Outer Aisle Gourmet, LLC

Trademark Trial and Appeal Board

Apr 9, 2020

88002149 (T.T.A.B. Apr. 9, 2020)

Mailed: April 9, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
In re Outer Aisle Gourmet, LLC
————
Serial Nos. 88002149 and 88002153
————
Brian S. Tamsut and Marina L. Lang of SoCal IP Law Group, LLP,
for Outer Aisle Gourmet, LLC.
Timothy Schimpf, Trademark Examining Attorney, Law Office 130,
John Lincoski, Managing Attorney.
————
Before Taylor, Kuczma, and Pologeorgis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
Outer Aisle Gourmet, LLC (“Applicant”) seeks registration on the Principal
Register of the standard character marks CAULITHINS1 and CAULICHIPS,2 both
for “Vegetable-based snack foods; Vegetables, dried; Prepared meals consisting
primarily of vegetables; Vegetable souffles” in International Class 29.

1 Application Serial No. 88002149, filed on June 15, 2018, based on an allegation of a bona
fide intention to use the mark in commerce under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b).
2 Application Serial No. 88002153, filed on June 15, 2018, based on an allegation of a bona
fide intention to use the mark in commerce under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial Nos. 88002149 and 88002153
2
The Trademark Examining Attorney refused registration of both of Applicant’s
marks under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the
ground that the marks are merely descriptive of the goods identified in Applicant’s
applications.
When the refusals were made final, Applicant appealed both refusals. The appeals
are fully briefed. For the reasons explained below, we affirm the refusals to register.3
I. Appeals Consolidated
These appeals involve common questions of law and fact and the records are
substantially similar. Accordingly, we consolidate and decide each appeal in this
single decision. See In re Binion, 93 USPQ2d 1531, 1533 (TTAB 2009); TRADEMARK
TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 1214 (2019).
II. Mere Descriptiveness – Applicable Law
A mark is merely descriptive of goods or services within the meaning of Section
2(e)(1) of the Trademark Act if it conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the goods or services. In re
Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir.
2012); see also In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Whether
a mark is merely descriptive is determined in relation to the goods or services for
which registration is sought and the context in which the mark is used, not in the

3 Unless otherwise specified, all TTABVUE and Trademark Status & Document Retrieval
(“TSDR”) citations reference the docket and electronic file database for Application Serial No.
88002149 for the mark CAULITHINS. All citations to the TSDR database are to the
downloadable .PDF version of the documents.
Serial Nos. 88002149 and 88002153
3
abstract or on the basis of guesswork. In re Abcor Dev. Corp., 588 F.2d 811, 200
USPQ2d 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002).
In other words, we evaluate whether someone who knows what the goods or services
are will understand the mark to convey information about them. DuoProSS Meditech
Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir.
2012). A mark need not immediately convey an idea of each and every specific feature
of the goods or services in order to be considered merely descriptive; it is enough if it
describes one significant attribute, function or property of the goods or services. See
In re Gyulay, 3 USPQ2d at 1010; In re H.U.D.D.L.E., 216 USPQ 358, 359 (TTAB
1982); In re MBAssociates, 180 USPQ 338, 339 (TTAB 1973). “If a mark is descriptive
of any of the [goods] or services in a class for which registration is sought, it is proper
to refuse registration as to the entire class.” Chamber of Commerce of the U.S., 102
USPQ2d at 1219; In re Positec Grp. Ltd., 108 USPQ2d 1161, 1171 (TTAB 2013) (“If
the Board affirms a refusal of an entire class based on the descriptiveness of the mark
for one or more goods in the class, then the entire class will fail.”).
When two or more merely descriptive terms are combined, the determination of
whether the combined mark is also merely descriptive turns on whether the
combination of terms evokes a non-descriptive commercial impression. If each
component retains its merely descriptive significance in relation to the goods or
services, the combination results in a composite that is itself merely descriptive. In
re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004)
(quoting Estate of P.D. Beckwith, Inc. v. Commr., 252 U.S. 538, 543 (1920)); see also
Serial Nos. 88002149 and 88002153
4
In re Tower Tech, Inc., 64 USPQ2d 1314, 1318 (TTAB 2002) (SMARTTOWER merely
descriptive of commercial and industrial cooling towers); In re Sun Microsystems Inc.,
59 USPQ2d 1084, 1087 (TTAB 2001) (AGENTBEANS merely descriptive of computer
programs for use in developing and deploying application programs).
On the other hand, a mark comprising a combination of merely descriptive
components is registrable if the combination of terms creates a unitary mark with a
non-descriptive meaning, or if the composite has an incongruous meaning as applied
to the goods or services. See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382
(CCPA 1968) (SUGAR & SPICE for “bakery products”); In re Shutts, 217 USPQ 363,
365 (TTAB 1983) (SNO-RAKE for “a snow removal hand tool having a handle with a
snow-removing head at one end, the head being of solid uninterrupted construction
without prongs”). In this regard, “incongruity is one of the accepted guideposts in the
evolved set of legal principles for discriminating the suggestive from the descriptive
mark.” Shutts, 217 USPQ at 365; see also In re Tennis in the Round, Inc., 199 USPQ
496, 498 (TTAB 1978) (the association of applicant’s mark TENNIS IN THE ROUND
with the phrase “theater-in-the-round” creates an incongruity because applicant’s
services do not involve a tennis court in the middle of an auditorium). Thus, we must
consider the issue of descriptiveness by looking at Applicant’s marks in their entirety.
In determining how the relevant consuming public perceives Applicant’s marks in
connection with its identified goods, we may consider any competent source, including
websites and webpages, newspaper articles and publications, and Applicant’s own
advertising material and explanatory text. See In re N.C. Lottery, 866 F.3d 1363, 123
Serial Nos. 88002149 and 88002153
5
USPQ2d 1707, 1709-10 (Fed. Cir. 2017); In re Nett Designs, Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001) (citing In re Bed & Breakfast Registry, 791 F.2d
157, 229 USPQ 818, 819 (Fed. Cir. 1986)); TRADEMARK MANUAL OF EXAMINING
PROCEDURE (“TMEP”) §1209.01(b) (October 2018).
III. Arguments and Evidence
In support of the Section 2(e)(1) refusals, the Examining Attorney submitted the
dictionary definitions of the terms “cauliflower,” “thin,” and “chip,” as set forth below:
• “cauliflower” is defined as “a cabbage of a variety which bears a large
immature flower head of small creamy-white flower buds.”4

