Tuesday, December 23, 2014

TTAB Finds SHRIMP COTIJA SPRING ROLLS Generic for ... Guess What?

Agreeing with Examining Attorney Linda M. Estrada, the Board found the designation SHRIMP COTIJA SPRING ROLLS to be generic for "Dinner rolls, spring rolls and rolls containing shrimp, vegetables and cheese." In addition, the Board found that the applied-for mark fails to function as a trademark because it is merely informational. In re Steven DiFillippo, Serial No. 85013002 (December 17, 2014) [not precedential].

The Board found the genus of goods to be adequately described by the identification of goods, and the relevant consumers to be the general public. The question, then, was whether "the term sought to be registered [is] understood by the relevant public primarily to refer to that genus of goods?"

The examining attorney relied on In re Gould in arguing that the applied-for mark is a compound term because the constituent words are generic (based on dictionary and other evidence) and the term as a whole conveys no different meaning than the words themselves.

Applicant argued that In re American Fertility is applicable, "as the words shrimp, cotija and spring rolls are not united in order to form one compound word, such as [Gould's]  'Screenwipe.'" Under American Fertility the proposed mark (if a phrase) must be considered in its entirety, and dictionary definition of the constituent words do not suffice to prove genericness.  Applicant asserted that there was no evidence that the phrase SHRIMP COTIJA SPRING ROLLS is in use.

Furthermore, applicant maintained that the word "cotija" is not found in the main American dictionaries, and "that the average American citizen does not know that ‘COTIJA’ is a cheese, and does not know of the cheese’s place of origin, Cotija, Mexico." Applicant pooh-poohed evidence from two online references - Wordnik and www.cheese.com - because the former is a collaborative content website that should not carry much evidentiary weight, and the latter is a website for specialists and cheese connoisseurs.

The Board, however, found that other evidence corroborated the Wordnik entry, and it noted that the general public includes persons who are interested in cheese. Moreover, many consumers obtain information from or are exposed to information on the Internet. The Board concluded that "[t]he cumulative weight of the evidence supports a finding that a substantial number of consumers have been exposed to the term 'cotija' as a type of cheese, and, therefore, would understand it to be the name of a type of cheese, despite the absence of the word from the various dictionaries accessed by Applicant."

Applicant pointed to the supposed incongruity of combining the term COJITA (Mexican) with SPRING ROLLS (Asian), but the Board found nothing incongruous or catchy about the combination that would remove from the proposed mark the clear and obvious meaning of the list of ingredients.

Finally, applicant pointed to three registrations that it owns: for BUFFALO CHICKEN SPRING ROLLS (CHICKEN SPRING ROLLS disclaimed) for dinner rolls, spring rolls and rolls containing chicken, cheese and hot sauce; CHICKEN PARM SPRING ROLLS (SPRING ROLLS disclaimed) for dinner rolls, spring rolls and rolls containing chicken, cheese and hot sauce; and PHILLY CHEESE STEAK SPRING ROLLS (SPRING ROLLS disclaimed) for dinner rolls, spring rolls and rolls." The Board however, pointed out that, although consistency is a goal of the USPTO, the Board is not bound by the decisions of examining attorneys in other cases; rather, it must decide each case on the record evidence before it.

The Board found that this case does not fall clearly within either Gould or American Fertility. The applied-for mark is not a compound word, and even if it could be viewed as a phrase, "we do not read American Fertility to suggest that an applicant could take a clearly generic term 'SPRING ROLLS' for spring rolls and add to it the clearly generic terms 'SHRIMP COTIJA' for the main ingredients, shrimp and cotija, in those spring rolls and thereby create a registrable trademark simply because it is a phrase rather than a compound term."

"[W]hile this record does not include examples of third-parties using Applicant’s exact formulation, it does include many examples of various parts of SHRIMP COTIJA SPRING ROLLS being used together to name the offered dish or the ingredients therein." The fact that applicant may be the first and only user of SHRIMP COTIJA SPRING ROLLS does not justify registration if the only significance conveyed by the term is that of the category of goods. The USPTO must show that consumers would understand the designation as a whole to have generic significance, not that the public uses the designation in that manner.

The Board concluded that the examining attorney had clearly established that SHRIMP COTIJA SPRING ROLLS is generic for the identified goods, "or, more precisely, under the language of Section 23, is not 'capable of distinguishing the applicant’s goods or services.' 15 U.S.C. § 1091(c)."

In further finding that the designation fails to function as a trademark, the Board reviewed applicant's manner of use as well as the other evidence of record, concluding that the designation would not be perceived as a source identifier, but rather as informational matter.

Read comments and post your comment here

TTABlog note: If the applied-for mark is generic, it is flat out unregistrable. However, if the designation fails to function as a mark (but is not generic), then arguably it could become a trademark if used properly and if it acquires distinctiveness. Do you agree?

Text Copyright John L. Welch 2014.


At 12:46 PM, Anonymous Michael Hughes said...

Just another horrible decision from the TTAB, who seem to be on a crusade to reject anything even marginally descriptive. I would bet that less than 5% of Americans have ever heard of Cotija and an even smaller number would ever think of Mexican cheese being associated with spring rolls. Form over reality triumphs again.

At 3:23 PM, Anonymous Anonymous said...

If COTIJA is obscure, but means cheese from a place in Mexico, and the applicant is using this term on goods including this type of cheese, I think it is descriptive, but not generic. Nothing is more descriptive than "Kentucky Fried Chicken" but it is registered (RN 815167). I would appeal to CAFC and get the "generic" issue fixed. But obscure words used descriptively should not be registerable. The public should be free to use precise words, albeit obscure, to describe their goods, Such as "Safeway brand Shrimp Cotija Spring Rolls" (until the applicant can show secondary meaning). The applicant has some really weak trademarks. They seriously need a branding campaign.


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