Opinion

Mecca Grade Growers, LLC

Court: Trademark Trial and Appeal Board
Filed: Mar 12, 2018
Status: Published
Author: Lykos
On the bench: Zervas, Lykos, Masiello
Cited by: 0 cases
Authority: More cited than 39.5%

“the TTAB did not err by considering the explanatory text of the specimens in the descriptiveness inquiry”

How later courts described this case

“the TTAB did not err by considering the explanatory text of the specimens in the descriptiveness inquiry”
“The generic name by which a product is known is not a mark which can be registered on the Supplemental Register under [S]ection 23 because such a name is incapable of distinguishing applicant’s goods from goods of the same name manufactured or sold by others.”
“there is only one legal standard for genericness: the two-part test set forth in Marvin Ginn”
“Gould has simply joined the two most pertinent and individually generic terms applicable to its product, and then attempts to appropriate the ordinary compound thus created as its trademark.”

Written by the judges who cited it.

The opinion

This Opinion is a

Precedent of the TTAB

Mailed: March 12, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE

_____

Trademark Trial and Appeal Board

_____

In re Mecca Grade Growers, LLC

_____

Serial No. 86358219

_____

Matthew R. Wilmot of Stoel Rives LLP,

for Mecca Grade Growers, LLC.

Dawn Feldman Lehker, Trademark Examining Attorney, Law Office 111,

Robert L. Lorenzo, Managing Attorney.

_____

Before Zervas, Lykos and Masiello,

Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:

Mecca Grade Growers, LLC (“Applicant”) seeks to register as a mark on the

Principal Register MECHANICALLY FLOOR-MALTED in standard characters for

“[m]alt for brewing and distilling” in International Class 31 and “[p]rocessing of

agricultural grain” in International Class 40.1 Applicant has appealed the Trademark

1 Application Serial No. 86358219, filed August 5, 2014, under Section 1(a) of the Trademark

Act, 15 U.S.C. § 1051(a), alleging July 14, 2014 as the date of first use anywhere and in

commerce.

Serial No. 86358219

Examining Attorney’s final refusal to register the mark on the Principal Register

under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that

it is merely descriptive of the identified goods and services and, alternatively, to

Trademark Act, 15 U.S.C. §§ 1091(c) and 1127, on the ground that the proposed mark

is generic, and is thus incapable of distinguishing the identified goods and services.

The appeal is fully briefed.

I. Procedural Background

The Examining Attorney initially refused registration under Trademark Act

Section 2(e)(1) on the ground that Applicant’s mark is merely descriptive of the

identified goods and services. The Examining Attorney also advised Applicant that

because the mark appeared to be generic, she could not suggest an amendment to

seek registration under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), or on

the Supplemental Register. In response, Applicant presented arguments that its

applied-for mark is neither merely descriptive nor generic; however, it did not amend

its application to seek registration under Section 2(f) or on the Supplemental

refusal under Section 2(e)(1).

Applicant then timely filed a notice of appeal and brief. Instead of briefing the

descriptiveness refusal, Applicant focused solely on the issue of genericness. 4

TTABVUE. The Examining Attorney correctly pointed out in her appeal brief that

because Applicant never formally sought to amend its application to seek registration

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on the Principal Register under Section 2(f) or on the Supplemental Register, the

issue of genericness was not before the Board. 6 TTABVUE. See Trademark Manual

of Examining Procedure (“TMEP”) §§ 1209.02(a)(i) and (ii) (Oct. 2017). This prompted

Applicant to file a request for remand and a formal amendment of its application to

seek registration in the alternative on the Supplemental Register. 7 & 9 TTABVUE.

Following the amendment, the Examining Attorney issued a refusal of registration

on the Supplemental Register under Trademark Act Sections 23 and 45 on the ground

that the mark is generic and therefore incapable of distinguishing the identified goods

and services, and the Examining Attorney ultimately made that refusal final. After

the appeal resumed, the Examining Attorney and Applicant then filed a second set of

appeal briefs. In this subsequent round of briefing, Applicant again focused solely on

the issue of genericness and failed to present arguments in its brief to refute the

descriptiveness refusal. 13 & 16 TTABVUE. Nonetheless, during prosecution,

Applicant made clear that its amendment to the Supplemental Register was made in

the alternative:

In amending to the Supplemental Register, Applicant makes no

admissions as to the distinctiveness (or the alleged lack thereof)

of its MECHANICALLY FLOOR-MALTED mark and this

amendment should not be interpreted or construed as such. All

arguments as to the distinctiveness of the mark are hereby

expressly reserved and retained by Applicant. (9 TTABVUE 1.)