• “thin” is defined as “of little thickness or depth” and “having
relatively little extent from one surface or side to the opposite; not
thick.”5

• “chip” is defined, in part, as “a thin slice of food.”6

Additionally, the Examining Attorney submitted evidence demonstrating that
cauliflower is a common ingredient in vegetable-based snack foods.7 For example:
• Sea Salt Cauliflower Crackers made by From the Ground Up are
crackers with cauliflower as one of the main ingredients.
• Probiotic Cauliflower Puffs made by Vegan Rob’s are a puffed snack
made from cauliflower.
• Cali’flour Foods Cauliflower Thins are crackers made from cauliflower.
• Gaea Cauliflower Snack crackers made from cauliflower.
• Hippie Snacks Cauliflower Crips are chips made from cauliflower.

4 October 5, 2018 Office Action, TSDR p. 13 (accessed from www.oxfordictionaries.com on
October 3, 2018).
5 Id. at TSDR p. 21 (accessed from www.oxfordictionaries.com on October 5, 2018).
6 Application Serial No. 88002153, October 5, 2018 Office Action, TSDR p. 13 (accessed from
www.oxfordictionaries.com on October 3, 2018).
7 October 5, 2018 Office Action, TSDR pp. 7 and 11; May 3, 2019 Final Office Action, TSDR
pp. 11-13, 19, 35-44, 65-72, and 117-120.
Serial Nos. 88002149 and 88002153
6
• Pop Corners Veggie Crisps are a snack made from cauliflower.
• Veggie Rings Cauliflower, Beans & Onion are a snack made with
cauliflower.

The Examining Attorney also submitted evidence showing that cauliflower is a
common ingredient in recipes for snack foods, including chips, as set forth below:8
• Delicious Living has a “roasted cauliflower chips” recipe made from
cauliflower.
• Low Carb Diem has a recipe for “Crispy Cauli Parm Chips” which is
a chip made from cauliflower and Parmesan cheese.
• Yummly has a recipe for “Cauliflower Ranch Chips” made from
cauliflower and Parmesan cheese.

In addition, the Examining Attorney submitted evidence demonstrating that, in
the context of vegetable snack foods and prepared vegetable meals, the wording
“cauli” is commonly used by manufacturers of such goods as an abbreviation for
“cauliflower.”9 For example:
• Cauli Rice and Caulipower Cauliflower Pizza Curst are prepared
foods that use “cauli” to describe cauliflower as an ingredient.

• Crispy Cauli Parm Chips which are chips made from cauliflower and
parmesan cheese.

• Reboot with Joe has a recipe for “Baked Cauli-Turmeric Poppers”
made from cauliflower.

