Monday, July 15, 2019

Precedential No. 18: TTAB Affirms Trifusal of SCOOP for Ice Cream: Mere Descriptiveness, Failure-to-Function, and Unacceptable Specimen

Here's the scoop: In a 49-page opinion, the Board affirmed a trifusal (TM) of the mark SCOOP for “frozen confections and ice cream promoted and distributed by a mascot named SCOOP at product promotions and distributions of the frozen confections and ice cream,” finding that the term is merely descriptive of ice cream and lacks acquired distinctiveness, that it fails to function as a source indicator, and that Applicant Yarnell's specimens of use were unacceptable. In re Yarnell Ice Cream, LLC, 2019 USPQ2d 265039 (TTAB 2019) [precedential] (Opinion by Judge Christopher Larkin).

The Identification of Goods: Applicant Yarnell claimed that Examining Attorney Melissa Sturman had engaged in "goods mutilation" because she considered the involved goods to be "ice cream," ignoring the addition language, "as promoted or distributed by a mascot named SCOOP, at product promotions and distribution of Applicant's ice cream and frozen confection." The Board therefore first determined the import of that additional language, finding guidance in the CAFC's decision in In re, 123 U.S.P.Q.2d 1744 (Fed. Cir. 2017). There, the applicant included in its identification of various goods the phrase "associated with William Adams, professionally known as ''" The CAFC agreed with the Board that:

the restriction does not: (1) limit the goods “with respect to either trade channels or class of purchasers”; (2) “alter the nature of the goods identified”; or (3) “represent that the goods will be marketed in any particular, limited way, through any particular, limited trade channels, or to any particular class of customers.”

Similarly, Yarnell's additional language "at most" specifies that the goods will be marketed in a particular way, but it does not alter the nature of the goods in any meaningful way, or restrict the nature or type of the goods, or limited the classes of consumers. The Board acknowledged that the identification of goods specifies that SCOOP is the name of applicant's mascot, but Yarnell sought to register the mark for "frozen confections and ice cream," not live performances by a mascot. Accordingly, the Board "must assess the registrability of Applicant's proposed mark for 'frozen confections and ice cream' consumed by members of the general public."

Mere Descriptiveness: In light of a dictionary definition of "scoop," third-party usage, media references, and webpages discussing how to scoop ice cream, the Board concluded that the word means "a serving portion of ice cream and frozen confections." The word "scoop" has been disclaimed in a number of third-party registrations for marks for ice cream or frozen confections. Applicant Yarnell itself uses the word "scoop," or its pictorial equivalent, to identify the serving portion of its goods.

On the basis of the record as a whole, including Applicant’s and third parties’ uses of “scoop,” we find that the applied-for mark describes “a feature, quality, or characteristic of the goods . . . for which registration is sought,” N.C. Lottery, 123 USPQ2d at 1709, namely, that they are traditionally provided in a “scoop”-sized serving portion.

The Board rejected Yarnell's contention that SCOOP is a double entendre that also refers to "information of [sic] Yarnell products" or a "news scoop," and therefore does not merely describe the goods. The Board pointed out, however, that the second meaning of a double entendre must be "apparent upon seeing the mark in connection with the goods." In re Ethnic Home Lifestyles Corp., 708 U.S.P.Q.2d 1156, 1159 (T.T.A.B. 2003). Yarnell provided no evidence that the interpretation of the mark as a "new scoop" is one "that the public would make fairly readily" because it is "readily apparent from the mark itself." In re Calphalon Corp., 122 U.S.P.Q.2d 1153, 1163 (T.T.A.B. 2017). Here, in the context of Yarnell's goods as identified in the application, "the applied-for mark describes a serving size, not hot news."

The Board therefore found that SCOOP is merely descriptive of the goods under Section 2(e)(1).

Lack of Acquired Distinctiveness: The CAFC has long held that the more descriptive a term, the more evidence of acquired distinctiveness is required under Section 2(f). The Board found that the applied-for mark has "little or no source-identifying capacity" for the identified goods. Yarnell itself advertises that its mascot will be "giving away free scoops of ice cream." Accordingly, the Board agreed with the examining attorney that SCOOP is "highly descriptive of ice cream and frozen confections."

Yarnell argued that its five years of use of the mark entitles it to a presumption of acquired distinctiveness under Section 2(f), but the Board pointed out that Section 2(f) provides no such presumption, but rather that the USPTO may accept five years of substantially exclusive and continuous use as prima facie evidence of acquired distinctiveness. It is not required to do so. See In re La. Fish Fry Prods., Ltd., 116 U.S.P.Q.2d 1262, 1265 (Fed. Cir. 2015). "The USPTO and the Board have discretion to find such a use claim insufficient, especially where, as here, the mark at issue is highly descriptive. Id."

Moreover, there was little evidence of Yarnell's use of SCOOP to identify the source of its ice cream at the public appearances of the mascot, and its mascot wore the SCOOP name tag only "at some events." There were no details as to the number of people viewing the events, and no evidence that the mascot or the mark has been featured in advertising. The Board concluded that Yarnell had failed to provide sufficient evidence to prove acquired distinctiveness, and so the Board rejected its Section 2(f) claim.

Inadequate Specimens: In Yarnell's specimens of use, the applied-for mark appeared only on the shirt worn by its human or cartoon mascot. Yarnell argued that this usage constituted a display associated with the goods. See Section 45.

As to the human mascot, Yarnell cited no case in which a live person was found to be a display associated with goods, and the Board found none. Yarnell acknowledged that typical displays are point-of-sale materials like shelf-talkers or banners. See TMEP Section 904.03(g). The Board did not "foreclose the possibility that a live personal appearance at an event or in a venue can qualify as a 'display associated' with the goods within the meaning of Section 45," but it found that neither the live mascot or the cartoon version so qualified.

An important factor in determining whether a specimen is an acceptable display is whether the mark "is displayed in such a way that the customer can easily associated the mark with the goods." In re Kohr Bros., Inc., 121 U.S.P.Q.2d 1793, 1795 (T.T.A.B. 2017) (quoting In re Osterberg, 83 U.S.P.Q.2d 1220, 1223 (T.T.A.B. 2007). The Board found Yarnell's use of the proposed mark to be "not particularly noticeable, much less eye-catching" when it appears on its trucks, and when used on the mascot's uniform it is likely to be perceived as the name of the mascot rather than as a source-identified for the goods." Moreover, several of the specimens do not appear to be "calculated to consummate a sale," as required for an acceptable point-of-sale display. (quoting In re U.S. Tsubaki, Inc., 109 U.S.P.Q.2d 2002, 2003 (T.T.A.B. 2014)).

The Board concluded that Yarnell's specimens of use were inadequate and it affirmed the refusal to register under Sections 1 and 45.

Failure-to-Function: The examining attorney maintained that because consumers are accustomed to seeing the term SCOOP as indicating the size of an ice cream serving, it fails to function as a source indicator because it would be perceived as merely conveying an informational message.The Board, relying on its findings as to the highly descriptive nature of SCOOPS and the nature of Yarnell's specimens of use, agreed with the examining attorney: "SCOOP also fails to function as a mark for the identified goods because, at most, it merely informs purchasers of the serving size of the goods."

Read comments and post your comment here.

TTABlog comment: Yet another decision in the steady flow of failure-to-function and inadequate specimen cases. Is this a WYHA?

BTW: The TTABlogger claims trademark rights in the term "trifusal" for blogging services in the field of trademarks.

Text Copyright John L. Welch 2019.


At 3:53 PM, Anonymous Anonymous said...

"TRIFUSAL" sounds like a good flavor!


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