J. R. Simplot Company

Trademark Trial and Appeal Board

Jan 24, 2008

No. 78765736 (T.T.A.B. Jan. 24, 2008)

Mailed: January 24, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re J. R. Simplot Company
________

Serial No. 78765736
_______

Barbara A. Friedman of Edell, Shapiro & Finnan, LLC for J.
R. Simplot Company.

Linda M. Estrada, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Holtzman, Zervas and Kuhlke, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

J. R. Simplot Company, applicant, has filed an
application to register the mark PANCAKE PODS (in standard
character form) on the Principal Register for goods
ultimately identified as “pre-packaged batter-based
breakfast pastries and sweet snack foods in the nature of
jelly and/or custard-filled pancakes, and excluding made-
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B
Serial No. 78765736
2
to-order pizza dough-based entrees” in International Class
30.1
The examining attorney has refused registration under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the ground that applicant’s mark is merely
descriptive of its goods. After the examining attorney
made the descriptiveness refusal final, applicant
concurrently filed an appeal and a request for
reconsideration. Upon the examining attorney’s denial of
the request for reconsideration, the Board resumed the
appeal. Both applicant and the examining attorney have
filed briefs. We affirm the refusal to register.
“A mark is merely descriptive if it ‘consist[s] merely
of words descriptive of the qualities, ingredients or
characteristics of’ the goods or services related to the
mark.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 71
USPQ2d 1370, 1371 (Fed. Cir. 2004), quoting, Estate of P.D.
Beckwith, Inc. v. Commissioner, 252 U.S. 538, 543 (1920).
See also In re MBNA America Bank N.A., 340 F.3d 1328, 67
USPQ2d 1778, 1780 (Fed. Cir. 2003). The test for
determining whether a mark is merely descriptive is whether
it immediately conveys information concerning a significant

1 Application Serial No. 78765736, filed on December 2, 2005,
under Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b),
Serial No. 78765736
3
quality, characteristic, function, ingredient, attribute or
feature of the product or service in connection with which
it is used, or intended to be used. In re Engineering
Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re Bright-
Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not
necessary, in order to find a mark merely descriptive, that
the mark describe each feature of the goods or services,
only that it describe a single, significant ingredient,
quality, characteristic, function, feature, purpose or use
of the goods or services. In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987).
Further, it is well-established that the determination
of mere descriptiveness must be made not in the abstract,
but in relation to the goods or services for which
registration is sought, the context in which the mark is
used, and the impact that it is likely to make on the
average purchaser of such goods or services. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA
1978).
Finally, while a combination of descriptive terms may
be registrable if the composite creates a unitary mark with
a separate, nondescriptive meaning, In re Colonial Stores,
Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968), the mere

alleging a bona fide intention to use the mark in commerce.
Serial No. 78765736
4
combination of descriptive words does not necessarily
create a nondescriptive word or phrase. In re Associated
Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988). If
each component retains its descriptive significance in
relation to the goods or services, the combination results
in a composite that is itself descriptive. In re Oppedahl
& Larson LLP, supra.
It is the examining attorney’s position that “the term
‘pancake’ immediately conveys information to consumers
about the nature of the goods as pancakes [and] the term
‘pod’ conveys information to consumers about a
characteristic and feature of the goods relative to their
shape.” Br. p. 7. The examining attorney primarily
supports her position by relying on the following
dictionary definition of “pod”:
Pod: 4. Something resembling a pod, as in
compactness.

The American Heritage Dictionary of the English
Language (4th ed. 2000).

The record also includes the following dictionary
definitions of “pod” and “compact”:
Pod: 1. A somewhat elongated, two valved seed
vessel, as that of the pea or bean.

Dictionary.com; and

Compact: joined or packed together; closely or
firmly united; dense; solid.
Serial No. 78765736
5

Dictionary.com.

The examining attorney also submitted printouts from
applicant’s webpage retrieved from the Internet which show
that its goods consist of “two pancakes joined or packed
together.” Br. p. 7. The goods are specifically described
on the website as “3 [inch] pancakes heat sealed together
with real fruit or crème filling.” www.simplotfoods.com.
Excerpts from the webpage are reproduced below.

