Tops Markets, Inc.

Trademark Trial and Appeal Board

Apr 21, 1998

No. 74496826 (T.T.A.B. Apr. 21, 1998)

Paper No. 17
CEW
THIS DISPOSITION IS NOT CITABLE AS
PRECEDENT OF THE TTAB APRIL 21, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Tops Markets, Inc.
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Serial No. 74/496,826
___________
M. Bud Nelson of Hodgson, Russ, Andrews, Woods & Goodyear,
attorney for applicant.
Charles T. J. Weigell, Trademark Examining Attorney, Law
Office 109 (Deborah S. Cohn, Managing Attorney).
____________
Before Simms, Hohein and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Tops Markets, Inc. has filed a service mark application
to register on the Principal Register the mark CARRYOUT CAFÉ
for “deli-style retail supermarket services.”1 The

1 Serial No. 74/496,826, in International Class 42, filed March 4, 1994,
based on use of the mark in commerce, alleging dates of first use as of
December, 1990, and first use in commerce as of June, 1990. We note
that applicant’s alleged first use of its mark in commerce in connection
with its services predates its alleged first use of its mark anywhere in
connection with its services. This appears to be a typographical error
in view of applicant’s statements, in its declaration under Section
2(f), regarding its first use of the mark. Applicant is advised that
any amendment to correct this apparent error must comply with Trademark
Rule 2.71(d)(1).
Serial No. 74/496,826
2
application includes a disclaimer of CARRYOUT apart from the
mark as a whole.
The Examining Attorney refused registration under
Section 2(e)(1) of the Trademark Act, 15 U.S.C. 1052(e)(1),
on the ground that applicant’s mark is merely descriptive of
the services identified in the application. Subsequently,
while maintaining that its applied-for mark is inherently
distinctive rather than merely descriptive, applicant
claimed, in the alternative, 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 substantially exclusive and continuous use of
the mark “in block form” in connection with the identified
services since March, 1986, and “in logo form” since
December, 1990; and attesting to advertising and promotional
expenditures in connection with the mark for the past six
years of approximately $1 million per year, or $6 million
total. Additionally, applicant submitted samples of its
advertising materials.
The Trademark Examining Attorney has finally refused
registration under Section 2(e)(1) of the Trademark Act, 15
U.S.C. 1052(e)(1), on the ground that CARRYOUT CAFE, when
used in connection with deli-style retail supermarket
services, is generic and, thus, incapable of functioning as
Serial No. 74/496,826
3
a source-identifying mark; and, alternatively, that CARRYOUT
CAFÉ is merely descriptive of such services and 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, but an oral hearing
was not requested.
Genericness
The first question before us is whether CARRYOUT CAFÉ
as used in connection with deli-style retail supermarket
services is generic. If we find that CARRYOUT CAFÉ is not
generic, we must then consider whether it is merely
descriptive in connection therewith and, if so, whether
applicant has established that its mark has acquired
distinctiveness.
The Examining Attorney contends that “CARRYOUT CAFÉ
merely identifies to prospective customers a genus of
carryout food services rendered in a café setting”; that
applicant’s evidence submitted in connection with its claim
of acquired distinctiveness indicates that, in connection
with CARRYOUT CAFÉ, applicant offers fresh prepared food for
consumption either on or off the premises; that “the term
CAFÉ is used to identify sections of a supermarket which
feature food and beverages for consumption on or off the
premises”; and that both terms comprising applicant’s mark
Serial No. 74/496,826
4
are generic in connection with the identified services and
the combination of these terms does not change the generic
significance of the individual terms.
Applicant acknowledges that CARRYOUT CAFÉ is “made up
of two common words”, but contends that the combination of
these two words creates an incongruous expression because
CARRYOUT connotes taking food off the premises for
consumption whereas CAFÉ connotes a restaurant that provides
dining on the premises. Applicant argues, further, that the
Examining Attorney has not established that CARRYOUT CAFÉ is
generic; that the evidence submitted does not show any
dictionary definitions, phone book listings or third-party
references in articles to the phrase CARRYOUT CAFÉ; that
evidence of the use of the phrase in trade publications is
not probative of the understanding of the phrase by the
relevant purchasing public; and that the availability of the
common phrase “takeout café” as an alternative is evidence
of nongenericness.
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 genus
(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
Serial No. 74/496,826
5
genus (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 genus (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 begin by taking notice of the following dictionary
definitions:2
restaurant - n. an establishment where meals are
served to customers.
café - n. 1. a restaurant, often with an enclosed
or outdoor section extending onto the sidewalk.
2. a restaurant, usually small and unpretentious.
carry out - n. adj. takeout (defs 2,3).
take out - n. 2. something made to be taken out,
esp. food prepared in a store or restaurant to be
carried out for consumption elsewhere. 3.
Informal. a store, restaurant or counter
specializing in preparing food meant to be carried
out for consumption elsewhere.
delicatessen - n. a store selling foods already
prepared or requiring little preparation for
serving, as cooked meats, cheese, salads and the
like.
In support of his contention that CARRYOUT CAFÉ is
generic as used in connection with the identified services,
Serial No. 74/496,826
6
the Examining Attorney has submitted excerpts from the
yellow pages of two telephone books, under the heading
“Foods - Carry-Out,” showing several listings for
establishments using the term CAFÉ in their name.
Additionally, the Examining Attorney has submitted excerpts
from the LEXIS/NEXIS database of articles from various
newspapers and publications. The following are several
examples of excerpts of articles from the LEXIS/NEXIS
database:
“Chock Full O’Nuts opens coffee cafes” - The mini
cafes are designed for carryout food and beverage
service, with limited on-premise seating.
[Nation’s Restaurant News, February 6, 1995.]
The Glasz Café is primarily a gourmet carryout,
but tables and chairs will be coming soon. [The
Baltimore Sun, January 27, 1995.]
. . . Meyer decided to create Ebbitt Express, a
carryout/café concept, to attract nearby office
workers, shoppers and museum goers. [Restaurant
and Institutions, August 1, 1994.]
For real multiculturalism, though, you’ve got to
check out Irina’s. In this funky carryout-café,
you can chow down on borscht and Singapore curried
noodles while listening to zydeco music. [The
Baltimore Sun, March 27, 1994.]
. . . Block . . . recently opened the Eating Well,
a carryout food service and café. [Chicago
Tribune, September 30, 1993.]
Fish, Wings & Tings - This tiny café-carryout
brings the colors of the Caribbean to Adams Morgan
with trend-resistant honest cooking.
[Washingtonian, April, 1993.]

