SteamFast Europe Limited

Trademark Trial and Appeal Board

Sep 24, 2008

No. 76636092 (T.T.A.B. Sep. 24, 2008)

Oral Hearing: Mailed:
July 24, 2008 September 24, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re SteamFast Europe Limited
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Serial No. 76636092
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Donald L. Dennison of Dennison, Schultz, & Macdonald for
SteamFast Europe Limited.

Andrea D. Saunders, Trademark Examining Attorney, Law
Office 109 (Dan Vavonese, Managing Attorney).
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Before Hairston, Zervas and Kuhlke, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

SteamFast Europe Limited, applicant, has filed an
application to register the mark ZIP AND STEAM (in standard
character form) on the Principal Register for “cooking
containers, namely, plastic cooking bags and pouches” in
International Class 16.1

1 Application Serial No. 76636092, filed on April 14, 2005, under
Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b), alleging a
bona fide intention to use the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B
Serial No. 76636092
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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. Both applicant and the examining
attorney have filed briefs and an oral hearing was held on
July 24, 2008. We affirm the refusal to register.
We first address an evidentiary issue raised by
applicant. Applicant objects that the material attached to
the December 4, 2006 Office Action (issued after a request
for remand was granted by the Board on the same date): 1)
consists of Internet materials otherwise unidentified; 2)
many of the pages are virtually unreadable; 3) their
pertinence has not been specifically noted in the Office
Action; 4) several pages are from foreign-based websites;
and 5) they are not self-authenticating and should not be
admissible absent an affidavit or some other attestation.
Supp. Br. pp. 2-3.
The materials relied upon by the examining attorney
are clearly not from foreign websites. Most of them have
the URL displayed at the top of the page. A few do not
have the URL displayed but there is contact information on
the web page for the company. While some of the material
is not legible when printed out, the electronic file
available to applicant online in the Trademark Document
Serial No. 76636092
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Retrieval (TDR) system provides a process whereby the
document may be opened as an Adobe Acrobat document and
resized to be legible. The examining attorney noted their
pertinence in the Office Action by stating at page 1, “See
the attached excerpts from the Internet, demonstrating that
bags such as applicant’s zip and are often described as
having a zipper enclosure, and that food can be cooked by
steaming it.” Finally, in an ex parte context, documents
retrieved from the Internet are acceptable as evidence.
See TBMP §1208.03 (2d ed. rev. 2004). In view thereof, we
have considered the materials attached to the December 4,
2006 Office Action.
“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
quality, characteristic, function, ingredient, attribute or
feature of the product or service in connection with which
Serial No. 76636092
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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
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
Serial No. 76636092
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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.
Looking at the separate elements, applicant concedes
that closure of its cooking bags and pouches is achieved by
“‘zipping’ the bag.” February 14, 2006 Response p. 2.
Applicant also concedes that the evidence submitted by the
examining attorney shows that “bags may be ‘zipped’.” Id.
p. 2. Clearly, then, the term ZIP describes a method of
closing applicant’s cooking bags or pouches.
In traversing the refusal, applicant argues that the
term ZIP has several meanings, including designating
something that is rapid or quick. However, as noted by the
examining attorney, the fact that a term may have different
meanings in other contexts is not controlling on the
question of descriptiveness. In re Chopper Industries, 222
USPQ 258 (TTAB 1984). Here, in the context of the goods
and the entire phrase, ZIP AND STEAM, the word ZIP connotes
the method of closure. Perhaps if the word AND were not
there it could possibly also connote rapid or quick, but
the presence of AND makes it one step in a process.
Applicant cites to Security Center Ltd. v. First National
Security Centers, 222 USPQ 329 (E.D.La. 1984), reversed,
Serial No. 76636092
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225 USPQ 373 (5th Cir. 1985) but this case does not support
applicant’s position. In that case, in finding the alleged
mark SECURITY CENTER to be descriptive, the Fifth Circuit
reversed the lower court. In its reversal, the Court
analyzed the meanings of the terms and stated that it “is
less ambiguous, however, when one adds into the equation
the context and environment in which the mark is used – the
natural environment in which the consumer would meet with
the phrase.” Security, 225 USPQ at 376. The Court noted
that it “was therefore beside the point for the trial court
to note that most of the dictionary meanings of ‘center’
pertain to ‘nucleus, middle, cluster, or gathering point,’
or that ‘security’ may mean ‘safety, confidence, dependable
[sic], stability, guaranty and protection.’” Id. n. 6
With regard to the word STEAM, applicant argues that
the bag or pouch is not steamed, “rather steam is generated
within the bag which cooks the contents by steam.” Br. p.
5. Thus, the user places food in the bag, zips it closed
and steams the food. In applicant’s words, its “goods are
microwave steam cooking bags that can be filled with food
to be cooked by the home user and then closed and placed in
a microwave oven.” Br. p. 4.
We agree with the examining attorney that STEAM
describes a key feature or characteristic of applicant’s
Serial No. 76636092
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cooking bags and pouches, “namely, that the steam is in
fact created when using the applicant’s goods” and that it
also “describes the purpose and function of the goods,
namely, to generate steam for cooking the contents of the
container.” Br. pp. 4-5. In support of her position, the
examining attorney submitted excerpts of articles retrieved
from the Internet that “illustrate the wide use of steam
cooking and the fact that advertisers promote the health
benefits of ‘steam-cooked’ foods.” Br. p. 5. See, e.g.,
Foodprocessing.com (“Birds Eye Foods, Rochester, N.Y.,
rolls out another revolution in frozen food with the
nationwide launch of Steamfresh, frozen vegetables that
steam perfectly right in the bag...Steamfresh heralds
steam-in-the-bag cooking, a new concept for U.S. consumers,
but it should catch on as steamed vegetables lock in
nutritional benefits of vitamins and minerals.”)
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.
It is the examining attorney’s position that the
evidence of record “establishes that ZIP AND STEM conveys
the immediate characteristic of the goods; the terms have
been individually used so frequently by other makers of re-
Serial No. 76636092
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sealable bags and steam cooking bags that consumers are
unlikely to perceive the term as a trademark; and the use
of the term deprives competitors of a description for their
goods needed for them to compete, and therefore must be
refused registration.” Br. p. 7.
We find that when combined the terms ZIP AND STEAM do
not lose their descriptive significance and, in fact, make
clear that applicant’s goods close by zipping and steam
food. The presence of AND does not create an incongruous
meaning. To the extent it adds anything, it makes the
phrase an instruction. Thus, we are persuaded by the
evidence of record that the words ZIP AND STEAM 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).
Viewing ZIP AND STEAM as a whole, we find the evidence
of record sets forth a prima facie case that such phrase is
merely descriptive. Thus, we are persuaded that when
applied to applicant’s goods, ZIP AND STEAM 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
Serial No. 76636092
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perceive readily the merely descriptive significance of ZIP
AND STEAM as it pertains to applicant’s goods.
Decision: The refusal to register under Section
2(e)(1) is affirmed.