Heirloom L.A., LLC

Trademark Trial and Appeal Board

Sep 14, 2015

No. 85552395 (T.T.A.B. Sep. 14, 2015)

This Opinion is not a
Precedent of the TTAB

Hearing: August 5, 2015 Mailed: September 14, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re Heirloom L.A., LLC
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Serial No. 85552395
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Scott D. Barnett of Troutman Sanders LLP,
for Heirloom L.A., LLC.
Michael J. Souders, Trademark Examining Attorney, Law Office 115,
John Lincoski, Managing Attorney.
_____

Before Seeherman, Wolfson and Lykos,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
Heirloom L.A., LLC (“Applicant”) filed an application to register as a mark
LASAGNA CUPCAKES (standard characters), with LASAGNA disclaimed, on the
Principal Register for “individual-sized portions of lasagna, namely, individual-sized
portions of lasagna with meat and vegetable fillings” in International Class 30.1 The
Examining Attorney initially refused registration on the ground that Applicant’s

1 Application Serial No. 85552395, filed February 24, 2012 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging November 23, 2008 as the date of first use
anywhere and in commerce.

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mark is merely descriptive. Applicant traversed this refusal, contending that its
applied-for mark is suggestive and therefore inherently distinctive. In the
alternative, Applicant asserted that its mark is registrable pursuant to Section 2(f)
of the Trademark Act, 15 U.S.C. § 1052(f), because it has acquired distinctiveness.2
Applicant has appealed the Trademark Examining Attorney’s final refusal to
register the mark on the Principal Register pursuant to Section 2(e)(1) of the
Trademark Act, 15 U.S.C. § 1052(e)(1), on the grounds that it is generic for the
identified goods and not inherently distinctive or, alternatively, that Applicant’s
mark is merely descriptive under Section 2(e)(1) of the Trademark Act, and that
Applicant has failed to present sufficient evidence to show acquired distinctiveness.
The case is fully briefed and an oral hearing was held.3

2 An express claim of acquired distinctiveness in the alternative “does not constitute a
concession that the matter sought to be registered is not inherently distinctive.” Trademark
Manual of Examining Procedure (“TMEP”) § 1212.02(c) (July 2015) (citing In re Thomas
Nelson, Inc., 97 USPQ2d 1712, 1713 (TTAB 2011); In re E S Robbins Corp., 30 USPQ2d
1540, 1542 (TTAB 1992); In re Prof’l Learning Ctrs., Inc., 230 USPQ 70, 71 n.2 (TTAB
1986)).
3 Applicant raised for the first time in its appeal brief a request in the alternative to
register its proposed mark on the Supplemental Register. The Examining Attorney has
objected on the grounds that the request is untimely and futile. Such a proposed
amendment should have been raised by a separately filed request for remand, rather than
in the body of a brief, as the registrability of a mark on the Supplemental Register must
first be examined by the Examining Attorney; the Board’s determination is limited to
reviewing the actions of the Examining Attorney. Although it is clear from the Examining
Attorney’s objection what his determination would be if the application were to be
remanded to him, an amendment to the Supplemental Register in the alternative would
still require briefing. Because, due to Applicant’s failure to file a proper request for remand,
the proposed alternative amendment has come to our attention very late in the appeal,
after briefing and oral argument, At this point it is far too late to remand the application.
Furthermore, in view of our determination herein that Applicant’s proposed mark is
generic, any amendment to the Supplemental Register would be futile.
Serial No. 85552395
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We commence with the genericness analysis. A generic term “is the common
descriptive name of a class of goods or services.” Princeton Vanguard, LLC v. Frito-
Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827, 1830 (Fed. Cir. 2015) (quoting H.
Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528,
530 (Fed. Cir. 1986)). Because generic terms “are by definition incapable of
indicating a particular source of the goods or services,” they cannot be registered as
trademarks. Id. (quoting In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57
USPQ2d 1807, 1810 (Fed. Cir. 2001)). “The critical issue in genericness cases is
whether members of the relevant public primarily use or understand the term
sought to be protected to refer to the genus of goods or services in question.” Id.
(quoting Marvin Ginn, 228 USPQ at 530). 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?” Marvin Ginn, 228 USPQ at 530. See also
Princeton Vanguard, 114 USPQ2d at 1829 (“there is only one legal standard for
genericness: the two-part test set forth in Marvin Ginn”). “An inquiry into the
public’s understanding of a mark requires consideration of the mark as a whole.” Id.
at 1831 (quoting In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1421
(Fed. Cir. 2005)). Competent sources to show the relevant purchasing public’s
understanding of a contested term include purchaser testimony, consumer surveys,
dictionary definitions, trade journals, newspapers and other publications. Id. at
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1830; In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818, 819 (Fed. Cir.
1986).
In an ex parte appeal, the United States Patent and Trademark Office
(“USPTO”) has the burden of establishing by clear evidence that a mark is generic
and, thus, unregistrable. In re Hotels.com, 573 F.3d 1300, 91 USPQ2d 1532, 1533
(Fed. Cir. 2009); In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111
(Fed. Cir. 1987); In re Merrill Lynch, Pierce, Fenner and Smith, Inc., 828 F.2d 1567,
4 USPQ2d 1141 (Fed. Cir. 1987). “Doubt on the issue of genericness is resolved in
favor of the applicant.” In re DNI Holdings Ltd., 77 USPQ2d 1435, 1437 (TTAB
2005).
We begin by finding that the genus at issue in this case is adequately defined by
Applicant’s identification of goods, “individual-sized portions of lasagna, namely,
individual-sized portions of lasagna with meat and vegetable fillings.” See Magic
Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) (“[A]
proper genericness inquiry focuses on the description of [goods or] services set forth
in the [application or] certificate of registration”). We further find that the “relevant
public” consists of the public at large, namely, ordinary consumers who purchase
and/or eat “individual-sized portions of lasagna, namely, individual-sized portions of
lasagna with meat and vegetable fillings” from the typical providers such as
restaurants, caterers, food trucks, and online food and catering delivery web sites.
With this in mind, we must now ascertain whether the designation LASAGNA
CUPCAKES is understood by the relevant purchasing public as primarily referring
Serial No. 85552395
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to individually sized portions of lasagna with meat and vegetable fillings or as a
source-identifier for Applicant’s goods. The record includes the following excerpts
from newspaper and magazine articles using the term “lasagna cupcakes,” some of
which directly discuss Applicant, Heirloom L.A. LLC (emphasis added):
● An article appearing in C Magazine written by Alison Clare Steingold
entitled Not Your Garden Variety: “Overheard at The Oaks: ‘Heirloom …
you know, lasagna cupcakes.’ In less than a year, Heirloom LA’s handheld
tartlets – in flavors from wild boar Bolognese to sweet corn mascarpone –
have made this catering couple one of L.A.’s most in demand.”4