This statement, along with Applicant’s statements in its brief (13 TTABVUE 5 at

n.2), indicate that Applicant does not concede that its mark is merely descriptive.

Thus, for purposes of completeness, we have exercised our discretion to consider

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Applicant’s arguments made during prosecution with regard to the descriptiveness

refusal.

II. Descriptiveness Refusal

We commence with the question of whether Applicant’s standard character mark

MECHANICALLY FLOOR-MALTED is merely descriptive of “[m]alt for brewing and

distilling” in International Class 31 and “[p]rocessing of agricultural grain” in

International Class 40.

In the absence of a showing of acquired distinctiveness, Section 2(e)(1) of the

Trademark Act precludes registration of a mark on the Principal Register that, when

used in connection with the goods or services of the applicant, is merely descriptive

of them. 15 U.S.C. § 1052(e)(1). “A term is merely descriptive if it immediately

conveys knowledge of a quality, feature, function, or characteristic of the goods or

services with which it is used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297,

102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer AG, 488 F.3d 960, 82

USPQ2d 1828, 1831 (Fed. Cir. 2007)); see also In re TriVita, Inc., 783 F.3d 872, 114

USPQ2d 1574, 1575 (Fed. Cir. 2015). By contrast, a mark is suggestive if it “requires

imagination, thought, and perception to arrive at the qualities or characteristics of

the goods [and services].” In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed.

Cir. 1987).

The determination of whether a mark is merely descriptive must be made in

relation to the goods and services for which registration is sought, not in the abstract.

In re Chamber of Commerce, 102 USPQ2d at 1219; In re Bayer, 82 USPQ2d at 1831.

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Serial No. 86358219

This requires consideration of the context in which the mark is used or intended to

be used in connection with those goods or services, and the possible significance that

the mark would have to the average purchaser of the goods or services in the

marketplace. In re Chamber of Commerce, 102 USPQ2d at 1219; In re Bayer, 82

USPQ2d at 1831; In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir.

1987). In other words, the question is not whether someone presented only with the

mark could guess the goods and services listed in the identification. Rather, the

question is whether someone who knows what the goods and services are will

understand the mark to convey information about them. DuoProSS Meditech Corp.

v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012)

(quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)); see also In

re Patent & Trademark Servs. Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home

Builders Ass’n of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re Am. Greetings

Corp., 226 USPQ 365, 366 (TTAB 1985).

Evidence that a term is merely descriptive to the relevant purchasing public “may

be obtained from any competent source, such as dictionaries, newspapers, or

surveys,” In re Bayer, 82 USPQ2d at 1831, as well as “labels, packages, or in

advertising material directed to the goods….” In re Abcor Dev. Corp., 588 F.2d 811,

200 USPQ 215, 218 (CCPA 1978). It may also be obtained from Applicant’s own

specimen of use and any explanatory text included therein. In re N.C. Lottery, 866

F.3d 1363, 123 USPQ2d 1707, 1710 (Fed. Cir. 2017); In re Nett Designs Inc., 236 F.3d

1339, 57 USPQ2d 1564, 1565 (Fed. Cir. 2001).

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Serial No. 86358219

Based on the evidence of record, we find that Applicant’s mark immediately

conveys to prospective consumers characteristics of both the goods and the services.

With regard to the International Class 31 goods, “mechanically floor-malted”

immediately conveys to prospective consumers an attribute of “[m]alt for brewing and

distilling.” With respect to the International Class 40 services, Applicant’s proposed

mark serves as an adverbial phrase that immediately conveys how the “[p]rocessing

of agricultural grain” is performed.

