Restoration Spirits, Inc.

Trademark Trial and Appeal BoardSep 19, 2014

No. 85575688 (T.T.A.B. Sep. 19, 2014)

This Opinion is Not a Precedent of the TTAB Mailed: September 19, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Restoration Spirits, Inc. _____ Ser. Nos. 85575674 85575675 85575683 85575688 85575693 _____ Nigamnarayan Acharya of Seyfarth Shaw LLP, for Restoration Spirits, Inc. Anne M. Farrell, Trademark Examining Attorney, Law Office 118, Thomas G. Howell, Managing Attorney. _____ Before Bucher, Kuczma and Adlin, Administrative Trademark Judges. Opinion by Kuczma, Administrative Trademark Judge: Restoration Spirits, Inc. (“Applicant”) seeks registration on the Principal Register of: ORIGINAL CULINARY LIQUOR, ORIGINAL CULINARY SCOTCH, ORIGINAL CULINARY VODKA, ORIGINAL CULINARY GIN, and ORIGINAL CULINARY SPIRITS (all in standard characters) for: Serial Nos. 85575674, 85575675, 85575683, 85575688, 85575693 - 2 - Distilled spirits in International Class 33.1 Registration of Applicant’s applied-for marks has been refused under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that each “merely describes a characteristic of Applicant’s goods.” After the Examining Attorney made the refusals final, Applicant filed requests for reconsideration which were denied, and appealed to this Board. Applicant and the Examining Attorney filed briefs in each appeal. For the reasons set forth below, the refusals to register are affirmed. I. Consolidation of Appeals We have considered the arguments and evidence filed in each case. The refusals to register, records and briefs contain similar evidence and arguments, and the appeals involve common factual and legal issues. They are therefore consolidated. II. Applicable Law A term is merely descriptive within the meaning of § 2(e)(1) if it immediately conveys knowledge of a quality, characteristic, function, feature, purpose or use of the goods with which it is used. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) and In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Whether a particular term is merely descriptive must be determined not in the abstract, but in relation to the goods or services for which registration is sought, the context in which the term is used, and the possible 1 Application Serial Nos. 85575674, 85575675, 85575683, 85575688 and 85575693 were filed on March 21, 2012, based upon applicant’s allegation of a bona fide intention to use the applied-for marks in commerce under § 1(b) of the Trademark Act; the words LIQUOR, SCOTCH, VODKA, GIN and SPIRITS have been disclaimed. Serial Nos. 85575674, 85575675, 85575683, 85575688, 85575693 - 3 - significance that the term is likely to have to the average prospective purchaser encountering the goods or services in the marketplace. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Phoseon Technology Inc., 103 USPQ2d 1822, 1823 (TTAB 2012). The Examining Attorney found that the components of the applied-for marks are descriptive and retain their descriptive meanings when combined such that the overall composites are descriptive. In support of this position, the Examining Attorney provided the following definitions: Original Adjective: 1. Preceding all others in time; first. (http://education.yahoo.com/reference/dictionary/entry/original)2 Culinary Adjective: Of or relating to kitchen or cookery. (http://education.yahoo.com/reference/dictionary/entry/culinary)3 Liquor Noun: 1. An alcoholic beverage made by distillation rather than by fermentation. (http://education.yahoo.com/reference/dictionary/entry/liquor)4 Scotch [1. A type of distilled spirit.] . . . 3. Scotch whisky. (http://education.yahoo.com/reference/dictionary/entry/scotch)5 2 June 27, 2012 Office Actions at pp. 24-25. Definition provided by Houghton Mifflin. 3 June 27, 2012 Office Actions at pp. 26-27. Definition provided by Houghton Mifflin. 4 June 27, 2012 Office Action for Serial No. 85575674 at pp. 28-29. Definition provided by Houghton Mifflin. 