● An article appearing in the online version of Family Circle magazine
(familycircle.com) in March 2012 entitled Cupcakes Gone Wild: “Finally no
more waiting for dessert to have your cake and eat it too. Across the
country creative chefs are putting a savory spin on the handheld treat.
Heirloom, a Los Angeles-based catering company kicked off the trend with
its lasagna cupcakes, which have become a hit with the Hollywood crowd.
People are also going crazy for hearty flavors like meatloaf (baked in
puffed pastry and frosted with mashed potatoes) chicken and waffle,
braised lamb and parsnip, even turkey chimichanga. Comfort food in guilt
free mini portions that you can eat with your hands – what’s not to love?”5

● An article appearing in Anthology Magazine (anthologymag.com),
written by Andrea Arria-Devoe, entitled A Family-Style Affair, “Yes,
Heirloom’s signature lasagna cupcakes – individual portions of lasagna
that Daily Candy called ‘one of the century’s greatest edible inventions’ –
are just a click away.”6

● An article appearing in The Hollywood Reporter on November 21, 2013
written by Abigail Stone, entitled Who the A-List Books for the Holidays:
The Town’s Top Caterers: “Arguably the breakout catering company of the
decade, this operation run by Tara Maxey and Matt Poley (the latter
formerly of Angelini Osteria and La Terza) is known for its artisanal-
minded style. … IN-DEMAND DISHES: Lasagna cupcakes that Oprah
Winfrey (at an OWN launch party) cooed “will change your life”; …7

