Mother's Cake & Cookie Co.

Trademark Trial and Appeal Board

Jun 19, 2001

No. 75380510 (T.T.A.B. Jun. 19, 2001)

6/19/01
Paper No. 16
EWH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Mother’s Cake & Cookie Co.
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Serial No. 75/380,510
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Robert T. Johnson, Jr., of Bell, Boyd & Lloyd for Mother’s
Cake & Cookie Co.
Barbara Sundberg Loughran, Trademark Examining Attorney, Law
Office 101 (Jerry Price, Managing Attorney).
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Before Seeherman, Hanak and Drost, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Mother’s Cake & Cookie Co. (applicant) seeks to
register COCONUTTY! in typed drawing form for “cookies.”
The intent-to-use application was filed on October 28, 1997.
Citing Section 2(e)(1) of the Trademark Act, the
Examining Attorney has refused registration on the basis
that applicant’s mark is merely descriptive of an important
characteristic and/or ingredient of applicant’s cookies.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request a hearing.
During the course of this proceeding, applicant filed
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.

Ser. No. 75/380,510
an amendment to allege use, which was accepted by the
Examining Attorney. The specimen of use makes it clear that
the cookies on which applicant uses its mark COCONUTTY! are
coconut bars or coconut cookies. Moreover, the specimen of
use makes it clear that these particular cookies contain
coconut.
The Examining Attorney has made of record a substantial
body of evidence demonstrating that long prior to
applicant’s filing date of October 28, 1997, others had used
the word “coconutty” to describe not only cookies and other
baked goods, but also other food and beverage products. For
example, in the January 11, 1992 edition of the Madison
Capital Times (Wisconsin) there appears the following
sentences: “All of Madison awaits the beginning of the 1992
Girl Scout cookie sale ... This year there’s a new cookie,
Praline Royal, and we’ve gotten an advance box. It’s
coconutty with a sort of pecan flavor, and we recommend it.”
Likewise, the April 1994 issue of Redbook refers to a
“coconutty mocha cookie cake.” Indeed, as early as February
6, 1981 The Washington Post described a German chocolate
cake with a “thick and coconutty icing.” Moreover, the July
11, 1985 edition of The San Diego Union-Tribune discusses a
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“coconutty pie.” The foregoing are just some of the many
stories appearing long before applicant’s filing date
wherein the word “coconutty” is used to describe the flavor
of certain cookies and other baked goods.
Subsequent to applicant’s filing date, there were
additional stories wherein the word “coconutty” appeared in
connection with cookies and other baked goods. For example,
the November 13, 1997 edition of The Chattanooga Times talks
about a “coconutty oatmeal pie.” Moreover, the word
“coconutty” has been used to describe the flavor of other
food and beverage items, including such diverse items as
mixed drinks and batter for shrimp.
In arguing that its purported mark COCONUTTY! is not
merely descriptive, applicant makes essentially three
arguments which it styles as A (brief pages 2-5); B (brief
pages 5-6); and C (brief page 7).
Applicant’s first argument is that it made of record
ten third-party registrations for various food items wherein
the word “nutty” was not disclaimed. Applicant then argues
that “the fact that a disclaimer of the term ’nutty’ was not
required underscores the fact that ’nutty’ is not
descriptive as used by applicant.” (Applicant’s brief page
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Ser. No. 75/380,510
3). Obviously, this Board and certainly our primary
reviewing Court are not bound by the actions of Examining
Attorneys. West Florida Seafood v. Jet Restaurants, 31 F.3d
1122, 31 USPQ2d 1660, 1664 (Fed. Cir. 1994). Suffice it to
say that, based upon the massive body of evidence submitted
by the Examining Attorney where the word “coconutty” is used
to describe cookies, other baked goods and a wide array of
other food and beverage products, we have no doubt that as
applied to applicant’s cookies, which are coconut cookies or
coconut bars containing coconut, the mark COCONUTTY! is
clearly merely descriptive.
Second, applicant argues that its mark COCONUTTY! has a
double entendre or double meaning and hence is entitled to
registration. In this regard, applicant cites the case of
In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382
(CCPA 1968) wherein the Court held that the mark SUGAR &
SPICE was not merely descriptive for bakery products because
it brought to mind the well known children’s rhyme.
Applicant claims that its mark COCONUTTY! has a double
entendre like SUGAR & SPICE because its mark COCONUTTY! “can
mean ‘nutty’ as in crazy.” (Applicant’s brief page 6). In
support of this argument, applicant points to the following
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Ser. No. 75/380,510
sentence appearing in small type on its packaging beneath
its mark COCONUTTY!: “We went a little crazy and put enough
of our delicious Cocadas coconut cookies to fill an 18 ounce
bag.”
We find applicant’s argument to be flawed for three
reasons. First, given the massive amount of evidence which
the Examining Attorney has made of record demonstrating that
the word “coconutty” is widely used to describe cookies and
other baked goods, we have no doubt that consumers, upon
seeing applicant’s mark on cookies, would immediately
understand that the cookies have a coconut flavor (perhaps
an extra coconut flavor) and/or contain coconut.
Second, given the somewhat small typeface in which the
phrase “We went a little crazy...” appears, it is unlikely
that consumers would even notice this phrase. Moreover,
even if they did, we do not believe that consumers would
attribute a double meaning to applicant’s mark COCONUTTY!
Finally, should applicant obtain a registration for
COCONUTTY! for cookies, it could at any time in the future
delete the phrase “We went a little crazy...” from its
packaging and make no reference to the word “crazy” or any
similar word.
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Ser. No. 75/380,510
Applicant’s final argument is that in deciding whether
a mark is merely descriptive or is suggestive, doubts should
be resolved in applicant’s favor. We accept applicant’s
argument, but as previously stated, we have no doubt that
consumers, upon seeing COCONUTTY! on cookies, would
immediately understand that these cookies are coconut
flavored and/or contain coconut.
Two final points deserve comment. While applicant did
not raise this argument, it has not escaped our attention
that applicant’s mark ends with an exclamation point.
However, a slight alteration of a descriptive word will not
turn that descriptive word (“coconutty”) into a non-
descriptive mark. 1 J. McCarthy, McCarthy on Trademarks and
Unfair Competition Section 11:31 at page 11-52 (4th ed.
2000).
Second, if applicant had sought to register COCONUT for
cookies, that term would be held to be at least merely
descriptive, if not generic for, a type of cookie. Even if
the Examining Attorney had not presented the foregoing
substantial body of evidence showing that others have used
the word “coconutty” to describe cookies and other baked
goods, we would still be inclined to view the word
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“coconutty” as but an adjective form of the word “coconut,”
and hence still merely descriptive. In this regard,
Professor McCarthy notes that the addition of such suffixes
as “er” or “-ize” to descriptive words in most cases result
in words which are still descriptive. 2 J. McCarthy,
McCarthy on Trademarks and Unfair Competition Section 11:29
at pages 11-50 to 11-51 (4th ed. 2000).
Decision: The refusal to register is affirmed.
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