HEB Grocery Co., L.P.

Trademark Trial and Appeal Board

Dec 17, 2003

No. 76329770 (T.T.A.B. Dec. 17, 2003)

Mailed: December 17, 2003
Paper No. 12
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re HEB Grocery Company, L.P.
________
Serial No. 76329770
_______
Kirt S. O'Neill and John A. Tang of Akin, Gump, Strauss, Hauer &
Feld, L.L.P. for HEB Grocery Company, L.P.
David C. Reihner, Trademark Examining Attorney, Law Office 111
(Craig Taylor, Managing Attorney).
_______
Before Cissel, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
HEB Grocery Company, L.P. has filed an application to
register the designation "MEAL DEAL!" as a service mark for
"supermarket services."1
Registration has been finally refused under Sections 1,
2, 3 and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1053
and 1127, solely on the basis that, as used by applicant in the
manner indicated by the specimens, the designation sought to be
registered does not function as a service mark to identify and
1 Ser. No. 76329770, filed on October 24, 2001, which is based on an
allegation of a date of first use anywhere and in commerce of July 15,
1998.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76329770
2
distinguish applicant's services but, instead, is simply "a
merchandising slogan." Copies of the relevant portions (in
slightly reduced form) of the specimens are reproduced below.
Ser. No. 76329770
3
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
Applicant, noting in its initial brief that, under
Sections 1 and 3 of the Trademark Act, the "owner of a service
Ser. No. 76329770
4
mark that is used in commerce may register its mark on the
Principal Register" and that, pursuant to Section 45 of the
Trademark Act, a service mark is defined in pertinent part as "a
word used to identify and distinguish the services of one person
from the services of another," argues that (footnote omitted):
Applicant's mark as used in commerce (as
evidenced by the specimens of record) clearly
demonstrates a word that is used to
distinguish the services of one person from
the services of another. The specimens of
record consist of newspaper advertisements.
The mark is in very large print as compared
with the rest of the text in the
advertisements. In addition, the mark is in
bold print and is set aside from the rest of
the text in the advertisements ....
....
Furthermore, Applicant uses the common
law trademark designation "TM" to notify
others of the term MEAL DEAL!['s] trademark
significance. Clearly, a purchaser of
Applicant's services would view the words
"MEAL DEAL!" as an indicator of source. The
various specimens of record evidence that
Applicant's mark is uniformly displayed
providing an unmistakable impression to
consumers of a brand name.
Moreover, with respect to the Examining Attorney's
contention that consumers would regard the designation "MEAL
DEAL!" in applicant's newspaper ads solely as a "merchandising
slogan" which is without any service mark significance, applicant
asserts in its initial brief that "a term may serve dual
functions" and that "[a]s long as one of the functions is one of
an indicator of source, such [a] term may function as a
trademark." Applicant reiterates, in view thereof, that as shown
by the specimens, its "use of the mark MEAL DEAL! in big/bold
type style and use of the common law trademark designation 'TM'
Ser. No. 76329770
5
clearly demonstrates that the mark MEAL DEAL! functions as a
trademark." Citing In re Niagara Frontier Services, Inc., 221
USPQ 284 (TTAB 1983), applicant additionally submits in its
initial brief that the Examining Attorney's inclusion in the
record of "various electronic excerpted articles to suggest that
the term 'MEAL DEAL!' is a commonly used commercial designation"
is improper inasmuch as "evidence for a refusal to register an
applicant's mark (based on a failure to function as a trademark)
can only be found by [examination of] an applicant's specimens of
record." Applicant further urges in its initial brief, however,
that "even if the excerpts are allowed as permissible evidence,
the ... Examining Attorney has failed to provide a single
reference showing that others are using Applicant's mark 'MEAL
DEAL!' (with an exclamation point) as a commercial designation"
(footnote omitted). Applicant accordingly concludes that because
"the specimens of record evidence Applicant's use of the mark
'MEAL DEAL!' as an indicator of source," the refusal to register
"should be reversed."2
2 Nonetheless, in its initial brief, applicant further asserts that:
In the alternative, should the Board be inclined to
affirm the ... Examining Attorney's Section [1,] 2, 3 and
45 refusal, Applicant respectfully requests that the appeal
be suspended and the instant application be remanded ...
for amendment of the basis of the application to Section
1(b) of the Lanham Act. See TBMP Section 1205 and TMEP
Section 806.03(c). Applicant includes [herewith] a
verified statement under 37 C.F.R. Section 2.20 declaring
that Applicant had a bona fide intent to use the mark in
commerce at the time of the application filing date ....
