Litehouse, Incorporated

Trademark Trial and Appeal Board

Feb 9, 2007

No. 78494701 (T.T.A.B. Feb. 9, 2007)

Mailed:
Feb. 9, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Litehouse, Incorporated
________

Serial No. 78494701
_______

Mark W. Hendrickson of Wells St. John P.S. for Litehouse,
Incorporated.

Judith M. Helfman, Trademark Examining Attorney, Law Office
110 (K. Margaret Le, Managing Attorney).
_______

Before Grendel, Kuhlke and Taylor, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark CAESAR!CAESAR! (in standard character form) for
goods identified in the application as “salad dressings.”1

1 Serial No. 78494701, filed on October 5, 2004. The application
is based on applicant’s asserted bona fide intention to use the
mark in commerce. Trademark Act Section 1(b), 15 U.S.C.
§1051(b).

THIS OPINION IS A
PRECEDENT OF THE TTAB
Ser. No. 78494701
2
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicant’s mark on
the ground that it is merely descriptive of applicant’s
goods. Trademark Act Section 2(e)(1), 15 U.S.C.
§1052(e)(1).
Applicant filed a main appeal brief, as did the
Trademark Examining Attorney. After careful consideration
of the evidence of record and the arguments of counsel, we
affirm the Section 2(e)(1) refusal to register.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act Section
2(e)(1), if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services. See, e.g., In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
217-18 (CCPA 1978). A term need not immediately convey an
idea of each and every specific feature of the applicant’s
goods or services in order to be considered merely
descriptive; it is enough that the term describes one
significant attribute, function or property of the goods or
services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Ser. No. 78494701
3
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods or services
for which registration is sought, the context in which it
is being used on or in connection with those goods or
services, and the possible significance that the term would
have to the average purchaser of the goods or services
because of the manner of its use. That a term may have
other meanings in different contexts is not controlling.
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Moreover, it is settled that “[t]he question is not whether
someone presented with only the mark could guess what the
goods or services are. Rather, the question is whether
someone who knows what the goods or services are will
understand the mark to convey information about them.” In
re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
See also In re Patent & Trademark Services Inc., 49 USPQ2d
1537 (TTAB 1998); In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re American
Greetings Corporation, 226 USPQ 365 (TTAB 1985).
Applying these principles in the present case, we find
as follows.
First, the evidence of record clearly establishes that
the word CAESAR is merely descriptive of applicant’s “salad
dressings.” Specifically, the Trademark Examining Attorney
Ser. No. 78494701
4
has submitted dictionary evidence consisting of the
following definition of “caesar salad”: “A tossed salad of
greens, anchovies, croutons, and grated cheese with a
dressing of olive oil, lemon juice, and a raw or coddled
egg.” The American Heritage Dictionary of the English
Language (4th ed. 2000).
The Trademark Examining Attorney also has submitted
excerpts of articles obtained from the NEXIS database which
demonstrate descriptive use of CAESAR in connection with
salads and salad dressings. For example, an October 13,
2004 article in the San Francisco Chronicle has as its
headline “Not all Caesar dressings are fit for an emperor,”
and includes the following text in the body of the article:

Caesar salad dressing is incredibly popular.
Only ranch dressing takes up more space on
grocery shelves. And when it comes to the number
of brands sold, Caesar clearly is emperor: We
found 30.

A July 19, 2004 article in the Star Tribune (Minneapolis,
MN) includes the following text:

How did Caesar salad and Caesar dressing get
their names? ... Most people agree that Caesar
salad is named after Caesar Cardini, an Italian
restaurateur in Tijuana, Mexico who created the
salad in 1924. It caught on with California
vacationers and, when Cardini moved to
California, he started selling the dressing. By
Ser. No. 78494701
5
the 1960’s, Caesar salad was popular across the
country.

