Grindmaster Corporation

Trademark Trial and Appeal Board

Oct 28, 2011

No. 77834762 (T.T.A.B. Oct. 28, 2011)

THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.

Mailed: October 28, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Grindmaster Corporation
________

Serial No. 77834762
_______

John W. Scruton of Stites & Harbison for Applicant.

Simon Teng, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Quinn, Holtzman, and Wolfson, Administrative
Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:

On September 25, 2009, Grindmaster Corporation
(“applicant”) filed an application to register the standard
character mark GRIND N BREW for “electric coffee makers for
commercial use” in International Class 11.1
The examining attorney refused registration of
applicant’s mark under the provisions of Section 2(e)(1) of
the Trademark Act, 15 U.S.C. § 1052(e)(1), having
determined that “(1) the proposed mark is a generic name

1 Applicant claims July 31, 1995, as the date of first use of the
mark and first use of the mark in commerce.
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for the goods; [or, if the mark is not generic,] (2) the
proposed mark is merely descriptive of the goods; and (3)
the evidence of record is insufficient to establish
acquired distinctiveness under Trademark Act Section 2(f),
15 U.S.C. § 1052(f).” Examining Attorney’s Appeal Brief,
unnumbered p. 1. The appeal has been fully briefed.
II. Applicable Law
A. Standard for Genericness Refusal
In order for a mark to be considered generic, the
record must show that members of the relevant public
primarily use or understand the term sought to be
registered to refer to the category or class of goods or
services in question. See H. Marvin Ginn Corp. v.
International Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 228
USPQ 528, 530 (Fed. Cir. 1986); In re Women's Publishing
Co. Inc., 23 USPQ2d 1876, 1877 (TTAB 1992). Making this
determination “involves a two-step inquiry: First, what is
the genus of goods or services at issue? Second, is the
term sought to be registered … understood by the relevant
public primarily to refer to that genus of goods or
services?” Ginn, 228 USPQ at 530. Evidence of the
public's understanding of a term may be obtained from any
competent source, including testimony, surveys,
dictionaries, trade journals, newspapers and other
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publications. In re Merrill Lynch, Pierce, Fenner & Smith,
Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987);
In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227
USPQ 961, 963 (Fed. Cir. 1985). The examining attorney has
the burden of proving genericness by “clear evidence.”
Merrill Lynch, 4 USPQ2d at 1143; see also In re Gould Paper
Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111 (Fed. Cir. 1987);
and In re Wm. B. Coleman Co., 93 USPQ2d 2019 (TTAB 2010).
B. Standard for Descriptiveness Refusal
“A term is merely descriptive if it immediately
conveys knowledge of a quality, feature, function, or
characteristic of the goods or services with which it is
used.” In re Bayer Aktiengesellschaft, 488 F.3d 960, 82
USPQ2d 1828, 1831 (Fed. Cir. 2007). See also, In re
Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371
(Fed. Cir. 2004); In re Engineering Systems Corp., 2 USPQ2d
1075 (TTAB 1986); and In re Bright-Crest, Ltd., 204 USPQ
591 (TTAB 1979). It is well-established that the
determination of mere descriptiveness must be made not in
the abstract, but in relation to the goods or services for
which registration is sought, the context in which the mark
is used, and the impact that it is likely to make on the
average prospective purchaser of such goods or services.
The examining attorney has the burden to establish that a
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mark is merely descriptive. Bayer, 82 USPQ2d at 1831. See
also, In re Abcor Development Corp., 588 F.2d 811, 200 USPQ
215, 218 (CCPA 1978).
C. Establishing Acquired Distinctiveness
When an applicant claims the benefits of Section 2(f),
it is applicant’s burden to establish a prima facie case of
acquired distinctiveness. See Yamaha International Corp.
v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001
(Fed. Cir. 1988). As the Board has explained, in
determining whether a mark has acquired distinctiveness:
… the Board may examine [intentional] copying,
advertising expenditures, sales success, length
and exclusivity of use, unsolicited media
coverage, and consumer studies (linking the name
to a source). On this list, no single factor is
determinative. The amount and character of
evidence required to establish acquired
distinctiveness depends on the facts of each case
and particularly on the nature of the mark sought
to be registered. (internal citations omitted).

