Yarnell Ice Cream, LLC

This Opinion is a

Precedent of the TTAB

Mailed: July 9, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE

_____

Trademark Trial and Appeal Board

_____

In re Yarnell Ice Cream, LLC

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Serial No. 86824279

_____

Daniel L. Kegan and Jay Giusti of Kegan & Kegan, Ltd.,

for Yarnell Ice Cream, LLC.

Melissa Sturman, Trademark Examining Attorney, Law Office 125,

Mark Pilaro, Managing Attorney.

_____

Before Kuhlke, Bergsman, and Larkin,

Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:

Yarnell Ice Cream, LLC (“Applicant”) seeks registration on the Principal Register

of the proposed mark SCOOP in standard characters for goods ultimately identified

as “frozen confections and ice cream promoted and distributed by a mascot named

SCOOP at product promotions and distributions of the frozen confections and ice

cream,” in International Class 30.1

1 Application Serial No. 86824279 was filed on November 18, 2015 under Section 1(a) of the

Trademark Act, 15 U.S.C. § 1051(a), on the basis of Applicant’s claim of first use of the

proposed mark and first use in commerce since at least as early as February 1, 2012. As

Serial No. 86824279

The Trademark Examining Attorney has refused registration of Applicant’s

proposed mark on three grounds:

1. Under Sections 1, 2, 3, and 45 of the Trademark Act, 15 U.S.C. §§ 1051,

1052, 1053, and 1127, on the ground that the applied-for mark fails to

function as a mark for the goods identified in the application;

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

ground that the applied-for mark is merely descriptive of the goods

identified in the application and has not acquired distinctiveness under

Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f); and

3. Under Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051 and 1127,

on the ground that Applicant’s specimens do not show use of the applied-

for mark in commerce in connection with the goods identified in the

application.

When the Examining Attorney made the refusal final, Applicant appealed and

requested reconsideration, 4 TTABVUE,2 which was denied. 5 TTABVUE. The appeal

is fully briefed. We affirm the refusal to register on all three grounds.

discussed below, the identification of services was first amended during prosecution and then

again on appeal.

2 Citations to the briefs and other docket entries in this opinion refer to TTABVUE, the

Board’s online docketing system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB

2014). Specifically, the number preceding TTABVUE corresponds to the docket entry

number, and any numbers following TTABVUE refer to the page number(s) of the docket

entry where the cited materials appear.

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Serial No. 86824279

I. Prosecution and Procedural History

We summarize below the prosecution history of the application and the procedural

history of the appeal because they provide useful background for our analysis of the

several grounds for refusal.

A. Prosecution History and Record on Appeal

Applicant initially sought registration of its proposed mark for “frozen confections;

ice cream” based on the specimen reproduced below:

3

Applicant described its specimen as a “[p]hoto of mascot SCOOP with Applicant’s ice

cream, in one of his many public appearances with Applicant’s ice cream.”4

3 November 18, 2015 Application at TSDR 3. All citations to the application file record in this

opinion are to pages in the Trademark Status & Document Retrieval (“TSDR”) database of

the United States Patent and Trademark Office (“USPTO”).

4 Id. at TSDR 1.

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Serial No. 86824279

The Examining Attorney issued a first Office Action refusing registration on three

grounds: (1) likelihood of confusion with multiple registered SCOOP-formative

marks; (2) mere descriptiveness; and (3) the insufficiency of Applicant’s specimen.5

The Examining Attorney made of record a dictionary definition of the word “scoop,”6

and webpages showing the use of the word “scoop” in connection with ice cream.7

Applicant responded by making of record materials regarding third-party

company spokespersons “The Maytag Repairman,” “The Marlboro Man,” Dos Equis

beer’s “Most Interesting Man in the World,” and the “Culligan Man,”8 pages from the

USPTO’s Trademark Electronic Search System (“TESS”) database regarding third-

party registrations of certain mascot marks,9 a list of the scheduled public

appearances of the mascot Scoop from 2012-2016,10 a Wikipedia entry on the “foot”

unit of measure,11 multiple other photographs or other depictions of, or references to,

the mascot, including photographs at appearances at stores or events,12 a video of an

appearance by the mascot,13 and point-of-sale displays, including displays of other

characters and what Applicant described in its main appeal brief as a “live sampling

5 March 11, 2016 Office Action at TSDR 1.

6 Id. at TSDR 17-28 (MERRIAM-WEBSTER DICTIONARY).

7 Id. at TSDR 29-36.

8 August 4, 2016 Response to Office Action at TSDR 2-23, 27-31.

9 Id. at TSDR 24-26, 32-37.

10 Id. at TSDR 48-51.

11 Id. at TSDR 52-55. Applicant offered this entry to show that historically the human body

has been used as a basis for units of measurement.

12 Id. at TSDR 56-97.

13 Id. at TSDR 98.

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Serial No. 86824279

person.” 7 TTABVUE 17.14 Applicant also stated that “SCOOP is not the name of a

particular living individual.”15

The Examining Attorney then issued a second Office Action making final the three

grounds for refusal.16 The Examining Attorney made of record webpages regarding

the use of the word “scoop” to measure a serving portion of ice cream,17 and third-

party registrations of marks in which the exclusive right to use the words “scoop” or

“scoops,” or a pictorial equivalent, were disclaimed.18

B. Procedural History of Appeal

Applicant appealed on all three grounds of the final refusal, 1 TTABVUE, and

requested reconsideration. 4 TTABVUE. In its request, Applicant claimed that its

proposed mark had acquired distinctiveness under Section 2(f) of the Trademark Act,

15 U.S.C. § 1052(f). Id. at 7. Applicant made of record pages from a book entitled

BRAND MASCOTS,19 third-party registrations from the TESS database, and webpages,

regarding the “Burger King” and “Beanie” mascots,20 a schedule of the appearances

of the mascot Scoop from 2012-2016, and photographs taken at some of the

14 Id. at TSDR 99-117.

15 Id. at TSDR 118.

16 August 26, 2016 Final Office Action at TSDR 1.

17 Id. at TSDR 17-30.

18 Id. at TSDR 31-77.

19 4 TTABVUE 15-18.

