88491138 (T.T.A.B. Jun. 29, 2020)

Kevin Jester

Trademark Trial and Appeal BoardJun 29, 2020

88491138 (T.T.A.B. Jun. 29, 2020)

This Opinion is Not a Precedent of the TTAB Mailed: June 29, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Kevin Jester _____ Serial No. 88491138 _____ Kevin Jester, pro se. Jesse Nelman, Trademark Examining Attorney, Law Office 113, Myriah Habeeb, Managing Attorney. _____ Before Zervas, Shaw and English Administrative Trademark Judges. Opinion by Shaw, Administrative Trademark Judge: Kevin Jester (“Applicant”) seeks registration on the Principal Register of the mark SORGOGRASS (in standard characters) for goods identified as “Syrup for flavoring food or beverages,” in International Class 30.1 Applicant has voluntarily disclaimed the term GRASS.2 The Trademark Examining Attorney has refused registration of Applicant’s mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that 1 Application Serial No. 88491138 was filed on June 27, 2019 under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce. 2 Applicant’s Response to Office Action dated September 30, 2019, p. 12. Serial No. 88491138 - 2 - Applicant’s mark is merely descriptive of the identified goods. When the refusal was made final, Applicant appealed and requested reconsideration. The request for reconsideration was denied, and the appeal resumed. We affirm the refusal to register. I. Mere Descriptiveness – Applicable Law “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, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (quoting Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543, 40 S.Ct. 414, 64 L.Ed. 705 (1920)); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009- 10 (Fed. Cir. 1987). Whether a particular term is merely descriptive is determined in relation to the goods for which registration is sought and the context in which the term is used, not in the abstract or on the basis of guesswork. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). We “must consider the mark as a whole and do so in the context of the goods … at issue.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). This applies to compound marks as well. 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, the PTO must also determine whether the mark as a whole, i.e., the combination of the individual parts, conveys any Serial No. 88491138 - 3 - distinctive source-identifying impression contrary to the descriptiveness of the individual parts. Oppedahl & Larson, 71 USPQ2d at 1372. 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). Moreover, if the component terms taken together are merely descriptive, the omission of a space between the two components would not diminish the mark’s 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, 1897 n.2 (TTAB 2001) (“[T]he compound term RUSSIANART is as merely descriptive as its constituent words, ‘Russian Art”’). 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, 3 USPQ2d at 1010. Once a prima facie case is established, the burden of rebuttal shifts to Applicant. Id. II. Arguments and Evidence The Examining Attorney argues that the mark is merely descriptive because: Serial No. 88491138 - 4 - The term SORGO is defined as sorghum, which is any of an economically important genus of tropical grasses that are cultivated primarily for the sweet juice in their stems from which sugar and syrup are made. Thus, in the context of applicant’s goods, the applied-for mark immediately conveys and merely describes an ingredient of applicant’s goods in that applicant’s goods are made from or contain sorgo grass or the sugar and syrup made from sorgo grass.3 In support of the refusal, the Examining Attorney introduced a number of excerpts from dictionaries, encyclopedias, and third-party web pages, defining and describing “sorghum,” and “sorgo,” as well as providing information about sorghum and sorgo products. The following dictionary definitions are representative: • Sorghum:4 1 : any of an economically important genus (Sorghum) of Old World tropical grasses similar to corn in habit but with the spikelets in pairs on a hairy rachis [stem] especially : any of various cultivars (such as grain sorghum or sorgo) derived from a wild form (S. bicolor synonym S. vulgare) 2 : syrup from the juice of a sorgo that resembles cane syrup • Sorgo:5 a sorghum cultivated primarily for the sweet juice in its stems from which sugar and syrup are made but also used for fodder and silage • Sorgo syrup:6 syrup made from sorghum 3 Examining Attorney’s Br., p. 4, 9 TTABVUE 4. 4 Https://www.merriam-webster.com/dictionary/sorghum, Office Action of September 19, 2019, pp. 2-9. 5 Https://www.merriam-webster.com/dictionary/sorgo, Id. at 10-14. See also similar dictionary definitions from the American Heritage Dictionary of the English Language, the Collins English Dictionary, vocabulary.com, and yourdictionary.com, Office Action of October 1, 2019, pp. 2-16. 