Wellshire Farms, Inc.

Trademark Trial and Appeal Board

Mar 3, 2008

No. 78157145 (T.T.A.B. Mar. 3, 2008)

Mailed: 3/3/08

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Wellshire Farms, Inc.
________

Serial No. 78157145
_______

Frank A. Mazzeo for Willshire Farms, Inc.

Elissa Garber Kon, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Seeherman, Quinn and Walters, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Willshire Farms, Inc. filed an application to register
the mark PRIMO NATURALE for “meats.”1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark, if applied
to applicant’s goods, would so resemble the previously

1 Application Serial No. 78157145, filed August 23, 2002, based
on a bona fide intention to use the mark in commerce.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 78157145
2
registered mark PRIMO for “sausages”2 as to be likely to
cause confusion. The examining attorney also refused
registration due to applicant’s failure to comply with a
requirement to disclaim the term “NATURALE” apart from the
mark.
When the refusals were made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Given the somewhat unusual prosecution history of this
application, a brief review of the pertinent history is in
order. In response to the final refusal grounded on
likelihood of confusion and failure to comply with the
disclaimer requirement, applicant filed a notice of appeal.
Within an extended period of time to file its appeal brief,
applicant filed, on December 28, 2005, a request for
reconsideration that included a proposed amendment to the
identification of goods, and a claim of acquired
distinctiveness under Section 2(f) of the Trademark Act, 15
U.S.C. §1052(f). The Board suspended the appeal and
remanded the application to the examining attorney. The
examining attorney, in a non-final Office action dated
January 24, 2006, continued the refusals, and also noted

2 Registration No. 2156791, issued May 12, 1998; renewed. The
registration issued pursuant to a claim of acquired
distinctiveness under Section 2(f). The registration includes
the following statement: “The English translation of the word
‘PRIMO’ is ‘first.’”
Ser No. 78157145
3
that applicant’s proposed amendment to the identification
of goods and claim of acquired distinctiveness raised new
issues. Applicant sought to amend the identification from
“meats” to “all natural meat products,” but the examining
attorney found the terminology “meat products” to be
indefinite. The examining attorney gave guidance to
applicant regarding acceptable terminology. As to the
Section 2(f) claim, the examining attorney indicated
“[a]pplicant must either delete the statement of acquired
distinctiveness from the application or explain why it
believes that a claim of distinctiveness is necessary,
because the mark appears to be inherently distinctive.”
The examining attorney concluded, “[a] claim of
distinctiveness is not needed in this case.” The examining
attorney went on to address the sufficiency of applicant’s
claim, indicating that the record did not support acquired
distinctiveness, and also pointing out the options
regarding the proof required to establish acquired
distinctiveness in an intent-to-use application. Applicant
filed, on July 21, 2006, a communication that was
essentially non-responsive, and the examining attorney, on
September 13, 2006, issued a final refusal pertaining not
only to the likelihood of confusion ground and the
disclaimer requirement, but to the indefinite
Ser No. 78157145
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identification of goods and the insufficiency of the
Section 2(f) claim as well. The examining attorney
continued to maintain that a claim of acquired
distinctiveness was unnecessary, and that even if the
evidence in support of the claim was found to be
sufficient, acquired distinctiveness did not contravene a
refusal based on Section 2(d). The examining attorney
added that in the event that applicant was claiming
acquired distinctiveness as to only part of the mark, in
this case, “NATURALE,” the evidence in support of the claim
fell short of proving same given the genericness of the
term. The Board, in an order dated October 12, 2006,
resumed the appeal and allowed applicant time to submit a
brief. The Board also indicated that the six-month
response clause in the examining attorney’s September 13,
2006 Office action “is not applicable under the
circumstances of this case.” After receiving several
extensions of time, applicant and the examining attorney
filed briefs. Applicant, in its appeal brief, addressed
only the refusals pertaining to the disclaimer requirement
and likelihood of confusion. The examining attorney noted
this, and likewise addressed only these two refusals.
Although the examining attorney technically found that
applicant’s Section 2(f) claim was insufficient, more
Ser No. 78157145
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significantly the examining attorney maintained in his
final refusal that resort to Section 2(f) was not
necessary. Throughout the prosecution applicant made
attempts to put its application in condition for
publication. The examining attorney rejected the proposed
amendment to claim the benefits of Section 2(f), and
subsequently applicant essentially elected to no longer
pursue a Section 2(f) claim. Inasmuch as applicant did not
address acquired distinctiveness in its brief, we presume
that applicant no longer wished to rely on Section 2(f).
Nor did applicant ever state that it was seeking to claim
acquired distinctiveness as to only part of the mark. See
TMEP §1212.02(d) (5th ed. 2007). Accordingly, we see no
reason to further consider the claim of acquired
distinctiveness that we now view as effectively withdrawn
by applicant.
As to the proposed amendment to the identification of
goods, applicant sought to amend it from “meats” to “all
natural meat products.” The examining attorney refused to
enter the amendment, contending that “products” is
indefinite. This is not a case where the amendment was
offered to counter a finding that the terminology is
indefinite. The original identification “meats” was found
to be acceptable, but applicant nevertheless proposed an
Ser No. 78157145
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amendment. When the examining attorney denied the proposed
amendment to the identification, applicant did not further
pursue the amendment. Accordingly, we presume that
applicant was satisfied with its acceptable original
identification “meats,” and we see no reason to consider
the acceptability of the identification of goods. See TMEP
§1402.07(d) (5th ed. 2007). It is this identification of
goods that we will use in determining the issues on appeal.
There also is an evidentiary point to address before
we turn to consider the substantive refusals. In its
brief, applicant requests the Board, in two instances, to
take judicial notice of third-party registrations; the
first group of registrations pertains to its likelihood of
confusion argument, and the second group bears on the
disclaimer issue. Applicant alternatively requests that,
in the event the Board declines to take judicial notice of
the new evidence, the appeal be suspended and the
application be remanded to the examining attorney for
consideration of this evidence. The examining attorney, in
her brief, objected to applicant’s request.
The request to take judicial notice is denied. The
Board does not take judicial notice of official records.
Beech Aircraft Corp. v. Lightning Aircraft Co., 1 USPQ2d
1290 (TTAB 1986).
Ser No. 78157145
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Further, a remand is not justified at this late
juncture of the appeal. Trademark Rule 2.142(b) provides
that the evidentiary record in an application should be
complete prior to the filing of the appeal, and additional
evidence filed after appeal generally will not be
considered. Thus, applicant’s alternative request for a
remand is denied.3 See TBMP §1207 (2d ed. rev. 2004).

