Max Rohr, Inc.

Trademark Trial and Appeal Board

Aug 17, 2007

No. 78486814 (T.T.A.B. Aug. 17, 2007)

Mailed:
17 August 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Max Rohr, Inc.
________

Serial No. 78486814
_______

Charles W. Grimes of Grimes & Battersby, LLP for Max Rohr,
Inc.

Margery A. Tierney, Trademark Examining Attorney, Law
Office 111 (Craig D. Taylor, Managing Attorney).
_______

Before Hohein, Grendel, and Drost, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On September 21, 2004, Max Rohr, Inc. (applicant)
applied to register the mark SAMBUCA, in standard character
form, on the Principal Register1 for “cigars and pipe

1 Applicant subsequently offered to amend the application to seek
registration on the Supplemental Register (Response dated August
22, 2005) but, because it had not filed an amendment to allege
use, it was not permitted to amend to that register. 37 CFR
§ 2.75(b).

THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Ser. No. 78486814
2
tobacco” in Class 34.2 The application (Serial No.
78486814) is based on applicant’s assertion of a bona fide
intention to use the mark in commerce.
The examining attorney refused to register the mark on
the ground that the mark is merely descriptive of
applicant’s goods under 15 U.S.C. § 1052(e)(1). The
examining attorney argues that “SAMBUCA is not only used to
describe a liqueur. It is a well-known flavor in tobacco
products.” Brief at unnumbered p. 5. “Because ‘SAMBUCA’
is a flavoring used in tobacco, applicant’s mark SAMBUCA as
applied to” applicant’s goods, is merely descriptive.
Brief at unnumbered p. 7.
Applicant responds by arguing that “[r]ather than
describing Applicant’s goods, the SAMBUCA mark conjures an
indirect connotation of the rich Italian culture where
cigars are often enjoyed with an after-dinner drink.”
Brief at 6. Furthermore, applicant maintains that “there
is no such thing as a sambuca flavor. According to the

2 Both applicant and the examining attorney at times refer to the
goods as “cigars, little cigars, roll-your-own tobacco, pipe
tobacco and smokeless tobacco.” See Examining Attorney’s Brief
at unnumbered pp. 1-2 and Reply Brief at 4. But see Applicant’s
Brief at 3 (Applicant “filed its application for … ‘cigars and
pipe tobacco’”) and Final Refusal at 1 (“cigars and pipe
tobacco”). Inasmuch as the goods in the application as filed
were identified simply as “cigars and pipe tobacco,” they cannot
be expanded to include other types of tobacco such as smokeless
and roll-your-own tobacco. 37 CFR § 2.71(a). Therefore, we must
consider the goods as simply “cigars and pipe tobacco.”
Ser. No. 78486814
3
definition cited by the Examining Attorney, sambuca is a
liqueur flavored with licorice.” Brief at 7.
When the examining attorney made the refusal to
register final, this appeal followed.
A mark is merely descriptive if it immediately conveys
“knowledge of a quality, feature, function, or
characteristic of the goods or services.” In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831
(Fed. Cir. 2007). See also In re Quik-Print Copy Shops,
Inc., 616 F.2d 523, 205 USPQ 505, 507 (CCPA 1980). A
characteristic of a product includes its “flavor
characteristic.” In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009, 1010 (Fed. Cir. 1987) and In re Andes Candies Inc.,
478 F.2d 1264 178 USPQ 156, 157 (CCPA 1973). To be merely
descriptive, a term need only describe a single
significant quality, property, or characteristic of the
goods or services. Gyulay, 3 USPQ2d at 1009; Meehanite
Metal Corp. v. International Nickel Co., 262 F.2d 806, 120
USPQ 293, 294 (CCPA 1959). Mere descriptiveness is not
determined in the abstract but rather in relation to the
goods or services. In re Abcor Development Corp., 588
F.2d 811, 200 USPQ 215, 218 (CCPA 1978).
To support her argument that applicant’s mark is
merely descriptive, the examining attorney submitted a
Ser. No. 78486814
4
definition of “sambuca” as meaning “an Italian liqueur
made from elderberries and flavored with licorice.” See
Final Office Action at 2. In addition, the examining
attorney submitted internet printouts (emphasis added)
that show that cigars and pipe tobacco are flavored and
sold as “sambuca” cigars and tobacco.
Aromatic Tobaccos – 700 Series…
747 Sambuca – We matched this classic cordial in a
pipe tobacco that delivers taste, aroma, and
unsurpassed satisfaction.
www.altadisusa.com

PHILLIES – FLAVORED
CIGARS BLUNT SAMBUCA
Cigars
If you love Black Licorice you have to try this!
www.lilbrown.com

Lars Tetens Cigars, Acid Cigars, Coffee, Mint, Other
Spirits, Sambuca Flavored Cigars
www.amishshop.com

The examining attorney also included evidence of the sale
of various cigars that are referred to as “Sambuca”
cigars.
Length Ring

Cojimar Sambuca Senora Corona 5.5 42
Cojimar Sambuca Senorita 5 30
Taino Sweets Sambuca 5.5 42
www.amishshop.com

Sambuca Senorita 5 30
Sambuca Senora 5.5 42
www.cvtobacco.com

Ser. No. 78486814
5
The evidence supports the examining attorney’s
position that the term “Sambuca” is merely descriptive of
cigars and pipe tobacco. Applicant argues that:
Thus, each of these manufacturers is advertising and
selling a licorice-flavored tobacco product. In other
words, the average consumer must make a leap of
imagination to associate the liqueur with the licorice
flavor and then to associate that flavor with the
flavored tobacco product.

