Elkay Plastics Co., Inc.

Trademark Trial and Appeal Board

Jan 8, 2021

88573025 (T.T.A.B. Jan. 8, 2021)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: January 8, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Elkay Plastics Co., Inc.
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Serial No. 88573025
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Gary M. Anderson of Fulwider Patton LLP,
for Elkay Plastics Co., Inc.
Sahar Nasserghodsi, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
_____

Before Wellington, Goodman and Lebow,
Administrative Trademark Judges.

Opinion by Lebow, Administrative Trademark Judge:
Applicant, Elkay Plastics Co., Inc., applied to register the standard character
mark COMPOSTA on the Principal Register for the goods, as amended:1
Pouches and rigid containers all made from kraft paper and kraft board
for packaging use in the food service industry; Plastic pouches and films
all made from bio-resin for use in the food service industry for

1 Application Serial No. 88573025 was filed on August 9, 2019 based on Applicant’s allegation
of an intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15
U.S.C. § 1051(b). Applicant subsequently filed an Amendment to Allege Use under Section
1051(c) of the Trademark Act, 15 U.S.C. § 1051(c), along with specimens of use, alleging
March 5, 2020 as the date of first use of the mark anywhere and in commerce, which was
accepted. A third class of goods in Class 22 was deleted at that time.

Serial No. 88573025
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packaging; Rigid containers consisting primarily of kraft paper, kraft
board and also including bio-resin, for packaging use in the food service
industry; all aforementioned goods being compostable, in International
Class 16; and

Plastic rigid containers made from bio-resin for use in the food service
industry; Rigid containers consisting primarily of a bio-resin plastic
substitute and also including kraft paper and kraft board, for packaging
use in the food service industry; all aforementioned goods being
compostable, in International Class 20.

The Trademark Examining Attorney refused registration under Section 2(e)(1) of
the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that the mark is merely
descriptive of the identified goods. When the refusal was made final, Applicant
requested reconsideration, which was denied. Applicant subsequently filed an appeal
to this Board. The appeal is fully briefed.
We affirm the refusal.
I. Applicable Law
Section 2(e)(1) of the Trademark Act prohibits registration on the Principal
Register of “a mark which, (1) when used on or in connection with the goods of the
applicant is merely descriptive … of them,” unless the mark has been shown to have
acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f).
A mark is “merely descriptive” within the meaning of Section 2(e)(1) “if it immediately
conveys information concerning a feature, quality, or characteristic of the goods …
for which registration is sought.” In re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707,
1709 (Fed. Cir. 2017) (citing In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828, 1831
(Fed. Cir. 2007)). “A mark need not immediately convey an idea of each and every
specific feature of the goods in order to be considered merely descriptive; it is enough
Serial No. 88573025
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if it describes one significant attribute, function or property of the goods.” In re Fat
Boys Water Sports LLC, 118 USPQ2d 1511, 1513 (TTAB 2016) (citing In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987)).
Whether a mark is merely descriptive is “evaluated ‘in relation to the particular
goods for which registration is sought, the context in which it is being used, and the
possible significance that the term would have to the average purchaser of the goods
because of the manner of its use or intended use,’” In re Chamber of Commerce of the
U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting Bayer, 82
USPQ2d at 1831), and “not in the abstract or on the basis of guesswork.” Fat Boys,
118 USPQ2d at 1513 (citing In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218
(CCPA 1978)). We ask “whether someone who knows what the goods and services are
will understand the mark to convey information about them.” Real Foods Pty Ltd. v.
Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1374 (Fed. Cir. 2018)
(quoting DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103
USPQ2d 1753, 1757 (Fed. Cir. 2012) (internal quotation omitted)). A mark is
suggestive, and not merely descriptive, if it requires imagination, thought, and
perception on the part of someone who knows what the goods are to reach a conclusion
about their nature from the mark. See, e.g., Fat Boys, 118 USPQ2d at 1515.
“Evidence of the public’s understanding of [a] term . . . may be obtained from any
competent source, such as purchaser testimony, consumer surveys, listings in
dictionaries, trade journals, newspapers[,] and other publications.” Real Foods, 128
USPQ2d at 1374 (quoting Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127
Serial No. 88573025
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USPQ2d 1041, 1046 (Fed. Cir. 2018)). “These sources may include [w]ebsites,
publications and use ‘in labels, packages, or in advertising material directed to the
goods.’” N.C. Lottery, 123 USPQ2d at 1710 (quoting Abcor Dev., 200 USPQ at 218).
II. Examining Attorney’s Evidence and Arguments
The Examining Attorney relies on the doctrine of foreign equivalents to support
her argument that COMPOSTA is merely descriptive of the identified goods. Under
the doctrine of foreign equivalents, foreign words from common languages are
translated into English to determine similarity of connotation with English word
marks. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005). In descriptiveness
cases:
It is a well[-]established principle of trademark law in this country that
the foreign equivalent of a merely descriptive English word is no more
registrable than the English word itself despite the fact that the foreign
term may not be commonly known to the general public. That is,
normally no distinction can be made between English terms and their
foreign equivalents with respect to registrability. Foreign language
words, not adopted into the English language, which are descriptive of
a product, are so considered in registration proceedings despite the fact
that the words may be meaningless to the public generally.

