Robbins Industries, Inc.

Trademark Trial and Appeal Board

Apr 3, 2001

No. 75635291 (T.T.A.B. Apr. 3, 2001)

04/03/01 Paper No. 9
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Robbins Industries, Inc.
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Serial No. 75/635,291
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Gregor N. Neff of Kramer Levin Naftalis & Frankel LLP for
Robbins Industries, Inc.
Catherine K. Krebs, Trademark Examining Attorney, Law
Office 108 (David Shallant, Managing Attorney).
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Before Hohein, Chapman and Wendel, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
On February 5, 1999, Robbins Industries, Inc. filed an
application to register the mark VEGGIE VISE on the
Principal Register for “cutting boards” in International
Class 21. Applicant asserted a bona fide intention to use
the mark in commerce.
The Examining Attorney has finally refused
registration under Section 2(e)(1) of the Trademark Act, 15
U.S.C. §1052(e)(1), on the basis that the mark VEGGIE VISE,
when applied to the identified goods of the applicant, is
merely descriptive of them.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/635291
2
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs. Applicant did not
request an oral hearing.
The Examining Attorney contends that the mark VEGGIE
VISE “describes a feature of the goods: a device for
holding vegetables [or meats or fruits] in place while they
are being cut on the cutting board” (brief, p. 3); that the
term “veggie” is a recognized synonym for “vegetable” and a
“vise” is a clamping tool; that VEGGIE VISE has a commonly
understood meaning as applied to cutting boards which
incorporate a means for holding the food in place while it
is cut; and that the mark is not a coined term creating a
unique commercial impression, as argued by applicant.
In support of her refusal to register under Section
2(e)(1), the Examining Attorney submitted the following
materials: (i) dictionary definitions of the words “veggie”
and “vise” and “incongruous”1; (ii) a few third-party
registrations which included disclaimers of the words
“veggie” or “vise”; and (iii) two stories of 23 total
stories found from a search [framed as “vise and (cutting
board)”] of the Nexis database.
1 The Examining Attorney’s request that the Board take judicial
notice of the definition of “incongruous” is granted. See TBMP
§712.01.
Ser. No. 75/635291
3
Applicant contends that the product it is developing
“will not have a vise of any kind, nor will it have
anything which reasonably could be called a vise,” but
rather “it will have multiple tines or prongs” to hold the
food item in place on the cutting board (December 2, 1999
response to Office action, p. 2); that applicant’s product
will not squeeze or clamp the food item, but will hold the
food item by impaling it in the manner that a table fork
holds food; that the mark is alliterative; and that the
mark is whimsical and incongruous because purchasers would
easily understand that the powerful jaws of a vise would
crush vegetables and other food items. Applicant concludes
that based on the alliterative, whimsical and incongruous
nature of the mark, these common terms, viewed together as
a whole, create a unique commercial impression resulting in
a suggestive mark, citing In re Shutts, 217 USPQ 363 (TTAB
1983) (SNO-RAKE held not merely descriptive for a snow
removal hand tool). Finally, applicant contends that the
Nexis evidence submitted by the Examining Attorney refers
to a vise and/or spikes on cutting boards thereby
establishing that the “spikes” hold the food item and the
“vise” holds a bowl; and that there are numerous other
terms (e.g., clamp, spike) which competitors may use to
refer to cutting boards with prongs.
Ser. No. 75/635291
4
It is well settled that “a term is descriptive if it
forthwith conveys an immediate idea of the ingredients,
qualities or characteristics of the goods [or services].”
(Emphasis added). In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 218 (CCPA 1978). Moreover, the
immediate idea must be conveyed with a “degree of
particularity.” In re TMS Corporation of the Americas, 200
USPQ 57, 59 (TTAB 1978); and In re Entenmann’s Inc., 15
USPQ2d 1750, 1751 (TTAB 1990), aff’d, unpub’d, Fed. Cir.
February 13, 1991. As the Court stated in In re Abcor
Development, supra: “Although a mark may be generally
descriptive, if it also functions as an indication of
origin, it is not ‘merely descriptive.’” See also, In re
Quik-Print Copy Shop, Inc., 616 F.2d 523, 205 USPQ2d 505
(CCPA 1980).
Of course, whether a term or phrase 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 those goods or services, and the possible
significance that the term or phrase would have to the
average purchaser of the goods or services because of the
manner of its use. See In re Bright-Crest, Ltd., 204 USPQ
591 (TTAB 1979). See also, In re Consolidated Cigar Co.,
Ser. No. 75/635291
5
35 USPQ2d 1290 (TTAB 1995); and In re Pennzoil Products
Co., 20 USPQ2d 1753 (TTAB 1991).
Viewing this record in its entirety, we find that the
mark VEGGIE VISE, taken as a whole, is not merely
descriptive of applicant’s cutting boards. That is, the
evidence of record does not establish that this mark,
VEGGIE VISE, conveys an immediate idea of a primary feature
of applicant’s goods. The term “vise” in relation to
holding food products (including vegetables) on a cutting
board is whimsical and incongruous. It would be rare, if
not completely illogical, for someone to suggest holding
vegetables (or other food products) in a vise. Hence, the
mark VEGGIE VISE consists of two terms which, when
combined, result in an incongruous meaning. Applicant’s
mark is indeed a juxtaposition of two common words which,
when viewed as a whole, and in relation to the involved
goods (cutting boards), is creative, and thus the mark has
not been shown to be merely descriptive.
The two Nexis stories submitted by the Examining
Attorney (both relating to kitchen tools made to assist
people with mild physical impairments or disabilities) are
unpersuasive for the reasons asserted by applicant, as set
forth above. Moreover, we note that the Examining Attorney
did not submit any evidence demonstrating that the
Ser. No. 75/635291
6
combination of terms “VEGGIE VISE” has been used in a
descriptive sense.
Finally, it has long been acknowledged that there is
often a very narrow line between terms which are merely
descriptive and those which are suggestive, and the
borderline between the two is hardly a clear one. See In
re Atavio Inc., 25 USPQ2d 1361 (TTAB 1992). At the very
least, if doubt exists as to whether a term is merely
descriptive, it is the practice of this Board to resolve
that doubt in favor of the applicant and pass the
application to publication. See In re Gourmet Bakers Inc.,
173 USPQ 565 (TTAB 1972). In this way, anyone who believes
that the mark is, in fact, descriptive, may oppose and
present evidence on this issue to the Board.2
Decision: The refusal to register under Section
2(e)(1) is reversed.
2 In addition, we note that while this application is based on
applicant’s assertion of a bona fide intention to use the mark in
commerce, there is no evidence to show how applicant plans to use
the involved mark. Specifically, there are no specimens of
record, and applicant declined the Examining Attorney’s request
for a photograph or advertising showing applicant’s goods based
on applicant’s continuing development of its product and possible
patentability of certain features thereof. If applicant’s
specimens of use demonstrate descriptive use of this mark, the
Examining Attorney may wish to re-examine the application with
respect to this issue.