Wednesday, November 23, 2016

TTAB Test: Is THE SALAD STATION Merely Descriptive of Restaurant Services?

The USPTO refused registration of the mark THE SALAD STATION, in standard character and design forms, finding the term merely descriptive of restaurant services. Applicant appealed, asserting that the mark would describe only the salad bar within the restaurant, not the restaurant itself. Applicant also pointed to third-party registrations for restaurant marks containing the word "station." How do you think this came out? In re Salad Town, LLC, Serial Nos. 86414039 and 86414055 (November 21, 2016) [not precedential].

The Board pointed out that a mark is merely descriptive even if it describes only a single feature, function, or characteristic of the services. Examining Attorney Colleen Mulcrone submitted screenshots of thirteen websites demonstrating that the term "salad station" is commonly used to describe a feature of a restaurant. "Consumers are accustomed to seeing the term “salad station” used to describe a feature of a restaurant that provides a selection of various salad ingredients and toppings, allowing customers to construct their own salad, i.e., a salad bar."

Applicant's website refers to a "salad bar" as a feature of its restaurants. "Therefore, the wording 'The Salad Station' is merely descriptive of Applicant’s restaurant services because, at the very least, it describes a significant feature of Applicant’s restaurant services, even if Applicant also offers soups, spuds and beverages in addition to a salad station."

Applicant argue that THE SALAD STATION is suggestive because "the consumer would see that THE SALAD STATION is actually the name of the restaurant itself. The consumer then needs to use a reasoning process to determine that THE SALAD STATION is actually a full-service restaurant that offers more than a salad bar." The Board, however, concluded the consumers would immediately understand that "salad station" refers to a feature of the restaurant.

Applicant submitted seven third-party registrations for marks containing the word STATION, for restaurant services or coffee bars. However, in three the term "coffee station" was disclaimed. As to the other four (including TACO STATION and CHIANTI STATION), there was no indication that the file record included the type of evidence provided here. Moreover, each case must be decided on its own factual record, and the Board is not bound by prior decisions involving different records.

The Board therefore affirmed the refusal of the standard character mark, and affirmed the disclaimer requirement for the design mark.

Read comments and post your comment here.

TTABlog comment: Well, what do you think?

Text Copyright John L. Welch 2016.


At 7:35 AM, Anonymous Anonymous said...

Applicant argues that its a full service restaurant that features salad, so "salad station" is not merely descriptive. If correct, one could register "steak house" for a full service restaurant that only features steaks, it seems. Hmmmm.

I can't imagine the Board ruling another way.

At 11:18 AM, Anonymous Lawrence Binderow said...

The applicant's attorney should have first done a Free Form search via TESS for "(live)[ld] and (station)[wm] and (restaurant)[gs]" to ascertain the status of Register for similar STATION service mark registrations covering International Class 42 services. I surmise this would have saved his/her client a sizable amount of money in legal fees for the first Response to Office Action, the Request for Reconsideration and the Appeal. I'm inspired by the disclaimer in the PIZZA STATION registration which reads: "Applicant disclaims the word "PIZZA" apart from the mark as shown but without any waiver or inference of abandonment of any of its common law or statutory rights in the mark as shown or any feature thereof." That's a keeper!

At 11:35 AM, Anonymous Anonymous said...

The lawyer representing the client needed billable hours. That is the only way I can explain why the party appealed the refusal as opposed to amending on the Supplemental.


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