O.R.A. Corp.

Trademark Trial and Appeal Board

Sep 30, 2003

No. 76236276 (T.T.A.B. Sep. 30, 2003)

Mailed: September 30, 2003
Paper No. 11
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re O.R.A. Corporation
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Serial No. 76236276
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Bert A. Collison of Duane Morris LLP for O.R.A Corporation.
Christopher Scott Adkins, Trademark Examining Attorney, Law
Office 113 (Odette Bonnet, Managing Attorney).
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Before Seeherman, Hairston and Rogers, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
O.R.A. Corporation seeks to register TACO BITES as a
trademark for “frozen, packaged or prepared Mexican food,
namely rolled corn taquito tortillas with chicken, beef or
cheese fillings.”1
The Trademark Examining Attorney has refused
registration under Section 2(e)(1) of the Trademark Act, 15
1 Serial No. 76236276, filed July 18, 2001, based on an
allegation of a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76236276
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U.S.C. §1052(e)(1), on the ground that applicant’s mark is
merely descriptive of the identified goods.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs. An
oral hearing was not requested.
The Examining Attorney contends that TACO BITES is
merely descriptive of the identified goods because it
immediately conveys information about their nature and
size, namely, that they are bite size tacos. In support of
the refusal, the Examining Attorney submitted excerpts from
The American Heritage Dictionary of the English Language
(Electronic version, Third edition, 1992) wherein “taco” is
defined as “a corn tortilla folded around a corn filling
such as ground meat or cheese;” and “bite” is defined as
“an amount of food taken into the mouth at one time, a
mouthful; and “a light meal or snack.” In addition, he
submitted over twenty third-party registrations of marks
that contain the word BITES for food items. In each
registration, BITES has been disclaimed or the registration
issued under the provisions of Section 2(f) or on the
Supplemental Register. In addition, the Examining Attorney
submitted excerpts of articles taken from the NEXIS
database which contain references to “taco(s)” or “bite
size” in relation to food items. On the basis of this
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evidence, the Examining Attorney concluded that TACO BITES
is merely descriptive of applicant’s identified goods.
Applicant, on the other hand, argues that TACO BITES
merely suggests information about the identified goods;
that it does not describe the goods in any direct or
immediate manner; that applicant’s goods may be consumed in
more than one bite; and that the Examining Attorney has
improperly dissected the mark instead of considering the
mark as a whole.
Further, applicant points to four registrations for
marks that contain the word BITES with no disclaimer
thereof. The registrations are: Registration No.
1,278,190 for the mark SPUD BITES for frozen potatoes, with
a disclaimer of SPUD; Registration No. 1,399,736 for the
mark BAGEL BITES for frozen bagels with various toppings,
with a disclaimer of BAGEL; Registration No. 2,064,331 for
the mark DYNA BITES and design for frozen breaded
vegetables and cheese combinations; and Registration No.
2,322,663 for the mark HOT BITES for prepared appetizers,
with a Section 2(f) claim. Applicant argues that these
registrations support registration of its mark.
The test for determining whether a mark is merely
descriptive is whether the involved term immediately
conveys information concerning a quality, characteristic,
Ser No. 76236276
4
function, ingredient, attribute or feature of the product
or service in connection with which it is used, or intended
to be used. In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215 (CCPA 1978). It is not necessary, in order to
find a mark merely descriptive, that the mark describe each
feature of the goods or services, only that it describe a
single, significant quality or property thereof. In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
Further, it is well established that the determination of
mere descriptiveness must be made not in the abstract or on
the basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the mark is used, and the impact that it is likely to
make on the average purchaser of such goods or services.
In re Recovery, 196 USPQ 830 (TTAB 1977).
Applicant does not dispute that the word TACO is
merely descriptive of applicant’s goods. Also, as
previously indicated, the Examining Attorney submitted a
number of third-party registrations of marks that contain
the word BITES for food items, wherein the word has been
disclaimed, or the registrations issued under the
provisions of Section 2(f) or on the Supplemental Register.
In this regard, we note the following registrations:
Registration No. 2,358,304 for the mark BORDER BITES for
Ser No. 76236276
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Mexican appetizers, with a disclaimer of “BITES”;
Registration No. 2,554,663 for the mark FUDGE BROWNIE DOUGH
BITES and design for candy, cakes, and bakery goods all
containing brownie dough, with a disclaimer of “FUDGE
BROWNIE DOUGH BITES”; Registration No. 2,416,552 for the
mark NANCY’S BAGUETTE BITES for frozen appetizers
consisting primarily of cheese and vegetable topping on
baguette, with a disclaimer of “BAGUETTE BITES”;
Registration No. 2,271,929 for the mark COOKIE DOUGH BITES
and design for candy, cakes, and bakery goods all
containing cookie dough, with a disclaimer of “COOKIE DOUGH
BITES”; Registration No. 2,502,026 for the mark STRUDEL
BITES, issued under Section 2(f), for puff pastry with
fruit and other flavor fillings; Registration No. 2,254,562
for the mark JALAPENO BITES, issued on the Supplemental
Register, for breaded and fried jalapeno pepper; and
Registration No. 1,792,235 for the mark BUFFALO BITES,
issued on the Supplemental Register, for chicken for
consumption on or off the premises. These third-party
registrations support the Examining Attorney’s position
that the word BITES is descriptive in connection with food.
Ser No. 76236276
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The word BITES would be perceived as the equivalent of
“bite size,” and in the absence of any limitations in
applicant’s identification of goods, we must assume that
applicant’s tacos are of varying sizes, including small or
appetizer size such that they may be consumed in a single
mouthful. Thus, we find that the word BITES is descriptive
of applicant’s goods.
When these descriptive words TACO and BITES are joined
in the mark TACO BITES, we find that the mark as a whole is
merely descriptive of applicant’s goods, in that it
immediately conveys to consumers that applicant’s goods are
bite size tacos.
We admit that inconsistent Office handling of
applications to register marks that include the word BITES
is troubling. We note, however, that the mark HOT BITES
issued under the provisions of Section 2(f), which is an
admission of the descriptiveness of this mark. As to the
other three registrations relied on by applicant, we do not
know the circumstances under which they issued. Moreover,
we do note that these registrations issued long before the
third-party registrations put into the record by the
Examining Attorney. As the Examining Attorney has pointed
out, it is entirely possible that a term, i.e., “bites,”
that may not earlier have been viewed as descriptive has
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come into common use and is now recognized as descriptive.
In any event, as the Court noted in In re Nett Designs
Inc., 236 F.3d 1339, 57 USPQ2d 1546, 1566 (Fed. Cir. 2001),
the Board must assess each mark on the record submitted
with the particular application. In this case, the fact
that there are a handful of registrations for marks
containing the word BITES without a disclaimer thereof does
not outweigh the evidence of descriptiveness as shown by
the dictionary definition and the numerous third-party
registrations submitted by the Examining Attorney. See In
re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865, 869
(Fed. Cir. 1985) [“[E]ach application for a registration of
a mark for particular goods must be separately evaluated”].
Decision: The refusal to register under Section
2(e)(1) is affirmed.