Peace Mountain Natural Beverages Corp.

Trademark Trial and Appeal Board

Jun 30, 2009

No. 77326673 (T.T.A.B. Jun. 30, 2009)

Mailed: 6/30/09

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Peace Mountain Natural Beverages Corp.
________

Serial No. 77326673
_______

Mario G. Ceste, Esq. for Peace Mountain Natural Beverages
Corp.

Mary D. Munson-Ott, Trademark Examining Attorney, Law
Office 104 (Chris Doninger, Managing Attorney).
_______

Before Quinn, Wellington and Ritchie, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Peace Mountain Natural Beverages Corp. filed, on
November 11, 2007, an intent-to-use application to register
the mark SKINNY CEREAL for “nutriceuticals for use as a
dietary supplement in the form of cereal products and
cereal-based snack foods” in International Class 5, and
“breakfast cereal, snack food, namely, cereal based snack
food, processed cereal-derived food products to be used as
a breakfast cereal, snack food or ingredient for making
food” in International Class 30.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser. No. 77326673
2
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the ground that applicant’s mark, when used
in connection with applicant’s goods, is merely descriptive
thereof.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs. We
affirm.
The examining attorney maintains that the
identification of goods, as worded, is broad enough to
include diet foods in the nature of low-fat, low-calorie,
and sugar-free foods. According to the examining attorney,
the word “skinny” is a slang term meaning “low-fat” and, in
this connection, the examining attorney relied upon a
dictionary definition. The examining attorney also relied
upon a dictionary definition of the word “cereal.” In
further support of the refusal, the examining attorney
submitted excerpts of third-party websites showing the
descriptive use of “skinny” in connection with diet foods
and beverages. Based on the evidence of record, the
examining attorney states that “consumers clearly
understand ‘skinny’ to mean that the goods are lower in
fat, lower in calories, or lower in some other ingredient
Ser. No. 77326673
3
or attribute that has a negative connotation in today’s
weight-conscious society.” (Brief, unnumbered p. 5).
Applicant states that its SKINNY CEREAL mark creates a
new and different commercial impression from that
engendered by the individual words, so that the combination
is registrable. Applicant argues that there is no evidence
in the record to support the examining attorney’s
statements that applicant’s products are “presumably low-
fat or low calorie,” or that the products are for weight
and appetite control. To the contrary, applicant points
out that some weight management programs, such as Atkins,
discourage low-fat and low-calorie products. In any event,
applicant contends, its goods are vitamin-enriched food
supplements having a medicinal effect on human health, not
diet foods. Applicant also argues that the word “skinny”
has multiple meanings and, with respect to the present
mark, “the public cannot determine if applicant’s mark is
indicating a product which is low-fat, just slender,
minimal or a thin product or a product which resembles
skin.” (Brief, p. 3). In this connection, applicant
furnished dictionary definitions of the word “skinny.”
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it
Ser. No. 77326673
4
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. In re Bayer Aktiengesellschaft,
488 F.3d 960, 82 USPQ2d 1828 (TTAB 2007); and In re Abcor
Development, 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). A term need not immediately convey an idea of each
and every specific feature of the applicant’s goods or
services in order to be considered merely descriptive;
rather, it is sufficient that the term describes one
significant attribute, function or property of the goods or
services. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982);
and In re MBAssociates, 180 USPQ 338 (TTAB 1973). Whether
a term is merely descriptive is determined not in the
abstract, but in relation to the goods or services for
which registration is sought, the context in which it is
being used on or in connection with the goods or services,
and the possible significance that the term would have to
the average purchaser of the goods or services because of
the manner of its use. In re Bright-Crest, Ltd., 204 USPQ
591, 593 (TTAB 1979). It is settled that “[t]he question
is not whether someone presented with only the mark could
guess what the goods or services are. Rather, the question
is whether someone who knows what the goods or services are
will understand the mark to convey information about them.”
Ser. No. 77326673
5
In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
The “average” or “ordinary” consumer is the class or
classes of actual or prospective customers of applicant’s
goods or services. In re Omaha National Corporation, 819
F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987).
The examining attorney’s dictionary evidence shows
that the word “skinny” means, inter alia, “very thin; low-
fat: made with skim milk (slang).” The word “cereal” is
defined as “breakfast food: food made from cereal and
eaten especially at breakfast, usually with milk.” Encarta
World English Dictionary (North American ed. 2007). The
dictionary evidence furnished by applicant shows a variety
of meanings of “skinny,” including “very lean or thin;
unusually low or reduced; meager; minimal.”
(www.dictionary.com).
Applicant also submitted a copy of an advertisement
for its product sold under the mark SKINNY WATER. The
advertisement states the following about the product:
“0 calories 0 sugar 0 guilt.”
The record includes the following excerpts retrieved
from the Internet:
Here then are the Top Ten skinny foods
for summer. Let this be your
healthiest (and skinniest) summer
ever!....There you go. The Top Ten
Summer Foods--all 10 of them naturally
Ser. No. 77326673
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skinny foods, packed full of nutrients
to make you healthy, wealthy and wise--
enjoy!
(www.augustafreepress.com)