In re S. Malhotra & Co. AG, 128 USPQ2d 1100, 1102 (TTAB 2018) (quoting In re
Highlights for Children, Inc., 18 USPQ2d 1268, 1270 (TTAB 2016)) (internal citations
and quotations omitted).
The rule, however, is not absolute and should be viewed merely as a guideline. Id.
The doctrine of foreign equivalents should be applied only when: (1) the relevant
English translation is direct and literal and there is no contradictory evidence
Serial No. 88573025
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establishing another relevant meaning, In re Sadoru Grp., Ltd., 105 USPQ2d 1484,
1485 (TTAB 2012), and (2) “it is likely that the ordinary American purchaser would
‘stop and translate [the word] into its English equivalent.’” Palm Bay, 73 USPQ2d at
1696 (quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976)). “The rule
is not to be applied mechanically.” In re Isabella Fiore, LLC, 75 USPQ2d 1564, 1569
(TTAB 2005). The “ordinary American purchaser” includes “all American purchasers,
including those proficient in a non-English language who would ordinarily be
expected to translate words into English.” In re Spirits Int’l N.V., 563 F.3d 1347, 90
USPQ2d 1489, 1492 (Fed. Cir. 2009).
The Examining Attorney submitted English translations from five online Italian-
English translation dictionaries to show that the word “composta” translates from
Italian to English as “compost,” “mixture,” or “compound.”2 She also provided a
definition of the word “compost” as meaning a “mixture, compound,” or “to convert (a
material, such as plant debris) to compost,” as well as a definition of the word
“compostable” as meaning “capable of being used as compost.”3
The Examining Attorney asserts that “Applicant’s mark is in Italian, which is a
common, modern language in the United States,”4 referencing an article from Babbel
Magazine, which states that “about 709,000 people in the country speak Italian at