6 Https://www.merriam-webster.com/dictionary/sorgo, Office Action of October 1, 2019, pp. 54-58. See also a similar dictionary definition from the freedictionary.com, Id. at 59-61. Serial No. 88491138 - 5 - The Examining Attorney introduced an excerpt from the encyclopedia web site Britannica.com that provides the following information about Sorghum:7 Sorghum, (Sorghum bicolor), also called great millet, Indian millet, milo, durra, or shallu, cereal grain plant of the grass family (Poaceae) and its edible starchy seeds. The plant likely originated in Africa, where it is a major food crop, and has numerous varieties, including grain sorghums, used for food; grass sorghums, grown for hay and fodder; and broomcorn, used in making brooms and brushes. In India sorghum is known as jowar, cholam, or jonna, in West Africa as Guinea corn, and in China as kaoliang. Sorghum is especially valued in hot and arid regions for its resistance to drought and heat. * * * Sweet sorghums, or sorgos, are grown mainly in the United States and southern Africa for forage and for syrup manufacture and are sometimes used in the production of ethyl alcohol for biofuel. The Examining Attorney’s evidence includes the following excerpts from third- party retail web sites that show use of the term “sorgo grass” as a grass included within decorative dried flower and grass arrangements: • Anvente.com – An online floral supply web site offering dried “Sorgo Grass” for use in flower arrangements;8 • Flowershopchs.com – An online store offering small flower bouquets or corsages made with dried flowers and dried “sorgo grass;”9 and 7 Https://www.britannica.com/plant/sorghum-grain, Office Action of September 19, 2019, pp. 15-18. 8 Office Action of October 1, 2019, p. 18. 9 Id. at 20. Serial No. 88491138 - 6 - • Etsy.com – An online web site offering a “front door wreath” made of dried flowers and grasses, including “Sorgo Grass.”10 The Examining Attorney also introduced an excerpt from the third-party web site organicsorgo.com, which offers “Organic Sorgo Syrup” made from “sweet sorghum cane plants.” The web site states: “Eden Life Organic Sorgo Syrup is a traditional sweetener that’s more nutrient-dense then sugar and the perfect plant-based alternative to honey!”11 Another third-party web site, nuts.com, offers jars of sorghum syrup, which is described as “a natural sweetener made by processing juice squeezed from the stalks of certain types of sorghum (Sorghum bicolor) called sweet sorghum or sorgo.”12 Applicant, on the other hand, argues that: [T]he mark SORGOGRASS has no meaning in the English language. Moreover, the word SORGOGRASS is made up of two terms, SORGO (meaning Sorghum in Italian) and GRASS. Lastly, the name SORGOGRASS does not remotely indicate that it is associated with a sugar syrup. The sugar syrup made from sorghum is made out of its stalks not from the grass. The mark “SORGOGRASS” does not describe “an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods[.]”13 Thus, according to Applicant, SORGOGRASS is suggestive “because the consumer is required to exercise mature thought and imagination in order to determine the exact nature of Applicant’s goods. Nothing about SORGOGRASS at first glance would 10 Id. at 22-23. 11 Organicsorgo.com, Id. at 28-53. 12 Id. at 62-65. 13 Applicant’s Br., p. 7, 7 TTABVUE 7. Serial No. 88491138 - 7 - demonstrate to a consumer that the mark . . . designates a syrup used on pancakes, cornmeal mush, grits and other hot cereals.”14 To support his argument, Applicant introduced general information about sorghum or sorgo, including dictionary definitions similar to those cited above. Applicant also introduced the following four third-party registrations, printed from the USPTO’s TESS database, for marks comprising the terms SORGHUM or SORGHO (an alternative spelling of SORGO):15 • Registration No. 5075387 for the mark Sorgho Whiskey (WHISKEY disclaimed) on the Supplemental Register for “Spirits and liqueurs; Distilled Spirits; Whiskey spirits, all made from sorghum,” in International Class 33;16 • Registration No. 5570074 for the mark SORGHUM THE SMART CHOICE (SORGHUM disclaimed) on the Principal Register for “Promoting public awareness of sorghum; Providing consumer information in the field of sorghum,” in International Class 35;17 • Registration No. 3568754 for the mark THE ORIGINAL SORGHUM MALT BEER (MALT BEER disclaimed) on the Supplemental Register for “Beer,” in International Class 32;18 and • Registration No. 5190433 for the mark Sorghum Nature’s Super Grain (SORGHUM and SUPER GRAIN disclaimed) on the Principal Register for 14 Applicant’s Br., p. 13, 7 TTABVUE 13. 15 We have not considered Registration No. 1855891 for the mark MAKING TRACKS PURE SORGO NATURE’S SWEETENER and design (PURE SORGO and SWEETENER disclaimed) on the Principal Register for “sorghum syrup for use as a natural sweetener and flavoring syrup” because it has been cancelled. A cancelled registration is generally evidence only of the fact that the registration issued and therefore is not evidence that a mark is not descriptive. See Bond v. Taylor, 119 USPQ2d 1049, 1054-55 (TTAB 2016); In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261, 1264 (TTAB 2011) (“‘dead’ or cancelled registrations have no probative value at all”). In any event, the registration disclaimed the term SORGO which is an admission that the term is, at best, merely descriptive. 