Applicant argues that “the absence of relevant
pertinent evidence establishing a direct meaning of ‘pods’
with regard to these goods, coupled with conclusions that
are ambiguous and unsupported demonstrates that no prima
facie case has been established, and the application should
have been approved for publication.” Br. p. 9. Further,
applicant argues that:
[a]lthough the examining attorney opined that
“pod” describes the form or shape of applicant’s
goods and that the goods resemble a pod, to the
contrary, the evidence of record submitted by
applicant demonstrates that “pod” does not convey
any direct information about applicant’s pancake
snacks, thereby clearly rebutting the examining
attorney’s finding. The physical attribute of a
pod, as defined in the evidence of record, is “a
somewhat elongated, two-valved seed vessel, as
Serial No. 78765736
6
that of the pea or bean”. As the record
reflects, a “seed vessel” is defined as “the
ripened and variously modified walls of a plant
ovary.” In the field of botany, which is the
context of the ... definition, “valve” is “a
segment of a wall of a seed pod or other fruit
that splits apart to reveal its contents”. The
physical shape and appearance of a pod is thus
very specific, and it neither should be extended
to, or would it be understood as, that of a
pancake.

Br. pp. 9-10.
Applicant continues stating that:
[t]he evidence of record establishes that
compactness does not refer to size, shape,
dimension, or exterior appearance, but rather it
refers to a spatial quality of being crowded
together, arranged within a small area, or having
the consistency of a compact solid ... The
connotation clearly is one of maximizing
efficiency and usable space in compact areas.
There is no evidence that the same connotation of
compactness or density extends to snack foods
that have a filling.

Br. p. 11.
In addition, applicant argues that:
[a]pplicant’s search on the Google search engine
disclosed thousands of references to “pod”
appearing with “pastry” or “baking” or “cooking”
or “food.” Although impractical to access and
review each and every reference, among the first
fifty, the only descriptive use of “pod” was in
connection with raw food ingredients in the form
of actual pods (two-valved seed vessels) such as
vanilla bean pods, carob bean pods, cardamom
pods, and cocoa beans, to name a few ... Clearly,
this evidence demonstrates that “pod” is not used
in ordinary parlance to describe products in the
field of pastry, baking, cooking, or food, other
than with respect to two-valved seed vessels.

Serial No. 78765736
7
Br. p. 13.
Finally, applicant argues that:
[i]f a filled pastry were considered to resemble
a pod, then it would be expected that there would
be evidence that such types of pastries or snacks
were referred to, either by competitors in the
food service industry, by the media, or by
consumers, as “pods.” To the contrary, there is
a notable absence of such evidence in the record,
and Applicant was unable to locate any such
references in various searches performed on the
internet search engines.

