H.K. Canning, Inc.

Trademark Trial and Appeal Board

Feb 9, 2001

No. 75319603 (T.T.A.B. Feb. 9, 2001)

2/9/01
Paper No. 17
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re H.K. Canning, Inc.
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Serial No. 75/319,603
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Stephen Grubb for H.K. Canning, Inc.
Darlene D. Bullock, Trademark Examining Attorney, Law
Office 111 (Craig Taylor, Managing Attorney).
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Before Cissel, Hairston and Rogers, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
On July 7, 1997, applicant filed the above-referenced
application to register the mark shown below
on the Principal Register for “canned vegetables; canned
soup,” in Class 29. The application was based on
applicant’s assertion that it possessed a bona fide
intention to use the mark in commerce on these goods. The
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/319,603
2
application included a translation of the term “FRIJOLES
NORTENO” as “Northern beans.”
The Examining Attorney refused registration under
Section 2(e)(1) of the Lanham Act on the ground that the
mark applicant seeks to register merely describes the goods
set forth in the application, in that it states the name of
the canned vegetables or a major ingredient of the soup.
Attached as an exhibit to the refusal to register was an
entry from the glossary in Food Lover’s Companion, (1995),
wherein the “great Northern bean” is described as a large
white bean resembling a lima bean in shape, but with a
delicate, distinctive flavor.
Applicant prefaced its response to the refusal to
register by stating that because the application was based
on applicant’s intention to use the mark and could not be
converted to the Supplemental Register until use could be
established, counsel had no choice but to present arguments
in favor of registration on the Principal Register. An
argument on the issue of descriptiveness followed this
remark.
The Examining Attorney was not persuaded by
applicant’s argument, and in the second Office Action, she
made the refusal to register under Section 2(e)(1) of the
Lanham Act final. After providing her explanation of why
Ser No. 75/319,603
3
the mark merely describes the goods, she further noted that
“the proposed mark appears to be generic as applied to the
goods and, therefore, incapable of identifying the
applicant’s goods and distinguishing them from those of
others… Under these circumstances, the Examining Attorney
cannot recommend an amendment to proceed under Trademark
Act Section 2(f), 15 U.S.C. Section 1052(f), or an
amendment to the Supplemental Register.”
Attached to the final refusal to register were a
number of excerpts retrieved from the Nexis
database of
publications. These excerpts show the term “northern
beans” used as the name of a particular type of beans, just
as “lima beans” and “black beans” are terms used to name
other kinds of beans. These excerpts repeatedly show
northern beans as ingredients in recipes.
Notwithstanding the Examining Attorney’s advice
against seeking registration on the Supplemental Register,
applicant filed an amendment to the Supplemental Register.
The Examining Attorney refused to accept the amendment
because an application based on the allegation that the
applicant intends to use the mark in commerce may not be
amended to the Supplemental Register until the applicant
files an acceptable amendment to allege use or an
acceptable statement of use.
Ser No. 75/319,603
4
Applicant then amended the application to allege use
of the mark in interstate commerce as of November 24, 1998,
and amended the application to the Supplemental Register.
The amendment also identified the color for which the
drawing is lined as yellow1.
The Examining Attorney responded to the amendment by
refusing registration on the Supplemental Register under
Section 2(e)(1) of the Act on the basis that the mark is
the generic name for the goods. Applicant responded with
argument that “FRIJOLES NORTENO” is not generic for the
goods set forth in the application.
The Examining Attorney considered applicant’s
arguments, but was not persuaded by them. She made final
“the refusal to register on the basis that the mark is
generic.” She explained that because applicant’s
identification-of-goods clause is written broadly, all
types of vegetables, including northern beans, are included
within it, and that because the mark applicant seeks to
register is essentially the Spanish term for "“northern
beans," it “is therefore the generic name of the class of
goods.”
1 Neither applicant nor the Examining Attorney ever addressed the
issue of whether the particular display of applicant’s mark,
including the use of the color yellow, renders the mark capable
of indicating source. Accordingly, it is not an issue before us.
Ser No. 75/319,603
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Applicant timely filed a Notice of Appeal. Both
applicant and the Examining Attorney submitted appeal
briefs, but applicant did not request an oral hearing
before the Board.
Along with her brief on appeal, the Examining Attorney
submitted a request for remand.2 Her explanation of why she