The adverb “mechanically” is derived from the adjective “mechanical” which is

defined as “of or relating to machinery” or “produced or operated by a machine or

tool.”2 Merriam-Webster (www.merriam-webster.com/dictionary/mechanical).“Floor-

malted” is the adjectival form of the verb “floor malting.” In the brewing and distilling

industry, “floor malting” refers to “the practice of germinating (malting) steeped

barley on the floor of the malt house,” which can be performed manually or with

machinery. Midwest Supplies Homebrewing & Winemaking

(www.midwestsupplies.com), November 20, 2014 Office Action, TSDR p. 2. The

traditional method of floor malting is highly labor intensive:

Floor malting takes its name from the practice of germinating

(malting) steeped barley on the floor of the malt house. The

steeped grains would be deposited on one end of the floor. As the

grains began to germinate, and heat would build, skilled workers

would spread the malt out in thin layers on the floor. The

germinating grains would then be turned periodically to prevent

the emerging rootlets from growing into a solid mass, and to

maintain the proper temperature and humidity for malting. …

2 We take judicial notice of the dictionary definition from the online version of Merriam-

Webster. In re Thomas White Int’l Ltd., 106 USPQ2d 1158, 1160 n.1 (TTAB 2013) (judicial

notice taken from dictionary existing in print format).

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Serial No. 86358219

This process was replaced by the more consistent and uniform

industrial malting practices in use today, but is still practiced by

a few artisanal malting houses.

Id. The process of floor malting evolved with the substitution of machinery for manual

labor; the mechanical process of floor malting has been explained as follows:

With the advent of modern power, the first changes that occurred

were the introduction of ventilating fans and water pumps into

the older type houses as described. Later, more modern buildings

were introduced incorporating the various devices made

available by the new power. In these earliest modern houses,

steel tanks were substituted for the old-fashioned cisterns, large

fans were employed for ventilation, and adequate sprinkler

systems installed. However, the old-fashioned masonry floor still

persisted with the consequent heavy work of hand shoveling. It

was under these semi-modern methods that malt acquired its

present status.

The next step was the modern construction known as the

compartment system. Here the steeped barley is deposited on

perforated floors in a single bed through which moist cool air is

drawn by fans to control temperatures as desired. Agitation is by

means of large turning machines which periodically agitate and

redistribute the malt. When germination is completed, the malt

is scooped into mechanical conveyors by mechanical shovels. The

conveyor deposits it in the kiln house, which again has

perforated metal floors through which hot air is drawn by other

fans. In this case, however, the floors are sectional, so that they

can be opened, and the malt dropped through. It is possible in a

modern kiln to reduce the moisture content to 3 percent.

After drying, the malt is dropped directly from the floor to

hoppers located beneath, which feed conveyors, which, in turn,

transport the finished malt to the cleaning and storing house.

The prime object of modern houses is not only to give maximum

production in a given area, but to decrease manual labor by the

use of mechanical devices.

Id. at 6-7. See also web site excerpt from Briess Malt & Ingredients Co.

(www.briess.com/food/Processes/malthistory.php) “Floor Malting is Born” and

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Serial No. 86358219

“Malting Goes Modern,” July 2, 2015 Final Office Action, TSDR pp. 3-5. Applicant’s

specimen explains in further detail what “floor-malted” malt is as well as the

particular process of “mechanical floor-malting” it employs to produce this kind of

malt:

The practice of malting grain for use in beer and spirits reaches

back into ancient history, and is a tradition historically bound to

America’s identity. Did you know Samuel Adams worked in his

family’s malthouse, not as a brewer? Some of the world’s most

sought after malt is still prepared in this traditional manner.

Commonly referred to as “floor-malting,” grain that has been

soaked in water for up to 48 hours is spread over a cement floor

to an even depth of 8”-12” inches. The grain is turned by hand

every 8 hours so that the heat generated from the growing barley

does not kill the grain. After the main shoot, or acrospire, has

grown the length of the grain, the entire batch is dried in a kiln

and then roasted to stop the grain from growing, dry the grain,

and to develop flavors and color. Think about eating a plain piece

of bread compared to one that has been toasted for just the right

amount of time and you will have a fairly good picture of this

process.

Floor-malting is considered the pinnacle of “artisanal” malting …

however, there are very few sources for this type of premium malt.

Even if you happen to find a craft malt that has been floor-malted,

inconsistencies occur from batch to batch.

By combining the old world approach to floor-malting with today’s

modern technology, we have designed a malting machine capable

of producing the finest quality, consistent malt available. We call

this proprietary process: “Mechanical Floor-Malting.”

