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 In re Farr’s Fresh, Inc., Serial No. 77762425 (July 22, 2011) [not precedential].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.