Paramount Baking Co., Inc.v.American Bakery Products, Inc.

Trademark Trial and Appeal Board

Aug 2, 2005

No. 92043525 (T.T.A.B. Aug. 2, 2005)

LMS Mailed: August 2, 2005

Cancellation No. 92043525

Paramount Baking Co., Inc.

v.

American Bakery Products, Inc.

Before Holtzman, Rogers, and Drost,
Administrative Trademark Judges.

BY THE BOARD:

American Bakery Products, Inc. owns U.S. Reg. No.
2181559, issued on August 11, 1998, on the Principal
Register for the mark LAWASH for “flat bread for consumption
by the general public” in International Class 30.1
On July 19, 2004, Paramount Baking Co., Inc., filed a
petition to cancel the registration claiming that the mark
is the phonetic equivalent of “lavash” and that both terms
are generic for flat bread. Petitioner alleges that
respondent’s continued registration of LAWASH has interfered
with its use of the term “lavash” to describe its flat bread
products.

1 Section 8 affidavit filed and accepted on April 14, 2004.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Cancellation No. 92043525
2
Respondent, in its answer, admitted “that ‘lavash’ is a
terminology used for a type of Armenian flat bread” (Answer
¶ 2) and denied the remaining salient allegations.
This case now comes up on petitioner’s motion for
summary judgment, filed March 16, 2005, on the ground that
the registered term is generic. Respondent disagrees and
has challenged petitioner’s standing. Both parties have
submitted substantial evidence in support of their
respective positions, which is discussed herein.
On a motion for summary judgment, the burden is on the
moving party to demonstrate the absence of any genuine issue
of material fact, and that it is entitled to summary
judgment as a matter of law. Fed. R. Civ. P. 56(c). See
also, Celotex Corp. v. Catrett, 477 U.S. 317 (1986). The
evidence of record and any inferences which may be drawn
from the underlying undisputed facts must be viewed in the
light most favorable to the non-moving party. See Olde Tyme
Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542
(Fed. Cir. 1992). In considering the propriety of summary
judgment, the Board may not resolve issues of material fact;
it may only ascertain whether such issues are present. See
Opryland USA, Inc. v. Great American Music Show, Inc., 970
F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1993); and Lloyd’s Food
Products Inc. v. Eli’s Inc., 987 F.2d 766, 25 USPQ2d 2027
(Fed. Cir. 1993).
Cancellation No. 92043525
3
A petition to cancel a registration may be brought by
“any person who believes that he is or will be damaged … by
the registration of a mark on the principal register…” 15
U.S.C. § 1064. In support of its standing, petitioner
submitted copies of cease and desist letters received by its
distributor and a retailer from respondent (exhibits 1 and 2
attached to motion). In addition, while respondent
challenges petitioner’s standing, Mr. Hamood, respondent’s
president, attested to the fact that he found petitioner’s
product in the marketplace under the term “lawash”,
confiscated the sign, and turned it over to his lawyer who
contacted petitioner’s distributor and sent a cease and
desist letter. (Hamood declaration ¶¶’s 7-8). This is
evidence of actual damage to petitioner, not simply the
belief that petitioner will be damaged by the mark as
required by the statute. Further, the statute permits a
party to challenge a mark that has become generic because
continued registration of the mark interferes with the free
flow of the products known by that generic term. See
generally In re Le Sorbet, Inc., 228 USPQ 27, 30-31 (TTAB
1985). Accordingly, petitioner has standing to bring this
action.
As grounds for the action, Section 1064(3) of Title 15,
United States Code, permits a party to petition for
cancellation of a registration for a trademark when the
Cancellation No. 92043525
4
“registered mark becomes the generic name for the goods or
services…for which it is registered….”2 A mark is generic
when members of the relevant public primarily use or
understand the registered term to refer to the category or
class of goods in question. See H. Marvin Ginn Corp. v.
International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228
USPQ 528, 530 (Fed. Cir. 1986).
In support of its motion, petitioner, Paramount Baking
Company, argues that because “lawash” so resembles “lavash,”
the generic term for flat bread, that its phonetic
equivalent is equally generic. Petitioner further argues
that a foreign term, which is generic in its own language,
is also generic in the United States. In support of its
arguments, petitioner submitted3 a dictionary definition of
the term “lavash” from Webster’s Third International
Dictionary4 and numerous excerpts of search engine summaries

2 Such a challenge may be brought at any time, and is not subject
to the five-year limitation set out in 15 U.S.C. § 1064(1).

3 It is noted that two of the exhibits submitted with
petitioner’s motion for summary judgment were not properly
supported by affidavits. Respondent challenged them in a motion
to strike exhibits 8 and 9 (the Internet searches and the
linguistic expert’s report), filed April 8, 2005. In that
petitioner would have been given an opportunity to correct the
error had the motion to strike been decided, petitioner’s
rectification of the error by resubmitting the evidence, properly
supported by affidavits through its reply to the motion, renders
the motion to strike moot, and the exhibits are now properly of
record.

