Levantine Concepts LLC

Trademark Trial and Appeal Board

Sep 30, 2016

No. 86400392 (T.T.A.B. Sep. 30, 2016)

Mailed:
September 30, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Levantine Concepts LLC
_____

Serial Nos. 86400341 and 86400392
_____

David B. Sunshine of Cozen O’Connor
for Levantine Concepts LLC.

Linda M. Estrada, Trademark Examining Attorney,
Law Office 104 (Dayna Browne, Managing Attorney).
_____

Before Kuhlke, Mermelstein and Lynch, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
In this consolidated appeal concerning two applications,1 Applicant,
Levantine Concepts LLC, filed applications to register on the Principal Register the
stylized mark 2 and the word and design mark

1 The Board granted the Trademark Examining Attorney’s motion for consolidation on May
26, 2016. See 7 TTABVUE. Citations in this opinion are to the record in application Serial
No. 86400341.

2 Application Serial No. 86400341 filed on September 19, 2014, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on an allegation of a bona fide intention to use
the mark in commerce.
This Opinion is not a
Precedent of the TTAB
Serial Nos. 86400341 and 86400392

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3 both for goods identified as “Bakery goods; Pastries,” in
International Class 30, and services identified as “Pastry shops; Retail bakery
shops; Retail store services featuring pastries” in International Class 35.
The Trademark Examining Attorney refused registration of Applicant’s
proposed stylized mark under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that Applicant’s mark is
merely descriptive of Applicant’s goods and services.
The Trademark Examining Attorney refused registration of Applicant’s
composite mark pursuant to Section 6(a), 15 U.S.C. § 1056(a), based on
Applicant’s failure to comply with an Office requirement to disclaim BONCHOU
because it is merely descriptive of Applicant’s goods and services within the

3 Application Serial No. 86400392 filed on September 19, 2014, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on an allegation of a bona fide intention to use
the mark in commerce. The application includes the following description of the mark, color
claim and translation statement:
The mark consists of a design of two intersecting ovals. Above
the design element is the word BONCHOU and below the
design is the word ÉCLAIRERIE.
Color is not claimed as a feature of the mark.
The wording ÉCLAIRERIE has no meaning in a foreign
language.

