This Opinion Is A Precedent Of The TTAB

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This Opinion is aPrecedent of the TTABHearing: May 11, 2017Mailed: August 3, 2017UNITED STATES PATENT AND TRADEMARK OFFICETrademark Trial and Appeal BoardIn re Empire Tech. Dev. LLCSerial No. 85876688Everett E. Fruehling of Christensen O’Connor Johnson Kindness PLLC for EmpireTechnology Development LLC.Yatsye I. Lee, Trademark Examining Attorney, Law Office 107,J. Leslie Bishop, Managing Attorney.Before Wellington, Shaw, and Larkin,Administrative Trademark Judges.Opinion by Larkin, Administrative Trademark Judge:Empire Technology Development LLC, successor-in-interest by assignment fromthe original applicant, Invention Development Management Company, LLC(“Applicant”),1 seeks registration on the Supplemental Register of the proposed markCOFFEE FLOUR in standard characters for “flour made by processing and blendingThis application was assigned to Empire Technology Development LLC by an assignmentrecorded in the Patent and Trademark Office on June 20, 2017 under Reel/Frame 6087/0373.Because the assignment occurred after the briefing and oral hearing on this appeal, allreferences to “Applicant” in this opinion are to the original applicant and assignor.1

Serial No. 85876688together coffee cherry skins, pulp, and pectin for use, alone or in combination withother plant and milk based products, as a dry ingredient in food and beverageproducts for consumer use,” in International Class 30.2The Trademark Examining Attorney has refused registration of the proposedmark on the Supplemental Register under Section 23(c) of the Trademark Act, 15U.S.C. § 1091(c), on the ground that the proposed mark is a generic name for theidentified goods, and is thus incapable of distinguishing Applicant’s goods. After theExamining Attorney made the refusal final, Applicant timely appealed and requestedreconsideration, which was denied. Applicant and the Examining Attorney have filedbriefs, and counsel for Applicant and the Examining Attorney appeared at an oralhearing before the panel on May 11, 2017. We affirm the refusal to register.I.Prosecution History and Record on AppealApplicant initially sought registration of its proposed mark on the PrincipalRegister for “processed coffee cherry skins, pulp, and pectin for use, alone or incombination with other plant and milk based products, as an ingredient in food andbeverage products.” The Examining Attorney issued a first Office Action refusingregistration under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e), on theground that the proposed mark was merely descriptive of the identified goods.3 TheApplication Serial No. 85876688 was filed on March 14, 2013 under Section 1(b) of theTrademark Act, 15 U.S.C. § 1051(b), on the basis of Applicant’s allegation of a bona fideintention to use the proposed mark in commerce. As discussed below, the application wasamended during prosecution to allege use of the mark in commerce under Section 1(a) of theTrademark Act, 15 U.S.C. § 1051(a).3 June 25, 2013 Office Action.2-2-

Serial No. 85876688Examining Attorney made of record dictionary definitions of the words “coffee” and“flour.” She also requested additional product information about, and a detaileddescription of, Applicant’s goods.Applicant responded by traversing the refusal to register and making of recorda Product Specification and Technical Data Sheet for its goods, as well as Internetevidence regarding the production of coffee.4 Applicant simultaneously filed anAmendment to Allege Use claiming first use of its proposed mark in April 2012 andfirst use of its proposed mark in commerce in June 2013, supported by a specimen ofuse.The Examining Attorney issued a second Office Action in which she acceptedApplicant’s Amendment to Allege Use, maintained and continued the descriptivenessrefusal, and issued a second information request requiring Applicant to answerspecific questions about the nature, composition, and intended use of its goods, andthe significance of the word FLOUR in the proposed mark.5 Applicant responded tothe information request by stating, among other things, that the word FLOUR in theproposed mark “suggests the consistency of the product and its ability to be used inbaking and/or incorporation as an ingredient in other products.”6The Examining Attorney issued a third Office Action maintaining and continuingthe descriptiveness refusal, requiring Applicant to clarify its identification of goods,4December 24, 2013 Response to Office Action.5January 22, 2014 Office Action.6July 22, 2014 Response to Office Action at 1.-3-

