Grand Forest Holdings Incorporated

THIS DISPOSITION

IS CITABLE

AS PRECEDENT OF

THE TTAB

Hearing: Mailed:

20 October 2005 31 January 2006

AD

UNITED STATES PATENT AND TRADEMARK OFFICE

________

Trademark Trial and Appeal Board

________

In re Grand Forest Holdings Incorporated1

________

Serial No. 78220033

_______

Patricia A. Wilczynski Brozek of Wilczynski Brozek Law for

Grand Forest Holdings Incorporated.

David C. Reihner, Trademark Examining Attorney, Law Office

111 (Craig D. Taylor, Managing Attorney).

_______

Before Quinn, Hohein, and Drost, Administrative Trademark

Judges.

Opinion by Drost, Administrative Trademark Judge:

On February 28, 2003, Grand Forest Holdings

Incorporated (applicant), a Canadian corporation, applied

to register the mark FREEDOM FRIES, in standard character

form, on the Principal Register for goods identified as

1

The application was originally filed in the name of Irving Pulp

& Paper, Limited. A document recording a change of name to the

current applicant was subsequently recorded at Reel/Frame No.

3117/0056.

Ser. No. 78220033

“frozen French2 fried potatoes” in Class 29. The

application (Serial No. 78220033) is based on applicant’s

allegation of a bona fide intention to use the mark in

commerce. Applicant has disclaimed the term “Fries.”

The examining attorney refused to register applicant’s

mark on the ground that the mark is merely descriptive

under Section 2(e)(1) of the Trademark Act, 15 U.S.C.

§ 1052(e)(1), of applicant’s goods. The examining

attorney’s position (Brief at 2-3) is set out below:

After the United States military invasion in 2003 of

Iraq, which was met with diplomatic opposition by the

government of France, restaurants around the United

States as well as restaurants and snack bars of the

United States House of Representatives at the order of

several members of the House, substituted the

designation “freedom fries” for French fries as a

symbolic gesture of displeasure with the government of

France. “Freedom fries” was dubbed the new name of

the goods. News about the new name for French fries

and the events surrounding the adoption of the new

name for the goods spread throughout the United

States. Evidence showing the publication of stories

about the events and the trend of renaming French

fries as “freedom fries” was presented to applicant in

each Office Action in which registration was refused.

The publicity about the renaming of French fries has

been considerable. Correspondingly, the purchasing

public would recognize the designation FREEDOM FRIES

as an alternate, albeit new, descriptive name for

French fried potatoes.

2

The capitalization of the word “French” from the quoted sources

was inconsistent. We have chosen for consistency sake to spell

the word as “French” regardless of the original spelling.

2

Ser. No. 78220033

Applicant responds to the examining attorney’s refusal

by arguing (Reply Br. at 3-4) (footnote omitted) that:

There is no dispute that the term FREEDOM does not

convey any direct information about the character of

the goods in this case – “frozen French-fried

potatoes….”

Furthermore, the Examining attorney’s conclusion that

based on the evidence, the consuming public considers

the mark FREEDOM FRIES a secondary or non-trademark

designation for “frozen French fried potatoes,” is

incorrect. Careful review of the pertinent evidence

of record points in the exact opposite direction –

that the consuming public does not consider the term

to be an “alternative” designation for French fries.

There is NO TREND toward renaming French fries as

suggested by the Examining attorney. The pertinent

articles of record were all written during a two month

time-span, two years ago, at the start of the war and

even these articles evidence the unwillingness of the

consuming public to adopt the terminology. The

evidence of record demonstrates that prepared and

ready to consume French fries have not been renamed on

menus and other packaging and there is absolutely no

evidence at all pertaining to the descriptive use of

the term FREEDOM FRIES for frozen vegetables – the

goods at issue being “frozen French-fried potatoes.

After the examining attorney made the refusal final,

applicant appealed to this board. An oral hearing was held

October 20, 2005.

