Farmer Bros. Co.

Trademark Trial and Appeal Board

Jun 10, 1997

EX (T.T.A.B. Jun. 10, 1997)

Paper No. 12
THIS DISPOSTION IS NOT CITABLE AS
PRECEDENT OF THE TTAB June 10, 1997
JER
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Farmer Bros. Co.
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Serial No. 74/488,107
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Billy A. Robbins and Clark D. Gross of Robbins, Berliner &
Carson for applicant.
Darlene D. Bullock, Trademark Examining Attorney, Law Office
101 (Chris Wells, Managing Attorney)
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Before Rice, Hanak, and Quinn, Administrative Trademark
Judges.
Opinion by Rice, Administrative Trademark Judge:
Farmer Bros. Co. has filed an intent-to-use application
to register the mark EARL GREY'S BEST for teas.1
Registration has been refused under Section 2(e)(1) of
the Act, 15 U.S.C. §1052(e)(1), on the ground that EARL
GREY'S BEST, when applied to teas, is merely descriptive of
them. Specifically, the Examining Attorney maintains that

1 Application Serial No. 74/488,107 filed February 8, 1994
under the provisions of Section 1(b) of the Trademark Act of
1946, 15 U.S.C. §1051(b), based upon applicant's allegation of a
bona fide intention to use the mark in commerce.
Earl Grey is a well-known flavor or blend of tea, that the
word "best" is laudatory, and that the mark as a whole gives
the commercial impression that applicant's tea is the best
blend of Earl Grey tea.
In support of the refusal to register, the Examining
Attorney has made of record a dictionary definition of the
word "best,"2 and 25 story excerpts from the NEXIS database
offered to show that Earl Grey is a famous blend or flavor
of tea.3
Applicant agrees that Earl Grey is a well-known flavor
or type of tea. However, applicant maintains that the
combination of two or more admittedly descriptive elements
may result in a composite which is not descriptive; that
this is true of applicant's mark; and that considered as a
whole, the mark EARL GREY'S BEST, because of its possessive
structure, suggests that the product bearing the mark is the
best an individual (or perhaps a titled aristocrat) named
Earl Grey has to offer--that the product is the finest or
best that is owned or produced by an individual named Earl
Grey. Under the circumstances, it is applicant's position
that while the mark may also convey an impression which may
possibly be descriptive, as argued by the Examining

2 The Examining Attorney's evidence shows that the adjective
"best" is defined in Webster's II New Riverside University
Dictionary (1984) as, inter alia, "exceeding all others in
excellence, achievement, or quality: most excellent" and "most
satisfactory, suitable, or useful: most desirable."
3 The Examining Attorney, citing the NEXIS story excerpts,
notes that Earl Grey tea was named for the Earl of Grey, a
British prime minister in the 1830's.
Attorney, it is not "merely" descriptive. Applicant also
argues that competitors and the industry have no need to use
EARL GREY'S BEST, rather than Earl Grey, to describe teas
having the distinctive Earl Grey flavor.
In support of its position, applicant cites the
Examining Attorney's NEXIS evidence, which includes no
instances of use of EARL GREY'S BEST or even EARL GREY'S in
reference to tea. In addition, applicant has made of record
a photocopy of a tea bag and tea bag box for Earl Grey tea
sold by Bigelow, offered to show the manner in which a
competitor refers to its Earl Grey tea;4 a computer printout
of information concerning a third-party registration,
namely, Registration No. 1,492,470 issued on the Principal
Register to Celestial Seasonings, Inc. for the mark
EXTRAORDINARY EARL GREY (EARL GREY disclaimed) for herb
tea;5 and a dictionary definition offered to show that the

4 Both the tea bag and the box bear at their top the mark
BIGELOW, in stylized capital letters, and thereunder, in large
letters, the designation "Earl Grey" and then, in smaller
letters (except for the word TEA) the wording "Named after a
British nobleman this TEA is renowned in international circles."
5 In order to make a third-party registration properly of
record in a proceeding such as this, a soft copy of the
registration itself, or the electronic equivalent thereof, i.e.,
a printout of a registration taken from the electronic records
of the Patent and Trademark Office's own data base, must be
submitted. See In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB
1994). In the present case, the printout submitted by applicant
is not a printout from the automated system of the Patent and
Trademark Office. Instead, it appears to be a printout from a
private company's data base. However, the Examining Attorney
has not objected to the third-party registration on this basis,
but rather has offered arguments relating to the probative value
of the registration. Accordingly, we have considered the
registration in our determination of this case. We add that our
decision would be the same even if we excluded this
registration.
"possessive" designates or pertains to denoting ownership or
some relation felt as analogous.6
A mark is merely descriptive if, as used in connection
with the goods or services in question, it describes, i.e.,
immediately conveys information about, an ingredient,
quality, characteristic, feature, etc. thereof, or if it
directly conveys information regarding the nature, function,
purpose, or use of the goods or services. See In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978);
In re Eden Foods Inc., 24 USPQ2d 1757 (TTAB 1992); and In re
American Screen Process Equipment Co., 175 USPQ 561 (TTAB
1972). The question of whether a mark is merely descriptive
must be determined not in the abstract, but rather in
relation to the goods or services for which registration is
sought, that is, by asking whether, when the mark is seen on
the goods or services, it immediately conveys information
about their nature. See In re Abcor Development Corp.,
supra. The combination of two descriptive terms may result
in the creation of a valid mark where the combination
creates a new and different commercial impression from that
of its individual components, and the new and different
commercial impression thus created is not itself merely
descriptive in significance. See In re Medical Disposables
Co., 25 USPQ2d 1801 (TTAB 1992); In re Disc Jockeys Inc., 23

6 The term "possessive" is defined in Webster's Collegiate
Dictionary (5th ed.) as, inter alia, "Gram. Designating or
pertaining to the case in English denoting ownership or some
relation felt as analogous ...."
USPQ2d 1715 (TTAB 1992); and In re Ron Matusalem, Inc., 196
USPQ 458 (TTAB 1977).
In the present case, we agree with applicant that
because of its possessive structure, the mark EARL GREY'S
BEST, when applied to tea, immediately conveys the fanciful
impression that Earl Grey is a living individual, and that
the tea on which the mark is used is his best tea. Thus,
although the mark may also convey descriptive significance,
i.e., that this is the best of the Earl Grey teas, we
conclude that the mark is not merely descriptive. To the
extent that we have any doubt on the matter, we resolve that
doubt, as we must, in favor of applicant.
Decision: The refusal to register is reversed.
J. E. Rice
E. W. Hanak
Administrative Trademark
Judges, Trademark Trial and
Appeal Board
Quinn, Administrative Trademark Judge, dissenting:
I respectfully dissent.
I begin with applicant's acknowledgment that Earl Grey
is a well-known flavor or type of tea. Indeed, the NEXIS
evidence clearly establishes this fact. Thus, when this
flavor or type name is combined with "best", as used in
connection with tea, the combination is merely descriptive.
That is, EARL GREY'S BEST is laudatorily descriptive of tea
that is purported to be the best blend or best tasting Earl
Grey tea.
In saying this, I recognize that Earl Grey tea was
named for the Earl of Grey. However, I question how many of
the relevant purchasers will even be aware of this fact.
Rather, I believe it more likely that average purchasers in
a supermarket will ascribe the commonplace meaning to Earl
Grey as applied to tea, that is, a flavor or type of tea. I
think that this is especially likely given that these
consumers will see Earl Grey being used as a flavor or type
of tea by a variety of producers.
I simply do not find that the possessive structure, in
the words of the majority, "immediately conveys the fanciful
impression that Earl Grey is a living individual, and that
the tea on which the mark is used is his best tea." To the
contrary, I agree with the Examining Attorney that the mark
immediately conveys information about a quality of the tea,
namely, that the tea is the "most excellent" or best Earl
Grey flavor or blend on the market. Thus, I would prefer
that a laudatorily descriptive mark such as applicant's be
kept available to competitors. See: In re Wileswood, Inc.,
201 USPQ 400 (TTAB 1978).
I would affirm the refusal to register.
T. J. Quinn
Administrative Trademark
Judge, Trademark Trial
and Appeal Board