Cataldo
Bergsman
Wolfson*
This Opinion is a
Precedent of the TTAB
Mailed: August 6, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Twenty-Two Desserts, LLC
_____
Serial No. 86586833
_____
Jeffrey J. Schwartz of Schwartz Law Firm PC
for Twenty-Two Desserts, LLC.
Jason Paul Blair, Trademark Examining Attorney, Law Office 104,
Zachary Cromer, Managing Attorney.1
_____
Before Cataldo, Bergsman, and Wolfson,
Administrative Trademark Judges.
Opinion by Wolfson, Administrative Trademark Judge:
Twenty-Two Desserts, LLC (Applicant) seeks registration on the Supplemental
Register of the designation MALAI (in standard characters) for Ice cream, gelato,
dairy-free ice cream, frozen yogurt, frozen desserts, ice cream sandwiches, sorbet,
freezer pops, and ice cream sundaes in International Class 30.
1 Jason Paul Blair was the Trademark Examining Attorney during prosecution and is no
longer with the Office.
Serial No. 86586833
The application originally sought registration on the Principal Register, and was
filed under Section 1(b) of the Trademark Act, 15 U.S.C.§ 1051(b), based on
Applicants claim that it had a bona fide intention to use the proposed mark in
commerce. The Examining Attorney refused registration under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052(e)(1), on the ground that the term MALAI refers to
an Indian dairy ingredient comprised of a high fat coagulation from milk, somewhat
similar to cream or butter, and is also the [Hindi] term for cream and as such is
merely descriptive of Applicants goods. July 20, 2015 Office Action. The Office Action
required Applicant to state whether the goods do or will contain malai, cream, or
coagulated fat derived from dairy products. Id. Applicant replied that while it
confirms that i[t]s goods contain cream, it disagrees that the word MALAI is merely
descriptive. January 20, 2016 Response to Office Action.
After the Examining Attorney issued a final descriptiveness refusal, Applicant
filed an Amendment to Allege Use and a Request for Reconsideration, amending its
application to the Supplemental Register. The Examining Attorney refused
registration on the Supplemental Register under Trademark Act Sections 23(c) and
45, 15 U.S.C. §§ 1091(c) and 1127, on the ground that MALAI is generic and thus
incapable of distinguishing Applicants goods. After the Examining Attorney made
the genericness refusal final, Applicant appealed to this Board and filed a Request
for Reconsideration, which was denied.
Both Applicant and the Examining Attorney have filed briefs, and Applicant filed
a reply brief. We affirm the refusal to register.
-2-
Serial No. 86586833
I. Applicable Law
A mark proposed for registration on the Supplemental Register must be capable
of distinguishing the applicants goods or services. 15 U.S.C. § 1091. Generic terms
do not so qualify. In re Emergency Alert Sols. Grp., LLC, 122 USPQ2d 1088, 1089
(TTAB 2017); see also Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128
USPQ2d 1370, 1373 n.3 (Fed. Cir. 2018) (citing In re Am. Fertility Socy, 188 F.3d
1341, 51 USPQ2d 1832, 1833 (Fed. Cir. 1999)); In re Dial-A-Mattress Operating Corp.,
240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed. Cir. 2001) (generic terms are by
definition incapable of indicating a particular source of the goods or services).
The Office must demonstrate a term is generic by clear evidence of generic use.
See In re Hotels.com LP, 573 F.3d 1300, 91 USPQ2d 1532, 1533 (Fed. Cir. 2009).
[R]egistration is properly refused if the word is the generic name of any of the goods
or services for which registration is sought. In re Cordua Rests., Inc., 823 F.3d 594,
118 USPQ2d 1632, 1638 (Fed. Cir. 2016) (quoting 2 J. Thomas McCarthy, MCCARTHY
ON TRADEMARKS AND UNFAIR COMPETITION § 12:57 (4th ed. 2016)).
A generic term is the common descriptive name of a class of goods or services.
Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827,
1830 (Fed. Cir. 2015) (citing H. Marvin Ginn Corp. v. Intl Assn of Fire Chiefs, Inc.,
782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986)). There is a two-part test used to
determine whether a designation is generic: (1) what is the genus (class or category)
of goods or services at issue; and (2) does the relevant public understand the
designation primarily to refer to that genus of goods or services? Princeton Vanguard,
114 USPQ2d at 1830 (citing Marvin Ginn, 228 USPQ at 530); Couch/Braunsdorf
-3-
Serial No. 86586833
Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1462 (TTAB 2014). The
critical issue in genericness cases is whether members of the relevant public
primarily use or understand the term sought to be protected to refer to the genus of
goods or services in question. Marvin Ginn, 228 USPQ at 530.
