In re Field Roast Grain Meat Co.

• Decision Date: 06 September 2017
• Docket Number: Serial 86831352
• Court: Trademark Trial and Appeal Board
• Parties: In re Field Roast Grain Meat Company

In re Field Roast Grain Meat Company

Serial No. 86831352

United States Patent and Trademark Office, Trademark Trial and Appeal Board

September 6, 2017

This Opinion is Not a Precedent of the TTAB

Hearing: July 12, 2017

Thomas A. Fairhall of McDonnell Boehnen Hulbert & Berghoff LLP for Field Roast Grain Meat Company.

David Gearhart, Trademark Examining Attorney, Law Office 112 Angela Bishop Wilson, Managing Attorney.

Before Taylor, Shaw and Heasley, Administrative Trademark Judges.

OPINION

HEASLEY, ADMINISTRATIVE TRADEMARK JUDGE.

Field Roast Grain Meat Company ("Applicant") seeks registration on the Principal Register of the mark CHAO (in standard characters) for "non-dairy cheese composed primarily of filtered water, coconut milk and modified corn and potato starch, and seasoned with fermented tofu" in International Class 29.^[1] The Application states that the English translation of the Vietnamese word "CHAO" is "fermented tofu."

The Trademark Examining Attorney has refused registration of Applicant's mark CHAO on the ground that it is generic or that it is merely descriptive without sufficient evidence of acquired distinctiveness to support registration. 15 U.S.C. §§ 1052(e)(1), (f), and 1127.

After the Trademark Examining Attorney made the refusal final, Applicant appealed to this Board. The matter has been fully briefed, and an oral hearing was held. We affirm the refusal to register.

I. Genericness

A proposed mark is generic if it refers to the class or category of goods and/or services on or in connection with which it is used. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 U.S.P.Q.2d 1807, 1810 (Fed. Cir. 2001) (citing H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528 (Fed. Cir. 1986)). A generic term is, in fact, "the ultimate in descriptiveness." Marvin Ginn, 228 U.S.P.Q. at 530 quoted in In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 U.S.P.Q.2d 1262, 1264 (Fed. Cir. 2015). It can never attain trademark status, In re Cordua Rests., Inc., 823 F.3d 594, 118 U.S.P.Q.2d 1632, 1634 (Fed. Cir. 2016), because "[t]o allow trademark protection for generic terms, i.e., names which describe the genus of goods being sold … would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are." In re Merrill Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4 U.S.P.Q.2d 1141, 1142 (Fed. Cir. 1987) quoted in Dial-A-Mattress, 57 U.S.P.Q.2d at 1810.

Whether a particular term is generic is a question of fact. In re Hotels.com LP, 573 F.3d 1300, 91 U.S.P.Q.2d 1532, 1533 (Fed. Cir. 2009). Resolution of that question depends on the primary significance of the term to the relevant public. "The critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question." Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 U.S.P.Q.2d 1827, 1830 (Fed. Cir. 2015) (quoting Marvin Ginn, 228 U.S.P.Q. at 530). The genericness inquiry is a two-part test: "First, what is the genus of goods or services at issue? Second, is the term sought to be registered … understood by the relevant public primarily to refer to that genus of goods or services?" In re Reed Elsevier Props. Inc., 482 F.3d 1376, 82 U.S.P.Q.2d 1378, 1380 (Fed. Cir. 2007) (quoting Marvin Ginn, 228 U.S.P.Q. at 530); see Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 U.S.P.Q.2d 1477, 1483 (TTAB 2017). The Examining Attorney bears the burden of proving genericness by clear and convincing evidence. In re Cordua Rests., 118 U.S.P.Q.2d at 1635; In re Tennis Ind. Ass'n., 102 U.S.P.Q.2d 1671, 1674 (TTAB 2012).

The Examining Attorney posits that the genus of goods should be defined by Applicant's identification of goods, i.e., "non-dairy cheese composed primarily of filtered water, coconut milk and modified corn and potato starch, and seasoned with fermented tofu."^[2] There is substantial authority for this position that the genus of goods or services may be defined by an applicant's identification of goods or services. E.g., In re Cordua Rests., 118 U.S.P.Q.2d at 1636; Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 U.S.P.Q.2d 1551, 1552 (Fed. Cir. 1991) ("[A] proper genericness inquiry focuses on the description of [goods or] services set forth in the [application or] certificate of registration."); In re Rosemount, Inc., 86 U.S.P.Q.2d 1436, 1437 (TTAB 2008); TMEP § 1209.01(c)(i). In this case, though, Applicant urges that the genus of goods be defined more simply as "non-dairy cheese."^[3] We find that Applicant's succinct statement of its identification of goods―"non-dairy cheese"―captures the essence of the genus. See In re Empire Tech. Dev. LLC, 123 U.S.P.Q.2d 1544, 1548 (TTAB 2017) (succinct statement of genus permissible) (citing In re ActiveVideo Networks, Inc., 111 U.S.P.Q.2d 1581, 1602 (TTAB 2014)). The relevant public is ordinary consumers of non-dairy cheese, who would encounter Applicant's product on store shelves arrayed with competing non-dairy cheeses. See In re Noon Hour Food Prods., Inc., 88 U.S.P.Q.2d 1172, 1178 (TTAB 2008) ("[T]he relevant class of consumers would be ordinary consumers of cheese, including consumers of specialized, ethnic cheese - a fact that is also reflected in the record.").