20 Id. at 19-38.

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Serial No. 86824279

appearances,21 and the declaration of Rob Bell (“Bell Decl.”), a principal at Applicant’s

advertising agency, in support of Applicant’s acquired distinctiveness claim.22

The Examining Attorney denied Applicant’s request for reconsideration, 5

TTABVUE, and the appeal was resumed. 6 TTABVUE. After Applicant filed its main

brief, 7 TTABVUE (“Initial Brief”), the Examining Attorney requested suspension of

the appeal and a remand of the application to examine Applicant’s claim of acquired

distinctiveness, to issue a new refusal, and to supplement the record. 9 TTABVUE 1-

2. The Board suspended the appeal and remanded the application. 10 TTABVUE 1-

2.

Following remand, the Examining Attorney issued a new non-final Office Action

in which she continued the likelihood of confusion, mere descriptiveness, and

specimen refusals, and issued new refusals that SCOOP failed to function as a

trademark and that Applicant’s showing of acquired distinctiveness was

insufficient.23 In connection with the new ground of failure to function, the Examining

Attorney made of record webpages that she asserted showed that the term “scoop”

was widely used in connection with ice cream to refer to a unit of measurement for

the goods, which indicated to the Examining Attorney that “consumers will perceive

this term merely as informational matter indicating the applicant offers a serving or

scoop of ice cream.”24 The Examining Attorney also noted that the term, as displayed

21 Id. at 39-94.

22 Id. at 130-32.

23 July 17, 2017 Office Action at TSDR 1.

24 Id.

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Serial No. 86824279

on the specimen, would not be perceived as indicating the source of Applicant’s ice

cream, but rather to identify Applicant’s mascot, and thus “does not show a direct

association between the applied-for mark and applicant’s identified goods.”25

Applicant responded to the new non-final Office Action by proposing to amend its

identification of goods from “frozen confections; ice cream” to “frozen confections, ice

cream, as promoted or distributed by a mascot named SCOOP, at product promotions

and distributions of Applicant’s ice cream and frozen confections,”26 and making of

record an email from a member of the public requesting Applicant’s permission to use

what the email described as “Yarnells [sic] trademark” in the phrase “Getting scoops

like Yarnell” on t-shirts for members of a high school football team.27

The Examining Attorney then issued a new final Office Action in which she

withdrew the Section 2(d) refusal, but maintained the other grounds for refusal.28

She made of record an additional dictionary definition of the word “scoop,”29 and

additional webpages regarding use of the words “scoop” and “scoops” in connection

with ice cream.30 In response to Applicant’s proposed amended identification of goods,

the Examining Attorney issued an advisory stating that an “applicant should not use

its own registered or unregistered mark in an identification of goods and/or services,”

25 Id.

26 January 12, 2018 Response to Office Action at TSDR 1.

27 Id. at TSDR 2-3.

28 February 15, 2018 Final Office Action at TSDR 1 (11 TTABVUE).

29 Id. at TSDR 2.

30 Id. at TSDR 3-16.

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and that “[i]dentifications of goods and/or services should generally be comprised of

generic everyday wording for the goods and/or services, and exclude proprietary or

potentially-proprietary wording.”31 The appeal resumed, and Applicant was granted

leave to file a supplemental brief on the new issues raised in the new final refusal. 12

TTABVUE. Applicant addressed the Section 2(f), failure-to-function, and mere

descriptiveness grounds in a supplemental brief. 13 TTABVUE 2-7 (“First

Supplemental Brief”).

Following the filing of the Examining Attorney’s brief, 15 TTABVUE, and

Applicant’s reply brief, 16 TTABVUE, the Board, acting sua sponte, remanded the

application to the Examining Attorney to consider the presence of the word

“Applicant’s” in Applicant’s amended identification of goods. 19 TTABVUE 3-5.32 On

remand, Applicant agreed to delete the word “Applicant’s” from its amended

identification of goods and further amended the identification to read “frozen

confections and ice cream promoted and distributed by a mascot named SCOOP at

product promotions and distributions of the frozen confections and ice creams.”33 The

Examining Attorney entered an Examiner’s Amendment accepting the amended

31 Id. at TSDR 1. Section 1402.09 of the TRADEMARK MANUAL OF EXAMINING PROCEDURE

(“TMEP”) (Oct. 2018) states that “[g]enerally, an applicant should not use its own registered

or unregistered mark in an identification of goods or services,” but that if an applicant chooses

to do so, “the applicant should be careful to use the mark as an adjective modifying the generic

name of the goods or services.” Applicant’s use of SCOOP in the amended identification is not

“as an adjective modifying the generic name of the goods or services,” but the Examining

Attorney’s advisory did not focus on this preferred practice.

32 Section 1402.09 of the TMEP instructs examining attorneys that “the words ‘applicant’ or

‘registrant’ must not appear in the identification of goods or services.”

33 March 6, 2019 Examiner’s Amendment at TSDR 1.

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Serial No. 86824279

identification, but maintaining the grounds for refusal, and the Board resumed the

appeal.34

On resumption of the appeal, Applicant was given leave to file another

supplemental brief limited to the impact, if any, of the deletion of the word

“Applicant’s” from its identification of goods, and the Examining Attorney was given

leave to file “a brief limited to responding to Applicant’s supplemental brief.” 20

TTABVUE 1-2. In response, Applicant filed a second supplemental brief stating that

“the amended goods identification, deleting the word ‘Applicant’s’, has no impact on

any of the objections raised by the Examiner, nor on any of the issues raised by

Applicant,” id. at 2, obviating the need for a response from the Examining Attorney.

Applicant noted the absence of a response from the Examining Attorney in a

subsequent and final filing, stating that the “matter is therefore fully briefed and

appears ripe for the Board’s consideration.” 22 TTABVUE 2. We will analyze the

several grounds for the final refusal based on the briefing previously submitted by

Applicant and the Examining Attorney, but in light of the ultimate amended

identification of goods.35

II. Analysis of Grounds for Refusal

A. The Significance of the Ultimate Identification of Goods

Applicant complains in its reply brief that the Examining Attorney has engaged

in what Applicant calls “goods mutilation,” 16 TTABVUE 2, because the Examining

34 Id. (20 TTABVUE 1.)

35 The prosecution history and the progress of the appeal are not models of efficiency and are

not templates that should be repeated.

