Alfredo International Inc.

Trademark Trial and Appeal Board

Jul 22, 2008

No. 76659790 (T.T.A.B. Jul. 22, 2008)

Mailed:
July 22, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Alfredo International Inc.
________

Serial No. 76659790
_______

John S. Hale for Alfredo International Inc.

Daniel Brody, Trademark Examining Attorney, Law Office 115
(Tomas V. Vlcek, Managing Attorney).
_______

Before Seeherman, Zervas and Ritchie de Larena,
Administrative Trademark Judges.

Opinion by Ritchie de Larena, Administrative Trademark
Judge:

Alfredo International Inc., applicant herein, seeks
registration on the Principal Register of the mark ITALIAN
SUSHI, in the stylized form shown below, for goods
identified in the application as “food items consisting of
seafood, namely, salmon, tuna, calamari and lobster and
cheese, namely, mozzarella, gorgonzola, ricotta and
prosciutto combined with other ingredients served in a roll
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 76659790
2
and ring form for on or off premises sales” in
International Class 301:

The trademark examining attorney refused registration
on the ground that applicant’s mark is merely descriptive
of the identified goods under Trademark Act Section
2(e)(1), 15 U.S.C. §1052(e)(1). Applicant appealed the
final refusal. Both applicant and the examining attorney
filed briefs. After careful consideration of all of the
the arguments and evidence of record, we affirm the refusal
to register.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. See, e.g., In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18

1 Serial No. 796659790, filed on May 8, 2006, under Trademark Act
Section 1(a), 15 U.S.C. §1051(a), with date of first use and date
of first use in commerce of February 1, 2005, disclaiming the
exclusive right to use “ITALIAN” apart from the mark as shown.
Ser. No. 76659790
3
(CCPA 1978).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods or services
for which registration is sought, the context in which it
is being used on or in connection with those goods or
services, and the possible significance that the term would
have to the average purchaser of the goods or services
because of the manner of its use. That a term may have
other meanings in different contexts is not controlling.
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Moreover, it is settled that “[t]he question is not whether
someone presented with only the mark could guess what the
goods or services are. Rather, the question is whether
someone who knows what the goods or services are will
understand the mark to convey information about them.” In
re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002);
See also In re Patent & Trademark Services Inc., 49 USPQ2d
1537 (TTAB 1998); In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re American
Greetings Corporation, 226 USPQ 365 (TTAB 1985).
We consider a composite mark in its entirety. The
composite is registrable only if as a unitary mark it has a
separate, non-descriptive meaning. In re Colonial Stores,
Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (holding SUGAR
Ser. No. 76659790
4
& SPICE not merely descriptive of bakery products). Thus,
we consider whether the words “ITALIAN SUSHI” have a
descriptive meaning as a unitary phrase. We have taken
judicial notice of the dictionary definitions of the
separate words “Italian,” and “sushi.”2
DEFINITIONS:
ITALIAN: Relating to Italy or its
people, language or culture. American
Heritage Dictionary (4th ed. 2000)

SUSHI: Cold cooked rice dressed with
vinegar that is shaped into bite-sized
pieces and topped with raw or cooked
fish, or formed into a roll with fish,
egg, or vegetables and wrapped in
seaweed. American Heritage Dictionary
(4th ed. 2000)

To show the meaning of “Italian” and “sushi” together
as a unitary phrase, the examining attorney submitted
evidence of at least 16 Internet articles, restaurant
reviews, and menu items all referring to the term “Italian
sushi” as a type of food that combines Italian-style food
with sushi-style presentation. Here we set forth a
sampling of some of the uses of the term “Italian sushi” as
descriptive of a particular type and style of food:

2 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
Inc., 213 USPQ 594 (TTAB 1982), aff’d 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).
Ser. No. 76659790
5
WEB EXCERPTS:
Opened in Fall 2005, Bar Crudo is a
modern raw bar with a little edge,
contributing to the short list of San
Francisco restaurants featuring crudo,
the “Italian sushi” trend that hit
large recently in New York. SF Station
review of Bar Crudo, December 16, 2005;
www.sfstation.com

Italian sushi is best forgotten. This
jarring cross-cultural mistake,
consisting of a warm roll enclosed in a
rubbery ring of calamari, won no
converts at our table. The New York
Times review of Villa Doria June 11,
2000; http://nytimes.com

”We’re going to have a lounge and serve
Italian sushi with a Chinese flair,
like P.F. Changs-type food,” says
Busalacchi . . . “In Sicily, where I’m
from, there’s a lot of fish, even raw
fish, and there’s a place in Milano
that serves Italian sushi, with oils
and garlic. That’s what I want to re-
create here.” The Ultimate Dining
Guide 2005 review of Casino Pauma;

These articles demonstrate that the relevant public
understands the term “Italian sushi” to refer to and
describe a particular type and style of food. Applicant
argues that an imaginative step is required to understand
ITALIAN SUSHI to mean an Italian form of sushi. We find,
however, that in view of the evidence that the term
“Italian sushi” is used to describe food items or dishes,
ITALIAN SUSHI forthwith conveys a characteristic of the
Ser. No. 76659790
6
food items offered by applicant. See In re Gyulay, 3
USPQ2d at 1009; In re Abcor Development Corp., 200 USPQ at
217-18. It is clear that a consumer would understand
ITALIAN SUSHI used in connection with applicant's goods,
namely, “food items consisting of seafood, namely, salmon,
tuna, calamari and lobster and cheese, namely, mozzarella,
gorgonzola, ricotta and prosciutto combined with other
ingredients served in a roll and ring form for on or off
premises sales,” as conveying information about them. See
In re Tower Tech Inc., 64 USPQ2d at 1316-17. Accordingly,
we affirm the refusal to register.

Decision: We affirm the refusal to register under 2(e)(1).