Dakota Natural Foods, Inc.

Trademark Trial and Appeal Board

Oct 13, 2009

No. 77356614 (T.T.A.B. Oct. 13, 2009)

Mailed:
13 October 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Dakota Natural Foods, Inc.
________

Serial No. 77356614
_______

Bruce H. Little of Linquist & Vennum, P.L.L.P. for Dakota
Natural Foods, Inc.

Katina S. Mister, Trademark Examining Attorney, Law Office
104 (Michael Baird, Acting Managing Attorney).
_______

Before Grendel, Holtzman, and Drost, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On December 20, 2007, applicant Dakota Natural Foods,
Inc. applied to register the mark JUMBOZ in the form shown
below on the Principal Register for “processed sunflower
seeds” in Class 29. Serial No. 77356614.

THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Ser. No. 77356614
2
The application contains a date of first use anywhere and
in commerce of May 31, 2003. Color is not claimed as a
feature of a mark.
The examining attorney has refused to register
applicant’s mark on the ground that “the mark is merely
descriptive, and in fact a generic term, for a feature of
the applicant’s goods.” Brief at 1.
After the examining attorney made the refusal final,
applicant filed this appeal.
The examining attorney maintains that the “term JUMBO
is defined as a ‘large thing’…. When the term JUMBOZ is
used in the context of the applicant’s goods it immediately
describes a feature of the goods, specifically that the
sunflower seeds are ‘large’ sunflower seeds.” Brief at
unnumbered pp. 3-4. The examining attorney also cites a
previous board decision involving applicant, In re Dakota
Natural Foods, Inc., Serial No. 78326818 (TTAB August 28,
2007). That case concerned applicant’s earlier attempt to
register the term JUMBOZ in standard character form on the
Supplemental Register also for processed sunflower seeds.
The board concluded:
[W]e find that the evidence of record clearly
demonstrates that “jumbos” is a term used to refer to
extra-large or jumbo sunflower seeds. Based on this
evidence, we conclude that JUMBOZ, the legal
equivalent of JUMBOS, is generic for applicant’s
Ser. No. 77356614
3
“processed sunflower seeds.” As such, it is incapable
of distinguishing applicant’s goods and therefore is
unregistrable on the Supplemental Register.

Id. at 4.

In addition, the examining attorney argues that
“[b]ased on the previous adjudication of this mark, the
issue of descriptiveness is now res judicata.” Brief at 6.
Regarding the stylization of applicant’s current mark, the
examining attorney describes it as “an ordinary, block
font. The only thing stylized about the letters in the
mark is the leaning letter J at the beginning of the mark
which leans lightly to the left and the letter Z at the end
of the mark that leans back to the right. Unfortunately,
the degree of stylization is not particularly striking,
unique or distinctive so as to create a commercial
impression separate and apart from the unregistrable
components of the mark.” Brief at 7.
In response, applicant argues that its mark “is a play
on the adjective ‘jumbo’” (Brief at 6) and that:
Applicant is not seeking to register the term “JUMBOZ”
merely as a word mark. Applicant seeks registration
of the word “JUMBOZ” only in its stylized or design
form, with the falling capital “J” at the beginning of
the word and the bouncing lower case “Z” at the end…

First, in evaluating the distinctiveness of the design
of the mark, the Board must not disregard the facts
(a) that “JUMBOZ” is not an actual word in the English
language; (b) that, if “JUMBOZ” were an actual word,
it would not have a plural; and (c) that if it were an
Ser. No. 77356614
4
actual word and had a plural form, it would not, using
standard English, be pluralized with a “Z.” Arbitrary
and incongruous combinations of English words and
foreign terms have been found to be registrable…

Second, the design of “JUMBOZ” is distinctive…
Together, the falling capital “J” at the beginning of
the word and the bouncing lower case “Z” at the end
create a distinctive commercial impression.

Reply Brief at 1-3.