In re Tires, Tires, Tires, Inc., 94 USPQ2d 1153, 1157 (TTAB
2009). (Board found applied-for phrase generic, but also
found that if not generic, the phrase had not acquired
distinctiveness).
“Typically, more evidence is required where a mark is
so highly descriptive that purchasers seeing the matter in
relation to the named goods or services would be unlikely
to believe that it indicates source in any one entity.”
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Id. See also, In re Bongrain Int’l Corp., 894 F.2d 1316,
13 USPQ2d 1727, 1727 n. 4 (Fed. Cir. 1990), citing Yamaha
Int’l, 6 USPQ2d at 1008 (“the greater the degree of
descriptiveness the term has, the heavier the burden to
prove it has attained secondary meaning”).
I. The Record
A. The Examining Attorney’s Record
In support of his position, the examining attorney
submitted the following:
1. Dictionary definitions of the words “grind” and
“brew,” purportedly showing that the words are descriptive,
if not generic, when used in connection with electric
coffee makers;
2. Printouts of advertisements from a
Google.com/products search for “grind and brew coffee
makers,” purporting to show that manufacturers of coffee
makers that automatically grind and brew coffee beans use
the phrase “grind and brew” to designate a type of coffee
maker;
2. Printouts from websites containing customer
reviews of coffee makers, purportedly showing that “grind
and brew” is used by consumers to describe a type of coffee
maker; and
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3. Printouts from the Lexis/Nexis database of
newspaper articles that refer to electric coffee makers,
purportedly showing that “grind and brew” is generic for a
type of coffee maker.
B. Applicant’s Record
Applicant’s evidence consists of the following:
1. The June 23, 2010 declaration of John W. Scruton,
attorney of record for applicant, and attached Exhibits 1-
12, purporting to show that the mark is not generic and, if
descriptive, the mark has acquired distinctiveness;
2. The January 10, 2011 declaration of John W.
Scruton, and attached Exhibits 1-16, purporting to show
that “grind and brew” is not a type of coffee maker; and
3. The declaration of Suzannah Stephens, applicant’s
Marketing Manager, purporting to show that applicant’s mark
has acquired distinctiveness.
III. Analysis
A. The Mark is Generic for Coffee Makers

In determining whether applicant’s mark is generic, we
first must decide the genus of goods at issue. Next we
must determine whether members of the relevant public view
the term “grind and brew” as a common name for such genus
of goods. If the evidence shows that the proposed mark
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“GRIND N BREW”2 is perceived by the public as a common
descriptive or generic designation for a type of coffee
maker, the term is unregistrable under any circumstances.
Compare In re Bel Paese Sales Co., 1 USPQ2d 1233, 1235
(TTAB 1986) (magazine and newspaper excerpts do not
sufficiently and clearly show that DOLCELATTE is the
generic name of a type of cheese) with In re Cooperativa
Produttori Latte E Fontina Valle D'Aosta, 230 USPQ 131, 133
(TTAB 1986) (newspaper articles and dictionary definitions
show that FONTINA is the generic name for a type of
cheese).
The genus of goods at issue in this case is adequately
defined by applicant’s identification of goods, “electric
coffee makers for commercial use.” The examining attorney
argues that a “‘Grind and brew’ is a type of electric

2 We take judicial notice of the fact that the “n” in “GRIND N
BREW” may be read as the word “and,” as noted in the online
dictionary excerpt attached to the examining attorney’s appeal
brief from http://dictionary.cambridge.org. See 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). “During an appeal, the Board may take judicial
notice of dictionary definitions retrieved from online sources
when the definitions themselves are derived from dictionaries
that exist in printed form.” In re Petroglyph Games, Inc., 91
USPQ2d 1332, 1334 n.1 (TTAB 2009); cf. In re Red Bull GmbH, 78
USPQ2d 1375, 1378 (TTAB 2006)(“The Board has a long history of
taking judicial notice of definitions excerpted from print
dictionaries and submitted after appeal”); see also TBMP §
1208.04 (3d ed. 2011)(The Board will take judicial notice of
“definitions or entries from references that are the electronic
equivalent of a print reference work”).
Serial No. 77834762

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coffee maker that can grind coffee beans and make coffee.”3
Applicant contends that the evidence proffered by the
examining attorney “falls short of the ‘clear evidence’
burden,” thus failing to establish that the mark is
generic.4
We start by considering the definitions of the words
“grind” and “brew.”
GRIND: 1. transitive and intransitive verb
pulverize: to crush something into very small
pieces by rubbing it between two hard surfaces,
or be crushed in this way … 4. transitive verb
chop something into tiny pieces: to chop food,
especially meat, into tiny pieces, using a
mechanical device.