4 Applicant’s Response to Office Action No. 1 dated July 24, 2012 at 13.
5 Id. at 17.
6 Id. at 41.
7 Request for Reconsideration at 27-33.
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● An article appearing in The Wall Street Journal on February 3, 2011
written by Marshall Heyman, entitled Next Up: Lasagna Cupcakes: “You
thought the cupcake craze would just fizzle out? No chance. It’s just
moving away from sweet and into the direction of savory. At Trader Joe’s
in New York they’re selling frozen turkey meatloaf muffins, topped with
spinach and mashed potatoes, which by all accounts are particularly good.
Meanwhile in Los Angeles, the entertainment industry’s latest obsession
is lasagna cupcakes. Lasagna cupcakes, or individual lasagnas in the
shape of cupcakes, are the creation of Heirloom LA, a catering company
based in Eagle Rock, a town near Silverlake. … The lasagna cupcakes are
so great ‘because they’re all corners, they’re a wall of crust,’ said Jenni
Konner, a television writer who has seen them at parties around town.
‘And I hate the cupcake trend.’… Mr. Poley makes the lasagna cupcakes
in all different sorts of flavors. A dozen of them are standard, including
the mac and cheese, a Bolognese and one with short ribs. Others depend
on the season. … Dana Fox, the screenwriter of ‘Couples Retreat’ and
‘What Happens in Vegas’ had lasagna cupcakes at her wedding in
Virginia. ‘Brides aren’t supposed to eat but I couldn’t stop,’ Ms. Fox said.
‘They’re uniformly delicious. …” Mr. Poley said that Heirloom sold about
10,000 lasagna cupcakes in December. At the moment, his catering
kitchen – which has 15 people making lasagna cupcakes, as well as new
offerings like tamales and pizza bread pudding – can produce 200 to 300 a
day.”8

● “There hasn’t been much to revolutionize the wedding catering industry
in recent years. But I’m thinking this delicious treat just might change
that … Lasagna cupcakes! I think they’re brilliant because everyone loves
cupcakes – even people who claim to be sick of the cupcake trend – but not
everyone wants to skip the traditional tiered wedding cake to serve
individually wrapped desserts. Lasagna cupcakes let people have their
cake and eat it too, by adding some spunk to the cocktail hour instead of
the already spunky dessert bar. … Heirloom LA, the Los Angeles catering
company at the head of this trend, doesn’t just offer a standard meat-
sauce-and-mozzarella lasagna in mini form. They have flavors that will
leave every wedding reception guest smiling. … Would you serve lasagna
cupcakes at your wedding reception?” Meredith Bodgas, Wedding
Reception Food: You’re Going to LOVE This New Idea!, March 17, 2011.
www.glamour.com/weddings/blogs (Glamour Magazine).9

8 Applicant’s Response to Office Action No. 1 at 19-20.
9 Applicant’s Response to Office Action No. 1 at 30-31.
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In addition, the record shows that restaurants and caterers located throughout
the United States offer lasagna cupcakes as a menu item:
● http://darthurscatering.com: D. Arthurs Catering, Memphis, Tennessee
menu (2014) offering the following item on its catering menu -
“Lasagne Cupcakes, Traditional Italian Lasagna or Cajun
Chicken Lasagna made as miniature cupcakes.”10

● http://www.backtothetableiowacity.com: Back to the Table, Personal
Chef/Intimate Gatherings, Iowa City, Iowa (2014) showing
lasagna cupcakes as a menu item.11

● http://lulu.palmsprings.com/catering: Lulu California Bistro, Palm
Springs, California (2014) “Catering & Events” showing lasagna
cupcakes as a menu item.12

● http://www.bittersweetcatering.com/catering-menu: Bittersweet
Catering – Cafe – Bakery, Old Town Alexandria, Virginia
catering menu (2014) showing Lasagna Cupcakes under the
category of “Savory Cupcakes” as a menu item.13

The record also shows the following entries for “lasagna cupcakes” in recipe blogs
(emphasis added):14
● http://www.npr.org/blogs/thesalt: “A friend of mine came back from
Brooklyn raving about the food served at a baby shower. “Savory
cupcakes!” she exclaimed. Lasagna, grilled cheese, chicken potpies and
even a mac ’n’ cheese cupcake – all shaped like the trendy dessert and
served on a cupcake tree. … But what finally won me over were the
lasagna cupcakes. Wonton noodles replaced the pasta, and the thin

10 Denial of Request for Reconsideration dated March 14, 2014 at 17.
11 Id. at 29.
12 Id. at 16.
13 Id. at 26.
14 Some of these recipe blogs are hosted by nationally known enterprises, such as National
Public Radio (“NPR”) and the Green Giant Company, while others appear to be the postings
of individuals. The probative value of at least the recipe blogs hosted by individuals is
therefore more limited insofar as we do not know the extent of the reach to the public.
Nonetheless, it is undisputed that the blogs are publicly available.

