 4 TTABVUE 19.
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of the non-dairy cheese product.”5 Applicant’s product packaging specimen states
“WITH CHAO TOFU” in capital letters on the front of the goods:
6
A side of the product packaging explains what Chao is:
Chao Slices! Welcome to Field Roast’s newest family member: a vegan
coconut cheese alternative seasoned with a traditionally fermented
soybean curd called Chao by the Vietnamese. We continue our fascination
with blending Asian and European heritages by partnering with a Greek
cheese maker and a family in Taiwan who makes the Chao. We bring it all
together in Seattle to create Chao Slices. Enjoy!7

Applicant’s website announces that “Chao tofu is a fermented soybean curd
popular throughout Asia. Essentially it’s the traditional ‘cheese’ of Asia. It can be

5 Examining Attorney’s brief, 6 TTABVUE 12.
6 Substitute specimen, Sept. 12, 2016.
7 Original specimen, Nov. 24, 2015 (emphasis added).
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purchased in Asian grocery stores in … North America….”:
8

8 FieldRoast.com/ChaoStory/ 3/15/2016, March 15, 2016 Office Action p. 6 (all citations to the
TSDR are to the pdf version).
Serial No. 86831352
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Applicant’s CHAO-branded goods repeatedly explain that Chao is fermented tofu:
9
The way an applicant uses a term in its promotional materials and packaging is
relevant to whether consumers will perceive the term as an indicator of source or as
generic. In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1112 (Fed. Cir.
1987); In re ActiveVideo Networks, Inc., 111 USPQ2d at 1590 n.22. Applicant’s
promotional materials and packaging are particularly probative because they state
that “Chao” is a thing and the text directly below the use tells you what the thing is,
a key ingredient: “rich and creamy vegan cheese … seasoned with a fermented tofu.”
See In re Noon Hour Food Prods., 88 USPQ2d at 1180 (quoting In re Abcor Dev. Corp.,
588 F.2d 811, 200 USPQ 215, 219 (CCPA 1978) (Rich, J., concurring)). Thus,
Applicant’s own uses provide “damaging evidence that its alleged mark is generic and
would be perceived by the purchasing public as merely a common name for its goods

9 FieldRoast.com/product/chao-slices/ 3/15/2016, March 15, 2016 Office Action p. 9.
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rather than a mark identifying the good’s source.” In re Empire Tech., 123 USPQ2d
at 1560.
As Applicant’s promotional materials indicate, “Chao” is already popular as the
traditional “cheese” of Asia.10 Applicant’s founder encountered Chao marketed by
another purveyor eighteen years ago:
11
Applicant argues that Chao is “not the active or essential characteristic in its non-
dairy cheese. The primary ingredients are filtered water, coconut milk, modified corn
and potato starch.”12 But Applicant’s promotional materials make Chao a centerpiece
of its ingredients. An article reviewing Applicant’s goods states: “There seems to be
just one special ingredient that sets Field Roast’s Chao Cheese Slices apart: just a
touch of fermented chao tofu”:

10 FieldRoast.com/ChaoStory/ 3/15/2016, March 15, 2016 Office Action p. 6.
11 Declaration of David Lee, president and founder of Applicant, Sept. 12, 2016 Response to
Office Action pp. 6-7.
12 Applicant’s brief p. 20, 4 TTABVUE 21.
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13
See In re Nordic Naturals, Inc., 755 F.3d 1340, 111 USPQ2d 1495, 1497 (Fed. Cir.
2014) (“Even certain references that use ‘children’s DHA’ to refer to Nordic’s goods
also use it to describe those goods in a generic manner.”).
As a principal ingredient in Applicant’s product, “CHAO” is incapable of
distinguishing the source of that product. In re Empire Tech., 123 USPQ2d 1544
(COFFEE FLOUR generic for flour made from coffee berries); see also In re Hask
Toiletries, 223 USPQ 1254, 1255 n.3 (TTAB 1984) (HENNA ‘N PLACENTA generic
for the two key ingredients of applicant’s hair conditioning product); In re Demos, 172
USPQ 408, 409 (TTAB 1971) (“CHAMPAGNE” merely names principal ingredient of
applicant’s salad dressing and is unregistrable). Applicant contends that “There is no
competitive necessity of producers of vegan, non-dairy cheeses (or even ones that are

