ProMark Brands Inc.

Trademark Trial and Appeal Board

Jun 15, 2009

No. 77266099 (T.T.A.B. Jun. 15, 2009)

Mailed: June 15, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
___________

In re ProMark Brands Inc.
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Serial Nos. 77266099 and 77266087
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Carrie L. Kiedrowski and Timothy P. Fraelich of Jones Day
for ProMark Brands Inc.

Kathleen H. Lorenzo, Trademark Examining Attorney, Law
Office 109 (Dan Vavonese, Managing Attorney), for Serial No.
77266099.

Inga Marie Ervin, Trademark Examining Attorney, Law Office
111 (Craig D. Taylor, Managing Attorney), for Serial No.
77266087.
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Before Walters, Bucher and Grendel, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

ProMark Brands Inc. has filed an application to
register on the Principal Register the marks ORE-IDA STEAM
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial Nos. 77266099 and 77266087
2
N’ MASH and STEAM N’ MASH for “processed potatoes,” in
International Class 29.1
The examining attorney for Serial No. 77266099 (ORE-IDA
STEAM N’ MASH) has issued a final requirement for a
disclaimer of the phrase STEAM N’ MASH, under Section 6 of
the Trademark Act, 15 U.S.C. §1056, on the ground that this
phrase is merely descriptive in connection with the
identified goods.
The examining attorney for Serial No. 77266087 (STEAM
N’ MASH) has issued a final refusal to register, under
Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1),
on the ground that applicant’s mark is merely descriptive in
connection with the identified goods.
Applicant has appealed. Both applicant and the
examining attorneys have filed briefs.
In view of the common questions of law and fact, we
have considered the appeals in these two applications
together and we issue a single opinion herein deciding both
appeals.
The issue before us is whether STEAM N’ MASH is merely
descriptive in connection with processed potatoes.
The examining attorneys contend that STEAM N’ MASH
describes how the goods are prepared. Serial No. 77266099

1 Respectively, Serial Nos. 77266099 and 77266087, both of which were
filed August 28, 2007, based on allegations of a bona fide intention to
use each mark in commerce.
Serial Nos. 77266099 and 77266087
3
contains the following definitions of “steam” and “mash”
from The American Heritage Dictionary of the English
Language (4th ed. 2000):
Steam – “to expose to steam, as in cooking.”
Mash – “to convert into a soft pulpy mixture: mashed
potatoes.”
Serial No. 77266087 contains the following definitions
of “steam” and “mash” from the Encarta World English
Dictionary, North American edition, www.encarta.msn.com:
Steam – “to cook something in the steam of boiling water; or
to be cooked in this way.”
Mash – “crush or grind something.”
In both applications, the examining attorneys submitted
excerpts from numerous websites that use the words “steam”
and/or “mash” as part of a description of how to prepare
potatoes or in reference to a machine for steaming potatoes
and other foods, and then suggestions for mashing potatoes.
The record also includes an excerpt from applicant’s website
referring to its STEAM ‘N MASH processed potatoes with text
describing how easy it is to steam and mash its processed
potatoes.
Applicant contends that the examining attorney in each
case improperly dissected the mark, arguing that the
phrase/mark STEAM ‘N MASH when considered in its entirety is
suggestive at most. Applicant submitted copies of third-
Serial Nos. 77266099 and 77266087
4
party registrations for marks that include the word “steam”
and argues that its mark should likewise be registrable.
Applicant also submitted excerpts from Internet websites and
the results of a search using the Google Internet search
engine, all of which refer to potatoes as well as numerous
other foods that can be steamed and mashed. In view of this
evidence, applicant contends that the phrase STEAM ‘N MASH
is not merely descriptive in connection with applicant’s
processed potatoes. Applicant also submitted copies of
other registrations it owns and third-party registrations
that include the word “steam” and/or “mash,” some of which
do not include disclaimers of claims of acquired
distinctiveness, and argues that its mark is likewise
registrable.
The test for determining whether a mark is merely
descriptive is whether it immediately conveys information
concerning a quality, characteristic, function, ingredient,
attribute or feature of the product or service in connection
with which it is used, or intended to be used. In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed.
Cir. 2007); In re Engineering Systems Corp., 2 USPQ2d 1075
(TTAB 1986); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB
1979). It is not necessary, in order to find that a mark is
merely descriptive, that the mark describe each feature of
the goods or services, only that it describe a single,
Serial Nos. 77266099 and 77266087
5
significant quality, feature, etc. In re Venture Lending
Associates, 226 USPQ 285 (TTAB 1985). 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).
We agree with the examining attorney that the phrase
STEAM ‘N MASH merely describes the preparation method for
the identified goods, processed potatoes, as evidenced, in
particular, by applicant’s own website’s description of the
ease of preparation of mashed potatoes using the identified
product. Additional third-party website excerpts in both
applications clearly demonstrate that steaming and mashing
potatoes is a common preparation method. Moreover, we do
not consider the mark in the abstract, but necessarily
consider the identified goods. Thus, the fact that other
foods may also be steamed and mashed is irrelevant.
We remind applicant that each case must be decided on
its own facts and the noted registrations do not compel a
different result herein. In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) [“Even if prior
registrations had some characteristics similar to
Serial Nos. 77266099 and 77266087
6
[applicant’s] application, the USPTO’s allowance of such
prior registrations does not bind the Board or this
court.”]. However, third-party registrations can be used as
a form of a dictionary definition to illustrate how the term
is perceived. In re J.M. Originals Inc., 6 USPQ2d 1393,
1394 (TTAB 1987). In this regard, it is clear from both
these registrations and the Internet evidence that “steam”
and “mash” have commonly understood meanings in connection
with food preparation, particularly potatoes. Moreover, in
the context of the phrase STEAM ‘N MASH, there is no
question that “‘N” is an abbreviation of “and,” and
applicant does not contend otherwise.
In conclusion, when applied to applicant’s goods the
phrase STEAM N’ MASH immediately describes, without
conjecture or speculation, a significant feature or function
of applicant’s goods, as discussed above. Nothing requires
the exercise of imagination, cogitation, mental processing
or gathering of further information in order for purchasers
of and prospective customers for applicant’s goods to
readily perceive the merely descriptive significance of the
phrase STEAM N’ MASH as it pertains to applicant’s goods.
Decision: The refusal under Section 2(e)(1) of the Act
in Serial No. 77266087 is affirmed. The application will be
abandoned in due course.
Serial Nos. 77266099 and 77266087
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The requirement for a disclaimer under Section 6 of the
Act in Serial No. 77266099 is affirmed. If, within twenty
days of the date of this decision, applicant submits a
disclaimer of STEAM ‘N MASH in proper form, this decision
will be set aside and the application will proceed to
publication in due course.