Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA497520 Filing date: 10/01/2012 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 85260850 Applicant RYW Enterprises, LLC Applied for Mark CRAB RANGOON Correspondence ADAM J. BRUNO Address BAY STATE IP, LLC 101 ARCH ST FL 19 BOSTON, MA 02110-1130 UNITED STATES [email protected] Submission Appeal Brief Attachments Appeal Brief - Crab Rangoon.pdf ( 10 pages )(61973 bytes ) Exhibit 1 for Response to OA for CRAB RANGOON.pdf ( 3 pages )(137770 bytes ) Exhibit 2 for Response to OA for CRAB RANGOON.pdf ( 2 pages )(165738 bytes ) Filer's Name Adam J. Bruno Filer's e-mail [email protected] Signature /Adam J. Bruno/ Date 10/01/2012 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE

TRADEMARK TRIAL AND APPEAL BOARD

APPEAL BRIEF

Applicant: RYW Enterprises, LLC

Serial No.: 85/260,850

Filed: 3/08/2011

Mark: CRAB RANGOON

Docket No.: 1001.108.RYW

Sir/Ma'am:

Please Find Enclosed Applicant's Main Brief.

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INDEX OF CASES

H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc. 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986)

In re Atavio Inc., 25 U.S.P.Q.2d 1361, 1362 (TTAB 1992)

In re Gourmet Bakers, Inc. 173 U.S.P.Q. 565, 565 (TTAB 1972)

In re Gyulay, 3U.S.P.Q.2d 1009, 109 (Fed. Cir. 1987)

In re Johanna Farms Inc., 8 U.S.P.Q. 1408, 1412 (TTAB 1988)

In re Nett Designs, Inc., 236 F. 3d 1339, 1342 (Fed. Cir. 2001)

In re Pennzoil Prods. Co., 20 U.S.P.Q.2d 1753, 178 (TTAB 1986)

In re Recorded Books, Inc. 42 U.S.P.Q.2d 1275, 1277 (TTAB 1997)

In re Societe Generale, 3 U.S.P.Q.2d 1450, 1452 (Fed. Cir. 1987)

In re TBG, Inc., 229 U.S.P.Q. 759 (TTAB 1986)

In re Waverly Inc., 27 U.S.P.Q.2d 1620, 1624 (TTAB 1993)

Magic Wand Inc. v. RDB Inc., 19 U.S.P.Q.2d 1551, 1554 (Fed. Cir. 1991)

The Hoover Co. v. Royal Appliance Mfg. Co., 57 U.S.P.Q.2d 1720 (Fed. Cir. 2001)

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I INTRODUCTION

Applicant RYW Enterprises, LLC submitted a trademark application for the mark

"CRAB RANGOON" on March 8, 2011. On January 31, 2012, the Examining Attorney issued a

final refusal to registration of the above-referenced mark on the Principal Register pursuant to 15

U.S.C. Section 1052(e)(1), holding that the above-referenced mark, when used on or in

connection with its identified services, merely describes a feature of applicant’s goods. Applicant

respectfully appeals this decision, arguing that applicant’s applied-for mark does not merely

describe a feature of applicant’s goods.

II. ARGUMENT

As the Office Action issued a refusal for merely descriptiveness, including a generic

advisory, applicant responds to the merely descriptive refusal and generic advisory as follows:

In the Office Action, registration on the Principal Register has been refused as the Office

Action states the above-referenced mark, when used on or in connection with its identified services, merely describes the goods/services of the product CRAB RANGOON, that being food.

Applicant herein asserts, in conjunction with submitting supportive argumentative matter, that due to the dissimilar nature of the terms contained within the mark, in conjunction with the perception to be drawn by the relevant consumer public, the mark is neither merely descriptive, nor generic, but is, at worst, merely suggestive to the relevant consumer, the average United

States purchaser. Thus, applicant respectfully requests that the refusal be removed.

