Jonmor Investments, Inc.

Trademark Trial and Appeal Board

Jun 7, 2012

No. 77500870 (T.T.A.B. Jun. 7, 2012)

Mailed: June 7, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Jonmor Investments, Inc.
________

Serial No. 77500870
_______

Carl H. Pierce of Reed Smith LLP for Jonmor Investments,
Inc.

Barney L. Charlon, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Grendel, Bergsman, and Wellington,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Jonmor Investments, Inc. has filed an application to
register the proposed mark BUCKET O’ RIBS (in standard
characters) for “pork ribs”1 in International Class 29.2

1 Applicant, in its appeal brief, proposed an amendment to the
identification of the goods to “packaged pork ribs.” The
examining attorney states that he “has no objection to this
narrowing of the identification of goods, it is irrelevant to the
refusal.” Brief, at (unnumbered) p. 1 (fn 1). However, in its
reply brief, applicant reverts to “pork ribs” as the identified
goods. Regardless of whether the term “packaged” prefaces the
identification, our analysis and ultimate decision regarding the
refusal remains the same.
2 Application Serial No. 77500870 is based on an allegation of
first use anywhere and in commerce on July 31, 2000.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77500870
2
Applicant initially sought to register the mark on the
Principal Register and this was refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on
the basis that the mark is merely descriptive of
applicant’s goods. Applicant subsequently amended the
application to seek registration on the Supplemental
Register. In response, the examining attorney refused
registration on the Supplemental Register under Section 23
of the Trademark Act, 15 U.S.C. § 1091, on the ground that
BUCKET O’ RIBS is generic and thus incapable of
distinguishing applicant’s goods.
Applicant voluntarily entered a disclaimer of the term
RIBS in the application.
Applicant filed a request for reconsideration which
the examining attorney denied. Applicant has appealed the
refusal and the sole issue on appeal is whether BUCKET O’
RIBS is generic for applicant’s goods and, thus,
unregistrable on the Supplemental Register.
Procedural Issues
Before addressing the merits of applicant’s appeal, we
note that there remains some confusion on applicant’s
behalf regarding the Examining Attorney’s refusals to
registration based on the mark being merely descriptive
and/or generic, and applicant’s reaction thereto by
Serial No. 77500870
3
amending the application to seek registration on the
Supplemental Register. The Board explained in its August
3, 2010 order that applicant’s conduct of amending the
application to register the mark on the Supplemental
Register, then withdrawing the amendment, and then
reasserting such amendment is inappropriate. Clearly,
there has unnecessary delay in the prosecution of this
application, including several “final” Office actions,
remands for reconsideration, and supplemental briefing.
Applicant apparently did not fully grasp the content of the
Board’s order; rather, in its reply brief, applicant
references the Board order and states:
[n]owhere in this missive, however, did the Board
acknowledge that the entry, withdrawal, and subsequent
re-entry of the conditional amendment to the
Supplemental Register were the result of the changing
arguments of the [Examining Attorney], who first
rejected [the mark] as being merely descriptive, under
which the conditional amendment was appropriate, then
changed the rejection to gernericness (sic), under
which the conditional amendment was inappropriate,
before returning again to basing the rejection on the
mark as being merely descriptive, under which the
conditional amendment was once again appropriate.

Reply Brief, (unnumbered) p. 4. Applicant goes on to
explain how it was perplexed that the examining attorney
was changing the basis for refusal from “merely
descriptive” to “genericness” in response to applicant’s
Serial No. 77500870
4
amendment to seek registration on the Supplemental
Register.
Applicant’s argument that the examining attorney was
inconsistent in asserting a basis for refusing registration
is not well taken. The examining attorney’s handling of
the application was in accord with the Trademark Manual of
Examining Procedure (TMEP); in particular, we refer to the
TMEP provisions regarding applications for marks that the
Office believes are generic for the identified goods. See
TMEP Section 1209.02(a) (7th Ed. rev. October 2010) (“Even
if it appears that the mark is generic, the proper basis
for the refusal is...descriptiveness. ...If the applicant
responds to a [descriptiveness] refusals by amending its
application to the Supplemental Register,...the examining
attorney should then issue a nonfinal action refusing
registration [based on] § 23 of the Act...”). See also,
Section 1209.03 (considerations relevant to determination
of descriptiveness or genericness). Simply put, the Office
does not assert that a mark is generic and thus incapable
of distinguishing the identified goods and/or services
under section 23 unless and until applicant amends the
application to seek registration on the Supplemental
Register. Thus, the Examining Attorney was procedurally
correct in arguing that the mark was “merely descriptive”
Serial No. 77500870
5
(under Section 2(e)(1)) when applicant sought registration
on the Principal Register and then arguing that the mark is
generic and thus incapable of distinguishing applicant’s
goods (under Section 23) once applicant amended the
application to seek registration on the Supplemental
Register.
We now turn to the merits of the refusal to
registration.
Section 23: Generic Terms Incapable of Distinguishing
Goods and/or Services