2 November 14, 2019 Office Action, TSDR 12 (wordreference.com); March 6, 2020 Final Office
Action, TSDR 7-8 (dictionary.cambridge.org and it.bag.la); June 5, 2020 Request for
Reconsideration Denied, TSDR 4-5 (context.reverso.net and translate.systran.net).
3 November 14, 2019 Office Action, TSDR 13-14 (merriam-webster.com and
thefreedictionary.com).
4 10 TTABVUE 5 (Examining Attorney’s Brief).
Serial No. 88573025
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home, according to the U.S. Census Bureau” and that “Italian is the fifth most-studied
foreign language in the United States. … New York and New Jersey are the states
with the largest number of native Italian speakers, with around 294,000 and 116,000
speakers, respectively.”5 Based on the foregoing, the Examining Attorney contends
that the ordinary American purchaser, which includes those proficient in Italian,
would likely stop and translate the mark.6
Turning to her argument that the mark, as would be translated by the ordinary
American purchaser, is merely descriptive of Applicant’s goods, the Examining
Attorney notes that “Applicant’s identification of goods indicates that the goods are
compostable. Thus, the term COMPOST/COMPOSTA, as applied to applicant’s
goods, immediately describes that the goods may be used as compost.”7
In further support of her contentions, the Examining Attorney provided third-
party Internet webpage evidence that she states “shows similar goods, specifically
that bags, films, boxes and/or containers are sold touting that they are compostable
and are suitable for the purpose of composting,” and “shows use of the terms
‘COMPOST’ or ‘COMPOSTABLE’ in a descriptive manner in conjunction with those
goods,”8 including evidence from:
o BioBag, which provides bags and films for restaurants, grocery
stores, kitchens and institutions for the collection of organic waste
for the purpose of composting: “We are a small, privately owned
company dedicated to only producing certified compostable bags

5 March 6, 2020 Final Office Action, TSDR 9-10.
6 Id. at 5-6.
7 Id. at 6.
8 Id.
Serial No. 88573025
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and films.”;9

o Eco Products, which provides compostable liners and bags made
with renewable resources: “These compostable plastic bags are
made with renewable resources, BPI certified compostable and
compliant.”:10

o Bed Bath & Beyond, which sells bags described as “100%
compostable for disposing of your waste. These 4-liter bags take
the mess out of cleaning your compost unit” and “to dispose of food
scraps in preparation for gathering compost.”;11

o WebestaurantStore, which sells environmentally friendly
“compostable paper take-out containers” for the packaging of
food;12 and

o LetsGoGreen.biz, which sells eco-friendly 100% compostable and
biodegradable food containers: “[We’ve got a great selection of
100% compostable and biodegradable food and deli disposable
takeout containers to meet your needs.”13

III. Applicant’s Evidence and Arguments
Applicant provided additional Italian-English translations for COMPOSTA

9 November 14, 2019 Office Action, TSDR 15-16.
10 Id. at 17.
11 Id. at 18.
12 Id. at 19.
13 Id. at 20.
Serial No. 88573025
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including “composed”14 and “compote,” and argues that the “primary translation” of
COMPOSTA is one of those translations, and that “the Examining Attorney’s
proposed translation is at best the third possible translation of ‘Composta.’”15
According to Applicant, the existence of these additional English translations shows
that there is “contrary evidence of record regarding the meaning of COMPOSTA” and
“precludes the application of the doctrine of foreign equivalents.”16 In support,
Applicant points to TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) §
1207.01(b)(vi), which states that “if the evidence shows that the relevant English
translation is literal and direct, and no contradictory evidence of shades of meaning
or other relevant meanings exists, the doctrine generally should be applied by the
examining attorney.” (Emphasis added by Applicant).17 Here, Applicant asserts,
“there is not clear, uncontradicted evidence in the record as to the proper English
translation of record.”18
Regarding mere descriptiveness, Applicant argues that because “COMPOSTA
translates as ‘composed,’ or ‘compote’ the Examining Attorney’s citation to various
websites … are not relevant.”19 Applicant argues that it is inconsistent for the USPTO
to allow two prior registrations for the marks COMPOSTABOX (for “coated, leak

