Lico Brands, Inc.

Trademark Trial and Appeal Board

Mar 2, 1999

EX (T.T.A.B. Mar. 2, 1999)

Hearing: Paper No. 17 & 15
March 19, 1998 EWH/hlj
THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB MARCH 2, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Lico Brands, Inc.
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Serial Nos. 75/006,142 and 75/006,355
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Shirley J. Su of Howard, Rice, Nemerovski, Canady, Falk &
Rabkin for Lico Brands, Inc.
Cindy B. Greenbaum, Trademark Examining Attorney, Law
Office 104 (Sidney Moskowitz, Managing Attorney)
_______
Before Simms, Seeherman and Hanak, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Lico Brands, Inc. (applicant) seeks to register “REAL
ITALIAN” and THE REAL ITALIAN TOMATO COMPANY for “wholesale
distributorship services featuring tomato-based sauces and
canned tomato products.” Application serial numbers
75/006,142 and 75/006,355. The applications were filed on
October 16, 1995 with the same claimed first use date of
October 30, 1989.
Ser No. 75/006,142 and 75/006,355
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The Examining Attorney refused registration of both
marks pursuant to Section 2(e)(1) of the Lanham Trademark
Act on the basis that the marks are merely descriptive of
applicant’s services.
When the refusals to register were made final,
applicant took separate appeals to this Board. Applicant
filed a separate set of briefs (main and reply) in each of
the appeals, and the Examining Attorney filed separate
briefs in each of the appeals. Applicant requested an oral
argument, and both appeals were heard at the same time on
March 19, 1998, and we decide both in this opinion.
In determining whether either of applicant’s marks is
descriptive of its services, three propositions must be
kept in mind.
First, as has been stated repeatedly, “a term is
merely descriptive if it forthwith conveys an immediate
idea of the ingredients, qualities or characteristics of
the goods [or services].” In re Abcor Development Corp.,
588 F.2d 8ll, 200 USPQ 215, 218 (CCPA 1978) (emphasis
added); Abercrombie & Fitch Co. v. Hunting World, Inc., 537
F.2d 4, 189 USPQ 759, 765 (2nd Cir. 1976). Moreover, the
immediate idea must be conveyed with a “degree of
particularity.” In re TMS Corp. of the Americas, 200 USPQ
57, 59 (TTAB 1978); In re Entenmann’s Inc., 15 USPQ2d 1750,
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1751 (TTAB 1990), aff’d 90-1495 (Fed. Cir. February 13,
1991).
Second, section 2(e)(1) prohibits the registration of
marks which are “merely descriptive” of the goods or
services for which registration is sought. (emphasis
added). As Professor McCarthy notes, “a mark that connotes
two meanings -- one possibly descriptive, and the other
suggestive of some other association –- can be called
suggestive, as the mark is not ‘merely’ descriptive.” 1 J.
McCarthy, McCarthy on Trademarks and Unfair Competition
Section 11:19 at page 11-26 (4th ed. 1998). See also In re
Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA
1968).
Finally, whether or not a mark is merely descriptive
is, of course, to be determined from the point of view “of
actual or prospective consumers of the applicant’s
particular goods or services.” In re Omaha National
Corporation, 819 F.2d 1117, 2 USPQ2d 1859, 1861 (Fed. Cir.
1987). Thus, because applicant’s services are wholesale
distributorships services, our focus is not on the ultimate
purchasers of applicant’s tomato-based sauces and canned
tomato products, but rather upon the intermediate users of
its services, namely, retailers.
Ser No. 75/006,142 and 75/006,355
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The Examining Attorney contends that applicant’s marks
are merely descriptive of its services because they
“immediately, and without conjecture or speculation,
describe a significant characteristic or feature of
applicant’s services, i.e., applicant is a company that
distributes authentic, or real, Italian tomato products.”
(Examining Attorney’s briefs page 3).
On the other hand, applicant contends that its marks
project “more than one meaning and thus, [are] merely
suggestive of the services offered under the mark[s].”
(Applicant’s brief page 6 in application serial no.
75/006,142 and applicant’s brief page 7 in application
serial no. 75/006,355). With regard to its mark “REAL
ITALIAN,” applicant essentially concedes part of the thrust
of the Examining Attorney’s argument by stating that “the
mark could be suggestive of the type of products or an
ingredient of the type of products -- Italian style
tomatoes -- that applicant distributes.” (Applicant’s
brief page 7 in application serial no. 75/006,142).
Likewise, with regard to its mark THE REAL ITALIAN TOMATO
COMPANY, applicant again acknowledges that this “mark could
suggest that applicant is a company that deals with
‘Italian tomatoes.’” (Applicant’s brief page 7 in
application serial no. 75/006,355). However, applicant
Ser No. 75/006,142 and 75/006,355
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continues by arguing that both of its marks have a second
meaning or connotation, which applicant articulates in both
of its briefs in the following manner at pages 7-8:
Applicant’s mark could suggest that
Applicant’s company offers what it terms
“real Italian” services, suggesting that
the consumer will be taken care of and
treated as part of the company’s
“extended family.” Applicant’s
advertisements are suggestive of this
same idea, i.e., that customers, who are
part of Applicant’s extended family,
will receive personal, caring and
reliable service. The mark plays on the
connotations of Italian culture as a
generous, warm, and robust culture that
enjoys both delicious, homestyle food
and strong family loyalty.
Consequently, the mark is suggestive of
the high-quality products offered by
Applicant as well as the special brand
of customer service and loyalty
Applicant provides. As such,
Applicant’s mark is not merely
descriptive of its services, but rather,
is suggestive of a quality or caliber of
Applicant’s services.
With regard to applicant’s mark THE REAL ITALIAN TOMATO
COMPANY, we find that said mark does have two meanings or
connotations, one of which is descriptive of applicant’s
services and one of which is, at most, suggestive of
applicant’s services. Accordingly, we find that said mark
is not “merely descriptive” of the services. To elaborate
somewhat, we find it plausible that applicant’s retail
customers could view applicant’s mark THE REAL ITALIAN
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TOMATO COMPANY in either one of two ways. First,
applicant’s retail customers (as opposed to ultimate
consumers) could view the mark in such a way that the three
words REAL ITALIAN TOMATO form a unit which modifies the
final word COMPANY. Viewed in this manner, applicant’s mark
is descriptive in that it describes the products which are
or could be the subject of applicant’s wholesale
distributorship services, namely, real Italian tomatoes or
real Italian-style tomatoes. However, applicant’s retail
consumers could also view applicant’s mark THE REAL ITALIAN
TOMATO COMPANY in a manner such that the words REAL ITALIAN
modify the words TOMATO COMPANY. When viewed in this
manner, applicant’s mark is not descriptive, but only
suggestive in that it vaguely indicates the nature, quality
or level of services as articulated by applicant in the
above passages quoted from applicant’s briefs. Because
applicant’s mark THE REAL ITALIAN TOMATO COMPANY has two