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Serial No. 86824279

Attorney’s brief “ignores throughout that Applicant applied for registration for

‘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,’” id. at 3,36 and “Applicant’s goods description is

not simply for ‘ice cream’ as the Examiner inexplicably overlooks.” Id. (emphasis

supplied by Applicant). Applicant argues that it “does not seek to register its mark

for all ice cream, but only ‘as promoted or distributed by a mascot, named SCOOP, at

product promotions and distributions of Applicant’s ice cream and frozen

confections,’” and that “[n]either the final refusal nor the Examiner’s Brief contend

with the actual description.” Id.

Each of the substantive refusals requires us to apply the pertinent law to the goods

identified in the application, so we will first determine the significance of the

language “promoted and distributed by a mascot named SCOOP at product

promotions and distributions of the frozen confections and ice creams” that was added

to the original goods identification “frozen confections; ice cream.” In making that

determination, we find instructive the Federal Circuit’s analysis of a similarly

unusual clause in a goods identification in In re i.am.symbolic, llc, 866 F.3d 1315, 123

USPQ2d 1744 (Fed. Cir. 2017).

36 Applicant’s reply brief was filed before the word “Applicant’s” was deleted from the

identification following the second remand. We have read all of Applicant’s briefs in light of

that amendment because, as noted above, Applicant’s position is that the deletion of the word

has no impact on the appeal.

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Serial No. 86824279

In i.am.symbolic, the applicant included in its identifications of various goods in

Classes 3, 9, and 14 the clause that the goods are “associated with William Adams,

professionally known as ‘will.i.am’.”37 The Board

view[ed] the language “associated with William Adams,

professionally known as ‘will.i.am’” in [Symbolic’s]

identification of goods as merely highlighting an

association with [Symbolic’s] presumed principal, Mr.

Adams. Contrary to [Symbolic’s] assertion, we do not see

the language as imposing a meaningful limitation on

[Symbolic’s] goods in any fashion, most especially with

respect to either trade channels or class of purchasers. The

language does not, in any meaningful way, alter the nature

of the goods identified; nor does it represent that the goods

will be marketed in any particular, limited way, through

any particular, limited trade channels, or to any particular

class of customers. It does not even represent that Mr.

Adams will be named, or otherwise identified, in the

promotion of the goods. The language “associated with

William Adams, professionally known as ‘will.i.am’”

is precatory language, and not binding on consumers when

they encounter Applicant’s mark.

Id. at 1746-47 (quoting In re i.am.symbolic, llc, 116 USPQ2d 1406, 1410 (TTAB

2015)). The Federal Circuit agreed with the Board’s interpretation of the purported

limitation, holding that

The Board . . . did not err in holding that the will.i.am

restriction does not: (1) limit the goods “with respect to

either trade channels or class of purchasers”; (2) “alter the

nature of the goods identified”; or (3) “represent that the

goods will be marketed in any particular, limited way,

through any particular, limited trade channels, or to any

particular class of customers.”

37 For example, the applicant’s Class 9 identification read “sunglasses and sunglass cases

associated with William Adams, professionally known as will.i.am.” 123 USPQ2d at 1746.

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Serial No. 86824279

Id. at 1750 (quoting the Board’s opinion in i.am.symbolic, 116 USPQ2d at 1410).

Although the Federal Circuit construed the identification in the context of a

likelihood of confusion refusal, the court’s analysis is useful in deciding whether the

identification here “limit[s] the goods with respect to either trade channels or class of

purchasers,” “alter[s] the nature of the goods identified,” or “represent[s] that the

goods will be marketed in any particular, limited way, through any particular, limited

trade channels, or to any particular class of customers.” Id.

The language “as promoted and distributed by a mascot named SCOOP at product

promotions and distributions of the frozen confections and ice creams” in the final

goods identification at most specifies “that the goods will be marketed in [a]

particular, limited way,” id., namely, through “product promotions and distributions”

of the goods “by a mascot named SCOOP.”38 It does not “alter the nature of the goods

identified” in any meaningful way, id., or restrict the nature or type of the “frozen

confections and ice creams” that are “promoted or distributed by a mascot named

SCOOP at product promotions and distributions.” Similarly, the identification does

not “represent that the goods will be marketed . . . to any particular class of

customers.” Id. The record shows that members of the general public who consume

ice cream and frozen confections are present at the “product promotions and

38 The record shows that these “promotions and distributions” occur in a variety of settings,

including in retail stores and restaurants, at public events such as football games, festivals,

races and triathlons, farmers markets, fishing derbies, and fairs, and at media events. August

4, 2016 Response to Office Action at TSDR 49-51, 59-78, 81-92; 4 TTABVUE 40-70, 74-93,

130-34 (February 22, 2017 Request for Reconsideration (Bell Decl. ¶¶ 6-8)).

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Serial No. 86824279

distributions” of the goods.39 We acknowledge that the additional language in the

identification specifies that SCOOP is the name of Applicant’s mascot, but Applicant

seeks registration of SCOOP for “frozen confections and ice cream,” not live

appearances by a mascot. Accordingly, notwithstanding the limitation that the goods

are marketed by a mascot named Scoop at product promotions and distributions, we

must assess the registrability of Applicant’s proposed mark for “frozen confections

and ice cream” consumed by members of the general public.

B. Mere Descriptiveness

Section 2(e)(1) of the Trademark Act prohibits registration on the Principal

Register of “a mark which, (1) when used on or in connection with the goods of the

applicant is merely descriptive . . . of them,” unless the mark has been shown to have

acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f).

