Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE EDEN FOODS, INC.
Serial No. 74/056,033
August 20, 1992
Judith M. Riley of the firm of Krass & Young for applicant.
Michael C. Mason
Trademark Examining Attorney
Law Office 14
(Ron Williams, Managing Attorney)
Before Rice, Seeherman and Hohein
Members
Opinion by Hohein
An application has been filed by Eden Foods, Inc. to register the mark "DOUBLE CERTIFIED ORGANIC" for "pasta". [FN1]
Registration has been finally refused under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the basis that, when applied to applicant's goods, the mark is merely descriptive of them.
Applicant has appealed. Briefs have been filed but an oral hearing was not requested. We affirm.
Of record in support of the refusal to register [FN2] are excerpts from two searches of Mead Data Central, Inc.'s NEXIS data base conducted by the Examining Attorney on March 6, 1992. [FN3] The vast majority of the 100 stories retrieved from newspaper, journal and wire service articles reference various food and agricultural products certified to be organic, [FN4] including "certified organic" beans, beef, chicken, coffee, cereals, corn meal, corn oil, wheat flour, pastry flour, grains, herbs, livestock feeds, mangoes, milk, nuts, olive oil, pasta, popcorn, produce, safflower oil, sauces, spaghetti, tea, tomatoes, vegetables, water, wild rice and wines. In particular, the following stories referring to "certified organic" pasta or its ingredients were found:
Pasta Quistini announces the introduction of its certified organic fresh pasta. .... They retail in health food stores.--New Product News, October 7, 1991;
Today, European Noodles produces between four to six thousand pounds of pasta a day out of its 13,000 sq. ft. plant. This year the company expanded its lines by adding organic and kosher varieties. "It's easy to be certified organic and kosher because our purpose is to always make pure products using the best products["]. --Food in Canada, July 1991;
Made with certified organic wheat, this pasta contains no salt or added oil and is all natural.--New Product News, June 10, 1991 (reporting on "EDDIE'S ORGANIC DURUM WHEAT SPAGHETTI" from "Mrs. Leeper's Pasta, San Diego, CA"); and
Northern Lights ... wild rice products include Wild Rice Small Lasagna Pasta.... Made only with certified organic ingredients....--ADWEEK, August 13, 1990.
The NEXIS excerpts also contain several articles concerning applicant, including the following:
[A] well-known name in organic food is Eden Foods, which offers over 200 organic products ranging from organic pasta and spaghetti sauce to a soy beverage.... Eden/OCIA Double Certified Organic foods are available at natural foods stores, specialty and grocery stores nationwide.--Business Wire, September 11, 1991;
Eden organic barley malt is now Double Certified Organic by Eden Foods and the Organic Crop Improvement Assoc[iation].--Prepared Foods, January 1991;
*2 With over 21 years in the natural foods industry, Eden offers OCIA Double Certified Organic products including ... Eden Organic Pasta ... and Eden organic tomato products nationwide in natural foods, gourmet/specialty and grocery stores. --Business Wire, September 19, 1990; and
According to Roller, Eden foods marked as organic are certified by the Organic Crop Improvement Association, an independent farmer's group. Eden also requires that organic produce meets [sic] its own certification standards. Among the requirements is that a farmer's field must not have had chemical pesticides or fertilizers used on it for at least three years..
....
Other Eden products range from bulk grains and flours to the pasta turned out in the Detroit plant. The organic pasta line is new, Roller says, but is already becoming a big seller.--Michigan Business, March 1990.
Applicant argues that while the mark "DOUBLE CERTIFIED ORGANIC" is used to convey the impression that its pasta "is particularly desirable for those seeking goods made from healthful and pure ingredients," the mark "has no fixed and discernable [sic] meaning that would be readily apparent to the potential buyer". Instead, applicant contends that the mark could mean an organic product which is certified by two separate certification groups; that two of the ingredients in the product are certified; or that the product has been certified by both an independent body and the seller itself, to state but several possible examples. Furthermore, applicant maintains that it is not clear whether the notion of double organic certification pertains, for instance, to the goods, the ingredients of which the goods are made or the way in which the ingredients are processed.
Thus, according to applicant, the mark "DOUBLE CERTIFIED ORGANIC" conveys only a vague, laudatory quality and suggests, but does not merely describe, that the product has been approved by some undefined authority and/or entity. Applicant also notes that, of the NEXIS excerpts furnished by the Examining Attorney, only a few stories show usage of the phrase "DOUBLE CERTIFIED ORGANIC". Those stories, applicant points out, reveal use of such term in connection with applicant and its products, thereby evidencing that the mark "is associated with applicant and applicant's product[s]" and is not descriptive. In view thereof, and in light of the complete absence from the record of any third-party usage of the mark, applicant asserts that the evidence buttresses its contention that the mark is not merely descriptive.