A February 15, 2000 article in The Columbian (Vancouver,
WA) has as its headline “Hail Caesar – The presentation has
fallen, but Caesar still reigns as No. 1 salad.” The text
of the article includes the following:

Then, as nearby diners peer discreetly, the
spectacle: Caesar salad prepared with pomp and
served with ceremony at the table. In the ‘50s
and ‘60s, when it was such a production, Caesar
salad was the anniversary, birthday or promotion
salad of choice. In the ‘90s, Caesar became the
salad of the moment and for the masses... The
only restaurant I know that still does tableside
Caesar locally is The London Grill in the Benson
Hotel in Portland.

A July 15, 2005 article in the Chicago Sun-Times includes
the following:

Caesar salad – Redux. When I started writing
this column (some 20 years ago) I took particular
notice that my all-time favorite salad – Caesar –
had fallen out of favor. It seemed to me that
restaurants had abandoned this great salad, and
for the life of me I could not understand why.
Now the vaunted Caesar salad is now more popular
than ever.

An April 14, 2005 article in The Times Union (Albany, NY)
includes the following:

Q. Is Caesar salad named after Julius Caesar?
Ser. No. 78494701
6
A. No. There are several stories about the
origin of that dish’s name; here’s one. Sometime
in the 1920’s, Italian immigrant Caesar Cardini
(some sources spell his name Gardini), founder of
Caesar’s Place in Tijuana, Mexico, was faced with
a dilemma – lots of customers and dwindling food
in the kitchen. He grabbed several ingredients
along with romaine lettuce and whipped up a
salad, which was well-received by the tourists.
Today, Caesar salad is the most popular salad in
restaurants nationwide.

A September 1, 1997 item from Copley News Service includes
the following:

Three out of four Americans eat a tossed salad at
least every other day. The most popular? The
classic Caesar. Caesar dressing surpasses blue
cheese as the next big flavor.

The Trademark Examining Attorney also has made of
record printouts from the Yahoo! Shopping website, which
contain, under the search heading “Caesar Dressing,”
listings for Caesar dressings from numerous sellers. These
include “Newman’s Own Creamy Caesar Salad Dressing,” “Ken’s
Steak House Caesar Salad Dressing,” “Wish Bone Caesar Salad
Dressing,” and “Emeril’s Caesar Salad Dressing.”
Based on the above-quoted dictionary definition of
“caesar salad,” the NEXIS articles, and the Internet
evidence, we find that CAESAR is merely descriptive of
“salad dressings.” CAESAR immediately describes and indeed
is used as the name of a particular type of salad, i.e.,
Ser. No. 78494701
7
the “Caesar salad,” which we must presume (in the absence
of any restrictions in applicant’s identification of goods)
to be a type of salad with which applicant’s “salad
dressings” may be used. The evidence also establishes that
the word CAESAR immediately describes and names a
particular type of salad dressing, called “Caesar dressing”
or “Caesar salad dressing,” which is used in connection
with Caesar salads. This evidence establishes the mere
descriptiveness of CAESAR as applied to salad dressings.
See, e.g., In re Central Sprinkler Co., 49 USPQ2d 1194
(TTAB 1998)(ATTIC generic for sprinklers installed
primarily in attics); In re Orleans Wines, Ltd., 196 USPQ
516 (TTAB 1977)(BREDSPRED merely descriptive of jams and
jellies).
Having found, as a preliminary matter, that CAESAR is
merely descriptive of applicant’s salad dressings, we turn
now to the ultimate issue in this case, i.e., whether
applicant’s mark CAESAR!CAESAR! is merely descriptive. We
find that it is.
It is settled that a mark’s mere repetition of a
merely descriptive word does not negate the mere
descriptiveness of the mark as a whole. See In re Disc
Jockeys, Inc., 23 USPQ2d 1715 (TTAB 1992), wherein the
Ser. No. 78494701
8
Board found the mark DJDJ to be merely descriptive of disc
jockey services. The Board explained:

There is nothing in the composite which changes
the meaning of the letters in any manner which
would give them a different meaning. If one were
to express the view that milk was “creamy creamy”
or that a red bicycle was “red red” or that a
razor was “sharp sharp,” the repetition of the
words “creamy,” “red” and “sharp” would be
understood as emphasis and the combinations of
these words would not, simply because of their
repetition, be rendered something more than
descriptive.

