Schwan's IP LLC

Trademark Trial and Appeal Board

Apr 25, 2007

No. 78527306 (T.T.A.B. Apr. 25, 2007)

Mailed:
April 25, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Schwan’s IP LLC
________

Serial No. 78527306
_______

Danielle I. Mattessich of Merchant & Gould P.C. for
Schwan’s IP LLC.

Esther Belenker, Trademark Examining Attorney, Law Office
111 (Craig D. Taylor, Managing Attorney).
_______

Before Bucher, Zervas and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Schwan’s IP LLC filed an intent-to-use application for
the mark FRESCH, in standard character format, for “frozen
pizza; appetizers, namely, hand-held bread puffs and bread
bowls primarily containing meat and/or vegetables and/or
cheese, with or without tomato sauce; bruschetta; flatbread
with or without dipping sauce,” as amended.1 Registration
was refused on the ground that FRESCH is primarily merely a
surname in accordance with Section 2(e)(4) of the Lanham

1 Application Serial No. 78527306, filed December 6, 2004.
THIS OPINION IS NOT
A PRECEDENT OF THE T.T.A.B.
Serial No. 78527306
2
Act, 15 U.S.C. §1052(e)(4). When the refusal was made
final, applicant filed a notice of appeal. The refusal has
been fully briefed. We reverse.
In support of the refusal, the examining attorney
submitted the following evidence:
1. A printout from one of the LexisNexis databases
comprising a nationwide directory of names
displaying 131 residential listings of Fresch as
a surname;2 and,

2. Excerpts from 104 stories deemed “representative”
by the examining attorney where the term “Fresch”
is used as a surname of 895 stories located in
another LexisNexis database.

In responding to the surname refusal, applicant
submitted the following evidence:
1. A web page showing that Fresch is a location in
Austria;3

2. A web page showing that Fresch Hazel is a
location in Belgium;4

3. A web page promoting Fresch Shower & Bath Soap;

4. A web page promoting Fresch Iranian caviar;

5. A web page promoting the Fresch collection of
rugs;

2 The printout contains 136 listings, but three listings appeared
in duplicate and one in triplicate.

3 In order to demonstrate the minor geographical significance of
this entry, the examining attorney countered with a web page
about Fresch, Austria, listing its population as 26,233.

4 In order to demonstrate the minor geographical significance of
this entry, the examining attorney countered with a web page
about Fresch Hazel, Belgium, listing its population as 4,225.
Serial No. 78527306
3
6. A web page promoting Fresch Designs, a company
specializing in website design for businesses
(www.freschdesigns.com);

7. Copies of applicant’s federal registrations:
Registration Nos. 2,114,646; 2,173,137;
2,307,630; 2,949,357; 3,046,569; 3,027,271; and
3,006,663 for various FRESCHETTA trademarks for
pizza and food products and related services;

8. A definition from the Mennonite Low German
Dictionary listing “fresh” as the definition of
“fresch”;

9. A Wikipedia entry regarding the “Fresch” method
of synchronization of movement and language for
the promotion of LRS children;

10. Excerpts from the Cosmoworlds Europe Style Portal
(www.cosmoworlds.com) and the Tendence Lifestyle
website (http://tendence-
lifestyle.messefrankfurt.com) regarding the
August, 2006 “international lifestyle and
consumer-goods fair” presenting new works from
German and international designers. The event
was held in Frankfurt, Germany. In that
document, “Fresch” is described as a combination
of the German word “frech” meaning bold, daring,
or innovative, and the English word “fresh.”
Although these are references to a festival in
Frankfurt, Germany, the website is accessible to
U.S. citizens and it shows “Fresch” as a coined
word; and,

11. Four (4) excerpts from publications retrieved
from an unidentified database:5

A. Cabinet Maker (November 25, 2005) references
the “Fresch” exhibition in Frankfurt,
Germany;

B. BusinessWorld (March 31, 2005) references
“two fresch scents”;

5 The examining attorney did not object to these stories despite
the fact that the database is not identified. Accordingly, we
accept the stories for whatever probative value they may have.
Serial No. 78527306
4
C. Apollo (March 1, 2005) references “fresch”
in a quotation in Latin: “in regno
Hispaniae degentem pictorem egregium in
picture dicta vulgariter sobre lo fresch”;

