Tundra Trading, Inc.

Trademark Trial and Appeal Board

Jun 22, 2004

No. 76409942 (T.T.A.B. Jun. 22, 2004)

Hearing: Mailed:
20 APR 2004 22 June 2004
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Tundra Trading, Inc.
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Serial Nos. 76409942 and 76409943
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Hae Park-Suk of Law Offices of J. Michael Cleary, P.C. for
Tundra Trading, Inc.
Brendan D. McCauley, Trademark Examining Attorney, Law
Office 114 (K. Margaret Le, Managing Attorney).
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Before Hairston, Rogers, and Drost, Administrative
Trademark Judges.
Opinion by Drost, Administrative Trademark Judge:
On May 24, 2002, Tundra Trading, Inc. (applicant)
applied to register on the Principal Register the marks
TUBI’S TIRE TREAD LICORICE (typed) and with the design
shown below for “licorice” in International Class 30.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser Nos. 76409942 and 76409943
2
Both applications (Serial Nos. 76409942 and 76409943)
are based on a claim of first use of March 1, 2002, and a
date of first use in commerce of April 9, 2002. Both
applications were amended to claim ownership of
Registration No. 2,459,679 for the mark TUBI’S. Applicant
has also offered to disclaim the term “licorice.”
The examining attorney has refused to register
applicant’s marks without a disclaimer of the additional
term “tire tread” under the provision of Section 6(a) of
the Trademark Act. 15 U.S.C. § 1056(a). The examining
attorney has required a disclaimer of the term because he
found that the term merely described, under 15 U.S.C.
§ 1052(e)(1), a characteristic or feature of applicant’s
goods, “namely, the licorice is in the shape of a tire
tread.” Examining Attorney’s Brief at 5. After the
examining attorney made the requirements for the broader
disclaimer final, applicant subsequently filed these
appeals.1
We reverse.
A mark is merely descriptive if it immediately
describes the ingredients, qualities, or characteristics of
the goods or services or if it conveys information
1 On October 27, 2003, the board granted applicant’s motion to
consolidate these appeals.
Ser Nos. 76409942 and 76409943
3
regarding a function, purpose, or use of the goods or
services. In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 217 (CCPA 1978). See also In re Nett Designs,
236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“A
mark is merely descriptive if it immediately conveys
qualities or characteristics of the goods”). In
descriptiveness cases, we look at the mark in relation to
the goods or services, and not in the abstract. Abcor, 200
USPQ at 218. However, in order for a term to be merely
descriptive, it must describe, at least, “a single,
significant quality, feature, function, etc.” of the
services. In re Venture Lending Associates, 226 USPQ 285,
286 (TTAB 1985) (emphasis added). See also In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987).
In this case, we begin with the examining attorney’s
evidence that supports his position that the term “tire
tread” is merely descriptive of a type of licorice. The
examining attorney has included a definition of the term
“tread” meaning “the part of a wheel or tire that makes
contact with the road or rails” and the “grooved face of a
tire.” Other evidence includes a description of
applicant’s goods on the www.candyusa.org website as
follows: “Tire Tread Black Licorice – Licorice lovers will
enjoy new Tire Tread Licorice, a velvety-smooth, not-to[o]-
Ser Nos. 76409942 and 76409943
4
sweet chewy black licorice that resembles pieces of tire
treads.” The examining attorney also included numerous
excerpts that suggest that candy and licorice often come in
a variety of shapes that are either described or suggested
by their names. The following examples are from the same
site: “Juicee Gummee Strawberry Dreams and Frogees – These
chewy candies add a new measure of pleasure to gummy
candies. They come in strawberry and frog shapes made with
real fruit juice”; “Scripture Candy – These sugar-free
breath mints are shaped like tiny fish symbols and are
packaged in attractive tins that feature inspirational
verses printed on the inside of the lids”; and “Butt-Ugly
Martian Candy and Bubble Gum – Based on the hot new kids’
character… The gum comes in martian shapes.”
Applicant responds by arguing that:
Consumers clearly are capable of associating such
marks with a single source, as in the case of the
ubiquitous “Goldfish” goldfish-shaped crackers, along
with the “Teddy Grahams” teddy bear shaped crackers,
“Robin Eggs” egg-shaped chocolate candy, “Stinky Feet”
feet-shaped candy and cookies, “Heavenly Hearts”
heart-shaped candy and chocolate, “Paw Print” paw-