4 “la.vash\’la,vash\n –es [Arm] : a large thin crisp unleavened
wafer with a rough surface from air bubbles.” Webster’s Third New
International Dictionary 1279 (1993).
Cancellation No. 92043525
5
retrieved from the Internet containing references to
"lavash"5 including:
‘Lavash Mountain Bread. Popular through the
Eastern Mediterranean, Iran and the Caucasus… at
www.superluminal.com/cookbook/bread_lavash

“Lavash (Flatbread) – Lavash, a flatbread
sprinkled with sesame seeds…” at
http://lesleycooks.tripond.com/breads/lavash.htm

“RecipeSource: Lavash…lavash prepared in this
fashion is also used for Aram sandwiches…” at
www.recipesource.com/ethnic/africa/middle-
east/turkish/lavash1.html

“Stuffed lavash. Lavash is a kind of unleavened
flat bread eaten in the Caucuses…” at
http://ashycook.topcities.com/snacks/stuffedlavash.htm

“…Round Lavash Soy Pita…” and “…Square Lavash.
Whole Wheat…” at www.gardencityfoods.com

“If you can’t find Lawash bread where you live,
you can use flour tortillas…” at
www.thatsmyhome.com/mainstreetdeli/feta.htm

“Lawash sandwiches. Herb Chicken Lawash Roasted
chicken,… all rolled in lawash bread.” at
www.mcgeadys.com/menu

“spinach lawash, or flour tortillas…” at
www.smartsource.com

“chicken Caesar lawash…” at
www.unionstreetdetroit.com/menus

5 Petitioner’s first submission for the term “lavash” in the AOL
search, dated July 16, 2004, produced 446 matching sites
containing the term “lavash". Petitioner’s second submission,
filed with its reply, was for the term “lawash” from the AOL
search engine, dated July 16, 2004 and April 27, 2004. This
search produced 17 matching sites containing the term “lawash”,
one of which was respondent’s. Through the Google search engine
the search for “lawash” produced 386 references. These Internet
searches are supported by an affidavit from petitioner’s
president, Joseph Hanna, who conducted the searches.

Cancellation No. 92043525
6
In further support of its motion is petitioner’s report
from Dr. Kevork Bardakjian, a professor of Armenian Language
and Literature in the Department of Near Eastern Studies at
the University of Michigan, which states that “lawash” is
the phonetic equivalent of “lavash”, the “w” and “v” being
pronounced the same in Armenian; that older dictionaries
spell the word with the “w”; and Dr. Bardakjian, in his
introduction, defines "lavash" as “a type of bread known to
a number of traditions in the Middle East: Armenian,
Kurdish, Persian, Turkish and perhaps others.”6
Petitioner has also submitted a printout from
respondent’s website, www.lawash.com, showing mixed forms of
use7 of LAWASH, e.g., “Home of Lawash Bread”; “NEW IDEAS TO
WRAP IT UP WITH LAWASH BREAD” including “…layered in a
Original White Lawash”; “Garden Spinach Lawash”; “Wheat
Lawash”; or “Sun Dried Tomato Lawash” and describing it as
an “Arabic Style Flat Bread” and that “[t]he lawash bread is
available in several flavors, White, Whole Wheat, Sun Dried
Tomato and Garden Spinach”.
Finally, petitioner submitted excerpts from the
discovery deposition of respondent’s president, Mr. Allen

6 This statement is consistent with the articles respondent
submitted through the declaration of Dolores Tenniswood, infra,
discussing the history of flatbread.

7 The use appears both with and without initial capitalization,
as reproduced herein.

Cancellation No. 92043525
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Hamood, wherein Mr. Hamood testifies that when he and his
partner purchased American Bakery in 1990, the prior name8
was “Lavwash” from which they dropped the “v” to make it
easier to pronounce (p.7, l.11-12).9
Contradicting these arguments and in response to
petitioner's motion, respondent argues that the Armenian
lavash cracker bread is a different product from
respondent’s; that respondent’s customers, namely the
distributors and thereby the restaurants and catering
businesses to which its product is supplied, refer to
respondent’s bread as “the LAWASH brand flat bread” and they
recognize it as coming from respondent;10 that while
restaurants have started to specialize in pita or flat bread
sandwiches and have used respondent’s term “lawash” to
identify the sandwiches, such use does not make it a common
descriptive term (citing In re Montrachet S.A., 878 F.2d
375, 11 USPQ2d 1393 (Fed. Cir. 1989)); and that the two
terms are not phonetic equivalents, but are spelled and

8 There are conflicting answers as to whether this was the name
of the business Mr. Hamood purchased from the bankruptcy court or
the product that had been sold there. (See deposition at p.7, ll.
11-12; p.8, ll. 21-23; and p.9, ll. 8-13).

9 Mr. Hamood also states that he was born in the United States
and speaks a little Arabic and only heard of “lavash” when he got
into the bread business in 1990 (p.10, ll. 8-13).