Serial No. 85876688and noting that the proposed mark appeared to be generic for the identified goods.7The Examining Attorney made of record pages from a Wikipedia entry regardingcoffee beans and pages from Applicant’s website at coffeeflour.com describingApplicant’s goods.Applicant responded to the third Office Action by amending the identification ofits goods to “processed coffee cherry skins, pulp, and pectin blended together for use,alone or in combination with other plant and milk based products, as a dry ingredientin food and beverage products for consumer use,” and amending its application toseek registration on the Supplemental Register.8The Examining Attorney issued a fourth Office Action continuing the requirementthat Applicant clarify its identification of goods and refusing registration on theSupplemental Register under Section 23(c) of the Trademark Act, 15 U.S.C. § 1091(c),on the ground that Applicant’s proposed mark is a generic term for the goods.9 TheExamining Attorney made of record Internet evidence that she claims shows thatthird parties use the proposed mark to refer to flour made from coffee cherries, aswell as Applicant’s published patent application No. US14/364,925, which seeks aUnited States patent for a “Process for obtaining honey and/or flour of coffee from thepulp or husk and the mucilage of the coffee bean.”10 The Summary and Background7August 13, 2014 Office Action.8February 13, 2015 Response to Office Action.9March 14, 2015 Office Action.In its appeal brief, Applicant acknowledges ownership of this application. 13 TTABVUE11. The record does not show that a patent has issued.10-4-

Serial No. 85876688portions of the patent application explain in detail the historical dispositions of the“sub-products” of coffee production (the mucilage, and the pulp (or husk) surroundingthe coffee bean), as well as the claimed inventions for obtaining “coffee honey” and“coffee flour” from these sub-products. Two days later, the Examining Attorney issueda fifth Office Action superseding the fourth Office Action and continuing the refusalto register the mark on the Supplemental Register and the refusal based upon theindefiniteness of the identification of goods.11 The Examining Attorney made of recordadditional pages from Applicant’s website.Applicant responded to the fifth Office Action by traversing the refusal to registeron the Supplemental Register.12 Applicant made of record pages from the Patent andTrademark Office’s TSDR database regarding its Registration No. 480648713 on thePrincipal Register for the mark shown belowand its pending application Serial No. 8600129314 to register the mark shown belowIn continuing the indefiniteness refusal, the Examining Attorney advised Applicant thatits goods “must be clarified because applicant fails to use the common commercial name forthe goods, i.e. flour” and because “the goods are in fact a type of flour made from processedcoffee cherry products.” The Examining Attorney suggested the identification language thatApplicant ultimately adopted.1112September 14, 2015 Response to Office Action.Issued on September 8, 2015. The mark is described as “consist[ing] of stylized lettersforming the words ‘COFFEE FLOUR’ where the letter ‘O’ in the word ‘COFFEE’ is in theshape of a stylized coffee cherry.”13Published for opposition on September 8, 2015. Applicant argues in its brief that thisapplication has matured into Registration No. 4876584, 13 TTABVUE 12, but thatregistration is not in the record.14-5-

Serial No. 85876688both containing disclaimers of the words “coffee flour” and covering “flour made byprocessing and blending together coffee cherry skins, pulp, and pectin for use, aloneor in combination with other plant and milk based products, as a dry ingredient infood and beverage products for consumer use.” Applicant also amended itsidentification of goods to match its other applications to read “flour made byprocessing and blending together coffee sherry skins, pulp, and pectin for use, aloneor in combination with other plant and milk based products, as a dry ingredient infood and beverages for consumer use.”The Examining Attorney issued a sixth Office Action accepting Applicant’samendment to its identification of goods,15 and making final the refusal to register onthe Supplemental Register.16 The Examining Attorney made of record additionalInternet webpages regarding Applicant’s product, additional dictionary definitions of“coffee” and “flour,” pages from the website of the National Coffee Associationanswering the question “What is Coffee?,” additional pages from Applicant’s website,and pages from third-party websites regarding various types of grain-free flours.Applicant then filed a Notice of Appeal and a Request for Reconsideration. 4TTABVUE. In its Request for Reconsideration, Applicant made of record a pressrelease issued jointly with Sprouts Farmers Market about a partnership withThe amendment misspelled “cherry” as “sherry.” The Examining Attorney noted andcorrected this typographical error in the sixth Office Action.1516October 15, 2015 Office Action.-6-