A mark is merely descriptive if it immediately

describes the ingredients, qualities, or characteristics

of the goods or services or if it conveys information

regarding a significant function, purpose, or use of the

goods or services. In re Abcor Development Corp., 588

F.2d 811, 200 USPQ 215, 217 (CCPA 1978). See also In re

3

Ser. No. 78220033

MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778,

1780 (Fed. Cir. 2003) (A “mark is merely descriptive if

the ultimate consumers immediately associate it with a

quality or characteristic of the product or service”); In

re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.

Cir. 2001). We look at the mark in relation to the goods

or services, and not in the abstract, when we consider

whether the mark is descriptive. Abcor, 200 USPQ at 218.

The examining attorney has included numerous

references to support his position that the term FREEDOM

FRIES is merely descriptive when it is used on frozen

French fried potatoes. Perhaps the most illuminating one

is an entry in Wikipedia, an online encyclopedia.

Highlights from the article are set out below:

Freedom Fries, more commonly known as French fries,

are potatoes that have been cut and deep-fried. On

March 11, 2003, Representatives Robert W. Ney and

Walter Jones declared that all references to "French

fries" and "French toast" on the menus of the

restaurants and snack bars run by the House of

Representatives would be removed. House cafeterias

were ordered to re-name French fries as "freedom

fries." This action was carried out without a

congressional vote, under the authority of Congressman

Ney's position as Chairman of the Committee on House

Administration, which oversees restaurant operations

in the house.

Throughout the international debate prior to the 2003

invasion of Iraq, France expressed opposition to the

US insistence on military action.

4

Ser. No. 78220033

According to a statement released by Ney, this move

was a symbolic effort to express displeasure with

France's "continued refusal to stand with their U.S.

allies" (see Iraq disarmament crisis). The statement

further read: "This action today is a small, but

symbolic, effort to show the strong displeasure many

on Capitol Hill have with our so-called ally, France."

Congressmen Ney and Jones, however, were not the first

to re-name French fries as freedom fries. A number of

private restaurants across the country started the

renaming movement. Neal Rowland, owner of the

privately owned fast-food restaurant Cubbie's in

Beaufort, North Carolina, decided to sell his fried

potato strips under the name "freedom fries." Rowland

claimed that his intent was not to slight the French

people, but to be patriotic and support President

George W. Bush. Many of Rowland's customers were

among the local military troops.

The word play is reminiscent of anti-German sentiment

during the First World War in which sauerkraut was

renamed liberty cabbage, and hamburgers were

transformed into liberty steaks. (Even the German

measles got a new name: liberty measles.) This

similarity is intentional: Rowland described a

conversation about these renamed foods during World

War I as the inspiration for "freedom fries."3

The earliest story is a www.cnn.com article dated

February 19, 2003. The article is entitled “Fried

politics: Restaurant serves ‘freedom fries’” and it goes

on to explain: “You can get fries with your burger at a

restaurant here, but just don’t ask for French fries. Neal

Rowland, the owner of Cubbie’s now only sells his fried

3

Subsequently, applicant submitted an update of the Wikipedia

website that now identifies “Freedom fries” as a “short-lived

name used in the United States for French fries.”

5

Ser. No. 78220033

potato strips as ‘freedom fries’ – a decision that comes as

Americans watch French officials back away from support for

possible war in Iraq.”

Other entries include a page from www.ydr.com dated

May 6, 2003 that asks: “Do you think we should be calling

French fries ‘Freedom Fries,’ and do you think this name

will continue to be used?” An article in the Austin

Business Journal dated March 14, 2003, contains the

following sentence: “Joining a symbolic effort to support

the U.S. military and protest France’s stance on a

potential war against Iraq, Fuddruckers President Bryce

King says ‘Freedom Fries’ will replace ‘French fries’ on

menus in the 200-plus Fuddruckers restaurants around the

country.”

An article from the Pittsburgh Post-Gazette dated

March 12, 2003, refers to “resentment over the French

government’s opposition to the push toward war has

triggered changes to menus across the country… ‘Everybody

loves it,’ Davis said. They tell him the change is very

patriotic. He says sales of freedom fries and freedom

toast have picked up since he put the signs in the window.”