shaped candy and bubble gum, as well as numerous other
examples cited in Applicant’s Requests for
Reconsideration.
All of these products are identified by terms which
fall similarly, or even closer to the descriptive end,
on the descriptive/suggestive sliding scale as the
terms in the instant case… Applicant respectfully
emphasizes that each of these marks have been
Ser Nos. 76409942 and 76409943
5
registered on the Principal Register without a
disclaimer of the relevant term.
Applicant’s Brief at 7 (emphasis in original).
Applicant submitted copies of the pertinent
registrations with evidence that the mark was used on items
that resembled the terms in the trademark registrations.2
Applicant also cites the case of RFE Industries Inc. v. SPM
Corp., 105 F.3d 923, 41 USPQ2d 1626, 1629 (4th Cir. 1997)
for the proposition that an “important distinction must be
made when the product only resembles, and does not
replicate, the shape.”
The examining attorney argues that “tire tread
licorice” indicates “a characteristic or feature of the
goods, namely, that the licorice is in the shape of a tire
tread.” Examining Attorney’s Brief at 5. While the
difference between a term that is suggestive as opposed to
descriptive is often somewhat nebulous, in this case, we
are not persuaded by the examining attorney’s arguments.
One of our principal disagreements with the examining
attorney concerns his key point that applicant’s licorice
is in the shape of a tire tread. The packaging for
2 See, e.g., Reg. No. 1,798,043 (ROBIN EGGS); No. 1,511,957 (PAW
PRINT); and No. 1,474,372 (GRAHAMY BEARS). Applicant also
included the entire file for Reg. No. 739,118 for the mark
GOLDFISH.
Ser Nos. 76409942 and 76409943
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applicant’s goods includes the design mark in the ‘943
application, which appears to feature the design of a tire
tread. The actual goods in the packaging in the record do
not resemble that design and the examining attorney has not
included evidence that applicant’s actual goods are a
recognized tire tread design. Moreover, the examining
attorney has not required a disclaimer of what appears to
be the design of the tire tread in the ‘943 application.
Here, the design of applicant’s goods resembles a grooved
pattern where the grooves are simply shown in a straight-
line pattern. We have no doubt that applicant’s actual
licorice pieces may suggest or call to mind a tire tread if
one studies the goods along with the term, but it is not at
all clear that consumers would immediately understand that
applicant’s term is simply describing its goods. When we
analyze whether a term is descriptive, we must view the
term in relation to the goods and not in the abstract.
When prospective purchasers are confronted with the mark
and the actual goods in the record, it is likely that these
purchasers would use some imagination to reach the
conclusion that applicant’s goods are supposed to resemble
tire tread patterns. The relevant case law concerning the
distinction between descriptive and suggestive terms
emphasizes the importance of the immediateness of the
Ser Nos. 76409942 and 76409943
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information conveyed to prospective purchasers. In re
Recovery, Inc., 196 USPQ 830, 832 (TTAB 1977) (A term is
not merely descriptive if one “must engage in a mental
process involving imagination, speculation, and possibly
stretching the meaning of the word to fit the situation”).
In this case, while the examining attorney has shown
that candy and licorice are sometimes produced in the shape
of animals and even smoking pipes, it is much less clear
that the public would immediately associate candy shapes
with automobile parts. Furthermore, “tread” is a more
nebulous term inasmuch as it refers to the pattern of a
tire. In this case, purchasers would have to study the
term TUBI’S TIRE TREAD LICORICE and the goods. In effect,
the term “tire tread” does not simply describe the goods,
it provides an interpretation of what applicant intends the
goods to resemble. Without the term “tire tread,” it is
quite possible that consumers would not even understand
that applicant’s goods are supposed to resemble chunks of
tire treads. By using the term tire tread as a guide,
these consumers may conclude that applicant’s goods are a
tire tread design. However, this lack of immediate
recognition and resulting thought process removes
applicant’s term from the merely descriptive category and
Ser Nos. 76409942 and 76409943
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leads us to conclude that the refusals to register are not
appropriate.
Decision: The refusals to register applicant’s marks
without a disclaimer of the term “Tire Tread” are reversed.