Applicant concludes that “the Board should permit
registration of the mark ‘JUMBOZ (stylized and/or with
design)’ with a disclaimer of the word ‘JUMBOZ.’” Reply
Brief at 4. In its response dated September 26, 2008 at 2,
applicant first offered to “amend its application to
disclaim the word ‘JUMBOZ’ apart from the mark as shown.”
Both applicant and the examining attorney also refer
to applicant’s specimen, which is set out below.
Ser. No. 77356614
5

We add that included with the examining attorney’s
definitions of “Jumbo” are two that indicate that the word
has a noun form with the plural spelling indicated as
“Jumbos.” Merriam-Webster Online and www.bartleby.com.
Therefore, the issue in this case is whether
applicant’s mark is registrable on the Principal Register
with a disclaimer of the term JUMBOZ. We agree that the
term JUMBOZ is at least merely descriptive of processed
sunflower seeds. The definitions support the examining
attorney’s argument that “jumbo” is a very large thing.
Applicant’s specimens indicate that its sunflower seeds are
“BIG” and the specimen also contains the phrase “When size
Ser. No. 77356614
6
matters.” The definitions also specify that the term JUMBO
can be used as a noun and its plural is spelled JUMBOS.
Applicant’s mark JUMBOZ is the phonetic equivalent of the
term JUMBOS and as such it is also at least merely
descriptive of applicant’s goods. It has long been held
that such slight misspellings do not overcome evidence of
descriptiveness.
The word, therefore is descriptive, not indicative of
the origin or ownership of the goods; and being of
that quality, we cannot admit that it loses such
quality and becomes arbitrary by being misspelled. Bad
orthography has not yet become so rare or so easily
detected as to make a word the arbitrary sign of
something else than its conventional meaning….

Standard Paint Co. v. Trinidad Asphalt Mfg. Co., 220 U.S.
446, 455 (1911). See also Nupla Corp. v. IXL Mfg. Co., 114
F.3d 191, 42 USPQ2d 1711, 1716 (Fed. Cir. 1997)(CUSH-N-GRIP
“which is merely a misspelling of CUSHION-GRIP, is also
generic as a matter of law”); Weiss Noodle Co. v. Golden
Cracknel and Specialty Co., 290 F.2d 845, 129 USPQ 411
(CCPA 1961) (HA-LUSH-KA held to be the generic equivalent
of the Hungarian word “haluska”).
A mark is merely descriptive if it immediately conveys
“knowledge of a quality, feature, function, or
characteristics of the goods or services.” In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831
(Fed. Cir. 2007). To be “merely descriptive,” a term need
Ser. No. 77356614
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only describe a single significant quality or property of
the goods. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009,
1009 (Fed. Cir. 1987). We do not determine the issue of
descriptiveness in the abstract, but in relation to the
particular goods or services for which registration is
sought. In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 218 (CCPA 1978). In this case, we find that the
term JUMBOZ is merely descriptive of applicant’s goods
because it identifies a feature or quality of the goods,
i.e., that its sunflower seeds are “big” or larger than
other sunflower seeds.
We add that the doctrine of res judicata also supports
the examining attorney’s argument that applicant’s mark is
at least merely descriptive. “A second suit is barred by
res judicata if: (1) there is identity of parties (or their
privies); (2) there has been an earlier final judgment on
the merits of a claim; and (3) the second claim is based on
the same set of transactional facts as the first.” TMEP
§ 1217 (5th ed. rev. September 2007). See also In re Bose
Corp., 476 F.3d 1331, 81 USPQ2d 1748, 1752 (Fed. Cir. 2007)
(“In this case, however, there is no dispute that the same
applicant, Bose, is involved in the prior and present
proceedings and that there was a prior final judgment on
the merits, i.e., the functionality, of the identical
Ser. No. 77356614
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design. Thus, the general prerequisites of res judicata
have been satisfied. However, Bose contends that three
facts and circumstances have changed and were not
considered in the prior proceeding such that application of
res judicata in this appeal is not appropriate”).
In the present case, the parties are also the same and
there has been a final judgment on the merits. Applicant
does not contend that the circumstances have changed
(except that it is now seeking registration of its mark in
a stylized form with a disclaimer of the term). Thus,
there is no dispute that the word JUMBOZ itself is at least
merely descriptive of the goods and, if there were, the
doctrine of res judicata would prohibit its relitigation.
Therefore, the only issue remaining is whether the word
JUMBOZ in stylized form is registrable on the Principal
Register with a disclaimer of the word JUMBOZ.
Since applicant is seeking registration on the
Principal Register, not the Supplemental Register, without
relying on Section 2(f) of the Trademark Act, we must
determine if the stylization of the mark is inherently
distinctive.
Previously, marks with fairly minimal stylization have
been held to be capable of registration on the Supplemental
Register. For example, in In re The Wella Corp., 565 F.2d
Ser. No. 77356614
9
143, 196 USPQ 7 (CCPA 1977), the Court of Customs and
Patent Appeals held that the term, in the display shown
below, was registrable on the Supplemental Register, with
the word “Balsam” disclaimed.