meanings or connotations, one of which is descriptive and
one of which is suggestive, it cannot be said that
applicant’s mark is “merely descriptive.” Accordingly, the
refusal to register this mark is reversed.
However, with respect to applicant’s mark “REAL
ITALIAN,” we find that this mark projects only meanings
which are descriptive of applicant’s “wholesale
Ser No. 75/006,142 and 75/006,355
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distributorship services featuring tomato-based sauces and
canned tomato products.” As applied to such services,
applicant’s mark “REAL ITALIAN” indicates that applicant’s
tomato-based sauces (which could be canned) and canned
tomatoes either are made from or are genuine Italian
tomatoes which have been imported from Italy, or are Italy-
styled tomatoes in terms of their varieties or methods of
preparation. Whichever particular meaning applicant’s
retail customers attach to the mark “REAL ITALIAN,” said
meaning is descriptive (and not suggestive) of applicant’s
services in that it forthwith conveys information about a
key characteristic of the products which are the subject of
applicant’s wholesale distributorship services. Stated
somewhat differently, we do not believe that applicant’s
mark “REAL ITALIAN” per se could be viewed by applicant’s
consumers as referring to a company or to a level or type of
service. Obviously, the words TOMATO COMPANY or even
COMPANY do not appear in applicant’s mark “REAL ITALIAN.”
DECISION: The refusal to register applicant’s mark
“REAL ITALIAN” (application serial no. 75/006,142) is
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affirmed. The refusal to register applicant’s mark THE REAL
ITALIAN TOMATO COMPANY (application serial no. 75/006,355)
is reversed.
E. J. Seeherman
E. W. Hanak
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
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Simms, Administrative Trademark Judge, dissenting:
I disagree with the disposition reached by the
majority. I would remand these applications to the
Examining Attorney for further examination. In order
to explain my position, it is necessary to recite more
of the prosecution history of these cases. For
purposes of simplicity, I focus on the application to
register the mark “REAL ITALIAN”.
In the first and final refusal, the Examining
Attorney refused registration because the asserted
mark was merely descriptive under Section 2(e)(1) of
the Act. In the final refusal, this is what the
Examining Attorney said:
In the present case, the designation REAL
ITALIAN immediately, and without conjecture
or speculation, describes a significant
characteristic or feature of applicant’s
services, namely, that applicant distributes
authentic, or real, Italian products.
Applicant’s original specimens tout the
tomato-based sauces and tomato products
which applicant distributes as “the very
best authentically Italian tomato products”
(emphasis in the original). The plain and
readily understood meaning of the term, as
shown by the evidence from the Nexis/Lexis
News/Curnws Research database attached
hereto, and applicant’s definition of the
word “real” indicates that, as used in
connection with applicant’s services, there
is nothing which is indefinite, incomplete
or incongruous about the designation REAL
ITALIAN. Clearly, if something is described
as “real,” it means that the item is the
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genuine, authentic article, not an
imitation. Moreover, present and
prospective customers of distributorships
featuring tomato-based sauces and canned
tomato products would require no
imagination, cogitation or gathering of
further information to perceive the merely
descriptive significance of the designation
REAL ITALIAN. [Footnotes omitted.]
And, in her appeal brief, 3-4, the Examining Attorney
stated:
In the present case, the trademark examining
attorney submits that the designation “REAL
ITALIAN” immediately, and without conjecture
or speculation, describes a significant
characteristic or feature of applicant’s
services, i.e., applicant is a company that
distributes authentic, or real, Italian
tomato products. The dictionary evidence of
record defines “real” as “genuine and
authentic, not artificial or spurious. . .”
The American Heritage College Dictionary,
1137 (3rd Ed. 1993). In addition,
applicant’s own specimens tout the tomato-
based sauces and canned tomato products
which applicant distributes as
“authentically Italian tomato products.”
Further, the evidence from the Nexis/Lexis
News/Curnws Research database attached to
the December 12, 1996 Office Action (and
incorporated by reference herein) indicates
that, as used in connection with applicant’s
services there is nothing remotely
indefinite, incomplete or incongruous about
the designation “REAL ITALIAN”. This
Nexis/Lexis evidence contains voluminous
references to various real Italian products,
such as real Italian food, real Italian
tomato sauce, real Italian ice cream, etc.
Clearly, if an item is described as “real,”
that item is the genuine, authentic article,
and not an imitation. Moreover, present and
prospective customers of distributorships
featuring tomato-based sauces and canned
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tomato products would require no
imagination, cogitation or gathering of
further information to perceive the merely
descriptive significance of the designation
“REAL ITALIAN”. [Footnote omitted.]
Reading this refusal and the reasoning as a whole, it
is clear to me that the Examining Attorney is refusing
registration because she believes that applicant’s mark
describes the fact that the products applicant distributes
come from Italy—-they are “authentic, or real, Italian
products.” It is also clear that applicant has so
construed the Examining Attorney’s refusal. See
applicant’s Request for Reconsideration, filed March 14,
1997 (“According to the Examining Attorney, the mark REAL
ITALIAN merely describes a significant characteristic of
Applicant’s services, namely, that Applicant distributes
authentic or real Italian products.”) and applicant’s
brief, 3 (“The Examining Attorney determined that the mark
REAL ITALIAN merely describes a significant characteristic
of Applicant’s services, namely, that Applicant distributes
authentic or real Italian products.”) To the extent that
the majority believes that the Examining Attorney is
refusing registration because the products applicant
distributes are made from the variety of tomatoes known as
Italian tomatoes, and merely descriptive because of that
Ser No. 75/006,142 and 75/006,355
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fact, I believe they have misread the refusal and quoted
the Examining Attorney out of context. She has not refused
on this basis. If she were refusing on this reasoning, I
do not understand her inclusion in this record of Nexis
excerpts showing such “hits” as “real Italian prosciutto,”
“real Italian sausage,” “real Italian olives,” etc.
Rather, the support for such a refusal might be evidence
that there is a domestic variety of tomato known as the
“Italian tomato” and that the relevant public would know of
such a fact.
Now, if the Examining Attorney is refusing
registration because she believes that applicant’s mark
describes the fact that the products it distributes come
from Italy, the proper refusal is Section 2(e)(2)—-that
applicant’s mark is primarily geographically descriptive of
its services. However, because it appears from statements
made in applicant’s reply brief1 and at the oral hearing