BREW: 2. make tea or coffee: to prepare tea or
coffee for drinking by infusing it to develop its
flavor, or infuse to develop flavor.”5

When used in connection with applicant’s coffee maker,
the words “grind” and “brew” retain their dictionary
meanings to adequately describe a device that grinds coffee
beans and brews the beans by infusion to make coffee.
Applicant advertises its “Grind’n Brew™ Series” coffee
makers (the “Dual Bean Grinderbrewers” and the “Single Bean
Grinderbrewers”) as featuring a “space-saving design [that]
eliminates the need for both grinder and brewer.” It is

3 Examining Attorney’s Appeal Brief, unnumbered p. 3.
4 Applicant's Appeal Brief, p. 6.
5 Office Action dated December 23, 2009. From the online Encarta
World English Dictionary 2009, printed at
http://encarta.msn.com/encnet/features/dictionary on 12/23/09.
Serial No. 77834762

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possible to program the “brew temperature, brew volume
[and] grind portions” from the front display of the device.6
It is also possible to set the device to “grind only,”
“brew only” or “Grind’n Brew™.”7 By using the term “grind’n
brew” in the manner of a verb, equating it to the verbs
“grind” and “brew” standing alone, the above indicates
generic use rather than trademark use. Further, making
minor changes to a term (such as substituting “’n” for
“and” does not automatically remove it from the category of
generic terms. A minor misspelling of a generic term does
not transform it into a trademark. See Nupla Corp. v. IXL
Manufacturing Co., 114 F.3d 191, 196, 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”); Cf. In re Bayer Aktiengesellschaft, 488 F.3d 960,
965-6, 82 USPQ2d 1828, 1831-32 (Fed. Cir. May 24,
2007)(mere addition of letter “a” at the end of the generic
term ‘aspirin’ insufficient to transform ASPIRINA into an
inherently distinctive mark for analgesics). Finally, the
use of the “tm” symbol does not by itself convert a term
that does not function as a trademark into one that does.
See In re Crystal Geyser Water Co., 85 USPQ2d 1374, 1379

6 June 23, 2010 Scruton Dec., para. 10, Ex. 9.
7 Id.
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n.4 (TTAB 2007) (“We further note that use of the TM
designation does not in itself elevate descriptive matter
to a trademark”).
To support his assertion that the mark is generic, the
examining attorney has submitted printouts from third-party
websites showing that various manufacturers sell electric
coffee makers and use “grind and brew” as part of the name
of their coffee makers. Representative entries are listed
below.
1. Cuisinart advertises --
At www.google.com/products: the Cuisinart
Grind & Brew Coffeemaker (DGB-600BC) and the
Cuisinart 12-Cup Grind & Brew Automatic Coffee
Maker (DGB-625BC).
At http://amazon.com: the Grind-and-Brew
Thermal 12-Cup Automatic Coffeemaker (DGB-900BC)
At www.nextag.com: the Cuisinart
Programmable Burr Grind & Brew with Automatic
Burr Grinder (DGB-900BC), the Cuisinart Grind &
Brew Thermal – 12 Cup, and the Cuisinart Grind &
Brew Thermal 10-cup Coffeemaker (DGB-600BC).8

2. Conair advertises --
At www.google.com/products: the Conair DGB-
900BC 12-cup Grind & Brew Thermal Automatic
Coffee Maker, the Conair DGB-700BC 12-cup Grind &
Brew Automatic Coffee Maker, and the Conair DGB-
650BC 10-cup Grind & Brew Thermal Automatic
Coffee Maker.