Since the ... refusal was based on Applicant's
specimens of record, the amendment of the basis to Section
1(b) will allow Applicant the ability to submit an
Ser. No. 76329770
6
As stated by the Court in In re Bose Corp., 546 F.2d
893, 192 USPQ 213, 215 (CCPA 1976): "The Trademark Act is not an
act to register mere words, but rather to register trademarks [or
service marks]. Before there can be registration, there must be
a trademark [or service mark], and unless words have been so used
they cannot qualify. In re Standard Oil Co., 47 CCPA 829, 275
F.2d 945, 125 USPQ 227 (1960)."3 The court, noting that "the
classic function of a trademark [or service mark] is to point out
distinctively the origin of the goods [or services] to which it
is attached," further indicated that (footnote omitted):
An important function of specimens in a
trademark [or service mark] application is,
manifestly, to enable the PTO to verify the
statements made in the application regarding
trademark [or service mark] use. In this
regard, the manner in which an applicant has
employed the asserted mark, as evidenced by
the specimens of record, must be carefully
considered in determining whether the
acceptable specimen pending the issuance of a Notice of
Allowance.
However, as set forth in what is currently TBMP §1205.01 (2d ed. June
2003), "[a]n application which has been considered and decided on
appeal may be amended, if at all, only in accordance with 37 CFR
§2.142(g)," which provides in relevant part that such an application
"will not be reopened except for the entry of a disclaimer under §6 of
the Act of 1946." Thus, as correctly noted by the Examining Attorney
in his brief, the alternative requested by applicant is not permitted
at this stage of the appeal.
3 In this regard, Section 45 of the Trademark Act, 15 U.S.C. §1127,
defines the term "service mark" in relevant part as including "any
word, name, symbol, or device, or any combination thereof ... used by
a person ... to identify and distinguish the services of one person,
including a unique service, from the services of others and to
indicate the source of the services, even if that source is unknown."
Likewise, the same section defines the term "trademark" in pertinent
part as including "any word, name, symbol, or device, or any
combination thereof ... used by a person ... to identify and
distinguish his or her goods, including a unique product, from those
manufactured or sold by others and to indicate the source of the
goods, even if that source is unknown."
Ser. No. 76329770
7
asserted mark has been used as a trademark
[or service mark] with respect to the goods
[or services respectively] named in the
application.
Id. at 215-16. Moreover, as pointed out by the Board in In re
Remington Products, Inc., 3 USPQ2d 1714, 1715 (TTAB 1987):
[T]he mere fact that [an] applicant's
slogan [or designation] appears on the
specimens, even separate and apart from any
other indicia which appear on them, does not
make it a trademark [or service mark]. To be
a mark, the term, or slogan, must be used in
a manner calculated to project to purchasers
or potential purchasers a single source or
origin for the goods [or services] in
question. Mere intent that a term function
as a trademark [or service mark] is not
enough in and of itself, any more than
attachment of the trademark [or service mark]
symbol would be, to make a term a trademark
[or service mark].
A critical element in determining
whether a term is a trademark [or service
mark] is the impression the term makes on the
relevant public. In this case, the inquiry
becomes would the term be perceived as a
source indicator or merely an informational
slogan?
We agree with the Examining Attorney that the manner of
use of the designation "MEAL DEAL!," as evidenced by the
specimens of record, demonstrates that such terminology would be
perceived by applicant's customers and potential purchasers of
its supermarket services as merely "a merchandising slogan" which
is devoid of service mark significance. As the Examining
Attorney persuasively observes in his brief:
The use by applicant of the designation MEAL
DEAL! (a common advertising expression) along
with other wording and representations of
food packaging on its advertising specimens
imparts to consumers the message that they
will receive favorable bargains for food
[items] under certain circumstances.