14 February 18, 2020 Response to Office Action, TSDR 8 (Google Translate excerpt) and March
11, 2020 Request for Reconsideration, TSDR 13 (translate.yandex.com).
15 8 TTABVUE 8 (Applicant’s Brief).
16 Id.
17 Id.
18 Id.
19 Id. at 9.
Serial No. 88573025
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proof, biodegradable and compostable cardboard boxes for storage, shipment and in-
box composting of compostable material”) and COMPOST-A-PAK (for compostable
paper-pulp based to-go containers for food), “both of which actually contain the word
compost, without disclaimers thereby admitting that trademarks are not merely
descriptive, yet refuse Applicant’s registration for a word that does not mean
compost.”20 Finally, Applicant argues that “COMPOSTA may be suggestive but it is
not merely descriptive” because “the primary translation … is either ‘composed’ or
‘compote.’ Applicant submits it would take imagination on the part of the consumer
to associate ‘COMPOSTA’ with ‘compost’.”
IV. Discussion
Applicant misconstrues the guidelines provided by TMEP § 1207.01(b)(vi) which,
contrary to Applicant’s assertion, do not preclude application of the doctrine of foreign
equivalents whenever a term has multiple meanings. “The doctrine is applicable in
this case because the record shows that the relevant English translation is literal
and direct, the word comes from a common, modern language, and there is no
contradictory evidence of another relevant meaning.” Sadoru Grp., 105 USPQ2d at
1485. Many words have multiple meanings. Hence, the applicable definition of a word
depends on the context of its use.

20 Id. Registration Nos. 4851549 (COMPOSTABOX) and 4633237 (COMPOST-A-PAK) were
previously cited and made of record by the Examining Attorney for refusals to register based
on likelihood of confusion, which were subsequently withdrawn. See November 14, 2019
Office Action (initial Section 2(d) refusals) and 10 TTABVUE 3 (Examining Attorney’s
statement that withdrew such refusals following Applicant’s May 11, 2020 Request for
Reconsideration).
Serial No. 88573025
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The Examining Attorney, as noted above, provided English translations for
“composta” (compost, mixture, or compound) and definitions for “compost” (a mixture,
compound, or to convert a material to compost). We compare the overlapping
definitions of “composta” with the relevant meanings of the other translations—
“mixture” and “compound”—of which we take judicial notice:
o Mixture – “the act, the process, or an instance of mixing”; “the state of
being mixed”; “the relative proportions of constitutes”; and “the product
of mixing: COMBINATION: such as … a combination of several different
kinds”;21

o Compound – “to put together (parts) so as to form a whole: COMBINE”;
“to form by combining parts.”22

Here, the relevant English meanings of COMPOSTA—compost, mixture, and
compound—are not contradictory of one another, but rather, are highly related. “That
several related meanings are also listed in the dictionary does not doom the refusal
for lack of precision.” In re Geo. A. Hormel & Co., 227 USPQ 813, 814 (TTAB 1985)
(affirming refusal to register , Italian equivalent of English word “tasty,”
as merely descriptive and laudatory of applicant’s dry sausage notwithstanding other
definitions such as “lively,” “witty” and “expensive); see also S. Malhotra, 128
USPQ2d 1100, 1105 (affirming refusal to register , Greek equivalent of
English words “marriage, “matrimony,” and “wedding,” as merely descriptive of