16 Applicant’s Response to Office Action dated September 30, 2019, p. 14. 17 Id. at 5. 18 Id. at 6. Serial No. 88491138 - 8 - “Providing consumer information in the field of sorghum,” in International Class 35.19 III. Analysis We begin with consideration of “the public’s understanding of the individual words.” Princeton Vanguard, LLC v. Frito-Lay North Am., Inc., 786 F.3d 960, 114 USPQ2d 1827, 1832-33 (Fed. Cir. 2015); Oppedahl & Larson, 71 USPQ2d at 1372. If a combination retains the descriptive significance of the individual parts, the combination must be considered merely descriptive. In re Petroglyph Games Inc., 91 USPQ2d 1332, 1337 (TTAB 2009) (BATTLECAM merely descriptive for computer game software); see also In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1823 (TTAB 2012) (holding SEMICONDUCTOR LIGHT MATRIX merely descriptive of light and UV curing systems composed primarily of light emitting diodes for industrial and commercial applications). The Examining Attorney and Applicant submitted a variety of evidence reflecting the public’s understanding of the term “sorgo” in the context of the goods. The record establishes that sorgo is another name for a sorghum plant cultivated primarily for the sweet juice in its stems from which sugar and syrup are made. Thus, SORGO is merely descriptive of Applicant’s goods because Applicant’s syrup is made from sorgo. Moreover, the third-party registrations on the Supplemental Register for SORGHO WHISKEY and THE ORIGINAL SORGHUM MALT BEER confirm that the USPTO, twice, has found sorgho or sorghum to be merely descriptive of products made from sorghum. Although each case must be decided on the individual record, third-party 19 Id. at 7. Serial No. 88491138 - 9 - registrations may serve to indicate the public’s understanding of a term’s meaning. RxD Media, LLC v. Application Dev. LLC, 125 USPQ2d 1801, 1812 (TTAB 2018) (“[T]hird-party registrations can be used in the manner of a dictionary definition to illustrate how a term is perceived in the trade, industry, or ordinary parlance.”) (citing Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015)). GRASS is merely descriptive of a syrup made from sorgo because, as shown by the dictionary definitions and the encyclopedia reference, sorgo is variety of grass. Thus, Applicant’s argument that the “sugar syrup made from sorghum is made out of its stalks not from the grass” is without merit. In addition, Applicant has disclaimed GRASS and admitted that it is merely descriptive: “Applicant respectfully agrees with the examining attorney to the extent that the term “grass” is descriptive.”20 When these terms are combined, SORGOGRASS immediately and directly conveys information about the source of Applicant’s syrup, namely, that it is made from sorgo grass. Each component retains its merely descriptive significance in relation to the goods and the mark as a whole is merely descriptive. Oppedahl & Larson, 71 USPQ2d at 1372. The retail web site evidence showing use of the term “Sorgo Grass” as a whole in connection with flower and grass arrangements further confirms the descriptiveness of the combined terms. No degree of imagination, thought or perception is needed to understand that the goods are made from the plant named in the mark, namely, sorgo grass. The omission of a space between the SORGO 20 Applicant’s Response to Office Action dated September 30, 2019, p. 12 Serial No. 88491138 - 10 - and GRASS does not diminish the mark’s descriptiveness. In re Aquamar, 115 USPQ2d at 1125. Applicant’s argument that “[n]othing about SORGOGRASS at first glance would demonstrate to a consumer that the mark . . . designates a syrup used on pancakes, cornmeal mush, grits and other hot cereals”21 is unavailing. Mere descriptiveness is determined in relation to the goods for which registration is sought and the context in which the term is used, not in the abstract or on the basis of guesswork. In re Abcor, 200 USPQ at 218. The goods are not pancakes, cornmeal mush, grits or hot cereals. The goods are syrups, and the evidence clearly establishes that sorgo syrup is a food sweetener, akin to honey or sugar. Thus, consumers who know what the goods are would understand that SORGOGRASS merely describes the sorgo grass plant from which the syrup was made. For the foregoing reasons, we conclude that when used on or in connection with Applicant’s syrup the proposed mark, SORGOGRASS, is merely descriptive of the goods. Decision: The refusal to register Applicant’s mark SORGOGRASS under Section 2(e)(1) of the Trademark Act is affirmed. 21 Applicant’s Br., p. 13, 7 TTABVUE 13.