Kahiki Foods, Inc.Download PDFTrademark Trial and Appeal BoardJul 29, 201987444355 (T.T.A.B. Jul. 29, 2019) Copy Citation This Opinion is not a Precedent of the TTAB Mailed: July 29, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Kahiki Foods, Inc. _____ Serial No. 87444355 _____ Roger A. Gilcrest of Ice Miller LLP, for Kahiki Foods, Inc. Laura Golden, Trademark Examining Attorney, Law Office 103, Stacy Wahlberg, Managing Attorney. _____ Before Zervas, Bergsman and Goodman, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Kahiki Foods, Inc. (“Applicant”) seeks registration on the Principal Register of the mark PANKOCRISP (in standard characters) for Oriental and Pacific rim cuisine prepared foods, namely, frozen and chilled entrees consisting primarily of meat, fish, poultry or vegetables; frozen tempura kits consisting primarily of meat, fish poultry or vegetables; prepared stir- fry meals comprised primarily of meat and vegetables; prepared oriental and pacific rim cuisine meals comprised primarily of meat and containing some rice; breaded chicken for use in oriental and Pacific rim cuisine prepared Serial No. 87444355 - 2 - foods, namely, frozen and chilled entrees consisting of chicken, in Class 29.1 The Trademark Examining Attorney has refused registration of Applicant’s proposed mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that it is merely descriptive of Applicant’s identified goods. When the refusal was made final, Applicant appealed and requested reconsideration.2 The Examining Attorney denied the request for reconsideration, and the appeal resumed. We affirm the refusal to register. I. Evidentiary objection Applicant attached to its appeal brief copies of third-party registrations incorporating the word “Crisp.” The Examining Attorney objects to the third-party registrations on the ground that they were not timely made of record. The record in an application file should be complete prior to the filing of an appeal. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d). Applicant, in its Reply Brief, asserts that the Examining Attorney is attempting to ignore relevant evidence, that the late evidentiary submission is not prejudicial, and that the third-party registrations are probative. Applicant does not address why it did not, or could not, have timely 1 Application Serial No. 87444355 was filed on May 10, 2017, based on Applicant’s claim of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). Page references to the application record are to the downloadable .pdf version of the USPTO’s Trademark Status & Document Retrieval (TSDR) system. References to the briefs, motions and orders on appeal are to the Board’s TTABVUE docket system. 2 1 and 5 TTABVUE. Serial No. 87444355 - 3 - submitted the copies of the third-party registrations, nor did it address why it did not seek a remand so it could file the registrations. Because the third-party registrations were not timely filed and because Applicant did not provide any mitigating circumstances for its failure to comply with the rules of practice, the Examining Attorney’s objection is sustained and we will not consider the registrations. See In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018); In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1596 (TTAB 2014). II. Mere Descriptiveness A. Applicable Law Section 2(e)(1) of the Trademark Act precludes registration of a mark on the Principal Register that, when used in connection with an applicant’s goods or services, is merely descriptive of them. 15 U.S.C. § 1052(e)(1). “A mark is merely descriptive if it immediately conveys information concerning a feature, quality, or characteristic of the goods or services for which registration is sought.” Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1373 (Fed. Cir. 2018) (quoting In re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017)). We “must consider the mark as a whole and do so in the context of the goods or services at issue.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (emphasis added); In re Calphalon, 122 USPQ2d 1153, 1162 (TTAB 2017). Indeed, “[t]he question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the Serial No. 87444355 - 4 - question is whether someone who knows what the goods and services are will understand the mark to convey information about them.” DuoProSS, 103 USPQ2d at 1757 (quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)). “The major reasons for not protecting such [merely descriptive] marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products.” In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1090 (Fed. Cir. 2005) (quoting In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978)). It is the examining attorney’s burden to show that a term is merely descriptive of an applicant’s goods or services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987). Once a prima facie case is established, the burden of rebuttal