D. Fairfield County Woman (December, 2001)
references the website fresch.com.

Applicant also submitted the following evidence which
has little probative value for the reasons stated below:
1. A web page from a German website in German with
no English translation (www.weserserver.de).
Because we are concerned with the meaning of the
mark in the United States, a German website in
German has no probative value in proving the
meaning of the term to consumers in the United
States. In re Isabella Fiore LLC, 75 USPQ2d
1564, 1568 (TTAB 2005);

2. A web page from a website promoting restaurants
in Tenerife, one of the Canary Islands
(www.canary-holiday.com). The web page describes
one restaurant’s fare as “fresch fisch, tapas.”
This web page, while substantially in English,
uses the word “fresch” in a foreign language
phrase to describe the food served in a
restaurant located outside the United States.
Because the reference is in a foreign language
regarding food served in a restaurant outside of
the United States, it has very little relevance,
if any, in assessing how consumers in the United
States perceive the term “Fresch”;

3. A web page from a domain name registrar in Palau,
an island nation in the Pacific (www.fresch.pw).
Because the web page is from a foreign website
and there is no evidence that internet users in
the United States would access this website, this
web page has no probative value in determining
how United States consumers will perceive the
word “Fresch”;

4. A web page (http://businessphilosophy.com) with
the following phrase: “We offer BG/MTNS Issue
Fresch Cut With POF: Looking For Business
Serial No. 78527306
5
Partners Nantucket Campfire.” This web page is
essentially incomprehensible. Also, because
“Cut” follows “Fresch,” it appears that the
author intended to use the phrase “fresh cut,”
and that “Fresch” is a typographical error;

5. An excerpt from an eBay advertisement posted from
Brighton, West Sussex in the United Kingdom for
“antique?pair of ice skates FRESCH!” Since
someone from the United Kingdom submitted this
eBay entry, it evidences the use by someone other
than a person located in the United States. On
the other hand, consumers in the United States
access the eBay website and may encounter this
listing. Giving applicant the benefit of the
doubt, a United States consumer would likely
perceive this use of FRESCH as a typographical
error of the word “fresh”; and,

6. A copy of Registration No. 2,276,974 for the mark
FRESCH for “mint candy, namely, breath mints.”
Each application for registration must be decided
on its own merits based on the evidence of
record. The Board may not delegate its authority
and duty to decide a case to an examining
attorney on a different record. Moreover, we are
not privy to the record in the files of the
registered mark. AMF Inc. v. American Leisure
Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269-
270 (CCPA 1973); In re Benthin Management, Inc.,
37 USPQ2d 1332, 1333 (TTAB 1995); In re Sunmarks
Inc., 32 USPQ2d 1470, 1472 (TTAB 1994).

Finally, the examining attorney has asked us to take
judicial notice of four (4) pages from online German-
English dictionaries showing that there is no English
translation for the word “Fresch,” as well as a copy of a
“report” from the Scientific and Technical Information
Serial No. 78527306
6
Center at the U.S. Patent and Trademark Office.6 These
dictionary pages were submitted for the first time with the
Examining Attorney’s Brief. In its Reply Brief, applicant
objected to the dictionary definitions because they were
from online sources, and applicant did not have the
opportunity to check the reliability of the evidence and
offer rebuttal evidence. Applicant’s objection is well
taken.
As a general rule, the Board may take judicial notice
of dictionary definitions. University of Notre Dame du Lac
v. J. C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
See also TBMP §704.12 (2nd ed. rev. 2004). However, when
the definitions have been retrieved from online sources,
there must be some evidence that the sources are readily
verifiable, reliable, and available in print publications.
For example, we will take judicial notice of information
from the Encarta Dictionary even though it is not available
in print format because it is a widely known reference that
is readily available online and in a CD-Rom format. In re
Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006); In re