The Winchester Star dated March 29, 2003, reports that the

Amherst Diner “servers consistently have corrected

customers ordering French toast or French fries about the

6

Ser. No. 78220033

new name. ‘I correct them. I say, You mean freedom

fries.’” A www.cnn.com article dated March 11, 2003, has

the headline “No ‘freedom fries’ in the French Quarter”

that begins: “Don’t expect to find ‘freedom fries’ here.”

A website called American-freedom-fries.com solicits

“support to make a PERMANENT name change to Freedom Fries.”

More recent articles include:

The French were excoriated by every radio jock in the

nation. French wine was poured down gutters. French

fries came out of fryers as ‘freedom fries.’”

Providence Journal, February 25, 2004.

American citizens show their disdain for all things

French by boycotting French wines, calling French

fries “freedom fries…”

Akron Beacon Journal, January 1, 2004.

To chide France for not backing the Iraq invasion,

some restaurants changed the name of French Fries to

Freedom Fries.

Hartford Courant, December 31, 2003.

Call them freedom fries or French fries, but the fast-

food staples aren’t making it to the plate like they

used to as Americans struggle to lose weight.

USA Today, September 29, 2003.

French fries became freedom fries and France, Germany

and Belgium became “chocolate factory countries.”

Press Journal (Vero Beach, FL), September 14, 2003.

Applicant responds by including menus from several

restaurants such as McDonald’s, Burger King, and Wendy’s

that show that these restaurants have not changed the name

of French fries on their menus and that many of the

7

Ser. No. 78220033

articles refer to restaurants that did not change their

menus to reflect the name “Freedom Fries.”

When we look at the evidence of record, we cannot

conclude that the term FREEDOM FRIES is merely descriptive

when applied to frozen French fried potatoes. First, there

is no indication that the term “Freedom” has any meaning in

relation to French fries. The examining attorney relies on

the case of In re Lamb-Weston Inc., 54 USPQ2d 1190 (TTAB

2000). However, in that case, there was evidence that the

term “Natural Cut Fries” was used to describe a type of

“fries with skins on.” Id. at 1191. Here, there is no

evidence that there is a subcategory of fries known as

“Freedom Fries.”

Second, the examining attorney argues that “‘Freedom

Fries’ is a known secondary name for French fried potatoes.

It was coined as a new name for French fried potatoes (the

goods themselves). Although it has not become the primary

or generic name of the goods, ‘freedom fries’ identifies

French fries and as such is merely descriptive of the goods

because it names the goods in a secondary manner.” Brief

at 5. At this point, we part company from the examining

attorney’s analysis. We must consider the question of

descriptiveness in light of the evidence of record. We

cannot agree with the examining attorney that the evidence

8

Ser. No. 78220033

of “renaming of French fries has been considerable” or that

there is a “current trend of renaming French fries as

‘freedom fries.’” Brief at 3. The evidence seems to

indicate that there was a movement during the first half of

2003 to refer to “French fries” as “Freedom fries.” It

appears to have begun in a restaurant in North Carolina

named Cubbie’s. Shortly afterwards, the U.S. House of

Representatives changed its cafeteria menu to reflect the

change. The evidence then shows that the restaurant chain

Fuddruckers announced that it was changing the name of

French fries to Freedom Fries and a few other restaurants

likewise announced or made similar changes. Beyond that

point, the references to “Freedom Fries” appear to be

scattered, with little evidence of actual acceptance of the

term as the name of the goods or as a term merely

descriptive of the goods. Several articles indicate a

disagreement with the proposed change, such as a

www.ydr.com article dated August 6, 2004, while others are

satirical, such as the Milwaukee Urban Star article. We

have no quarrel with the proposition that the same food

item may have several names. For example, a large

overstuffed sandwich may be referred to as a “grinder,”4

“hoagie” or “hoagy,” “submarine,” or “hero sandwich.”5

4

In re Mario’s, 182 USPQ 512 (TTAB 1974).