thinks a remand should be granted appears to be centered
around the fact that she referenced Section 2(e)(1) of the
Act with respect to the first refusal based on mere
descriptiveness, but did not specifically mention Section
23 of the Act when she refused registration on the
Supplemental Register.
The request for remand is denied. A careful reading
of the application file and the appeal briefs filed by both
applicant and the Examining Attorney makes it clear that
both applicant and the Examining Attorney understood that
the issue in dispute is registrability on the Supplemental
Register in view of the Examining Attorney’s contention
that the term “FRIJOLES NORTENO” is generic in connection
with the goods set forth in the application. Although it
2 When he was contacted by Administrative Trademark Judge Cissel
by telephone on February 1, 2001, counsel for applicant stated
that he opposed the remand, but that he did not intend to file a
written opposition to the request for remand. He also waived his
right to file a brief in reply to the Examining Attorney’s brief
on appeal.
Ser No. 75/319,603
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is true that the Examining Attorney failed to cite the
appropriate section of the Lanham Act in reference to this
refusal, her oversight did not lead to any confusion about
the nature of the statutory refusal or the evidence in
support of it. Both applicant and the Examining Attorney
predicate their arguments on the fact that if the term in
question is generic, then it is not registrable on the
Supplemental Register because it does not possess the
capacity to identify applicant’s goods and distinguish them
from similar goods produced by others. In fact, as noted
above, these are the precise terms used by the Examining
Attorney in the second Office Action. In view of these
circumstances, remand just to indicate the correct number
of the section of the statute which is the basis for
refusal is not necessary.3
Both applicant and the Examining Attorney acknowledge
that the Act prohibits registration of generic terms on the
Supplemental Register. We therefore turn to the question
3 We note here that applicant has argued that by first refusing
registration on the Principal Register on the ground that the
mark is merely descriptive and then refusing registration on the
Supplemental Register because the mark is generic, the Examining
Attorney has failed to follow proper examination procedure. This
argument is not well taken, however, for the reasons explained in
the brief of the Examining Attorney. As has often been stated, a
generic term is the ultimate in descriptive terminology.
Applicant was advised as early as the second Office Action that
the term it seeks to register is generic, and hence incapable of
identifying and distinguishing applicant’s goods.
Ser No. 75/319,603
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of whether or not the refusal to register is appropriate
because the term “FRIJOLES NORTENO” is generic in
connection with canned vegetables.
In H. Marvin Ginn Corp. v. International Association
of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir.
1986), the Court of Appeals for the Federal Circuit set
forth the test for determining whether a designation is
generic. First we must ask what the name is for the class
of goods or services at issue. Then we must determine
whether the relevant public understands the designation
sought to be registered to refer primarily to that class of
goods or services.
The evidence submitted by the Examining Attorney
clearly establishes that “FRIJOLES NORTENO” is generic for
applicant’s canned vegetables. There can be no doubt that
the articles excerpted from the Nexis
database show the
term “northern beans” as the generic name of a vegetable,
nor can there be any doubt that “FRIJOLES NORTENO” is
Spanish for “northern beans.” Because the Spanish
equivalent of a generic term is considered to be a generic
term for the purpose of consideration for registration as a
trademark under the Lanham Act, “FRIJOLES NORTENO” is no
more registrable for canned vegetables than the term
“northern beans” would be. See J. McCarthy, McCarthy On
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Trademarks and Unfair Competition, Section 11:34 (4th ed.-
1999), and cases cited therein. In view of the fact that
many of the prospective purchasers of these products in the
United States no doubt are familiar with the Spanish
language, the evidence of record establishes that both the
English term and the Spanish equivalent are understood by
the relevant purchasing public as the name of the product.
As such, both are incapable of identifying the source of
applicant’s goods and distinguishing them from similar
goods produced by others.
In summary, the mark is unregistrable on the
Supplemental Register because its literal component,
“FRIJOLES NORTENO,” is a generic name for a type of
vegetable, and the application specifies the goods with
which the mark is used as “canned vegetables.”
Decision: The refusal of registration on the
Supplemental Register is affirmed.
Ser No. 75/319,603
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