13 GoDairyFree.org 3/15/17, March 15, 2016 Office Action p. 7. See also Specialty Food.com
1/27/15 (Specialty Food Association trade article, headlined “Vegan Cheese Sales Climb as
New Producers Flood Market,” reporting that “The latest entry to the market is The Field
Roast Grain Meat Co., which earlier this month introduced Chao Slices, a rich and creamy
coconut cheese seasoned with fermented soybean curd that the Vietnamese call chao.”) Feb.
1, 2017 Response to Office Action pp. 21-22.
Serial No. 86831352
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seasoned with fermented tofu) to use the term CHAO as a brand.”14 But “[i]t is well
established that the availability of other words for competitors to use does not, by
itself, transform a generic term into capable matter.” In re Empire Tech. Dev. LLC,
123 USPQ2d at 1551 (quoting In re Trek 2000 Int’l Ltd., 97 USPQ2d 1106, 1109
(TTAB 2010)). “All of the generic names for a product belong in the public domain.”
In re Sun Oil Co., 426 F.2d 401, 165 USPQ 718, 719 (CCPA 1970) (Rich, J., concurring,
emphasis in original) quoted in Sheetz of Delaware, Inc. v. Doctors Assocs. Inc.,108
USPQ2d 1341, 1369-70 (TTAB 2013).
Applicant notes that the refusal to register CHAO, a Vietnamese word, is
necessarily predicated on the doctrine of foreign equivalents.15 “Under the doctrine of
foreign equivalents, a word commonly used in another language as the generic name
of a product cannot be imported into the United States and be transformed into a
valid trademark.” 2 J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS & UNFAIR
COMPETITION § 12:41 (4th ed. June 2017). Foreign words from common languages are
translated into English to determine genericness. Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1696
(Fed. Cir. 2005). The doctrine is generally applied when it is likely that the ordinary
American purchaser would stop and translate the word into its English equivalent.
Id., quoted in In re Highlights for Children, Inc., 118 USPQ2d 1268, 1271 (TTAB
2016).

14 Applicant’s reply brief p. 6, 7 TTABVUE 7.
15 Applicant’s brief p. 15, 4 TTABVUE 16.
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Applicant contends that the doctrine―which is merely a guideline, not an absolute
rule―is inapplicable in this case because it is unlikely that the ordinary American
purchaser would stop and translate CHAO into its English equivalent. In Palm Bay
Imports, it notes, the Federal Circuit found it improbable that the average American
purchaser would stop and translate the French word “Veuve” into “widow.” And in In
re Tia Maria, Inc., 188 USPQ 524 (TTAB 1975), it notes, the Board found it unlikely
that the average American consumer would translate TIA MARIA into English as
“Aunt Mary.” Similarly in this case, it contends, it is unlikely that the ordinary
American purchaser would translate CHAO into “fermented tofu,” first because it is
an obscure word in an obscure language, Vietnamese, and second because “the mark
CHAO has suggestive attributes, i.e., eating (e.g., “chow down”), and casual food
(‘chow’) in general. Additionally, CHAO is also suggestive of the Italian word CIAO,
which is an informal salutation that is used for both ‘hello’ and ‘goodbye.’”16 Because
of this obscurity, as well as the suggestive attributes of CHAO, Applicant concludes
that the foreign equivalents doctrine should not be applied here.
We agree with the Examining Attorney, however, that the doctrine of foreign
equivalents is applicable here, and that the relevant public of ordinary American
purchasers would understand CHAO to be generic. The “ordinary American
purchaser” includes “all American purchasers, including those proficient in a non-
English language who would ordinarily be expected to translate words into English.”
In re Spirits Int’l N.V., 563 F.3d 1347, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009).

