Nonu, Inc.

Trademark Trial and Appeal Board

Apr 17, 2001

No. 75650281 (T.T.A.B. Apr. 17, 2001)

4/17/01
Paper No. 8
AFD
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Nonu, Inc.
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Serial No. 75/650,281
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Curtis V. Harr for Nonu, Inc.
Danielle I. Mattessich, Trademark Examining Attorney, Law
Office 101 (Jerry Price, Managing Attorney).
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Before Cissel, Hohein and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
Nonu, Inc. (applicant) filed an application to
register the mark shown below for goods ultimately
identified as “herbal tea for medicinal purposes and herbal
supplements” in International Class 5. The application
(Serial No. 75/650,281) was filed on February 26, 1999, and
applicant claimed a date of first use and a date of first
use in commerce of January 1, 1999.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser. No. 75/650,281
2
In her first Office Action, the Examining Attorney refused
to register applicant’s mark, inter alia, on the ground
that the term is merely descriptive of the goods under
Section 2(e)(1) of the Trademark Act. 15 U.S.C. §
1052(e)(1). Applicant responded by submitting a disclaimer
of the term “nonu” and arguing that the mark as a whole is
registrable. Subsequently, the Examining Attorney made the
descriptive refusal final and applicant filed a notice of
appeal. Applicant and the Examining Attorney have filed
briefs. No oral hearing was requested.
Applicant’s mark consists of the term “nonu,” which
has been disclaimed, in stylized letters, a pictorial
representation of leaves and a background design. Viewed
as whole, the mark is merely descriptive of the goods
identified as “herbal tea for medicinal purposes and herbal
supplements.”
Ser. No. 75/650,281
3
Applicant acknowledges that:
Upon review of the examiner’s office action as well as
further research, it has been found that NONU is a
Samoan word for Morinda Citrifolia, a plant cultivated
in Polynesian cultures [and] in the Caribbean for
centuries and used as a source of food and herbal
medicines. Nonu is the Samoan word for Morinda
Citrifolia, which has also been used for centuries.
In accordance with this finding, the applicant has
amended the registration in order to disclaim any
exclusive right to the use of NONU apart from the mark
as shown.
Response dated December 10, 1999, p.2.
Inasmuch as applicant’s specimens indicate that its
goods are Morinda Citrifolia, the term is merely
descriptive of herbal tea for medicinal purposes and herbal
supplements containing Morinda Citrifolia or nonu.
Despite the descriptiveness of the term “nonu,”
applicant’s mark can still be registered on the Principal
Register with a disclaimer of “nonu” if the mark as a whole
is not merely descriptive. Therefore, the next question is
whether the pictorial representation of the leaves is
merely descriptive of the goods. A mark is merely
descriptive if it immediately conveys knowledge of the
ingredients, qualities, or characteristics of the goods.
In re Gyulay, 820 F.2d 1216, 1217, 3 USPQ2d 1009, 1009
(Fed. Cir. 1987); In re Quik-Print Copy Shops, Inc., 616
F.2d 523, 525, 205 USPQ 505, 507 (CCPA 1980). To be
Ser. No. 75/650,281
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“merely descriptive,” a term need only describe a single
significant quality or property of the goods. Meehanite
Metal Corp. v. International Nickel Co., 262 F.2d 806, 807,
120 USPQ 293, 294 (CCPA 1959). The descriptiveness of a
mark is not considered in the abstract, but in relation to
the particular goods or services for which registration is
sought. In re Abcor Development Corp., 588 F.2d 811, 814,
200 USPQ 215, 218 (CCPA 1978).
“It is, of course, true that a design consisting
merely or essentially of a pictorial representation of the
goods on which it is used is descriptive, and is not a
valid trademark, but such a representation may be a good
trademark if combined with arbitrary features capable of
indicating origin.” In re Singer Mfg. Co., 225 F.2d 939,
118 USPQ 310, 311-12 (CCPA 1958). “[T]o the extent that
applicant’s mark is, in fact, a substantially accurate
representation of any of the involved goods, it may be
descriptive thereof.” In re Henry N. Abrams, Inc., 223
USPQ 832, 835 (TTAB 1984) (Representation of gnomes
descriptive of gnome pendants and earrings). See also In
re Underwater Connections, Inc., 221 USPQ 95 (TTAB 1983)
(Scuba tank descriptive of travel services involving
underwater diving); In re Eight Ball, Inc., 217 USPQ 1183
Ser. No. 75/650,281
5
(TTAB 1983) (eight ball and cue stick descriptive of
billiard parlor services).
If, however, a mark is fanciful or highly stylized,
the picture is not descriptive of the goods. Planters Nut
& Chocolate Co. v. Crown Nut Co., 305 F.2d 916, 134 USPQ
504, 508 (CCPA 1962) (“Of course, no one can be restrained
in the recognized right to illustrate his goods, because
pictures of the goods are purely descriptive of them. The
right to “humanize a peanut in the form of a little man,
used as a trademark, is an entirely different matter”)
(emphasis in original). See also In re Laitram Corp., 194
USPQ 206, 209 (TTAB 1977) (“[W]e are persuaded that what
applicant seeks to register is not an actual representation
of the goods but is rather a fanciful zig-zag design which
seems to suggest and not merely describe the goods
themselves”).
In this case, the Examining Attorney notes that
“applicant does not dispute that the actual leaves in the
design are an accurate representation of nonu leaves.”
Brief at 6. A review of the specimens confirms that the
leaves appear to be a pictorial representation of the
leaves used in making the herbal tea. As such, the leaves
immediately convey a characteristic of the product, i.e.,
that it is herbal tea made from nonu leaves. While
Ser. No. 75/650,281
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applicant argues that “the leaves are situated in a unique,
five-leaf pattern” (Brief at 7), the Examining Attorney
points out that applicant has not submitted any evidence to
demonstrate that the pattern is unique. Nothing in the
record suggests that the leaf pattern is anything other
than what it appears to be, a pictorial representation of
the goods. See Second Office Action, Attachment 1 (Picture
of nonu leaf).
Applicant also argues that the word “nonu” is depicted
in stylized form, however, the stylization is even less
distinctive than the stylization of the mark “BALSAM,”
which was found registrable on the Supplemental Register.
In re Wella Corp., 565 F.2d 143, 196 USPQ 7, 8 (CCPA 1977)
(BALSAM, disclaimed, in stylized letters capable of
indicating origin of appellant’s goods). Here, applicant
seeks registration on the Principal Register. The minor
stylization of the mark does not convert a descriptive term
into a suggestive term.
Finally, applicant’s mark also includes a background
design of a curved arch and dark inlay region. Again, this
minor addition of a background design does not change
descriptive terms into inherently distinctive marks. See
In re Vernors, Inc., 153 USPQ 371 (TTAB 1967) (Scroll
Ser. No. 75/650,281
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design and coloration of mark did not convert unregistrable
term into a registrable term).
To determine whether a mark is merely descriptive, we
must view the mark as a whole. Here, the mark contains the
term “nonu,” which is admittedly descriptive, along with a
pictorial representation of the goods, which is not
arbitrary or stylized. These features immediately convey
to prospective purchasers a feature of the goods in that
they inform purchasers that this herbal tea is made from
nonu leaves. The background design and stylization of the
letters does not change this impression.
Decision: The refusal to register is affirmed.