• Delish has a recipe for “Bacon Ranch Cauli Bread” made with
cauliflower.

• Nibbles & Feasts lists a recipe for Purple Parmesan Cauli-Tots made
with cauliflower.

• Sarah Remmer has a recipe for Cauli Tots made with cauliflower.

8 October 5, 2018 Office Action, TSDR pp. 8-9 and 12.
9 October 5, 2018 Office Action, TSDR pp. 14-20; May 3, 2019 Final Office Action, TSDR pp.
45-64, 73-116, 123-136.
Serial Nos. 88002149 and 88002153
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• Shawn Mynar has a recipe for Cauli Hummus made with cauliflower
as an ingredient.

• SlimFast has a recipe for Cauli Cheddar Biscuits made, in part, with
cauliflower.

• Wiffed Stuffed has a recipe for Loaded Twice Backed Faus-tato with
Cauli and Avocado.

• The Guardian published a series of a cauliflower recipes under the
title Cauli Gosh.

The Examining Attorney also submitted evidence demonstrating that the terms
“thins” and “chips,” in the context of snack foods, are commonly used terms to
describe the physical characteristics or attributes of such snack foods.10 For example:
• Mary’s Gone Crackers unveiled a new Thins line made with a gluten-free
flour blend.
• Open Road Snacks introduced Sinfully Thin popcorn, a lower-guilt
alternative to popcorn, in blue corn and herbs and spices flavors.
• Ritz offers Ritz Crisp & Thins snack food.
• Mrs. Thinster’s produces “Cookie Thins” that are narrow cookies.
• Nabisco produces “Rice Thins” which are narrow rice crackers.
• Kashi produces Red Sea Salt Teff Thins and Lemon Chickpea SnackThins
which are a grain based narrow cracker.
• Blue Diamond produces “Nut-Thins" that are baked rice crackers made with
almonds.
• Nabisco offers Vegetable Thins which are crackers made with vegetables as
ingredients.

• Terra manufactures a chip made from the vegetable taro.
• The Daily Crave manufactures chips made from lentils.
• Forager Project manufactures a chip from kale.
• Good Health manufactures Veggie Chips with ingredients including
tomatoes, spinach, beets, broccoli and carrots.
• Nice! Exotic Blend Root Vegetable Chips are a blend of sweet potatoes,
batata, parsnips and taro roots.

10 October 5, 2018 Office Action, TSDR pp. 24-27; May 3, 2019 Final Office Action, TSDR pp.
10-18, 23-35, 137-145. Application Serial No. 88002153 for the mark CAULICHIPS, May 3,
2019 Final Office Action, TSDR pp. 9-17, 22, 26, 141, 146-149.
Serial Nos. 88002149 and 88002153
8
• Kiwa Vegetable Mix Chips is variety of Plantain, beet root, parsnip, cassava,
and sweet potato.
• Simple Truth Exotic Vegetable Chips are made from root vegetables.
The Examining Attorney also made of record copies of third-party registrations
where the terms CAULI and CHIPS are disclaimed or are registered on the
Supplemental Register.11 The third-party registrations are identified below:
• Registration No. 4766089 for the standard character mark CAULI
RICE registered on the Supplemental Register for “Frozen
vegetables; Preserved, dried and cooked vegetables; Processed
vegetables”;

• Registration No. 5178262 for the standard character mark CAULI
SMASHERS (CAULI disclaimed) on the Principal Register for
“Frozen vegetables; processed cauliflower; vegetables, namely,
frozen cauliflower”; and

• Registration No. 5415791 for the composite mark CAULI-CRUST
GLUTEN FREE and design (CAULI-CRUST GLUTEN FREE
disclaimed) on the Principal Register for “prepared gluten free pizza
crust.”

• Registration No. 4791581 for the mark KELPIE CHIPS and design
(CHIPS disclaimed) on the Principal Register for “vegetable based
snack foods.”

• Registration No.4465811 for the standard character mark BIBI
KALE CHIPS (KALE CHIPS disclaimed) on the Principal Register
for “vegetable based snack foods.”

• Registration No. 5386807 for the standard character mark YOGA
CHIPS (CHIPS disclaimed) on the Principal Register for “vegetable
based snack foods.”

• Registration No. 5318491 for the mark UGLIES D CHIPS (CHIPS
disclaimed) on the Principal Register for, among other things,
“vegetable-based snack foods.”