5 June 27, 2012 Office Action for Serial No. 85575675 at p. 28. Definition provided by Houghton Mifflin. While the first definition of the term appears to have been cut off from Serial Nos. 85575674, 85575675, 85575683, 85575688, 85575693 - 4 - Vodka Noun: 1. An alcoholic liquor originally distilled from fermented wheat mash but now also made from a mash of rye, corn or potatoes. (http://education.yahoo.com/reference/dictionary/entry/vodka)6 Gin 1. . . . rye or other grain spirits and adding juniper berries or aromatics such as anise, caraway seeds, or angelica root as flavoring. (http://education.yahoo.com/reference/dictionary/entry/gin)7 Spirits n: An alcoholic beverage that is distilled rather than fermented. (http://www.vocabulary.com/dictionary/spirits)8 The definition of ORIGINAL supports the descriptiveness of this term for Applicant’s goods which it has promoted as “the first family of spirits crafted for cooking” and “world’s first culinary spirits.” (emphasis added).9 As noted by the Examining Attorney, the Board has previously held that “original” is merely the image attached to the Office Action, the body of the Office Action indicates that the definition of SCOTCH is “a type of distilled spirit” which is consistent with the third definition shown in the attachment. Inasmuch as Applicant did not raise any objection to the attachment, we deem the definition of SCOTCH to be of record. 6 June 27, 2012 Office Action for Serial No. 85575683 at pp. 28-29. Definition provided by Houghton Mifflin. 7 June 27, 2012 Office Action for Serial No. 85575688 at p. 28. Definition provided by Houghton Mifflin. While the beginning portion of the definition of the term appears to have been cut off from the image attached to the Office Action, the body of the Office Action indicates that the definition of GIN is “a type of distilled spirit” which is consistent with the portion of the definition shown in the attachment. Inasmuch as Applicant did not raise any objection to the attachment, we deem the definition of GIN to be of record. 8 June 27, 2012 Office Action for Serial No. 85575693 at p. 28. 9 See August 16, 2013 Final Office Actions at p. 16, consisting of a printout of a page from Applicant’s website promoting its products as “Unlike any other spirit, Rave Review!™ Original Culinary Spirits are the first family of spirits crafted for cooking.” and “Rave Review!™ Original Culinary Spirits combine artisan tradition with scientific innovation to make the world’s first culinary spirits.” Serial Nos. 85575674, 85575675, 85575683, 85575688, 85575693 - 5 - laudatory and descriptive when goods are the first of their kind. In re Ervin, 1 USPQ2d 1665, 1666 (TTAB 1986); General Foods Corp. v. Ralston Purina Co., 220 USPQ 990, 994 (TTAB 1984). In an effort to demonstrate that the term ORIGINAL is not merely descriptive of its products, Applicant submitted copies of eleven third-party registrations on the Principal Register for marks containing the undisclaimed term ORIGINAL.10 In addition to the fact that none of the registrations are for spirits or similar goods, the Board is not bound by the prior decisions of examining attorneys in allowing those marks for registration. It has been noted many times that each case must be decided on its own facts. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some characteristics similar to [applicant’s] application, the PTO’s allowance of such prior registrations does not bind the Board or this court.”); and In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987). We are obligated to assess the registrability of Applicant’s applied-for marks on their own merits and not based on the existence of other registrations. The word CULINARY is also merely descriptive of Applicant’s distilled spirits as shown by the definition of that term as well as the following passages from Applicant’s website which emphasize their culinary purpose and utilize the term “culinary” to describe Applicant’s products: 10 Applicant’s Appeal Briefs p. 5; Applicant submitted copies of printouts from the USPTO’s TESS electronic database showing the status of the registrations with its December 27, 2012 Responses to Office Action. Registration No. 3321452 has since been cancelled for failure to file an acceptable declaration of use under § 8 of the Trademark Act. Serial Nos. 85575674, 85575675, 85575683, 85575688, 85575693 - 6 - While cooking with spirits is not new, having spirits that are specially formulated for cooking is very new, and an innovation unique to Rave Review! Products. www.ravereviewspirits.com/knowledge.11 Rave Review™ Original Culinary Spirits were designed by chefs to fulfill the need for premium culinary spirits in the kitchen. www.ravereviewspirits.com12 “Why Culinary Spirits?” “Why the term? . . .