When a proposed mark is refused registration under
Section 23 because it is generic and thus incapable of
distinguishing applicant’s goods, the examining attorney
has the burden of proving genericness by "clear evidence."
In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d
1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987); see also In re
Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111 (Fed.
Cir. 1987). The critical issue is to determine whether the
record shows that members of the relevant public primarily
use or understand the term sought to be registered to refer
to the category or class of goods or services in question.
H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs,
Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986); In
re Women's Publishing Co. Inc., 23 USPQ2d 1876, 1877 (TTAB
Serial No. 77500870
6
1992). Making this determination “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?” Ginn, 228 USPQ at 530.
Evidence of the public’s understanding of a term may be
obtained from any competent source, including testimony,
surveys, dictionaries, trade journals, newspapers and other
publications. Merrill Lynch, 4 USPQ2d at 1143, and In re
Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ
961, 963 (Fed. Cir. 1985).
With respect to the question of what is the genus or
category of goods at issue in this case, the examining
attorney argues that it is “a portion of ribs provided in a
bucket.” Brief, (unnumbered) p. 2. Applicant contends
that the “goods at issue in the present case are pork ribs
packaged in a tub-like container sold in retail channels
such as grocery stores.” Brief, p. 3. These two suggested
categories of goods are too narrowly defined. On the other
hand, we find that the genus of goods is adequately
identified as “pork ribs,” as recited in the application.
We now look to whether the purchasing public
understands BUCKET O’ RIBS to refer to pork ribs. The
examining attorney argues that the letter “O” followed by
Serial No. 77500870
7
an apostrophe is an informal variant of the word “of” and
the proposed mark is the equivalent of “bucket of ribs.”3
He argues that the public understands “bucket of ribs” or
“bucket o’ ribs” as a reference to a portion of ribs,
namely, ribs being served or sold in a bucket. In support,
he submitted dictionary definitions for each term in the
mark as well as excerpts from various websites showing use
of the wording “bucket(s) of ribs” and “bucket(s) o’ ribs,”
to demonstrate that the public understands that the mark
primarily refers to a recognized portion or manner of
serving of ribs in a bucket. Some examples of the website
excerpts include:
Avonia Tavern restaurant offering a menu item named
“Bucket of Ribs” described as “20 ribs in your choice
of sauce,” in addition to “Bucket of Chicken”
[www.avoniatavern.com];4

A review website mentioning an item “Bucket of Ribs
and Wings” from Lester’s Roadside BBQ, described as “a
full slab of ribs and 18 wings...”
[www.foodiebytes.com];5

Chicken Delight restaurant offering a menu items,
including “Ribs” being sold in various “Bucket” sizes
and a special described as “Small Bucket Ribs,” as
well as “Buckets of Chicken” and (in various offerings
depending on the numbers of chicken pieces).
[www.chickendelightnb.com];6

3 “O’” is defined as an informal variant of the preposition “of.”
The American Heritage Dictionary of the English Language (4th
edition, 2000). See September 23, 2008 Office action.
4 Printouts from website attached to Office action dated November
17, 2009.
5 Id.
6 Id.
Serial No. 77500870
8

“Rookees Sports Bar Lounge Grill” offering menu item
“Bucket O’ Ribs” which is described as “a bucket of
tender, slow cooked, baby back ribs...” Other menu
items (in the same font) include “Popcorn
Chicken...Buffalo Chicken Wings...Halibut Fish
Taco...”
[www.rookees.com];7