Id. at 1716.
Likewise, the presence of the exclamation points in
applicant’s mark does not suffice to negate the mere
descriptiveness of the mark. “Applicant has not cited nor
have we found any case where it was held that a common
punctuation mark, such as an exclamation point, was
sufficient to elevate an otherwise merely descriptive term
to the status of a registrable mark. We do not do so in
this case.” In re Samuel Moore & Co., 195 USPQ 237, 240
(TTAB 1977)(SUPERHOSE! merely descriptive of “hydraulic
hose made of synthetic resinous material”). The Board’s
reasoning in that 1977 case has been consistently repeated
in numerous cases over the years involving marks with
exclamation points.
Ser. No. 78494701
9
For example, in the case of In re Promo Ink, 78 USPQ2d
1301 (TTAB 2006), the Board found the mark PARTY AT A
DISCOUNT! to be merely descriptive, specifically noting
that “[t]his punctuation mark does not significantly change
the commercial impression of the mark. It would simply
emphasize the descriptive nature of the mark to prospective
customers...”). Id. at 1305. Likewise, in In re Brock
Residence Inns, Inc., 222 USPQ 920 (TTAB 1984), the Board
found the mark FOR A DAY, A WEEK, A MONTH OR MORE! to be
merely descriptive of hotel services, noting that “[t]he
presence of the exclamation point at the end of the
designation does not alter our opinion because it serves as
well to emphasize the descriptive and informational
significance of the designation as to indicate any other
meaning.” Id. at 922. See also In re Wileswood, Inc., 201
USPQ 400 (TTAB 1978)(AMERICA’S BEST POPCORN! and AMERICA’S
FAVORITE POPCORN! found merely descriptive of unpopped
popcorn). Cf. In re Vanilla Gorilla, L.P., 80 USPQ2d 1637
(TTAB 2006)(presence of punctuation mark (a hyphen) in the
mark “3-0’S” does not negate mere descriptiveness of mark);
In re S.D. Fabrics, Inc., 223 USPQ 54 (TTAB 1984)(presence
of slash in the mark “designers/fabric” does not negate
mere descriptiveness of mark).
Ser. No. 78494701
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In accordance with these authorities, we find in the
present case that neither the mere repetition of the word
CAESAR in applicant’s mark, nor the presence of the
exclamation points in the mark, nor both of these features
combined, suffices to negate the mere descriptiveness of
the mark as a whole as applied to salad dressings.
Applicant argues that its mark is not merely
descriptive because one cannot determine what the goods are
merely from viewing the mark. As noted above, however,
that is not the test for mere descriptiveness. See In re
Tower Tech Inc., supra; In re Patent & Trademark Services
Inc., supra; In re Home Builders Association of Greenville,
supra; and In re American Greetings Corporation, supra.
Likewise, applicant’s contention (at page 3 of its brief)
that purchasers will view the mark not as merely describing
the goods, but rather as “a summons or exaltation to a
Caesar (which is well known to be a surname of a Roman
emperor, a dictator, or a Roman statesman),” is not
persuasive. The mere descriptiveness of the mark must be
viewed in the context of the identified goods, not in the
abstract or in relation to any other meaning the words in
the mark might have. See In re Bright-Crest, Ltd., supra.
Applicant has submitted two third-party Principal
Register registrations of the mark PIZZA!PIZZA!, one for
Ser. No. 78494701
11
“restaurant services” (Reg. No. 1439558, issued on May 12,
1987), and one for “pizza for consumption on or off the
premises” (Reg. No. 1399730, issued on July 1, 1986).2
PIZZA is disclaimed in both registrations. Applicant
argues that the registered PIZZA!PIZZA! mark, which the
Office apparently deemed to be suggestive rather than
merely descriptive, is essentially identical in structure
to applicant’s CAESAR!CAESAR! mark, and that in the
interest of consistency, applicant’s mark should likewise
be considered to be suggestive and thus registrable on the
Principal Register. Our primary reviewing court, however,
has rejected this argument:

Needless to say, this court encourages the PTO to
achieve a uniform standard for assessing
registrability of marks. Nonetheless, the Board
(and this court in its limited review) must
assess each mark on the record of public
perception submitted with the application.
Accordingly, this court finds little persuasive
value in the registrations that Nett Designs
submitted to the examiner or in the list of
registered marks Nett Designs attempted to submit
to the Board.

