TTABlog Test: Is ORIGINAL GRAIN Merely Descriptive of Restaurant Services?

The USPTO refused registration of the mark ORIGINAL GRAIN in the form shown below, finding it to be merely descriptive of restaurant services. The Examining Attorney contended that "“the term original grain immediately informs consumers that the Applicant’s restaurant services feature fare made from or with original grains." Alternatively, she argued that ORIGINAL GRAIN would be perceived as puffery as applied to the Applicant’s restaurant services. How do you think this appeal came out? In re Original Grain, LLC, Serial No. 87511343 (January 23, 2020) [not precedential] (Opinion by Judge Christopher Larkin).

The Board has held that “a mark for restaurant services which comprises the generic name of a food which is the specialty of the house is merely descriptive of the restaurant services . . . .” The extensive evidentiary record included online articles regarding the offering of grains in restaurants as healthy, Internet webpages displaying various grain products, including grain bowls, and numerous articles from searches of the words “original grain," and applicant's own menu ("choice of original grains" to "build-a-bowl"). The Examining Attorney asserted that "Applicant’s restaurant features grains and original grains, including whole grain bread, multi-grain bread and toast, grain bowls and grain bases." Moreover, “[o]thers in the food and beverage industry also used the term ‘original grain’ to describe foods containing whole grains or unprocessed grains.”

Applicant put forth various arguments: that the phrase is incongruous, that it is a double entendre, that the Examining Attorney's evidence was vague and the asserted meaning of the phrase  "obscure and vague."

Not surprisingly, the Board found that the stylized lettering and the modest design elements of the subject mark do not materially impact its meaning, and so the Board focused on the literal portion.

The Board found that the word GRAIN "immediately and accurately describes a feature or characteristic of Applicant’s restaurant services, namely, that they include menu items containing the food group known as grains." As to the word ORIGINAL, the Board disagreed with the Examining Attorney:

[T]he attribution of this dictionary meaning to ORIGINAL as it appears in the proposed mark is unsupported by the record, most significantly Applicant’s promotional materials and menus. These materials do not communicate, as “puffery” or otherwise, that Applicant’s menu items involving grains are “prepared from the Applicant’s new or ‘original’ recipes for grains,” id., or are otherwise the “earliest” or the “first in time,” or new or unique to Applicant.

The Board concluded that the word ORIGINAL is not used by applicant "in the laudatory sense argued by the Examining Attorney on her second descriptiveness theory, and that the mark, as a whole, is not merely descriptive under that theory."

As to the Examining Attorney’s first theory, "we must determine what else, if anything, ORIGINAL means when it modifies GRAIN in the applied-for mark." The Board found the evidence "insufficient
to show that ORIGINAL GRAIN as used in connection with restaurant services would immediately, and with the required degree of particularity, be understood essentially as a synonym for 'whole grains' or 'unrefined grains.'" Furthermore, applicant’s use of the term “original grains” to identify base options in creating food bowls "do not communicate that whole grains or unrefined grains are the 'specialty of the house' or the 'principal attraction' of the ORIGINAL GRAIN restaurant.

Multiple reviews of applicant's restaurant supported the Board's conclusion that ORIGINAL GRAIN does not immediately describe the “specialty of the house” or the “principal attraction” of the restaurant. The reviews did not mention whole grains or refined grains

The record shows that ORIGINAL GRAIN may be suggestive of wholesome grain-based menu items or healthy eating based on the grains served at Applicant’s restaurant, but ORIGINAL GRAIN does not immediately describe, with the required degree of particularity, that menu items containing whole grains or unrefined grains are the “specialty of the house” or its “principal attraction.”

Acknowledging that any doubt as to descriptiveness must be resolved in favor of the applicant, the Board reversed the refusal to register.

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TTABlog comment: How did you do? The opinion is a primer on the basics of mere descriptiveness.

Text Copyright John L. Welch 2020.