Skinny Foods
The secret to making any food a skinny
food is in the ingredients...We’ll
teach you tricks that you can use to
cook and eat yourself thin.
7 Age-Fighting Skinny Foods.
Try these recipes based on some of the
Anti-Aging Skinny Foods.
(www.jennifertvshow.com)

[Planning is] an essential process for
preventing hunger...and for always
having healthy, skinny foods on hand.
(www.sugarfreemiracle.com)

Starbucks Latte and Mocha Offerings get
a Skinny Makeover to Help Coffee Lovers
Feel Great in 2008.
Just in time for the New Year,
Starbucks helps customers keep their
resolutions without sacrificing flavor
with the introduction of the “Skinny”
platform, a nonfat Latte made with
sugar-free syrup...The Skinny platform
is one of the ways Starbucks is
committed to meeting customers’ desire
for healthier options in 2008.
(www.nationaldairycouncil.org)

Low Calorie Recipe for Skinny
Enchiladas.
(www.dietbites.com)

Magic Bullet Blender Recipe for Smooth
Skinny Pudding.
There’s a twist to our low calorie, low
fat pudding recipe...
(www.dietbites.com)

6 Skinny Cheeses That Taste Creamy.
[T]here are lots of low-fat
Ser. No. 77326673
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varieties...
(www.shine.yahoo.com)

People tend to feel less guilty when
they indulge in low-fat foods. And
they eat more, even if the “skinny”
versions don’t taste as good as the
originals.
(www.education.com)

Skinny Chicken Spinach Soup.
(www.sparkpeople.com)

Will Starbucks’ “Skinny” lattes help
keep you skinny?
(www.chicagotribune.com)

What are Skinny Mashed Potatoes?
[S]kinny mashed potatoes are made by
substituting nonfat or low-fat milk...
(www.lowfatcooking.about.com)

Ideal as a base for making “Skinny”
(low fat) milk shakes...
(www.frostyboy.com)

