PI-Design AG

Trademark Trial and Appeal Board

Jul 29, 1999

No. 74580176 (T.T.A.B. Jul. 29, 1999)

Oral Hearing:
June 16, 1998
Paper No. 23
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 7/29/99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re PI-Design AG
___________
Serial No. 74/580,176
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J. W. Gipple of Gipple & Hale for applicant.
Angela Lykos and Elizabeth Wood, Trademark Examining
Attorneys, Law Office 102 (Thomas V. Shaw, Managing
Attorney).
____________
Before Seeherman, Hanak and Walters, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
PI-Design AG has filed a trademark application to
register on the Principal Register the mark FRENCH PRESS
for “non-electric coffee makers.”1
The Examining Attorney refused registration under
Section 2(e)(1) of the Trademark Act, 15 U.S.C. 1052(e)(1),
Serial No. 74/580,176
2
on the ground that applicant’s mark is merely descriptive
of the services identified in the application. Following
the Examining Attorney’s final refusal to register on the
ground of mere descriptiveness, applicant filed its appeal
to the Board along with its request for remand and
reconsideration of its amendment, proffered therewith,
asserting that its applied-for mark has acquired
distinctiveness under Section 2(f) of the Trademark Act, 15
U.S.C. 1052(f). In support of its claim, applicant
submitted the declaration of an officer attesting to
applicant’s long and extensive use of the mark in the
United States in connection with the identified goods since
1993; and attesting to annual sales of over $5 million, as
well as annual advertising expenditures of between
approximately $200,000 and $1 million, both sets of figures
for the years 1993 through the first 10 months of 1996.
Additionally, the officer attested to applications and
registrations in other countries, which are of no relevance
to the issues before us; and applicant submitted samples of
its advertising materials.
Following remand for consideration of applicant’s
claim under Section 2(f), the Trademark Examining Attorney

1 Serial No. 74/580,176, in International Class 21, filed September 29,
1994, based on use of the mark in commerce, alleging dates of first use
and first use in commerce as of September 29, 1993.
Serial No. 74/580,176
3
has finally refused registration under Section 2(e)(1) of
the Trademark Act, 15 U.S.C. 1052(e)(1), on the ground that
FRENCH PRESS, when used in connection with non-electric
coffee pots, is generic and, thus, incapable of functioning
as a source-identifying mark; and, further, even if FRENCH
PRESS is only merely descriptive of such goods, that
applicant’s proof of acquired distinctiveness, under
Section 2(f), is insufficient evidence of acquired
distinctiveness.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, and an oral hearing
was held.2
Genericness
The first question before us is whether FRENCH PRESS
as used in connection with non-electric coffee pots is
generic. The Examining Attorney contends that the public
understands the term “French press” to be the name of a
type of non-electric coffee maker, also referred to as a
“plunger pot,” consisting of a plunger device in a
cylindrical container. In support of her position, the
Examining Attorney submitted excerpts of numerous articles