11 October 5, 2018 Office Action, TSDR pp. 179-183. Application Serial No. 8802153 for the
mark CAULICHIPS, April 30, 2019 Final Office Action, TSDR pp. 150-176.
Serial Nos. 88002149 and 88002153
9
• Registration No. 4765326 for the mark JIC CHIPS (CHIPS
disclaimed) on the Principal Register for “vegetable-based snack
foods.”

Finally, pursuant to the Examining Attorney’s information request under
Trademark Rule 2.61(b), 37 C.F.R. § 2.61(b), Applicant admitted that cauliflower is
an ingredient of its identified goods.12 Further, Applicant’s own website, as
reproduced below, predominantly highlights that one of the main ingredients of its
goods is cauliflower.13

12 April 5, 2019 Response to Office Action, TSDR p. 12.
13 May 3, 2019 Final Office Action, TSDR pp. 151-155.
Serial Nos. 88002149 and 88002153
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Based on the foregoing evidence, the Examining Attorney contends that when
relevant consumers are confronted with Applicant’s snack food goods made with
cauliflower as the featured ingredient, they will immediately understand that the
term CAULI in the applied-for marks is the abbreviated form of cauliflower as that
is the main ingredient of the goods.14 Additionally, the Examining Attorney
maintains that relevant consumers would also understand the terms “thins” and
“chips” to describe the physical form of Applicant’s snack foods.15 The Examining

14 Examining Attorney’s Brief, pp. 8-9, 6 TTABVUE 8-9.
15 Id. at pp. 9-10, 6 TTABVUE 9-10; Application Serial No. 88002153 for the mark
CAULICHIPS, Examining Attorney’s Brief, pp. 8, 6 TTABVUE 8.
Serial Nos. 88002149 and 88002153
11
Attorney then concludes that Applicant’s CAULITHINS and CAULICHIPS marks,
when viewed in their entireties, are merely descriptive of the identified goods.
In challenging the refusal, Applicant argues that it is entitled to protection of its
applied-for CAULITHINS and CAULICHIPS marks because they consist of existing
terms used in an uncharacteristic way and, therefore, the marks are fanciful,
arbitrary, or suggestive.16 Moreover, Applicant maintains that the evidence of record
does not demonstrate that wording “cauli” is generally understood as an abbreviation
for cauliflower.17 More specifically, Applicant contends that the Examining Attorney
only cites to very recent advertisements and blog posts and, therefore, these recently
dated advertisements demonstrate that the term “cauli” is merely suggestive. Finally,
Applicant cites to various Board decisions wherein the Board found the subject marks
were not merely descriptive of the goods at issue.18 See, e.g., In re Realistic Co., 440
F.2d 1393, 169 USPQ 610 (CCPA 1971) (finding that the mark CURV is not merely
descriptive of curling products); Baroness Small Estates, Inc. v. Am. Wine Trade, Inc.,
104 USPQ2d 1224 (TTAB 2012) (Board held that CMS was not substantially
synonymous with the grape varietals cabernet, merlot, and syrah and therefore not
merely descriptive for wine); In re Ray J. McDermott and Co., Inc., 170 USPQ 524
(TTAB 1971) (the mark SWIVEL-TOP for use on rotating tops on fuel transfer
mooring buoys was not merely descriptive, but rather suggestive of the goods); Ex

16 Applicant’s Appeal Brief, p. 1, 4 TTABVUE 2.
17 Id. at pp 1-2, 4 TTABVUE 2-3.
18 Id. at 2-4, 4 TTABVUE 3-5.
Serial Nos. 88002149 and 88002153
12
parte Great West Lubricants, Inc., 118 USPQ 169 (Comm’r Pat. 1958) (finding that
the mark TUBE-O-LUBE used on tubes of lubricating grease not descriptive but
suggestive).
IV. Analysis
We are not persuaded by Applicant’s arguments. Applicant’s contention that the
term “cauli” is not a recognized abbreviation of the word “cauliflower” is belied by the
evidence of record. A mark consisting of an abbreviation will be considered
substantially synonymous with descriptive wording if:
(1) the applied-for mark is an abbreviation for specific wording;

(2) the specific wording is merely descriptive of applicant’s goods; and

(3) a relevant consumer viewing the abbreviation in connection with
applicant’s goods will recognize it as the equivalent of the merely
descriptive wording it represents.