Any term that the relevant public uses or understands to refer to the genus of
goods, or a key aspect or subcategory of the genus, is generic. Royal Crown Co., Inc.
v. The Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1046-1047 (Fed. Cir. 2018).
[A] term is generic if the relevant public understands the term to refer to part of the
claimed genus of goods or services, even if the public does not understand the term to
refer to the broad genus as a whole. Cordua, 118 USPQ2d at 1638 (holding
CHURRASCOS, a word that is generic for a type of grilled meat, to be generic for
restaurant services because it referred to a key aspect of those services); see also In
re Nordic Naturals, Inc., 755 F.3d 1340, 111 USPQ2d 1495 (Fed. Cir. 2014)
(CHILDRENS DHA generic for DHA supplements for children); In re Northland
Aluminum Prods., Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985) (BUNDT
generic for ring cake mixes, i.e., the subcategory bundt cakes.).
Evidence of the publics understanding of the term may be obtained from
any competent source, such as purchaser testimony, consumer surveys, listings in
dictionaries, trade journals, newspapers and other publications. Royal Crown, 127
USPQ2d at 1046 (quoting In re Merrill Lynch, Pierce, Fenner, and Smith Inc., 828
F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987)); see also Cordua, 118 USPQ2d at
1634; Princeton Vanguard, 114 USPQ2d at 1830; In re Reed Elsevier Props. Inc., 482
-4-
Serial No. 86586833
F.3d 1376, 82 USPQ2d 1378, 1380 (Fed. Cir. 2007) (finding third-party websites
competent sources for determining what the relevant public understands mark to
mean).
II. What is the Genus of the Goods at Issue?
Our first task is to determine the proper genus. In defining the genus, we
commonly look to the identification of goods in the application. See Reed Elsevier, 82
USPQ2d at 1380; Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552
(Fed. Cir. 1991) (a proper genericness inquiry focuses on the identification set forth
in the application or certificate of registration); In re Serial Podcast, LLC, 126
USPQ2d 1061, 1063 (TTAB 2018) (proper genus generally is set forth by the
recitation of services in each subject application.). Applicant has identified its goods
as ice cream, gelato, dairy-free ice cream, frozen yogurt, frozen desserts, ice cream
sandwiches, sorbet, freezer pops, and ice cream sundaes. There is no dispute that
the identification of goods adequately defines the genus.
III. Who are the Relevant Purchasers?
The second part of the Marvin Ginn test is whether the term sought to be
registered is understood by the relevant public primarily to refer to that genus of
goods or services. The relevant public for a genericness determination is the
purchasing or consuming public for the identified goods. Frito-Lay N. Am., Inc. v.
Princeton Vanguard, LLC, 124 USPQ2d 1184, 1187 (TTAB 2017) (citing Magic
Wand, 19 USPQ2d at 1553); Sheetz of Del., Inc. v. Doctors Assocs. Inc., 108 USPQ2d
1341, 1351 (TTAB 2013)). Because there are no restrictions or limitations to the
channels of trade or classes of consumers for the goods, the relevant consuming public
-5-
Serial No. 86586833
consists of the public at large, namely ordinary consumers who purchase and eat ice
cream, gelato, dairy-free ice cream, frozen yogurt, frozen desserts, ice cream
sandwiches, sorbet, freezer pops, and ice cream sundaes.
IV. How Does the Relevant Public Perceive MALAI?
The Examining Attorney argues that the word MALAI is commonly used in the
English language as a genus of rich, high-fat creams commonly used in Indian and
South Asian culinary dishes, especially dishes with a sweet taste.2 In support of his
position, the Examining Attorney submitted a definition of malai from
Definitions.net stating that:
Malai is an Indian cooking ingredient. It is made by
heating non-homogenized whole milk to about 80ºC for
about one hour and then allowing to cool. A thick yellowish
layer of fat and coagulated proteins forms on the surface,
which is skimmed off. The process is usually repeated to
remove most of the fat. Malai has about 55% butterfat.