2 The Random House Dictionary of the English Language, 2nd ed., 1987.
Serial No. 74/496,826
7
. . . in the Continental Bank building on South La
Salle Street. A smaller operation, the 40-seat
Italian café, is not full service and emphasizes
carryout. [Nation’s Restaurant News, June 15,
1992.]
The recently opened carryout Lucky’s Café is
taking no chances. [The Washington Times, May 2,
1991.]
Vivande, in San Francisco, is the ne plus ultra of
café carryout operations, as it has not one but
three California Culinary Academy graduates
preparing meals alongside owner-chef . . .
[Cosmopolitan, February 1989.]
The following are excerpts from a Washington Post article of
October 14, 1992, which is specifically about “supermarket
dining”:
This day, the pair decide to bypass the fast food
chains they usually frequent and try the just-
opened Fresh Bite Café.
Tucked in the corner of the newest Fresh Fields
health foods supermarket in Annandale, the 50-seat
café not only provides Miller and Van Massenhove
with a quiet place to talk but, more importantly,
with a wide selection of food – virtually anything
in the store.
This latest bit of culinary civilization is
cropping up in a number of supermarkets around the
country as grocers try to ring up more business by
capitalizing on their growing array of freshly
prepared foods.
Up to now, most of these foods were made for
shoppers to take home and eat. But in an effort
to distinguish themselves from their competitors
. . . some grocers are creating small dining areas
to enable customers to buy their food and eat it
too – without ever leaving the store.
In some cases, such as Safeway’s stores on the
West Coast, the dining areas are simply a handful
of tables and chairs set up near the deli.
Serial No. 74/496,826
8
. . .
Still other chains, such as Fresh Fields and the
21-store Ukrop’s in Richmond, are creating a new
kind of eatery – one that “is a level between fast
food and a decent sit-down restaurant” . . .
It is customers like Scherling that make the café
concept particularly attractive to the
supermarkets.
. . .
No wonder then, that some food industry officials
call these supermarket cafes the contemporary
American equivalent of a French bistro.
The first step in our analysis is to determine the
genus (category or class) of services herein. In this
regard, we note that while supermarket services
traditionally involve the sale of food products for
preparation and/or consumption off the premises, the
evidence of record indicates that a recent trend is for
supermarkets to also offer dining areas where patrons may
purchase and eat prepared food. Further, the evidence
submitted by applicant in connection with its claim of
acquired distinctiveness indicates that applicant’s
identified services, “deli-style retail supermarket
services,” encompass the sale of food for consumption either
on or off the premises.3 Thus, in view of the noted
definition of “delicatessen,” the genus (category or class)