16 Applicant’s brief pp. 15-17, 4 TTABVUE 16-18.
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“Because of the diversity of the population of the United States, coupled with
temporary visitors, all of whom are part of the United States marketplace, commerce
in the United States utilizes innumerable foreign languages. No merchant may
obtain the exclusive right over a trademark designation if that exclusivity would
prevent competitors from designating a product as what it is in the foreign language
their customers know best.” Otokoyama Co. v. Wine of Japan Imp. Inc., 175 F.3d 266,
50 USPQ2d 1626, 1629 (2d Cir. 1999). The doctrine of foreign equivalents thus applies
to words or terms from common, modern languages, which encompasses all but dead,
obscure, or unusual languages. TMEP § 1207.01(b)(vi).
Vietnamese is not an obscure language. A recent Board decision cited by the
Examining Attorney applied the doctrine of foreign equivalents to a word mark in
Vietnamese, observing that over 1,400,000 people in the United States speak
Vietnamese, outnumbering speakers of Italian, Russian, or Korean. In Re Green
Dragon Tavern, Inc., 86111823, 2016 WL 552606, at *4 (TTAB 2016)
(nonprecedential)17 cited in 5 CALLMAN ON UNFAIR COMPETITION, TRADEMARK &
MONOPOLIES § 21:20 n.8 (4th ed. June 2017). In fact, that is almost twice the number
of Russian speakers in the United States. See In re Joint Stock Co. “Baik,” 80 USPQ2d
1305, 1310 (TTAB 2006) (evidence of 706,000 Russian-speakers living in the United
States establish that a “significant portion of consumers” would understand the
English meaning of a Russian mark for Russian vodka) cited in TMEP
§ 1207.01(b)(vi). In another case, an applicant admitted that the word “COT” in its

17 See TBMP § 101.03 (June 2017) regarding citation of nonprecedential Board decisions.
Serial No. 86831352
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applied-for marks meant “condensed or concentrated” in Vietnamese, so the USPTO
found that the word was descriptive of the goods, a condensed base for Vietnamese
pho noodle soup, and refused to register the marks. See Quoc Viet Foods, Inc. v. VV
Foods, LLC, 192 F. Supp. 3d 1067, 1075 (C.D. Cal. 2016) (“This determination, along
with [the applicant’s] statement to the PTO that “Cot” means “condensed or
concentrated,” [in Vietnamese] is highly probative evidence of descriptiveness.”) cited
in MCCARTHY ON TRADEMARKS & UNFAIR COMPETITION § 11:34 n.27.
In this case, Applicant declares, and the Examining Attorney accepts, that the
Vietnamese population in the United States in 2012 was approximately 1,700,000,18
a number greater than the number cited in Green Dragon Tavern. As in Quoc Viet
Foods, Applicant states that “the English translation of the word ‘CHAO’ in the mark
is ‘fermented tofu.’” Its founder declares that another producer had been using the
term CHAO (dau me) on its goods to cater to a Vietnamese market in the United
States as early as eighteen years ago:19 “Below are pictures of the bottles that I
originally discovered the[] word “chao” from:”

18 See Lee declaration ¶ 5, Sept. 12, 2016 Response to Office Action p. 7.
19 See Lee declaration ¶¶ 3-4, Sept. 12, 2016 Response to Office Action p. 7.
Serial No. 86831352
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Beyond that, English-speaking reviewers have used the term “chao” (in lower case
letters) to refer to fermented tofu generically. See In re Noon Hour Food Prods., 88
USPQ2d at 1179 (“where writers use the term ‘bondost’ as a single word in all lower-
case letters, the presumption to be drawn from such references is that it is perceived,
at least by the author, as a generic type of cheese.”) One reviewer wrote that
Applicant’s “one special ingredient” was “just a touch of fermented chao tofu.”20
Another reviewer in the “Wandering Chopsticks” blog referred to “fermented bean
curd, called chao in Vietnamese….”21 And yet another reviewer “opted for
[Applicant’s] Creamy Original With Chao Tofu, which I imagined would be the closest
thing to provolone or Swiss. The ingredients include coconut oil, fermented chao tofu,
sea salt, and other natural stuff― no unpronounceable chemical ingredients.”22 This
lower-case treatment manifests a recognition that chao is a thing―i.e., an ingredient,
and not an indication of a particular source of that thing. See also In re Cooperativa
Produttori Latte E Fontina Valle D’Acosta, 230 USPQ 131, 134 (TTAB 1986) (“[T]he
lower-case treatment of this word by the references to name a kind of cheese with
certain hardness, texture and flavor characteristics, and the fact that the record
reveals that there is a domestic fontina cheese demonstrates to us that, to the
American purchaser, ‘fontina’ primarily signifies a type of cheese ….”).
Moreover, Applicant’s own advertising encourages this treatment of “chao” as a

