Promark Inter-national, Inc.

Trademark Trial and Appeal Board

Jan 12, 2004

No. 76240587 (T.T.A.B. Jan. 12, 2004)

Mailed: January 12, 2004
Paper No. 19
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Promark International, Inc.
________
Serial No. 76240587
_______
Bert A. Collison and Gianfranco G. Mitrione of Duane Morris LLP
for Promark International, Inc.
Brendan D. McCauley, Trademark Examining Attorney, Law Office 114
(Margaret Le, Managing Attorney).
_______
Before Seeherman, Hohein and Bucher, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Promark International, Inc. has filed an application to
register the term "FAST FOOD FRIES" for "frozen potatoes."1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
ground that, when used in connection with applicant's goods, the
term "FAST FOOD FRIES" is merely descriptive thereof.
1 Ser. No. 76240587, filed on April 16, 2001, which is based on an
allegation of a date of first use anywhere and in commerce of January
31, 1999.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76240587
2
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it forthwith conveys
information concerning any significant ingredient, quality,
characteristic, feature, function, purpose, subject matter or use
of the goods or services. See, e.g., In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987) and In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). It is not
necessary that a term describe all of the properties or functions
of the goods or services in order for it to be considered to be
merely descriptive thereof; rather, it is sufficient if the term
describes a significant attribute or idea about them. Moreover,
whether a term is merely descriptive is determined not in the
abstract but in relation to the goods or services for which
registration is sought, the context in which it is being used or
is intended to be used on or in connection with those goods or
services and the possible significance that the term would have
to the average purchaser of the goods or services because of the
manner of such use. See In re Bright-Crest, Ltd., 204 USPQ 591,
593 (TTAB 1979). Thus, "[w]hether consumers could guess what the
product [or service] is from consideration of the mark alone is
not the test." In re American Greetings Corp., 226 USPQ 365, 366
(TTAB 1985).
Ser. No. 76240587
3
Applicant contends that the term "FAST FOOD FRIES,"
when considered in its entirety, is suggestive rather than merely
descriptive of its frozen potatoes, arguing in its main brief
that such term fails to convey information which immediately
"indicate[s] the purpose, function or use of the product." As to
the "NEXIS" evidence made of record by the Examining Attorney,
applicant asserts in its main brief that:
The Examining Attorney attaches excerpts
from a computerized database that reference
the phrase "fast food fries." All of the
excerpts cited by the Examining Attorney
refer to "fast food fries" as a cooked food
item sold in restaurants and not to
applicant's goods. Applicant's goods are
frozen french fried potatoes sold in a retail
grocery store's frozen food section to be
cooked by the purchaser in his or her home.
Since applicant's product is sold frozen in a
retail grocery store, it is doubtful that a
purchaser would think this product was the
same as or similar to the food item sold in a
restaurant. Therefore, the mark FAST FOOD
FRIES does not merely describe the cooked
food item referenced in the computer database
excerpts.
In addition, applicant urges in its main brief that
"[d]espite the many independent definitions of the words 'fast,'
'food' and 'fries' in and of themselves," a "combination of
descriptive words may result in an arbitrary unitary designation
which may function as a trademark." Here, applicant argues,
"even if the Examining Attorney considers the component word
portions of Applicant's mark to be descriptive," the "repetition
of the initial consonant sounds in the adjacent three words which
comprise Applicant's mark creates a unitary whole entitled to
protection as a non-descriptive mark." According to applicant,
its "[u]se of the mark FAST FOOD FRIES does not sequester the
Ser. No. 76240587
4
appropriate and apt term to describe a frozen side dish" inasmuch
as "[i]t would not occur to anyone to describe Applicant's goods,
or their intended use, as FAST FOOD FRIES" and thus a "competitor
would not need the mark ... to describe the products listed in
Applicant's application." Instead, applicant contends that a
"consumer viewing the phrase would be required to use his or her
imagination or thought to conclude that the phrase describes the
products listed in Applicant's application." Any doubt in such
regard, applicant insists, should be resolved in its favor,
citing In re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972).