Serial No. 85552395
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noodles folded along up the sides of the cupcakes sealing in the ricotta
cheese and tomato sauce.” Michealeen Doucleff, Lasagna Cupcakes,
Anyone? Science Says We Can’t Get Enough Mini Stuff, October 26, 2012.15

● http://yummylasagnas.com – “Have you ever tried lasagna cupcakes”;
“Lasagna cupcakes is your best solution in serving healthy and delicious
food at parties or for your own families, especially your children. Its size
and attractive look will surely attract your family members to eat them.”16

● http://wwwthekitchn.com – “Lasagna cupcakes: Just the Right Size for
Lunch”; “No, these aren’t actually cupcakes. But they are individually-
sized lasagna, made with a simple yet brilliant ingredient.”17

● http://greengiant.com – “Spinach Lasagna Cupcakes”; “these are great
meatless, individual-served lasagna cups.”18
Applicant asserts that it created both the dish known as “lasagna cupcakes” and
coined the term as a trademark, and points to “a plethora of unsolicited media
coverage from some of the most credible and widely disseminated news sources in
the world, including The Wall Street Journal, The New York Times, and The Los
Angeles Times.” Applicant’s Reply Brief, p. 12; 16 TTABVUE 13. Applicant further
contends that the generic terms for its culinary creations include “handheld
tartlets,” “individual lasagnas,” “mini lasagnas,” “lasagnettes,” “finger-food-size
lasagna” and the like. Applicant’s Brief, p. 7; 13 TTABVUE 8.19 Applicant maintains
that its mark is inherently distinctive due to its incongruous nature. As Applicant
asserts, prospective consumers will not “instinctively” use the designation “lasagna

15 Denial of Request for Reconsideration dated March 14, 2014 at 8.
16 Office Action dated March 8, 2013 at 29.
17 Id. at 99.
18 Id. at 117.
19 We do not regard this statement as an argument that Applicant’s identification of goods
is not the correct genus for the goods, but as an argument that Applicant’s applied-for mark
is not a generic term for the goods.
Serial No. 85552395
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cupcakes” to refer to individually-sized gourmet lasagnas with savory fillings
because the word “cupcakes” denotes a “sweet and sugary [dessert], usually topped
with frosting, sprinkles, and/or other sweet candies.20 Applicant’s Brief, p. 9; 13
TTABVUE 10. In support thereof, Applicant points to the aforementioned media
coverage explaining that Applicant’s goods do not actually consist of “lasagna” or
“cupcakes” in the traditional sense of the words insofar as they are “cake-less,
batter-less, breadless, pasta-less.” Id.21
We find, based on the evidence of record, the relevant public regards “lasagna
cupcakes” as the generic designation for individually-sized miniature portions of
lasagna made with savory ingredients. Rather than showing that LASAGNA
CUPCAKES is a trademark of Applicant’s, the evidence supports the Examining

20 Applicant bases this argument on the following dictionary definitions which are of record:
lasagna noun
1. also lasagne : pasta in the form of bread [is a comma or word missing here?]
often ruffled ribbons
2. : a baked dish containing layers of boiled lasagna, and usually cheese, a
seasoned sauce of tomatoes, and meat or vegetables.”
Source: www.merriam-webster.com (Response to Office Action No. 3, Ex. H).
cupcake noun
: a small cake baked in a cuplike mold
Source: www.merriam-webster.com (Response to Office Action No. 3, Ex. H).
cake noun
1. a sweet, baked, bread-like food, made with or without shortening, and usually
containing flour, sugar, baking powder or soda, eggs and liquid flavoring.
…
4. a shaped or molded mass of other food: a fish cake
Source: www.dictionary.com (Response to Office Action No. 3, Ex. I).
21 The record shows that Applicant’s creations can be made with wonton wrappers, an
ingredient not typically found in lasagna or cupcakes.
Serial No. 85552395
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Attorney’s position. This is so despite the fact that the majority of articles directly
discuss Applicant and its identified goods. The aforementioned evidence
demonstrates that savory cupcakes have become a trend in the food and catering
industry, and that one term used to refer to mini-lasagnas is “lasagna cupcakes.”
The evidence shows that the relevant public uses and recognizes the designation
“lasagna cupcakes” as a whole to refer to Applicant’s food items. See Princeton
Vanguard, 114 USPQ2d at 1831. That is to say, it is not the fact that Applicant’s
goods are baked in a cupcake tin or presented in a cupcake-like shape that renders
Applicant’s proposed mark generic. Rather, it is the common usage of the term
“lasagna cupcakes” as a whole to refer to such mini-lasagnas, and the consequent
understanding by the public that this term indicates these mini-lasagnas, that
makes the term generic.
Applicant, relying on Merrill Lynch, supra, submits that “where some media
uses of a term are as a trademark and some are generic, this source evidence should
be indeterminate of genericness and is insufficient proof of generic usage.”
Applicant’s Brief, p. 8; 13 TTABVUE 9. However, in this case the record does not
show a “mixture of usages”; in other words, none of the media passages uses the
term “lasagna cupcakes” as a source-identifier or trademark for Applicant’s goods.22

