Wednesday, September 24, 2014

ZAFRAN Deceptive and Deceptively Misdescriptive for Sauces and Salsas, Says TTAB

The Board affirmed refusals to register ZAFRAN and CUSTOM CULINARY ZAFRAN for "sauces and salsas" [CULINARY disclaimed], on grounds that the marks are both deceptive under Section 2(a) and deceptively misdescriptive under Section 2(e)(1)]. Both applications contained the statement that "the English translation of ZAFRAN is saffron" and applicant stated that its goods do not contain saffron. In re Griffith Laboratories International, Inc., Serial Nos. 85332209 and 85332239 (September 19, 2014) [not precedential].

According to the evidence, saffron is known as the "king of spices" and is "the world’s most expensive spice." It is widely used in many cuisines, including Italian, French, Indian, Persian, European, Arab, and Turkish. Saffron is said to have a unique flavor for which there is no substitute. It also has religious and medical uses. Examining Attorney Brian Neville submitted evidence of use of "zafran" in the United States, meaning saffron, including a dish containing "zafran sauce" sold by an Italian restaurant in New York City.

Section 2(a) Deceptiveness: The Board applied the CAFC's test for Section 2(a) deceptiveness:

(1) Is the term misdescriptive of the character, quality, function, composition or use of the goods?
(2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods?
(3) If so, is the misdescription likely to affect a significant portion of the relevant consumers’ decision to purchase?

Applicant conceded, and the evidence established, that "zafran" is a synonym for, or an alternative spelling of "saffron." If "saffron" is deceptive for applicant's goods, then so is "zafran." A mark that includes a deceptive term is deceptive under Section 2(a).

The Board found that, because saffron in used in a number of sauces and salsa, but not in applicant's, it is misdescriptive of applicant's goods. Moreover, consumers are likely to believe that applicant's goods contains saffron. Finally, the "king of spices" would be a desirable ingredient because of its unique flavor  and its medicinal properties.

The Board concluded that ZAFRAN is deceptive for applicant's goods, and therefore it affirmed the Section 2(a) refusal.

Section 2(e)(1) Deceptive Misdescriptiveness: For the sake of completeness, the Board considered the alternative refusal. It noted that deceptive marks (Section 2(a)) are unregistrable, whereas deceptively misdescriptive marks may be registered on the Supplemental Register, or on the Principal Register with a showing of acquired distinctiveness under Section 2(f).

The test for deceptive misdescriptiveness consists of the first two points or questions of the deceptiveness test. The Board already answered those two questions in the affirmative, and so it affirmed the Section 2(e)(1) deceptive misdescriptiveness refusal as well.

Read comments and post your comment here;

TTABlog note:  Although evidence attached to an appeal brief is usually rejected as untimely (or duplicative), the Board may take judicial notice of dictionary definitions, and it did so here with regard to the definition of "saffron" submitted by applicant.

Text Copyright John L. Welch 2014.


At 10:42 AM, Anonymous Joe Dreitler said...

Let me get this right, Zafran is the foreign equivalent of Saffron and the mark is Zafran for sauces that do not contain Saffron? Sounds like the 50 year old "silk" cases for clothing that did not contain silk - which were considered deceptive.
Answer, No, I WNHA to wind up with a published decision that says you rae using a deceptive term for your goods.

At 6:05 PM, Anonymous Anonymous said...

Did anyone notice that the attorney representing the applicant was Barry SUFRIN?


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