*1 IN RE ENTENMANN'S, INC.
Serial No. 712,062
June 18, 1990
Hearing: April 12, 1990
Dolores K. Hanna and Susan A. Richards for applicant
Mary E. Hannon
Trademark Examining Attorney
Law Office 2
(R. Ellsworth Williams, Managing Attorney)
Before Simms, Hanak and Quinn
Members
Member
Entenmann's, Inc. (applicant) seeks to register OATNUT in block letters for bread. [FN1]
Registration was refused pursuant to Section 2(e)(1) of the Lanham Trademark Act on the basis that OATNUT is merely descriptive of two ingredients in applicant's bread, namely, oats and hazelnuts.
When the refusal was made final, applicant appealed to this Board. Applicant and the Examining Attorney filed briefs and were present at a hearing held on April 12, 1990.
Although not enumerated as such, applicant sets forth essentially two arguments as to why it believes OATNUT is not descriptive of its bread containing oats and hazelnuts. First, applicant argues that "OATNUT is [at most] suggestive because it does not immediately inform purchasers of the exact nature of the goods." (Applicant's reply brief page 6). Second, applicant argues that OATNUT is not merely descriptive because OATNUT is a "coined word," and because "in their combination, the two terms ["oat" and "nut"] have an incongruous meaning as applied to [applicant's] goods." (Applicant's reply brief page 7). [FN2]
Considering first applicant's argument that OATNUT is not merely descriptive because it fails to inform purchasers of the exact nature of applicant's bread, applicant notes that the term OATNUT "does not tell purchasers which type of nut is used in the bread, for example, walnuts, almonds or pecans." (Applicant's reply brief page 6). In this regard, applicant places a great deal of reliance on the decision in RJR Foods, Inc. v. Ocean Spray Cranberries, Inc., 174 USPQ 244 (TTAB 1972), where this Board held that GRAPE-BERRY was not merely descriptive of a beverage consisting of grape juice, cranberry juice and water because the mark failed to indicate with particularity which type of berry juice was in the beverage (i.e. strawberry, boysenberry, raspberry or perhaps cranberry).
While it is true that in order to be held merely descriptive, a term must describe with some particularity a quality or ingredient of the product in question, it need not describe it exactly. Cf. In re Analog Devices Inc., 6 U.S.P.Q.2d 1808, 1810 (TTAB 1988), aff'd 10 U.S.P.Q.2d 1879 (Fed.Cir.1989) (unpublished) ("However, while we readily concede that the category of products which the term 'analog devices' names encompasses a wide range of products in a variety of fields, we do not believe this fact enables such a term to be exclusively appropriated by an entity for products, some of which fall within that category of goods. For example, while terms such as 'digital devices,' 'computer hardware,' 'computer software' and 'electronic devices,' just to name a few, may be broad and even nebulous terms, nevertheless, these terms may not be exclusively appropriated but must be left for all to use in their ordinary generic sense.").
*2 We believe that the term OATNUT readily informs purchasers, with the required degree of particularity, of two not inconsequential ingredients in applicant's bread. By way of analogy, the term "nut bread" does not inform purchasers of the particular type of nuts found in a particular loaf of nut bread. Nevertheless, the fact that the term "nut bread" does not inform purchasers of the precise type of nuts in the bread does not mean that the term "nut bread" is not descriptive of, and indeed generic for, bread. To the extent that our 1972 decision in RFJ Foods sets forth a rule of law that in order to be held merely descriptive, a term must describe with absolute exactness an ingredient of the product, we decline to follow that rule.
In considering next applicant's argument that as applied to bread, the term OATNUT has an incongruous meaning, we disagree. The Examining Attorney has made of record excerpts from the NEXIS database showing the common use of such descriptive, if not generic, terms as "raisin nut bread"; "carrot nut bread"; "zucchini nut bread"; "apple nut bread"; "cranberry nut bread"; "banana nut bread"; "date nut bread"; and "wheat nut bread." Thus, the purchasing public is quite accustomed to seeing, in connection with breads, the term "nut" preceded by the name of another ingredient. Contrary to applicant's suggestion, consumers, upon seeing the term OATNUT on bread, would not have visions of a mythical nut known as an "oat nut" just as they would not have visions of mythical nuts known as "wheat nuts" or "banana nuts" or "date nuts." In short, the term OATNUT, as applied to bread, does not have a double meaning, nor is it otherwise incongruous.
Decision: The refusal to register is affirmed.
R.L. Simms
E.W. Hanak
T.J. Quinn
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 712,062 filed February 19, 1988 claiming first use on February 2, 1988.
FN2. Applicant also correctly states that in ex parte cases involving a refusal to register on the basis of mere descriptiveness, it is the practice of this Board to resolve doubts in favor of the applicant and pass the mark to publication.