Ser. No. 76329770
8
Applicant's designation MEAL DEAL! informs
purchasers about bargains for food [items],
but does not act as a service mark.
In support of his position, the Examining Attorney has
made of record definitions from Webster's II New Riverside
University Dictionary (1988) which, in pertinent part, define
"meal" as "[t]he food served and eaten in one sitting" and "deal"
as "[a] favorable bargain or sale." The Examining Attorney has
also made of record excerpts from his search of the "NEXIS"
database showing that the informational statement "MEAL DEAL(S)"
"is a commonly used advertising expression" in the grocery and
supermarket industry and thus, as used on the specimens furnished
by applicant, would be perceived by its customers as simply a
merchandising slogan for certain special offers on food items and
not as a service mark for applicant's supermarket services. The
latter evidence, as the Examining Attorney correctly points out
in his brief, "is acceptable to show the public understanding of
commercial wording" and therefore, contrary to applicant's
contention, may properly be considered in assessing the public's
reaction to the manner of use of the designation "MEAL DEAL!" as
shown by the specimens of record. See, e.g., In re Manco, Inc.,
24 USPQ2d 1938, 1942 (TTAB 1992). Representative excerpts are
set forth below (emphasis added):
"G&R Felpausch ... recently completed a
successful "Meal Deals" promotion in which
its general merchandise and center store
teams worked together to encourage trial of a
specialty food product line.
....
In addition to the in-store promotional
materials, the pasta-pot Meal Deal also was
advertised in the stores' weekly circular.
Ser. No. 76329770
9
G&R Felpausch conducts two or three such
Meal Deal promotions per year ...." --
Supermarket News, April 8, 2002;
"Meal deals, which combine beverages and
snacks ..., are becoming a big business." --
Promo, February 2002;
"Did you know that Bi-Lo grocery stores
features [sic] meal deals each week? For
example, last week the store ... offered two
Red Baron pizzas, a six-pack of Pepsi cola
and a Pepperidge Farm layer cake for $9.58.
Look for flyers advertising each week's deal
at the front of the stores." -- Myrtle Beach
Sun-News, January 30, 2002;
"Menu: Complete turkey meal deals
ranging from $22.99 for 2 to $34.99 for 8.
Highlights: Now here's a meal deal for
2: 2 pounds rotisserie turkey breast, 1
pound mashed potatoes, 1 pint gravy, 1 pound
dressing, 1 pound green bean casserole, 1
pound cranberry salad, 4 dinner rolls for
$22.99." -- Daily Oklahoman, October 18,
2000;
"More than half a page in the Denver
division's circular recently was devoted to
'meal deals' and 'sandwich deals' and the
page was headlined 'deli lunch deals.' Items
bundled together were offered at prices
reduced even from their everyday 'deal'
retail. Three different types of sandwiches,
bundled with a salad and soda, were offered
in the ad. There was a 'classic sandwich
deal, which included a sandwich, a 5.5-ounce
salad and a 32-ounce fountain drink for
$3.79. ....
Another, a 'gourmet sandwich meal deal,'
offered the same accoutrements with 'any
whole gourmet sandwich' for $4.79. A photo
of a sandwich on a sub roll with salad and
soda alongside illustrated that part of the
ad. Also a 'wrap sandwich meal deal' was
advertised for $4.79. That included any wrap
sandwich with a salad and fountain drink.
Each of the sandwich deal ads indicated that
there was a savings of 50 cents." --
Supermarket News, October 12, 1998; and
Ser. No. 76329770
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"Randalls Food Market offered shoppers a
'Super Meal Deal' by tying together items
from the produce and meat departments.
With the purchase of a boneless chuck
roast, shoppers received five pounds of
russet potatoes, three pounds of yellow
onions and one pound of carrots free,
according to an ad that ran in the Houston
Chronicle three weeks ago." -- Supermarket
News, May 27, 1996.
