The Wackenhut Corp.

Trademark Trial and Appeal Board

Sep 20, 2001

No. 75025151 (T.T.A.B. Sep. 20, 2001)

9/20/01

Hearing: May 22, 2001
Paper No. 25
CEW

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re The Wackenhut Corporation
___________

Serial No. 75/025,151
___________

James F. McKeown of Evenson, McKeown, Edwards & Lenahan
for The Wackenhut Corporation.

Sue Carruthers, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
____________

Before Walters, Holtzman and Rogers, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

The Wackenhut Corporation has filed a trademark
application to register the mark CORRECTIONAL FOODSERVICE
MANAGEMENT for “foodservices for penal institutions.”1

1 Serial No. 75/025,151, in International Class 42, filed November 28,
1995, based on an allegation of a bona fide intention to use the mark in
commerce. On December 2, 1996, applicant submitted an amendment to
allege use and specimens, alleging January 1996 as its date of first use
and use in commerce.

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/025,151
2
The Trademark Examining Attorney originally 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
is merely descriptive of its services. In response,
applicant amended its application to assert acquired
distinctiveness, under Section 2(f) of the Trademark Act,
15 U.S.C. 1052(f), based on less than one year of use of
its mark in connection with the identified services. The
Examining Attorney rejected the Section 2(f) claim on the
ground that applicant had not established acquired
distinctiveness of its mark; and she ultimately issued a
final refusal to register under Section 2(e)(1) of the
Trademark Act.
Applicant appealed and, subsequently, requested a
remand for consideration of an amendment to the
Supplemental Register.2 On remand from the Board, the
Examining Attorney withdrew the Section 2(e)(1) refusal
and refused registration on the Supplemental Register,
under Section 23 of the Trademark Act, 15 U.S.C. 1091, on
the ground that the subject matter of the application is

2 Although applicant’s submissions raised the question of whether
applicant, in its appeal, maintains its Section 2(f) argument in the
alternative, applicant’s counsel clarified, at the Board hearing of this
case, that registrability on the Supplemental Register is the sole issue
before the Board in this appeal.
Serial No. 75/025,151
3
generic in connection with the identified services. This
refusal was made final.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs and an oral hearing
was held. We affirm the refusal to register.
With respect to genericness, the Office has the
burden of proving genericness by “clear evidence”
thereof. In re Merrill, Lynch, Pierce, Fenner & Smith,
Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir.
1987). The critical issue in genericness cases is
whether members of the relevant public primarily use or
understand the term sought to be registered to refer to
the category or class of goods in question. In re
Women’s Publishing Co. Inc., 23 USPQ2d 1876, 1877 (TTAB
1992). Our primary reviewing court has set forth a two-
step inquiry to determine whether a mark is generic:
First, what is the category or class of goods or services
at issue? Second, is the term sought to be registered
understood by the relevant public primarily to refer to
that category or class of goods or services? H. Marvin
Ginn Corporation v. International Association of Fire
Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir.
1986).
Serial No. 75/025,151
4
The Examining Attorney contends that “correctional
foodservice” and “foodservice management” are both
generic terms; and that the compound term “correctional
foodservice management” is equally generic. The
Examining Attorney explains that “[a]dding the word
‘correctional’ to ‘foodservice management’ merely further
defines the nature of the services[;] [i]t does nothing
to give the phrase a nongeneric meaning.” She concludes
that “correctional foodservice management is recognized
as a category of services in the corrections field.” In
support of her position, the Examining Attorney submitted
excerpts of articles retrieved from the LEXIS/NEXIS
database, excerpts from magazines and Internet web sites,
and dictionary definitions.
Applicant contends, essentially, that the Examining
Attorney’s evidence is insufficient to establish that
CORRECTIONAL FOODSERVICE MANAGEMENT is generic; and that
the decision of the Court in In re American Fertility
Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999),
is applicable in this case and precludes a finding that
the entire phrase is generic based on evidence that the
individual terms may be generic.
We begin our analysis by reviewing the evidence
submitted by the Examining Attorney. The following are
Serial No. 75/025,151
5
examples of excerpts of articles retrieved from the
LEXIS/NEXIS database:
… past president of the American Correctional
Food Service Association.
…
Saving Money is one of the most critical aspects
of running a correctional foodservice operation.
…
To help battle the budgetary dragon,
correctional foodservice operators are turning
to alternatives to provide quality,
nutritionally balanced meals with as low a food
cost as possible.
[The Voice of Foodservice Distribution,
September 1996.]

Correctional foodservice is the fastest-growing
segment in the entire foodservice business.
[Restaurants and Institutions, August 1, 1996.]

“We’re very happy about the review,” said Bob
Jarousse, assistant director for correctional
food management for the city. [Nation’s
Restaurant News, March 18, 1996.]

“Later, a few of the prison foodservice managers
we had been able to build long-standing
relationships with got the idea of forming
correctional foodservice management divisions
within other companies,” Witzel adds. “This
business has just taken off and DPI Taylor
Brothers now has strong alliances with most of
the key players in correctional foodservice
management. …” [FoodService Distributor, June,
1995.]

The Examining Attorney submitted excerpts from the
June 1996 issue of the magazine Corrections Today, which
includes an advertisement by Aramark Corrections
Services, shown below, and a page from its “Product
Index,” which lists as a heading the term “Food Service
Serial No. 75/025,151
6
Management” among other headings such as “Employment,”
“Fire Protection Equipment,” and “Furniture.”

The Examining Attorney submitted an excerpt from the
Internet Web site of Aramark Correctional Services
(www.aramarkcorrectional.com, July 15, 1998), which
includes the following statements:
Since 1976, we’ve provided comprehensive, cost-
effective food services programs to correctional
facilities of all types and sizes.
…
ARAMARK Correctional Services is part of the
ARAMARK Corporation, an internationally
recognized leader in contract management
services with annual revenues of $6 billion and
more than 150,000 employees worldwide.