3. Krups advertises --

8 Applicant argues that Cuisinart uses “grind and brew” as a
trademark, following the words with a ™ symbol on its product.
Applicant submitted photographs of the actual unit in support of
this assertion. We make no determination herein as to
Cuisinart’s purported assertion of trademark rights. As
explained supra, use of the ™ symbol does not convert a term into
a trademark.
Serial No. 77834762

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At www.google.com: the Krups KM7000 Grind
and Brew 10-cup Coffeemaker.
At www.jlhufford.com: the KM 7000 Pro
Grinder and Coffee Brewer featuring an “Auto-On
Grind and Brew” function that can be used to
“grind coffee beans and brew at the set time;”

4. Capresso advertises --
At www.coffeemakers.com: the Jura Capresso
Coffee TEAM GS 10 Cup Grind & Brew.
At www.grindandbrewcoffeemakerssale.com: the
Capresso 464.05 GS 10 cup Programmable “grind and
brew coffee maker” and the Jura Capresso ENA4
Automatic Grind and Brew Coffee Maker, the latter
with the following description: “this bean to cup
grind and brew coffee maker makes gourmet coffees
just like at you (sic) favorite Café Bar.”

5. Saeco advertises --
At www.grindandbrewcoffeemakerssale.com:
the Saeco Grind and Brew 10 cup automatic Drip
Coffee Machine and the Saeco Vienna Plus Super
Automatic Espresso Machine, the latter of which
is advertised as having a “patented removable
brew group” that “allows the grind and brew
machine to tamp, brew and dispense the coffee in
one cycle.” Also at the website, the espresso
machine is described as a “grind and brew coffee
maker.”

6. Gaggia advertises --
At www.grindandbrewcoffeemakerssale.com:
the Gaggia Platinum Vision 90951 “grind and brew
cappuccino machine.”

7. Bosch advertises --
At www.grindandbrewcoffeemakerssale.com:
the Bosch Benvenuto B30 Programmable Grind and
Brew Coffee Maker that “performs just like the
espresso machines at your favorite coffee bar.”

8. DeLonghi advertises --
At www.grindandbrewcoffeemakerssale.com:
the DeLonghi 3500 Magnifica Grind and Brew Coffee
Maker, described as “a real espresso machine for
the home.”

Serial No. 77834762

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The fact that a large number of companies use the phrase
“grind and brew” as part of the name for their product
supports the examining attorney’s position that the phrase is
not source-identifying.
Newspaper stories also illustrate generic use of the
phrase “grind and brew” in connection with electric coffee
makers. Representative samples follow.
Knowles, Francine, Early copy machine, dollar-bill reader
among engineer’s projects, Chicago Sun-Times, Inc., July 2,
2010.
While at the engineering company, Mr. Wislow was
involved in many innovative prototype designs,
including … one of the first fresh-grind and brew
coffee vending machines.

By the Editors of Consumer Reports, CR tests show that
pricey coffee makers don’t necessarily brew the best java,
Fort Worth Star-Telegram, December 31, 2009.
For grind-and-brew models, which are typically a
hassle to clean, the Mr. Coffee GBX23 ($50) has a
blade grinder and is a CR Best Buy.

Fair, S.S., Singing the Brews, the New York Times, April
19, 2009.
The Samurai doesn’t need coffee makers to
announce the time. Nor does she cotton to
combination grind-and-brew makers or anything
dependent on pod packets of preground coffee.

Foster, Robin, Resale stores offer deals, The Houston
Chronicle, December 18, 2008.
Many items donated to the store are brand new,
Hawthorne said. She mentioned … grind-and-brew
coffee makers and children’s shoes.

Ritchie, Erika I., Landmark home to be rebuilt; San Juan
business owners Diane and Jim Carter look to the future
while helping out fellow equestrians, The Orange County
Register, November 1, 2007.
Serial No. 77834762

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On Oct. 22, the Carter’s evacuated their home.
They took the house’s blueprints, photographs and
a Grind & Brew coffee maker – on Diane’s
insistence.

Finz, Stacy, Stuff you need, Orlando Sentinel (Florida),
December 10, 2006.
When my friends and co-workers ridiculed me for
buying a cocoa-Latte machine (I already have a
grind-and-brew coffeemaker and an espresso
machine), I got defensive.

Scattergood, Amy, Capresso wins all-in-one crown, Orlando
Sentinel (Florida), November 19, 2006.
All-in-one grind-and-brew coffee makers … are a
coffee-lover’s dream.