10 Declaration of Allen A. Hamood, President of petitioner,
stating he sells his flat breads to distributors (¶ 16), that
those distributors know the term “LAWASH” refers to respondent
(as shown on purchase order forms) and that the menus of the
restaurants that his distributors supply use the term “LAWASH”.
Cancellation No. 92043525
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pronounced differently.11 In support of its arguments,
respondent has submitted the declaration of its president,
Allen Hamood, with supporting exhibits, specifically stating
that a product was sold at the local Sam’s Club with a sign
using the name LAWASH for flat bread (¶¶ 5 & 10); that
receipts showing respondent’s sale of its goods to
distributors, identifying the bread as LAWASH and sample
menus for ultimate consumers of sandwiches sold at retail
showing sandwiches made on “lawash” bread
A representative sample of these uses include:
“all sandwiches are rolled in lawash bread” (Exh. 12,
Deli Café Menu).

“Breads: whole wheat lawash” (Pronto Deli menu);

“Lawash Sandwich Pin Wheels Party Tray” (Market Square
of Birmingham, MI);

“Vegetarian Wrap.. grilled vegetables, cheese, wrapped
in lawash bread…” (Lake Michigan College Conference
Events)

“Assorted Lawash Sandwiches…” (Schramm’s Deli and
Grill).

A declaration was also submitted by Dolores Tenniswood,
a paralegal at respondent’s attorney’s law firm, who
conducted the Internet searches, copies of which were
attached exhibits.12

11 Hamood Declaration at ¶ 11.

12 These exhibits include articles stating that “lavash” is the
national bread of Armenia; providing the history of flat bread
and excerpts from cookbooks, as well as dictionary references
showing the absence of entries for the term “lawash”.
Cancellation No. 92043525
9
In the instant case, while respondent appears to
consider the relevant public to encompass distributors or
retail sellers of its bread, or food service establishments
that use its bread, we note that the identification in
respondent's registration specifically covers "flat bread
for consumption by the general public." Moreover, even if
the identification were not so restricted we would have to
consider members of the relevant public to include ultimate
consumers, be they retail purchasers of bread or retail
purchasers of sandwiches promoted as having been made using
"lavash" or "lawash" bread. See In re Eddie Z’s Blinds &
Drapery Inc., 74 USPQ2d 1037, 1040 (TTAB 2005).
The evidence of record shows, and there can be no
genuine dispute, that the relevant public would view the
term “lavash” as generic for an Armenian bread. (See
respondent’s answer at para. 2). Petitioner’s linguistic
expert further establishes the absence of any genuine issue
that in the Armenian language, the pronunciation of the term
“lawash” and “lavash” is the same, insofar as respondent has
presented no evidence with its response to the motion which
would counter this evidence.13 Yet, even if we accept, for
the sake of argument, that the term "lawash" is pronounced

13 While Mr. Hamood states in his declaration that the terms are
spelled and pronounced differently and that the Arabic dialect
does not recognize or pronounce “W’s” (dec. at ¶ 11), he also
states that he does not speak any foreign languages fluently, but
speaks a little Arabic (deposition at p.6, ll. 1-6).
Cancellation No. 92043525
10
differently than "lavash," the record shows that "lawash"
would also be perceived by the relevant public as a generic
name for a particular type of flat bread.14
The article excerpts and web pages show that both
“lavash” and “lawash” are used as the names or designations
for a class of flat bread, similar to pita.
Respondent’s arguments that its distributors know
“lawash” refers to respondent’s products, as do the
consuming public who see the menus, are unpersuasive. As
noted earlier, the relevant public is, by respondent's own
identification, the "general public" not distributors or
food service establishments. Moreover, the use of both
terms, “lawash” and “lavash”, on the menus and order forms
of record is not presented in a form that would be viewed as
proprietary, in that it is used as a noun to identify a type
of bread, and modified by the flavor. Moreover, there is
broad use by the public beyond the restaurants whose menus
respondent has provided, as demonstrated by the Internet
search results. While respondent argues that its
distributors and the restaurants are using the term as a
trademark, the evidence does not support such use. We also
note that there is no use of the registration symbol or "tm"

14 While Ms. Tenniswood submitted copies of the American Heritage
Dictionary and the Merriam Webster Dictionary as exhibits to her
declaration to show the absence of a definition for “lawash”, we
hereby take judicial notice of those same publications for their
definition of “lavash”.
Cancellation No. 92043525
11
notation in connection with the names of respondent's bread
products on the menus.
Further, respondent’s documentation showing no entry
for “lawash” in the dictionaries, as there is for “lavash”,
and the articles respondent submitted describing the history
of flatbread and its consistent spelling with a “v” is
equally unpersuasive. The fact that this particular
spelling does not appear in a dictionary or that the term
may also be spelled with a "v" instead of a "w" is not
controlling. The evidence, as a whole, clearly demonstrates
that "lawash" is an alternate spelling of "lavash" and that
it is equally generic for the goods.
Petitioner, Paramount Bakery, Inc., had the burden to
show that there is no genuine issue of material fact that
the primary significance of the term “lawash” to the
relevant public is for flat bread. Petitioner has carried
its burden as the moving party and respondent has not
rebutted petitioner's showing.
Accordingly, petitioner’s motion for summary judgment
is hereby granted, and respondent’s Registration No. 2181559
will be cancelled in due course.

.o0o.