Buffalo milk is thought to produce better malai because of
its high fat content.3
The Examining Attorney also submitted a Wikipedia definition of Ras malai as
a type of dessert:4
2 6 TTABVUE 6. Citations to the briefs refer to TTABVUE, the Boards online docketing
system. See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014). Specifically,
the number preceding TTABVUE corresponds to the docket entry number(s), and any
number(s) following TTABVUE refer to the page number(s) of the docket entry where the
cited materials appear. Citations to the examination record refer to the Trademark Offices
online Trademark Status and Document Retrieval system (TSDR), by page number.
3At http://www.definitions.net/definition/malai, attached to December 18, 2017 Office Action
at TSDR 10.
4 July 20, 2015 Office Action at TSDR 16.
-6-
Serial No. 86586833
Ras malai or Rasha Malai is a dessert eaten in India, Pakistan
and Bangladesh. The name ras malai comes from two words in
Hindi: ras, meaning juice, and malai, meaning cream.
The Examining Attorney also submitted articles, recipes, food blogs, and other
material from several Internet sources that identify malai as a cream. For example,
an article entitled What is Malai in English? Using Malai in Indian Cooking states
that malai is the word used to refer to a cream that is obtained from all sorts of
milk.5 A number of English-language recipes for Indian dishes, including dessert
recipes, use malai as an ingredient. Some refer to malai as a type of ice cream.
Examples of these materials include:
Allrecipes.com features a Prawn Malai Curry recipe, noting
that the word malai means cream;6
Therecipesofindia.com instructs How to make Malai/cream
from milk;7 and
A post at tarladalal.com gives a recipe for cream and
indicates that it is also known as malai.8
An online article entitled Why is Biswapati Sarkar so
obsessed with mango malai? states: The mango malai ice
cream is an exotic blend [that] has the tender taste of
motherly love in the form of malai.9
A recipe for making malai kulfi,10 which it identifies as a
sweet Indian ice-cream, notes: There are so many different
5 At thespruce.com, attached to December 18, 2017 Office Action at TSDR 9.
6 At http://allrecipes.com, attached to February 18, 2016 Office Action at TSDR 3.
7At http://www.therecipesofindia.com, attached to February 18, 2016 Office Action at TSDR
6.
8 At http://www.tarladalal.com, attached to July 20, 2014 Office Action at TSDR 10.
9 At https://www.quora.com, attached to February 18, 2106 Office Action at 19.
10 Kulfi is a type of Indian ice cream, typically served in the shape of a cone. At
https://en.oxforddictionaries.com/definition/us/kulfi, accessed November, 2018. The Board
-7-
Serial No. 86586833
varieties and flavors of kulfi or gulfi. The traditional ones are
malai, kesar, pista, mango, elaichi etc.11 The recipe is shown
below:12
may take judicial notice of dictionary definitions, including definitions or entries from
references that are the electronic equivalent of a print reference work. See Univ. of Notre
Dame du Lac v. J. C. Gourmet Food Imps. Co., Inc., 213 USPQ 594 (TTAB 1982), affd, 703
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); In re Petroglyph Games, Inc., 91 USPQ2d 1332,
1334 n.1 (TTAB 2009).
11Malai Kulfi Recipe At Home Without Condensed Milk at http://werecipes.com, attached
to July 20, 2015 Office Action at TSDR 19. The ILoveIndia.com website posts a recipe for
pista malai ice cream at http://festivals.iloveindia.com, attached to February 18, 2016 Office
Action at TSDR 20.
12 July 20, 2015 Office Action at TSDR 27.
-8-
Serial No. 86586833
In a different kulfi recipe, kulfi is described as a rich frozen
dessert that is made with reduced full fat milk, and the milk
is described as having bits of malai o[n] top.13 The heading to
the recipe reads: Kulfi recipe, traditional Indian ice cream,
easy malai kulfi.14 The finished product is pictured: 15
Posts from readers of the website SharmisPassions.com react
to an article entitled Homemade Fresh Cream How to make
fresh cream that explains how to collect malai from boiled
milk, with comments such as: nothing like creaminess in
gravies from homemade malai! and My mom
will collect
the malai from milk and when the container is full she will
whisk it to make cream or butter.16
The article explains the method for making malai:17
13 At http://www.sailusfood.com, attached to February 18, 2016 Office Action at TSDR 12.
14 Id. at TSDR 11.
15 Id. at TSDR 14.
16At https://www.sharmispassions.com, attached to May 4, 2018 Denial of Request for
Reconsideration at TSDR 2.