1 In its reply brief, 1-2, 3, applicant states:
Applicant’s tomatoes are not Italian, either with
respect to where the tomatoes are grown or the variety
of tomato. Applicant’s tomatoes are grown exclusively
in California and, if there is such a thing as an
“Italian” tomato, Applicant does not use such a
variety in its tomato products. As such, Applicant’s
mark clearly does not refer to “real Italian”
tomatoes, as Applicant’s products and services have
nothing to do with any supposed “real Italian”
tomatoes. [Footnote continued on next page]
Ser No. 75/006,142 and 75/006,355
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that the goods applicant distributes do not in fact come
from Italy and are not made from ingredients grown there,
the refusal should be under Section 2(e)(3) (and perhaps
under Section 2(a)), if the Examining Attorney believes
that applicant’s mark “REAL ITALIAN” misleads people into
believing that applicant distributes products emanating
from Italy.
With respect to the mark “REAL ITALIAN”, the majority
states:
As applied to such services, applicant’s mark
“REAL ITALIAN” indicates that applicant’s
tomato-based sauces (which could be canned) and
canned tomatoes either are made from or are
genuine Italian tomatoes which have been imported
from Italy, or are Italy-styled tomatoes in terms
of their varieties or methods of preparation.
Whichever particular meaning applicant’s retail
customers attach to the mark “REAL ITALIAN,” said
meaning is descriptive…
Now, to the extent the majority is affirming the
refusal under Section 2(e)(1) because applicant’s mark
describes the fact that the goods applicant distributes
come from Italy, I believe this is legal error, as
explained above. Section 2(e)(2) is the proper statutory
section for that kind of refusal. However, as noted above,