Disclaimer
The examining attorney may require an applicant to
disclaim an unregistrable component of a mark otherwise
registrable. Section 6 of the Trademark Act, 15 U.S.C.
§1056. Merely descriptive or generic terms are
unregistrable under Section 2(e)(1) of the Trademark Act,
15 U.S.C. §1052(e), and therefore are subject to disclaimer

3 The additional evidence, even if considered, would not change
the result herein. The six additional third-party registrations
of PRIMO marks are merely cumulative of the other registrations
earlier made of record. Likewise, the list of third-party
applications and registrations of marks comprising, in part,
NATURALE with no disclaimer of this term is not probative.
Applicant merely submitted a list, and not copies of the
registrations or applications. In re Dos Padres Inc., 49 USPQ2d
1860, 1861 n.2 (TTAB 1998) [mere listings of registrations are
not sufficient to make them of record]; and TBMP §1208.02 (2d ed.
rev. 2004). Moreover, the existence of third-party registrations
showing no disclaimer of “NATURALE” is not dispositive. In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001) [“Even if some prior registrations had some characteristics
similar to [applicant’s] application, the PTO’s allowance of such
prior registrations does not bind the board or this court.”].
Finally, the applications, even if copies were submitted, are
probative of nothing more than that the applications were filed.
Ser No. 78157145
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if the mark is otherwise registrable. Failure to comply
with a disclaimer requirement is grounds for refusal of
registration. See In re Omaha National Corp., 819 F.2d
1117, 2 USPQ2d 1859 (Fed. Cir. 1987); and In re Box
Solutions Corp., 79 USPQ2d 1953 (TTAB 2006).
In the present case, the examining attorney maintains
that because the term “naturale” translates as “natural,”
and this term is generic for a genus of goods known as
“natural” meats, a disclaimer is required. In support of
the disclaimer requirement, the examining attorney
submitted excerpts of applicant’s website, as well as of
the websites of third parties.
Applicant argues against the disclaimer requirement,
contending that the term “naturale” “does not immediately
tell an average prospective purchaser what the goods are or
something about the goods.” Applicant goes on to
specifically argue as follows:
Since all meats are natural products in
the sense that they are from livestock,
it is unclear what the term NATURALE
implies. For example, are the meats
somehow “more” natural than other
“regular” meats, and if so, in what
way? NATURALE does not indicate a
specific manner or process by which
Applicant’s meat goods are more natural
than other meat goods. It cannot be a
descriptive term if its meaning is
unclear.