Serial No. 85876688Applicant, articles from several websites discussing Applicant’s product, a letter fromthe U.S. Customs and Border Protection division of the Department of HomelandSecurity to Applicant’s customs agent in response to a request for a tariff clarificationruling for Applicant’s product,17 a definition of the word “genus” from A Dictionary ofModern Legal Usage, a Material Safety Data Sheet regarding Applicant’s product,and a three-minute promotional video regarding its new product.The Examining Attorney denied the Request for Reconsideration, 5-9 TTABVUE,making of record additional webpages regarding grain-free flours identified by theuse of the word “flour” together with the name of the source plant, nut, or fruit fromwhich the flour is produced.II.Analysis of Genericness Refusal“In order to qualify for registration on the Supplemental Register, a proposedmark ‘must be capable of distinguishing the applicant’s goods or services.’” In reEmergency Alert Sols. Grp., LLC, 122 USPQ2d 1088, 1089 (TTAB 2017) (quoting 15U.S.C. § 1091(c)). “Generic terms do not so qualify.” Id.; see also Clairol, Inc. v. RouxDistrib. Co., 280 F.2d 863, 126 USPQ 397, 398 (CCPA 1960) (“The generic name bywhich a product is known is not a mark which can be registered on the SupplementalRegister under section 23 because such a name is incapable of distinguishingapplicant’s goods from goods of the same name manufactured or sold by others.”)Applicant’s product was classified as falling under Subheading 0901.90.1000 of theHarmonized Tariff Schedule of the United States, which is described in the classificationruling and under Foreign Trade Schedule B of the U.S. Census Bureau, which Applicant alsomade of record, as covering “Coffee husks and skins.” April 14, 2016 Request forReconsideration at 9-10, 23-24.17-7-

Serial No. 85876688“A generic term ‘is the common descriptive name of a class of goods or services.’”Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827,1830 (Fed. Cir. 2015) (quoting H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc.,782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986)). The test for determining whethera proposed mark is generic is its primary significance to the relevant public.Emergency Alert, 122 USPQ2d at 1089 (citing In re Am. Fertility Soc’y, 188 F.3d 1341,51 USPQ2d 1832, 1837 (Fed. Cir. 1999)). “Making this determination ‘involves a twostep inquiry: First, what is the genus of goods or services at issue? Second, is the termsought to be registered . . . understood by the relevant public primarily to refer to thatgenus of goods or services?’” Id. (quoting Marvin Ginn, 228 USPQ at 530).The Examining Attorney must demonstrate that COFFEE FLOUR is generic by“clear evidence” of generic use. In re Hotels.com, L.P., 573 F.3d 1300, 87 USPQ2d1100, 1104 (Fed. Cir. 2009); Emergency Alert, 122 USPQ2d at 1830 (citing cases).A.The Genus of Goods“[O]ur first task is to determine, based upon the evidence of record, the genus ofApplicant’s goods . . . .” In re ActiveVideo Networks, Inc., 111 USPQ2d 1581, 1600(TTAB 2014). The genus of goods is often defined by the identification in the subjectapplication, see In re Meridian Rack & Pinion, 114 USPQ2d 1462, 1463 (TTAB 2015);In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1636 (Fed. Cir. 2016), butwe may also “consider evidence provided from Applicant’s website and press releases,from third-party websites, and from dictionaries, newspaper articles and other suchsources.” ActiveVideo, 111 USPQ2d at 1600.-8-

Serial No. 85876688Defining the genus “is not an end in itself, but a means towards determiningwhether a term is generic, i.e., whether consumers understand the term at issue asprimarily referring to the goods or services (rather than to the source).” Id. at 1602n.77. “Sometimes an applicant’s description of goods/services is simple and clearenough that it may be used verbatim as the ‘genus.’ Other times, as in this case,distillation of a complicated or lengthy description of goods/services into a clear, moresuccinct ‘genus’ greatly facilitates the determination of whether a term is generic.”Id.The Examining Attorney argues that Applicant’s entire identification of goods inthe application, namely, “flour made by processing and blending together coffeecherry skins, pulp, and pectin for use, alone or in combination with other plant andmilk based products, as a dry ingredient in food and beverage products for consumeruse,” adequately defines the genus of Applicant’s goods. 15 TTABVUE 6.Applicant argues that the “evidence of record shows that the genus, or major classor kind, of the goods in question is not COFFEE FLOUR.” 13 TTABVUE 11. Thisargument improperly conflates the first Marvin Ginn inquiry—defining the genus ofApplicant’s goods—with the second inquiry—determining whether COFFEE FLOURprimarily refers to that genus. In its argument regarding the lack of a competitiveneed to use COFFEE FLOUR as a generic term, however, Applicant states that“consumers are not likely to come to the conclusion that COFFEE FLOUR is thegenus of flour made of coffee cherry skins, pulp, and pectin.” 13 TTABVUE 14. Thissuggested genus is a shortened version of the portion of its identification of goods that-9-

