WYHA? TTAB Affirms 2(e)(1) Refusal of ORIGINAL FOLDED PIZZA as Merely Descriptive of Pizzas

[This guest post was written by Kira-Khanh McCarthy, a law clerk in the Trademark Group at Wolf, Greenfield & Sacks, P.C.]. No matter how you slice it (or fold it in this case), Applicant A Pizza LLC was unable to overcome the PTO’s Section 2(e)(1) refusal to register ORIGINAL FOLDED PIZZA [PIZZA disclaimed] for pizzas. The Board considered the individual elements of Applicant’s proposed mark and found that, as a whole, ORIGINAL FOLDED PIZZA is “no more than the sum of its descriptive parts.” Would you have appealed? In re A Pizza LLC, Serial No. 88283932 (November 17, 2020) [not precedential] (Opinion by Judge Christopher Larkin).

The Board acknowledged that its analysis must be two-fold: “Indeed, we are ‘required to examine the meaning of each component individually, and then determine whether the mark as a whole is merely descriptive.’” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1758 (Fed. Cir. 2012). It then considered the parties’ arguments and evidence.

Examining Attorney Udeme U. Attang maintained that the proposed mark “is highly descriptive because it identifies a feature and characteristic of applicant’s pizza goods” and that “both the individual components and the composite result are descriptive of applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods.” As evidence, she submitted dictionary definitions of “folded” and “pizza” and argued that “when ORIGINAL is combined with those words . . . the combination ‘directly conveys information about a feature and characteristic of the goods, namely, that applicant’s pizza goods are the first of its kind and that the pizza has one part laid over another part.’” In addition, to show that pizza consumers would acquaint “folded pizza” with pizza in which one part is laid over another, she submitted evidence of third-party webpages referencing “folded pizza” in connection with calzones. 

Applicant made one sole argument: “[T]he word ‘folded’ means ‘drunk’ which adds an alternative congruous [sic] meaning to the mark – that of a drunk slice of pizza.”

When analyzing the individual components of Applicant’s proposed mark, the Board agreed with the Examining Attorney that the word ORIGINAL is merely descriptive of Applicant’s goods because it touts the “first-of-its-kind” nature of Applicant’s “original folded pizza.” Next, the Board found nothing in the record nor Applicant’s own website to support Applicant’s argument that FOLDED provided ORIGINAL FOLDED PIZZA with an alternative incongruous meaning as “a drunk slice of pizza.” (Snip from Applicant’s website immediately below.) “There is no doubt that the word FOLDED in Applicant’s proposed mark is merely descriptive of the goods because it describes the fact that certain of Applicant’s pizzas are ‘folded in half.’” [See excerpts from Applicant's website, below]. Lastly, especially given the disclaimer, PIZZA was undeniably held to be a generic for the applied-for goods.

Turning to the combination of the terms, the Board promptly concluded that ORIGINAL FOLDED PIZZA, as a whole, is merely descriptive. This was made especially clear considering that Applicant’s use of the mark on its website gave “no indication that Applicant claims ‘original folded pizza’ as its trademark.”  “Because each word in the proposed mark ‘retains its merely descriptive significance in relation to the goods, the combination results in a composite that is itself merely descriptive.’” In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016).

And so, the Board affirmed the refusal to register.

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Text Copyright Kira-Khanh McCarthy 2020.