The second issue is whether the relevant public would understand the term CHAO primarily to refer to a subcategory of non-dairy cheese―i.e., cheese containing fermented tofu. As the Federal Circuit explained in Cordua Restaurants, generic words for subcategories of a genus are ineligible for trademark protection:

Cordua argues that even if "churrascos" is generic as to "churrasco restaurants" (also known as "churrascarias"), it is not generic as to all restaurant services. But a term is generic if the relevant public understands the term to refer to part of the claimed genus of goods or services, even if the public does not understand the term to refer to the broad genus as a whole. Thus, the term "pizzeria" would be generic for restaurant services, even though the public understands the term to refer to a particular sub-group or type of restaurant rather than to all restaurants.

In re Cordua Rests., 118 U.S.P.Q.2d at 1638 (quoting 1-2 Anne Gilson LaLonde, Gilson on Trademarks § 2.02[7][a] (2011): A "term need not refer to an entire broad species, like 'cheese' or 'cake, ' in order to be found generic."). See Restatement (Third) of Unfair Competition § 15 comment a (1995) ("A term that denominates a subcategory of a more general class, such as 'light' used with beer or 'diet' with cola, is also generic.").

"[A] term can be generic for a genus of goods or services if the relevant public…understands the term to refer to a key aspect of that genus…." In re Cordua Rests, 118 U.S.P.Q.2d at 1637; accord In re Meridian Rack & Pinion, 114 U.S.P.Q.2d 1462, 1464 (TTAB 2015). The Examining Attorney contends that Chao fermented tofu is a key aspect of Applicant's non-dairy cheese. Applicant argues that it:

is not seeking registration of the mark CHAO for fermented soybean curd or tofu. Rather, the applicant is seeking registration of the mark CHAO for a non-dairy cheese made primarily from filtered water, coconut milk and modified corn and potato starch, offered in three different varieties (creamy original, tomato cayenne with spicy pepper, and coconut herb with black pepper). The applicant has specified the primary ingredients for the non-dairy cheese in the description of goods, and indeed one of the ingredients is fermented tofu. But, the Examiner has not adduced proof that the relevant public would understand the designation CHAO to refer to the genus of the goods or the common descriptive name for the product….^[4]

The Examining Attorney maintains, however, that "chao is not a merely incidental addition to applicant's goods. Rather, it is prominently advertised as a key ingredient of the non-dairy cheese product."^[5] Applicant's product packaging specimen states "WITH CHAO TOFU" in capital letters on the front of the goods:

(IMAGE OMITTED)^[6]

A side of the product packaging explains what Chao is:

Chao Slices! Welcome to Field Roast's newest family member: a vegan coconut cheese alternative seasoned with a traditionally fermented soybean curd called Chao by the Vietnamese. We continue our fascination with blending Asian and European heritages by partnering with a Greek cheese maker and a family in Taiwan who makes the Chao. We bring it all together in Seattle to create Chao Slices. Enjoy!^[7]

Applicant's website announces that "Chao tofu is a fermented soybean curd popular throughout Asia. Essentially it's the traditional 'cheese' of Asia. It can be purchased in Asian grocery stores in … North America….":

(IMAGE OMITTED)^[8]

Applicant's CHAO-branded goods repeatedly explain that Chao is fermented tofu:

(IMAGE OMITTED)^[9]

The way an applicant uses a term in its promotional materials and packaging is relevant to whether consumers will perceive the term as an indicator of source or as generic. In re Gould Paper Corp., 834 F.2d 1017, 5 U.S.P.Q.2d 1110, 1112 (Fed. Cir. 1987); In re ActiveVideo Networks, Inc., Ill U.S.P.Q.2d at 1590 n.22. Applicant's promotional materials and packaging are particularly probative because they state that "Chao" is a thing and the text directly below the use tells you what the thing is, a key ingredient: "rich and creamy vegan cheese ... seasoned with a fermented tofu." See In re Noon Hour Food Prods., 88 U.S.P.Q.2d at 1180 (quoting In re Abcor Dev. Corp., 588 F.2d 811, 200 U.S.P.Q. 215, 219 (CCPA 1978) (Rich, J., concurring)). Thus, Applicant's own uses provide "damaging evidence that its...