…In Applicant’s case, on the other hand, the term
“Real Italian” is not used to directly and immediately
describe a product, service, or way of preparing
tomatoes that is from Italy. Further, Applicant's
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the products applicant distributes do not come from Italy,
so affirmance under Section 2(e)(2) would also be
incorrect. Rather, the proper refusals would be under
Section 2(e)(3) and/or 2(a).
Finally, to the extent the majority is affirming the
refusal because the products applicant distributes may be
made from Italian tomatoes, a variety of tomato grown in
this country, the Examining Attorney never argued this as a
reason for her refusal. Moreover, as noted above,
applicant has stated that the products it distributes are
not made from the variety known as Italian tomatoes. To
affirm on this basis is, therefore, also legal error. If
anything, the proper refusal would be under the deceptive
misdescriptive part of Section 2(e)(1), if the Examining
Attorney believes that applicant’s mark indicates that
applicant distributes products which are made from Italian
tomatoes (the variety) when they are not.
I also believe that, when properly considered, it is
likely that the same result should prevail in both cases.
To explain this, let me use an example. An applicant seeks
to register the marks REAL AMERICAN and REAL AMERICAN BEEF
COMPANY for beef. Assume that applicant’s beef does not

tomatoes are not Italian tomatoes, and Applicant does
not use its mark to describe its tomatoes.
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come from this country. The Examining Attorney refuses
registration under Section 2(e)(3) because the marks are
primarily geographically deceptively misdescriptive. It
seems to me that if REAL AMERICAN is properly refused under
Section 2(e)(3), the phrase REAL AMERICAN BEEF COMPANY
should also be refused under this section. The additional
words BEEF COMPANY, under our decisional law, add only
generic matter to the words REAL AMERICAN. They do not
detract from the primary geographically deceptively
misdescriptive nature of the mark. See, for example, In re
Hiromichi Wada, 48 USPQ2d 1689 (TTAB 1998)(NEW YORK WAYS
GALLERY held primarily geographically deceptively
misdescriptive of various accessories). See also In re
Cambridge Digital Systems, 1 USPQ2d 1659 (TTAB 1986).
Although I do not believe it necessary to decide this
question now (because this case should be remanded), one
could reasonably argue that the secondary connotation that
the majority sees in the expression REAL ITALIAN TOMATO
COMPANY is too remote, tenuous or speculative, especially
in the absence of evidence from applicant, who could have
shown that its mark actually has had such a connotation in
the marketplace, to detract from the geographic nature of
the mark.
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I would remand these cases to the Examining Attorney
so that she may consider refusals under Sections 2(e)(3)
and 2(a). To the extent that I may have misinterpreted
what the Examining Attorney has said, remand is also
appropriate for clarification.
R. L. Simms
Administrative
Trademark Judge,
Trademark Trial
and Appeal Board
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