A mark is “merely descriptive” within the meaning of § 2(e)(1) “if it immediately

conveys information concerning a feature, quality, or characteristic of the goods or

services for which registration is sought.” In re N.C. Lottery, 866 F.3d 1363, 123

USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing In re Bayer Aktiengesellschaft, 488 F.3d

960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). “A mark need not recite each feature

of the relevant goods or services in detail to be descriptive, it need only describe a

single feature or attribute.” In re Chamber of Commerce of the U.S., 675 F.3d 1297,

102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (citation and internal quotation omitted).

39 August 4, 2016 Response to Office Action at TSDR 59-63, 65-67, 70-71, 74-75, 78, 81, 83-

85, 88, 90, 92; 4 TTABVUE 40-55, 60-67, 70, 80-84.

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Whether a mark is merely descriptive is “evaluated ‘in relation to the particular

goods for which registration is sought, the context in which the mark is used, and the

possible significance that the term would have to the average consumer of the goods

because of the manner of its use or intended use,’” id., (quoting Bayer, 82 USPQ2d at

1831), and “not in the abstract or on the basis of guesswork.” In re Fat Boys Water

Sports, LLC, 118 USPQ2d 1511, 1513 (TTAB 2016) (citing In re Abcor Dev. Corp., 588

F.2d 811, 200 USPQ 215, 218 (CCPA 1978)). We ask “not whether someone presented

with only the mark could guess what the goods or services are. 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) (citation and

internal quotation omitted).

The Examining Attorney argues that SCOOP is merely descriptive of the

identified goods “because the mark conveys an immediate idea of a unit or serving of

applicant’s frozen confections and ice cream.” 15 TTABVUE 7. She argues that “a

‘scoop of ice cream’ is a commonly understood serving or unit of measurement, and

thus this wording merely describes the manner and portion size in which applicant’s

goods are served.” Id. She cites a dictionary definition of “scoop” as “a quantity taken

up by a scoop ‘an apple pie with scoops of ice cream on top’,”40 third-party uses of

“scoop” to “describe a serving size of ice cream,” including news articles using “scoop”

40 February 15, 2018 Final Office Action at TSDR 2 (OXFORD LIVING DICTIONARIES (US

English)). Another dictionary defines a “scoop” as “the amount held by a scoop <I ate a scoop

of ice cream.” March 11, 2016 Office Action at TSDR 21 (MERRIAM-WEBSTER DICTIONARY).

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Serial No. 86824279

in that manner,41 and webpages discussing how to scoop ice cream and using “scoop”

to identify a serving size of ice cream.42 Id. at 7-8.

Applicant makes two basic arguments as to why SCOOP is not merely descriptive

of the identified goods.43 First, Applicant argues that SCOOP is a double entendre, “a

term capable of more than one interpretation.” 7 TTABVUE 14 (citing TMEP §

1213.05(c)). In making this argument, Applicant effectively concedes that “scoop” has

some descriptive meaning in connection with the identified goods, but claims that the

applied-for mark also refers to “information of [sic] Yarnell products” or a “news

‘scoop.’” Id.

Second, Applicant argues that “the word ‘scoop’ does not describe a material, or

any, characteristic of ice cream nor of frozen confections.” Id. at 16. While Applicant

appears to concede that a “scoop” is a serving portion or unit of measurement of ice

cream and frozen confections, Applicant claims that consumers would not “expect

that some volumetric measure of either the mascot Scoop or a volume of a measuring

utensil scoop itself to be given out.” 13 TTABVUE 5. Applicant attributes significance

to the fact that its mascot is rarely seen holding or using a scoop to serve ice cream,

but typically uses a spoon for that purpose. Id. at 6. Applicant argues that because “a

scoop is sometimes used in connection with ice cream products does not mean that

41 August 26, 2016 Office Action at TSDR 17-30.

42 March 11, 2016 Office Action at TSDR 29-36; July 17, 2017 Office Action at TSDR 15-17;

February 15, 2018 Final Office Action at TSDR 3-16.

43 A third argument, that Applicant does not seek registration for things that are “scoops” or

that “scoop” foods or other materials, 7 TTABVUE 9, is of no moment. As discussed above,

we must assess descriptiveness with respect to the goods identified in the application.

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Serial No. 86824279

the term is descriptive of them” because “[m]any other goods possibly may be included

within the broad term [here, scoop] but that does not make the term descriptive of all

those goods.’” Id. (internal quotation omitted). Applicant claims that “‘[a]ll goods’

using a measure or scoop utensil immediately brings to the minds of consumers a

diverse set of products, including coffee, pet waste, and pet litter-related products,

fish, pet foods, bulk foods, cereal with raisins, or even cubed or crushed ice,” id. at 6-

7, and concludes that “[n]either a utensil nor any unit of measurement describes

Yarnell’s Scoop mascot or the goods associated with the mark.” Id. at 7.

As noted above, the word “scoop” means, inter alia, a serving portion of ice cream

and frozen confections. Multiple websites and articles use the word in that manner

to identify a serving portion in a variety of contexts involving ice cream and frozen

confections, including at retail:

44

44 February 15, 2018 Final Office Action at TSDR 12.

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Serial No. 86824279

45

for counting calories:

46

45 Id. at TSDR 4.

46 August 26, 2016 Office Action at TSDR 17.

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Serial No. 86824279

47

for humor:

48

49

47 February 15, 2018 Final Office Action at TSDR 3.

48 Id. at TSDR 22.

49 Id. at TSDR 23.

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Serial No. 86824279

and to identify ice cream parlors and ice cream shops:50

51

The record also contains multiple third-party registrations of marks for ice cream

or frozen confections in which the exclusive right to use the word “scoop” or “scoops,”

or a design of a scoop of ice cream, has been disclaimed,52 which are probative of the

descriptive meaning of “scoop” with respect to the goods. See, e.g., In re Box Sols.

Corp., 79 USPQ2d 1953, 1955 (TTAB 2006).

Finally, there is evidence of Applicant’s own use of the word “scoop,” or a pictorial

equivalent, to identify the serving portion of its goods. We reproduce two examples

below:

50 July 17, 2017 Office Action at TSDR 9-14.

51 Id. at TSDR 9.

52 March 11, 2016 Office Action at TSDR 11-16; August 26, 2016 Office Action at TSDR 31-

62.