See In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1715-16 (TTAB 2011) (citing In re
Harco Corp., 220 USPQ 1075, 1076 (TTAB 1984)); TMEP§1209.03(h).
Here, the above-identified three-prong test as to whether an abbreviation will be
considered substantially synonymous with descriptive wording has been satisfied.
Applicant has admitted that a main ingredient of its identified goods is cauliflower.
Further, the evidence of record clearly demonstrates that manufacturers of and
persons who create recipes for snack products commonly use the abbreviation “cauli”
to mean cauliflower. Finally, based on the evidence, we find that relevant consumers
of vegetable-based snack foods would understand the term “cauli” to refer to
cauliflower when such term is used in advertising and on labeling of such goods.
Serial Nos. 88002149 and 88002153
13
Moreover, that the Examining Attorney submitted recent advertisements and
blogs posts does not diminish the probative value of such evidence. There is no rule
that terms have to be descriptive for a lengthy period of time. Trademark rights are
not static, and eligibility for registration must be determined on the basis of the
facts and evidence in the record at the time registration is sought, which includes
during examination and any related appeal. In re Chippendales USA Inc., 622
F.3d 1346, 1354, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010); In re Morton-Norwich
Prods., Inc., 671 F.2d 1332, 1344, 213 USPQ 9, 18 (CCPA 1982); In re
Thunderbird Prods. Corp., 406 F.2d 1389, 1391, 160 USPQ 730, 732 (CCPA
1969). As Applicant states, the evidence of record is what is currently in the
marketplace and that evidence establishes that CAULI is commonly used as an
abbreviation for cauliflower for the types of goods Applicant has identified.
Contrary to Applicant’s assertions, the fact that the evidence of record is recent
strengthens the Section 2(e)(1) refusal.
We further note that Applicant does not contest the Examining Attorney’s
argument that the terms “thins” and “chips” are merely descriptive of Applicant’s
identified goods. Notwithstanding, the evidence of record plainly shows that such
terms are, at a minimum, merely descriptive of the physical characteristics of
Applicant’s “vegetable-based snack foods.”
Moreover, the third-party registration evidence submitted by the Examining
Attorney where marks including the terms CAULI or THINS are disclaimed or
registered on the Supplemental Register further supports the Section 2(e)(1)
Serial Nos. 88002149 and 88002153
14
refusals. Third-party registration evidence featuring goods that are the same or
similar to Applicant’s goods is probative evidence on the issue of descriptiveness
where the relevant word or term is disclaimed, registered under Trademark Act
Section 2(f) based on acquired distinctiveness, or registered on the Supplemental
Register. See In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745
(TTAB 2016) (quoting Inst. Nat’l des Appellations D’Origine v. Vintners Int’l Co.,
958 F.2d 1574, 1581-82, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992)); In re Box
Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006).
Further, to the extent that Applicant is arguing that it is the first user of
the designations CAULITHINS and CAULICHIPS for its identified goods, the
fact that an applicant may be the first or only user of a merely descriptive
designation does not necessarily render a word or term incongruous or
distinctive; as in this case, the evidence shows that CAULITHINS and
CAULICHIPS are merely descriptive of the goods at issue. See In re Fat Boys
Water Sports LLC, 118 USPQ2d 1511, 1514 (TTAB 2016); In re Phoseon Tech.,
Inc., 103 USPQ2d 1822, 1826 (TTAB 2012); TMEP §1209.03(c).
Finally, with regard to Applicant’s reliance on prior Board decisions where the
Board found the subject marks not merely descriptive of the subject goods, we note
that it is well settled that each case must be decided on its own facts and the Board
is not bound by prior decisions involving different records much less different marks.
See Nett Designs, Inc., 57 USPQ2d at 1566. Thus, the question of whether a mark is
merely descriptive is determined based on the evidence of record at the time each
Serial Nos. 88002149 and 88002153
15
registration is sought. In re theDot Commc’ns, 101 USPQ2d 1062, 1064 (TTAB 2011);
TMEP §1209.03(a). Accordingly, since the cases cited by Applicant are for different
marks used in association with different goods and the issue of mere descriptiveness
was based on different records, we find Applicant’s reliance on these cases misplaced.
V. Conclusion
We have carefully considered all arguments and evidence of record. Based on the
evidence of record, we conclude that the designations CAULITHINS and
CAULICHIPS are merely descriptive of Applicant’s identified goods since the marks
merely describe a primary ingredient and the form or physical nature of the goods.
We further find that the combination of the descriptive term “cauli” with the
descriptive terms “thins” or “chips” does not create a non-descriptive or incongruous
meaning. Instead, we find that each component retains its merely descriptive
significance in relation to Applicant’s identified goods, the combination of which
results in a composite mark that is itself merely descriptive.
Decision: The refusals to register Applicant’s CAULITHINS and CAULICHIPS
marks on the Principal Register under Section 2(e)(1) of the Trademark Act on the
ground that the designations, in their entireties, are merely descriptive of Applicant’s
identified goods are affirmed.