Ortiz, Vikki, Holiday gift Guide: Last in a series,
Milwaukee Journal Sentinel (Wisconsin), December 20, 2004.
There won’t be any more arguing over who makes
the coffee for the couple that gets this present:
a stylish automatic grind and brew coffeemaker.

Elder, Jeff, A Few Fundamentals for brewing a better cup of
joe, The Charlotte Observer, August 4, 2003.
So Pearl bought an all-in-one, grind-and-brew
coffeemaker for $100. “The coffee had exactly
the same taste,” he says.

Erskine, Chris, the guy chronicles; everything is connected
to the cosmic generator, The Los Angeles Times, January 24,
2001.
Here’s why there isn’t enough electricity:
…
3. Your automatic bread maker kicks on at 4
a.m.; your gigantic grind-and-brew coffee maker
kicks on at 6.

Goldsmith, Diane, Wrapping it up if you haven’t finished
your holiday shopping, you can still find impressive and
affordable gifts for the home, The Philadelphia Inquirer,
December 15, 2000.
Other hits include pizzelle irons and grind-and-
brew coffeemakers that can be programmed.

Marter, Marilynn, Santa, dear…here’s a wish list of food
gifts that covers everybody from fine diners and weekend
Serial No. 77834762

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cooks down to the preschool set, The Philadelphia Inquirer,
December 13, 2000.
Addressing that question of popularity, Rick
Kratchman, vice president of the 11-store Kitchen
Kapers chain, ticked off his top-seller list in a
snap…. There were grind-and-brew coffeemakers,
stick blenders (“a huge resurgence”), infused
oils and vinegars.

These reviews show that the media refers to “grind and
brew” as a generic term for a type of coffee maker. The
articles do not discriminate with regard to only one
manufacturer, but use the phrase to describe the type of
machine without regard to which manufacturer it refers. As
the following illustrates, customer reviews from third-
party websites further show that the public considers the
term to be generic for a type of electric coffee maker.
A consumer report from www.consumersearch.com subtitled
“Grind-and-Brew models get middling marks” discusses “this
type of coffee maker” and specifically reviews the Cuisinart
Grind & Brew DGB-550BK and the Cuisinart Burr Grind & Brew
Thermal DGB-900BC models.
An online article from http://www.coffeedetective.com
explains:
What are grind and brew coffee makers? They are
coffee brewers which also include a grinder.
…
The benefits of grind and brew…
…
Which grind and brew coffee maker to choose…
…
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If you would rather have a grind and brew brewer
with a conical grinder, there are one or two of
those available too. To help you choose, we have
put together a small Amazon.com store, devoted
just to grind and brew coffee makers.

At www.thedeets.com, in an article dated February 7,
2008, and titled “Grind & Brew Coffee Maker Reviews,” author
Ed Kohler wrote:

Every (sic) since discovering grind and brew
coffee makers, I’ve been hooked on them.
…
I figured there must have been a few changes to
the grind & brew coffee scene over the past 5
years. Sure enough, the models have changes
(sic) a bit.
…
Then I discovered this: The Krups KM7000 Grind &
Brew.

Several comments were posted in response to this
article.
The Freeto wrote:
I should’ve told you to … run out of your
house, grind-n-brew in tow.

Moe wrote:
So many of the grind and brew systems are
top heavy and ugly.

Andrea wrote:
[L]ooks like we will be looking for a new
grind and brew.

Additional comments were posted on other webpages.
For example, on www.amazon.com, direct online customer
reviews illustrate consumers’ use of “grind and brew” to
identify a type of coffee maker.
Nellivs wrote:
Serial No. 77834762

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We bought this after returning the similar
grind and brew model with the 10 cup insulated
carafe….Yes, there are a lot of parts to clean,
but I think it goes with the territory of grind
and brew units.

Lisa wrote:
This is my second grind and brew coffee
maker.

Animeswords wrote:
I have been looking for a good grind and
brew coffee maker for almost a year…. Over all
(sic) I am VERY satisfied with this Grind and
Brew and I would recommend it….

Jack R. Cox wrote:
I started using grind and brew units years
ago.

Cheryl Lore wrote:
Finally…..A Grind and Brew that WORKS well!
… I was surprised how quite (sic) this machine is
compared to the other grind and brews. … If you
have owned one of the multiple piece grind and
brew machines you will love the ease of clean up
on this one!!!