2 At the oral hearing applicant and the Examining Attorney stipulated
that evidence submitted by the Examining Attorney with her appeal brief
and at the hearing, and by applicant with its reply brief, form part of
the record. Thus, we have considered this evidence.
Serial No. 74/580,176
4
from the LEXIS/NEXIS database; an excerpt from a book
entitled The Joy of Coffee (Chapters Publishing Ltd. 1995);
an excerpt from a dictionary; and an excerpt from The
Chicago Style Manual (14th ed.).
Applicant contends that it owns a 70% to 80% share of
the U.S. market for plunger coffee pots and, thus, “that
most references in the press are to Applicant’s FRENCH
PRESS coffee makers, even though they are not clearly
identified as such”; that the articles submitted by the
Examining Attorney “do not necessarily demonstrate that the
purchasing public regards FRENCH PRESS as a generic term …
[t]he articles may simply reflect improper and careless use
of a trademark and public ambiguity as to the significance
of the term FRENCH PRESS”; and that “plunger pot” rather
than FRENCH PRESS is the generic term for the goods herein.
Applicant concludes that doubts as to whether the relevant
public views FRENCH PRESS as a generic term should be
resolved in applicant’s favor. In support of its position,
applicant submitted two declarations by Ms. Ellen Wernick
regarding the relevance of initial capital letters in
determining whether a term is used in a trademark versus a
generic manner; the declaration of acquired distinctiveness
of its officer, Carsten Joergensen, attesting to sales and
advertising expenditures; samples of its advertising
Serial No. 74/580,176
5
materials; and samples of advertising for its products in
third-party publications and catalogs.
The critical issue in genericness cases is whether
members of the relevant public principally use or
understand the term sought to be registered to refer to the
category or class of goods in question. In re Women’s
Publishing Co. Inc., 23 USPQ2d 1876, 1877 (TTAB 1992). Our
primary reviewing court has set forth a two-step inquiry to
determine whether a mark is generic: First, what is the
category or class of goods at issue? Second, is the term
sought to be registered understood by the relevant public
primarily to refer to that category or class of goods? H.
Marvin Ginn Corporation v. International Association of
Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed.
Cir. 1986). With respect to genericness, the Office has
the burden of proving genericness by “clear evidence”
thereof. In re Merrill, Lynch, Pierce, Fenner & Smith,
Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987).
We find that the record clearly establishes that the
category or class of goods in this case is a type of coffee
maker that consists of a container in which the coffee is
brewed by steeping the grounds in the water and plunging a
filter device down through the water to separate out the
coffee grounds. The evidence indicates that this is a
Serial No. 74/580,176
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distinct method for brewing coffee and is to be
distinguished from, among others, percolator, drip, or
espresso methods for brewing coffee. The evidence
indicates that coffee brewed in this manner in such a
coffee maker has identifiable characteristics.
Turning to the second part of the test for
genericness, we find that the relevant purchasing public
would understand FRENCH PRESS as referring to this category
or class of goods. We are not convinced otherwise by
applicant’s arguments to the contrary.
We find the articles excerpted by the Examining
Attorney, while including references to applicant and its
products, clearly use the term FRENCH PRESS to refer to a
type of coffee maker and a method for brewing coffee in
such a coffee maker. Following are several examples of the
excerpted articles submitted by the Examining Attorney:
The best coffee comes from a French press – one
of those contraptions that looks like a chemistry
beaker topped with a plunger. … The problem with
the French press is that it doesn’t even attempt
to keep the coffee hot. [The Denver Post,
January 15, 1997.]
… [W]hat should you give the java enthusiast on
your holiday list? One possibility is a simple,
elegant French press coffee maker. … French
presses are available at cookware and coffee
stores for anywhere from $20 to about $70. The
handsome 8-cup model shown, from Bodum, is $59.99
… AN 8-cup French press by Melior is $29.99 at
Serial No. 74/580,176
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Lechters … [The San Diego Union Tribune,
November 26, 1996.]
One of the best ways to prepare a pot of coffee
is the French-press method. … The best French
press I’ve seen is Emsa’s new Aromatic Coffee
Master. Unlike most presses, the Emsa unit has
clear markings … [The Atlanta Journal and
Constitution, October 22, 19995.]
BaristaMaster claims to be the first nationally
distributed espresso machine to include the
French press option. French press coffee has a
richer, more intense flavor than automatic drip.
… Specialty coffee houses are offering French
press coffee. [ASAP, October 16, 1995.]
He noted that “the French press pot is fun to use
and makes a great cup of coffee.” He recommends
models made by Bodum …” [The Courier-Journal,
November 30, 1994.]
Half the fun is all the little packages to open.
Add a coffee cup, French press or inexpensive
espresso maker as your budget allows. [Star
Tribune, November 20, 1994.]
He says he usually does a couple cups of French
press in the morning, then gets a couple shots of
espresso during the day at work … [The Baltimore
Sun, October 7, 1994.]
French press. This type of coffee maker consists
of a cylinder, usually glass … As you might
expect, the brew from French presses usually
contains more sediment than drip coffee. Clean-
up is messy, too. As with percolators, prices
vary. You can spend as much as $100. [Consumer
Reports, October, 1994.]
While FRENCH PRESS occasionally appears as an
adjective modifying generic nouns such as ‘coffee maker’ or
‘brewer,’ other methods for brewing coffee or types of
coffee, such as “espresso,” similarly appear as adjectives
Serial No. 74/580,176
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modifying the larger category of goods, “coffee maker” or
“brewer.”
Applicant contends that the term FRENCH PRESS appears
in most articles with an initial capitalized “F,” i.e.,
“French press,” and that the initial “F” in FRENCH would