17 Id.
-9-
Serial No. 86586833
Wikipedia entries for malai over time have reflected some
content changes but consistently have referred to malai as
cream and a cooking ingredient.18
18See https://en.wikipedia.org, attached to July 20, 2015 Office Action at TSDR 8 (defining
malai as an Indian cooking ingredient. Under Uses, it read: Cream is the main ingredient
for sweet dishes); https://en.wikipedia.org, attached to October 4, 2017 Office Action at TSDR
17 (defining malai as a South Asian cooking ingredient. Under Uses, it read: Malai is a
– 10 –
Serial No. 86586833
We agree with the Examining Attorney that the evidence in the record shows that
malai has an independent meaning in English for a specific cooking ingredient,
cream. We find that the evidence establishes that malai has been used to identify a
type of (typically sweet) creamy food made principally from malai, including items
that fall within (i.e., are a sub-group or type of) the broad identification of goods Ice
cream, gelato, dairy-free ice cream, frozen yogurt, frozen desserts, ice cream
sandwiches, sorbet, freezer pops, and ice cream sundaes, such as malai kulfi, a type
of Indian ice cream, pista malai ice cream and mango malai ice cream.19 The
record contains clear evidence that consumers would understand the proposed mark
MALAI to refer to a type of ice cream made principally with malai. Applicants
proposed mark MALAI is thus incapable of distinguishing the source of the products.
Applicant presented several arguments against the refusal. We have carefully
considered Applicants arguments and the evidence submitted to support them, but
we find them unpersuasive.
We address first Applicants argument against application of the doctrine of
foreign equivalents.20 Although the record includes translations of the Hindi word
major ingredient in malai kofta dumplings and in sweet dishes like malai pedha, ras malai
and malai kulfi.); https://en.wikipedia.org, attached to December 18, 2017 Office Action at
TSDR 2 (reverting to defining malai as: a cooking ingredient from the Indian subcontinent,
but under Uses, continued to indicate that Malai is a major ingredient in sweet dishes).
19To the extent that dairy-free ice cream and sorbet may not contain malai, we note that a
term need not be generic for all identified goods or services to be found generic. See Cordua,
118 USPQ2d at 1635.
20In arguing against application of the doctrine of equivalents, Applicant submitted three
identical form declarations from individuals who state that they are fluent in both English
and the Hindi language, that they are ordinary American consumers of goods such as those
made by Applicant, and that they would not stop and translate the Hindi word MALAI into
– 11 –
Serial No. 86586833
malai to mean cream in English, the Examining Attorney did not rely on
application of the doctrine of foreign equivalents to find MALAI is generic. The
doctrine of foreign equivalents is a guideline pursuant to which foreign-language
terms in marks may be translated into English and serve as evidence that the English
equivalent is understood among the relevant consumers as referring to the goods to
show, e.g., that a term is generic. See, e.g., Cordua, 118 USPQ2d at 1637 (discussing
the doctrine of foreign equivalents and noting that the USPTO would have been
justified in applying it to the Spanish and Portuguese word churrasco by
translating that word into English as barbecue and assessing whether barbeque
is generic for restaurant services). But a mark containing a foreign word also can be
found generic by showing that the mark would not be translated because of the
inherent nature of the mark. In re Thomas, 79 USPQ2d 1021, 1025-1026 (TTAB
2006). For example, as is the case here, the foreign word itself, not its English
translation, has an understood meaning in the English language among the relevant
consumers as referring to the applied-for goods. Cordua, 118 USPQ2d at 1637 (noting
the USPTO did not apply the doctrine of foreign equivalents to find churrasco
generic, but instead found that churrasco is used in the English language to refer
to grilled meat) (emphasis in original); see also Le Continental Nut Co. v. Le Cordon
Bleu S.A.R.L., 494 F.2d 1395, 181 USPQ 646 (CCPA 1974) (finding that CORDON
an English language equivalent but would take it as a trademark. As discussed above we do
not apply the doctrine; moreover, three declarations are too few in number to make a
determination as to how consumers in general would perceive a term. Cf. In re Florists
Transworld Delivery, 106 USPQ2d 1784, 1794 n.9 (TTAB 2013) (criticizing four
form declarations as too few in number and lacking geographic diversity). Attached to
Applicants April 26, 2018 Request for Reconsideration at TSDR 8-13.