20 GoDairyFree.org 3/15/17, March 15, 2016 Office Action p. 7.
21 WanderingChopsticks.blogspot.com 3/15/2016, March 15, 2016 Office Action p. 8.
22 MiamiNewTimes.com 11/19/14, Feb. 1, 2017 Response to Office Action p. 17.
Serial No. 86831352
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generic ingredient. In its packaging and on its promotional materials, it educates the
public that “chao” is fermented tofu. E.g.:
23
In so doing, Applicant both actively and tacitly encourages the public’s generic use
of “chao.” In re Empire Tech., 123 USPQ2d at 1555. Even if the term is not yet widely
used by English speakers, the Federal Circuit has stated, “The test is not only
whether the relevant public would itself use the term to describe the genus, but also
whether the relevant public would understand the term to be generic.” In re
1800Mattress.com, 586 F.3d 1359, 92 USPQ2d 1682, 1685 (Fed. Cir. 2009); TMEP
§ 1209.01(c)(i).
Applicant’s advertising encourages the understanding that “chao” is generic for
an ingredient. McCarthy notes that “The English language as used in the U.S. has

23 FieldRoast.com/ChaoStory/ 3/15/2016, March 15, 2016 Office Action p. 6.
Serial No. 86831352
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adopted a number of generic names without change from other languages. … A
number of generic names in the field of food and dining are taken directly from other
languages into everyday English, such as: “restaurant” and “bistro” (French); “pasta”
and “trattoria” (Italian); “sauerkraut” (German); “chocolate” (Aztec-Spanish); and
“cookie” (Dutch).” 2 MCCARTHY ON TRADEMARKS & UNFAIR COMPETITION § 12:44.50.
The Federal Circuit explains how the relevant public can be educated to understand
that a foreign term is generic:
As Palm Bay makes clear, there are situations in which the doctrine does
not require translation even with respect to foreign language speakers. The
ordinary American consumer would not translate VEUVE CLICQUOT
because its literal translation would be irrelevant to even those ordinary
American consumers who speak French. Palm Bay, 396 F.3d at 1377.
Similarly, CORDON BLEU has such a well established alternative
meaning that the literal translation is irrelevant because even French
speakers would not translate the mark. Cont’l Nut Co. v. Cordon Bleu, 494
F.2d 1397, 1398 [181 USPQ 647] (CCPA 1974). Additionally, some marks
would not be translated because of the particular context in which they
occur. See In re Tia Maria, Inc., 188 USPQ 524, 525-26 (TTAB 1975). There
may be many non-English marks that will not be translated in context but
instead accepted at face value by the ordinary American consumer,
including those familiar with the literal meaning of the mark in the non-
English language.

In re Spirits Int’l, 90 USPQ2d at 1492.

Applicant’s reliance on Tia Maria is misplaced. In that case, the Board held that
TIA MARIA, the applicant’s proposed mark for restaurant services, was not likely to
be confused with the registered mark AUNT MARY’S for canned fruits and
vegetables because, inter alia, a person dining at the TIA MARIA restaurant,
surrounded by its Mexican décor and Mexican food, would be likely to accept “TIA
MARIA” as it is and not translate it into “AUNT MARY.” 188 USPQ at 525-26. In this
Serial No. 86831352
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case, in the context of stores selling non-dairy cheeses, the public would be educated
to understand that “chao” indicates a generic ingredient, not a particular source. See
In re Spirits Int’l, 90 USPQ2d at 1492; In re Empire Tech., 123 USPQ2d at 1549.
For much the same reason―the context in which CHAO is used, on non-dairy
cheese―the word is unlikely to be understood in the alternate senses Applicant has
suggested, such as the Italian word CIAO. “[T]he determination of whether a
proposed mark is capable of achieving significance as a source identifier must be
made in relation to the goods and services for which registration is sought, not in the
abstract. … The fact that a term may have a different meaning in another context is
not controlling.” In re ActiveVideo Networks, Inc., 111 USPQ2d at 1587.
In sum, the evidence, taken as a whole, indicates that the relevant public would
understand CHAO primarily to refer to a key ingredient. See generally In re Cordua
Rests., 118 USPQ2d at 1635; Marvin Ginn, 228 USPQ at 530; In re 1800Mattress.com,
92 USPQ2d at 1685. “[T]his term is generic and should be freely available for use by
competitors.” In re Cent. Sprinkler Co., 49 USPQ2d 1194, 1199 (TTAB 1998).
II. Descriptiveness and Acquired Distinctiveness
A. Descriptiveness