Serial Nos. 86400341 and 86400392

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meaning of Trademark Act Sectin 2(e)(1) and thus an unregistrable component of
the mark.
In addition, in both applications the Examining Attorney refused registration
of Applicant’s marks based on Applicant’s failure to comply with: 1) the requirement
to provide an English translation for “BON”; and 2) the requirement to submit
payment of additional fees as a result of the loss of the TEAS Plus filing status.
When the refusals were made final, Applicant appealed and the appeals are
now fully briefed.
As a preliminary matter, the material attached to Applicant’s reply brief not
previously submitted during prosecution of the application is untimely and has not
been considered. Trademark Rule 2.142(d), 37 CFR § 2.142(d).
Translation Requirement Application Serial Nos. 86400341 and 86400392
Trademark Rule 2.32(a)(9), 37 CFR 2.32(a)(9) requires an application to
include an English translation of any non-English wording in the mark. Relying on
that rule, the Examining Attorney required Applicant to provide an English
translation for “BON.” The Examining Attorney asserts based on several dictionary
definitions that the English translation for the French word “BON” is “GOOD.”
Applicant argues that the translation requirement is not appropriate for the
proposed mark because it is part of a “coined term and does not have any
recognizable meaning.” App. Br. 4 TTABVUE 13-14. Citing Section 809 in the
Trademark Manual of Examining Procedure (TMEP April 2016) Applicant contends
that no translation should be required because its mark falls under the exception
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where a combination of foreign words suggests a single word or conveys a
commercial impression other than the combination of two separate words. The
example given in the TMEP of this exception is FELIZCITY which, in addition to
containing the Spanish word FELIZ, has a singular commercial impression of the
whole word FELICITY.
As discussed more fully below, BONCHOU is a compound term composed of
BON and CHOU and does not convey a commercial impression that removes their
separate meanings, i.e., the sum is not more than its parts. Inasmuch as CHOU,
although originally a French word, has been adopted into the English language and
appears in English language dictionaries (see § 809.01(b)(i) no translation
necessary), Applicant’s mark is closer in analogy to the TMEP’s contrasting
example where a translation is required, GRINÇANTCOMPUTERS. In view
thereof, and pursuant to Trademark Rule 2.32(a)(9), the requirement to provide a
translation is appropriate.
Additional Fees Requirement Application Serial Nos. 86400341 and 86400392
The Examining Attorney contends additional processing fees are required
“because the applications, as filed, did not meet the TEAS Plus application filing
requirements.” Ex. Att. Br. 8 TTABVUE 14-15. Specifically, she asserts that in a
“TEAS Plus application, if the mark includes non-English wording, the initial
application must include an English translation of that wording.” Ex. Att. Br., 8
TTABVUE 14. While Applicant did not contest the additional processing fee,
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Applicant’s argument that a translation requirement is not necessary effectively
does just that.
The applicable rules on Applicant’s filing date of September 19, 2014
provided as follows:
§ 2.22 Filing requirements for a TEAS Plus application.
(a) A trademark/service mark application for registration
on the Principal Register under section 1 and/or
section 44 of the Act will be entitled to a reduced filing
fee under § 2.6(a)(1)(iii) if it is filed through TEAS and
includes: …
(16) If the mark includes non-English wording, an
English translation of that wording …
(b) If an application does not meet the requirements of
paragraph (a) of this section at the time of filing, the
applicant must pay the fee required by § 2.6(a)(1)(iv).
http://www.uspto.gov/sites/default/files/Trademark-Statutes-11-25-2013.pdf.
In view of our determination that a translation for the non-English wording
“BON” is required, the additional processing fees are similarly required under
Trademark Rules 2.22 and 2.6(a)(1)(iv) for the failure to include the translation at
the time of filing.
Mere Descriptiveness Application Serial No. 86400341
A mark is deemed to be merely descriptive of goods or services, within the
meaning of Section 2(e)(1), if it immediately conveys information of a quality,
feature, function, or characteristic of the goods or services in connection with which
it is used, or intended to be used. In re Chamber of Commerce of the U.S., 675 F.3d
1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). See also In re TriVita, Inc., 783 F.3d
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872, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015). The determination of whether a mark
is merely descriptive must be made “in relation to the goods [or services] 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 Bayer Aktiengesellschaft, 488 F.3d
960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (citing In re Abcor Dev. Corp., 588 F.2d
811, 200 USPQ 215, 218 (CCPA 1978)). It is not necessary, in order to find a mark
merely descriptive, that the mark describe each feature of the goods or services,
only that it describe a “single feature or attribute” of the goods or services. Chamber
of Commerce of the U.S., 102 USPQ2d at 1219; In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009, 1010 (Fed. Cir. 1987).
The Examining Attorney asserts that BONCHOU is merely descriptive
because it is comprised of two words that do not lose their descriptive significance in
combination as a compound word. Specifically, she has submitted evidence to show
that BON is the French word for “good” and under the doctrine of foreign
equivalents, those consumers familiar with the French language would stop and
translate BON to the word “good.”4 Further, “good” is defined as “of high quality;
excellent,”5 and, as such, is laudatory and merely descriptive of the quality of the
identified goods and services. See, e.g., In re Boston Beer Co. L.P., 198 F.3d 1370, 53

4 Larousse French Dictionary, January 8, 2015 Office action at 2.

5 http://dictionary.infoplease.com, August 22, 2015 Office action at 9. See also The
American Heritage Dictionary of the English Language, Id. at 5 (“good … 1. Being
positive or desirable in nature; not bad or poor … 2. a. Having the qualities that are
desirable or distinguishing in a particular thing”).

