Wednesday, April 24, 2024

TTAB Affirms Mere Descriptiveness Refusal of SPICED CHAI for Tobacco

The Board affirmed a refusal to register the proposed mark SPICED CHAI for "Hookah tobacco; Tobacco; Tobacco pouches," finding the mark to be merely descriptive under Section 2(e)(1) and lacking in acquired distinctiveness. Deeming the mark "highly descriptive," the Board found Applicant Fumari's Section 2(f) evidence inadequate and unpersuasive. In re Fumari, Inc., Serial No. 88437933 (April 19, 2024) [not precedential] (Opinion by Judge Thomas L. Casagrande).

The evidence submitted by Examining Attorney Robert Guliano "overwhelmingly" showed that Fumari and the media refer "descriptively to SPICED CHAI as one of Applicant’s tobacco flavors."

This evidence, from Applicant’s own website, from third-party reviews of Applicant’s SPICED CHAI product, and from other tobacco and smoking sellers’ offerings of “Spiced Chai” and similarly-named flavors, reflects that consumers of tobacco and other smoking-products perceive “Spiced Chai” as describing a particular flavor of tobacco reminiscent of chai tea, a beverage whose ingredients include black tea, honey, spices, and milk. Indeed, we find the evidence to show that the term is highly descriptive.

The Board found support in the CAFC's decision in In re Gyulay, 820 F.2d 1216 (Fed. Cir. 1987), upholding a mere descriptiveness refusal of APPLE PIE, the scent of a potpourri product. Fumari pointed to the SNO-RAKE case, In re Shutts, 1983 WL 51780 (TTAB 1983), but the Board found that Shutts has "almost nothing in common with the evidence in the record here."

Fumari asserted that the USPTO allowed it to register WHITE GUMMI BEAR and RED GUMMI BEAR for tobacco products, without raising a descriptiveness issues. According to Fumari, those two marks are like SPICED CHAI in that they are "vaguely evocative" of a flavor, and therefore those two registrations are "evidence" that the Board should reverse the refusal here. [What flavor is "white gummi bear? - ed.]. The Board, however, pointed out once again that it must examine each case on its own record.

Not only are these files not of record, but even if they were, it is well-settled that these sorts of consistency arguments are legally irrelevant.

Turning to the issue of acquired distinctiveness, the Board observed that "[t]o determine whether a mark has acquired distinctiveness, the Board may consider a wide range of evidence, including advertising expenditures and sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies." Because SPICED CHAI is highly descriptive, Fumari's burden of proof under Section 2(f) was correspondingly high.

Fumari relied use of the mark since 2011, sales of 600,000 pounds of "SPICED CHAI tea" [what does tea have to do with it? - ed.], unquantified advertising expenditures,  third-party reviews, and various social media posts. The Board found that Fumari's evidence fell "far short" of establishing acquired distinctiveness, but most significant was "the evidence [that] shows that Applicant’s use of SPICED CHAI is far from exclusive."

The apparently common use by others in the marketplace of the term in which Applicant seeks exclusive rights not only fatally undermines Applicant’s claim but shows that granting Applicant exclusive rights would potentially inhibit competition by restricting competitors’ freedom to (continue to) use the term to describe their version of this flavor of tobacco.

The Board went on to note several glaring deficiencies in Fumari's evidence: Fumari itself uses SPICED CHAI to describe a flavor of tobacco, not as a source identifier; and its assertions concerning sales revenues and advertising efforts were not limited to the United States.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: WYHA? 

Text Copyright John L. Welch 2024.


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