Dr. Randolph Becker wrote:
When our old Cuisinart Grind and Brew bit
the dust … I researched the options.

Rabinnh wrote:
I have had a number of grind and brew
coffeemakers….

DEJ wrote:
This is my first grind and brew machine, so
I cannot compare against other grind-and-brew
machines.

Edward J. Hyder wrote:
After a good deal of research, I settled on
the Krups grind and brew and I am glad I did.

Colin P. Westcott wrote:
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This is my second Grind and Brew, the first
lasted about 18 months….

D. Hamilton wrote:
After going crazy trying to find the right
grind and brew coffee maker, I first tried the
Cuisinart grind and brew.

I AD wrote:
…after owning the Capresso Grind and Brew
was looking for a similar set-up….

Bekka wrote:
My husband bought this coffee maker for me
after I research [sic] every grind & brew
currently available.

Sandra R. Peterson wrote:
I looked at the cuisinart (sic) grind & brew
as well as the krups (sic) version;….

Darrel wrote:
This is a great grind and brew coffee maker.
My old grind n brew is now in the trash.

Steven Dennis wrote:
Best Grind & Brew, Although It is a Bit
Loud. … This is not my first grind and brew.

Theboss wrote:
As good as it gets (in grind&brew) … I’m
writing from the perspective of someone who has
owned more grind&brew coffeemakers than the
typical coffee addict. This one is as good a
grind&brew machine as anyone makes.

M. Hartung wrote:
I owned 2 Cuisinart grind and brews.

Rich N wrote:
After 2 generations of Cuisenart (sic) Grind
and Brew frustrations I took a shot on this
Capresso unit.

Finally, on http://chowhound.chow.com, in a post
dated 12/23/2009, the writer stated: “I’m looking for
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a grind and brew for my BF around the $200 or so
range.” These excerpts show that purchasers of
electric coffee makers have been exposed to the phrase
“grind and brew” used as a generic term to describe a
type of coffee maker.
However, applicant argues that the evidence does not
show that commercial electric coffee makers are referred to
as “grind and brews” by members of the relevant purchasers
of coffee makers, which, it argues, are “restaurants,
hotels, and other entities that require the ability to
reliably produce large quantities of coffee.” Stephens
Dec., para. 3. According to applicant, the relevant public
in the present case is not the average retail consumer, but
rather a more sophisticated buyer, such as would be found
in a restaurant or hotel. Applicant’s coffee makers “are
not sold through retail outlets and would be impractical
for home use.” Stephens Dec., para 3.
In response, the examining attorney argues that “grind
and brew” is generic in the commercial market, contending
that:
Both products produce coffee for human
consumption. Commercial establishments can
use consumer coffee makers. Moreover,
applicant has not provided any evidence or
explanation as to why consumer coffee makers
Serial No. 77834762

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are completely different from commercial
coffee makers.9

A close examination of the evidence presented by the
examining attorney shows widespread use, by competitors, of
the term “grind and brew” as a generic term for coffee
makers. In the news articles and customer reviews
submitted by the examining attorney, one of the website
product reviewers indicates that he is a coffee “addict”
and another claims to be an aficionado and former
barrister, but none claim to be purchasing a commercial-
scale coffee maker. Nonetheless, the evidence shows a
cross-over in the market. While the typical price of a
home coffee maker is under $200, some models rival the
$2,920 cost of applicant’s coffee maker,10 such as the Bosch
TCA6301 Benvenuto B30 Digital Espresso and Coffee Center
(“at just the touch of a button, the Benvenuto gourmet
coffee maker grinds the beans and brews the coffee…”) is
advertised at “$1,179 to $1,450”11 and the Miele CVA4062SS
24” Built-In Whole Coffee Bean System is advertised for
“$2,749 to $2,849.”12 Moreover, the class of purchasers

9 Examining Attorney’s Appeal Brief, unnumbered p. 6.
10 Applicant submitted a copy from www.1st-line.com, advertising
its 11H Grind’n Brew Single Bean Grinderbrewer for $2,920. The
21-Series Dual Bean system was advertised at $3,382. The webpage
is attached to the June 23, 2010, Scruton Dec., para. 10, Ex. 11.
11 At www.nextag.com/grind-and-brew-coffee-maker, printed
12/23/2009.
12 Id.
Serial No. 77834762

