Fevertree Limited

Trademark Trial and Appeal Board

Mar 8, 2022

79268841 (T.T.A.B. Mar. 8, 2022)

This Opinion is Not a Precedent of the TTAB Mailed: March 8, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Fevertree Limited Serial No. 79268841 _____ John L. DuPré of Hamilton, Brook, Smith & Reynolds, P.C. for Fevertree Limited. Jennifer O’Brien, Trademark Examining Attorney, Law Office 120, David Miller, Managing Attorney. _____ Before Wellington, Adlin and Allard, Administrative Trademark Judges. Opinion by Wellington, Administrative Trademark Judge: Fevertree Limited (“Applicant”) seeks registration on the Principal Register of the standard character mark FEVER-TREE for the following goods:1 Alcoholic beverages except beers; mixed alcoholic drinks except beers, namely, alcoholic mixed beverages except beers and pre-mixed alcoholic beverages, other than beer-based; alcopops; prepared alcoholic cocktails; wines, spirits and liqueurs; alcoholic preparations for making beverages, namely, alcoholic cocktail mixes, alcoholic essences, alcoholic syrups and alcoholic extracts, in International Class 33. 1 Application Serial No. 79268841, filed under Section 66(a) of the Trademark Act, 15 U.S.C. § 1141f(a), requests extension of protection for International Registration No. 1110254. Serial No. 79268841 - 2 - The Trademark Examining Attorney refused registration under Section 2(e)(1) of the Trademark Act (“the Act”), 15 U.S.C. § 1052(e)(1), on the ground that Applicant’s mark is merely descriptive of the goods identified in the Application. Applicant thereupon amended the Application to make a claim, under Section 2(f) of the Act, 15 U.S.C. § 1052(f), that the mark has become distinctive of the goods as evidenced by Applicant’s ownership of prior registrations (discussed in more detail below) for the same mark in connection with sufficiently similar goods. The Examining Attorney rejected Applicant’s claim of acquired distinctiveness because “the similarity or relatedness of the goods in the prior registration[s] and the instant application is not self-evident . . . without additional information,”2 and continued the Section 2(e)(1) refusal. When the refusal was made final, Applicant appealed. The appeal is fully briefed, including a reply brief from Applicant. We affirm the Examining Attorney’s determination that the mark is merely descriptive, but reverse the refusal to register under Section 2(f). I. Examining Attorney’s Objection to Applicant’s Reference to “2,000” Third-Party Registrations The Examining Attorney objects to Applicant’s “reference[ to] 2,000 registrations which identify goods in both Classes 32 and 33.”3 The Examining Attorney contends that “[b]ecause registrations referenced by the applicant are not in the record, the 2 May 7, 2020 Office Action, TSDR p. 1. 3 8 TTABVUE 4-5 (Examining Attorney’s brief) referring to 6 TTABVUE 7-10 (Applicant’s brief listing registrations by name and registration number). Serial No. 79268841 - 3 - trademark examining attorney objects to the applicant’s reference for evidentiary purposes and requests that the Board disregard it.”4 In its request for reconsideration, Applicant made essentially the same reference to the same number of such third-party registrations, and attached “hard copies” for 37 of them, stating that they represented a “small subset of the marks registered in the USPTO which cover goods in both classes, were registered relatively recently over the period from January 2020 to December 2020.”5 Applicant submitted these registrations for purposes of showing a relatedness between the goods listed in its prior registrations and the goods identified in the involved application. Applicant continued, “[i]f for any reason, the Examiner would like Applicant to submit any more examples of additional U.S. registrations that evidence these facts, please advise the Applicant and we will happily do that.”6 In denying Applicant’s request for reconsideration, the Examining Attorney did not address the third-party registrations, let alone raise any objection.7 4 8 TTABVUE 5. 5 April 20, 2021 request for reconsideration, TSDR pp. 2-47 (argument with copies of the registrations). 6 Id. 7 The Examining Attorney did not object to the format in which Applicant submitted the copies of the registrations, i.e., that the “hard copies” do not show current status and title. To make a third-party registration of record, a copy of the registration showing the current status and title of the registration must be submitted. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 1208.02 (June 2021). However, “if the examining attorney discusses the registrations in an Office action or brief, without objecting to them, the registrations will be treated as stipulated into the record.” Id. Because the Examining Attorney discusses the registrations in her brief, they are treated as stipulated into the record. Serial No. 79268841 - 4 - The Examining Attorney’s objection is sustained only to the extent that Applicant’s statement regarding the total number (“over 2,000”) of such third-party registrations is not supported by the record. Applicant’s unsupported assertions in its request for reconsideration and brief regarding the number of existing registrations do not suffice because, as is often stated, “[a]ttorney argument is no substitute for evidence.” See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018). Nevertheless, the copies of the 37 third-party registrations that Applicant did submit are of record and have been considered. II. Mere Descriptiveness - Argument and Analysis Absent an adequate showing of acquired distinctiveness, Trademark Act Section 2(e)(1) precludes registration of a mark on the Principal Register which, when used in connection with an applicant’s goods or services, is merely descriptive of them. A mark is “merely descriptive” within the meaning of Section 2(e)(1) “if it immediately conveys information concerning a feature, quality, or characteristic of the goods or services for which registration is sought.” In re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing In re Bayer A.G., 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). Conversely, a mark is suggestive if it “requires imagination, thought, and perception to arrive at the qualities or characteristics of the goods or services.” See Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 123 USPQ2d 1411, 1413 (Fed. Cir. 2017) (contrasting merely descriptive from suggestive marks) and In re Franklin Cty. Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012). Serial No. 79268841 - 5 - Generally, “an applicant’s reliance on Section 2(f) during prosecution presumes that the mark is descriptive.” Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009). See also In re Virtual Indep. Paralegals, LLC, 2019 USPQ2d 111512, at *9 (TTAB 2019) (citing Cold War Museum). However, although Applicant amended its application to seek registration under Section 2(f), it also argued during prosecution that “there is some question as to whether a [descriptiveness] refusal is appropriate for this trademark.”8 In addition, in its appeal brief, Applicant claims to be “preserving all of the issues previously addressed by Applicant during the prosecution of this application, including the objection to the Examiner’s assertion that the mark is merely descriptive under Section 2(e)(1).”9 Accordingly, we do not treat Applicant’s amendment to seek registration under Section 2(f) as a concession as to issue of descriptiveness; rather, we consider the amendment as being made in the alternative. See TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1212.02 (c) (July 2021). We therefore consider the merits of the refusal to include whether the mark is merely descriptive of the identified goods. The Examining Attorney argues that FEVER-TREE is simply a “hyphenated version” of the wording “fever tree,” which the evidence shows is “a type of tree and a source of quinine, which is an ingredient in tonic water, commonly contained in mixed 8 Response filed November 9, 2020, TSDR p. 2. 9 6 TTABVUE 5. Serial No. 79268841 - 6 - alcoholic drinks.”10 Specifically, the Examining Attorney relies on evidence showing that quinine is “a bitter compound that comes from the bark of the cinchona tree,” and was “originally developed as a medicine to fight malaria.”11 When “found in small doses in tonic water, [it] is safe to consume.”12 One English botanical garden website further describes quinine as “alkaloid extracted from the bark of the Cinchona, or ‘fever’ tree (Cinchona spp.)” and was once used to fight malaria.13 In addition, the Examining Attorney points to articles and Applicant’s own advertisements describing the “quinine used in [Applicant’s] tonics comes from the Democratic Republic of Congo’s Cinchona bark grown on what is known locally as ‘fever trees’ (Cinchona ledgeriana).”14 The following is an excerpt of Applicant’s tonic water advertised for sale on Amazon.com:15 10 8 TTABVUE 6. 