6 The Scientific and Technical Information Center at the Patent
and Trademark Office sent the examining attorney an e-mail
regarding the lack of a definition for the word “Fresch.”
Serial No. 78527306
7
Total Quality Group Inc., 51 USPQ2d 1474, 1476 (TTAB 1999).
While the information in the online dictionaries are
readily available online and verifiable as evidenced by the
URL on the printouts, there is no evidence regarding their
availability in print or other acceptable alternatives, or
their reliability. With regard to the “report” from the
Scientific and Technical Information Center at the Patent
and Trademark Office, this is not the type of evidence for
which we may take judicial notice. Further, in both
instances, applicant has not had an opportunity to rebut
this evidence.
More troubling, however, is why the examining attorney
waited until her appeal brief to submit this evidence. The
Trademark Manual of Examining Procedure specifically
identifies “dictionary definitions of the term and evidence
from dictionaries showing no definition of the term” as
evidence that may be relevant in determining trademark
significance. TMEP §§1211.02(a) and 1211.02(b)(v).
Accordingly, such evidence should be entered into the
record when the examining attorney first refuses
registration under Section 2(e)(4). Nevertheless, the
examining attorney did not submit this evidence in her
initial refusal, final refusal, or responses to two (2)
requests for reconsideration.
Serial No. 78527306
8
Accordingly, we decline to take judicial notice of the
four (4) pages from online German-English dictionaries and
the “report” from the Scientific and Technical Information
Center at the U.S. Patent and Trademark Office. We have
given that information no consideration in reaching our
decision.
We now turn to the merits of this case (i.e., the
propriety of the refusal to register FRESCH on the ground
that it is primarily merely a surname). In analyzing the
surname refusal, we must determine the impact FRESCH has on
the purchasing public because “it is the impact or
impression which should be evaluated in determining whether
or not the primary significance of a word when applied to a
product is a surname significance. If it is, and it is
only that, then it is primarily merely a surname.” In re
Giger, 78 USPQ2d 1405, 1407 (TTAB 2006), quoting, In re
Harris-Intertype Corp., 518 F.2d 629, 186 USPQ 238, 239
(CCPA 1975), quoting, Ex parte Rivera Watch Corp., 106 USPQ
145 (Comm’r 1955)(emphasis in the original).
Our case law sets out a number of factors to be used
to determine if the term is primarily merely a surname:
1. Whether the surname is rare;

2. Whether anyone connected with the applicant has
the term as a surname;

Serial No. 78527306
9
3. Whether the term has any other recognized
meaning; and,

4. Whether the term has the “look and feel” of a
surname.

In re Giger, supra; In re United Distillers, plc, 56 USPQ2d
1220, 1221 (TTAB 2000).
A. FRESCH is not a common surname.
The record shows some use of “Fresch” as a surname.
There are only 131 residential listings nationwide for
Fresch and 104 excerpts from “stories” from a LexisNexis
database with “Fresch.” Unlike the surname “Rogan,” the
subject of In re Gregory, the surname “Fresch” does not
appear to be the name of a public personality that
routinely appears in news reports so as to be broadly
exposed to the general public. In re Gregory, 70 USPQ2d
1792, 1795 (TTAB 2004). Many of the 104 excerpts were
simply obituaries or real estate transaction listings, and
as such they do not demonstrate use of “Fresch” as a
surname beyond that evidenced by the entries in the
residential listings. Based on the record before us that
shows some surname use of FRESCH, we find that it is not a
common surname.

Serial No. 78527306
10
B. FRESCH is not a surname for anyone connected with the
applicant.

The evidence of record does not show that anyone
connected with applicant has the surname FRESCH. However,
the fact that “a proposed mark is not applicant’s surname,
or the surname of an officer or employee, does not tend to
establish one way or the other whether the proposed mark
would be perceived as a surname.” Id.
C. There is no probative evidence regarding the meaning
or significance of FRESCH.

Words having significance other than as a surname are
not “primarily merely a surname.” Fisher Radio Corp. v.
Bird Electronic Corp., 162 USPQ 265 (TTAB 1969)(BIRD is not
primarily merely a surname); Ex parte Omaha Cold Storage
Co., 111 USPQ 189 (Comm’r Pat. 1956)(DOUGLAS is not
primarily merely a surname); In re Monotype Corp. PLC, 14
USPQ2d 1070 (TTAB 1989)(CALLISTO has no surname meaning
from Greek mythology); In re BDH, Inc., 26 USPQ2d 1556
(TTAB 1993)(GRAINGERS for crackers and chips is not a
surname because it would be perceived as suggestive of the
grain-based nature of the product). See also TMEP
§1211.01(a).
This record is devoid of any probative evidence
regarding any meaning for FRESCH. Fresch, Austria and
Fresch Hazel, Belgium are too obscure to have any
Serial No. 78527306
11
significance in the United States. Given the handful of
persons in the United States who speak Plautdietsch, we
find the entry from the Mennonite Low German Dictionary has
no probative value. Applicant’s references to Fresch
Shower & Bath Soap, Fresch Iranian caviar, the Fresch
collection of rugs, and Fresch Designs are likely uses
derived from surnames or misspellings of “fresh.” In
addition to any concerns we may have about the transient
nature of such an entry and the general reliability of
collaborative websites with permissive edits, the Wikipedia
reference to the “Fresch” treatment for children having
“LRS” is not only too obscure to have any significance in
the United States, but there is no indication that this
“method” is even practiced in the United States. On the
other hand, as seen above, some of the entries suggest that
“Fresch” could be a different spelling for “fresh” (e.g.,
the “fresch fisch” advertisement for the restaurant in the
Canary Islands, the reference in the businessphilosophy.com
web page stating that “We offer BG/MTNS Issue Fresch Cut
With POF: Looking For Business Partners Nantucket
Campfire,” and the eBay advertisement for “antique?pair of
ice skates FRESCH!”).

