Thursday, August 04, 2011

Test Your TTAB Judge-Ability: Must "FRESH" Be Disclaimed for Frozen Desserts?

Applicant Farr's Fresh, Inc. applied to register the mark FARR'S FRESH for "retail frozen dessert store services," but the Examining Attorney required a disclaimer of FRESH, pursuant to Section 6(a) of the Act, contending that the term is merely descriptive of the services. Applicant argued that consumers do not immediately associate FRESH with frozen desserts but rather with such non-processed food items as fruits and vegetables. How do you think this came out? In re Farr’s Fresh, Inc., Serial No. 77762425 (July 22, 2011) [not precedential].

Examining Attorney Michael A. Weiner submitted a dictionary definition of "fresh" ("Recently made, produced or harvested; not stale or spoiled"), as well as statements from Applicant's own website: e.g., "Our frozen custard tastes like your Grandma's good old-fashioned homemade ice cream - fresh."

Applicant, of course, claimed that the term FRESH was merely suggestive, and that "[t]o journey from encountering the term 'FRESH' to the concept of the service of frozen desserts, a consumer's mind must first associate the term 'FRESH' with food instead of newness of novelty, then with frozen desserts instead of non-processed foods." Moreover, noted Applicant, there are multiple definitions of FRESH. The Board, however, pointed out once again that the mark must be considered not in a vacuum, but in the context of the services at issue.

Within the context of retail store services featuring frozen desserts, prospective consumers will perceive the term “fresh” as describing a quality of the desserts items for sale. The dictionary definition of “fresh” noted above, coupled with applicant’s own website touting the “fresh” or newly made quality of its frozen desserts, directly show that prospective consumers are not required to make a mental leap to draw the conclusion that the frozen desserts sold in applicant’s retail stores are “fresh,” or recently made.

The Examining Attorney also supplied evidence of third-party usage of FRESH in the frozen dessert retail store industry. The Board concluded that FRESH in connection with retail service featuring frozen desserts "unambiguously refers to dessert items which are newly-made."

Applicant pointed to third-party registrations with no disclaimer of FRESH, but although they show inconsistent treatment of the word, none of the registrations involve retail frozen dessert services and so are of little probative value. Moreover, many of the marks consist of unitary terms or slogans wherein a disclaimer of FRESH is not required, and they are of no probative value. ["An Examining Attorney has discretion not to require a disclaimer of a descriptive term when it appears in a slogan."]

And so the Board affirmed the refusal to register.

TTABlog comment: Was Applicant's argument so Farr-fetched that this should have been a "WYHA?" case? Does the citation of those third-party registrations suffice to push this case out of the "WYHA?" category?

Text Copyright John L. Welch 2011.


At 9:27 AM, Anonymous Joe Dreitler said...

Was not so far fetched...but if it was not merely descriptive it was misdescriptive/deceptive in that it's a dairy product and it is either "fresh" or it is not fresh. See FDA vs. Procter & Gamble (Citrus Hill Fresh Choice).

At 1:43 PM, Anonymous Alex Butterman said...

Frankly, I think it is a little far fetched because I would suspect that the USPTO has been requiring disclaimers of FRESH on virtually any food product or service since the disclaimer practice was initiated. Moreover, and probably along the lines of what Joe is saying, why isn't "fresh" relevant to "frozen desserts?" When I think of frozen desserts, I can think of various fruit based desserts and desserts with cream or milk which are all subject to spoiliage.
And, finally, I think the applicant would have gotten further with an argument that the mark was subject to the unitary exception to disclaimers because of the "F" alliteration, but I'm not sure that would have prevailed either.

At 1:44 PM, Anonymous Anonymous said...

"FRESH FROZEN" is a term used quite often in the frozen food industry.

There is a FRESH FROZEN registration with a disclaimer of FRESH FROZEN.

I think it was clear WYHA.

At 3:20 PM, OpenID timmaguire42 said...

Count me in the "not descriptive, but misleading" camp. If it's frozen, it ain't fresh, no matter how common the term in the industry.

At 9:24 PM, Anonymous engineer said...

I tell clients to stay miles away from a dictionary if they want real protection. FARR'SFRESH, like SILKYFRESH, might have escaped the descriptiveness axe, but with FRESH labeled descriptive the owner is vulnerable to a competitor wanting to register SMITH'S FRESH. Would Farr's have fared better with the design mark rather than the word mark?


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