Serial No. 85876688reads “flour made by processing and blending together coffee cherry skins, pulp, andpectin . . . .”We find that “flour made from coffee cherry skins, pulp and pectin,” a modifiedversion of Applicant’s suggested genus, is more succinct and useful in our analysisunder the second Marvin Ginn inquiry than is the entire identification of the goodsin the application, which also includes language specifying how the goods are madeand used.18 “Flour made from coffee cherry skins, pulp and pectin” “capture[s] theessence of the genus involved herein, using somewhat fewer words than [was]required by the Office in order for this Applicant to present a definite identificationof goods . . . .” Active Video, 111 USPQ2d at 1602.B.The Relevant Purchasing Public’s Understanding of COFFEEFLOURWe turn now to the second inquiry under Marvin Ginn, whether COFFEE FLOURis understood by the relevant public primarily to refer to flour made from coffee cherryskins, pulp and pectin.1. Defining the Relevant Purchasing PublicWe must first identify the relevant purchasers of the goods. Id. We again refer tothe record to do so. See, e.g., In re Tennis Indus. Assoc., 102 USPQ2d 1671, 1674(TTAB 2012).In a response to an information request during prosecution, Applicant stated that the word“flour” in its proposed mark suggests the product’s “ability to be used in baking and/orincorporation as an ingredient in other products.” July 22, 2014 Response to Office Action at1. The record enables us to determine how, and by whom, flour made from coffee cherry skins,pulp and pectin is used for purposes of our analysis under the second Marvin Ginn inquiry.18- 10 -

Serial No. 85876688The Examining Attorney argues that “the relevant public is the purchasing orconsuming public for the identified goods,” which she argues comprises “ordinaryconsumers who purchase applicant’s goods, because there are no restrictions orlimitations to the channels of trade or classes of customers.” 15 TTABVUE 7-8 (citingSheetz of Delaware, Inc. v. Doctor’s Assocs., Inc., 108 USPQ2d 1341, 1351 (TTAB2013) (citing Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1553(Fed. Cir. 1991)). She does not specifically identify the “ordinary consumers whopurchase applicant’s goods.”Applicant does not expressly address this issue. The closest that it comes todefining the relevant purchasing public is its listing of various persons in itsrhetorical question “ask any coffee drinker, chef, baker, pastry lover or other relevantconsumer, what is COFFEE FLOUR?” 13 TTABVUE 16.The record includes the various articles regarding cooking and baking withApplicant’s product discussed below, and on that basis we find that the relevantpurchasing public for the genus of flour made from coffee cherry skins, pulp andpectin consists of persons who use flour for baking or as an ingredient in foods andbeverages, including retailers who sell foods and beverages, restaurants, bakeries,producers and sellers of foods and beverages, and members of the public who cookand bake.2. The Evidence Regarding the Relevant Purchasing Public’sUnderstanding of COFFEE FLOUR“Evidence of the public’s understanding of a proposed mark may be obtained ‘fromany competent source, such as consumer surveys, dictionaries, newspapers and other- 11 -

Serial No. 85876688publications.’” Princeton Vanguard, 114 USPQ2d at 1830 (quoting In re NorthlandAluminum Prods., Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985)). TheUnited States Court of Appeals for the Federal Circuit has also “made it clear thatthe way an applicant uses an alleged mark (or a component term in a mark), or thegoods or services in connection with which it uses the alleged mark, in promotionalmaterials or packaging, is relevant to whether consumers will perceive the mark asan indicator of source or instead as descriptive or generic.” ActiveVideo, 111 USPQ2dat 1590 n.22 (citations omitted); see also In re Gould Paper Corp., 834 F.2d 1017, 5USPQ2d 1110, 1112 (Fed. Cir. 1987).We emphasize that this appeal involves the rare situation in which Applicant hascreated a new genus of goods by being the first (and, according to the record, the only)producer and seller of a new product—flour made from coffee cherry skins, pulp andpectin. Professor McCarthy has described the branding challenges facing a categorycreator like Applicant as follows:The situation of a new product with a name which is firstused by the seller, is the classic context in which a namebecomes generic. That is, a seller comes on the market witha product the public has never seen before. What will thepublic call it? If the public adopts as the generic name ofthe thing the word that the seller thinks is a mark, then itis no longer a mark at all. . . . The critical period is whenthe product first hits the market. It is then that the publicwill adopt a name for it. In many cases, the seller onlyrealizes what is happening to the word after it is too late.The seller struggles mightily to educate the public to us

Internet webpages regarding Applicant’s product, additional dictionary definitions of “coffee” and “flour,” pages from the website of the National Coffee Association answering the question “What is Coffee?,” a d

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