Subsequently, the board found that the term YOGURT BAR
displayed in the style shown below was also registrable on
the Supplemental Register with a disclaimer of “Yogurt
Bar.” In re Carolyn's Candies, Inc., 206 USPQ 356 (TTAB
1980).

When “words which are merely descriptive, and hence
unregistrable, are presented in a distinctive design, the
design may render the mark as a whole registrable, provided
that the words are disclaimed, under Section 6.” In re
Clutter Control, Inc., 231 USPQ 588, 589 (TTAB 1986). See
also In re Miller Brewing Co., 226 USPQ 666 (TTAB 1985)
(LITE (stylized) for beer registrable of the Principal
Register with a disclaimer of the word). However, even to
be registrable on the Supplemental Register, a design must
Ser. No. 77356614
10
not be ordinary. In re Bonni Keller Collections Ltd., 6
USPQ2d 1224, 1227 (TTAB 1987) (“[I]t is our view that the
presentation of applicant’s mark simply does not possess
the degree of stylization necessary to warrant allowance on
the Supplemental Register”):

When considering whether a design in a mark is
inherently distinctive, the following test has been applied
by the Court of Customs and Patent Appeals.
In determining whether a design is arbitrary or
distinctive this court has looked to whether it was a
“common” basic shape or design, whether it was unique
or unusual in a particular field, whether it was a
mere refinement of a commonly-adopted and well-known
form of ornamentation for a particular class of goods
viewed by the public as a dress or ornamentation for
the goods, or whether it was capable of creating a
commercial impression distinct from the accompanying
words.

Seabrook Foods, Inc. v. Bar-Well Foods Limited, 568 F.2d
1342, 196 USPQ 289, 291 (CCPA 1977) (footnotes omitted).
Some marks have been held to be registrable on the
Principal Register when generic or merely descriptive words
are combined with a distinctive stylization or design.
See In re Jackson Hole Ski Corp., 190 USPQ 175, 176 (TTAB
1976) (Applicant argued, and the board agreed, that a mark
Ser. No. 77356614
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consisting of a geographical designation and “the letters
‘JH’ displayed in a distinctive and prominent fashion so as
to create a commercial impression in and of themselves…
[and] the letters ‘JH’ are twice the size of the other
letters; that unlike any of the other letters, they are
partly joined together, creating the visual impression of a
monogram; and that they are set down from the rest of the
letters, which positioning has the effect of highlighting
the ‘JH couplet’” was distinctive); and In re Venturi,
Inc., 197 USPQ 714 (TTAB 1977) (Mark shown below with the
word “pipe” and the representation of the pipe disclaimed
had acquired distinctiveness):