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that make up restaurant and hotel purchasing agents
comprise members of the public who would be likely to
purchase household electric appliances, such as grind-and-
brew coffee makers for home use. In one news article, Rick
Kratchman, vice president of the 11-store Kitchen Kapers
chain, was interviewed. He “ticked off his top-seller list
in a snap…. There were grind-and-brew coffeemakers…”13 The
usage of the term “grind n brew” as generic for a type of
coffee maker is pervasive.
Because the term “grind and brew” identifies a type of
electric coffee maker both at retail and with commercial
buyers, and because the term names a central focus of the
coffee maker and has the same meaning whether used for a
household electric coffee maker or a commercial-use maker,
we find that the examining attorney has met his substantial
burden of establishing that GRIND N BREW is generic for,
and hence incapable of identifying and distinguishing the
source of, the identified goods.
The fact that the words have been combined into the
phrase “grind n brew” does not change the result. The
meaning of the mark as a whole is “no less generic than its

13 Marter, Marilynn, Santa, dear…here’s a wish list of food gifts
that covers everybody from fine diners and weekend cooks down to
the preschool set, The Philadelphia Inquirer, December 13, 2000.

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constituents.” In re American Fertility Soc., 51 USPQ2d
1832, 1837, 188 F.3d 1341, 1348, (Fed. Cir. 1999); see also
In re Active Ankle Systems, Inc., 83 USPQ2d 1532,
1537 (TTAB 2007)(finding DORSAL NIGHT SPLINT generic for
“orthopedic splints for the foot and ankle”); In re
Computer Store, Inc., 211 USPQ 72 (TTAB 1981)(finding THE
COMPUTER STORE generic for computer outlet services).
The language “for commercial use” in applicant’s
identification of goods may limit the market for
applicant’s coffee maker and perhaps affect the size,
capacity and/or the price of the coffee maker, but it does
not change the fundamental nature of applicant’s product as
a coffee maker. Simply put, the distinction between
“domestic” and “commercial,” when essentially the same
product is involved, is insignificant. The many examples
of generic use by producers of coffee makers is strong
evidence of the need by others in the trade to use the term
generically and that it would be perceived as a generic
term by consumers and commercial users alike.
B. The Mark Is Merely Descriptive of a Coffee Maker
Although we have concluded on the record before us
that GRIND N BREW is generic for applicant’s goods, should
this conclusion be found in error in any appeal that may
follow, we now consider the issue of mere descriptiveness,
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and whether applicant’s proffered evidence of acquired
distinctiveness is sufficient to support registration under
Section 2(f).
We again refer to the meanings of the words “grind”
and “brew.” Each word adequately describes a function of a
coffee maker that acts on coffee beans by first crushing
them into very small pieces (grinding) and then infusing
them with water (brewing) to make coffee. Moreover,
applicant has admitted that its mark is descriptive. “With
respect to the genericness refusal, the Examining Attorney
accurately notes that the Applicant's goods grind coffee
beans and brew coffee. That renders the term descriptive,
but it does not render it generic.” Applicant’s Response
to Office Action, June 23, 2010, p. 1.
The evidence also supports a descriptiveness refusal.
As noted above, applicant advertises that its “Grind’n
Brew™ Series” coffee makers eliminate the need for both
grinder and brewer.14 They grind full and half batch
portions of beans, and brew them to make coffee,15 and as
noted above, the devices may be set to “grind only,” “brew
only” or “Grind’n Brew™.”

14 June 23, 2010 Scruton Dec., para. 10, Ex. 9.
15 Id.
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The meaning of the phrase “grind and brew,” as used
throughout the third-party advertising, newspaper articles,
and customer reviews is also plain: it refers to the
primary functions of an “all-in-one” coffee maker that
automatically grinds coffee beans and then brews the beans
to make coffee.16 The mark is merely descriptive pursuant
to Section 2(e)(1) of the Trademark Act.
C. Applicant’s Evidence of Acquired Distinctiveness
In its brief, applicant restates its position:
“‘Grind n Brew’ describes the function of the goods, so it
is properly considered descriptive. Because applicant has
made a sufficient showing of acquired distinctiveness,
registration is appropriate.”17
Applicant has a heavy burden to prove acquired
distinctiveness because applicant’s mark is highly
descriptive of a coffee maker that grinds coffee beans and
then brews the beans to make coffee. To support its claim
that the mark has acquired distinctiveness, applicant
provided the declaration of its Marketing Manager,
attesting to use of GRIND N BREW coffee makers since 1995,