For the sake of completeness, we also address the refusal based on mere
descriptiveness. Section 2(e)(1) provides that a mark is unregistrable on the Principal
Register if, “when used on or in connection with the goods of the applicant [it] is
merely descriptive or deceptively misdescriptive of them ….” 15 U.S.C. § 1052(e)(1).
A term is merely descriptive of goods or services within the meaning of Section 2(e)(1)
Serial No. 86831352
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if it forthwith conveys an immediate idea of an ingredient, quality, characteristic,
feature, function, purpose or use of the goods or services. In re Chamber of Commerce
of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007); In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Well Living Lab Inc.,
122 USPQ2d 1777, 1779 (TTAB 2017). “The major reasons for not protecting such
[merely descriptive] marks are: (1) to prevent the owner of a mark from inhibiting
competition in the sale of particular goods; and (2) to maintain freedom of the public
to use the language involved, thus avoiding the possibility of harassing infringement
suits by the registrant against others who use the mark when advertising or
describing their own products.” In re Abcor Dev. Corp., 200 USPQ at 217.
As noted by the Examining Attorney, “a word that immediately describes or is the
name of an ingredient of a product is merely descriptive of the product itself within
the meaning of Section 2(e)(1) of the Statute.” In re Westbrae Natural Foods, Inc., 211
USPQ 642, 643 (TTAB 1981) (citing Abcor and finding TAMARI, the Japanese
equivalent of “soy sauce”, merely descriptive of one of the two ingredients in
applicant’s product); see also In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574 (Fed.
Cir. 2015) (NOPALEA merely descriptive of nutritional supplements containing
nopal juice); In re Entenmann’s Inc., 15 USPQ2d 1750 (OATNUT merely descriptive
of bread containing oats and hazelnuts). Applicant’s original specimen, its product
packaging, lists “fermented chao tofu” as an ingredient:
Serial No. 86831352
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24
Applicant takes the position that descriptiveness refusals are applied where the
mark describes the “distinguishing or effective ingredient in the product….”25 For
example, it argues, in TriVita the mark was NOPALEA, and the goods were dietary
and nutritional supplements containing, in whole or substantial part, nopal juice
derived from the nopalea cactus; “nopal” and “nopalea” were used interchangeably.
Here, it suggests, the primary ingredients of its non-dairy cheese are filtered water,
coconut milk, modified corn and potato starch, with fermented tofu added only as a
seasoning agent.26

24 From original specimen, filed with Application Nov. 24, 2015.
25 Applicant’s brief p. 19, 4 TTABVUE 20.
26 Applicant’s brief p. 20, 4 TTABVUE 21.
Serial No. 86831352
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It is enough, though, that the term describes one significant ingredient, attribute,
quality or characteristic of the goods. Chamber of Commerce of the U.S., 102 USPQ2d
at 1219; In re Gyulay, 3 USPQ2d at 1010; In re H.U.D.D.L.E., 216 USPQ 358, 359
(TTAB 1982). And CHAO is clearly a significant ingredient in Applicant’s non-dairy
cheese, judging from Applicant’s advertising, promotion, and packaging of its product.
The label above not only identifies “fermented chao tofu” as an ingredient, it
highlights this attribute of the goods. The front of the packaging says “WITH CHAO
TOFU.” The back underscores the significance of this ingredient, “a traditionally
fermented soybean curd called Chao by the Vietnamese.”27 This, plus the other
promotional materials set forth above, confirm a reviewer’s assessment that “There
seems to be just one special ingredient that sets Field Roast’s Chao Cheese Slices
apart: just a touch of fermented chao tofu.”28 Thus CHAO describes a significant
ingredient in Applicant’s goods.
Applicant repeats its argument that CHAO is suggestive or even fanciful because
it is pronounced the same as “chow” and is suggestive of eating (“chow down”) or
casual food (“chow”), as well as the Italian word CIAO.29 The Federal Circuit has
explained that “The line between a mark that is merely descriptive and may not be
registered absent secondary meaning, and one that is suggestive and may be
registered, is that a suggestive mark requires imagination, thought and perception