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53

54

53 August 4, 2016 Response to Office Action at TSDR 74.

54 Id. at TSDR 97.

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Serial No. 86824279

Some of Applicant’s packaging also appears to depict Applicant’s ice cream in scoops:

55

See, e.g., N.C. Lottery, 123 USPQ2d at 1709 (applicant’s advertising may provide

evidence of the public’s understanding of a term); Abcor Dev., 200 USPQ at 218

(same).

On the basis of the record as a whole, including Applicant’s and third parties’ uses

of “scoop,” we find that the applied-for mark describes “a feature, quality, or

characteristic of the goods . . . for which registration is sought,” N.C. Lottery, 123

USPQ2d at 1709, namely, that they are traditionally provided in a “scoop”-sized

serving portion.

Applicant’s arguments to the contrary are unavailing. Applicant’s double entendre

argument—that the mark also refers to information regarding its products—is

unsupported by the record. Not only must “both meanings . . . be readily apparent,”

55 Id. at TSDR 63.

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Serial No. 86824279

but the second meaning must also be “apparent upon seeing the mark in connection

with the [goods].” In re Ethnic Home Lifestyles Corp., 70 USPQ2d 1156, 1159 (TTAB

2003); see also TMEP § 1213.05(c)).

Applicant argues that its mascot “often appears on television and social media to

announce the availability of a new or returning Yarnell flavor.” 7 TTABVUE 14

(citing examples). In one example, Applicant urged its Facebook followers to “like us

now” to get the information:

56

This evidence does not establish a non-descriptive meaning of SCOOP. “If the alleged

second meaning of the mark is apparent to purchasers only after they view the mark

in the context of the applicant’s trade dress, advertising materials or other matter

separate from the mark itself, the mark is not a double entendre.” In re The Place,

Inc., 76 USPQ2d 1467, 1470 (TTAB 2005);57 see also In re Colonial Stores Inc., 394

56 4 TTABVUE 72.

57 SCOOP is not a double entendre even if a second meaning might be attributed to it in the

context of extrinsic evidence of its use. Cf. Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906

F.3d 965, 128 USPQ2d 1370, 1376 (Fed. Cir. 2018) (rejecting applicant’s argument that

CORN THINS and RICE THINS were double entendres “conveying ‘the low calorie, light[,]

and diet-friendly characteristics of the products” even if “other evidence may reasonably

allow one to infer a healthfulness-related meaning”).

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Serial No. 86824279

F.2d 549, 157 USPQ 382, 385 (CCPA 1968) (SUGAR & SPICE not merely descriptive

of bakery products, notwithstanding the descriptive nature of the words “sugar” and

“spice,” because it immediately evoked the nursery rhyme “sugar and spice, and

everything nice”). Applicant makes no showing that the interpretation of SCOOP as

a “news ‘scoop,’” 7 TTABVUE 14, is one “that the public would make fairly readily,”

In re Calphalon Corp., 122 USPQ2d 1153, 1163 (TTAB 2017), because it is “readily

apparent from the mark itself.” Id. In the context of the goods identified in the

application, the applied-for mark describes a serving size, not hot news. See Ethnic

Home Lifestyles, 70 USPQ2d at 1158-59.

Applicant’s second argument similarly misses the mark. Applicant claims that

even though a serving implement called a “scoop” is sometimes used in connection

with ice cream products, that “‘does not mean that the term is descriptive of them”

because “[m]any other goods possibly may be included within the broad term [here,

scoop] but that does not make the term descriptive of all those goods.’” 13 TTABVUE

6 (bracketing supplied by Applicant). Applicant relies on In re Hutchinson Tech. Inc.,

852 F.2d 552, 7 USPQ2d 1490 (Fed. Cir. 1988), a case in which the Federal Circuit

reversed the Board’s finding that the mark HUTCHINSON TECHNOLOGY for

various electronic components was primarily merely a surname under then-Section

2(e)(3) of the Trademark Act because “technology” was a broad term that did not

merely describe the identified goods,58 while affirming the requirement of a

disclaimer of exclusive rights in the term TECHNOLOGY. Id. at 1492.

58 The Federal Circuit discussed descriptiveness only in the context of whether the Board

properly considered the effect that the word TECHNOLOGY had on consumer perception of

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Serial No. 86824279

To the extent that Hutchinson Tech. applies outside the context of a surname

refusal, Applicant’s reliance on it is misplaced. Applicant essentially argues that it

stands for the proposition that we must determine what is described by the word

“scoop,” and that “‘all goods’ using a measuring or scoop utensil immediately brings

to the minds of consumers a diverse set of products.” 13 TTABVUE 6-7. Under Section

2(e)(1) of the Act, however, the “question is not whether someone presented only with

the mark could guess the goods . . . listed in the identification. Rather, the question

is whether someone who knows what the goods . . . are will understand the mark to

convey information about them.” In re Mecca Grade Growers, LLC, 125 USPQ2d

1950, 1953 (TTAB 2018) (citing DuoProSS, 103 USPQ2d at 1757); accord Earnhardt

v. Kerry Earnhardt, Inc., 864 F.3d 1374, 23 USPQ2d 1411, 1413 (Fed. Cir. 2017).

Accordingly, we must consider what SCOOP means to a member of the public who

knows that the goods are frozen confections and ice cream promoted and distributed

by a mascot named Scoop. See Ethnic Home Lifestyles, 70 USPQ2d at 1158-59. As

discussed above, in the context of the goods identified in the application, SCOOP

conveys information about their serving portion. See generally In re Finisar Corp., 78

USPQ2d 1618, 1621 (TTAB 2006), aff’d, 223 F. Appx. 984 (Fed. Cir. 2007)

the surname HUTCHINSON. Hutchinson Tech., 7 USPQ2d at 1492-1493. Because the

Board’s finding that TECHNOLOGY was descriptive was based solely on the applicant’s

statement that TECHNOLOGY could describe a broad array of goods, including applicant’s

own electronic parts, the court found the Board’s finding that TECHNOLOGY was

descriptive (and thus would have minimal impact on consumer perception of the surname

HUTCHINSON) to be inadequately supported. Id. This record, in contrast, amply establishes

that the word “scoop” is merely descriptive of the goods.