16 See, e.g., the advertisement for Krups KM7000 Pro Grinder and
Coffee Brewer at www.jlhufford.com: “simple to use programming
allows you to grind and brew 2 to 10 cups of coffee”; see also
the product description at www.coffeemakers.com of the Capresso
455 CoffeeTEAM Thermal Carafe coffee Maker with Grinder: “The
high-contrast LCD display shows … how many cups the machine is
programmed to grind and brew.”
17 Applicant's Appeal Brief, p. 4.
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and sales of “over $19,700,000” since 1995.18 Applicant
also submitted product literature advertising its GRIND N
BREW coffee makers, a copy of its prior, now expired,
registration for the mark GRIND’N BREW, and evidence that
one of the primary makers of the household grind and brew
coffee makers marks its use of the term with a “tm” symbol,
purportedly to show that it considers “grind and brew” to
be its trademark. Taken as a whole, the evidence is
insufficient to show that the mark has acquired
distinctiveness.
It has long been held that the fact that an applicant
has used its mark for a long time does not necessarily
establish that the mark has acquired distinctiveness. In
re Tires, 94 USPQ2d at 1158. While applicant claims use
since 1995, there is no indication of the nature of such
use; i.e., whether sales increased over time, fluctuated
sporadically, or remained constant. Likewise, applicant
has not provided a context for its assertion that since
1995, close to $20 million was earned from sales of the
product. We have no means of discerning the scope of these
sales, either geographically or in terms of yearly
production. Moreover, the prevalence of use of the term
among applicant’s competitors indicates that applicant’s

18 Stephens Dec., para. 5.
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use has not been substantially exclusive as required by the
statute. See Trademark Act Section 2(f), 15 U.S.C.
§1052(f), and Trademark Rule 2.41(b)(Proof of
distinctiveness under section 2(f)). The evidence falls
short of what is required to show that consumers have come
to recognize the highly descriptive term “grind n brew” as
a trademark.
Finally, we note applicant’s ownership of now-cancelled
Registration No. 2655857,19 submitted for the purpose of
showing the “suggestive nature” of the term “grind n brew.”
The fact that this registration issued under Section 2(f) is
considered a concession that the term is not inherently
distinctive. In re Cabot Corp., 15 USPQ2d 1224, 1229 (TTAB
1990)(“[A]pplicant’s initial filing of this application under
the provisions of Section 2(f) is tantamount to an admission
that this package lacks inherent distinctiveness”); see also
TMEP 1212.02(b) (8th ed. 2011)( Section 2(f) Claim Is, for
Procedural Purposes, a Concession that Matter Is Not
Inherently Distinctive). Moreover, the registration was
cancelled on July 11, 2009, and thus is entitled to little
probative value. See In re Nett Designs Inc., 236 F.3d 1339,
57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior
registrations had some characteristics similar to

19 Reg. No. 2655857 was registered for “electric coffee makers” on
the Principal Register under Section 2(f); first use and first
use in commerce claimed as of July, 1995.
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[applicant’s] application, the PTO’s allowance of such prior
registrations does not bind the board or this court”). We
have, however, considered it for whatever probative value it
may have. Nike, Inc. v. Peter Maher and Patricia Hoyt Maher,
100 USPQ2d 1018, 1021 (TTAB 2011).
Given the highly descriptive nature of the designation
GRIND N BREW, we would need substantially more evidence
(especially in the form of direct evidence from customers)
than what applicant has submitted in order to find that the
designation has become distinctive of applicant’s goods.
In re Lens.com Inc., 83 USPQ2d 1444 (TTAB 2007).
Decision: The refusals under Section 2(e)(1) of the
Trademark Act on the grounds that the proposed mark is
generic or merely descriptive, and the refusal based on the
examining attorney’s finding that the Section 2(f) showing
is insufficient, are affirmed.