Ser No. 78157145
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(Brief, p. 11).
In considering the propriety of the disclaimer
requirement in the present case, we see no reason to engage
in a genericness analysis of the term “naturale.” To
warrant a disclaimer, it is enough that the term is merely
descriptive when applied to the goods.
A term is merely descriptive if it immediately
describes the ingredients, qualities or characteristics of
the goods or if it conveys information regarding a
function, purpose, or use of the goods. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA
1978). We look at the mark in relation to the goods, and
not in the abstract, when we consider whether the mark is
descriptive. In re MBNA America Bank N.A., 340 F.3d 1328,
67 USPQ2d 1778, 1783 (Fed. Cir. 2003). It is well settled
that to be “merely descriptive” a term need only describe a
single significant quality or property of the goods. In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
It is undisputed, as evidenced by applicant’s
statement in the application, that the Italian term
“naturale” translates to “natural” in English. See
Cassell’s Italian Dictionary (1967) (of which we take
judicial notice). The term “natural” means “not produced
or changed artificially; not altered, treated or disguised;
Ser No. 78157145
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faithfully representing nature or life.” The American
Heritage Dictionary of the English Language (4th ed. 2000)
(of which we take judicial notice). The examining attorney
introduced several excerpts of websites showing that
applicant and others in the meat industry use the term
“natural” to describe their products:
[Applicant’s] brand of Smoked Sausage
are made of All Natural pork that is
raised free of drugs, chemicals, and
growth stimulants. There are no added
artificial flavors, colors, food
starches or fillers...Tasty varieties
to choose from are the All Natural Pork
Kielbasa, All Natural Pork Andouille...
(www.wellshirefarms.com)

Aloha and welcome to Hawaii natural
meats. We are the purveyors of Kamuela
pride certified naturally-raised,
grass-fed beef and lamb...we have
established a company which serves as a
link between ranchers of Hawaii and a
growing community of health conscious
individuals seeking a natural meat
product.
(www.kamuelapride.com)

We do not buy from other stockers or
sale barns; this enables us to
guarantee high quality, all natural
meats.
(www.peacefulpastures.com)

Welcome to Chicago Prime Cuts, the
finest purveyor of superior quality,
humanely raised, all natural meats.
(www.chicagoprimecuts.com)

The Whole Foods Market standards for
natural meat and poultry go far beyond
what the US Department of Agriculture
Ser No. 78157145
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requires for labeling meat or poultry
as “natural.” All of our meat and
poultry offerings are minimally
processed with no artificial additives
or preservatives (as required by the
USDA for “natural” labeling)...Whole
Foods Market is proud of our role as a
leader in the natural meat
industry...We offer a wide variety of
meats, including game, duck, sausages,
low fat cuts, range-grown turkey and
natural chicken.
(www.wholefoodsmarket.com)

The record establishes that the term “natural” is used
in connection with a specific type of meat product, that
is, one free of anything artificial. Thus, the term
NATURALE in applicant’s marks describes a laudatory feature
or characteristic of applicant’s meats, namely that the
products are free of artificial additives. This fact is
confirmed by applicant on its website. Thus, at the very
least, the term is highly descriptive of applicant’s goods.
In view thereof, the requirement of a disclaimer of
the term NATURALE is affirmed.