3 The advertisements submitted in connection with applicant’s claim of
acquired distinctiveness include the following statements: “For your
convenience, we have added a sit-down area” [Erie, PA store]; and “Take
Out or Eat In” [The Buffalo News].
Serial No. 74/496,826
9
of services herein is the sale of prepared food to the
ultimate consumer for consumption on or off supermarket
premises.
We turn, then, to consider whether the relevant
purchasing public would understand CARRYOUT CAFÉ as
referring to such services. The evidence of record
establishes that a “café” is a small, sometimes informal,
restaurant and that the term “restaurant” encompasses both
sit-down and carryout food service; that many small
restaurants which are named or described as cafes commonly
offer both on-site dining and carryout services; that at
least one establishment described in the record as a cafe
offers only carryout food service; that, as discussed
herein, retail supermarkets commonly offer prepared food to
carry-out and/or tables for eating such items purchased on
the premises; and that the term CAFÉ is used to describe
such services in retail supermarkets. In fact, the evidence
leads us to conclude that CAFÉ is a generic term used to
describe a broad range of establishments where prepared food
is sold for consumption either on or off the premises, or
both; and that CARRYOUT is a generic term used to describe a
food service wherein prepared food is sold for consumption
off the premises.
Further, the terms CARRYOUT and CAFÉ are often used
together to describe aspects of a single establishment, as
Serial No. 74/496,826
10
evidenced in the excerpts of articles in the record - for
example, “carryout/café,” “a café carryout,” “carryout food
service and café.” Contrary to applicant’s contention, we
find nothing incongruous in applicant’s combination of these
two common generic terms in the applied-for mark CARRYOUT
CAFÉ when considered in connection with applicant’s
services. See, In re Gould Paper Corp., 5 USPQ2d 1110 (Fed.
Cir. 1987). While, by placing CARRYOUT before CAFÉ, the
term CARRYOUT could be perceived as an adjective modifying
CAFÉ, there is no incongruity in such placement since the
evidence establishes that cafes often offer dining on the
premises as well as carryout services; and that there may be
establishments with the term café in their name that offer
only carryout service.
Thus, we find that the evidence establishes that the
relevant public will understand the term CARRYOUT CAFE in
its generic sense when considered in connection with
applicant’s identified services, notwithstanding applicant’s
criticism of the evidence of record. Regarding applicant’s
concerns, we note, first, that while some of the articles
excerpted in the record are from trade publications, the
majority of the articles, as well as the telephone book
references, are from publications available to the general
public, which is clearly the relevant purchaser of
applicant’s services. Further, the readers of trade
Serial No. 74/496,826
11
publications are also members of the general public and the
excerpts from these publications are not technical in
nature, showing use of the terms CARRYOUT and CAFÉ in
essentially the same manner as these terms are used in the
other publications of record.
Similarly, applicant’s additional arguments that there
is no evidence of generic use of the actual phrase CARRYOUT
CAFÉ and that “takeout café” is an alternative descriptive
term available to the public are unavailing.4 It is
sufficient that the Examining Attorney has established, as
discussed herein, that the individual terms CARRYOUT and
CAFÉ are generic; that the two terms are often used together
in a variety of ways to describe characteristics of a single
establishment; and that the combination of the two generic
terms in the applied-for mark is not incongruous and does
not alter the generic quality of either term. It is equally
true that a term does not lose its generic significance
simply because there are other synonymous generic
expressions available for the public to use.
Descriptiveness and Acquired Distinctiveness
If, ultimately, the applied for mark is found not to be
generic, we would need to address the questions of whether
CARRYOUT CAFÉ is merely descriptive as used in connection