2 Printouts of these registrations were submitted for the first
time with applicant’s appeal brief. Although we normally would
not consider this evidence because it is untimely, see Trademark
Rule 2.142(d), 37 C.F.R. §142(d), we shall consider it in this
case because the Trademark Examining Attorney, in her appeal
brief, has not objected to this evidence and instead has
presented arguments in rebuttal of the evidence. See In re
Urbano, 51 USPQ2d 1776, 1778 n.4 (TTAB 1999); TBMP §1207.03.

Ser. No. 78494701
12
In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564,
1566 (Fed. Cir. 2001). See also In re Rodale Inc., 80
USPQ2d 1696, 1700 (TTAB 2006)(“Although consistency in
examination is a goal of the Office, the decisions of
previous Trademark Examining Attorneys are not binding on
us, and we must decide each case based on the evidence
presented in the record before us”); and In re Finisair
Corp., 78 USPQ2d 1618, 1621 (TTAB 2006)(“While uniform
treatment is a goal, our task is to determine based on the
record before us, whether applicant's mark is merely
descriptive”). See also In re Wilson, 57 USPQ2d 1863 (TTAB
2001)(administrative law doctrine of “reasoned
decisionmaking” does not require consistent treatment of
applications to register marks; each application for
registration must be considered on its own record and
merits).3
Finally, applicant argues that the Office’s refusal to
register its CAESAR!CAESAR! mark, when the Office has
previously allowed registration of the two PIZZA!PIZZA!
marks, violates applicant’s constitutional rights under the

3 We note that the PIZZA!PIZZA! registrations applicant relies on
were issued in 1986 and 1987, prior to the Board’s 1992
precedential decision in In re Disc Jockeys, Inc. (the DJDJ
case), in which the Board held that a mark’s mere repetition of a
merely descriptive term does not necessarily result in a mark
which is not itself merely descriptive.

Ser. No. 78494701
13
equal protection component of the Due Process Clause of the
Fifth Amendment. Again, the Federal Circuit has
specifically rejected this argument:

Boulevard also asserts that the PTO has
registered other sexually oriented marks and that
it accordingly violates Boulevard's rights under
the equal protection component of the Due Process
Clause of the Fifth Amendment for the PTO to
refuse to register the marks at issue in this
case. ... In any event, the PTO must decide each
application on its own merits, and decisions
regarding other registrations do not bind either
the agency or this court. In re Nett Designs, 236
F.3d 1339, 1342, [57 USPQ2d 1564] (Fed. Cir.
2001). Even if the PTO had previously allowed a
mark similar to Boulevard's marks to be
registered, that would not give Boulevard an
equal protection right to have its mark
registered unless the agency acted pursuant to
some impermissible or arbitrary standard. See In
re Int'l Flavors & Fragrances, 183 F.3d 1361,
1368 [51 USPQ2d 1513] (Fed. Cir. 1999). The fact
that, whether because of administrative error or
otherwise, some marks have been registered even
though they may be in violation of the governing
statutory standard does not mean that the agency
must forgo applying that standard in all other
cases. The TTAB's decision in this case therefore
does not violate the constitutional principles
that Boulevard invokes.

In re Boulevard Entertainment Inc., 334 F.3d 1336, 67
USPQ2d 1475, 1480 (Fed. Cir. 2003). Thus, applicant’s
constitutional argument in this case is unavailing.
In summary, and for the reasons discussed above, we
find that applicant’s mark CAESAR!CAESAR! is merely
Ser. No. 78494701
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descriptive of the “salad dressings” identified in the
application.

Decision: The Section 2(e)(1) refusal is affirmed.