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Serial No. 86824279

(distinguishing Hutchinson Tech. and pointing out that the term at issue in Finisar

was shown to be merely descriptive).

Because the Examining Attorney has shown that the applied-for mark is merely

descriptive of the goods, we affirm the refusal to register under Section 2(e)(1). We

turn now to whether Applicant showed that the applied-for mark is nevertheless

registrable on the Principal Register because it has acquired distinctiveness.

C. Lack of Acquired Distinctiveness

“Under Section 2(f) of the Trademark Act, matter that is merely descriptive under

Section 2(e)(1) may nonetheless be registered on the Principal Register if it ‘has

become distinctive of the applicant’s goods . . . in commerce.’” In re Virtual Indep.

Paralegals, LLC, 2019 USPQ2d 111512, **9-10 (TTAB 2019) (quoting 15 U.S.C.

§ 1052(f)). “An applicant seeking registration of a mark under Section 2(f) bears the

ultimate burden of establishing acquired distinctiveness.” Id. (citing In re La. Fish

Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015)). “‘To show

that a mark has acquired distinctiveness, an applicant must demonstrate that the

relevant public understands the primary significance of the mark as identifying the

source of a product or service rather than the product or service itself.’” Id. at *11

(quoting In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1424 (Fed. Cir.

2005)).

1. The Degree of Descriptiveness of the Applied-For Mark

The Federal Circuit has “long held that ‘the applicant’s burden of showing

acquired distinctiveness increases with the level of descriptiveness; a more

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Serial No. 86824279

descriptive term requires more evidence of secondary meaning.’” Royal Crown Cola

Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1047 (Fed. Cir. 2018) (quoting

Steelbuilding.com, 75 USPQ2d at 1424). Accordingly, the Board “must make an

express finding regarding the degree of [a] mark’s descriptiveness on the scale

ranging from generic to merely descriptive, and it must explain how its assessment

of the evidentiary record reflects that finding.” Id. at 1048.

The Examining Attorney acknowledges the sliding scale of proof under Section

2(f), 15 TTABVUE 10, and argues that “the evidence of record shows that applicant’s

mark is highly descriptive of applicant’s goods.” Id. at 11. She relies on the evidence

discussed above showing use of “scoop” to identify a portion size of ice cream. Id.

Applicant neither acknowledges the sliding scale of proof under Section 2(f), nor

addresses the degree of descriptiveness of its proposed mark.

The dictionary definitions, third-party uses and registrations, and webpages and

articles discussed and displayed above make it clear that “scoop” is a common portion

size and measuring unit for frozen confections and ice cream. We find that “scoop”

has little, if any, source-identifying capacity as a mark for those goods. Indeed,

Applicant’s own use confirms that SCOOP is the most apt descriptor for measuring a

serving size of its goods when they are “promoted and distributed by a mascot named

SCOOP at product promotions and distributions of the frozen confections and ice

creams.” See, e.g., N.C. Lottery, 123 USPQ2d at 1709 (applicant’s advertising may

provide evidence of the public’s understanding of a term); Abcor Dev., 200 USPQ at

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Serial No. 86824279

218 (same). Specifically, Applicant touts that the mascot “Scoop” will be “giving away

free scoops of ice cream”:

59

We agree with the Examining Attorney that the record as a whole shows that

SCOOP is highly descriptive of ice cream and frozen confections. See Real Foods, 128

USPQ2d at 1374-75 (affirming Board’s finding that CORN THINS and RICE THINS

were highly descriptive of corn and rice cakes based on applicant’s, third-party

manufacturers’, and the public’s descriptive use of the elements combined in the

claimed marks); Virtual Indep. Paralegals, 2019 USPQ2d 111512, at *11. We turn

59 August 4, 2016 Response to Office Action at TSDR 74.

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Serial No. 86824279

now to the issue of whether Applicant has carried its burden of showing that its highly

descriptive proposed mark has acquired distinctiveness.

2. The Sufficiency of Applicant’s Evidence of Acquired Distinctiveness

“The applicant . . . bears the burden of proving acquired distinctiveness.” La. Fish

Fry Prods., 116 USPQ2d at 1265 (citation omitted). “The amount and character of

evidence required to establish acquired distinctiveness depends on the facts of each

case and the nature of the mark sought to be registered.” In re Gen. Mills IP Holdings

II, LLC, 124 USPQ2d 1016, 1018 (TTAB 2017). “[T]he greater the degree of

descriptiveness the term has, the heavier the burden to prove it has attained

secondary meaning.” In re Boston Beer Co., 198 F.3d 1370, 53 USPQ2d 1056, 1058

(Fed. Cir. 1999) (citation omitted). “Because we have found that the term [SCOOP] is

highly descriptive of Applicant’s [goods], Applicant’s burden of establishing acquired

distinctiveness under Section 2(f) is commensurately high.” Virtual Indep.

Paralegals, 2019 USPQ2d 111512, at *11 (citing cases).

The considerations to be assessed in determining whether

a mark has acquired secondary meaning can be described

by the following six factors: (1) association of the

trade[mark] with a particular source by actual purchasers

(typically measured by consumer surveys); (2) length,

degree, and exclusivity of use; (3) amount and manner of

advertising; (4) amount of sales and number of customers;

(5) intentional copying; and (6) unsolicited media coverage

of the product embodying the mark . . . All six factors are

to be weighed together in determining the existence of

secondary meaning.

Id. (quoting In re Snowizard, Inc., 129 USPQ2d 1001, 1005 (TTAB 2018) (quoting

Converse, Inc. v. Int’l Trade Comm’n, 907 F.3d 1361, 128 USPQ2d 1538, 1546 (Fed.

Cir. 2018))). We weigh all of the factors for which there is record evidence.