11 From the “Healthline” website (www.healthline.com), printouts attached to December 10, 2019 Office Action, TSDR pp. 12-20. 12 Id. 13 From the “Royal Botanic Gardens Kew” website (www.kew.org), printouts attached to December 10, 2019 Office Action, TSDR pp. 21-25. 14 From the “The Spruce Eats” website (www.thespruceeats.org), printouts attached to December 7, 2020 Office Action, TSDR p. 3. 15 Id. at 12. Serial No. 79268841 - 7 - [the highlighted wording in the excerpt above includes, “By blending luscious botanical oils with spring water and quinine of the highest quality from the ‘fever trees’ from the eastern hill ranges of the Democratic Republic of Congo, we have created a delicious, award-winning tonic water. . . . Perfect in a Gin and Tonic.”]. Although Applicant’s goods, as identified in the application, are not “tonic water,” per se, they do include “pre-mixed alcoholic beverages,” which encompasses drinks having tonic water as an ingredient, e.g., gin and tonic. Thus, because a tree known colloquially as the “fever tree” is a source of quinine, which is an ingredient in tonic water which, in turn, is commonly contained in mixed alcoholic drinks, the proposed mark merely describes an ingredient of Applicant’s goods. In other words, in the context of pre-mixed alcoholic beverages with tonic water, consumers will understand Applicant’s mark as describing the source, i.e., the “fever tree,” for quinine in the goods. See In re Chamber of Commerce of U.S., 675 F.3d 1297, 102 USPQ2d 1217, Serial No. 79268841 - 8 - 1219 (Fed. Cir. 2012) (whether a mark is merely descriptive is evaluated “in relation to the particular goods for which registration is sought, the context in which it is being used, and the possible significance that the term would have to the average purchaser of the goods because of the manner of its use or intended use”) quoting In re Bayer, 82 USPQ2d at 1831. In making this determination, we keep in mind that Applicant not only uses FEVER TREE as a mark but also in lower case lettering “fever trees” in describing the source for quinine in Applicant’s tonic water. See, e.g., In re Chamber of Commerce, 102 USPQ2d at 1220 (content of applicant’s website helped support Board’s mere descriptiveness finding). When a mark identifies a product’s ingredient(s), it may be considered merely descriptive. In re TriVita, Inc., 783 F.3d 872 , 114 USPQ2d 1574, 1576 (Fed. Cir. 2015) (“The Board found that the relevant consumer, knowing that the goods are supplements containing nopal cactus juice, would understand the mark NOPALEA to convey information that the goods contain ingredients from the Nopalea cactus … Substantial evidence supports the Board’s findings, and its conclusion that ‘nopalea’ is merely descriptive of TriVita’s goods.”). For the aforementioned reasons, we find Applicant’s mark is merely descriptive of the goods identified in the application. However, we hasten to add that the mark is not “highly descriptive,” but rather sits closely to the border with marks described as only “highly suggestive.” See Earnhardt v. Kerry Earnhardt, 123 USPQ2d at 1413 (contrasting “merely descriptive” from “suggestive” marks). Serial No. 79268841 - 9 - III. Acquired Distinctiveness - Analysis If a proposed mark is held to be merely descriptive, and thus not inherently distinctive, it may be registered on the Principal Register upon proof of acquired distinctiveness, that is, by showing that the mark has become distinctive of the applicant’s goods or services in commerce. Section 2(f) of the Act, 15 U.S.C. § 1052(f). Trademark Rule 2.41(a) provides for three basic types of evidence that may be used to establish acquired distinctiveness, one of which is:16 Ownership of prior registration(s). In appropriate cases, ownership of one or more active prior registrations on the Principal Register or under the Trademark Act of 1905 of the same mark may be accepted as prima facie evidence of distinctiveness if the goods or services are sufficiently similar to the goods or services in the application; however, further evidence may be required. 