Likelihood of Confusion
The examining attorney maintains that the marks are
similar; more specifically, that applicant has adopted the
entirety of registrant’s mark and merely added a highly
descriptive/generic term that fails to distinguish the
marks. The examining attorney also asserts that the goods
Ser No. 78157145
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are legally identical. In support of this refusal, the
examining attorney introduced copies of third-party
registrations and excerpts of third-party websites to show
that “meats” and “sausages” are closely related products.
Pursuant to the examining attorney’s request, we take
judicial notice of the dictionary definition of the term
“sausage” (see infra).
Applicant contends that PRIMO is a laudatory term, and
that the coexistence of several third-party PRIMO marks for
food products warrants a finding of no likelihood of
confusion. In support of its position, applicant submitted
third-party registrations comprising, in part, PRIMO for
food products. Applicant also states that the marks and
the goods sold thereunder are different.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also: In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities
between the marks and the similarities between the goods.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
Ser No. 78157145
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F.2d 1098, 192 USPQ 24 (CCPA 1976). See also: In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
We first turn to compare applicant’s “meats” with
registrant’s “sausages.” In determining the issue of
likelihood of confusion in ex parte cases, the Board must
compare applicant’s goods as set forth in its application
with the goods as set forth in the cited registration. In
re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Where the goods
in the cited registration and/or application are broadly
identified as to their nature and type (as is the case
herein with applicant’s identification), such that there is
an absence of any restrictions as to the channels of trade
and no limitation as to the classes of purchasers, it is
presumed that in scope the identification of goods
encompasses not only all the goods of the nature and type
described therein, but that the identified goods are
offered in all channels of trade which would be normal
therefor, and that they would be purchased by all potential
buyers thereof. Id.
The term “meats” in applicant’s identification is
broadly worded and is presumed to encompass all types of
meats, including sausages. Lest there be any doubt about
this du Pont factor, the record includes a dictionary
Ser No. 78157145
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definition of “sausage”: “finely chopped and seasoned
meat, especially pork, usually stuffed into a prepared
animal intestine or other casing and cooked or cured.” The
American Heritage Dictionary of the English Language (3rd
ed. 1992). Thus, to state the obvious, sausage is a
particular type of meat. For purposes of our likelihood of
confusion analysis, the goods are considered to be legally
identical. Various types of meats, including sausages,
move through the same trade channels (e.g., grocery stores,
supermarkets and, as shown by the examining attorney’s
evidence, on-line retailers) to the same classes of
purchasers, namely, ordinary consumers. Further, these
individuals would be expected to exercise nothing more than
ordinary care in their purchasing decisions. The goods are
presumed to include relatively inexpensive meats and
sausages, and thus are capable of being purchased on
impulse.
With respect to the involved marks, we examine the
similarities and dissimilarities of the marks in their
appearance, sound, meaning, and commercial impression.
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed.
Cir. 2005). The test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
Ser No. 78157145
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but rather whether the marks are sufficiently similar in
their entireties that confusion as to the source of the
goods offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975).
In considering the marks, we also note that when marks
are used in connection with legally identical goods, as is
the case herein, “the degree of similarity [between the
marks] necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992).
Registrant’s mark PRIMO and applicant’s mark PRIMO
NATURALE are similar in sound, appearance, meaning and
overall commercial impression. Both begin with the
identical term, and applicant has merely added a highly
descriptive (if not generic) term to its mark.
The addition of NATURALE in applicant’s mark does not
serve to sufficiently distinguish it from registrant’s
mark. The general rule is that a subsequent user may not
appropriate the entire mark of another and avoid a
likelihood of confusion by adding descriptive or
Ser No. 78157145
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subordinate matter thereto. Thus, “if the dominant portion
of both marks is the same [as is the case herein], the
confusion may be likely notwithstanding peripheral
differences.” TMEP §1207.01(b)(iii) (5th ed. 2007). See,
e.g., Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d
1261, 62 USPQ2d 1001 (Fed. Cir. 2002) [HEWLETT PACKARD and
PACKARD TECHNOLOGIES]; In re El Torito Restaurants Inc., 9
USPQ2d 2002 (TTAB 1988) [MACHO and MACHO COMBOS]; In re
Equitable Bancorporation, 229 USPQ 709 (TTAB 1986)
[RESPONSE and RESPONSE CARD]; and In re Corning Glass
Works, 229 USPQ 65 (TTAB 1985) [CONFIRM and CONFIRMCELLS].
The present case is no exception.
The existence of the various third-party registrations