Our Mechanical Floor-Malters are capable of producing 10-15

tons of finished malt. Our grain bed depths are shallow, 12-16”,

just like traditional floor malting systems. Most commercial malt

is produced in deep grain beds anywhere from 3 to 4 feet. Hot air

is forced up through this bed in order to kiln the malt resulting in

a large use of energy. Stratification also occurs because this grain

isn’t turned completely over during the malting process. Our

Mechanical Floor-Malter is a continuously moving circuit of grain

inside a closed system. Each step of the malting process takes

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Serial No. 86358219

place within this system, making our machines a “uni-malter.”

Continuous movement and shallow grain beds equal reduced

energy consumption and more consistent malt.

Thus, the explanatory text from Applicant’s own specimen makes clear that it

produces a specific type of malt known as “floor-malted” malt and that Applicant’s

grain processing services substitute mechanization for traditional floor-malting

techniques. See In re N.C. Lottery, 123 USPQ2d at 1710 (“the TTAB did not err by

considering the explanatory text of the specimens in the descriptiveness inquiry”).

In addition, the record shows that it is not uncommon for artisan brewers to

market their beer as “floor malted” (see “Weyermann floor malted Bohemian Pilsner

malt” at www.brooklynbrewery.com July 2, 2015 Office Action, TSDR p. 7) or for malt

producers to use a mechanized version of floor malting (see Briess Malt & Ingredients

Co., www.briess.com/food/Processes/malthistory.php, “Floor Malting is Born” and

“Malting Goes Modern,” July 2, 2015 Final Office Action, TSDR pp. 3-5). For example,

Weyermann touts the benefits of floor malted malt:

Bohemian grown wheat is expertly floor malted in Weyermann’s®

traditional facility in the Czech Republic. Floor malting gives the

malt an earthy, satisfying aroma and intense, malty flavor. High

proportions of floor malted grain provide a smooth mouth feel.

“Weyermann floor malted Bohemian Pilsner malt” at www.brooklynbrewery.com

July 2, 2015 Office Action, TSDR p. 7. This evidence bolsters our finding that the

mark is merely descriptive.

Applicant argues that MECHANICALLY FLOOR-MALTED is suggestive in

relation to the identified goods and services because the juxtaposition of

“mechanically” with “floor-malted” results in an incongruity. As Applicant postulates:

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Serial No. 86358219

[T]he term ‘mechanical’ is entirely contradictory to the ‘floor

malting’ method of processing grains by hand - by definition, the

very process of ‘floor malting’ is not mechanized or automated.

The term “mechanical” also carries with it certain industrial

connotations, connotations that stand in stark contrast to the

artisanal, old-world connotations association with the term “floor

malting.” As such, brewers and distillers encountering

Applicant’s mark in the marketplace will necessarily undertake a

“mental pause” in order to reconcile the apparent contradiction in

terms presented by Applicant’s mark.

May 20, 2015 Response to Office Action. Applicant’s argument is unpersuasive.

Applicant has not demonstrated that the relevant public perceives the floor malting

process as one that must be performed by hand to such an extent that they would find

incongruous the suggestion that it could be performed with mechanical assistance.

To the contrary, the evidence demonstrates that mechanical assistance has been used

in the past for some time in order to facilitate the floor malting process.

When two or more merely descriptive terms are combined, the determination of

whether the composite mark also has a merely descriptive significance turns on the

question of whether the combination of terms evokes a non-descriptive commercial

impression. If each component retains its merely descriptive significance in relation

to the goods or services, the combination results in a composite that is itself merely

descriptive. In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir.

2004); see also In re Carlson, 91 USPQ2d 1198 (TTAB 2009); In re Putman Publ’g Co.,

39 USPQ2d 2021 (TTAB 1996). However, a mark comprising a combination of merely

descriptive components is registrable if the combination of terms creates a unitary

mark with a non-descriptive meaning, or if the composite has a bizarre or incongruous

meaning as applied to the goods. In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ

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Serial No. 86358219

382 (CCPA 1968). Applying these principles, Applicant’s arguments are belied by the

evidentiary record showing that the process of “floor malting,” while once performed

manually, has evolved to incorporate mechanization. Applicant does not point to an

incongruous meaning of MECHANICALLY FLOOR-MALTED in relation to its goods

and services other than implying, implausibly, that the process of floor malting can

be performed only by hand. As a whole, the mark does not have a separate non-

descriptive meaning.