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Serial No. 86824279

In its Initial Brief, Applicant argues that it “has presented bountiful evidence that

[the mark] qualifies for registration under Section 2(f), having acquired

distinctiveness for its SCOOP mascot as a human display/spokesperson for

Applicant’s applied-for goods.” 7 TTABVUE 16. Applicant points primarily to the

appearances of its live mascot at numerous public events for the five years preceding

the briefing on the appeal, id. at 15, and claims that through those appearances, its

mascot has been “extensively advertised.” Id. at 12.60 In its reply brief, Applicant

argues that the Trademark Act “provides a presumption of acquired secondary

meaning after five years, but no set duration is required for acquired distinctiveness

under the Lanham Act or case law.” 16 TTABVUE 7 (emphasis supplied by

Applicant). Applicant claims that its “five years of use is presumptively sufficient

under §2(f),” and that a November 2016 email from a member of the public requesting

Applicant’s permission to use what the email described as “Yarnells trademark” in

the phrase “Getting scoops like Yarnell” on t-shirts for members of a high school

football team,61 is “supplemental evidence” of acquired distinctiveness. Id. at 8.

The Examining Attorney succinctly describes Applicant’s proof of acquired

distinctiveness as “(1) exclusive and continuous use since 2012, (2) a declaration from

one individual, (3) media coverage, and (4) an email requesting permission to use the

mark.” 15 TTABVUE 11. She stresses that “Applicant has submitted no evidence as

60 The public appearances are discussed in the Bell Declaration and listed and depicted in

various exhibits thereto. 4 TTABVUE 131-32 (Bell Decl. ¶¶ 5-13; Exs. 27-39).

61 January 12, 2018 Response to Office Action at TSDR 2-3.

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Serial No. 86824279

to the type, expense, and amount of advertising of the mark in the United States, the

applicant’s sales success, or consumer studies.” Id.

The Examining Attorney criticizes the weight that Applicant’s evidence warrants.

She argues that Applicant’s alleged use since 2012 is insufficient to show acquired

distinctiveness because Applicant’s mark is highly descriptive, id. at 11-12, and that

the Bell Declaration is insufficient because “proof of distinctiveness requires more

than a declaration from one individual, especially one who works for the applicant,”

and because the declaration “indicates that consumers identify the term ‘SCOOP’ as

the name of applicant’s mascot,” but “fails to address whether consumers perceive the

term ‘SCOOP’ as a source identifier for the goods themselves.” Id. at 12.

With respect to the media coverage, the Examining Attorney notes that it is

“unclear from the record that these were unsolicited media events” and that “the

majority of the additional submitted exhibits [reflecting the events] do not display

the applied-for mark SCOOP at all,” but rather show “applicant’s mascot with the

wording ‘YARNELL’S’ on its shirt, not the mark.” Id. at 13-14. Finally, she argues

that the email requesting permission to use “Yarnells trademark” is an isolated

instance and that “even if consumers associate Yarnell’s with the wording ‘SCOOP’,

applicant has not proven that consumers associate the applied-for mark with

applicant’s ice cream.” Id. at 14. We agree with the Examining Attorney that

Applicant’s evidence, taken in toto, does not show that SCOOP has acquired

distinctiveness for Applicant’s goods.

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Serial No. 86824279

We begin with Applicant’s evidence of five years’ use of the applied-for mark.

Contrary to Applicant’s claim, the Trademark Act does not “provide[ ] a presumption

of acquired secondary meaning after five years” of use of a mark. 16 TTABVUE 7.

“Although Section 2(f) of the Lanham Act, 15 U.S.C. § 1052(f), provides that the PTO

may accept five years of ‘substantially exclusive and continuous’ use as prima facie

evidence of acquired distinctiveness, the statute does not require the PTO to do so.”

La. Fish Fry, 116 USPQ2d at 1265. The USPTO and the Board have discretion to find

such a use claim insufficient, especially where, as here, the mark at issue is highly

descriptive. Id.; see also In re R.M. Smith, Inc., 734 F.2d 1482, 222 USPQ 1, 3 (Fed.

Cir. 1984) (affirming USPTO’s decision to require more than an affidavit of eight

years of continuous and substantially exclusive use); In re Kalmbach Publ’g Co., 14

USPQP2d 1490, 1492 (TTAB 1989) (deeming a Section 2(f) claim of more than 10

years of use insufficient for a highly descriptive mark “without specific evidence of

the extent of the mark’s exposure to the purchasing public and of the purchasers’

perception of the asserted mark”); In re Synergistics Research Corp., 218 USPQ 165,

167 (TTAB 1983) (“we have consistently held that a declaration or affidavit of

continuous and exclusive use as a mark for an extended period of years is insufficient

in and of itself to support registrability under Section 2(f) of the Trademark Act where

the term sought to be registered is highly descriptive in character”).

Moreover, other circumstances further undercut the significance of this claim of

extended use. There is scant evidence of Applicant’s use of SCOOP to designate the

source of its ice cream at the referenced public appearances. In its First Supplemental

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Serial No. 86824279

Brief, Applicant concedes that its live mascot wears “a name tag with the name

SCOOP” only “at some events.” 13 TTABVUE 6. As discussed below in connection

with the specimen refusal, the record shows only two events at which the mascot

made a live appearance wearing “a name tag with the name SCOOP,”62 and both were

in retail stores rather than at one of the media events, sporting events, community

events, or celebrations discussed in the Bell Declaration.63 In the other live

appearances reflected in the record, the mascot’s uniform bore Applicant’s house

mark YARNELL’S.64 Indeed, on this record, it is difficult to find that Applicant has

used the applied-for mark continuously for five years.

With respect to the Bell Declaration, we disagree with the Examining Attorney’s

suggestion that proof of distinctiveness invariably “requires more than a declaration

62 As discussed in detail below, Applicant claims that its specimens show that the mascot is

a display associated with Applicant’s goods. Under this theory, only those specimens showing

the mascot in a uniform bearing the applied-for mark are relevant. There are two such

specimens involving a live appearance, Applicant’s original specimen submitted on November

18, 2015, and an additional specimen submitted with Applicant’s Request for

Reconsideration, which shows the mascot at an event in October 2015. 4 TTABVUE 133.

