John Zidian Co., Inc.

Trademark Trial and Appeal BoardSep 29, 2021

88445411 (T.T.A.B. Sep. 29, 2021)

This Opinion is Not a Precedent of the TTAB Mailed: September 29, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re John Zidian Co., Inc. _____ Serial No. 88445411 _____ Edward T. Saadi of Edward T. Saadi LLC, for John Zidian Co., Inc. Edward Payabyab, Trademark Examining Attorney, Law Office 128, Travis Wheatley, Managing Attorney. _____ Before Kuhlke, Lykos and Hudis, Administrative Trademark Judges. Opinion by Lykos, Administrative Trademark Judge: On May 24, 2019, John Zidian Co., Inc. (“Applicant”) filed an application to register on the Principal Register the mark displayed below: Serial No. 88445411 - 2 - for “Pasta sauce; Vinegar” in International Class 30.1 In the application, Applicant disclaimed the entire wording LITTLE ITALY IN THE BRONX apart from the mark as shown. The Trademark Examining Attorney refused registration of the mark under Trademark Act Section 2(e)(2), 15 U.S.C. § 1052(e)(2), on the ground that the mark is primarily geographically descriptive of the origin of Applicant’s goods.2 In an effort to overcome the refusal, Applicant, pointing to its voluntary disclaimer of all wording in the mark, argued during prosecution and in its Request for Reconsideration that the unique stylized font and arrangement of the wording in the mark rendered it distinctive. The Examining Attorney denied Applicant’s Request for Reconsideration and refused to accept Applicant’s voluntary disclaimer. As the Examining Attorney stated: In the present case, the entire wording may not be disclaimed because the stylization does not create a separate and inherently distinctive commercial impression apart from the wording itself. The stylization of applicant’s mark is minimal, comprising of block letters and script. Stylized descriptive or generic wording is registrable only if the stylization creates a commercial impression separate and apart from the impression made by the wording itself. See In re Cordua Rests., Inc., 823 F.3d 594, 606, 118 1 Application Serial No. 88445411 was filed under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), alleging March 2, 2019, as the date of first use anywhere and in commerce. The description of the mark is as follows: “The mark consists of the stacked wording ‘LITTLE’, followed by ‘ITALY’, followed by ‘IN THE BRONX’, all in stylized font.” Color is not claimed as a feature of the mark. Citations to the prosecution history are to the USPTO’s Trademark Status & Document Retrieval (“TSDR”) database and identify documents by title and date. Otherwise, citations are to TTABVUE, the Board’s online docketing system. 2 Other grounds for refusal and requirements were either withdrawn or resolved during prosecution. Serial No. 88445411 - 3 - USPQ2d 1632, 1639-40 (Fed. Cir. 2016); In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 1561, 227 USPQ 961, 964 (Fed. Cir. 1985); TMEP §1209.03(w). Common and ordinary lettering with minimal stylization, as in this case, is generally not sufficiently striking, unique, or distinctive as to make an impression on purchasers separate from the wording. See In re Sadoru Grp., Ltd., 105 USPQ2d 1484, 1487 (TTAB 2012). Moreover, a disclaimer may not overcome a Section 2(e)(2) refusal where there are no other elements of the mark that would be registerable on the Principal Register. As stated, the stylization in this case is not registerable on the Principal Register because it is not distinctive.3 Nonetheless, in his appeal brief, the Examining Attorney takes the position that “through its proposed disclaimer, applicant essentially concedes that, at minimum, the wording in the mark (apart from the stylization), is geographically descriptive.”4 In view thereof, we deem the disclaimer to have been accepted. Thus, the sole issue on appeal is whether the stylization of Applicant’s mark renders it inherently distinctive and registrable on the Principal Register without a claim of acquired distinctiveness under Section 2(f) of the Trademark Act. For the reasons explained below, we find that the stylization elements of Applicant’s mark are not inherently distinctive, and therefore affirm the Examining Attorney’s refusal to register the mark on the Principal Register. When words which are primarily geographically descriptive of the origin of Applicant’s goods, and hence unregistrable, are presented in an inherently distinctive design, the design may render the mark as a whole registrable, provided that the 3 August 28, 2020 Denial of Applicant’s Request for Reconsideration. 4 Examining Attorney’s Brief, 13 TTABVUE 12. Serial No. 88445411 - 4 - words are disclaimed under Section 6 of the Trademark Act, 15 U.S.C. § 1056(a). See In re Venturi, Inc., 197 USPQ 714 (TTAB 1977); In re Jackson Hole Ski Corp., 190 USPQ 175 (TTAB 1976). As noted above, Applicant voluntarily disclaimed all wording in its proposed mark, but did not submit a claim of acquired distinctiveness under Section 2(f). “A display of descriptive or otherwise unregistrable matter is not registrable on the Principal Register unless the design features of the asserted mark create an impression on the purchasers separate and apart from the impression made by the words themselves, or if it can be shown by evidence that the particular display which the applicant has adopted has acquired distinctiveness.” In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1639 (Fed. Cir. 2016) (quoting Sadoru Grp., Ltd., 105 USPQ2d at 1485). Thus, the relevant inquiry is whether the stylization of the lettering creates “a separate and inherently distinctive commercial impression apart from the word itself,” such that the mark as a whole is not primarily geographically descriptive. Sadoru Grp., 105 USPQ2d at 1485-86. Applicant contends that when considered as a whole, the varying size and font of each word in its mark, coupled with their stacked arrangement, creates a distinctive commercial impression which is “more than just ‘minimal’ block letters and “script” as the Examining Attorney contends.5 Applicant maintains that the word “LITTLE,” “stylishly placed at the upper left shoulder of the much-larger term ‘ITALY’” incorporates “an exaggerated lower loop of the letter ‘L,’ which hangs off of the top- 5 Applicant’s Brief, p. 7; 11 TTABVUE 8. Serial No. 88445411 - 5 - left corner of ‘ITALY’ in a distinctive manner.”6 Applicant submits that the letter “L” in the word is exaggerated so as to underscore the stylization of “LITTLE.”7 In addition, Applicant points to the positioning and contrasting size of each word and block letter presentation of “ITALY” and “IN THE BRONX” as contributing to the overall distinctiveness of the mark. In support of its position, Applicant relies on Jackson Hole, supra, in which the applicant applied to register the mark shown at right on the Principal Register, with a disclaimer of the geographic designation “Jackson Hole.” The examining attorney refused registration of the mark as primarily merely geographically descriptive. The Board reversed the refusal, agreeing with applicant’s position that “its mark consists not only of the mere geographical designation but also of the letters ‘JH’ displayed in a distinctive and prominent fashion so as to create a commercial impression in and of themselves ...” Jackson Hole, 190 USPQ at 176. In particular, applicant persuasively argued and convinced the Board … that the letters “JH” are twice the size of the other letters; that unlike any of the other letters, they are partly joined together, creating the visual impression of a monogram; and that they are set down from the rest of the letters, which positioning has the effect of highlighting the “JH” couplet. Id. Applicant postulates that its mark is “at least as distinctive” as the mark at issue in Jackson Hole. Applicant’s characterization of Jackson Hole is misguided. The 6 Id. 7 Id. Serial No. 88445411 - 6 - underlying logic of Jackson Hole is not present in the mark before us. None of the letters in Applicant’s mark are arranged in a manner that creates a separate and inherently distinctive commercial impression similar to the “JH” monogram. Applicant also attempts to distinguish its mark from the following cases cited by the Examining Attorney as support for the finding that Applicant’s mark is insufficiently stylized:8 Northland Aluminum Prods., 227 USPQ at 964 (affirming the Board’s genericness refusal on the basis that the stylized mark that was “not so distinctive as to create a commercial impression separate and apart from the word itself”): Sadoru Grp., 105 USPQ2d at 1489 (affirming mere descriptiveness refusal on the ground that “the letters appear to be much more in the nature of slightly stylized block lettering than they do as a form of … the brushstrokes of Japanese calligraphy”): In each of the above cases, the stylization of the wording was found not to be inherently distinctive. Applicant attempts to distinguish these cases on the basis that each mark is comprised of a single word, on a single line, in title capitalization form 8 In re Cordua Restaurants, Inc., supra, discussed by the Examining Attorney is inapposite because it involved a different procedural posture. Cordua did not argue that the stylization (i.e., the graphic quality) of the stylized form of CHURRASCOS was inherently distinctive as is the case here. Rather, it argued only that the underlying word mark has acquired distinctiveness. Serial No. 88445411 - 7 - whereas its mark is comprised of multiple words displayed in varied styled fonts in a unique stacked arrangement. While acknowledging that inquiries of this type are subjective and fact specific, in this instance, the mark involved in In re Bonni Keller Collections, Ltd., 6 USPQ2d 1224 (TTAB 1987) presents a more apt analogy. In that case, the Board found that the presentation of the mark displayed in a combination of cursive and block style lettering was “rather ordinary” and nondistinctive. Id. at 1227. We similarly find the cursive and block style lettering in Applicant’s mark “rather ordinary” and not in any manner projecting a different commercial impression apart from the wording. None of the font styles rise to the level of creating a commercial impression that is separate and apart from the wording itself. The same is true with regard to the stacking of each word which, as arranged, fails to depict any separate impression or design. See In re Anchor Hocking Corp., 223 USPQ 85, 87 (TTAB 1984) (“Nor do we find convincing applicant’s argument that its designation is distinctively displayed because the word “MICROWAVE” is smaller than, and positioned over the left-hand side of, the word “TURNTABLE.”). As aptly put by the Examining Attorney, “applicant does not present a coherent idea of what image or impression the mark’s stylization conveys. The mark’s stylization does not suggest, for example, an image evoking Italy or New York City (such as an abstracted Leaning Tower of Pisa or Bronx-Whitestone Bridge), pasta sauce, or anything that is ‘so striking, unique or distinctive in character.’”9 9 Examining Attorney’s Brief, 13 TTABVUE 14-15. Serial No. 88445411 - 8 - In addition, Applicant has not taken into account the Board’s determinations involving the marks shown at right that were found to be insufficiently stylized and therefore not inherently distinctive. The overlapping letters “o” and “d” in the mark MICRODENIER and design, and the stylized letter “k” in the mark 24KGOLD and design, arguably display more stylization than Applicant’s applied-for mark. 10 11 Simply put, when we view the Applicant’s mark as a whole and apply the Board’s precedent, we find that the level of stylization in Applicant’s mark does not create a separate and inherently distinctive commercial impression apart from the wording itself. The determination regarding whether stylization is sufficient to carry a mark to registration on the Principal Register is “in the eyes of the beholder,” Jackson Hole, 190 USPQ at 176, and “a necessarily subjective one.” Bonni Keller, 6 USPQ2d at 1227. Nonetheless, the stylization of Applicant’s mark is not sufficiently striking, unique, or distinctive as to make an impression on purchasers separate from the wording in the mark. Accordingly, we do not find the mark as a whole to be inherently distinctive. Decision: The refusal to register is affirmed. 10 See In re Guilford Mills, Inc., 33 USPQ2d 1042 (TTAB 1994). 11 See In re Project Five, Inc., 209 USPQ 423 (TTAB 1980).