22 We acknowledge that some of the evidence noted above, for example the menus, show use
of Applicant’s mark in initial capital letters which can in some circumstances be an
indication of trademark usage. However, because capitalization is typical of the manner in
which restaurants and caterers list menu items, in this case it does not constitute evidence
of trademark usage. Similarly, any other such usage noted above in articles merely reflects
the ordinary rules of grammar for U.S. English.
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Applicant maintains that “just because some consumers may use LASAGNA
CUPCAKES to refer to their own recipes or menu items for savory tartlets, this
does not mean that consumers are not aware of the source-identifying nature of
Applicant’s mark or would not recognize it when looking to purchase this type of
food item at a restaurant or in another setting.” Applicant’s Brief, p. 12; 13
TTABVUE 13. In support of this argument, Applicant draws our attention to
evidence that individuals have posted their own recipes on the Internet for well-
known trademarked food items such as “Big Macs” and “Cronuts.”23 We emphasize
that our determination is not based solely on the blog entries (which make up a
small portion of the evidence showing genericness) but rather the evidence as a
whole.24
Applicant points to third-party registered marks comprised of food items coupled
with terms that it claims denote “individual-sized” or “personal-sized” portions,
registered on the Principal Register without any claim of acquired distinctiveness
under Section 2(f). Applicant highlights the third-party registrations with terms
such as “bites”, “petites”, “rolls” and “dippers” in support of its argument that such
terms can serve as source-indicators for individual-sized portions of food. However,
none of the registrations incorporates any of the terms at issue in this case for any
of the same food items, and we do not accept Applicant’s position that these third-

23 Applicant’s Response to Office Action No. 1 at 117.

Serial No. 85552395
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party marks are analogous to Applicant’s applied-for mark. Furthermore, we are
not privy to any of the prosecution records of these registrations. Our task is to
decide the case before us, based on the evidence of record. For this reason, these
third-party registrations are of little, if any, probative value. In re Nett Designs Inc.,
236 F.3d 1339, 57 USPQ2d 1564, 1566 (TTAB 2001). Here, the evidence before us is
overwhelming that lasagna cupcakes is used as the generic name for Applicant’s
identified goods.
Applicant may in fact have coined and been the first to use the term “lasagna
cupcakes” to designate individually-portioned savory lasagnas. Applicant may
indeed also be the creator of the concept of the individually sized lasagna in cupcake
shape and miniature form. However, the record shows that the designation “lasagna
cupcakes” has become the generic designation for such goods. See Sheetz of Del., Inc.
v. Doctor’s Assocs. Inc., 108 USPQ2d 1341, 1362 (TTAB 2013) (“Even if applicant
was the first and/or sole user of a generic term or phrase, as it claims, that does not
entitle applicant to register such a term or phrase as a mark.”) (internal citations
omitted). We therefore find that the Office has met its burden of establishing that
the term “lasagna cupcakes” is generic for “individual-sized portions of lasagna,
namely, individual-sized portions of lasagna with meat and vegetable fillings.”
Although we have found the proposed mark to be generic, in order to render a
complete decision we also address Applicant’s alternative positions. Assuming,
arguendo, that LASAGNA CUPCAKES is not a generic term for “individual-sized
portions of lasagna, namely, individual-sized portions of lasagna with meat and
Serial No. 85552395
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vegetable fillings,” we find that it is inherently distinctive and is registrable without
recourse to Section 2(f) of the Act. The term CUPCAKE does not actually describe
the shape of the mark, and as Applicant has said, the concept of a sweet cupcake
would normally seem incongruous when paired with the word LASAGNA. This is
one of the rare situations in which the term as a whole has taken on a generic
meaning through the manner in which it has been promoted and used.
Decision: The refusal under Section 2(e)(1) of the Trademark Act on the ground
that the proposed mark is generic is affirmed.