not be capitalized if the term were generic. Applicant
contends that “in the context of shopping lists and most
non-technical journalism, trademarks are used without much
regard for their status.” Applicant argues that in the
articles submitted by the Examining Attorney “there is
reflected an editorial ambiguity as to treatment of the
term “FRENCH PRESS;” [however] there is a consistent
tendency to set it apart from its context by use of
quotation marks (“French-Press”), capitalization (FRENCH
PRESS), initial capitalization (French Press),
capitalization of “french” (“French press”)”; and that “all
of these uses suggest a vague public awareness that FRENCH
PRESS is other than a generic term.”
In this regard, applicant submits two declarations by
Ellen D. Wernick, who describes herself as “an expert on
editorial use, grammar and style as practiced in U.S.
publications.” Referring to the 13th ed. of A Manual of
Style (Chicago, 1982) and The U.S. Government’s Style
Manual (1984), Ms. Wernick concludes that “words derived
Serial No. 74/580,176
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from geographical names are not capitalized when the term
has achieved an independent common meaning (e.g., french
fries, french dressing)”; and that “the capitalization of
‘French’ in the context of ‘French press’ indicates the
term has not achieved an independent common meaning and is
not a generic term.”
We find that the Examining Attorney soundly rebuts
applicant’s witness’ statements with both her submission of
a 1994 dictionary excerpt showing an entire page of generic
terms beginning with the word “French” in which the initial
“F” in “French” is capitalized; and with her submission of
an excerpt from the 14th edition of The Chicago Style Manual
(1993), which includes the following statement:
Nouns, adjectives, and verbs derived from
personal, national, or geographical names are
often lowercased when used with a specialized
meaning. According to some authorities, however,
certain of these terms ought to be capitalized.
Authors and editors must decide for themselves,
but whatever choice is made should be followed
consistently throughout a work.
Clearly, the capitalization of the initial “F” in French is
not a settled matter; rather, it is a matter of individual
preference.
Further, while applicant characterizes some of the
evidence as demonstrating “improper or careless use” of its
trademark, the real question before us is, as a result of
Serial No. 74/580,176
10
such use, careless or otherwise, what is the relevant
public’s perception of the term FRENCH PRESS in connection
with the identified goods. We note that it is the careless
use of a term that, over time, renders that term
descriptive or generic to the relevant public. While we
have no evidence from which to conclude that FRENCH PRESS
was once understood as a trademark of applicant, the
evidence establishes that, at this time, the relevant
public will understand the term FRENCH PRESS in its generic
sense, as a type of coffee maker, when considered in
connection with applicant’s identified goods.
Looking at the third-party advertisements for
applicant’s products, we note that several of these
advertisements lend support to the conclusion that the term
FRENCH PRESS describes a type of coffee maker. The
following advertisements appear to use BODUM and BISTRO or
CHAMBORD as trademarks for a type of coffee maker
identified as a “French Press.”
BODUM BISTRO FRENCH PRESS (below)
Simple. Reliable. Amazingly well-priced. But
don’t let this affordability fool you: the
Bistro possesses all of the serious coffee
brewing prowess of any French Press. Simply pour
in the grounds, add hot water, wait four minutes
(no more, no less) and push. The plunger’s fine
mesh screen filters downward, leaving the grounds
at the bottom and you with a perfectly brewed,
thickly rich cup of coffee.
Serial No. 74/580,176
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BODUM CHAMBORD
FRENCH PRESS (above)
Of all the ways to brew coffee at home, we prefer
the plunger method. The coffee is more flavorful
… no papery-filter taste in the way. Just a
full-bodied, fragrant cup to enjoy. This, of
course, is the Ferrari of French Presses.
Stylish. Chrome-plated. Elegant and authentic.
12 cup Chambord Coffee Maker. The quality and
beauty of Bodum’s Chambord coffeemaker is sure to
please any coffee connoisseur. French Press
coffee delivers the freshest essence and is
impressive for tableside service.
Finally, we are not convinced by applicant’s
additional argument that “plunge pot,” rather than FRENCH
PRESS, is the generic term available to the public. A term
does not lose its generic significance simply because there
are other synonymous generic expressions available for the
public to use. See, In re Gould Paper Corp., 5 USPQ2d 1110
(Fed. Cir. 1987).
Acquired Distinctiveness
If, ultimately, the applied for mark is found not to
be generic, we would need to address the question of
whether applicant has established that FRENCH PRESS has
acquired distinctiveness. Therefore, in order to render a
complete opinion, we consider this issue now. In this
regard, applicant has provided a declaration indicating use
since 1993 and sales and advertising figures, along with
several advertising brochures. We note that applicant has
Serial No. 74/580,176
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not provided any evidence of consumer perception.3 In view
of the highly descriptive nature of the mark, we find that
the evidence of record is insufficient to establish that
FRENCH PRESS has acquired distinctiveness in connection
with non-electric coffee makers.
Decision: The refusal to register on the ground that
the mark herein is generic of the identified goods is
affirmed. Alternatively, should applicant ultimately
prevail on the issue of genericness, the refusal to
register, under Section 2(e)(1) of the Act, on the ground
that applicant’s claim under Section 2(f) is insufficient
evidence of acquired distinctiveness herein is affirmed.
E. J. Seeherman
E. W. Hanak
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board

3 While applicant states that it has a 70% to 80% market share for these
types of coffee makers, applicant has submitted no evidence that the
purchasers of such coffee makers understand FRENCH PRESS to be
applicant’s trademark identifying these goods.
Serial No. 74/580,176
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