Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE GRAND METROPOLITAN FOODSERVICE, INC.
Serial No. 74/073,517
May 9, 1994
Issued: April 4, 1994
Darlene D. Bullock
Trademark Examining Attorney
Law Office 14
(R. Ellsworth Williams, Managing Attorney)
Before Simms, Seeherman and Quinn
Administrative Trademark Judges
Opinion by Simms
Administrative Trademark Judge
Grand Metropolitan Foodservice, Inc. (applicant), by change of name from McGlynn Bakeries, Inc., has appealed from the final refusal of the Examining Attorney to register the mark shown below
for baked mini muffins sold frozen or fresh. [FN1] The Examining Attorney has refused registration under Section 2(e)(1) of the Act, 15 USC 1052(e)(1), arguing that the term sought to be registered is the phonetic equivalent or corrupt spelling of the generic term "muffins." As such, the term is unregistrable, according to the Examining Attorney. Alternatively, the Examining Attorney has held that, if the mark is not considered generic, registration is nevertheless improper because applicant has not established acquired distinctiveness under Section 2(f) of the Act, 15 USC 1052(f).
It is applicant's position that the stylized mark presented for registration is "an inventive double entendre" which incorporates the suffix "Funs," such that applicant's mark is suggestive of "fun," as well as being suggestive of its muffins. Applicant argues that the incongruous suffix used in its mark, with a capital "F," is pronounced differently from the suffix "fins" appearing at the end of the generic term "muffins." Applicant's mark has a different appearance from the generic term, therefore, as well as a different connotation or commercial impression, applicant maintains. Applicant argues that its mark, therefore, is distinctive, has a double entendre and would not be perceived by consumers as simply the generic term or the exact phonetic equivalent of the generic term "muffins." Moreover, applicant emphasizes in its promotion of its goods the "fun" or festive nature of its muffins. Finally, applicant argues that even if the Board does not consider applicant's mark to be inherently distinctive, applicant's evidence of acquired distinctiveness should lead to registration. This evidence consists of a declaration of applicant's president setting forth the dollar volume of sales of the goods (over $650,000), the amount of money spent in advertising and promoting its products (approximately $46,000), and a statement of applicant that its mark has become distinctive of its goods by reason of this evidence. The declaration also states:
Further, the mark MUFFINS is distinctive by reason of the portion of the mark -FUN, which is emphasized in Applicant's promotional materials in relation to the "fun" or cute nature of Applicant's products.
Finally, applicant contends that a disclaimer offered in this case will ensure that third parties will not be precluded from use of the generic term "muffins." [FN2]
*2 After careful consideration of the arguments of the attorneys, we believe that this case involves more than simply a misspelling of a descriptive or generic word. That is to say, the mark presented for registration will be perceived, we believe, as not just a misspelled word. As applicant has pointed out, its mark does project a dual meaning or suggestiveness--that of muffins and of the "fun" aspect of applicant's food product. This aspect of applicant's product is emphasized in its promotion ("What's MufFun than one?"). We have a situation, therefore, where applicant's mark has a different commercial impression or connotation from that conveyed by a misspelled generic or descriptive term. We also recognize, of course, that there is often a thin line of demarcation between a suggestive term and a merely descriptive term, and that the determination of the category into which a particular word falls is frequently a difficult determination, involving some subjective judgment. Also, any doubt with respect to the issue of descriptiveness should be resolved in applicant's behalf. In re George Weston Ltd., 228 USPQ 57 (TTAB 1985) and In re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972). Moreover, applicant's disclaimer makes clear that third parties will not be precluded by this registration from using the generic term "muffins."
In view of the nature of applicant's inventive and somewhat stylized mark, being an obvious play on the word "muffin" and the word "fun," we believe that the meaning or commercial impression of applicant's mark will be more than that simply of the word "muffins." Therefore, applicant's mark is not merely descriptive. See, for example, In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR & SPICE held not merely descriptive for various bakery products). In view of this decision, we need not consider the evidence of acquired distinctiveness.
Decision: The refusal of registration is reversed.
R.L. Simms
E.J. Seeherman
T.J. Quinn
Administrative Trademark Judges, Trademark Trial and Appeal Board
FN1. Application Serial No. 74/073,517, filed June 28, 1990, under Section 1(b) of the Act, 15 USC 1051(b), based upon applicant's bona fide intention to use the mark in commerce. During the course of prosecution of this case, applicant filed an amendment to allege use reciting use of the mark since January 28, 1991. With that amendment to allege use, applicant filed an amendment to the mark to show it in the form shown above. Originally applicant sought registration of the mark in typed letters.
FN2. The disclaimer offered by applicant, which apparently has not been formally entered into the application, states:
No claim is made to the exclusive right to use the word "muffins", which is somewhat phonetically similar to Applicant's mark, apart from the mark as shown.
Inasmuch as the Examining Attorney has not objected to the entry of this disclaimer, we believe that it should be entered. However, disclaimers for marks published for opposition are printed in a standardized form regardless of the text submitted. See TMEP Section 1213.09(a)(i) and notice at 1022 TMOG 44 (September 28, 1982). The use of the standardized form is solely for purposes of printing and is not a limitation of registrant's rights.