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USPQ2d 1056, (Fed. Cir. 1999) (“Best” treated as a laudatory and therefore
descriptive term). Next, the Examining Attorney submitted evidence to show that
CHOU is defined as a “puff filled with cream or custard.”6 In addition, the record
includes evidence that CHOU “is commonly used by third parties to describe their
pastries and bakery goods as well as their bakery shop and retail services related to
these goods.” Ex. Att. Br., 8 TTABVUE 8. A few examples from the record are set
forth below:
Ferrara Bakery and Cafe menu listing Eclairs “French
puff pastry (chou) filled with French style custard,
chocolate glazed.”;7
IFI Gourmet A Sweet Company webpage promoting the
following pastry products “Chou & Savarin”;8
Brasserie Cognac de Monsieur Ballon menu listing
Profiteroles, described as “Chou puffs filled with vanilla
ice cream and topped with warm chocolate sauce”;9
Ru San Dessert Menu listing RuSan’s CreamPuffs “mini
chou cream filled puff pastries drizzled with chocolate
sauce”;10
Pistache menu listing Chou à la crème “A chou pastry or
cream puff, filled with pastry cream”;11

6 Vocabulary.com, January 8, 2015 Office action at 3. See also Freedictionary.org, Id. at 10
“3. Puff filled with cream or custard”).

7 http://www.allmenus.com, January 8, 2015 Office action at 5.

8 http://www.ifigourmet.com, August 22, 2015 Office action at 24.

9 http://congacrestaurant.com, August 22, 2015 Office action at 32.

10 http://www.rusanscharlotte.com, August 22, 2015 Office action at 34.

11 http://www.pistachenyc.com, August 22, 2015 Office action at 39.

Serial Nos. 86400341 and 86400392

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The Bakery Network discussing ready-to-fill pastry shells
and pastry products as “Full-sized and mini tart shells,
chou pastries, puff pastries and babas are ready to fill and
garnish.”;12
SUBMERGE online magazine article discussing desserts
available at Osaka-ya in Sacramento, California
recommending “the chou creams, a French puff pastry
with vanilla custard that is often enjoyed frozen.”;13 and
The Wall Street Journal discussing pastry shops in
Paris with the following “Having observed the delicate
chou, a cream-filled puff pastry, as an eminently
snackable treat Mssrs. Ducasse and Michalak capitalized
on the broader penchant here for street food with their
kiosk…”14
It is Applicant’s contention that BONCHOU is a coined term that has no
meaning in any language and that an ordinary American purchaser would not stop
and translate the term BONCHOU, even if broken down into its constituent parts.
Applicant concedes that “bon” translates to “good” but argues that “chou” has
multiple translated meanings. Applicant points to translations of the French word
“chou” to the English as “cabbage” or an endearing term such as “cutie” “sweetie”
“darling” or “sweetheart.” However, “chou” has a relevant meaning as an English
language word, and therefore the Examining Attorney did not rely on translations
for “chou.” Rather, the evidence submitted shows “chou,” although derived from the
French language, is listed and used as a term of art in English in dictionary
references, menus at American restaurants and in American newspaper articles.

12 http://www.thebakerynetwork.com, August 22, 2015 Office action at 47.

13 http://submergemag.com, August 22, 2015 Office action at 54.

14 http://www.wsj.com, August 22, 2015 Office action at 60.

