Max Rohr, Inc.

Trademark Trial and Appeal Board

Aug 17, 2007

No. 78489076 (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. 78489076
_______

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 24, 2004, Max Rohr, Inc. (applicant)
applied to register the mark PINA COLADA, in standard
character form, on the Principal Register1 for “cigars,
little cigars, roll-your-own tobacco, pipe tobacco and
smokeless tobacco” in Class 34. The application (Serial

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. 78489076
2
No. 78489076) 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:
“Pina Colada” is defined as “a mixed drink made of
rum, coconut cream, and unsweetened pineapple juice.”
However, Pina Colada is not only used to describe a
mixed drink. It is a well-known flavor in tobacco
products.

Brief at unnumbered p. 5. “Because ‘Pina Colada’ is a
flavoring used in tobacco, applicant’s mark PINA COLADA as
applied to” applicant’s goods, is merely descriptive.
Brief at unnumbered p. 8.
In turn, applicant argues that that “pina colada’ is
not merely descriptive of its tobacco products. “Rather
than describing Applicant’s goods, the PINA COLADA mark
evokes a Caribbean lifestyle of relaxation and refreshment,
conjuring the indirect connotation of a tropical island
vacation where cigars can be lazily enjoyed.” Brief at 6.
Furthermore, applicant maintains that:
In point of fact, there is no such thing as a pina
colada flavor. According to the definition cited by
the Examining Attorney, a pina colada is a mixed drink
containing rum, coconut cream and pineapple juice. It
is these ingredients which give the drink its
distinctive flavor. But applicant is not attempting
to register the terms “rum,” “coconut cream” or
Ser. No. 78489076
3
pineapple juice.” Were applicant attempting to
register these terms, the Examining Attorney’s
position might possibly be sustainable.

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).
Ser. No. 78489076
4
The examining attorney provided the following evidence
to support her position that the mark PINA COLADA is
merely descriptive. As mentioned earlier, this evidence
includes a definition of “Pina Colada.” See Final Office
Action at 2. In addition, the examining attorney
submitted internet printouts (emphasis added) that show
that various tobacco products are “Pina Colada” flavored.
PINA COLADA HOOKAH
HOOKAH PREMIUM TOBACCO
A tropical blend of coconut and ripe juice
pineapple with the slightest hint of spiced rum, our
Pina Colada tobacco is a refreshing Caribbean treat.
Only the choicest most selected parts of the
hand-picked tobacco leaf is used. Creating a
deliciously smooth, mouth-watering smoking experience.
www.hookahhub.com

Pina Colada Flavor Cigarette Tobacco Blend – 6.2 oz.
Bag
Pineapple and coconut are the basis for the very
popular refreshment that we named this tobacco after.
www.store.yahoo.com/careysmokeshop

True Blunt Pina Colada
25 Count Box
www.monstermarketplace/com/TrueBlunts

R.J. Reynolds Criticized for New Pina Colada Flavored
Cigarettes
www.jointogether.org

Examples of pina colada-flavored cigars offered by
Ricardo’s Cigar Shop at www.amishshop.com are set out
below:
Length Ring

Cuban Pleasures Pina Colada 5 36
Ser. No. 78489076
5
Island Delights Pina Colada 5.5 42
Phillies Blunt Pina Colada 5 Pack 4.88 42
Salsa Mini Cigars Pina Colada 3.5 22
Ricardo Pleasures Pina Colada 5 26
Tropical Treasures Pina Colada 5 42

The evidence supports the examining attorney’s
position that the term “Pina Colada” is merely descriptive
of various tobacco products inasmuch as these products are
referred to as “pina colada” to describe their flavor.
Applicant argues that:
However, in each case, the tobacco manufacturer
referred to the distinctive components of a pina
colada cocktail, namely, coconut and pineapple, to
describe the flavor used in the tobacco. There is no
such thing as “pina colada-flavored” tobacco. Each of
these manufacturers is advertising and selling a
coconut/pineapple/rum-flavored tobacco product. More
importantly, these manufacturers clearly know that,
without this additional description, customers would
not understand that the term “pina colada” is
descriptive of flavored tobacco.

Reply Brief at 3.

Furthermore, “Applicant contends that, unless the
goods at issue contain pina colada cocktail as an
ingredient, the term ‘pina colada’ cannot be merely
descriptive of the goods.” Reply Brief at 4.
Applicant’s position that the term pina colada can
only be merely descriptive of a product that contains a
pina colada cocktail is inconsistent with the precedent of
our primary reviewing court and its predecessor in cases
involving flavors. For example, in Andes Candies, the
Ser. No. 78489076
6
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 tobacco products do not actually have a
pina colada cocktail as an ingredient, the term can still
be merely descriptive if the goods have a pina colada
flavor. We also point out that numerous cigars on the
www.amishshop.com website are listed as “Pina Colada”
cigars without any explanation of the
coconut/pineapple/rum ingredients listed. The term “Pina
Colada” simply and immediately describes the flavor of the
cigars at least as directly as the combined term
coconut/pineapple/rum. The evidence supports the
examining attorney’s determination that tobacco products
Ser. No. 78489076
7
can have a pina colada flavor and, thus, we find that the
term is merely descriptive.2
Applicant argues that its “PINA COLADA mark is, at the
very least, suggestive of cigars, little cigars, roll-
your-own tobacco, pipe tobacco and smokeless tobacco
flavored with a combination of rum, pineapple juice and
coconut cream. Moreover, Applicant’s PINA COLADA mark is
arbitrary when used in connection with flavorless cigars,
little cigars, roll-your-own tobacco, pipe tobacco or
smokeless tobacco.” Reply Brief at 4. As we have
previously determined, the term PINA COLADA is merely
descriptive of cigars, little cigars, roll-your-own
tobacco, pipe tobacco and smokeless tobacco to the extent
that they can be pina colada 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, little cigars, roll-your-own tobacco,
pipe tobacco and smokeless tobacco that can have a pina

2 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 pina colada for tobacco product 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. 78489076
8
colada flavor. Whether the term PINA COLADA for
“unflavored cigars, little cigars, roll-your-own tobacco,
pipe tobacco and smokeless tobacco” is arbitrary or
deceptively misdescriptive is not before us.3
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
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”).

3 Even if “Applicant’s cigars and pipe tobacco will not be
flavored with pina colada cocktail” (Brief at 8), it does not
foreclose the possibility that they will have a pina colada
flavor as the candy in the Andes case had a crème de menthe
flavor.
Ser. No. 78489076
9
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”).
We conclude that the record supports the conclusion
that when prospective purchasers encounter the mark PINA
COLADA on cigars, little cigars, roll-your-own tobacco,
pipe tobacco and smokeless 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 PINA COLADA on the ground that it
is merely descriptive of its goods is affirmed.