9

Ser. No. 78220033

Certainly, when a product changes, new generic names

often result:

Moreover, these are ordinary words [SPACE SHUTTLE]

which would be and are perceived by the public in

their primary significance as a space vehicle which

transports crew and equipment from the ground to Earth

orbit and returns, and not as an indication of origin.

That is, it is a shuttle which goes into space. The

term is an apt and common description of NASA's space

vehicle or system. Although opposer was and remains

the only space agency to make a reusable space

shuttle, the record fully supports the conclusion that

this term is used and understood by the public as

referring to the genus or classification of reusable

spacecraft.

National Aeronautics and Space Administration v. Bully Hill

Vineyards Inc., 3 USPQ2d 1671, 1676 (TTAB 1987). See also

Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 43

USPQ2d 1734, 1743 (2d Cir. 1997) (“Because the addition of

the word ‘honey’ is necessary to indicate a brown ale that

is brewed with honey, Stroh has the right to call its beer

a ‘Honey Brown Ale’”).

Unlike the referenced descriptive uses of the terms

“Space Shuttle” and “Honey Brown Ale,” the involved use of

5

“A large sandwich, usually consisting of a small loaf of bread

or long roll cut in half lengthwise and containing a variety of

ingredients, as meat, cheese, lettuce, and tomatoes. The Random

House Dictionary of the English Language (unabridged) (2d ed.

1987) (Regional variations include “submarine” and “hoagy” or

“hoagie”). We take judicial notice of this definition.

University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,

213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505

(Fed. Cir. 1983).

10

Ser. No. 78220033

the word “freedom” does not describe French fries in any

way. While undoubtedly there was a movement underway

at one point to change the name of French fries, we have

little evidence that would let us conclude that the effort

has met with much success. A few press releases, news

stories, and a handful of examples of restaurant menu

changes are simply not sufficient evidence to support a

refusal to register the term as merely descriptive. For

example, one article entitled “Land of the Freedom Fries”

claims that a “few restaurants on the east coast have

stopped selling French fries.” www.collegeclub.com. The

number of restaurants besides the Fuddruckers chain that

are actually identified as having changed the name of their

menu items from French fries to Freedom Fries is not very

significant.

We are mindful that manufacturers, standard-setting

organizations, protesters, and others have an interest in

establishing generic names for goods and services. See,

e.g., McCarthy’s on Trademarks and Unfair Competition,

§ 12.26 (4th ed. 2005):

When a new and unfamiliar product hits the market,

precautions must be immediately taken to protect the

trademark significance of a mark to prevent its

becoming generic. The seller has some options. It

may devise a generic name for the product and use as a

trademark a mark which has been previously used on

other goods. For example, if Jackson Industries, Inc.

11

Ser. No. 78220033

proposes to market a new and revolutionary type of

miniaturized two-way radio telephone of wrist-watch

size, it could market it as the JACKSON brand “Radon.”

Obviously, this need would be frustrated if the

announcement of this new generic or descriptive term was

accompanied by a rush to the U.S. Patent and Trademark

Office by others to register the name. At the same time,

we cannot refuse registration on the ground that a term

might become generic or merely descriptive in the future.

See, e.g., 15 U.S.C. § 1052(e) (“Consists of a mark which,

(1) when used on or in connection with the goods of the

applicant is merely descriptive”) (emphasis added).

Furthermore, in these cases, “any doubt with respect to the

issue of descriptiveness should be resolved in applicant's

behalf.” In re Grand Metropolitan Foodservice Inc., 30

USPQ2d 1974, 1976 (TTAB 1994).

What we lack in this case is significant evidence

that, when prospective purchasers encounter the term

FREEDOM FRIES used on frozen French fried potatoes, they

will immediately understand that it identifies a feature,

quality, or characteristic of applicant’s goods or that it

is a secondary name of applicant’s goods. Therefore, we

resolve our doubts in applicant’s favor.

Decision: The refusal to register under Section

2(e)(1) of the Trademark Act is reversed.

12