Trademark Manage-ment Company

Trademark Trial and Appeal Board

Sep 9, 2003

No. 78074430 (T.T.A.B. Sep. 9, 2003)

Mailed: September 9, 2003
Paper No. 9
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Trademark Management Company1
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Serial No. 78/074,430
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Bert A. Collison of Duane Morris LLP for Trademark
Management Company.
Aretha C. Masterson, Trademark Examining Attorney, Law
Office 112 (Janice O’Lear, Managing Attorney).
_______
Before Seeherman, Hairston and Rogers, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Trademark Management Company seeks to register
QUESADILLA BITES as a trademark for “frozen, packaged or
prepared Mexican foods, namely flour tortillas with
chicken, beef or cheese fillings.”2
1 Although the original application was filed by O.R.A.
Corporation, this application has been assigned to Trademark
Management Company. This assignment has been recorded with the
Assignment Branch of the U.S. Patent & Trademark Office at Reel
2624, Frame 0192.
2 Serial No. 78/074,430, filed July 18, 2001, based on an
allegation of a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 78/074,430
2
The Trademark Examining Attorney has 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 the identified goods.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs. An
oral hearing was not requested.
The Examining Attorney contends that QUESADILLA BITES
is merely descriptive of the identified goods because it
immediately conveys information about their nature and
size, namely, that they are bite size quesadillas. In
support of the refusal, the Examining Attorney submitted an
excerpt from The American Heritage Dictionary of the
English Language (Electronic version, Third edition, 1992)
wherein “bite” is defined as “an amount of food taken into
the mouth at one time, a mouthful.”3 In addition, she
3 With her appeal brief, the Examining Attorney submitted a
definition of the word “quesadilla” from the web site
www.foodtv.com/terms. The Examining Attorney requests that we
take judicial notice of this evidence. Although the Board has in
the past taken judicial notice of dictionary definitions, in this
case, we do not know if this material is available in printed
format or is otherwise readily available. While we will not take
judicial notice of the definition submitted by the Examining
Attorney, we will nonetheless take judicial notice of the
following definition of “quesadilla” taken from a readily
available dictionary, namely, The American Heritage Dictionary of
the American Language (Fourth edition, 2000): “A flour tortilla
folded in half around a savory filing, as of cheese or beans,
then fried or toasted.”
Ser No. 78/074,430
3
submitted twelve third-party registrations of marks that
contain the word BITES for food items. In each
registration, BITES has been disclaimed. On the basis of
this evidence, the Examining Attorney concluded that
QUESADILLA BITES is merely descriptive of applicant’s
identified goods.
Applicant, on the other hand, argues that QUESADILLA
BITES merely suggests information about the identified
goods; that it does not describe the goods in any direct or
immediate manner; that applicant’s goods may be consumed in
more than one bite; and that the Examining Attorney has
improperly dissected the mark instead of considering the
mark as a whole.
Further, applicant points to four registrations for
marks which contain the word BITES with no disclaimer
thereof. The registrations are: Registration No.
1,278,190 for the mark SPUD BITES for frozen potatoes, with
a disclaimer of SPUD; Registration No. 1,399,736 for the
mark BAGEL BITES for frozen bagels with various toppings,
with a disclaimer of BAGEL; Registration No. 2,064,331 for
the mark DYNA BITES and design for frozen breaded
vegetables and cheese combinations; and Registration No.
2,322,663 for the mark HOT BITES for prepared appetizers,
Ser No. 78/074,430
4
with a Section 2(f) claim. Thus, applicant argues that it
is entitled to registration of its mark.
The test for determining whether a mark is merely
descriptive is whether the involved term 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 Abcor Development Corp., 588 F.2d 811,
200 USPQ 215 (CCPA 1978). It is not necessary, in order to
find a mark merely descriptive, that the mark describe each
feature of the goods or services, only that it describe a
single, significant quality or property thereof. In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
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).
Applicant does not dispute that the word QUESADILLA is
merely descriptive of applicant’s goods. Also, as
previously indicated, the Examining Attorney submitted
twelve third-party registrations of marks that contain the
Ser No. 78/074,430
5
word BITES for food items, wherein the word has been
disclaimed. This evidence supports the Examining
Attorney’s position that the word BITES is descriptive in
connection with food. In this regard, we note that one of
the registrations covers Mexican food: Registration No.
2,358,304 for the mark BORDER BITES for Mexican appetizers.
Also, we note that in several of the registrations
additional descriptive wording is disclaimed: Registration
No. 2,554,663 for the mark FUDGE BROWNIE DOUGH BITES and
design for candy, cakes, and bakery goods all containing
brownie dough, with a disclaimer of “FUDGE BROWNIE DOUGH
BITES;” Registration No. 2,416,552 for the mark NANCY’S
BAGUETTE BITES for frozen appetizers consisting primarily
of cheese and vegetable topping on baguette, with a
disclaimer of “BAGUETTE BITES;” Registration No. 2,477,052
for the mark PEANUT BUTTER COOKIE DOUGH BITES and design
for candy, cakes, and bakery goods all containing cookie
dough, with a disclaimer of “PEANUT BUTTER COOKIE DOUGH
BITES; and Registration No. 2,271,929 for the mark COOKIE
DOUGH BITES and design for candy, cakes, and bakery goods
all containing cookie dough, with a disclaimer of COOKIE
DOUGH BITES.
In the absence of any limitations in applicant’s
identification of goods, we must assume that applicant’s
Ser No. 78/074,430
6
quesadillas are of varying sizes, including small or
appetizer size such that they may be consumed in a single
mouthful. Thus, we find that the word BITES is descriptive
of applicant’s goods.
When these descriptive words QUESADILLA and BITES are
joined in the mark QUESADILLA BITES, we find that the mark
as a whole is merely descriptive of applicant’s goods, in
that it immediately conveys to consumers that applicant’s
goods are bite size quesadillas.
We admit that inconsistent Office handling of
applications to register marks that include the word BITES
is troubling. We note, however, that the mark HOT BITES
issued under the provisions of Section 2(f), which is an
admission of the descriptiveness of this mark. As to the
other three registrations relied on by applicant, we do not
know the circumstances under which they issued. Moreover,
we do note that these registrations issued long before the
third-party registrations put into the record by the
Examining Attorney. Thus, it is entirely possible that a
term, i.e., “bites,” that may not earlier have been viewed
as descriptive has come into common use and is now viewed
as descriptive. In any event, as the Court noted in In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1546, 1566
(Fed. Cir. 2001), the Board must assess each mark on the
Ser No. 78/074,430
7
record submitted with the particular application. In this
case, the fact that there are a handful of registrations
for marks containing the word BITES without a disclaimer
thereof does not outweigh the evidence of descriptiveness
as shown by the dictionary definition and the numerous
third-party registrations submitted by the Examining
Attorney in which BITES has been disclaimed. Even
applicant’s ownership of an incontestable registration for
the mark DURANGOS for cigars did not prohibit the refusal
of the mark DURANGO on the ground that the mark was
geographically deceptively misdescriptive for chewing
tobacco. In re Loew’s Theatres, Inc., 769 F.2d 764, 226
USPQ 865, 869 (Fed. Cir. 1985) [“[E]ach application for a
registration of a mark for particular goods must be
separately evaluated”].
Decision: The refusal to register under Section
2(e)(1) is affirmed.