– 12 –
Serial No. 86586833
BLUE, while literally translated as BLUE RIBBON, would not be translated by the
American public because the two terms create different commercial impressions,
CORDON BLEU having been adopted into the English language and acquiring a
different meaning than BLUE RIBBON); In re Tia Maria, Inc., 188 USPQ 524 (TTAB
1984). Here, the Examining Attorney asserted that MALAI not only means CREAM
in Hindi , but is also commonly used in the English language as a genus of rich,
high-fat creams commonly used in Indian and South Asian culinary dishes, especially
dishes with a sweet taste.21 The Examining Attorney based the refusal on evidence
showing use of malai in English-language sources available to U.S. consumers.
Accordingly, we need not apply the doctrine of foreign equivalents in assessing
whether MALAI is generic for the applied-for goods.
Applicant also argues that the primary meaning of the term malai to consumers
will be as the best or choicest part of a thing–i.e., the cream of the crop, citing one
of the definitions given at Hamariweb.com for the term cream: (n.) The best or
choicest part of a thing; the quintessence; as, the cream of a jest or story; the cream
of a collection of books or pictures.22 Although the word cream may have other
connotations, the record does not support Applicants contention that consumers will
perceive cream of the crop as an alternate meaning of malai for the goods in
question. Further, because Applicant seeks registration on the Supplemental
Register, Applicant has conceded that the term is merely descriptive of the goods;
21 6 TTABVUE 6.
22At http://www.hamariweb.com/dictionaries/cream_ hindi-meanings. Applicants November
13, 2017 Response at TSDR 3.
– 13 –
Serial No. 86586833
thus, arguments regarding other meanings for [MALAI] and double entendre are
inapplicable. In re Rosemount Inc., 86 USPQ2d 1436, 1439 (TTAB 2008) (Reducer
is generic for flow meters for measuring flow through pipes because piping that joins
pipes of a different diameters are called reducers).
Applicant also argues that there is no evidence that the relevant consumers will
understand the term malai to name the genus of the goods because a term that is
a generic name of an ingredient is not necessarily a generic name of a product
containing that ingredient, pointing to two district court cases involving trademark
infringement claims as support: Haydon Switch & Inst., Inc. v. Rexnord, Inc., 4
USPQ2d 1510, 1515 (D. Conn 1987) (holding PLANETGEAR not generic for counters
that contain planetary gears) and Blue & White Food Prods. Corp. v. Shamir Food
Industries, Ltd., 76 USPQ2d 1940 (S.D.N.Y. 2004) (holding SHAMIR SALADS, with
SHAMIR translating to dill, not generic for salads, dips, spreads, and herring
products, even though dill may be ingredient). Those cases involve different marks
with different factual records and do not involve the issue of registrability. They do
not control our consideration of this case. Although there is no per se rule that the
name of any ingredient in a product will necessarily be generic, where, as in this case,
the evidence shows that the relevant public would understand an ingredient name to
refer to a key aspect or subcategory of the genus of goods, it is generic for those goods.
See Royal Crown, 127 USPQ2d at 1046; see also In re Empire Tech. Dev. LLC, 123
USPQ2d 1544 (TTAB 2017) (COFFEE FLOUR generic for flour made from coffee
berries); In re Demos, 172 USPQ 408, 409 (TTAB 1971) (CHAMPAGNE merely
– 14 –
Serial No. 86586833
names principal ingredient of applicants salad dressing and is unregistrable); In re
Hask Toiletries, Inc., 223 USPQ 1254 (TTAB 1984) (HENNA N PLACENTA generic
for hair conditioner because henna and placenta refer to the two key ingredients
of the product and the combination created no new significance).
V. Conclusion
Taken as a whole, the evidence indicates that the relevant public would
understand MALAI primarily to refer to a key aspect or a type of ice cream, gelato,
dairy-free ice cream, frozen yogurt, frozen desserts, ice cream sandwiches, sorbet,
freezer pops, [or] ice cream sundaes. Accordingly, the term is generic and should be
freely available for use by competitors. In re Cent. Sprinkler Co., 49 USPQ2d 1194,
1199 (TTAB 1998). See generally Cordua, 118 USPQ2d at 1635; Marvin Ginn, 228
USPQ at 530; In re 1800Mattress.com, 92 USPQ2d 1682, 1685 (Fed. Cir. 2009).
Decision:
The refusal to register Applicants mark on the Supplemental Register is
affirmed.
– 15 –