27 From original specimen, filed with Application Nov. 24, 2015.
28 GoDairyFree.org 3/15/17, March 15, 2016 Office Action p. 7.
29 Applicant’s brief p. 21, 4 TTABVUE 22.
Serial No. 86831352
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to reach a conclusion as to the nature of the goods, while a merely descriptive mark
forthwith conveys an immediate idea of the ingredients, qualities or characteristics
of the goods.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247,
103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (internal punctuation omitted).
Here, in the relevant marketplace for non-dairy cheeses, Applicant’s promotes
chao tofu as the special ingredient distinguishing its product. Its own use of “chao” in
a descriptive manner is strong evidence that average purchasers would perceive
CHAO as a description of a key ingredient of its non-dairy cheese. In re Abcor, 200
USPQ at 218 (“Evidence of the context in which a mark is used ... in advertising
material ... is probative of the reaction of prospective purchasers to the mark.”). Even
if it occurred to consumers that CHAO sounds the same as “chow”, there is no reason
to believe that the phonetic equivalent would detract from or supersede their
perception that the primary meaning of the term is chao tofu. These consumers, who
know what the goods are, will understand the mark to convey information about
them. See Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 123 USPQ2d 1411,
1413 (Fed. Cir. 2017). For these reasons, we find that CHAO is merely descriptive for
purposes of Section 2(e)(1).
B. Acquired Distinctiveness
If an applied-for mark is generic, then no amount of use in commerce can establish
its distinctiveness. In re La. Fish Fry Prods., Ltd., 116 USPQ2d at 1264. But if it is
merely descriptive under Section 2(e)(1), it may be registered on the Principal
Register if it “has become distinctive of the applicant’s goods in commerce.” 15 U.S.C.
Serial No. 86831352
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§ 1052(f). “To establish secondary meaning, or acquired distinctiveness, an applicant
must show that in the minds of the public, the primary significance of a product
feature or term is to identify the source of the product rather than the product itself.”
Coach Svcs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1729
(Fed. Cir. 2012); Apollo Medical Extrusion Technologies, Inc. v. Medical Extrusion
Technologies, Inc., 2017 WL 3600737, * 9, ___ USPQ2d ___ (TTAB 2017). The
applicant bears the burden of proving acquired distinctiveness by a preponderance of
the evidence. In re Noon Hour Food Prods., 88 USPQ2d at 1181. In determining
whether an applicant has demonstrated acquired distinctiveness of the proposed
mark for its goods, the Board will examine the evidence of record, including any
evidence of advertising expenditures, sales success, length and exclusivity of use,
unsolicited media coverage, and consumer studies. On this list, no single fact is
determinative. In re Tires, Tires, Tires Inc., 94 USPQ2d 1153, 1157 (TTAB 2009);
Apollo Medical Extrusion Technologies, 2017 WL 3600737 at 9.
In this case, Applicant contends in the alternative that “[e]ven assuming for the
sake of argument that CHAO is merely descriptive it has acquired distinctiveness
and is registrable under § 2(f).”30 Having commenced use in 2014, it does not rely on
the Section 2(f) provision that substantially exclusive use for a period of five years
immediately preceding filing of an application may be considered prima facie

30 Applicant’s brief p. 23, 4 TTABVUE 24. The Examining Attorney argues that Applicant
has conceded the descriptiveness of its mark by proceeding under Section 2(f). Applicant has
consistently taken the position that its mark is not descriptive. So even though it amended
its application at the Examining Attorney’s prompting to claim acquired distinctiveness, we
will treat that amendment not as an admission of descriptiveness, but as a claim made in the
alternative. TMEP § 1212.02(c).
Serial No. 86831352
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evidence. See In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417,
422 (Fed. Cir. 1985). Rather, it asseverates that:
since its launch a few years ago CHAO brand nondairy cheese has been
enormously successful throughout the United States. 9/12/16 response p.
6-12 (Lee declaration); 2/1/17 response p. 13-23. The product has been
praised in press articles, nominated for awards, achieved widespread
exposure and discussion on social networks, assumed the leader in market
segment, experienced rapid growth to millions of dollars of sales since its
launch, and achieved widespread distribution in retail stores and
wholesale supply chains. The product is sold in retail throughout the
United States and distributed via wholesalers to natural foods and
commercial grocery stores (e.g., Safeway, Red Apple), big box stores such
as Wal-Mart and Costco, restaurant and food services including cafes,
pubs, pizzerias and others. 9/12/16 Response, p. 11. As explained in the Lee
Declaration at ¶ 7 (id. at 10), in just a short period, it has become the top
selling sliced vegan non-dairy cheese in the natural category.31

Its president and founder’s declaration, on which it relies, states that:

• CHAO is the number one brand in natural products supermarkets in the
sliced and individual cheese alternative category, with over two million
dollars in sales and 38.7% market share for the year ending May 15,
2016;32

