Robert’s American Gourmet

Trademark Trial and Appeal Board

Jul 2, 2002

No. 75600461 (T.T.A.B. Jul. 2, 2002)

Mailed: 7/10/2002

Paper No. 14
BAC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Robert’s American Gourmet
________

Serial No. 75/600,461
_______

Myron Amer of Myron Amer, P.C. for Robert’s American
Gourmet.

Dawn J. Feldman, Trademark Examining Attorney, Law Office
111 (Kevin Peska, Acting Managing Attorney).
_______

Before Cissel, Hairston and Chapman, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:
On December 7, 1998, Robert’s American Gourmet (a New
York corporation) filed an application to register on the
Principal Register the mark ST. JOHN’S WORT TORTILLA for
“herbal and natural snacks” in International Class 30.
Applicant claimed dates of first use and first use in
commerce of March 15, 1995 and June 1, 1995, respectively.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser. No. 75/600461
2
In the first Office action, the Examining Attorney,
inter alia, refused registration of the proposed mark as
merely descriptive under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. §2(e)(1), and stated that the proposed mark
appears to be generic of the goods; including as evidence a
dictionary definition of the word “tortilla” and printouts
from a few websites showing uses of “St. John’s Wort” as an
herbal ingredient or nutritional supplement. In addition,
the Examining Attorney explained that the mark shown on the
drawing did not match the mark as used on the specimens and
required either a new drawing or new specimens; and held
that the identification of goods (“herbal and natural
snacks”) was indefinite. In response, applicant, inter
alia, amended the application to seek registration on the
Supplemental Register; submitted an amended drawing to show
the mark as ST. JOHN’S WORT TORTILLA CHIPS; and submitted
an amendment to the identification of goods to read “herbal
and natural snacks, namely, tortilla chips, tortilla
shells, containing St. John’s Wort.”
In the second Office action, the Examining Attorney
accepted the amended drawing, the amendment to the
identification of goods, and the amendment to the
Supplemental Register; but refused registration on the
basis that the proposed mark is the generic name for
Ser. No. 75/600461
3
applicant’s goods; and including as evidence copies of
several third-party registrations wherein the phrase “St.
John’s Wort” appeared in the identifications for goods
enhanced with that herb. Applicant then submitted a second
amended drawing showing the mark as ST. JOHNS WORT TORTILLA
CHIPS (without the apostrophe -- as it appears on the
specimens); proposed an amendment to the identification of
goods deleting the phrase “containing St. John’s Wort”; and
argued the mark is not generic.
In the third Office action the Examining Attorney
accepted the amended drawing; rejected the further
amendment to the identification of goods; and continued the
final refusal on the Supplemental Register, including as
evidence printouts from a few websites showing uses of “St.
Johns Wort” (without the apostrophe). In response,
applicant proposed another amendment to the identification
of goods, and again contended the mark is not generic.
In the next Office action, the Examining Attorney
rejected the new proposed amended identification of goods;
and in response thereto, applicant proposed that in the
identification of goods the word “JOHN’S” be changed to
“JOHNS”; and argued the mark is capable of distinguishing
the goods.
Ser. No. 75/600461
4
The Examining Attorney accepted the amendment to the
identification of goods and made final her refusal to
register the mark on the Supplemental Register pursuant to
Section 23 of the Trademark Act, 15 U.S.C. §1091. From
this final refusal applicant has appealed.
Both applicant and the Examining Attorney have filed
briefs, but an oral hearing was not requested.
For clarity of the record, we reiterate that, the
applied-for mark, as amended, is ST. JOHNS WORT TORTILLA
CHIPS; and the identification of goods, as amended, reads
“herbal and natural snacks, namely, tortilla chips,
tortilla shells, containing St. Johns Wort.”
One of applicant’s specimens of record is reproduced
below.

Ser. No. 75/600461
5
Applicant contends that the record does not indicate
how “customers would respond to the specimen display [of
the mark]” (brief, p. 3); that applicant uses the term as a
trademark1; that “despite its descriptive nature, such a
term [St. Johns Wort or St. John’s Wort] is not one that
the consuming public would normally expect to be associated
with a snack food” (brief, p. 5); that the mark is not
generic for these goods; that the use of “JOHNS” without
the apostrophe is an incongruity compared to the
overwhelming proper use of “JOHN’S” and it constitutes the
modicum necessary to serve as a source-identifier and
creates sufficient “ingenuity that is necessary for
registration” (brief, p. 5).
The Examining Attorney contends that “St. John’s Wort”
(spelled with or without an apostrophe) is an herb
supplement or additive believed to assist with mood
regulation; that applicant’s goods are tortilla chips and
tortilla shells which contain the herb St. John’s Wort as