In light of the above, it is clear that, irrespective
of the fact that the designation "MEAL DEALS!" appears in
applicant's advertising in a relatively large-size bold print
which is set aside from the rest of the text in the ads and is
accompanied by the symbol "TM," actual and prospective customers
viewing the ads would perceive such designation solely as a
merchandising or informational slogan touting a deal or bargain
on certain food items which, when consumed together, would make a
meal. Specifically, applicant's "Meal Deal!" ad offers a free
"H-E-B Soda," "Mrs. Smith's Apple or Cherry Cobbler" and
"Pillsbury Frozen Biscuits" if customers "buy any H-E-B Classic
Selection Entrées," while its "taco Meal Deal!" ad indicates that
shoppers "get free" a package of "Tia Rosa Taco Shells," a
package of "Fresh Express Shreds!" and a jar of "Pace Picante
Sauce" when they buy both "[t]wo packages of H-E-B Fully Cooked
Seasoned Beef Crumbles" and "H-E-B Fancy Shredded Cheddar
Cheese." Similarly, applicant's "sparerib Meal Deal!" and "pizza
Meal Deal!" ads respectively provide that consumers who "buy
H-E-B Seasoned Pork Spareribs ... get free ... Hill Country Fare
White Sandwich Bread," "Hill Country Fare Corn or Cut Green
Beans" and a "H-E-B Soft Drink," while those who "buy H-E-B
Ser. No. 76329770
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Classic Selections Pizza ... get free ... H-E-B Creamy Creations
Premium Ice Cream" and "H-E-B Soft Drinks."
Thus, contrary to applicant's contention, as so used
the designation "MEAL DEAL!" would not be additionally regarded
by purchasers of certain specially advertised food products as a
source indicator for applicant's supermarket services,
notwithstanding applicant's intent that such designation function
as a service mark by the inclusion therein of an exclamation
point. See, e.g., In re Brock Residence Inns, Inc., 222 USPQ
920, 922 (TTAB 1984) [designation "FOR A DAY, A WEEK, A MONTH OR
MORE!" for hotel services held so informational in character that
consumers are unlikely to perceive it as an indication of source,
with the Board noting that "[t]he presence of the exclamation
point at the end of the designation does not alter our opinion
because it serves as well to emphasize the ... informational
significance of the designation as to indicate any other
meaning"]; and In re Nosler Bullets, Inc., 169 USPQ 62, 64 (TTAB
1971) [mere fact that an applicant "may at times use the
designation TM in connection with the term does not make an
otherwise unregistrable term a trademark"]. Furthermore, the
fact that applicant appears to have consistently utilized the
designation "MEAL DEAL! in big/bold type style" simply serves to
highlight or draw attention to such offers or specials, much in
the same way that, for instance, the big and bold expression
"fresh produce!" in the flyer featuring its sparerib and pizza
"MEAL DEAL!" directs consumers to the prices being offered by
applicant on certain fruits and vegetables.
Ser. No. 76329770
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The designation at issue in this appeal, therefore, is
most analogous to the holdings in, for example, In re Wakefern
Food Corp., 222 USPQ 76, 78 (TTAB 1984), in which the Board found
that, as used in advertising and promotional material submitted
as specimens of use, the phrase "WHY PAY MORE!" was a "relatively
common merchandising slogan [which] does not act or function as a
mark which identifies and distinguishes applicant's [supermarket]
services from those of others"; and in In re Niagara Frontier
Services, Inc., supra at 285, in which the Board held that, as
used in newspaper advertisements furnished as specimens of use,
the slogan "WE MAKE IT, YOU BAKE IT!" referred "only to the pizza
which may be purchased in applicant's store" and "in no way
serves to function as a service mark to identify and distinguish
applicant's supermarket grocery store services." Similarly, as
previously explained, the designation "MEAL DEAL!," being a form
or slight variant of the fairly commonly used commercial phrase
"meal deal," is used by applicant in the specimens of record
simply as a merchandising slogan and does not function as a mark
which identifies and distinguishes applicant's supermarket
services.
Decision: The refusal under Sections 1, 2, 3 and 45,
is affirmed.