of PRIMO marks in the food products field does not persuade
us to reach a different result. Applicant submitted copies
of thirty-six third-party registrations for goods listed in
Class 29. Although not specifically articulated by
applicant, it would appear that it is urging that its mark
falls into one of the exceptions to the above stated rule
regarding additions to marks, namely, when the matter
common to the marks (in this case, PRIMO) is not likely to
be perceived by purchasers as distinguishing source because
it is diluted. See, e.g., Shen Manufacturing Co. v. Ritz
Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004).
Ser No. 78157145
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These third-party registrations are not evidence of
use of the subject marks in the marketplace, nor do they
show that the public is familiar with those marks. See
Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22
USPQ2d 1542, 1545 (Fed. Cir. 1992); and AMF Inc. v.
American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ
268, 269 (CCPA 1973) [“The existence of [third-party]
registrations is not evidence of what happens in the market
place or that customers are familiar with them...”].
However, third-party registrations may be used in the
manner of dictionary definitions to show that a term has a
particular significance or meaning within an industry. See
Tektronix, Inc. v. Daktronics, Inc., 187 USPQ 585 (TTAB
1975).
The term “primo” may be found in an English dictionary
and is defined as “first” or “first class.” Webster’s
Third New International Dictionary (unabridged ed. 1993)
(of which we take judicial notice). The term “primo” is
also found in an Italian dictionary, translating to “first,
foremost, leading” in English. Cassell’s Italian
Dictionary (1967) (of which we take judicial notice). This
meaning and/or translation and the number of registrations
containing the term PRIMO for food products is evidence
that PRIMO is at least a highly suggestive term for such
Ser No. 78157145
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goods. Even assuming arguendo that consumers are
accustomed to distinguishing the several PRIMO marks for
food on the basis of other portions of the marks, we do not
view this to be the case by the mere addition of the term
NATURALE. As discussed above, the term NATURALE is highly
descriptive, if not generic when used in connection with
food items. Thus, we simply do not believe that consumers
would look to NATURALE in applicant’s mark as a
distinguishing or source-indicating feature and as a result
not be confused between PRIMO and PRIMO NATURALE for meats
and sausages. Rather, we find that consumers familiar with
registrant’s sausages sold under the mark PRIMO, upon
encountering applicant’s mark PRIMO NATURALE for meats,
would be likely to be confused as to the source of
applicant’s goods, mistakenly believing that applicant’s
mark identifies a natural line of meats emanating from
registrant. Applicant could, based on its identification
of “meats,” use its mark on sausages similar to
registrant’s, and both applicant’s and registrant’s
products might be found next to or near each other in the
supermarket. The fact that the goods can be purchased on
impulse only adds to the likelihood of confusion, since a
consumer is not likely to engage in any deliberation about
whether the additional term NATURALE identifies a separate
Ser No. 78157145
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source of the goods; moreover, because, as we have said,
NATURALE will be viewed as merely describing that the meat
has no additives, even a careful consumer is not likely to
regard the differences in the marks as indicating that the
goods emanate from separate sources. In short, for the
reasons we have discussed--the legal identity of the goods,
channels of trade and customer, the similarity of the
marks, and the fact that the goods will be purchased by
ordinary consumers who may buy the products on impulse--
consumers are likely to believe that the products sold
under these similar marks come from a common source.
In comparing the marks, we have not ignored the
subordinate NATURALE portion of applicant’s mark. Indeed,
we have considered applicant’s mark PRIMO NATURALE in its
entirety, and find that this mark is similar to
registrant’s mark PRIMO in sound, appearance, meaning and
commercial impression.
One last point requires comment. During prosecution,
applicant claimed that the term “primo” connotes “first”
and therefore is laudatory and does not function as a mark.
To the extent that applicant’s allegations constitute a
collateral attack on registrant’s registration, they are
impermissible. Section 7(b) of the Trademark Act, 15
U.S.C. §1057(b), provides that a certificate of
Ser No. 78157145
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registration on the Principal Register shall be prima facie
evidence of the validity of the registration, of the
registrant’s ownership of the mark and of the registrant’s
exclusive right to use the mark in connection with the
goods or services identified in the certificate. During ex
parte prosecution, including an ex parte appeal, an
applicant will not be heard on matters that constitute a
collateral attack on the cited registration (e.g., a
registrant’s nonuse of the mark). In re Dixie Restaurants,
41 USPQ2d at 1534; and In re Peebles Inc., 23 USPQ2d 1795,
1797 n.5 (TTAB 1992). See TMEP § 1207.01(d)(iv) (5th ed.
2007). Accordingly, no consideration has been given to
applicant’s arguments in this regard.
In view of the above, the likelihood of confusion
refusal is affirmed.
Decision: The refusals to register are affirmed.