Applicant additionally contends, in its reply brief, that it is "quite telling" that the record shows only a few uses, other than applicant's own, of the term "certified organic" in relation to pasta. While "not arguing for the registrability of the term 'certified organic' since this term is so widely used with products other than pasta," applicant insists that its use of such term "with pasta is quite anomalous and incongruous, and argues for the nondescriptiveness of the entire mark, 'Double Certified Organic'." In short, applicant urges that its mark is not merely descriptive when applied to pasta inasmuch as it does not immediately convey to potential purchasers the qualities, attributes or nature of the product; it is not being used by competitors; and, because there are "many other terms that competitors could use should they ever have the necessity for describing a[n organic] food product as being 'double' certified, whatever that means," there is no competitive need for use of the term "DOUBLE CERTIFIED ORGANIC" in the marketplace.
*3 The Examining Attorney, on the other hand, correctly observes that the question of mere descriptiveness must be considered in the context of the manner in which the mark appears on or in connection with the goods for which registration is sought since that is how the purchaser encounters the mark in the marketplace. In the present case, applicant's mark is used on labels affixed to containers for the goods. One such label, filed as a specimen with the application, is reproduced below:
Pointing to the statement on the label that "Eden(R) brand is the first pasta made in the USA that has the farming and processing independently certified with an audit trail from the farm to the shelf," the Examining Attorney stresses that:
Once reading the aforementioned language from the labels, any consumer would immediately realize that two developmental stages in the applicant's pasta have been certified as organic. The labels clearly state that the farming and the processing of the pasta have been independently certified. This point is further emphasized in distinctive italicized print. No other wording on the labels appears in this italicized format. Therefore, a consumer need not engage in any reflection or multi-stage reasoning process before determining that the mark conveys a descriptive message about the goods' characteristics or qualities.
Even if a consumer disregarded the explanatory language provided on the labels, the same consumer would still perceive the mark itself as conveying information about the characteristics and qualities of the goods. As stated in G. Heileman Brewing Co. v. Anheuser-Busch, Inc., 873 F.2d 985, 10 USPQ2d 1801 (7th Cir.1989), the hypothetical customer, whose state of mind controls the determination of descriptiveness, is a person who has been informed about the product by the advertising and information currently available in the marketplace. In this case, the LEXIS/NEXIS evidence made of record reveals the words "certified organic" as a common descriptive phrase used in the food industry. The phrase is often used to describe certain food characteristics, ingredients or qualities.
In consequence thereof, and in light of the dictionary definition of the word "double" submitted with his brief, the Examining Attorney argues that applicant "is simply promoting its organic food as being certified 'twice as much' as other certified organic foods," with the mark "DOUBLE CERTIFIED ORGANIC" consisting merely of "a laudatory term, 'double,' added to a phrase commonly descriptive for food". Nothing new, unique or unusual is created by such combination, the Examining Attorney contends, nor is any imagination, thought or perception required to determine that the mark merely describes the ingredients, qualities and characteristics of applicant's doubly certified organic pasta. The Examining Attorney additionally maintains that, given the demonstrated common use of the phrase "certified organic" in the organic food industry for food ingredients, fresh foods and processed foods, it is readily apparent that "[i]f a competitor of the applicant also decided to have its product certified twice as being organic, the applicant's rights to the proposed mark would deprive the competitor from an apt description of its new 'double' certifications."
*4 It is well settled that a term is considered to be merely descriptive of goods or services, within the meaning of Section 2(e)(1) of the Trademark Act, if it immediately describes an ingredient, quality, characteristic or feature thereof or if it directly conveys information regarding the nature, function, purpose or use of the goods or services. See In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). It is not necessary that a term describe all of the properties or functions of the goods or services in order for it to be considered to be merely descriptive thereof; rather, it is sufficient if the term describes a significant attribute or idea about them. Moreover, whether a term is merely descriptive is determined not in the abstract but in relation to the goods or services for which registration is sought, the context in which it is being used on or in connection with those goods or services and the possible significance that the term would have to the average purchaser of the goods or services because of the manner of its use. See In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
We believe that when applied to pasta, the mark "DOUBLE CERTIFIED ORGANIC" immediately, and without conjecture or speculation, describes a significant aspect or feature of applicant's product, namely that its pasta is doubly certified as organic. The plain meaning of the words comprising the mark, as confirmed by the information disclosed by the specimen labels, the dictionary definitions of the word "double" and the NEXIS evidence demonstrating the common use of the phrase "certified organic" for foods and their ingredients, convince us that, as used in connection with pasta, there is nothing which is indefinite or incongruous about applicant's mark. In particular, nothing is vague or ambiguous about the term "DOUBLE CERTIFIED ORGANIC" nor is any imagination, mental processing or gathering of further information necessary in order for customers and prospective purchasers of applicant's pasta to readily perceive the descriptive significance of such term.