Serial No. 78527306
12
D. FRESCH does not have the look or feel of a surname.
This is a subjective factor concerning whether FRESCH
has the “structure and pronunciation” or “the look and
sound” of a surname. In re Benthin Management GmbH, supra
at 1333; In re Sava Research Corp., 32 USPQ2d 1380, 1381
(TTAB 1994); In re Industrie Pirelli, 9 USPQ2d 1564, 1566
(TTAB 1988). As stated in Industrie Pirelli, “certain rare
surnames look like surnames, and certain rare surnames do
not and that ‘Pirelli’ falls into the former category,
while ‘Kodak’ falls into the latter.” Id.
In addition to the fact that “Fresch” is not a common
surname, there is no evidence that “____sch” is a common or
recognized structure or format for a surname (e.g.,
____berg as in Steinberg, ____man as in Bergsman, ____lov
as in Orlov, etc.). Because “Fresch” does not have the
appearance of a surname, and because the word “fresh”
describes a desirable quality of food or ingredients in
food, consumers would be more likely to recognize “Fresch,”
when used in connection with the food items listed in
applicant’s identification of goods, as a stylization or
variation of the word “fresh,” rather than as a surname.
In this respect, applicant has previously alluded to FRESCH
as suggesting freshness in its Registration No. 3,046,569
for the mark FRESCHETTA THE FRESH TASTE SENSATION and
Serial No. 78527306
13
Design for similar food products. Therefore, we find that
the primary significance of the word FRESCH when applied to
food products will be perceived as suggesting a quality of
the food items listed in applicant’s identification of
goods and/or their ingredients.
In reaching this finding, we are aware of the Board’s
holdings In re Woolley’s Petite Suites, 18 USPQ2d 1810
(TTAB 1991) (WOOLLEY’S PETITE SUITES is primarily merely a
surname for hotel and motel services) and In re Pickett
Hotel Company, 229 USPQ 760 (PICKETT SUITE HOTEL for hotel,
restaurant, and cocktail lounge services is primarily
merely a surname). In those cases, we held that a term may
be primarily merely a surname even if it is the phonetic
equivalent of a word that has an ordinary meaning.
However, in those cases, “Woolley” and “Pickett” were
arbitrary terms when used in connection with hotel, motel,
restaurant and cocktail lounge services. In this case,
FRESCH is the phonetic equivalent of the descriptive word
“Fresh,” and that has a profound effect on the way that
consumers will perceive the word FRESCH.
Finally, on the issue of whether a mark would be
perceived as primarily merely a surname, we resolve any
doubts we have in favor of the applicant and pass the
application to publication with the knowledge that others
Serial No. 78527306
14
who have the same surname and use it or wish to use it for
the same or similar goods may file a notice of opposition.
In re Benthin Management GmbH, supra at 1334.
Because FRESCH is not a common surname, when it is
used in connection with the food items identified in
applicant’s identification of goods, it would be perceived
as a stylization or variation of the word “fresh.”
Additionally, the word FRESCH does not have the clear look
and sound of a surname. We therefore find that when FRESCH
is used in connection with “frozen pizza; appetizers,
namely, hand-held bread puffs and bread bowls primarily
containing meat and/or vegetables and/or cheese, with or
without tomato sauce; bruschetta; flatbread with or without
dipping sauce” it would not be perceived as primarily
merely a surname.
Decision: The refusal to register is reversed.