21 https://www.merriam-webster.com/dictionary/mixture (accessed January 7, 2021). The
Board may take judicial notice of dictionary definitions from online sources when the
definitions themselves are derived from dictionaries that exist in printed form or have regular
fixed editions. See In re White Jasmine LLC, 106 USPQ2d 1385, 1392 n.23 (TTAB 2013); In
re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
22 https://www.merriam-webster.com/dictionary/compound (accessed January 7, 2020).
Serial No. 88573025
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applicant’s jewelry and watches despite alternate meanings, including “small deer,”
“buck,” and “a sexual ritual that plays out a marriage between a god and a goddess”);
In re Tokutake Indus., 87 USPQ2d 1697 (TTAB 2008) (affirming refusal to register
AYUMI and Japanese-character equivalent as merely descriptive of footwear despite
evidence of multiple meanings of “ayumi,” including “walking,” “a step,” and “one’s
pace”). Accordingly, we find that Applicant’s proposed mark COMPOSTA has definite
English translations as “compost,” “mixture,” or “compound.”
In addition, we find that “it is likely that the ordinary American purchaser would
‘stop and translate [COMPOSTA] into its English equivalent.’” Palm Bay, 73 USPQ2d
at 1696. Historically, the doctrine of foreign equivalents has been applied to Italian
in a number of cases with little or no discussion of how many Americans speak the
language. “[I]t does not require authority to conclude that Italian is a common, major
language in the world and is spoken by many people in the United States.” In re
Ithaca Industries, Inc., 230 USPQ 702, 703 (TTAB 1986). Nor does Applicant dispute
that Italian is a common modern language. To the extent there is any question, the
Examining Attorney’s Internet evidence, citing U.S. Census Bureau statistics from
2013 that more than 700,000 people speak Italian, and that Italian is the fifth most-
studied foreign language in the United States, adds to that finding. Accord In re
Joint-Stock Co. “Baik”, 80 USPQ2d 1305, 1310 (TTAB 2006) (“There is no question
that Russian speakers living in the United States, according to the record
approximately 706,000 in number, would immediately know that BAIKALSKAYA
means ‘from Baikal.’”).
Serial No. 88573025
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Applicant’s argument that the Examining Attorney’s third-party Internet
evidence is not relevant is tied to its corresponding misconception regarding
applicability of the doctrine of foreign equivalents and therefore is unavailing.
Instead, we find that the third-party evidence is relevant and probative to show that
the term COMPOST, and its use in adjective form as COMPOSTABLE, is descriptive
of goods with the feature and characteristic of being used for compost and/or is
compostable.
Also unavailing is Applicant’s argument regarding asserted inconsistency on the
part of USPTO, or that the USPTO has acknowledged the “COMPOST” is not merely
descriptive for similar goods by permitting the registrations of COMPOSTABOX and
COMPOST-A-PAK on the Principal Register without a disclaimer. As the Examining
Attorney correctly observes, citing TMEP § 1213.04, the marks in those registrations
“are irrelevant because the term ‘COMPOST’ appears within the marks that are
unitary; accordingly, no disclaimer would have been required in either mark.”23 As
the Examining Attorney further notes, “the fact that third-party registrations exist
for marks allegedly similar to applicant’s mark is not conclusive on the issue of
descriptiveness,” citing In re Scholastic Testing Serv., Inc. 196 USPQ 517, 519 (TTAB
1977).24 “In a final analysis, we are not so much concerned with what has been
registered, but rather what should or should not be registered.” Id. Moreover, it is
well settled that each case must be decided on its own facts and the Board is not

23 10 TTABVUE 8 (Examining Attorney’s Brief).
24 Id.
Serial No. 88573025
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bound by prior decisions involving different records. See In re Nett Designs, Inc., 236
F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
Finally, Applicant argument that COMPOSTA is suggestive but not merely
descriptive because “the primary translation … is either ‘composed’ or ‘compote,’ is
without merit. That “composta” is translated first as “compote” in one of the
Examining Attorney’s dictionary definitions of record, and second as “compost,” as
Applicant points out,25 is inconsequential. “It is well settled that so long as any one
of the meanings of a term is descriptive, the term may be considered to be merely
descriptive.” In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984); see also In re IP
Carrier Consulting Grp., 84 USPQ2d 1028, 1034 (TTAB 2007); In re Bright-Crest,
Ltd., 204 USPQ 591, 593 (TTAB 1979). As explained, the relevant meaning of a term
depends on the context in which the term is used. Here, as clearly stated in
Applicant’s identification of goods, all of Applicant’s pouches, containers, and films
are compostable; that is, they can all be made into compost. This is a feature and
characteristic of Applicant’s goods that is immediately described by the word
COMPOST, the relevant English translation of Applicant’s proposed mark
COMPOSTA from Italian.
V. Conclusion
Based on the record in its entirety, we find that consumers of Applicant’s
compostable pouches, containers and films who are familiar with the Italian language
would immediately understand COMPOSTA to convey information about a feature

25 8 TTABVUE 7-8 (Applicant’s Brief).
Serial No. 88573025
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or characteristic of those goods, namely, that they may be used as compost and/or are
compostable. Because the proposed mark immediately conveys knowledge about
Applicant’s goods, it is merely descriptive under Trademark Act Section 2(e)(1).
Decision: The refusal is affirmed.