Fazzari Restaurant Group LLC

Trademark Trial and Appeal Board

Jun 22, 2010

No. 77109197 (T.T.A.B. Jun. 22, 2010)

Mailed:
June 22, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Fazzari Restaurant Group LLC
________

Serial No. 77109197
_______

Andrew S. McConnell of Boyle Fredrickson, S.C. for Fazzari
Restaurant Group LLC.

Ann Sappenfield, Trademark Examining Attorney, Law Office
117 (Brett Golden, Acting Managing Attorney).
_______

Before Walters, Walsh and Bergsman,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Fazzari Restaurant Group LLC (“applicant”) filed an
intent-to-use application on the Principal Register for the
mark MARGARITA COMPANY, in standard character form, for
“restaurant and bar services,” in Class 43.
The Trademark Examining Attorney refused to register
applicant’s mark under Section 2(e)(1) of the Trademark Act
of 1946, 15 U.S.C. §1052(e)(1), on the ground that
applicant’s mark is merely descriptive. According to the
Examining Attorney, the mark MARGARITA COMPANY “taken as a
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77109197
2
whole, merely refers to a restaurant business where
margarita cocktails are served.”1
A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
function, feature or purpose of the products and services
it identifies. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009,
1009 (Fed. Cir. 1987). Whether a particular term is merely
descriptive is determined in relation to the goods and
services for which registration is sought and the context
in which the term is used, not in the abstract or on the
basis of guesswork. In re Abcor Development Corp.,
588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle,
66 USPQ2d 1222, 1224 (TTAB 2002). In other words, the
question is not whether someone presented only with the
mark could guess the products listed in the description of
goods. Rather, the question is whether someone who knows
what the products 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).

1 The Examining Attorney’s Brief, unnumbered p. 3.
Serial No. 77109197
3
When two or more merely descriptive terms are
combined, the determination of whether the composite mark
also has a merely descriptive significance turns on the
question of whether the combination of terms evokes a new
and unique commercial impression. If each component
retains its merely descriptive significance in relation to
the goods or services, the combination results in a
composite that is itself merely descriptive. See In re
Tower Tech, Inc., 64 USPQ2d 1314 (SMARTTOWER merely
descriptive of commercial and industrial cooking towers);
In re Sun Microsystems Inc., 59 USPQ 1084 (TTAB 2001)
(AGENTBEANS merely descriptive of computer programs for use
in developing and deploying application programs); In re
Putnam Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD &
BEVERAGE ONLINE merely descriptive of new information
services in the food processing industry). In this regard,
we must consider the issue of descriptiveness by looking at
the mark in its entirety. Common words may be descriptive
when standing alone, but when used together in a composite
mark, they may become a valid trademark. See Concurrent
Technologies Inc. v. Concurrent Technologies Corp.,
12 USPQ2d 1054, 1057 (TTAB 1989).
Finally, if one must exercise mature thought or follow
a multi-stage reasoning process in order to determine what
Serial No. 77109197
4
product or service characteristics the term indicates, the
term is suggestive rather than merely descriptive.” In re
Tennis in the Round, Inc., 199 USPQ 496, 497 (TTAB 1978);
see also, In re Shutts, 217 USPQ 363, 364-365 (TTAB 1983);
In re Universal Water Systems, Inc., 209 USPQ 165, 166
(TTAB 1980). Incongruity is a strong indication that a
mark is suggestive rather than merely descriptive. In re
Tennis in the Round, Inc., 199 USPQ at 498 (the association
of applicant’s mark TENNIS IN THE ROUND with the phrase
“theater-in-the-round” creates an incongruity because
applicant’s services do not involve a tennis court in the
middle of an auditorium).
The following facts have been established and are
uncontested:
1. A “Margarita” is “[a] cocktail made with tequila,
an orange-flavored liqueur, and lemon or lime juice, often
served with salt encrusted on the rim of the glass.” 2 It
is also a girl’s name.3
2. A “Company” is, inter alia, “[a] business
enterprise; a firm”4 and when used as part of a registered

2 The American Heritage Dictionary of the English Language (3rd
ed. 1992).
3 The American Heritage Dictionary of the English Language (4th
ed. 2000).
4 The American Heritage Dictionary of the English Language (3rd
ed. 1992).
Serial No. 77109197
5
mark, the exclusive use of the word “Company” has been
disclaimed.
3. Margaritas are served in restaurants and bars.
4. Many restaurants incorporate the term “Margarita”
in their names (e.g., Tio Juan’s Margaritas Mexican
Restaurant and Watering Hole, Margarita’s Mexican
Restaurant, and Margarita’s).
The Examining Attorney contends that the combination
of descriptive words “Margarita” and “Company” does not
form a composite mark with a non-descriptive meaning.
Applicant argues, to the contrary, that “when the mark is
taken as a whole, and ‘Margarita’ and ‘Company’ are
considered together, they suggest an industrial activity,
creating the commercial impression of a business that is
engaged in a manufacturing enterprise – e.g., a company
manufacturing Spanish or Mexican products (Margarita being
the Spanish name of a girl) – not a restaurant or bar
offering commensurate services.”5
The combination of the words “Margarita” and “Company”
to form MAGARITA COMPANY is incongruous because a restaurant
or bar that serves Margaritas does not immediately call to
mind a Margarita company, whatever that may be. For

5 Applicant’s Brief, pp. 3-4.
Serial No. 77109197
6
example, a restaurant is synonymous with a café, counter,
sandwich shop, chophouse, pizzeria, bistro, etc.6 and a bar
is synonymous with a lounge, ale house, bistro, cocktail
lounge, etc.7 MARGARITA COMPANY is not the usual or normal
manner in which consumers refer to a restaurant or bar
specializing in Margaritas; although it is highly
suggestive, it possesses enough incongruity to raise doubt
as to its mere descriptiveness because its meaning would not
be grasped without some measure of imagination and “mental
pause.” Accordingly, we find that the term MARGARITA
COMPANY, as used in connection with restaurant and/or bar
services, does not readily and immediately evoke an
impression and understanding of restaurant or bar services.
We recognize that the suggestive/descriptive dichotomy
can require the drawing of fine lines and often involves a
good measure of subjective judgment. Indeed, this case
presents such a challenge. At the very least, however, we
have doubts about the “merely descriptive” character of the
mark before us and, unlike the situation in determining
likelihood of confusion under Section 2(d) of the Trademark
Act, it is clear that such doubts are to be resolved in

6 Roget’s Thesaurus (2010).
7 Id.
Serial No. 77109197
7
favor of applicants. In re Pennwalt Corp., 173 USPQ 317,
319 (TTAB 1972); In re Ray J. McDermott and Co., Inc.,
170 USPQ 524, 525 (TTAB 1971).
Decision: The refusal to register is reversed.