White Toque, Inc.

Trademark Trial and Appeal Board

Jul 18, 2001

No. 75471926 (T.T.A.B. Jul. 18, 2001)

7/18/01 Paper No. 17
CEW

U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re White Toque, Inc.
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Serial No. 75/471,926
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Myron Amer, Esq. for White Toque, Inc.

Jason Turner, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
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Before Hanak, Walters and Holtzman, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

This case concerns an application on the Supplemental
Register by In re White Toque, Inc. for the mark GOURMET
USA for “exporting third party food products, namely,
purees.”1 The application includes a disclaimer of GOURMET
apart from the mark as a whole.

1 Application Serial No. 75/471,926, was originally filed on April 22,
1998 on the Principal Register based on an allegation of a bona fide
intention to use the mark in commerce. Following an earlier attempt,
on December 18, 1999, applicant filed an amendment to allege use, which
was acceptable except for the issue herein concerning the specimens,
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/471,926

2
The Examining Attorney has issued a final requirement
for the submission of substitute specimens showing use of
the mark in connection with the services identified in the
application. The Examining Attorney contends that the
specimens of record show use of the mark in connection with
goods, i.e., puree, not with the identified services.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested.
When this application was originally filed, as an
intent-to-use application on the Principal Register,
applicant recited its services as “exporting third party
food products, namely, vegetables, cookies, purees, seafood
and meat.” On June 7, 1999, applicant filed, inter alia,
an amendment to allege use; and sought to delete its
recitation of services and to substitute “puree” as the
identification of goods. The Examining Attorney refused to
accept the amended identification because it was not within
the scope of the originally identified services.
Thereafter, applicant amended its recitation of services as
indicated herein.

and applicant successfully amended the application to seek registration
on the Supplemental Register.

Serial No. 75/471,926

3
The specimen in this application is reproduced below:

Applicant contends that the specimen “is an insert
that accompanies in foreign commerce a U.S.A. manufactured
product, namely, a puree, sent to a French user of the
product, namely, MOLSHEIM FR 67.” Applicant states that
the statement in the French language at the bottom of the
specimen indicates that applicant, doing business as
Gourmet USA, is the exporter of the product from the United
States; and that this constitutes an advertisement for
applicant’s services.
The Examining Attorney contends that this specimen is
merely an informational label for the container or
packaging for the goods identified on the purported label.
He points to the fact that the specimen is on a type of
Serial No. 75/471,926

4
paper with a peel-off backing as support for the conclusion
that the specimen is merely a label. The Examining
Attorney also notes applicant’s apparently conflicting
statements during the prosecution of the application.2
Finally, the Examining Attorney argues that the portion of
the specimen referred to by applicant merely conveys
information; and that, even if the specimen is perceived as
an advertisement, the specimen, taken as a whole, conveys
the impression that the product, a puree, comes from
applicant, not that applicant is providing export services
for third parties.
In its reply brief, applicant argues that, regardless
of whether applicant manufactures the products or purchases
them, it has exported them from the United States to “the
French user” with the specimen as an insert in the
shipment.
We conclude that it is immaterial whether the specimen
is a “label” because it has a peel-off backing, or whether
it is an insert in the packaging for the goods. We find
that the specimens of record do not support use of the mark

2 In the original application, applicant states that the mark will be
used on labels affixed to the goods; in applicant’s December 18, 1999
response, applicant states that “[t]he mark is used in advertising on
packaging of an exported puree as shown in the annexed specimen” (which
is the specimen shown herein). Subsequently, applicant contends that
the specimen is an insert sent with the goods.

Serial No. 75/471,926

5
in connection with “exporting third party food products,
namely, purees.” The use of GOURMET USA in a stylized form
at the top of the specimen is likely to be perceived as a
trademark for the goods, a puree. The use of GOURMET USA
at the bottom of the specimen is likely to be perceived
merely as a trade name within an informational statement,
not as a service mark for the identified services.
Either applicant is rendering the identified services
and has submitted unacceptable specimens in support
thereof, or applicant is offering goods for sale, which is
not encompassed by the identification of services herein.
Decision: The refusal is affirmed on the ground that
the Examining Attorney properly required substitute
specimens because the specimens of record do not show use
of the mark in connection with the identified services.