Reply Brief at 3.

Furthermore, “Applicant contends that, unless the
goods at issue contain sambuca liqueur as an ingredient,
the term ‘sambuca’ cannot be merely descriptive of the
goods.” Reply Brief at 3-4.
We note that this is not a case where cigars are
advertised as having a licorice flavor and that, when
purchasers see applicant’s SAMBUCA mark, they will
associate the licorice flavor with the licorice flavor of
sambuca. Here, the evidence indicates that cigars and
pipe tobacco are advertised as having a sambuca flavor.
Thus, there is no leap of imagination for consumers to
make. The term would immediately inform prospective
purchasers of the flavor of the cigars. Furthermore, the
examining attorney’s position is consistent with the
precedent of our primary reviewing court and its
predecessor in cases involving flavors. For example, in
Ser. No. 78486814
6
Andes Candies, the CCPA held that the term CRÈME DE MENTHE
for laminated chocolate mint candy squares that “do not
contain any creme de menthe liqueur” was merely
descriptive. 178 USPQ at 156.
We think the only possible reaction of purchasers,
upon being presented with CREME DE MENTHE chocolate
wafers, is the expectation that the wafers will have a
mint taste something like that of creme de menthe
liqueur. Surely, the purchasers would not expect to
find a cherry or rum or butterscotch flavor in the
candies.

Id. at 157.
Similarly, in Gyulay, the Federal Circuit held that
the term APPLE PIE was merely descriptive of potpourri.
“It is thus sufficient that the term describes the scent.”
3 USPQ2d at 1010.
Thus, even if cigars and pipe tobacco do not actually
have sambuca as an ingredient, the term can still be
merely descriptive if the goods have a sambuca flavor.
The evidence supports the examining attorney’s
determination that cigars and tobacco have a sambuca
flavor and thus we find that the term is merely
descriptive.3

3 We add that nothing in No Nonsense Fashions, Inc. v.
Consolidated Foods Corp., 226 USPQ 502 (TTAB 1985), as the case
upon which applicant relies, compels a different result. The
term sambuca for cigars and tobacco requires no imagination for
prospective purchasers to immediately understand that it
describes a characteristic of the goods. Furthermore, it is a
term that competitors need to use to describe their products.
Ser. No. 78486814
7
Applicant argues that its “SAMBUCA mark is, at the
very least, suggestive of cigars … [and] pipe tobacco …
flavored with black licorice. Moreover, Applicant’s
SAMBUCA mark is arbitrary when used in connection with
flavorless cigars” and pipe tobacco. Reply Brief at 4.
As we have previously determined, the term SAMBUCA is
merely descriptive of cigars and pipe tobacco to the
extent that they can be sambuca flavored. Regarding
applicant’s argument about unflavored tobacco products, we
do not address this issue. Applicant has not limited its
identification of goods to “unflavored” or “flavorless”
tobacco products and therefore its identification of goods
includes cigars and pipe tobacco that can have a sambuca
flavor. Whether the term SAMBUCA for “unflavored cigars
and pipe tobacco” is arbitrary or deceptively
misdescriptive is not before us.4
Applicant also attaches copies of four registrations
and an application to its brief in support of its argument
that its mark is not merely descriptive. The examining
attorney has objected to three of the registrations and
the application. We sustain the objection. 37 CFR

4 Even if applicant’s “cigars and pipe tobacco will not be
flavored with sambuca liqueur” (Brief at 8), it does not
foreclose the possibility that they will have a sambuca flavor as
the candy in the Andes case had a crème de menthe flavor.
Ser. No. 78486814
8
2.142(d) (“The record in the application should be
complete prior to the filing of an appeal”). In re L.C.
Licensing Inc., 49 USPQ2d 1379, 1380 n.3 (TTAB 1998)
(Third-party registrations submitted with brief not
considered). We add that since one of the marks is a mark
in an abandoned application, it would not have been
relevant even if it had been timely submitted. In re
Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1049 n.4 (TTAB
2002) (“While applicant also submitted a copy of a third-
party application…, such has no probative value other than
as evidence that the application was filed”).
The examining attorney did address one registration
(No. 3,050,147) for the mark CITRUS BLAST for smoking
articles that applicant had referenced earlier. The
examining attorney pointed out that “the exclusive right
to use the term CITRUS, which is a flavoring, was
disclaimed.” Brief at unnumbered p. 3. We add that the
other registrations for different terms, even if we
considered them, would have very little relevance. In re
Nett Designs Inc., 236 F.3d 1339 57 USPQ2d 1564, 1566
(Fed. Cir. 2003) (“Even “if some prior registrations had
some characteristics similar to Nett Designs' application,
the PTO's allowance of such prior registrations does not
bind the Board or this court”).
Ser. No. 78486814
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We conclude that the record supports the conclusion
that when prospective purchasers encounter the mark SAMBUCA
on cigars and pipe tobacco they will immediately understand
that the term describe a characteristic of the goods, i.e.,
their flavor. Therefore, the term is merely descriptive of
applicant’s goods.
Decision: The examining attorney’s refusal to
register applicant’s mark SAMBUCA on the ground that it is
merely descriptive of its goods is affirmed.