Serial Nos. 86400341 and 86400392

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With regard to the term “chou” the descriptiveness refusal does not rely on a
translation, but instead reflects that “chou” has become part of the English
vocabulary, similar to croissant and crepe (e.g., boncroissant or boncrepe). See In re
France Croissant, Ltd., 1 USPQ2d 1238 (TTAB 1986) (LE CROISSANT SHOP held
merely descriptive for restaurant services because CROISSANT is a term of French
derivation and is not unique or incongruous when used with the French article “le”).
Moreover, even if “chou” has other meanings in English, the fact that “a term may
have other meanings in different contexts is not controlling.” In re Franklin Cnty.
Historical Soc’y, 104 USPQ2d 1085, 1087 (TTAB 2012) (citing In re Bright-Crest,
Ltd., 204 USPQ 591, 593 (TTAB 1979)). See also In re Chopper Industries, 222
USPQ 258, 259 (TTAB 1984) (“[i]t 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”).
Nonetheless, even if we considered all the wording in the mark in French,
Applicant’s own translation evidence acknowledges that “chou” can be translated as
puff pastry.15 Although Applicant maintains that this translation would be unlikely
because “chou” in French would generally appear in the plural form “choux” for puff
pastry, we find this translation option to be the most relevant in the context of
Applicant’s pastries and pastry shops. Therefore, even if consumers translated both
words of Applicant’s mark, they would arrive at the same meaning of “chou.”
Applicant argues that the term BONCHOU creates a single unitary term in
that it “is a play on the common French expression ‘Mon Chou’ which translates to

15 July 8, 2015 Response to Office action at 11.
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‘my dear’ or ‘my darling’ in French. In addition, Applicant contends that Bonchou is
a play on ‘Bonjour’, the French word for ‘hello’ as well as ‘Bonjou’, the creole word
for ‘hello.’” 4 TTABVUE 13.
A mark comprising a combination of merely descriptive components is
registrable if the combination of terms creates a unitary mark with a unique,
nondescriptive meaning, or if the composite has a bizarre or incongruous meaning
as applied to the goods or services. See In re Colonial Stores Inc., 394 F.2d 549, 157
USPQ 382 (C.C.P.A. 1968) (SUGAR & SPICE held not merely descriptive of bakery
products); In re Shutts, 217 USPQ 363 (TTAB 1983) (SNO-RAKE held not merely
descriptive of a snow removal hand tool). However, if each component retains its
descriptive significance in relation to the goods or services, the combination results
in a composite that is itself descriptive. Duopross Meditech Corp. v. Inviro Medical
Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753 (Fed. Cir. 2012) (SNAP SIMPLY
SAFER merely descriptive for “medical devices, namely, cannulae; medical,
hypodermic, aspiration and injection needles; medical, hypodermic, aspiration and
injection syringes”); In re Petroglyph Games, Inc., 91 USPQ2d 1332 (TTAB 2009)
(BATTLECAM merely descriptive for computer game software); In re Carlson, 91
USPQ2d 1198 (TTAB 2009) (URBANHOUZING merely descriptive of real estate
brokerage, real estate consultation, and real estate listing services). In addition, we
conduct our analysis in the context of the goods and services at issue — pastries and
pastry shops. In that context, there is no persuasive evidence to support a finding
that potential consumers would think BONCHOU is somehow referencing MON
Serial Nos. 86400341 and 86400392

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CHOU or BONJOUR,16 particularly because “CHOU” is a recognized term in
English for a type of pastry called “chou.” Moreover, in this case, the foreign term is
“bon,” a common term used in French phrases even non-French speakers would
recognize. See Merriam-Webster’s Collegiate Dictionary (10th ed. 1993)
Foreign Words and Phrases listing “bon appetite, bonjour, bonsoir” (“Foreign Words
and Phrases that occur frequently in English texts but have not become part of the
English vocabulary”).17 At minimum, those consumers familiar with the French
language would stop and translate “bon” to understand the term BONCHOU to
mean good chou.
Thus, we find that the term BONCHOU is not a unitary expression that
would evoke another French phrase. As noted above, “chou” is used in the English
language as a type of pastry and “bon” simply means “good.” There is no double
entendre readily apparent from the mark itself. In re Brown-Forman Corp., 81
USPQ2d 1284, 1287 (TTAB 2006). The meaning found in the definitions and uses of
record, when taken in relation to the goods and services, immediately conveys to the
consumer the quality of the Applicant’s pastries and pastry shops.18

16 The only evidence offered on this point consists of Applicant’s translator speculating
about “different interpretations” that “come to mind” from combining the words “bon” and
“chou.” July 8, 2015 Response to Office action at 11.

