Tuesday, July 14, 2009

WYHA? "STEAM N' MASH" Merely Descriptive of Processed Potatoes, Says TTAB

Well, what do you think of this one? Applicant ProMark Brands, Inc. sought to register the marks ORE-IDA STEAM N' MASH and STEAM N' MASH for "processed potatoes," but Examining Attorneys Kathleen H. Lorenzo and Inga Marie Ervin said no. In the former case, Lorenzo demanded a disclaimer of STEAM N' MASH, and in the latter Ervin refused registration, both on the ground of mere descriptiveness. The Board required just over six pages to issue its affirmances. In re ProMark Brands Inc., Serial Nos. 77266099 and 77266087 (June 15, 2009) [not precedential].

In each case, the Examining Attorney relied on definitions of "steam" and "mash," excerpts from numerous websites using the terms "steam" and/or "mash" in describing the preparation of potatoes, and an excerpt from ProMark's own website referring to its STEAM N' MASH potatoes with text describing how easy it is to steam and mash processed potatoes.

ProMark feebly argued that the Examining Attorneys had improperly dissected the mark, and that the mark is at most suggestive. It submitted copies of its own and third-party registrations that include the word "steam" and/or "mash," some of which did not include disclaimers or Section 2(f) claims. And it pointed out [why, one wonders? - ed.] that other foods may be steamed and mashed.

The Board agreed with the Examining Attorneys. Applicant's own website was particularly probative, as were the third-party websites. With regard to the third-party registrations, they do not compel a different result since each case must be decided on its own factual record. Moreover, those registrations and the website excerpts show that "steam" and "mash" have "commonly understood meanings in connection with food preparation, particularly potatoes."

The Board therefore affirmed the refusals.

TTABlog comment: I note that the apostrophe in Applicant's mark seemed to cause the Board some trouble. At page 2, it appears after the N, but at pages 3, 4 and 5 it jumped before the N, and at page 6, it jumps from before to after the N.

Anyway, shouldn't there have been two apostrophes: 'N' ?

I tried to think up a possible double entendre argument for STEAM N' MASH (or STEAM 'N MASH), but couldn't come up with one. Any ideas?

Text Copyright John L. Welch 2009.


At 9:16 AM, Anonymous K. Wimberly said...

How about the mark also meaning "steaming mash?"

At 10:30 AM, Anonymous Josh said...

Judging by the Board's apparent trouble placing the apostrophe, that argument might actually have legs...er...roots.

At 4:33 PM, Blogger Ed Wrath said...

What about these two meanings?

"Steam and Mash" or "Steam then Mash"

At 4:30 PM, Anonymous Chris said...

My understanding is that for the double entendre argument to be successful, the second meaning has to have nondescriptive significance as applied to the goods, correct? All the suggestions are nice, but probably would still be descriptive in the Board's view.

At 9:46 PM, Anonymous Scott E. Kamholz said...

STEAM 'N MASH reminds me of the old BROWN-IN-BAG case, in which the CCPA found that mark inherently distinctive for clear plastic bags. I'm surprised that Applicant didn't even cite it: In re Reynolds Metals Co., 480 F.2d 902, 178 USPQ 296 (CCPA 1973).

At 8:35 AM, Blogger John L. Welch said...

The multi-talented Dr. Scott E. Kamholz is the creator and owner of the ToolPat website at www.toolpat.com.


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