Published 19/08/2019 by CIONCA Team Member
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.
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.
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.
Marin11/18/2015 6:11:11 PM
PTAB Decisions Give Examples of Patent Eligible Subject Matter
Marin11/18/2015 6:15:40 PM
Covered Business Method Claims Are Not Required to Particularly Target Financial Industry
Marin11/18/2015 7:31:35 PM
When Is a Thesis Prior Art?
Marin11/19/2015 2:13:05 PM
An Innovator’s Dilemma: Design or Utility Patent?
Marin1/28/2016 9:10:56 PM
How Unpredictability Can Affect Obviousness Challenges
Marin1/28/2016 9:15:16 PM
The Patent Trial and Appeal Board Designates Two Decisions as Precedential
M. Cionca and I. Kim2/4/2016 5:55:16 PM
Software Inventions Are Still Patentable!
Marin Cionca2/16/2016 6:34:53 PM
In IPRs, patentees have to show that substitute patent claims are patentable
I. Kim PhD2/26/2016 8:47:51 PM
The U.S. Supreme Court Will Review Claim Construction Standards and Institution Decision Reviewability.
Iris Kim, PhD3/25/2016 8:34:14 PM
Challenging a Claim’s Validity with Different Standards of Claim Construction
Marin Cionca5/17/2016 8:57:23 PM
Patent Claims Rejection Based on Inherency
Iris Kim, PhD6/1/2016 7:04:50 PM
The Patent Trial and Appeal Board Designates Five More Decisions as Precedential
Marin Cionca9/6/2016 9:26:12 PM
Patent Case Law: New Example of Software as Patentable Subject Matter
Marin Cionca9/15/2016 9:47:39 PM
Patent Law Alert: Federal Circuit Opens Door for More Software Patents
Marin Cionca2/21/2017 12:30:52 AM
Software Patent Law Update: Federal Circuit Finds Graphical User Interface Patentable
Marin Cionca4/25/2017 9:48:49 PM
Monetization of Patents: How to Make Money with Patents
CIONCA - Staff6/15/2017 5:32:14 PM
Patent Law: Challenging the Patent Claim Definiteness Requirement
CIONCA - Staff6/28/2017 8:26:07 PM
Patent Law: Conditions Precedent May Expose Method Claim to Broad Interpretation During Prosecution
CIONCA - Staff8/9/2017 5:39:58 PM
Patent Case Study: The Novelty Of An “Invention” Is NOT Enough To Make It Patentable
CIONCA Staff8/20/2017 3:16:11 PM
CIONCA on Patents: Think Twice Before Suing for Patent Infringement and Fight Back when Unreasonably Sued
staff9/15/2017 9:33:30 PM
staff9/27/2017 5:00:12 PM
Claim Indefiniteness During Patent Pre-Issuance: Define Your Invention, Not Just Your Audience
staff9/27/2017 5:12:07 PM
CIONCA - Patent and Trademark Law Attorney
Staff9/28/2017 7:27:22 PM
Staff11/3/2017 4:20:04 PM
An Introduction to Provisional Patent Applications
11/10/2017 6:47:44 PM
An Introduction to Design Patent Applications
11/17/2017 1:24:20 PM
An Introduction to Patent Searches
12/1/2017 8:01:27 PM
An Introduction to Patent Cooperation Treaty Applications
12/26/2017 6:04:25 PM
CIONCA Sets Foot in San Francisco
1/2/2018 7:47:09 PM
The Lanham Act: Disparagement Provision Violates the First Amendment
CIONCA Team1/17/2018 8:12:06 PM
A Fork in the Road: Production or Protection?
CIONCA Team2/16/2018 4:07:48 PM
Fashion and Intellectual Property
3/8/2018 1:25:46 PM
Proceed with Caution: Consider Carefully when Narrowing Claims for Allowance
3/20/2018 12:50:05 PM
Andrei Iancu - New Director of the USPTO
CIONCA Staff4/13/2018 9:10:04 PM
It Take Two to Tango: Knowles v. Iancu, a Standing Dispute in a PTAB Decision
CIONCA Staff4/20/2018 5:25:25 PM
USPTO Changes Examination Procedure Pertaining to Subject Matter Eligibility in View of Berkheimer v. HP, Inc.
5/4/2018 7:37:51 PM
The Hague System for Protection of International Designs
CIONCA IP5/17/2018 9:54:58 PM
Marin Cionca Presents at OCIPLA May 2018 Luncheon
7/3/2018 7:44:33 PM
Impax Laboratories Inc. v Lannett Holdings Inc. on Claim Invalidation
Marin Cionca7/31/2018 6:50:05 PM
My patent expired? Can I still sue for patent infringement?