If a mark is descriptive, it cannot be registered on the Principal Register without proof of secondary meaning. If, however, a mark is suggestive, no such proof is necessary and the mark is registrable without more, since it is technically stronger. In re Gyulay, 3U.S.P.Q.2d 1009, 109

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(Fed. Cir. 1987). In order for the applicant to overcome a prima facie showing of descriptiveness, the applicant must show that the mark is incongruous, indefinite or susceptible to multiple connotations, or requires imagination, cogitation, or gathering of further information in order for the relevant public to perceive any significance of the term as it relates to a significant aspect of applicant’s product or services. T.M.E.P.§1209.01(a) The more that the relevant consumer perception of the mark relies on the consumer’s imagination, the more likely the mark is suggestive rather than descriptive. In re Atavio Inc., 25 U.S.P.Q.2d 1361, 1362

(TTAB 1992) (One which is only suggestive requires some imagination, thought or perception to determine its meaning in relation to the goods.)

A mark is merely descriptive if the mark “immediately conveys” the ingredients, qualities, or characteristics of the goods or services with which it is used. The Hoover Co. v.

Royal Appliance Mfg. Co., 57 U.S.P.Q.2d 1720 (Fed. Cir. 2001). While it is desirable to create a strong showing that the mark is suggestive, it is enough to make it an open question since the examining attorney bears the burden of establishing that the mark is merely descriptive. In re

Pennzoil Prods. Co., 20 U.S.P.Q.2d 1753, 178 (TTAB 1986) When the issue of whether a mark is merely descriptive or suggestive is not clear, the question is to be resolved in favor of the applicant. In re Gourmet Bakers, Inc. 173 U.S.P.Q. 565, 565 (TTAB 1972)

Thus, taking the imagination and cognitive nature of the mark as a whole, particularly considering that the focal point of the mark, “rangoon”, is a non-English term with no connection to the goods of applicant’s mark, in conjunction with the standard that cuts in favor of the applicant when it is not clear if the mark is merely descriptive or suggestive, the refusal should be removed.

4

Taking the terms “crab” and “rangoon” on their face, wherein the descriptive nature of the term “crab” is undeniable when crab meat is incorporated within applicants goods, the suggestive nature of the term “rangoon” is as equally undeniable, particularly as the term is a derivation of a city in a far distant country, and in fact a country not regularly accorded recognition for these kinds of goods. As shown below, although numerous foreign terms have become synonymous with particular food terms within the United States (wonton, mai tai, fajita, quesadilla, to name a few), the dearth of United States registered trademarks utilizing the term

“rangoon” clearly illustrates the descriptive or generic nature of the applicant’s mark.

In light of the composite nature of applicant’s mark, wherein the individual terms, crab

(English term for a kind of Seafood) and rangoon (a city and no affiliation with food), are not terms normally seen together in common United States usage prior to applicant’s employment thereof, the mark should qualify as non-descriptive and non-generic. Furthermore, as illustrated above, the term Rangoon does not and did not possess any significant meaning in relation to applicant’s goods or any significant meaning in the food industry. Applicant’s assertions herein are bolstered by the fact that the term “rangoon” has been used by applicant since 1981 and still, a Google search revealed many more results for the city of in

Myanmar. Thus, in line with the applicable standard, applicant’s term “rangoon” does not immediately convey anything regarding the ingredients, qualities, or characteristics of any food, as it is known as a city. Therefore, taking into account the imagination and cognitive nature of the mark, the focal point of the mark, and that it is unclear if the mark is merely descriptive or suggestive; the question is to be resolved in favor of the applicant.

Addressing the entirety of the mark in the sense of generic quality, the combination of languages or origins of the differing terms utilized in the mark illustrates the non-generic nature

5 of the mark as a whole. According to Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1),

“A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods and/or services.” However, "a composite mark having two or more admittedly descriptive elements is, in fact not necessarily merely descriptive. When joined in a single mark, the descriptive terms may create a distinct commercial impression which is not merely descriptive." In re TBG, Inc., 229 U.S.P.Q. 759

(TTAB 1986) (emphasis added).