Whisky River restaurant menu offering “Buckets”
category of menu items, including a “Bucket O Ribs”
which is described as “a full rack of bbq’d pork ribs
cut up and served in a bucket with fries.” The menu
also includes “Bucket O Shrimp...Bucket O
Sliders...Bucket O Wings.”
[www.whiskeyriverhouston.com];8

An amusement park website identifying various food
stands in the park, including Fest Haus Show Grill
that is touted as “Experience a unique variety of food
such as roasted corn, turkey legs and bucket-o-ribs’.”
[www.sixflags.com]9

A business classifieds website identifying Spartan
Burg Meat Processing Co. Inc. and their offerings
include “...Beef Ribs, Bbq Pork, Bbq Beef, And Bucket
O Ribs...”
[www.privatelabeltrader.com];10 and

Ribs ‘R Us restaurant with a menu section titled
“Family Bucket Deals” that includes “Half bucket o
ribs & half bucket o chicken...” and other
combinations mentioning “half bucket o ribs”
[www.allmenus.com].11

The examining attorney also points to applicant’s
packaging for its goods to show that applicant’s own goods,

7 Printouts from website attached to Office action dated April
26, 2010.
8 Id.
9 Id.
10 Printouts from website attached to Office action dated
September 7, 2010.
11 Printouts from website attached to Office action dated March
30, 2011.
Serial No. 77500870
9
the pork ribs, are sold in a bucket and applicant itself
uses the term “bucket” generically in connection therewith.
Specifically, the directions describe heating the ribs in
the provided “microwave safe bucket.”
The record in this case clearly establishes that
BUCKET O’ RIBS is commonly used by restaurants as a generic
reference to a portion or serving of ribs. Thus,
applicant’s proposed mark BUCKET O’ RIBS precisely names
the identified goods, i.e., pork ribs, and the serving size
or container in which they are provided. We do not agree
with the suggestion or argument that selling ribs in a
bucket is unique or that the letter “O” followed by an
apostrophe is somehow a fanciful parlance. Indeed, the
evidence clearly shows that that the serving of ribs in a
bucket has been adopted by many establishments and the “O’”
has also been used in connection with such good but will
also be understood to mean “of.” While “bucket of ribs” or
“bucket o’ ribs” may not be a ubiquitous term, its use is
akin to a “bowl of pasta” or “bushel of crabs” or a “case
of beer.” Applicant has merely taken a serving portion or
manner in which a food item is frequently served and seeks
to register this as a trademark. Ultimately, we find that
consumers will understand the proposed mark as merely a
Serial No. 77500870
10
generic reference to ribs, including pork ribs, cut into
pieces and served in a bucket.
Applicant argues that its goods are not sold in
restaurants but are “sold through grocery stores and food
retailers.” Brief, p. 5. However, applicant’s
identification of goods is not limited regarding trade
channels and leaves open the possibility that applicant’s
pork ribs may be sold all normal outlets for such goods,
including restaurants. We must consider that, if allowed
to register the proposed mark, applicant would be given
exclusive rights to use the term BUCKET O’ RIBS on pork
ribs being sold both in retail food outlets as well as
restaurant or carryout food establishment.
Applicant also points to approximately fourteen
registrations that have issued for marks beginning with the
term BUCKET O and similar terms such as TUB O or BOX O
(some with or without an apostrophe). First, we note that
ten of these registrations haven been cancelled. More
importantly, as the examining attorney points out in his
brief, the Board is not bound by previous decisions made by
trademark examining operation and this appeal is decided on
its own merits with the record before us. See, e.g., In re
Shapely, Inc., 231 USPQ 72, 75 (TTAB 1986). Obviously the
Serial No. 77500870
11
applications are unique to the particular mark and goods
and/or services identified in the application.
In view of the above and based on this record, the
examining attorney has clearly established that BUCKET O’
RIBS is generic for pork ribs and thus, under the language
of Section 23, the proposed mark is not “capable of
distinguishing the applicant’s goods or services.” 15
U.S.C. § 1091(c).
Decision: The refusal to register on the Supplemental
Register under Section 23 is affirmed.