In sum, no imagination or thought is required by prospective consumers to discern

the nature of Applicant’s goods and services. In other words, Applicant’s proposed

mark immediately conveys, without conjecture or speculation, an attribute of

Applicant’s malt and the mechanical nature of Applicant’s processing services. The

inclusion of a hyphen in Applicant’s mark has no effect on the mere descriptiveness

of the mark as a whole. See In re Vanilla Gorilla, L.P., 80 USPQ2d 1637, 1640 (TTAB

2006).

Accordingly, we find Applicant’s proposed standard character mark

MECHANICALLY FLOOR-MALTED to be merely descriptive of “[m]alt for brewing

and distilling” in International Class 31 and “[p]rocessing of agricultural grain” in

International Class 40, and therefore ineligible for registration on the Principal

III. Genericness Refusal

Having determined that Applicant’s mark is not eligible for registration on the

Principal Register absent a showing of acquired distinctiveness, which showing has

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Serial No. 86358219

not been made because Applicant did not pursue it as an alternative, we now consider

Applicant’s amendment in the alternative to the Supplemental Register. “In order to

qualify for registration on the Supplemental Register, a proposed mark ‘must be

capable of distinguishing the applicant’s goods or services.’” In re Emergency Alert

Sols. Grp., LLC, 122 USPQ2d 1088, 1089 (TTAB 2017) (quoting 15 U.S.C. § 1091(c)).

“Generic terms do not so qualify.” Id. See also Clairol, Inc. v. Roux Distrib. Co., 280

F.2d 863, 126 USPQ 397, 398 (CCPA 1960) (“The generic name by which a product is

known is not a mark which can be registered on the Supplemental Register under

[S]ection 23 because such a name is incapable of distinguishing applicant’s goods

from goods of the same name manufactured or sold by others.”). A generic term “is

the common descriptive name of a class of goods or services.” Princeton Vanguard,

LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827, 1830 (Fed. Cir. 2015)

(quoting H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228

USPQ 528, 530 (Fed. Cir. 1986)). Because generic terms “are by definition incapable

of indicating a particular source of the goods or services,” they cannot be registered

as trademarks. Id. (quoting In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57

USPQ2d 1807, 1810 (Fed. Cir. 2001)); see also In re Cordua Rests., Inc., 823 F.3d 594,

118 USPQ2d 1632, 1634 (Fed. Cir. 2016). “The critical issue in genericness cases is

whether members of the relevant public primarily use or understand the term sought

to be protected to refer to the genus of goods or services in question.” Princeton

Vanguard, 114 USPQ2d at 1830 (quoting Marvin Ginn, 228 USPQ at 530). Making

this determination “involves a two-step inquiry: First, what is the genus of goods or

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Serial No. 86358219

services at issue? Second, is the term sought to be registered ... understood by the

relevant public primarily to refer to that genus of goods or services?” Marvin Ginn,

228 USPQ at 530. See also Princeton Vanguard, 114 USPQ2d at 1829 (“there is only

one legal standard for genericness: the two-part test set forth in Marvin Ginn”). “An

inquiry into the public’s understanding of a mark requires consideration of the mark

as a whole.” Id. at 1831 (quoting In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d

1420, 1421 (Fed. Cir. 2005)). “Even if each of the constituent words in a combination

mark is generic, the combination is not generic unless the entire formulation does not

add any meaning to the otherwise generic mark.” In re 1800Mattress.com IP LLC,

586 F.3d 1359, 92 USPQ2d 1682, 1684 (Fed. Cir. 2009) (quoting In re

Steelbuilding.com); see also Princeton Vanguard, 114 USPQ2d at 1832.

Competent sources to show the relevant purchasing public’s understanding of a

contested term include purchaser testimony, consumer surveys, dictionary

definitions, trade journals, newspapers and other publications. Id. at 1830; In re Bed

& Breakfast Registry, 791 F.2d 157, 229 USPQ 818, 819 (Fed. Cir. 1986). In the ex

parte context, “[a] registration is properly refused if the word is the generic name of

any of the goods or services for which registration is sought.” In re Cordua, 118

USPQ2d at 1638 (quoting 2 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND

UNFAIR COMPETITION § 12:57 (4th ed. 2016)). The Trademark Examining Attorney has

the burden of proving genericness by “clear and convincing evidence.” Id. at 1635; In

re Hotels.com, 573 F.3d 1300, 91 USPQ2d 1532, 1533 (Fed. Cir. 2009); In re Gould

Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111 (Fed. Cir. 1987); In re Merrill

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Serial No. 86358219

Lynch, Pierce, Fenner and Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed.

