In re Yarnell Ice Cream, LLC: Trademark Descriptiveness and Acquired Distinction

Published 08/19/2019 by CIONCA Team Member

Introduction

On July 9, 2019, the Trademark Trial and Appeal Board (“TTAB”) made decision in In re Yarnell Ice Cream, LLC. Yarnell Ice Cream, LLC (“Applicant”) applied to register SCOOP on November 18, 2015. However, the Examining Attorney refused registration of the mark on the grounds of failure to function as a mark for identified goods, mere descriptiveness, and insufficient specimen. During prosecution, the refusal was made final and Applicant requested reconsideration, which was denied. TTAB affirms the refusal on all three grounds.

Decision

Naturally, TTAB performed an analysis of all the Examining Attorney’s grounds for refusal, as described below:

1. The Significance of the Ultimate Identification of Goods. After amendments, the Applicant’s final description of goods is “Frozen confections, Ice cream, as promoted or distributed by a mascot, named SCOOP, at product promotions and distribution of Applicant’s ice cream and frozen confections.” While Applicant argues that Applicant’s goods are not merely ice cream and emphasizes that it is ice cream specifically sold by a mascot, the Examining Attorney is unwavering in asserting that this qualification “does not ‘alter the nature of the goods identified’ in any meaningful way.” Although SCOOP is the name of Applicant’s mascot, it must be noted that Applicant “seeks registration of SCOOP for ‘frozen confections and ice cream,’ not live appearances by a mascot.” As such, TTAB affirms.

2. Mere Descriptiveness. As explained via the Trademark Act, a “merely descriptive” mark “immediately conveys information concerning a feature, quality, or characteristic of the goods or services for which registration is sought.” The Examining Attorney argues that SCOOP immediately conveys a common unit of measurement for ice cream, which is, again, the Applicant’s description of goods. Applicant argues that (1) “scoop” could be used informally to refer to news and (2) “scoop” is a commonly used serving utensil not necessarily used just ice cream (e.g., coffee, litter, bulk foods, etc.). As such, Applicant expresses that “scoop” is not descriptive of goods themselves, but rather, of the measure used to serve such goods. However, TTAB cites a collection of websites and articles that use “scoop” to refer to a portion of ice cream. Moreover, TTAB cites third-party registrations of marks including the word “scoop” in which the term is disclaimed, “which are probative of the descriptive meaning of ‘scoop’ with respect to the goods.”

3. Lack of Acquired Distinctiveness. Under the Trademark Act, a merely descriptive mark may be registered if an applicant can successfully demonstrate acquired distinctiveness. The strength of the required evidence showing distinction is dependent on the descriptiveness of the applied-for mark, which in this instance is high. In response, Applicant submitted specimen showing proof of Applicant’s use of the mark since 2012. However, “the Trademark Act does not ‘provide a presumption of acquired secondary meaning after five years’ of use of a mark,” and thus, simply showcasing such a lengthy use does not demonstrate proof of acquired distinctiveness.

4. Specimen Refusal. Moreover, Applicant submits as specimen images of Applicant’s mascot making live appearances during ice cream distribution and illustrations of the mascot wearing his SCOOP name tag. Furthermore, Applicant claims that such live appearances equate to displays associated with the goods. However, TTAB asserts that neither their mascot’s live appearances nor his cartoon counterpart qualifies as such. Finally, Applicant argues that SCOOP is manifest on their displays, but TTAB disagrees that Applicant’s placement of SCOOP “in proximity to the goods is not enough to show that these specimens constitute displays associated with the goods.”

5. Failure to Function Refusal. The function of a trademark is to act as a source identifier for a good and/or service. The Examining Attorney proclaims that the applied-for mark fails to function as a trademark “because consumers would perceive it as ‘merely conveying an informational message and not as a means to identify and distinguish the applicant’s goods from those of others.’” Again, the Examining Attorney found “scoop” to be a common unit when serving ice cream, and the specimen submitted does not identify Applicant’s goods.

For the reasons above, TTAB affirms the Examining Attorney’s refusal to register on all grounds.

Conclusion

When applying for trademark registration, it is crucial that the applicant can clearly exhibit proper and consistent use of the mark. Furthermore, for descriptive marks, it is important to note that the amount of time the applicant has been using the mark is irrelevant if distinctiveness cannot be shown.

Full In re Yarnell Ice Cream, LLC decision can be read here: https://e-foia.uspto.gov/Foia/RetrievePdf?system=TTABIS&flNm=86824279-07-09-2019

Disclaimer: The views and opinions expressed throughout this blog are the views and opinions of the individual author(s) and/or contributor(s) and do not necessarily reflect the views and opinions of our firm, CIONCA IP Law. P.C.

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