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. 1 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) 2 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 3 (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 Myanmar 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 Yangon 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”).