Cir. 1987).

We begin by agreeing with the Examining Attorney that the genus at issue in

this case is adequately defined by Applicant’s identification of goods (“[m]alt for

brewing and distilling”) and services (“[p]rocessing of agricultural grain”).3 See Magic

Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) (“[A]

proper genericness inquiry focuses on the description of [goods or] services set forth

in the [application or] certificate of registration.”). We further find based on the

identification, which contains no restrictions as to trade channels or end users, that

the relevant purchasing public for Applicant’s goods comprises persons and entities

that purchase and use malt for brewing and distilling, and that the relevant

purchasers of Applicant’s agricultural grain processing services includes persons and

entities that have or obtain grain and need to have it malted. See also Applicant’s

specimen (“Craft brewers and distillers want local, expect quality, but put the

emphasis on consistency. … Craft brewers and distillers use the enzymes in the

malted grain to produce wort, and the resulting sugars are fed to yeast to produce

alcohol.”).

With this in mind, we must now ascertain whether the designation

MECHANICALLY FLOOR-MALTED is understood by the relevant purchasing

3 Applicant does not dispute this, and in fact suggests that the proper genus may be more

narrowly defined as “floor malted malts and floor malting grain processing services.” 13

TTABVUE 7.

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public as primarily referring to “malt for brewing and distilling” and “the processing

of agricultural grain.”

Applicant argues, relying primarily on the holding in Princeton Vanguard, that

none of the Examining Attorney’s evidence uses the exact term “mechanically floor-

malted” as a generic designation for the identified goods or services, and that only

one source, an excerpt from a book entitled Malt and Malting published in 1992,

includes a single reference to a slightly different term “mechanical floor-malting”

within the context of discussing malting systems in England and Germany. Applicant

maintains that the paucity of third-party uses means that the relevant class of

purchasers does not perceive “mechanically floor-malted” as the genus for Applicant’s

goods and services. Applicant criticizes the Examining Attorney’s genericness refusal

as being based solely on evidence regarding the meaning of the mark’s individual

components. Applicant also asserts that the Examining Attorney’s reliance on third-

party use and Applicant’s own website is misplaced noting that while the terms

“mechanical conveyors,” “mechanical devices” and “mechanical shovels” do appear,

there is no mention of the proposed mark “mechanically floor-malted.” With respect

to Applicant’s use on its website of “Mechanical Floor-Malting” to designate its

“proprietary” malting process, Applicant submits that the initial capitalization is

indicative of trademark, not generic, use.

Applicant misapprehends the holding of Princeton Vanguard. The fact that there

is no evidence of third-party use of the precise term “mechanically floor-malted” is

not, by itself, necessarily fatal to a finding of genericness. As the Court emphasized:

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[T]here is only one legal standard for genericness: the two-part

test set forth in Marvin Ginn. … Regardless of whether the

mark is a compound term or a phrase, the applicable test is the

same and the Board must consider the record evidence of the

public’s understanding of the mark as a whole. Am. Fertility, 188

F.3d at 1348-49. Our decision in Gould merely provides

additional assistance in assessing the genericness of compound

terms where it can be shown that “the public understands the

individual terms to be generic,” and the joining of those terms

into one compound word provides no additional meaning. Id. It

is not a short-cut and does not supplant the two-part test set

forth in Marvin Ginn.”114 USPQ2d at 1830-32.

Princeton Vanguard was explicit in not overruling In re Gould, an ex parte appeal,

where dictionary definitions and Applicant’s explanatory text in its specimen sufficed

to establish genericness. Indeed, the Court emphasized that in In re Gould, “the most

damaging evidence” was applicant’s own specimen, a marketing brochure, and how

this informed public perception of the mark at issue:

The applicant in Gould sought to register the mark

SCREENWIPE for goods identified as “pre-moistened, anti-

static cloth for cleaning computer and television screens.” 834

F.2d at 1017. While the Board looked to the individual

definitions of “screen” and “wipe,” we found that “Gould’s own

submissions provided the most damaging evidence that its

alleged mark is generic and would be perceived by the

purchasing public as merely a common name for its goods rather

than a mark identifying the good’s source.” Id. at 1018-19.