37 C.F.R. § 2.41(a)(1). See also TMEP §§ 1212.04-1212.04(e). Here, Applicant claimed ownership of and relies upon the following four registrations: 1. FEVERTREE (in standard characters, hereinafter “Reg. No. ’764”) for “non- alcoholic tonic water, also known as non-alcoholic quinine water not for medicinal purposes”;17 2. FEVER-TREE (in standard characters, hereinafter “Reg. No. ’804”) for “beverages, namely, drinking waters, flavoured waters, mineral and aerated 16 The other two types of evidence are: (1) A verified statement of the applicant's substantially exclusive and continuous use of the mark in commerce for five years before the date on which the claim of distinctiveness is made; and (2) other “appropriate” evidence. Rule 2.41. Here, Applicant only relies on its prior registrations for purposes of establishing that FEVER-TREE has acquired distinctiveness for the identified goods. 17 Reg. No. 3118764 issued on July 25, 2006, under Section 44(e) based on ownership of a foreign registration. Section 8 declaration of use, with specimen, filed on June 30, 2016, was accepted by Office. The registration was also renewed under Section 9. Serial No. 79268841 - 10 - waters; and other nonalcoholic beverages, namely, soft drinks, fruit drinks and juices; tonic waters; all of the aforesaid not being for medicinal purposes”;18 3. FEVER-TREE (in standard characters) for “services for the provision of drink, namely, bar services; mobile bar services”;19 and 4. GIVE ME FEVER (in standard characters) for, inter alia, “tonic waters” and “alcoholic beverages except beers; mixed alcoholic drinks except beers; pre- mixed flavored alcoholic beverages except beer; prepared alcoholic cocktails; wines, spirits and liqueurs.”20 Applicant also relies on the fact that it was the owner of Reg. No. 4389988 for the same mark on the same goods as Applicant now seeks to register, and that said registration issued in 2013 under Section 2(f) based on Applicant’s ownership of the first two aforementioned registrations.21 The registration was cancelled on December 4, 2020. With respect to this expired registration, however, we agree with the Examining Attorney to the extent that a cancelled registration, including the basis for issuance of that registration, cannot serve as a basis for a Section 2(f) claim. See In re Dial A Mattress Operating Corp., 52 USPQ2d 1910, n. 16 (TTAB 1999), rev’d on other grounds, 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001). Only a subsisting registration may evidence that distinctiveness shown by that registration has 18 Reg. No. 3476804 issued on July 29, 2008 and is an extension of protection of an international registration. The registration is based on a Section 2(f) claim of acquired distinctiveness evidenced by Applicant’s ownership of prior Reg. No. ’764. Section 71 declaration of use or excusable non-use accepted, Section 15 declaration of incontestability acknowledged, and registration renewed. 19 Reg. No. 5764761 issued on May 28, 2019, based on an allegation of first use in commerce on June 30, 2018. 20 Reg. No. 5024686 issued on August 23, 2016, is an extension of protection of an international registration. 21 Reg. No. 4389988 issued on August 27, 2013, and was cancelled on December 4, 2020 under Section 71. Serial No. 79268841 - 11 - transferred to the mark for the goods (or services) in an application; put simply, a cancelled or expired registration is not evidence of distinctiveness. The last registration (GIVE ME FEVER) also cannot serve as a basis, under Rule 2.41(a), to establish acquired distinctiveness. The mark is clearly different in many respects and the rule specifies that any reliance on a prior registration must be for the “same mark.” As to Applicant’s ownership of the first two registrations for the marks FEVERTREE and FEVER-TREE, the Examining Attorney acknowledges Applicant’s ownership and there is no dispute that Applicant’s applied-for mark, FEVER-TREE, is the same as, or equivalent to, the marks in the prior registrations. However, the Examining Attorney argues that these registrations do not suffice for purposes of Rule 2.41(a) because the relatedness between the goods identified in the registrations, each of which covers “tonic water,” with the goods listed in the instant application “is not self-evident.”22 The Examining Attorney also disputes the relevance Applicant’s third-party registration evidence, arguing