17 The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac
v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or
regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
18 August 22, 2015 Office action at 84.

Serial Nos. 86400341 and 86400392

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Finally, we are not persuaded by Applicant’s argument that the term
BONCHOU is not required by competitors to identify their food products and retail
store services. The record clearly shows competitors use the term “chou” and it is
not uncommon to use the term “bon” in connection with pastries. The fact that an
applicant may be the first or only user of a combination of merely descriptive terms
does not obviate the refusal. In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1826
(TTAB 2012); In re Carlson, 91 USPQ2d 1198, 1203 (TTAB 2009) (competitor need
is not the test for descriptiveness); In re Sun Microsystems Inc., 59 USPQ2d 1084,
1086 (TTAB 2001).19
We find that the term BONCHOU is merely descriptive of the goods and
services in that it immediately conveys a characteristic or feature of the goods and
services, i.e., that they are good chou. No multi-stage reasoning, small leap or
mental pause is required to immediately grasp the meaning of the proposed mark in
connection with pastries and pastry shops.
Disclaimer Application Serial No. 86400392
Turning to the composite mark in Application Serial No. 86400392, an
examining attorney may require an applicant to disclaim an unregistrable
component of a mark otherwise registrable. 15 U.S.C. § 1056. This section of the
statute was amended in 1962 to allow the exercise of greater discretion by
examining attorneys in determining whether a disclaimer is necessary. See TMEP

19 We further note that although the mark is in stylized form, Applicant did not argue this
point and we agree with the Examining Attorney that the degree of stylization is not
sufficiently striking, unique, or distinctive so as to create a commercial impression separate
and apart from the unregistrable components of the mark. See In re Sadoru Grp., Ltd., 105
USPQ2d 1484, 1490 (TTAB 2012).
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§ 1213.01(a) (April 2016). See also In re La. Fish Fry Prods., Ltd., 797 F.3d 1332,
116 USPQ2d 1262 (Fed. Cir. 2015). Merely descriptive or generic terms are
unregistrable under Section 2(e)(1), 15 U.S.C. § 1052(e)(1), and therefore are subject
to disclaimer if the mark is otherwise registrable. Failure to comply with a
disclaimer requirement is grounds for refusal of registration. La. Fish Fry, 116
USPQ2d at 1264 (citing In re Stereotaxis, Inc., 429 F.3d 1039, 77 USPQ2d 1087
(Fed. Cir. 2005)) (“The PTO can condition the registration of a larger mark on an
applicant’s disclaimer of an ‘unregistrable component of a mark otherwise
registrable.’ 15 U.S.C. § 1056(a)”). See also In re Omaha National Corp., 819 F.2d
1117, 2 USPQ2d 1859 (Fed. Cir. 1987).
In view of our determination that the term BONCHOU is merely descriptive
of Applicant’s goods and services, the disclaimer requirement is appropriate.
Decision: The refusals to register based on mere descriptiveness and the
requirements to provide a translation and additional processing fees in Application
Serial No. 86400341 are affirmed.
The refusals to register based on the requirements to provide a disclaimer,
translation and additional processing fees in Application Serial No. 86400392 are
affirmed. However, if Applicant intends to appeal the affirmance of the
requirements for a translation and additional processing fees, and is willing to
disclaim “BONCHOU” apart from the mark as shown, then Applicant may file the
disclaimer within 30 days of the mailing date of this decision.20 Trademark Rule

20 If the disclaimer is submitted, the wording will read as follows:

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2.142(g). In the event that the disclaimer is filed, the refusal of registration based
on the disclaimer requirement will be set aside. Applicant should note, however,
that the filing of the disclaimer would not extend the time to file an appeal of this
decision. The time for filing an appeal of this decision runs from the mailing date of
this decision.

No claim is made to the exclusive right to use “BONCHOU” apart from the mark as shown.
See TMEP § 1213.08(a)(i) (April 2016).