The Examining Attorney, on the other hand, principally
maintains in his brief that "[w]hen viewed in relation to the
applicant's goods, the applicant's mark describes a
characteristic or purpose of the applicant's goods, namely, that
the frozen potatoes are used to make FAST FOOD FRIES."
Specifically, in support thereof, the Examining Attorney cites
definitions which he made of record from Merriam-Webster's
Collegiate Dictionary (10th ed. 1998) in which the adjective
"fast-food" is defined in relevant part as meaning "of, relating
to, or specializing in food that can be prepared and served
quickly" and the noun "fry" and its plural "fries" are set forth
in pertinent part as connoting "FRENCH FRY--usu. used in pl."
While conceding that a "mark which combines descriptive terms may
be registrable if the composite creates a unitary mark with a
separate, nondescriptive meaning," the Examining Attorney
concludes that "in light of the dictionary and common meaning of
the wording FAST FOOD and FRIES," the "applicant's mark is merely
Ser. No. 76240587
5
a combination of descriptive terms" which, when taken together,
"indicate the exact purpose of the applicant's frozen potatoes."
Applicant, the Examining Attorney notes, has not provided any
argument "about the nature of any possible non-descriptive
meaning for the wording in the mark."
Relying, in addition, on excerpts retrieved from his
searches of the "NEXIS" database, the Examining Attorney contends
that such evidence demonstrates that "the wording FAST FOOD FRIES
[is used] to indicate a type of french fried potato, the end
product of the applicant's goods." Representative examples of
such excerpts are set forth below (emphasis added):
"Although sales of frozen potatoes and
fast-food fries continue to soar, consumption
of fresh potatoes at home declined 12 percent
in the last decade ...." -- Akron Beacon
Journal, July 24, 2002;
"The real problem ... is that virtually
all fast-food fries are made using
hydrogenated vegetable oils, which contain
trans-fatty acids." -- Los Angeles Times,
July 22, 2002;
"The culinary gospel according to Kroc
put beef tallow in the deep-fryer to create
the tastiest of fast-food fries." -- Aberdeen
American News, July 7, 2002 (article
headlined: "McDonald's may get more lawsuits
with those fries");
"Pommes frites ($6) were your basic
fast-food fries served in a paper cone." --
Orlando Sentinel, March 31, 2002;
"Unlike fast food fries, these were made
from freshly cut potatoes and cooked to a
deep golden brown." -- Times Union (Albany,
NY), February 14, 2002;
"The Airfries contain less than one
quarter the fat of normal fast-food fries."
-- Restaurant Business, December 15, 2001;
Ser. No. 76240587
6
"After all, kids have grown up gobbling
fast-food fries." -- Miami Herald, April 29,
2001;
"[Consumers] each eat about 130 pounds
of potatoes per year. Only 9 percent of
those are mashed, 6 percent as baked and 6
percent as chips. Lately, it all comes down
to the less healthy fast food fries." --
Spokesman-Review (Spokane, WA), March 28,
2001;
"[T]hese frozen fries are excellent.
That shouldn't really be a surprise
considering the company that makes them--Lamb
Weston--also makes some of our favorite fast-
food fries, including McDonald's and Burger
King." -- San Francisco Chronicle, September
20, 2000;
"Bojangles is offering its 'famous
french fry seasoning' to consumers who want
to try and create fast-food fries at home."
-- Herald-Sun (Durham, NC), October 22, 1999;
"By far the greatest effort has gone
into the potato that makes fast-food fries."
-- Whole Earth, June 22, 1999; and
"[T]he French fries were not the bigger,
chunkier British style, but more like the
slimmer, crisper American fast-food fries."
-- Ventura County Star (Ventura County, CA),
December 4, 1998.