• Since the product was introduced in 2014, sales have amounted to nearly
$8,000,000;33

• CHAO products are currently sold in the United States in conventional
retail grocery stores, including Safeway, natural food stores and food
cooperatives, as well as “big box” grocery stores such as Wal-Mart and
Costco. Applicant’s “trade spend” (money paid to retailers primarily for
discounts on the product) has been approximately $633,000. The products
are also distributed to restaurants, delis, pizzerias, pubs, and the like;34

31 Applicant’s brief p. 23, 4 TTABVUE 24.
32 Lee Declaration ¶ 9, citing data from SPINS, a provider of retail customer insights and
analytics in the natural, organic and specialty products industry, Spins.com. Sept. 12, 2016
Response to Office Action p. 10.
33 Lee Declaration ¶ 10, Sept. 12, 2016 Response to Office Action p. 11.
34 Lee Declaration ¶ 11, Sept. 12, 2016 Response to Office Action p. 11.
Serial No. 86831352
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• CHAO has received awards and accolades, such as the Veggie Awards
from VegNews Magazine (leading vegan lifestyle magazine in the US):
o 2015 ― Chao Slices nominated for “Best Vegan Cheese”
o 2016― Chao Slices nominated for “Best Staple Vegan Cheese”;35

• CHAO has received publicity in publications such as
o Miami New Times, “Field Roast’s Chao Slices the Best Vegan
Cheese you’ll Ever Have” MiamiNewTimes.com
o Paste Magazine, “7 Vegan Cheeses Worth Seeking Out”
PasteMagazine.com;36 and

• CHAO has received attention in food-related blogs and other online
publications, including
o Over 4,000 Instagram posts tagged with #ChaoCheese
o FoodNavigator-usa.com/Manufacturers/Chao-Slices-promise-to-
revolutionize-vegan-cheese-as-a-real-food
o Blogher.com/chao-vegan-cheese-review

Considering all the evidence of record, including evidence not specifically
addressed herein, we are not persuaded that Applicant’s mark has acquired
distinctiveness. Although the product has achieved notable sales in a short period of
time, the relative success of Applicant’s product does not necessarily evince
consumers’ recognition of its proposed mark as a source indicator. Mini Melts, Inc. v.
Reckitt Benckiser LLC, 118 USPQ2d 1464, 1480-81 (TTAB 2016). Much greater sales
figures have failed to result in the achievement of distinctiveness. See In re Boston
Beer Co., L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) ($85 million in annual
sales revenues found insufficient to establish acquired distinctiveness). Applicant’s
sales evince its product’s popularity, not the public’s recognition of its proposed mark
as an indication of origin. In re Bongrain Int’l (Am.) Corp., 894 F.2d 1316, 13 USPQ2d

35 Lee Declaration ¶ 8, Sept. 12, 2016 Response to Office Action p. 8.
36 Lee Declaration ¶ 8, Sept. 12, 2016 Response to Office Action pp. 8-9.
Serial No. 86831352
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1727, 1729 (Fed. Cir. 1990) (growth in sales of cheese may be indicative of popularity
of product itself rather than recognition as denoting origin). Similarly, the accolades
Applicant’s product has received among vegan cheese aficionados speak more to the
quality of its goods than the recognition of its mark.
The ultimate test in determining whether a designation has acquired
distinctiveness is Applicant’s success, rather than its efforts, in educating the public
to associate the proposed mark with a single source. In re Owens-Corning Fiberglas
Corp., 227 USPQ at 422; In re LC Trademarks, Inc., 121 USPQ2d 1197, 1208 (TTAB
2016). As the evidence shows, Applicant has undermined its own efforts by repeatedly
using the term “chao” descriptively, even generically―in its packaging, its
promotional materials, and its website―to describe a key ingredient in its product. In
the final analysis, it has not carried its burden of showing that in the minds of the
public, the primary significance of its proposed mark is to identify the source of the
product, rather than the product itself. Coach Svcs., 101 USPQ2d at 1729.
Accordingly, we find that Applicant has failed to demonstrate that its mark has
acquired distinctiveness under Section 2(f) of the Act.
Decision: Taking into account the entire record, including those parts we have
not mentioned, the refusal to register Applicant’s mark CHAO on the ground of
genericness is affirmed, as is the alternative refusal on the ground of mere
descriptiveness and an insufficient showing of acquired distinctiveness.