Twenty-Two Desserts, LLC

This Opinion is a
Precedent of the TTAB

Mailed: August 6, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Twenty-Two Desserts, LLC
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Serial No. 86586833
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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

Applicant’s 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 Applicant’s 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 Applicant’s 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.

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Serial No. 86586833

I. Applicable Law

A mark proposed for registration on the Supplemental Register must be capable

of distinguishing the applicant’s 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 Soc’y, 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. Int’l Ass’n 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

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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)

(CHILDREN’S 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 public’s 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

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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. Doctor’s 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

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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 Board’s 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 Office’s
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.

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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

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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), aff’d, 703
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); In re Petroglyph Games, Inc., 91 USPQ2d 1332,
1334 n.1 (TTAB 2009).
11“Malai 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.

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• 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.

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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

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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. Applicant’s

proposed mark MALAI is thus incapable of distinguishing the source of the products.

Applicant presented several arguments against the refusal. We have carefully

considered Applicant’s arguments and the evidence submitted to support them, but

we find them unpersuasive.

We address first Applicant’s 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

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“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
Applicant’s April 26, 2018 Request for Reconsideration at TSDR 8-13.

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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 Applicant’s 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. Applicant’s November
13, 2017 Response at TSDR 3.

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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

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names principal ingredient of applicant’s 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 Applicant’s mark on the Supplemental Register is

affirmed.

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