shifts to Applicant. Id. The Examining Attorney contends that PANKOCRISP is merely descriptive because it “describes characteristics or features of applicant’s goods, namely, that applicant’s prepared foods, meal kits, and breaded chicken products include panko, which makes the food crisp.”3 Applicant argues to the contrary that PANKOCRISP is fanciful or suggestive because it is a composite mark that, as whole, does not directly or immediately describe the qualities, characteristics, functions or purpose of 3 Examining Attorney’s Brief (9 TTABVUE 4). Serial No. 87444355 - 5 - Appellant’s goods.”4 B. Evidence of record The word “Panko” is defined as “a type of sweet white breadcrumb.”5 The word “Crisp” is defined, inter alia, as “food that is crisp is pleasantly hard, or has a pleasantly hard surface.”6 Bread crumbs are used to make “a crisp and crunchy covering for fried foods.”7 Purveyors of panko advertise that their products make crispy products. For example, •Target.com sells Market Pantry Panko Bread Crumb advertising that users “[s]prinkle these crispy crumbs on the top of casseroles and mac and cheese or use them to create a lightweight breading for your favorite fried foods.”8 4 Applicant’s Brief, pp. 4-5 (7 TTABVUE 5-6). 5 COLLINS ENGLISH DICTIONARY (collinsdictionary.com/English/panko) attached to the August 9, 2017 Office Action (TSDR 5); see also ENGLISH OXFORD LIVING DICTIONARY (en.oxforddictionaries.com/definition/us/panko) attached to the March 13, 2018 Office Action (TSDR 7) (“(in Japanese cooking) breadcrumbs with a light, flaky texture, typically used as a coating for fried or baked food.”). 6 Id. at TSDR 8; see also MERRIAM-WEBSTER (merriam-webster.com/dictionary/crisp attached to the March 13, 2018 Office Action (TSDR 13) (“desirably firm and crunchy”); ENGLISH OXFORD LIVING DICTIONARY (en.oxforddictionaries.com/definition/us/crisp) attached to the March 13, 2018 Office Action (TSDR 14) (“(of a substance) firm, dry, and brittle, especially in a way considered pleasing or attractive. ‘crisp bacon’”); The American Heritage Dictionary of the English Language (adhdictionary.com/word/search/html?q=crisp) (TSDR 15) (“firm but easily broken or crumbled; brittle crisp potato chips”). 7 “Bread crumbs,” Wikipedia.org attached to the March 13, 2018 Office Action (TSDR 5). 8 March 13, 2019 Office Action (TSDR 8). Serial No. 87444355 - 6 - •Vitacost.com sells Kikkoman Panko Bread Crumbs advertising their unique product is “made from bread that has been custom baked to make airy, crispy crumbs.”9 •Walmart.com sells Progresso Panko Crispy Bread Crumbs.10 •Tyson (tyson.com) advertises that its TYSON Panko Chicken Nuggets are “[c]rispy on the outside, juicy on the inside.”11 Many recipes refer to the “crispy” quality of panko bread crumbs. For example, • “Walnut and Panko Crisp Fish Filets.”12 •“Mixed Salad with Hoisin Vinaigrette and Crisp Panko Chicken.”13 •“Crisp Panko Chicken Cutlets.”14 •“Crisp Panko Chicken Cutlets W/Onkatsu Sauce.”15 One person posted a comment about the recipe stating that “I love the crispiness [of] the panko.” • “Sweet and Sour Pork Salad with Crisp Panko Breadcrumbs.”16 9 Id. at TSDR 9. 10 Id. at TSDR 10. 11 Id. at TSDR 12. 12 Fareway.com attached to the September 24, 2018 Denial of Request for Reconsideration (4 TTABVUE 19). 13 MyRecipes.com attached to the March 13, 2018 Office Action (TSDR 21). 14 FineCooking.com attached to the March 13, 2018 Office Action (TSDR 22). 15 GeniusKitchen.com attached to the March 13, 2018 Office Action (TSDR 23). 16 3.NHK.or.jp attached to the September 24, 2018 Denial of Request for Reconsideration (4 TTABVUE 11). While this website has a Japanese URL, the recipe is in English and appears to be directed to consumers interested in Japanese culture. We consider the website for what limited probative value it may have. Serial No. 87444355 - 7 - • “Panko Chicken Wings – How to Make Crispy Deep fried Panko Chicken Wings at Home!!!” If you follow the recipe, the author writes that you will have “a batch of amazingly crisp panko chicken wings.”17 • “Homemade Crispy Baked Fish Sticks” But as far as fish sticks go, we can do better. Enter: flaky cod covered in golden crisp panko bread crumbs.18 Finally, food writers associate panko with crispiness. For example, •Jessica Levinson, “Panko. The Better Breadcrumb” (jessicalevinson.com) (September 30, 2010) •Panko is a Japanese breadcrumb made from bread without crusts. It has a crispier, airier texture than most types of breadcrumbs •Panko stays crisp after cooking unlike other types of breading which can get soggy.19 •“What’s the Difference Between Panko and Breadcrumbs? (TheKitchen.com) (April 20, 2015) Panko has a light, airy, and delicate texture that helps it crisp as it cooks. The texture of panko makes it especially wonderful for fried foods because it absorbs less oil than breadcrumbs, keeping food more crisp and crunchy.20 17 Whats4Chow.com attached to the September 24, 2018 Denial of Request for Reconsideration (4 TTABVUE 12). 