1 Applicant submitted for the first time with its brief on the
case, an exhibit marked “trademark portfolio specimens” which
consists of several specimen labels of other marks apparently
owned by applicant, with a registration number typed below each
label. The Examining Attorney objected to this evidence as
untimely. The objection is well taken, and this evidence has not
been considered on appeal. See Trademark Rule 2.142(d). Even if
considered, however, the evidence is not persuasive of a
different result as it is not pertinent to the issue of the
registrability of the designation applicant seeks to register
here.
Ser. No. 75/600461
6
an ingredient thereof; that the designation sought to be
registered, ST. JOHNS WORT TORTILLA CHIPS, names what the
goods are, specifically, tortilla chips enhanced with the
St. John’s Wort herb; and that consumers would so recognize
the designation.
The test for determining whether a designation is
generic, as applied to the goods set forth in the
application, turns upon how the term or phrase is perceived
by the relevant public; and this perception is the primary
consideration in a determination of genericness. See
Loglan Institute Inc. v. Logical language Group, Inc., 962
F.2d 1038, 22 USPQ2d 1531 (Fed. Cir. 1992). Determining
whether an alleged mark is generic involves a two-step
analysis: (1) what is the genus of goods or services in
question? and (2) is the term sought to be registered
understood by the relevant public primarily to refer to
that genus of goods or services? See H. Marvin Ginn
Corporation v. International Association of Fire Chiefs,
Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).
Applicant does not dispute that the words “tortilla
chips” are generic for its identified goods. Rather,
applicant focuses on the words “ST. JOHNS WORT,”
emphasizing the lack of an apostrophe in the word “Johns”
Ser. No. 75/600461
7
as somewhat unique; and asserting that the goods are not
herbs, but snack foods.
The Examining Attorney’s evidence in the form of
printouts from various Internet websites establishes that
“St. John’s Wort” (and/or “St. Johns Wort”) is the generic
name of an herb which is touted as an anti-anxiety or anti-
depressant product. Moreover, the Board takes judicial
notice of the PDR (Physicians Desk Reference) for Herbal
Medicines (2000) which states the following:
St. John’s Wort
Hypericum perforatum ...
Effects...A mild antidepressant....2

Applicant’s own specimens list “St. Johns Wort” as an
ingredient, and the effects thereof are promoted on the
front of the specimen label (e.g., “feelin good”). Thus,
St. John’s Wort is a key ingredient in applicant’s goods.
The designation ST. JOHNS WORT TORTILLA CHIPS tells
consumers what the goods are -- tortilla chips containing
St. John’s Wort.
Applicant’s mere argument that its use of “JOHNS”
without the apostrophe creates an incongruity and would be
a cognitive factor to the purchasing public is not

2 See University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
Ser. No. 75/600461
8
convincing. We disagree that consumers will notice the
lack of the apostrophe. Moreover, even assuming some
consumers might notice this minor difference, the Examining
Attorney has shown that “St. Johns Wort” (without the
apostrophe) is often utilized in referring to this herb.
The Examining Attorney has met the burden necessary to
establish a prima facie case that the designation “St.
Johns Wort” is generic for an herb which is a critical
ingredient of the identified goods, and “tortilla chips” is
generic for these snacks. The designation as a whole is
the generic name of a key ingredient coupled with the
generic term for the food product (e.g., “orange juice”),
and consumers would so view this designation.
Finally, “generic names are regarded by the law as
free for all to use. They are in the public domain.” 2 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition, §12:2 (4th ed. 2001). See also, Estate of
P.D. Beckwith, Inc. v. Comm. of Patents, 252 U.S. 538, 543-
544 (1920). Even if applicant is the first entity to use
the designation “ST. JOHNS WORT TORTILLA CHIPS” in relation
to herbal and natural snack foods containing St. John’s
Wort, such is not dispositive where, as here, the
designation clearly is the generic name of such goods. We
believe that competitors would have a competitive need to
Ser. No. 75/600461
9
use this designation. The fact that there may not be
others currently using the designation ST. JOHNS WORT
TORTILLA CHIPS for these goods, does not make it less a
designation of what the goods are, rather than where the
goods come from.
We find the designation ST. JOHNS WORT TORTILLA CHIPS
to be generic and incapable of distinguishing applicant’s
“herbal and natural snacks, namely, tortilla chips,
tortilla shells, containing St. Johns Wort” from those of
others. See In re Hask Toiletries, Inc. (TTAB 1984) (HENNA
‘N’ PLACENTA held generic for hair conditioner), and cases
cited therein; and 2 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition, §12:57 (4th ed. 2001).
See also, In re Stanbel Inc., 16 USPQ2d 1469 (TTAB 1990),
aff’d unpub’d, but appearing at 20 USPQ2d 1319 (Fed. Cir.
1991).
Decision: The refusal to register on the Supplemental
Register is affirmed.