While, especially if the label on the product is not read, it may be the case that, as contended by applicant, the words "DOUBLE CERTIFIED ORGANIC" do not directly convey the facts that the amber durum wheat used as an ingredient in applicant's pasta and the processing of its pasta are independently certified as conforming to certain standards for organic food products, with such certification being independently conducted by the OCIA (Organic Crop Improvement Association) and possibly by applicant as well, the fact remains that the words which comprise applicant's mark precisely describe the dual certification of its goods as organic in nature. [FN5] As such, the mark "DOUBLE CERTIFIED ORGANIC" is merely descriptive of a significant attribute or feature of applicant's pasta.
*5 We also agree with the Examining Attorney that the fact that applicant may be the first and/or only entity using the phrase "DOUBLE CERTIFIED ORGANIC" is not dispositive where, as here, the words unequivocally project a merely descriptive connotation. See In re MBAssociates, 180 USPQ 338, 339 (TTAB 1973). Moreover, for a designation to be merely descriptive, it is not necessary that it be in common usage in the particular industry. See In re National Shooting Sports Foundation, Inc., 219 USPQ 1018, 1020 (TTAB 1983). The absence, furthermore, of any third-party use of the phrase "DOUBLE CERTIFIED ORGANIC" in the NEXIS excerpts of record does not mean that competitors of applicant would not need to use such a phrase in advertising and promoting their own doubly certified organic pasta, especially since the NEXIS data base contains only the text of articles in various publications and periodicals while excluding the contents of advertisements appearing therein. See In re Gagliardi Bros., Inc., 218 USPQ 181, 183 (TTAB 1983). Anyone marketing pasta which carries dual organic certifications of any sort would, we think, have occasion to use the term "DOUBLE CERTIFIED ORGANIC" to convey succinctly such fact. Finally, that other words or phrases, such as those set forth in applicant's reply brief, [FN6] may equally describe double certified organic pasta is immaterial. See Roselux Chemical Co., Inc. v. Parsons Ammonia Co., Inc., 299 F.2d 855, 132 USPQ 627, 632 (CCPA 1962). Accordingly, because the term "DOUBLE CERTIFIED ORGANIC" conveys forthwith the notion that its goods are doubly certified as an organic food product, applicant's mark is merely descriptive of pasta.
Decision: The refusal under Section 2(e)(1) is affirmed.
J.E. Rice
Members, Trademark Trial and Appeal Board
FN1. Ser. No. 74/056,033, filed on May 7, 1990, which alleges dates of first use of September 1, 1989.
FN2. With his appeal brief, the Examining Attorney has attached a definition of the word "double" from Webster's II New Riverside Dictionary at 399 which, inter alia, defines such term as an adjective meaning "1. Twice as much in size, strength, number or amount <double trouble> 2. Having two like parts < double windows> 3. Having two unlike parts : DUAL <a double standard> ..."; as a transitive verb meaning "1. To make twice as great 2. To be twice as much as ..."; and as an adverb meaning "1. To twice the extent or amount : DOUBLY 2. Two together <riding double>". While such evidence is untimely under Trademark Rule 2.142(d), we nevertheless have considered it since the Board may take judicial notice of dictionary definitions. See, e.g., University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed.Cir.1983). We also judicially notice that Webster's Third New International Dictionary (1976) at 677 defines "double," among other things, as an adjective meaning "1 : having a twofold relation or character : combining two often dissimilar things or qualities : DUAL ..." and as an adverb meaning "1 a : to twice the extent or amount : DOUBLY...."
FN3. Specifically, searches in the OMNI file located 33 stories satisfying the search request "CERTIFIED ORGANIC AND PASTA," while 69 stories were discovered using the search request "CERTIFIED ORGANIC AND NOT FARMER* AND NOT (PASTA OR SPAGH! OR LASAG! OR NOODL!)". Copies of all the stories found, displayed in the "KWIC" format, and a copy of one of those stories, displayed in the "FULL" format, were made of record.
FN4. These and other stories also mention "organic food products ... certified organic"; "certified organic growers"; "certified organic methods"; "Certified Organic Growers Association"; "certified organic ... food"; "certified organic products"; "certified organic farms"; "certified organic cropland"; and "certified organic ingredients".
FN5. A merely descriptive term need not describe every aspect or feature of the goods. It is sufficient, instead, if it simply describes one significant attribute or characteristic of the goods. See In re Aid Laboratories, Inc., 223 USPQ 357, 358-59 (TTAB 1984). In the present case, a significant aspect or feature of applicant's pasta is that it carries a double certification as an organic product. With the increasing interest by the purchasing public, as the NEXIS evidence indicates, in those natural or organic foods which have been certified as being raised and/or processed without pesticides, herbicides or other chemical treatments, the mark "DOUBLE CERTIFIED ORGANIC" would sufficiently tell health-conscious shoppers that applicant's pasta is doubly certified as being organic.
FN6. Applicant suggests that competitors "could say that the product was first certified organic in one fashion, and then certified organic in another fashion; they could say that the product has two organic certifications; or they could say the product is separately certified organic by two independent bodies; et cetera. They certainly would have no necessity to say the product is 'double certified organic' ".
DISSENTING OPINION
*6 E. J. Seeherman
Member, Trademark Trial and Appeal Board
I dissent from the finding of the majority that the mark "DOUBLE CERTIFIED ORGANIC," when applied to pasta, is merely descriptive, in that it "immediately, and without conjecture or speculation, describes a significant aspect or feature of applicant's product, namely that its pasta is doubly certified as organic," opinion, p. 9, and that it sufficiently tells "health-conscious shoppers that applicant's pasta is doubly certified as being organic," p. 10, footnote 5. While the evidence demonstrates that the phrase "CERTIFIED ORGANIC" is widely used to describe various food products, "DOUBLE CERTIFIED ORGANIC," because of the additional element "DOUBLE," has a sufficient degree of ambiguity to take it out of the category of a merely descriptive mark. Even accepting the contention that a consumer is told by the mark that the pasta is doubly certified as organic, what does this actually mean? A consumer would not immediately know whether the pasta has been certified by two entities, or whether two entities have certified different aspects of the processing, or whether one entity has certified two different aspects of the processing, or even whether the word "DOUBLE" is used in a laudatory manner, to convey that the pasta has extra certifications and is therefore "really" organic. Because the mark does not immediately describe a characteristic of the goods, or directly convey information concerning the goods, it cannot be considered merely descriptive.
I recognize that the specimen label states that this "is the first pasta made in the USA that has the farming & processing independently certified with an audit trail from the farm to the shelf," and it is the Examining Attorney's contention that it is this characteristic of the pasta, i.e., that each of these steps has been certified as organic, that the mark describes. However, as can be seen in the label reproduced in the majority opinion, this passage appears in the midst of a large amount of text, and it is only by reading the entire text carefully, and noting that only one certifying body (OCIA-Organic Crop Improvement Association) is mentioned, that the consumer might eventually conclude that the term "DOUBLE" in applicant's mark refers to the certification of the farming and the certification of the processing. Because a multistage reasoning process is necessary to ascertain this characteristic of applicant's pasta from the mark "DOUBLE ORGANIC CERTIFIED" (if, indeed, it is a characteristic that the farming and the processing steps are separately certified), I believe that the mark is suggestive rather than merely descriptive. See, BellSouth Corp. v. Planum Technology Corp., 14 USPQ2d 1555 (TTAB 1988).
Moreover, the specimen label also bears, in the two upper corners, what appear to be certification seals, one for the OCIA organization referred to in the text, and the other which is unidentified as to source but which, because of the use of the phrase "Double Certified Organically Grown," I take to refer to applicant. Thus, the double certification characteristic of applicant's pasta which the mark is supposed to immediately describe may not describe certification of the farming and the processing aspects, but may refer to certification by the OCIA and by applicant. Further, since the label identifies OCIA as a farmer-based certification body, and the other seal uses the phrase "Organically Grown," the certifications may both be related only to the growing of the wheat and not the processing of the flour and/or the pasta at all. Although specimens may be considered in determining the understanding the consumer would have of a mark, because of the differing information on applicant's labels a consumer would not be able to ascertain from the labels to what the double certification indicated by the mark refers.
*7 Even the Examining Attorney does not appear to be exactly sure of what characteristic of applicant's pasta "DOUBLE CERTIFIED ORGANIC" conveys. As noted above, the Examining Attorney's contention seems to be that "DOUBLE CERTIFIED ORGANIC" describes the certification of both the farming and processing stages, and at page 4 of his brief he asserts that any consumer reading the language on the label "would immediately realize that two developmental stages in the applicant's pasta have been certified as organic." However, at page 10 he modifies that position, stating that "the phrase may be interpreted as a description of: 1) two developmental stages of food 'certified as organic;' or 2) food certified as being organic by two different certification entities." Then, at page 11, he characterizes the mark as laudatory, because it would cause consumers to perceive the goods as "twice" healthier than that of organic pasta certified only "once." Given these questions as to just what "DOUBLE CERTIFIED ORGANIC" is supposed to describe, I cannot see how the mark can be held to be merely descriptive.
It is well-established that, when there is doubt as to whether a mark is merely descriptive, such doubt should be resolved in favor of the applicant. In re Shutts, 217 USPQ 363 (TTAB 1983). Given the questions about what information the mark would convey to prospective purchasers, I would reverse the refusal to register, and allow the mark "DOUBLE CERTIFIED ORGANIC" to be passed to publication with a disclaimer of "CERTIFIED ORGANIC."