“Culinary” because we are of and all about the kitchen and cookery… http://webcache.googleusercontent.com/search?q=cache:w Oy05y|0ccsJ:www.ravereviewspirits.com/blog/why- culinary- spirits+culinary+spirits&cd=3&hl=en&ct=clnk&gl=us13 They are truly spirits Crafted for Cooking. www.ravereviewspirits.com/knowledge.14 Our proprietary process reduces the levels of harmful congeners as compared to traditional spirits in their category, creating a spirit that will add flavor and depth to your culinary endeavors. http://webcache.googleusercontent.com/search?q=cache: W4LNeP2NUEJ:www.ravereviewspirits.com/knowledge+o riginal+culinary+liquor&cd=1&hl=en&ct=clnk&gl=us15 In addition to the fact that the definitions for LIQUOR, SCOTCH, VODKA, GIN and SPIRITS evidence that these terms are merely descriptive of Applicant’s “distilled spirits,” Applicant has conceded the common, descriptive nature of the terms when used in connection with its goods by disclaiming them.16 See Quaker 11 July 18, 2013 Responses to Office Action at p. 7. 12 August 16, 2013 Office Actions at p. 16. 13 August 16, 2013 Office Actions at p. 17. 14 July 18, 2013 Responses to Office Action at p. 6. 15 August 16, 2013 Office Actions at p. 10. 16 See December 27, 2012 Responses to Office Actions; also see, February 17, 2014 Requests for Reconsideration filed for Serial Nos. 85575674, 85575675, 85575683 and 85575688; and March 3, 2014 Petition to Revive filed in connection with Serial No. 85575693. Serial Nos. 85575674, 85575675, 85575683, 85575688, 85575693 - 7 - State Oil Refining Corporation v. Quaker Oil Corporation, 453 F.2d 1296, 172 USPQ 361, 363 (CCPA 1972), aff’g 161 USPQ 547 (TTAB 1969); In re DNI Holdings Ltd., 77 USPQ2d 1435, 1442 (TTAB 2005). The descriptive meanings of the individual terms ORIGINAL and CULINARY, as well as LIQUOR, SCOTCH, VODKA, GIN and SPIRITS, with respect to Applicant’s goods are established by the foregoing evidence. However, as Applicant correctly notes, combinations of merely descriptive terms are registrable if their combination results in a new and different commercial impression and/or the term created imparts a unique, incongruous or otherwise non-descriptive separate meaning as used in connection with the goods or services. In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382, 384 (CCPA 1968). Generally, however, if each component retains its descriptive significance in relation to the goods, as is the case with respect to Applicant’s applied-for marks, the combination results in a composite that is itself descriptive. See DuoProSS Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753 (Fed. Cir. 2012) (SNAP SIMPLY SAFER merely descriptive for medical devices); also see, In re Petroglyph Games Inc., 91 USPQ2d 1332, 1341 (TTAB 2009) (BATTLECAM merely descriptive for computer game software); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (THE BREATHABLE MATTRESS held merely descriptive of beds, mattresses, box springs, and pillows where BREATHABLE retained its ordinary dictionary meaning when combined with MATTRESS and the resulting combination was used descriptively in the relevant industry); In re Associated Serial Nos. 85575674, 85575675, 85575683, 85575688, 85575693 - 8 - Theatre Clubs Co., 9 USPQ2d 1660, 1663 (TTAB 1988) (GROUP SALES BOX OFFICE is merely descriptive of theater ticket sales services because it combines the two common descriptive terms most applicable to applicant’s services which remains a common descriptive compound expression). Based on the definitions of the terms used in the applied-for marks, the fact that Applicant itself has described its