The test for genericness is simple and consists of only two questions: 1. What is the class of goods or services at issue? 2. Does the relevant public understand the designation primarily to refer to that class of goods or services? H. Marvin Ginn Corp. v. International Ass’n of Fire

Chiefs, Inc. 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986) (“The critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be protected to refer the genus of goods or services in question.”)

The burden is on the U.S. Trademark Office to show by clear and convincing evidence that a term is unregistrable as a generic name. In re Recorded Books, Inc. 42 U.S.P.Q.2d 1275,

1277 (TTAB 1997) (“with respect to genericness, the Office has the burden of proving genericness by clear and convincing evidence’ thereof”). Any doubt with respect to the issue of genericness is to be resolved in the favor of the applicant. In re Waverly Inc., 27 U.S.P.Q.2d

1620, 1624 (TTAB 1993) (“We are aware, of course, of the sometimes thin line of demarcation between a highly descriptive term and a generic term. Although the record herein presents a very close case, any doubt on the matter should be resolved in the applicant’s favor and the mark should be published for purposes of opposition.”)

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The primary or principal significance of a word is what most of the relevant public regards the word as meaning. In re Johanna Farms Inc., 8 U.S.P.Q. 1408, 1412 (TTAB 1988)

[I]f some members of the public regard it as generic, but the majority believe it is a trademark, it is a trademark. Magic Wand Inc. v. RDB Inc., 19 U.S.P.Q.2d 1551, 1554 (Fed. Cir. 1991). (…

“[E]vidence of generic use by [a] small part of the relative purchasing public has limited probative value…”). The relative public is the purchaser of the goods or services identified in the application. Id.

Therefore, the Trademark Office possesses the burden of showing, by clear and convincing evidence that the phrase CRAB RANGOON, in its entirety, is generic and any doubt with respect to the issue of genericness is to be resolved in the favor of the applicant. In many cases, the U.S. Trademark Office’s own evidence creates ambiguities or contradictions which make the submissions less than “clear evidence.” In re Societe Generale, 3 U.S.P.Q.2d 1450,

1452 (Fed. Cir. 1987). (“We think the evidence is inadequate to show that the bulk of the cosmetics purchasers, or even a significant portion of them, would, upon seeing the word Vittel on a bottle of skin lotion or the like, conclude that is a place name and that the lotion came from there, rather than simply a trademark or trade name of a manufacturer like Chanel, Bourgois, or

Vuitton.”).

Herein, as in In re Societe Generale, applicant asserts that upon seeing the term

“rangoon” within the mark CRAB RANGOON on a food package or a restaurant menu, the bulk of food purchasers would not conclude that Rangoon (Yangon) is the name of a city and that the food package or menu item came from such place. Rather, the consumer would simply take the overall mark to be a trademark or trade name of a manufacturer, much like Chanel, Bourgois, or

Vuitton. The bulk of the food consumers within the United States, albeit of diverse origins and

7 ethnic heritages, would have little knowledge regarding the term “rangoon”, let alone the city of

Yangon, Myanmar. Thus, despite the fact that some members of the public may regard the singular term “rangoon” as generic, the majority of the consumers would believe it is a trademark. As such, the term “rangoon” alone should qualify as a trademark. 19 Magic Wand

Inc. v. RDB Inc., 19 U.S.P.Q.2d 1551, 1554 (Fed. Cir. 1991).

As a further argumentative matter, applicant asserts that Applicant’s mark possesses a construction similar to a myriad of current U.S. Registrations for food products. For example, the situation herein is entirely analogous to that of a grouping of U.S. registrations utilizing the term “wonton” and registered in classifications 029 and 030 for food goods. The marks

WONTON ROLLS, United States Registration No. 1657058, for Oriental snacks consisting of beef, cheese and beans in an egg and flour wrap in class 030, WONTON CHICKEN

HAPPINESS, United States Registration No. 3828375, for tossed garden salad for retail sale, catering or for on-site consumption in class 029, CARAMEL APPLE "SIN" AMON WONTON

SUNDAE, United States Registration No. 2586089, for food, namely, a dessert consisting of cinnamon-sugared crispy wonton strips, topped with vanilla ice cream and hot cinnamon apples, and drizzled with hot caramel in class 030, represent identical literal constructions to that of applicant’s mark, wherein a foreign language term and a standard English food term are combined.

