American Vintage Wine Biscuits, Inc.

Trademark Trial and Appeal Board

Sep 27, 2007

No. 78559508 (T.T.A.B. Sep. 27, 2007)

Mailed: September 27, 2007
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re American Vintage Wine Biscuits, Inc.
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Serial No. 78559508
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Arthur G. Schaier of Carmody & Torrance LLP for American
Vintage Wine Biscuits, Inc.

Linda M. Estrada, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
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Before Quinn, Hairston and Cataldo, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

American Vintage Wine Biscuits, Inc. has filed an
application to register on the Principal Register the mark
THE ADULT DESSERT SNACK for cookies in International Class
30.1
The trademark examining attorney has issued a final
refusal to register, under Section 2(e)(1) of the Trademark

1 Serial No. 78559508, filed on July February 3, 2005, based on
an allegation of a bona fide intention to use the mark in
commerce. The words DESSERT SNACK have been disclaimed apart
from the mark as shown.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78559508
2
Act, 15 U.S.C. §1052(e)(1), on the ground that applicant’s
mark is merely descriptive of the identified goods.
Applicant has appealed. Both applicant and the
examining attorney have filed briefs. We reverse the
refusal to register.
The examining attorney contends that applicant’s mark
is merely descriptive because it “merely describes the
nature of the goods as well as the consumers to whom the
goods are directed.” (Examining attorney’s brief at
unnumbered at 3). In support of the refusal, the examining
attorney submitted three Internet printouts; two of the
printouts contain references to “adult dessert,” and the
third printout contains a reference to “dessert snack”:

The bread pudding is served warm and nicely
complimented with a bourbon sauce that makes this
a very adult dessert.
(Memphis Magazine, September 2003);

Yuzu cheesecake made a more adult dessert.
(Westchester Magazine, April 2006);

Dessert Snack Ideas
-Fruit juice bar
-Jello with fruit
-Fruit Newton Cookies (2)
(http://www.texaschildrenpediatrics.org)

In addition, the examining attorney submitted
definitions from The American Heritage Dictionary of the
English Language (3rd ed. 1992) of “dessert” as “[a] usually
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3
sweet course or dish, as of fruit, ice cream, or pastry,
served at the end of a meal;” “snack” as “[a] hurried or
light meal” and “[f]ood eaten between meals;” and “adult”
as “[o]ne who has attained maturity or legal age” and
“[i]ntended for or benefiting adults: adult education.”
Applicant, in urging reversal of the refusal to
register, does not dispute the descriptive significance of
the term “DESSERT SNACK.” Rather, applicant contends that:
… the “adult” portion of Applicant’s mark is a
broad term that does not merely describe that
Applicant’s goods are to be consumed by adults.
Rather, the “adult” portion of the Mark is
intended to suggest that Applicant’s goods are
“sophisticated.” Accordingly, Applicant
respectfully submits that the mark “The Adult
Dessert Snack,” taken in its entirety, does not
merely describe Applicant’s goods, namely
cookies.

(Applicant’s brief, at 4-5).

The test for determining whether a mark is merely
descriptive is whether it immediately conveys information
concerning a quality, characteristic, function, ingredient,
attribute or feature of the goods in connection with which
it is used, or intended to be used. In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987); In re Abcor
Dev. Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978).
A term need not immediately convey an idea of each and
every specific feature of the applicant’s goods in order to
Ser No. 78559508
4
be considered merely descriptive; it is enough that the
term describes one significant attribute or function of the
goods. Furthermore, descriptiveness is not determined in
the abstract, but in relation to the goods identified in
the application, the context in which the mark is used, and
the impact that it is likely to make on the average
purchaser of such goods. In re Polo International Inc., 51
USPQ2d 1061, 1062 (TTAB 1999); and In re Bright-Crest,
Ltd., 204 USPQ 591, 593 (TTAB 1979). In other words, the
issue is whether someone who knows what the goods are will
understand the mark to convey information about them. In
re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002);
In re Patent & Trademark Services Inc., 49 USPQ2d 1537,
1539 (TTAB 1998); In re Home Builders Association of
Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re
American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
If, however, reasoning or imagination is required to
determine the attributes or characteristics of the products
associated with a mark, that mark is suggestive rather than
descriptive. See In re Atavio, 25 USPQ2d 1361, 1362 (TTAB
1992). Even where individual terms are descriptive,
combining them together may evoke a new and unique
commercial impression. If each component retains its
merely descriptive significance in relation to the goods,
Ser No. 78559508
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without the combination of terms creating a unique or
incongruous meaning, then the resulting combination is also
merely descriptive. See, e.g., In re Tower Tech., Inc., 64
USPQ2d 1314, 1317-18 (TTAB 2002). There is a narrow line
between terms that are merely descriptive and those that
are only suggestive. Id. (citing In re TMS Corp. of
America, 200 USPQ 57 (TTAB 1978). Any doubt as to whether
a mark is descriptive or suggestive is resolved in favor of
publication of the mark for opposition. In re Conductive
Systems, Inc., 220 USPQ 84, 86 (TTAB 1983); In re Morton-
Norwich Prods., Inc., 209 USPQ 791 (TTAB 1981).
In this case, we find that the mark is registrable on
the Principal Register, with a disclaimer of the words
“DESSERT SNACK,” inasmuch as we view applicant’s mark THE
ADULT DESSERT SNACK, in its entirety, as only suggestive.
We are not persuaded by this record that there is a
connection between adults and cookies such that the term
“adult” would be viewed by prospective purchasers as
designating a category of customers for cookies. For
example, there is nothing in the record to indicate that
there are types of cookies that are marketed primarily to
adults. Further, it is not clear from this record what, if
any, feature, characteristic or ingredient of cookies would
appeal especially to adults as opposed to persons of
Ser No. 78559508
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another age group. Thus, we are unable to conclude that
the term “adult” would be perceived as describing the class
of individuals to whom the goods were directed.
We find, therefore, that the mark THE ADULT DESSERT
SNACK, when applied to applicant’s goods, is suggestive and
not merely descriptive. There is a certain ambiguity about
the mark, and no information about any feature or
characteristic of the goods is conveyed with a degree of
particularity. Additional thought or imagination would be
required on the part of prospective purchasers in order to
perceive any significance of the mark THE ADULT DESSERT
SNACK as it relates to applicant’s goods, namely cookies.
To the extent that there is any doubt in this case, we
have resolved that doubt, as we must, in applicant’s favor.
Decision: The refusal to register is reversed.