Based on the evidence of record, we conclude that
SKINNY CEREAL is merely descriptive of applicant’s cereal
and cereal products. The individual merely descriptive
words retain their descriptive character when combined to
form the entirety of applicant’s mark. The mark
immediately informs prospective customers that applicant’s
cereal and cereal products are low-fat and/or low-calorie,
or otherwise will allow the consumers of applicant’s cereal
and cereal products to achieve or maintain a skinny or thin
body. In applicant’s words, it “has created a family of
healthy lifestyle products for weight and appetite
Ser. No. 77326673
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control.” (Response, June 25, 2008). No imagination is
required to discern this feature and/or purpose of the
goods.
In urging that the refusal be reversed, applicant
points to the existence of its “portfolio” of subsisting
registrations of the following marks: SKINNY WATER
(“WATER” disclaimed)(Reg. No. 2557075 issued April 2, 2002)
for “nutriceuticals for use as a dietary supplement,
nutriceuticals in concentrate form for use as a dietary
supplement; isotonic drinks, isotonic drinks in concentrate
form, drinking water”; SKINNY SHAKE (“SHAKE”
disclaimed)(Reg. No. 2743268 issued July 29, 2003) for
“dietary meal replacement in powder, liquid or concentrate
form”; SKINNY COLA (“COLA” disclaimed)(Reg. No. 2650352
issued November 12, 2002) for “colas”; SKINNY TEA (“TEA”
disclaimed)(Reg. No. 2657057 issued December 3, 2002) for
“tea, namely, tea not made with non-fat milk”; SKINNY JUICE
(“JUICE” disclaimed)(Reg. No. 2657083 issued December 3,
2002) for “nutriceuticals for use as a dietary supplement;
nutriceuticals in concentrate form for use as a dietary
supplement; isotonic drinks; juice; concentrates or powders
used in the preparation of juice drinks”; and SKINNY CAPS
(“CAPS” disclaimed)(Reg. No. 3316575 issued October 23,
2007) for “dietary and nutritional supplements.” Applicant
Ser. No. 77326673
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also has received notices of allowance for its marks SKINNY
SMOOTHIE (“SMOOTHIE” disclaimed)(Ser. No. 77145760, third
extension to file SOU granted) for “nutriceuticals for use
as meal replacements and dietary supplements,
nutriceuticals in ready-to-drink or concentrate form for
use as a dietary supplement, nutritional drink mix for use
as a meal replacement; dairy based beverages, yogurt based
beverages, soy-based beverage used as a milk substitute;
shakes in the form of mixes for making yogurt-based blended
beverages or ready-to-drink yogurt-based blended beverages;
smoothie drinks, or concentrates and powders used in the
preparation of smoothie drinks; soy-based beverages not
being milk substitutes”; and SKINNY JAVA (“JAVA”
disclaimed)(Ser. No. 78734027, fifth extension to file SOU
granted) for “dietary food supplement, made with coffee
products or coffee extracts, namely a liquid or concentrate
containing coffee, coffee flavoring, espresso or caffeine
activated ingredients; nutriceuticals in concentrate or
liquid form, containing coffee, espresso, coffee flavoring
or caffeine, for use as a dietary supplement; ready to
drink soft drinks containing coffee, coffee flavoring,
espresso or caffeine activated ingredients; isotonic drinks
containing coffee, coffee flavoring, espresso or caffeine
activated ingredients; liquid, concentrate or powdered mix
Ser. No. 77326673
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used to make isotonic drinks containing coffee, coffee
flavoring, espresso, or caffeine activated ingredients;
drinking water containing coffee, coffee flavoring,
espresso or caffeine activated ingredients.” In response,
the examining attorney states that “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.” (Brief,
unnumbered p. 8).
As pointed out by the examining attorney, trademark
rights are not static, that is, such rights do not remain
constant over time. As the late Judge Rich observed:
“Rights in this field do not stay put. They are like ocean
beaches; they shift around. Public behavior may affect
them.” Rich, “Trademark Problems As I See Them--
Judiciary,” 52 Trademark Rep. 1183, 1185 (1962). In this
case, we suspect that the use of the word “skinny” for
foods and beverages, as evidenced by the recent descriptive
use in the food and beverage industry in connection with
low-calorie and/or low-fat consumables, has evolved over
time.1 Notwithstanding the status of the word “skinny” in

1 Although not argued by applicant, we do not view the present
refusal to register as an impermissible collateral attack on
applicant’s prior, incontestable registrations. The present mark
and listed goods differ from applicant’s marks and goods set
forth in its prior registrations. It is settled that a
Ser. No. 77326673
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the past, the Internet and dictionary evidence demonstrates
that the term has taken on a merely descriptive meaning
today when used in connection with foods and beverages,
that is, that the food or beverage is low-calorie and/or
low-fat. Or stated somewhat differently, that consumption
of applicant’s cereal and cereal products will assist a
consumer of the goods to achieve or maintain a “skinny” or
thin body.
Moreover, each case must be decided on its own facts.
We are not privy to the files in applicant’s registrations
and applications. In any event, we are not bound by the
prior actions of examining attorneys. See In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001)(“Even if some prior registrations had some
characteristics similar to [applicant’s] application, the
PTO’s allowance of such prior registrations does not bind
the board or this court.”).
We conclude that the designation sought to be
registered by applicant is merely descriptive of

“registered mark is incontestable only in the form registered and
for the goods or services claimed.” See In re Save Venice New
York Inc., 259 F.3d 1346, 59 USPQ2d 1779, 1782 (Fed. Cir. 2001),
quoting In re Merrill Lynch, Pierce, Fenner and Smith Inc., 828
F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987). See also In re
Outdoor Group, 81 USPQ2d 1392, 1398 (TTAB 2006); In re Best
Software, 63 USPQ2d 1109, 1113 (TTAB 2002); and In re BankAmerica
Corp., 231 USPQ 873 (TTAB 1986).
Ser. No. 77326673
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applicant’s goods in each class.
Decision: The refusal to register in each class is
affirmed.