See also In re Grand Metropolitan Foodservice, 30 USPQ2d
1974, 1976 (TTAB 1994) (“In view of the nature of
applicant’s inventive and somewhat stylized mark, being an
obvious play on the word ‘muffin’ and the word ‘fun,’ we
believe that the meaning or commercial impression of
applicant’s mark will be more than that simply of the word
‘muffins.’ Therefore, applicant’s mark is not merely
descriptive”).
However, “a display of descriptive, generic or
otherwise unregistrable matter is not registrable on the
Ser. No. 77356614
12
Principal Register unless the stylization of the words or
the accompanying design features of the asserted mark
create an impression on purchasers separate and apart from
the impression made by the words themselves.” In re
American Academy of Facial Plastic and Reconstructive
Surgery, 64 USPQ2d 1748, 1753 (TTAB 2002). See also In re
Behre Indus., 203 USPQ 1030, 1032 (TTAB 1979) (“[T]he
distinctive display of descriptive or otherwise
unregistrable components of a mark cannot bestow
registrability upon the mark as a whole unless the features
are of such a nature that they undoubtedly would serve to
distinguish the mark in its entirety in the applicable
field or it can be shown through competent evidence that
the unitary mark as a whole displayed in the asserted
distinctive manner does in fact create a distinctive
commercial impression separate and apart from and above the
descriptive significance of its components”).
The following stylized marks were held not to be
inherently distinctive. In re Guilford Mills Inc., 33
USPQ2d 1042 (TTAB 1994):

Ser. No. 77356614
13
In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2014
(TTAB 1988) (“In the absence of any evidence to convince us
otherwise and since we quite agree with the Examining
Attorney that there is nothing unusual or even different in
the formation of the letters which would cause this
presentation of the word, LITE, to stand out from any other
such presentation”):

In another case, the board found that “the slightly
slanted letters and capitalization of the letters ‘C’ and
‘A’ in applicant’s mark [shown below] are insufficient to
render applicant’s mark as distinctive in style.” In re
Couriaire Express Int’l, Inc., 222 USPQ 365, 366 (TTAB
1984):

Ser. No. 77356614
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See also In re Project Five, Inc., 209 USPQ 423, 425 (TTAB
1980) (“Considering the highly descriptive nature of the
literal components of applicant’s mark, we are not
persuaded, in the absence of any evidentiary showing, that
the degree of distinctiveness of the design features of
applicant’s mark is such that the mark as a whole does in
fact create a distinctive commercial impression separate
and apart from the descriptive significance of its
components”);

United States Lines, Inc. v. American President Lines,
Ltd., 219 USPQ 1224, 1227 (TTAB 1982) (“The displays of
applicant’s marks [one shown below] in the instant cases
are even less distinctive, we believe, than was the
applicant’s mark in Project Five. We conclude that the
terms sought to be registered do not create distinctive
commercial impressions separate and apart from the
descriptive significance of their components. Applicant's
Ser. No. 77356614
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admittedly descriptive marks are not entitled to
registration on the Principal Register with disclaimers”);

and In re Grande Cheese Co., 2 USPQ2d 1447, 1449 (TTAB
1986) (“We conclude, then, that the designations sought to
be registered do not comprise inherently distinctive
lettering styles and/or background displays such that they
would create separate commercial impressions apart from the
generic significance of the disclaimed words”)

In this case, applicant’s mark is basically a block
form drawing with its first and last letters depicted at a
slight angle. This slight variation is not sufficient to
create a distinctive mark. As the cases above demonstrate,
there is no rule that a word with some letters that are not
uniform results in an inherently distinctive mark. The
board has indicated that for the stylization of the words
in an otherwise descriptive mark to be registrable on the
Principal Register the stylization must be more than simply
a little different or unusual.
Ser. No. 77356614
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Here, the slight angles to the first and last letters
in applicant’s mark case do not create an inherently
distinctive mark. These slight differences from block
style printing are hardly noticeable and there is no
evidence that purchasers would understand that this
stylization distinguishes applicant’s goods from those of
others. Applicant’s mark is also much less distinctive
than other designs that were determined to not be
registrable on the Principal Register when the words in the
mark were not distinctive. Therefore, even if the word
“Jumboz” was disclaimed, applicant’s mark is merely
descriptive.
Decision: The refusal to register applicant’s mark
JUMBOZ (stylized) on the Principal Register for processed
sunflower seeds on the ground that it is merely descriptive
is affirmed.