Furthermore, as the Examining Attorney accurately
observes in his brief, "the applicant's specimen of record
supports the ... position that the applicant's mark merely
describes the purpose for the applicant's frozen potatoes." In
particular, the Examining Attorney points out that:
Underneath the applicant's use of the mark on
the packaging for the goods, the applicant
uses the wording FRENCH FRIED POTATOES. The
use of this wording ... reinforces the nature
of the goods as frozen potatoes used to make
fries, namely, fast food fries. The
descriptive nature of the applicant's mark is
Ser. No. 76240587
7
[also] reinforced by the specimens of
record[,] which feature a picture a picture
of fries. Thus, contrary to the applicant's
arguments, the applicant's mark describes the
applicant's goods in a direct or immediate
manner. The specimens of record are ...
additional evidence of the descriptive nature
of applicant's mark.
Moreover, with respect to applicant's contention that
its "mark contains alliteration based on the initial F consonant
sound" which serves to "create a unitary mark entitled to
protection as a non-descriptive mark," the Examining Attorney
asserts in his brief that such is not the case because, as shown
by the evidence of record, "the wording in the mark has meaning
as a type of fries." In consequence thereof, the Examining
Attorney reasons that just because each of the words which form
the phrase "FAST FOOD FRIES" begins with the same letter would
not "cause purchasers to miss the merely descriptive significance
of the terms" when combined. Thus, according to the Examining
Attorney, a "consumer viewing the phrase would not be required to
use his or her imagination or thought to conclude that the phrase
describes the applicant's product," particularly "in light of the
dictionary definitions of the wording FAST FOOD and FRIES and the
common use of the phrase as evidence[d] by the excerpted articles
of record."
Lastly, the Examining Attorney maintains in his brief
that, inasmuch as "[t]he end purpose of the applicant's frozen
potatoes," as confirmed by the packaging for its product, "is to
make french fried potatoes or fries," it is plain that
competitors of applicant would "need the mark FAST FOOD FRIES to
describe frozen potatoes." Specifically, the Examining Attorney
Ser. No. 76240587
8
points out that "the evidence of record ... indicates that this
exact wording indicates a genre of fries" and thus "the ... mark
FAST FOOD FRIES describes the purpose of the applicant's frozen
potatoes, namely, [that] they are used to make fast food fries."
Upon consideration of the evidence and arguments
presented, we agree with the Examining Attorney that, when
considered in its entirety, the term "FAST FOOD FRIES" is merely
descriptive of applicant's "frozen potatoes" because it
immediately conveys, without speculation or conjecture, that the
purpose or use of such goods is to make or prepare the product
known as fast-food French fries. Clearly, applicant's "frozen
potatoes" are goods which, when prepared for consumption by being
cooked, encompass the style or category of French fried potatoes
commonly referred to as fast-food fries. Nothing in the term
"FAST FOOD FRIES" is therefore incongruous, ambiguous or
suggestive, nor is there anything, including the alliteration in
such term, which would require the exercise of imagination,
cogitation or mental processing or necessitate the gathering of
further information in order for the merely descriptive
significance thereof to be readily apparent to purchasers and
other consumers of applicant's goods. The fact, moreover, that
actual and potential competitors of applicant remain free to
describe their frozen potatoes as "FRENCH FRIED POTATOES," as
applicant does on the packaging for its product, and likewise are
entitled to refer to such goods by the individual words "fast-
food" and/or "fries," does not mean that the term "FAST FOOD
FRIES" is not merely descriptive of applicant's goods. See,
Ser. No. 76240587
9
e.g., Roselux Chemical Co., Inc. v. Parsons Ammonia Co., Inc.,
299 F.2d 855, 132 USPQ 627, 632 (CCPA 1962). Such term, rather,
conveys forthwith that applicant's frozen potatoes are of the
kind or type of French fries which are commonly known, to
restaurant operators as well as to ordinary consumers, as fast-
food fries.
Decision: The refusal under Section 2(e)(1) is
affirmed.