that the registrations do not show a sufficient relationship between the respective goods and noting that only 3 of the third-party registrations cover “tonic water.” The Examining Attorney’s assertion that a relationship between the goods in the application and Applicant’s prior registrations is not “self-evident” is contradicted by the reasoning behind, and evidence supporting, the descriptiveness refusal. That is, the Examining Attorney’s reasoning, which we agree with, for holding FEVER-TREE 22 8 TTABVUE 15. Serial No. 79268841 - 12 - merely descriptive of goods in the involved application, namely, pre-mixed alcoholic beverages, is that a “fever tree” is the colloquial name for a tree which provides an ingredient in “tonic water,” and the Examining Attorney maintains that “tonic water” is “commonly contained in mixed alcoholic drinks.”23 The evidence submitted by the Examining Attorney supports this. Thus, the descriptiveness refusal rests primarily, if not entirely, on a premise that “tonic water” is commonly found in pre-mixed alcoholic drinks. In addition, because the prior registered marks, FEVER-TREE and FEVERTREE, are registered for, inter alia, “tonic water,” and are on the Principal Register, these marks are presumed to be distinctive. Trademark Act Section 7(b) and 33(a), 15 US.C 1057 (b) and 1115(a); see also In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1517 (TTAB 2016). Specifically, Applicant’s FEVERTREE registration (Reg. Nos. ’764) issued on the Principal Register without a claim of acquired distinctiveness, and Applicant’s FEVER-TREE registration (Reg. No. ’804) is on the Principal Register with an accepted claim of acquired distinctiveness.24 Inasmuch as Applicant’s registered FEVERTREE and FEVER-TREE marks are presumptively distinctive for “tonic water,” it would be illogical to hold that Applicant cannot rely upon these registrations when the underlying descriptiveness refusal in this appeal is solely based on FEVER-TREE not being distinctive, or having acquired distinctiveness, because the goods in the application will presumably contain tonic water. 23 8 TTABVUE 6. 24 See, respectively, Notes 17 and 18. Serial No. 79268841 - 13 - In sum, we find there is a sufficient relationship between the goods in Applicant’s prior Reg. Nos. ’764 and ’804 and the goods identified in the application to warrant the conclusion that the distinctiveness of the mark associated with the goods, i.e., tonic water, in the registrations “transfers” to the goods listed in the application. See In re Rogers, 53 USPQ2d at 1745. Accordingly, we find Applicant may rely on its ownership of the first two listed registrations (Reg. Nos. ’764 and ’804) for purposes of Rule 2.41(a) and these suffice for purposes of establishing a prima facie showing that Applicant’s mark, FEVER-TREE, has acquired distinctiveness as a source- identifier for the goods listed in the application. See In re Flex-O-Glass, Inc., 194 USPQ 203, 205-6 (TTAB 1977). Although Trademark Rule 2.41(a)(1) is not absolute and provides that “further evidence may be required,” in addition to prior registration(s), we do not find further evidence is required in this case. Because the amount of evidence needed for Applicant to meet its burden of showing acquired distinctiveness is commensurate with the degree of descriptiveness of the mark, and because Applicant’s mark is not highly descriptive, Applicant’s burden is not high. Cf. In re Bos. Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999) (“[C]onsidering the highly descriptive nature of the proposed mark, [Applicant] has not met its burden to show that the proposed mark has acquired secondary meaning.”). See also Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005). Serial No. 79268841 - 14 - IV. Conclusion Based upon the evidence of record, including any evidence not specifically discussed herein, we find Applicant’s mark FEVER-TREE is merely descriptive of the goods identified in the application; however, Applicant has made a prima facie showing of acquired distinctiveness under Trademark Act Section 2(f) based upon its ownership of Registration Nos. 3118764 and 3476804 for the marks, respectively, FEVERTREE and FEVER-TREE, and Applicant’s mark is therefore registrable on the Principal Register under Section 2(f). Decision: The refusal to register Applicant’s mark FEVER-TREE is reversed. .