18 KillingThyme.com attached to the September 24, 2018 Denial of Request for Reconsideration (4 TTABVUE 17). 19 September 24, 2018 Denial of Request for Reconsideration (4 TTABVUE 5). 20 September 24, 2018 Denial of Request for Reconsideration (TSDR 5). This website was illegible in the TTABVUE database; however, it was barely legible through the TSDR database. Serial No. 87444355 - 8 - •“The Benefits of Authentic Panko” (UpperCrustent.com) Today, Authentic Panko is still revered for its delicious flavor and crispy texture. … the unique crispy texture of Authentic Panko can even create great faux-fried foods by lightly spraying Panko coated foods with cooking oil and then ‘oven-frying’.21 •“Why Japanese Bread Crumbs (Panko) are Better than American Bread Crumbs” (Umami-Insider.com) (September 1, 2017) Panko is the Japanese version of bread crumbs. Boasting more flavor and crispiness than traditional bread crumbs, many health advocates say that panko is also healthier than Western bread crumbs. * * * Although slightly larger they are also lighter than Western bread crumbs, stay crispier longer, and contain fewer calories and salt. Because of their coarse shape, they also absorb less grease than Western bread crumbs which helps to maintain their crispiness and also means you ultimately consume less grease as well.22 •“Panko Crumbs and its ingredients and how [it] is different from breadcrumbs? [sic]” (pogogi.com) (July 22, 2014) As a result, panko crumbs can make your cooking crispier and crunchier, depending on how [you] use them. … If you dredge your food in panko crumbs before frying, the end result will be a crisp and light fried coating. … Panko crumbs make a wonderful crisp topping for casseroles. … 21 September 24, 2018 Denial of Request for Reconsideration (4 TTABVUE 7). 22 September 24, 2018 Denial of Request for Reconsideration (TSDR 7). This website was illegible in the TTABVUE database; however, it was barely legible through the TSDR database. Serial No. 87444355 - 9 - You can search for panko crumbs in local grocery stores and Asian markets. The ingredient is becoming more and more popular with each day. This is largely attributed to its crispy, light texture.23 •“What are Panko Bread Crumbs?” (SpendWithPennies.com) (December 7, 2017) Panko bread crumbs are the perfect crunchy addition to casseroles, fried foods, and anything that you want to add a crispy crust to!24 C. Analysis There is no dispute that PANKOCRISP contains one term, “PANKO,” that is descriptive. The issue is whether adding another descriptive term, “CRISP,” renders the applied-for mark, taken as a whole, suggestive or merely descriptive. “[A] suggestive mark requires imagination, thought and perception to reach a conclusion as to the nature of the goods, while a merely descriptive mark forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods.” DuoProSS v. Inviro, 103 USPQ2d at 1755. In considering a mark as a whole, the Board may weigh the individual components of the mark to determine the overall impression or the descriptiveness of the mark and its various components. … [I]f ... two portions individually are merely descriptive of an aspect of appellant’s goods [or services], the PTO must also determine whether the mark as a whole, i.e., the combination of the individual parts, conveys any distinctive source-identifying impression contrary to the descriptiveness of the individual parts. 23 September 24, 2018 Denial of Request for Reconsideration (TSDR 8-10). This website was illegible in the TTABVUE database; however, it was barely legible through the TSDR database. 24 September 24, 2018 Denial of Request for Reconsideration (4 TTABVUE 14). Serial No. 87444355 - 10 - In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004). If each component retains its merely descriptive significance in relation to the goods or services, then the mark as a whole is merely descriptive. Id. at 1374; In re Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1955 (TTAB 2018). And if the mark as a whole is merely descriptive, the omission of a space between the two components would not diminish its descriptiveness. “It is almost too well established to cite cases for the proposition that an otherwise merely descriptive term is not made any less so by merely omitting spaces between the words....” Minn. Mining & Mfg. Co. v. Addressograph-Multigraph Corp., 155 USPQ 470, 472 (TTAB 1967). See also In re Aquamar, Inc., 115 USPQ2d 1122, 1125 (TTAB 2015); In re Carlson, 91 USPQ2d 1198, 1200 (TTAB 2009) (URBANHOUZING merely descriptive of real estate brokerage, consultation and listing services); In re A La Vieille Russie Inc., 60 USPQ2d 1895, 1897n. 2 (TTAB 2001) (“the compound term RUSSIANART is as merely descriptive as its constituent words, ‘Russian Art”’). In this case, we find that the applied-for mark, PANKOCRISP, is