Indeed, Gould described its own product as “a … wipe … for …

screens.” Id. at 1019. Given this admission, we noted that the

“compound immediately and unequivocally describes the

purpose, function and nature of the goods as Gould itself tells

us.” Id. (“Gould has simply joined the two most pertinent and

individually generic terms applicable to its product, and then

attempts to appropriate the ordinary compound thus created as

its trademark.”). In that context, where the mark in its entirety

has exactly the same meaning as the individual words, we stated

that “the PTO has satisfied its evidentiary burden if, as it did in

this case, it produces evidence … that the separate words joined

to form a compound have a meaning identical to the meaning

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Serial No. 86358219

common usage would ascribe to those words as a compound.” Id.

at 1018. Because “the terms remain as generic in the compound

as individually,” we concluded that the compound itself was

generic. Id. at 1019.

Id. at 1831. Princeton Vanguard, by remanding for full consideration of dueling

surveys, simply underscores that all evidence bearing on public perception must be

given appropriate consideration. Id. at 1833. See Frito-Lay N. Am., Inc. v. Princeton

Vanguard, LLC, 124 USPQ2d 1184 (TTAB 2017) (on remand, Board found

defendant's asserted mark PRETZEL CRISPS generic for “pretzel crackers”). Cf. In

re Country Music Ass’n Inc., 100 USPQ2d 1824, 1831 (TTAB 2011) (genericness

refusal reversed; Board considered results from consumer survey showing that 85%

of respondents perceive COUNTRY MUSIC ASSOCIATION as a proprietary or brand

name, and not a generic term).

Here, as in In re Gould, the record consists of dictionary and industry specific

evidence demonstrating the use of the words, ”mechanical,” “mechanically,” “malt,”

“malting,” “malter,” “malted,” “floor-malting,” “floor-malted,” and “floor-malter,” and

demonstrating how these words may be used together. These examples clearly show

the meanings that relevant consumers attribute to those words when they are used

separately and when they are used together. The purchasers in this case are not

members of the general public who might not be familiar with the processing of grain

for brewing or distilling. Here, the customers are those in the brewing and distilling

business who are likely to know exactly what MECHANICALLY FLOOR-MALTED

malt is and the process for producing this type of malt, regardless of the grammatical

form of the word “mechanical” or whether “floor-malted” is spelled with a hyphen.

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Applicant further takes the position that under In re Cordua, Applicant’s own use

of its mark in connection with its own goods and services is of limited probative

weight. However, contrary to Applicant’s reading of In re Cordua, an applicant’s own

website or marketing materials may be probative, or even, as in Gould, “the most

damaging evidence,” in indicating how the relevant public perceives a term. See

Princeton Vanguard and In re Gould, supra; see also In re Empire Tech. Dev. LLC,

123 USPQ2d 1544 (TTAB 2017) (Board considered applicant’s own website and

promotional video in finding COFFEE FLOUR generic). Cf. In re N.C. Lottery, 123

USPQ2d at 1710 (“the TTAB did not err by considering the explanatory text of the

specimens in the descriptiveness inquiry”). On its website specimen, Applicant

admits that “floor-malted” refers to a type of malt (available not only from Applicant

but from others) for brewing and distilling and that “floor-malting” is a process

performed by others:

Floor-malting is considered the pinnacle of “artisanal” malting …

however, there are very few sources for this type of premium malt.

Even if you happen to find a craft malt that has been floor-malted,

inconsistencies occur from batch to batch.

Indeed, Applicant’s suggestion in its brief that a possible genus for the goods is “floor-

malted malts” constitutes an outright admission that “floor-malted” identifies a type

of malt. 13 TTABVUE 7. With regard to its services, Applicant concedes that floor-

malted malt can be produced using machinery to process grain. In Applicant’s own

words:

Some of the world’s most sought after malt is still prepared in this

traditional manner. Commonly referred to as “floor-malting,”

grain that has been soaked in water for up to 48 hours is spread

over a cement floor to an even depth of 8”-12” inches. The grain is

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turned by hand every 8 hours so that the heat generated from the

growing barley does not kill the grain. …

By combining the old world approach to floor-malting with today’s

modern technology, we have designed a malting machine capable

of producing the finest quality, consistent malt available.

Applicant’s specimen. Applicant, citing references to other pneumatic and industrial

malting systems, acknowledges that it “is not the inventor of mechanized malting

systems generally, nor are mechanized malting systems new to the relevant market

or industry.” 16 TTABVUE 4. Consistent therewith, Applicant touts on its web site

the superior technology it uses to process agricultural grain: