Firehouse Restaurant Group, Inc.

Trademark Trial and Appeal Board

Sep 28, 2007

No. 78714565 (T.T.A.B. Sep. 28, 2007)

Mailed:
September 28, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Firehouse Restaurant Group, Inc.
________

Serial Nos. 78714565 and 78714600
_______

Richard S. Vermut and Stephen E. Kelly of Rogers Towers,
P.A. for Firehouse Restaurant Group, Inc.

Jason Paul Blair, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Quinn, Zervas and Bergsman, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

On September 16, 2005, Firehouse Restaurant Group,
Inc. (“applicant”) filed two applications to register
FOUNDED BY FIREMEN (in standard character form) on the
Principal Register. The first application (Serial
No. 78714565) is for “restaurant franchising” in
International Class 35, and the second application (Serial
No. 78714600) is for “restaurant services” in International
Class 43. On September 25, 2007, the examining attorney
THIS DECISION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Ser Nos. 78714565 and 78714600
2
approved applicant's amendments to allege use, filed on
April 5, 2007.
The examining attorney has issued a final refusal in
each application under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. §1052(e)(1), on the ground that applicant's
mark, if applied to applicant's services, would be merely
descriptive of its services.
Applicant has appealed the final refusals. In an
order dated June 27, 2007, the Board consolidated both
applications for briefing of the appeal. We affirm the
refusal in each application.
A mark is merely descriptive if it immediately
describes the ingredients, qualities, or characteristics of
the goods or services or if it conveys information
regarding a function, purpose, or use of the goods or
services. In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215 (CCPA 1978). See also In re Nett Designs, 236
F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001). To be merely
descriptive, a term need only describe a single significant
quality or property of the goods or services. In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
Also, “[t]he perception of the relevant purchasing public
sets the standard for determining descriptiveness. Thus, a
mark is merely descriptive if the ultimate consumers
Ser Nos. 78714565 and 78714600
3
immediately associate it with a quality or characteristic
of the product or service. On the other hand, if a mark
requires imagination, thought, and perception to arrive at
the qualities or characteristics of the goods or services,
then the mark is suggestive.” In re MBNA America Bank
N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003)
(citations and internal quotation marks omitted).
In support of his refusals, the examining attorney has
submitted with his first Office action a webpage from
applicant's www.firehousesubs.com website which states:
In 1994, Firehouse Subs was founded by brothers
Robin and Chris Sorensen, members of the
Jacksonville, Florida fire department. As the
frequent cooks for their stationhouse, they
quickly gained a reputation for fighting hunger
with the same success (and passion!) that they
fought fires. After countless compliments, the
brothers decided to take their culinary talents
to a larger audience.

They spoke with financial advisors, friends, and
family members. Finally, the scratched together
enough money to open their first restaurant.
Word spread like – well, wildfire – and soon
people were lined up out the door to try this
little shop with the smoking good food.

According to the examining attorney, the mark “immediately
conveys to consumers an attribute of applicant’s services,
namely that the services were founded by firemen.” Brief
at (unnumbered) p. 3.
Ser Nos. 78714565 and 78714600
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Applicant maintains that “Applicant's Mark is not
merely descriptive of Applicant's Services because it
conveys information about Applicant's corporate origins
only, and not about characteristics or qualities of”
restaurant franchising or restaurant services. Brief at
p. 6. While applicant acknowledges that the “general rule
in trademark law is that a term describing the provider of
goods or services may be deemed descriptive of the
underlying goods or services,” citing to cases such as In
re Major League Umpires, 60 USPQ2d 1059 (TTAB 2001), In re
E.I. Kane, Inc., 221 USPQ 1203 (TTAB 1984) and In re The
Phone Co., 218 USPQ 1027 (TTAB 1983), applicant argues that
“the Board has limited application of the general rule to
instances where the mark causes the consumers to understand
some mental link between the provider and the underlying
goods and services.” Reply at p. 4. In sum, applicant
states that that “the information conveyed about
applicant's corporate origins is not the type of
information that trademark law designates as descriptive of
the underlying goods or services.” Brief at pp. 7 – 8.
The problem with applicant’s argument is that Section
2(e)(1) is not limited to a “type of information.”
Professor McCarthy has noted:
Ser Nos. 78714565 and 78714600
5
A “descriptive” term is one that directly and
immediately conveys some knowledge of the
characteristics of a product or service.

A mark is “descriptive” if it is descriptive of …
the provider of the goods or services.

J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition, § 11:16 (4th ed. June 2006). Also, the Board
recognized in Major League Umpires, 60 USPQ2d at 160, that
“[i]t is well-established that a term which describes the
provider of goods or services is also merely descriptive of
those goods and services.” There, the Board found the mark
MAJOR LEAGUE UMPIRE for various clothing items and athletic
goods to be merely descriptive in view of evidence showing
that the officers and partners of the applicant were
employed as major league baseball umpires, applicant
advertised and its website stated that it is owned and
operated by three National League umpires, and applicant
listed the biographies of these men prominently on the
website, including that they were major league umpires.
The Board concluded that “there can be no question that
MAJOR LEAGUE UMPIRE describes the provider of the
identified goods.” Similarly, in this case, FOUNDED BY
FIREMEN describes the provider of applicant’s services,
i.e., that applicant was founded by firemen. Also, even if
these cases require that “consumers understand some mental
Ser Nos. 78714565 and 78714600
6
link between the provider and the underlying goods and
services,” as applicant maintains, the term “founded” in
the mark immediately creates a mental link between
applicant as the provider and the services; it directly
connects applicant to the services.
The Board’s holdings in The Phone Co., E.I. Kane, Inc.
and Major League Umpires do not require reversal of the
refusals. None of these cases require that the provider of
the goods or services be identified or named – they all
state that a mark is merely descriptive if it describes the
provider of the underlying goods or services. Here,
FOUNDED BY FIREMEN describes applicant which is the
provider of the identified services.
Applicant has also argued that “granting exclusive
rights in the mark will not inhibit competitors from
describing their competing restaurant services,” noting
that “the Examining Attorney provides no evidence of how
the Mark FOUNDED BY FIREMEN is commonly used by” restaurant
franchise and restaurant service companies. Briefs at
p. 8. Registration of applicant’s mark would of course
inhibit competitors from using the phrase “founded by
firemen” in describing those restaurants and restaurant
franchises which were actually founded by firemen. Also,
the examining attorney need not show how “founded by
Ser Nos. 78714565 and 78714600
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firemen” is commonly used by restaurant services companies.
A word need not be in common use in an industry to be
descriptive, and the mere fact that an applicant is the
first to use a descriptive term in connection with its
goods, does not imbue the term with source-identifying
significance. In re National Shooting Sports Foundation,
Inc., 219 USPQ 1018, 1020 (TTAB 1983) (the fact that the
applicant may be the first to use a merely descriptive
designation does not “justify registration if the term
projects only merely descriptive significance.”).
Thus, after carefully considering all of the arguments
of applicant and the examining attorney, as well as the
evidence of record, we find that applicant's mark
immediately describes, without imagination, thought or
perception, a characteristic of such services, namely, that
such restaurants and franchises were established or set up
by firemen. See definition of “founded” from the online
version of The American Heritage Dictionary of the English
Language, 4th ed. (2000) at dictionary.com, submitted with
the final Office action, i.e., “to establish or set up,
especially with provision for continuing existence.”
FOUNDED BY FIREMEN, when used in connection with
“restaurant franchises” and “restaurant services,” is hence
Ser Nos. 78714565 and 78714600
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merely descriptive of a characteristic of applicant’s
services.
Decision: The refusal to register is affirmed in both
applications.1

1 Applicant has requested in its amendments to allege use that
its applications be amended to seek registration on the
Supplemental Register in the event that the Board affirms the
examining attorney’s Section 2(e)(1) refusals. Applicant’s
request is denied; applicant has elected a course of action and
has had an adjudication of its applications. In re Phillips-Van
Heusen Corp., 63 USPQ2d 1047 n.2 (TTAB 2002).