Staff8/16/2018 4:24:01 PM
Correcting or Changing a Patent After Issue Through the Central Reexamination Unit
Staff8/31/2018 7:26:58 PM
Patent Claim Interpretation By Federal Circuit's on Facebook's Contiguous Image Layout
CIONCA Team Member9/17/2018 4:33:20 PM
Trademarks and Likelihood of Confusion: Federal Circuit’s Decision in In re: Detroit Athletic Co.
Marin Cionca10/1/2018 7:42:12 PM
Can I Register a Color as a Trademark or Service Mark?
CIONCA Team Member10/16/2018 6:50:31 PM
A Double-Edged Sword: Benefit of Priority or Longer Patent Term
CIONCA Team Member11/19/2018 1:07:51 PM
The Appeals Process
Marin Cionca12/8/2018 8:35:06 PM
IP Assets - Procurement, Enforcement, Monetization
CIONCA Team Member12/18/2018 6:12:48 PM
Schlafly v. The Saint Louis Brewery: The Registration of Merely a Surname
CIONCA Team Member1/4/2019 4:12:21 PM
In re: Tropp: New Matter in a Continuation Can Be Relevant to Written Description Requirement
Marin Cionca1/23/2019 9:45:30 PM
Patent Law Alert: All Sales of the Invention, Including Secret Sales May Invalidate a Patent
CIONCA Team Member2/5/2019 7:22:27 PM
TiVo Puts Tivoli on Pause: TTAB’s Decision in TiVo Brands LLC v. Tivoli, LLC
CIONCA Team Member2/19/2019 7:12:46 PM
Revised Guidance by USPTO on Patent Subject Matter Eligibility and Examining Computer-Implemented Functional Claims
Marin Cionca3/1/2019 9:36:50 PM
USPTO Director Andrei Iancu Visits Orange County!
CIONCA Team Member3/21/2019 3:49:43 PM
Defining Inherency: A Decision in Personal Web Technologies, LLC v. Apple, Inc.
CIONCA Team Member4/3/2019 7:25:37 PM
The Patent Trial and Appeal Board (PTAB) Designates Three Decisions Precedential
Marin Cionca4/17/2019 3:48:33 PM
What Qualifies as Proper Use in Commerce Claim in a USPTO Trademark Application?
CIONCA Team Member5/7/2019 7:13:41 PM
The Federal Circuit Defines a Technological Invention
CIONCA Team Member5/20/2019 8:25:57 PM
PTAB Designates Cases as Precedential
Marin Cionca6/11/2019 8:43:17 PM
Can I Successfully License My Invention?
CIONCA Team Member6/27/2019 7:41:52 PM
Obviousness in a Single Prior Art Instance: Game and Technology Co., LTD., v. Activision Blizzard INC., Riot Games, INC.
CIONCA Team Member7/5/2019 2:22:42 PM
In re: Global IP Holdings LLC: Broadening Claims Through Reissue Applications
CIONCA Team Member8/5/2019 2:29:33 PM
Is Speculation Enough Evidence for an Appeal?: General Electric Company v. United Technologies Corporation
CIONCA Team Member8/19/2019 7:46:17 PM
In re Yarnell Ice Cream, LLC: Trademark Descriptiveness and Acquired Distinction
CIONCA Team Member9/4/2019 7:20:46 PM
Guangdong Alison Hi-Tech Co. v. International Trade Commission: Objective Boundaries
Marin Cionca9/27/2019 9:32:48 PM
Can an Online Patent Attorney File My Patent?
CIONCA IP10/7/2019 5:44:50 PM
A Decision in Henny Penny Corporation v. Frymaster LLC
CIONCA IP10/16/2019 1:28:13 PM
To Use or Not to Use: The Statutory Period of Trademark Nonuse Prior to Presumed Abandonment
11/15/2019 8:15:11 PM
Liqwd, Inc. v. L’Oreal USA, Inc.: Objective Indicia and Copying
Marin Cionca12/9/2019 8:07:20 PM
A “glove” approach to patent claim construction
CIONCA IP 12/31/2019 4:29:41 PM
The Chamberlain Group, INC. v. One World Technologies, INC.
CIONCA IP 1/9/2020 4:43:58 PM
The Bigger Picture: TTAB’s Decision in In re James Haden, M.D., P.A.
CIONCA IP 1/15/2020 4:47:19 PM
FOX Factory, Inc. v. SRAM, LLC: Presumption of Nexus
Marin Cionca, Esq.
Registered Patent Attorney
USPTO Reg. No. 63899
About CIONCA® IP Law firm: We are an Orange County, CA based boutique intellectual property firm with a focus on patent and trademark application, prosecution, opinion, licensing and IP enforcement services, offering its IP services primarily at flat fee rates. We serve local OC clients, as well as clients throughout US and international clients.
We’d love to hear from you…we just need a little info
about your plans to take over the world!
P.S…Feel free to call us! (800)985-9198
Thank you for your message. We will respond within 24-72 hours. Thank you.