Reply Br. p. 4.
Applicant concludes that PANCAKE PODS “is the
archetypical ‘good’ trademark, i.e., one that may shed some
light upon the nature of the applicant’s snacks, but that
does so with an element of incongruity, requiring a multi-
stage reasoning process and imagination on the part of the
observer in order to be understood.” Reply Br. p. 5.
After careful review of the evidence and consideration
of applicant’s arguments, we conclude that the record in
this case supports a finding of mere descriptiveness of the
phrase PANCAKE PODS. Applicant does not dispute that the
word PANCAKE is descriptive of its goods. Reply Br. p. 2.
Just as PANCAKE describes the nature of the goods, PODS
also describes what the nature of this product is, in that
it consists of two filled halves joined together. We find
the dictionary definition for PODS as “something resembling
Serial No. 78765736
8
a pod, as in compactness” combined with applicant’s webpage
sufficient to determine that the word “PODS” when used in
connection with applicant’s “3 [inch] pancakes heat sealed
together with real fruit or crème filling” merely describes
the nature of the goods, i.e., resembling a pod. See In re
Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087 (Fed. Cir.
2005) (dictionary definition and press release about the
applicant’s goods constituted substantial evidence to
support finding that STEREOTAXIS is merely descriptive).
Applicant’s attempt to limit the meaning of “pod” to only a
specific elongated shape described by a seed pod is not
warranted by the definition “something [i.e., anything]
resembling [not identical to] a pod, as in compactness.”
Moreover, the definition “resembling a pod” is not limited
by applicant’s narrow application of the term “compactness”
and, in any event, applicant’s product could certainly be
described as compact, i.e., “joined or packed together;
closely or firmly united,” as depicted on its webpage
fitting into the pocket of a backpack.
We further note, that while the record does not
present examples of “pod” used to describe bakery items, it
appears to be used to describe prepackaged espresso, coffee
and tea. See Google search result summary attached to
Applicant’s Response (10/17/06) (“The following Home Cafe
Serial No. 78765736
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coffee machines and coffee pods are currently the best”;
“Coffee Pods: Buy thousands of gourmet foods from over 100
countries...”; “Espresso Pods – Cooking.com”; “Find your
Starbucks Espresso Pods here at Cooking.com”; “Get the
Simplehuman Pod Brewer for ... at Cooking.com
www.singleservecoffee.com”; “TeaOne English Breakfast Tea
Pods”; “Espresso pods are not compatible with single-serve
pod coffee makers, such as ...”; “Anyone Have A Pod
Coffeemaker?”; “Each pod measures 2in. in diameter, By
using a coffee or espresso maker specifically designed for
use with pods, the pod”; “More espresso pods. Easy to use
with no mess to clean up.”; “The Gourmet Kitchen has
everything a gourmet chef could want. Save on cooking
products including ... Melitta coffee makers, coffee
pods...”; and “Kraft Foods is offering a free bag of
Maxwell House coffee pods to be used with the new style
single serving coffee makers.”).2 Thus, in the food and
beverage industry, at least as to espresso, coffee and tea,
pod appears to describe the manner in which the goods are
provided. In any event, it is well established that the
fact that applicant may be the first and only user of a

2 The probative value of search engine summary results depends
upon the facts of a particular case. See In re Fitch IBCA, Inc.,
64 USPQ2d 1058, 1060 (TTAB 2002). In this case, we find that the
summaries provide sufficient context for the term to be of some
probative value.
Serial No. 78765736
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term that is merely descriptive does not justify
registration if the only significance conveyed by the term
is merely descriptive. In re National Shooting Sports
Foundation, Inc., 219 USPQ 1018 (TTAB 1983). Clearly,
these terms separately have a descriptive significance in
relation to applicant’s goods. The question remains
whether combined they present a unique or incongruous
combination.
We find that when combined the terms PANCAKE and PODS
do not lose their descriptive significance and, in fact,
make clear that applicant’s goods consist of pancakes
resembling a pod. Thus, we are persuaded by the evidence
of record that the words PANCAKE and PODS are merely
descriptive of applicant’s identified goods and that when
combined do not present a unique or incongruous meaning.
In re Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002).
Looking at the average or ordinary prospective
customers of applicant’s goods, as we must, In re Omaha
National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir.
1987), the average consumer of applicant’s goods would
certainly know and be familiar with the terms pancake and
pods. Nor would it take any speculation or mental leap to
understand that PANCAKE PODS describes pod-like, filled
pancakes.
Serial No. 78765736
11
Viewing PANCAKE PODS as a whole, we find the evidence
of record sets forth a prima facie case that such phrase is
merely descriptive and applicant has not rebutted this
showing. Thus, we are persuaded that when applied to
applicant’s goods, PANCAKE PODS immediately describes,
without need for conjecture or speculation, a significant
feature or function of applicant’s goods. Nothing requires
the exercise of imagination, cogitation, mental processing
or gathering of further information in order for
prospective consumers of applicant’s goods to perceive
readily the merely descriptive significance of PANCAKE PODS
as it pertains to applicant’s goods.
Decision: The refusal to register under Section
2(e)(1) is affirmed.