goods as “culinary spirits,”17 and the manner in which Applicant promotes its goods, i.e., “spirits that are specifically formulated for cooking,” consumers would understand that the applied-for marks describe the purpose and/or a feature of the goods, namely, that they are the first distilled spirits intended to be used in cooking. Thus, when used in combination, the combined terms do not evoke any new or unique commercial impressions. Because the terms retain their merely descriptive significance in relation to the goods, the combinations result in composites that are themselves merely descriptive. See In re Phoseon Technology, 103 USPQ2d at 1823. As to the alleged incongruity of the applied-for marks urged by Applicant, Applicant does not explain the incongruity and we see none. The applied-for marks combine the laudatorily descriptive term ORIGINAL with the merely descriptive term CULINARY, and the generic terms LIQUOR, SCOTCH, VODKA, GIN, and SPIRITS. The combinations of terms simply inform that Applicant’s goods are the 17 See August 16, 2013 Office Actions at p. 16: “Rave Review™ Original Culinary Spirits were designed by chefs to fulfill the need for premium culinary spirits in the kitchen.” www.ravereviewspirits.com Serial Nos. 85575674, 85575675, 85575683, 85575688, 85575693 - 9 - first distilled spirits to be designed for use in cooking. Thus, there is nothing incongruous about the applied-for marks. In further support of the registrability of the applied-for marks, Applicant argues that the absence of evidence of descriptive usage by others constitutes strong evidence that the applied-for marks are not descriptive, relying on inter alia, Firestone Tire & Rubber Co. v. Goodyear Tire & Rubber Co., 186 USPQ 557 (TTAB 1975), aff’d, 189 USPQ 348 (CCPA 1976); In re Wells Fargo & Co., 231 USPQ 116, 119 (TTAB 1986) and In re The Stroh Brewery Co., 34 USPQ2d 1796, 1797 (TTAB 1994). Cases involving commonly used and known products and services, such as tires, banking services and non-alcoholic malt beverages, are not applicable here, where Applicant’s products are “the world’s first culinary spirits.” Although Applicant contends that marks are more likely to be suggestive when competitors do not need to use the mark to describe their products,18 the record is silent as to whether Applicant has any competitors yet with respect to its first-of-a-kind products. The lack of evidence indicating how competitive products are described prevents us from drawing any inference that Applicant’s applied-for marks are not merely descriptive. Moreover, it is well established that simply because an applicant may have been the first or only user of a merely descriptive designation does not necessarily render it incongruous or distinctive if the only significance conveyed by the term is merely descriptive, as is the case here. See In re Phoseon 18 Applicant’s Reply Brief p. 2 for Serial Nos. 85575675, 85575683, and 85575688. Serial Nos. 85575674, 85575675, 85575683, 85575688, 85575693 - 10 - Technology, 103 USPQ2d at 1826; In re Alpha Analytics Investment Group LLC, 62 USPQ2d 1852, 1856 (TTAB 2002). Applicant notes that when deciding the issue of descriptiveness, it is the Board’s policy to resolve doubts in favor of the applicant and allow the mark to be published. In re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972).19 Here, however, there is no such doubt about the descriptiveness of the applied-for marks. III. Conclusion The Examining Attorney has met the USPTO’s burden to establish that Applicant’s applied-for marks are merely descriptive. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007). We have no doubt that both the individual components and the composite results of the applied-for marks are descriptive of Applicant’s goods and do not create a unique, incongruous or non- descriptive meaning in relation thereto. Decision: The refusals to register ORIGINAL CULINARY LIQUOR, ORIGINAL CULINARY SCOTCH, ORIGINAL CULINARY VODKA, ORIGINAL CULINARY GIN, and ORIGINAL CULINARY SPIRITS under § 2(e)(1) of the Trademark Act are affirmed. 19 Applicant’s Appeal Briefs at p. 7.