merely descriptive because each term in the composite mark retains its descriptive significance. The evidence of record discussed above shows that panko coated food is crispy. The mark, PANKOCRISP, means and engenders the commercial impression of food products that feature the crispiness of panko breadcrumbs without the need for multistep reasoning.25 See, e.g., In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1824 25 Suffice it to say, we do not agree with Applicant’s argument that the Examining Attorney improperly dissected its mark. Applicant’s Brief, pp. 9-11 (7 TTABVUE 10-12). Serial No. 87444355 - 11 - (TTAB 2012) (“[T]he words in the proposed mark SEMICONDUCTOR LIGHT MATRIX retain their dictionary meanings when used by applicant; and the proposed mark in its entirety is merely descriptive, because as the words are combined they do not create a meaning different from the individual elements.”); In re King Koil Licensing Co., 79 USPQ2d 1048, 1052 (TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds, mattresses, box springs, and pillows where the evidence showed that the term “BREATHABLE” retained its ordinary dictionary meaning when combined with the term “MATTRESS” and the resulting combination was used in the relevant industry in a descriptive sense); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (holding AGENTBEANS merely descriptive of “computer software for use in the development and deployment of application programs on a global computer network” because “beans” are building blocks used to create larger pieces of software and “agents” are a type of computer program and, therefore, anyone marketing software “beans” with the attributes of “agent” programs should be able to convey that fact by using the term AGENTBEANS). In other words, consumers encountering Applicant’s PANKOCRISP “Oriental and Pacific rim cuisine prepared foods,” “frozen tempura kits,” or “breaded chicken” will immediately know that they are crispy, panko breaded products. Applicant argues that PANKOCRISP “taken as a whole” is incongruous because the noun “Panko” is placed before the adjective “Crisp” contrary to normal English construction.26 While the construction of PANKOCRISP may be somewhat unusual, 26 Applicant’s Brief, p. 10 (7 TTABVUE 11). Serial No. 87444355 - 12 - as noted above, the meaning and commercial impression engendered by the term directly and immediately conveys to consumers that the food products so identified have a crispiness characterized by panko. Compare In re Shutts, 217 USPQ 363, 364 (TTAB 1983) (SNO-RAKE held not merely descriptive of a snow-removal hand tool because the term “rake” does not readily and immediately evoke the image of a snow tool); In re Tennis in the Round Inc., 199 USPQ 496, 498 (TTAB 1978) (applicant’s mark TENNIS-IN-THE-ROUND evokes an association with the term “theater-in-the- round” which creates an incongruity because applicant’s tennis facilities are not analogous to a “theater-in-the-round”); In re John R. Beck, Inc., 150 USPQ 397, 398 (TTAB 1966) (holding TINT TONE suggestive because the terms have overlapping significance which in combination is “somewhat incongruous or redundant” and without any meaning).27 Applicant also argues that PANKOCRISP “does not have any meaning and it is not used nor known in the English language.”28 However, the fact that a word or term is not found in the dictionary is not controlling on the question of registrability when, as here, the word or term has a well understood and recognized meaning. See In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111-12 (Fed. Cir. 1987); In re 27 Applicant’s reliance on In re Vienna Sausage Mfg. Co., 156 USPQ 155, 156 (TTAB 1967) (FRANKWURST held not merely descriptive for wieners because although “frank” may be synonymous with “wiener,” and “wurst” is synonymous with “sausage,” the combination of the terms is incongruous and results in a mark that is no more than suggestive of the nature of the goods) is not persuasive because the Board in that decision did not explain the incongruity. Presumably, the basis for finding that FRANKWURST is an incongruous term is analogous to our analysis in John R. Beck, supra, in that the mark consists of the combination of the two descriptive terms with overlapping significance creating a redundancy that is incongruous and without meaning. 28 Applicant’s Brief, p. 12 (7 TTABVUE 13). Serial No. 87444355 - 13 - Planalytics, Inc., 70 USPQ2d 1453, 1456 (TTAB 2004); In re Tower Tech Inc., 64 USPQ2d at 1314; In re Orleans Wines, Ltd., 196 USPQ 516, 517 (TTAB 1977). III. Conclusion Upon consideration of the applicable law, the evidence and the arguments of Applicant and the Examining Attorney, we find that Applicant’s proposed mark PANKOCRISP is merely descriptive under Section 2(e)(1). Decision: The refusal to register Applicant’s proposed mark PANKOCRISP is affirmed. Copy with citationCopy as parenthetical citation