4 Likewise, we acknowledge that a number of excerpts submitted by the
Examining Attorney refer specifically to applicant. However, we find
sufficient other evidence in the record to support our conclusion that
the applied-for mark is generic.
Serial No. 74/496,826
12
with deli-style retail supermarket services and, if so,
whether applicant has established that CARRYOUT CAFÉ has
acquired distinctiveness. Therefore, in order to render a
complete opinion, we consider these issues now. The test
for determining whether a mark is merely descriptive is
whether the involved term immediately conveys information
concerning a quality, characteristic, function, ingredient,
attribute or feature of a product or service. In re Bright-
Crest, Ltd., 204 USPQ 591 (TTAB 1979); In re Engineering
Systems Corp., 2 USPQ2d 1075 (TTAB 1986). It is not
necessary, in order to find a mark merely descriptive, that
the mark describe each feature of the goods, only that it
describe a single, significant quality, feature, etc. In re
Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
Further, it is well-established that the determination of
mere descriptiveness must be made not in the abstract or on
the basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the mark is used, and the impact that it is likely to
make on the average purchaser of such goods or services. In
re Recovery, 196 USPQ 830 (TTAB 1977).
As discussed in connection with the question of
genericness, there is ample evidence in the record to
support the conclusion that the individual terms CARRYOUT
and CAFÉ are merely descriptive in connection with the
Serial No. 74/496,826
13
identified services. We find that, when applied to
applicant’s services, the combination of these terms to
create the phrase CARRYOUT CAFÉ is not incongruous and the
terms retain their descriptive significance. Thus, we find
the applied-for mark is merely descriptive. It immediately
describes, without conjecture or speculation, a significant
feature or function of applicant’s services, namely that
applicant’s identified services feature the sale in a
specialized setting of food for consumption on or off the
premises. Nothing requires the exercise of imagination,
cogitation, mental processing or gathering of further
information in order for purchasers of and prospective
customers for applicant’s goods to readily perceive the
merely descriptive significance of the term CARRYOUT CAFÉ as
it pertains to deli-style retail supermarket services.
Further, we find that applicant’s evidence under
Section 2(f) is insufficient to establish that its applied-
for mark has acquired distinctiveness in connection with the
identified services. While applicant has provided a
declaration indicating use since 1986 and general
advertising figures, along with several copies of newspaper
ads, applicant has not provided any evidence of the amount
of sales in connection with the mark or of consumer
perception. In view of the highly descriptive nature of the
mark, the evidence of record is insufficient to establish
Serial No. 74/496,826
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that CARRYOUT CAFÉ has acquired distinctiveness in
connection with deli-style retail supermarket services.
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 the mark herein is merely descriptive in connection
with the identified services is affirmed inasmuch as
applicant’s claim under Section 2(f) is insufficient
evidence of acquired distinctiveness herein.
G. D. Hohein
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board
Simms, Administrative Trademark Judge, concurring:
If applicant’s asserted mark were “CARRYOUT/CAFÉ” or
“CARRYOUT-CAFÉ”, I believe that the public would perceive these
terms as merely indicating that applicant was operating a
carryout and a café, in other words, a place where one could
purchase food (and perhaps beverages) for consumption either off
(carryout) or on (café) the premises. These terms would simply
Serial No. 74/496,826
15
not be perceived as service marks indicating origin but rather as
designations of a type or category of business establishment,
albeit in a supermarket setting. In other words, these words
would be generic. An applicant should not be able to obtain a
registration for such terms merely by a “misspelling”, if you
will -- by omitting the punctuation mark (“/” or “-”). See J.
Thomas McCarthy, McCarthy on Trademarks and Unfair Competition,
§12:38 (4th ed. 1997). Further, the availability of alternative
generic expressions (such as “takeout café”) is irrelevant. As
we and others have stated in the past, all generic terms for a
product or service should be freely available to competitors. In
re Sun Oil Co., 426 F.2d 401, 165 USPQ 718, 719 (CCPA 1970),
Rich, concurring (“All of the generic names for a product belong
in the public domain.”)
R. L. Simms
Administrative
Trademark Judge