Just as in applicant’s mark, the series of marks above consist of a foreign term and a descriptive food term and all of the marks exist with food classifications of goods. The Office allowed these marks with this construction, identical to applicant’s instant mark. In actuality, the above discussed marks possesses a greater descriptive quality than that of applicant’s mark as the term “wonton” has clearly gained much more notoriety within the United States, than the term

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“Rangoon.” This fact is clearly illustrated by the number of trademarks on the Federal Registry

with the term “wonton”.

Consideration should be given to registered, similar marks in order to maintain

consistency in trademark prosecution. “Even if some prior registrations had some characteristics

similar to Nett Designs’ application, the PTO's allowance of such prior registrations does not

bind the Board or this court. Needless to say, this court encourages the PTO to achieve a

uniform standard for assessing registrability of marks.” (emphasis added) In re Nett Designs,

Inc., 236 F. 3d 1339, 1342 (Fed. Cir. 2001).

Once again, applicant utilizes a series of ethnic food marks to illustrate how applicant’s

mark possesses a construction similar to a myriad of current U.S. Registrations for food

products. Two groupings which also exist are Mexican foods such as “quesadillas” and “fajitas”.

First reviewing marks with the term “quesadillas”, the mark KRISPY QUESADILLA, United

States Registration No. 3788920, for Frozen, packaged or prepared Mexican-style foods with and

without meat, namely, lightly battered quesadillas, in class 046, and the mark PIZZA

QUESADILLA, United States Registration No. 2892914, for frozen pizza quesadilla, in class

046, are also extremely analogous to applicant’s mark. In the same manner, TAKIS CRUNCHY

FAJITA, United States Registration No. 3783796 for corn-based snack foods, in class 030 and

SIZZLIN' SAUCE STYLE FAJITAS, United States Registration No. 3559414 for Fajitas in

class 030 are also particularly analogous to applicant’s mark as again, a foreign language term

and a standard English food term are used in combination, identically as in applicant’s mark.

Moreover, the mark ORIGINAL MAI TAI, United States Registration No. 2586089, for prepared alcoholic cocktail in class 033, further serves to illustrate the U.S. Trademark Office’s willingness to allow registration of marks in similar stead of applicant’s mark. Although the

9 mark was first in use at least as early as February of 1994, the application was filed in August of

2007 and registered in March of 2010. Thus, any hint of a descriptive or generic nature for the term Mai Tai can be imputed as vitiated by the early date of first use. Herein the same situation exists as applicant has concurrently filed an affidavit of use with this response, wherein applicant illustrates first use of the mark in January of 1981. Thus, in the same manner as the registrant of

ORIGINAL MAI TAI, applicant herein should be afforded the scrutiny of the early date of first use.

Finally, in addition to the above legal arguments, applicant also attaches evidence of the numerous additional names regularly utilized for the goods sold by applicant. As illustrated in the articles and web sites attached as, within the United States, regional distinctions are made and names such as crab and cream cheese wontons, cream cheese wontons, crab.

III. CONCLUSION

Applicant asserts Examining Attorney has erred in refusing registration for applicant’s mark “CRAB RANGOON” and therefore, applicants respectfully requests that this Honorable

Board reverse the decision of the Examining Attorney, and direct that the mark be published for opposition by the public.

Dated: October 1, 2012 Respectfully submitted,

/Adam J. Bruno/ Adam J. Bruno Attorney for Applicant BAY STATE IP, LLC 101 Arch Street, Suite 1930 Boston, MA 02110 (617) 439-3200

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