The Examining Attorney submitted copies of two
third-party registrations, one for the mark CORRECTIONAL
FOODSERVICE on the Supplemental Register3; and one for the
stylized mark SERVICE AMERICA THE FOOD SERVICE MANAGEMENT
PEOPLE on the Principal Register with a disclaimer of THE

3 Registration No. 1,774,776, issued June 1, 1993, for magazines.
[Cancelled for failure to file a Section 8 affidavit.]

Serial No. 75/025,151
7
FOOD SERVICE MANAGEMENT PEOPLE.4 These two registrations
are not probative of the issue of genericness. Nor does
the cancelled registration of CORRECTIONAL FOODSERVICE on
the Supplemental Register in connection with magazines
persuade us that applicant’s mark for the identified
services is capable of becoming a mark, because each case
must be decided on its facts.
Applicant submitted excerpts from a document it
identified as its “10-K report.” Following are several
quotes from that document:
Through its correctional business … the Company
also provides correctional and facility design,
development and management services to
governmental agencies.
…
In addition to its expansion into the
Correctional Business …, the Company has
leveraged its management skills to expand into
other support services. In 1992, the Company
entered into the foodservices business for
correctional institutions … .

… The Company bids for foodservices contracts
and provides food services on a cost per meal
basis. Complete foodservices management,
commissary, laundry and janitorial programs are
available to correctional clients.

Applicant’s specimens of use include the following
information about its services:

4 Registration No. 1,626,381, issued December 4, 1990, for providing
food services through the use of vending machines and cafeteria
services. [Sections 8 and 15 affidavits accepted and acknowledged,
respectively. No record of renewal application.]
Serial No. 75/025,151
8
Correctional Foodservice Management provides
professional foodservice management and
ancillary services to Federal, state, county and
private correctional facilities throughout the
United States. Headquartered in Phoenix,
Arizona, Correctional Foodservice Management
provides an integrated quality assurance program
that encompasses all aspects of the correctional
foodservice operation.
…
The staff of Correctional Foodservice Management
is comprised of widely respected professionals
with established credentials in the operation
and management of foodservices in a corrections
environment.

We find that the Examining Attorney has established
by clear and convincing evidence that CORRECTIONAL
FOODSERVICE MANAGEMENT is generic in connection with
“foodservices for penal institutions.” As indicated by
the evidence of record, in particular, applicant’s own
specimens, providing foodservices to penal, or
correctional, institutions involves management of the
many aspects of those services by the company providing
the services. It also involves managing the entire
foodservice operation for the correctional institution.
Not only are there examples in the evidence, including
applicant’s specimens, of the generic use of the
component terms CORRECTIONAL FOODSERVICE and FOODSERVICE
MANAGEMENT, but there are also examples of use of the
term FOODSERVICE MANAGEMENT in connection with
correctional facilities. Additionally, there is at least
Serial No. 75/025,151
9
one example of generic use of the entire term
CORRECTIONAL FOODSERVICE MANAGEMENT. Thus, we find that
CORRECTIONAL FOODSERVICE MANAGEMENT defines the category
of services involved. The nature and extent of the
evidence of record further establishes that the relevant
public is likely to understand CORRECTIONAL FOODSERVICE
MANAGEMENT as the category of services involved.
This case is distinguished from In re American
Fertility Society, supra, on its facts. In that case,
the applicant sought to register the mark AMERICAN
SOCIETY OF REPRODUCTIVE MEDICINE on the Supplemental
Register. The Federal Circuit vacated the Board’s
decision that SOCIETY OF REPRODUCTIVE MEDICINE is generic
and that a disclaimer is required, and remanded the case
for application of the correct legal test.
The Court characterized the question in American
Fertility Society as “whether the PTO may satisfy its
burden of proving a phrase as a whole generic, based
solely on the genericness of the phrase constituents”
(supra at 1835). The Court stated that “the correct
legal test, which was not applied by the Board, is set
forth in Marvin Ginn and is to be applied to a mark, or a
disputed phrase thereof, as a whole, for the whole may be
greater than the sum of its parts”; and that “[t]he PTO
Serial No. 75/025,151
10
here failed to provide any evidence that the phrase as a
whole, SOCIETY FOR REPRODUCTIVE MEDICINE, has acquired no
additional meaning to the relevant public than the terms
‘society’ and ‘reproductive medicine’ have individually”
(1837). The evidence of record included a dictionary
definition of “society” and ninety-nine pages of
references to “reproductive medicine” from the
LEXIS/NEXIS database.
The nature of the evidence in the case before us is
distinctly different than the evidence in American
Fertility Society. We have at least one example of a
generic use of the phrase CORRECTIONAL FOODSERVICE
MANAGEMENT in its entirety. Further, this is not a case
involving examples of generic use of only the three
individual terms of the phrase, rather we have evidence
of generic use of overlapping components of the phrase.
We have many examples of FOODSERVICE MANAGEMENT, both
generally and as applied specifically to correctional
institutions. Similarly, we have many examples of
CORRECTIONAL FOODSERVICE, some of which are used in
relation to foodservice management. It is not a leap of
logic, but, rather, a reasonable step to conclude that
the entire phrase, CORRECTIONAL FOODSERVICE MANAGEMENT,
Serial No. 75/025,151
11
is, and would be perceived by the relevant public as, the
category of services involved herein.
In conclusion, we find that CORRECTIONAL FOODSERVICE
MANAGEMENT simply names applicant’s identified services
and is, therefore, generic and incapable of registration
on the Supplemental Register.
Decision: The refusal under Section 23 of the Act
is affirmed.