63 4 TTABVUE 131-32 (Bell Decl. ¶¶ 6-8).

64 August 4, 2016 Response to Office Action at TSDR 59, 63-68, 70, 74-76, 78, 81-86, 87-89,

92; 4 TTABVUE 40-49, 50-52, 54-55, 57, 60, 62, 64, 66-68, 70, 74, 76, 85-94. Applicant argues

that verbal references to the mascot at live appearances are evidence that the applied-for

mark has acquired distinctiveness: “It is not even required that the applicant use the

trademark if there is sufficient public association for the trademark with the source of the

goods or services.” 7 TTABVUE 11 (citing Volkswagen AG v. Rickard, 492 F.2d 474, 181

USPQ 611 (5th Cir. 1974)). The Volkswagen case does not aid Applicant. There, the Fifth

Circuit held that the trial court properly found that the plaintiff owned a common law mark

in the term BUG on the basis of the plaintiff’s use of the mark “in its own advertising for

many years,” “public opinion surveys showing substantial public association” of BUG with

the plaintiff, and the testimony of consumers and competitors that they associated BUG with

the plaintiff. 181 USPQ at 614. There is no comparable supporting evidence in the record

here. To the extent that verbal references to the mascot at live appearances show anything,

it is that Applicant’s mascot is known as Scoop. They do not show that SCOOP is recognized

as Applicant’s mark for ice cream and frozen confections.

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Serial No. 86824279

from one individual, especially one who works for the applicant.” 15 TTABVUE 12.

The evidence here, however, is insufficient for this highly descriptive applied-for

mark. Putting aside the scant evidence of use of the applied-for mark in the course of

the mascot’s live appearances, the Bell Declaration provides no details regarding the

number of people attending, viewing, or listening to the events at which the mascot

has appeared while wearing a Scoop nametag or otherwise being identified as

“Scoop,” including those listed in exhibits to the Bell Declaration, or the extent of

public exposure to the name Scoop for the mascot through Applicant’s social media.

The Bell Declaration also does not state that Applicant has featured the applied-for

mark and the mascot in its advertising.65 It adds essentially nothing about whether

consumers recognize SCOOP as Applicant’s mark.

The record also shows some exposure of the mascot, either in person or by name,

in print and electronic media.66 There is no evidence that when the mascot has

appeared on television he has worn a uniform bearing the applied-for mark and, as

with the mascot’s live appearances, we have no information regarding public

exposure to the mascot through these media. In the circumstances presented in this

case, the handful of times in which the applied-mark has appeared in print coverage

65 As discussed below, two of Applicant’s additional specimens show the display of a cartoon

version of the mascot wearing a uniform bearing the name Scoop on Applicant’s ice cream

trucks. The Bell Declaration does not mention this form of use of the applied-for mark.

66Examples are television appearances to promote the introduction or reintroduction of

various flavors, 4 TTABVUE 92-94, and articles entitled “Yarnell’s returning to stores with

familiar flavors” on the website at arkansasonline.com and “Yarnell’s celebrates Ice Cream

Day with free ice cream” on the website at thv11.com. August 4, 2016 Response to Office

Action at TSDR 79-80, 86-87.

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Serial No. 86824279

of Applicant’s mascot adds little to show that SCOOP has acquired distinctiveness as

a mark for Applicant’s goods.

The email to Applicant requesting permission to use “Yarnells trademark” in the

phrase “Getting scoops like Yarnells” is direct evidence that one consumer associated

the applied-for mark with Applicant. It is unclear from the face of the email whether

that association is with Applicant’s mascot or Applicant’s goods, but even assuming

that it is the latter, we agree with the Examining Attorney that this is not a

particularly weighty piece of the evidentiary puzzle.

On the basis of the record as a whole, and taking into account that the applied-for

mark is highly descriptive of Applicant’s goods, we find that Applicant has not

provided sufficient evidence to show that the applied-for mark has acquired

distinctiveness. We thus find that the applied-for mark is merely descriptive and that

Applicant has not shown that it is entitled to registration under Section 2(f).

D. Specimen Refusal

The Examining Attorney also refused registration under Sections 1 and 45 of the

Trademark Act, 15 U.S.C. §§ 1051 and 1127, on the ground that Applicant’s

specimens do not show use of the applied-for mark in commerce in connection with

the goods identified in the application. We agree.

The Trademark Act “provides for registration of a mark based on use of the mark

in commerce.” In re Siny Corp., 920 F.3d 1331, 2019 USPQ2d 11362, *2 (Fed. Cir.

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Serial No. 86824279

2019).67 The USPTO “requires an applicant to submit a specimen of use ‘showing the

mark as used on or in connection with the goods.’” Id. (quoting In re Sones, 590 F.3d

1282, 93 USPQ2d 1118, 1120 (Fed. Cir. 2009)); see 37 C.F.R. § 2.56(a). The Examining

Attorney refused registration on the ground that Applicant’s original and additional

specimens do not show use of the applied-for mark SCOOP in commerce in connection

with the goods identified in the application.

1. Identification of Applicant’s Specimens Bearing the Applied-For Mark

Applicant’s Initial Brief refers to “multiple specimens,” 7 TTABVUE 10,

comprising “photographs and social media Internet posts,” id. at 11, and it discusses

eight examples. Id. Applicant’s First Supplemental Brief also discusses numerous

photographs and videos depicting the mascot, 13 TTABVUE 2, 9-10, but does not

address the specimen refusal per se.

The Examining Attorney discusses Applicant’s original specimen, two specific

substitute specimens, and “additional exhibits showing the mascot ‘Scoop’ appearing

at various public events.” 15 TTABVUE 15-16. She argues that “the majority of the

additional submitted exhibits do not display the applied-for mark SCOOP at all,” and

that “[o]nly four exhibits show the mark on the ‘Scoop’ mascot or a cartoon depiction

of the mascot, and none show the mark on the applicant’s ice cream itself.” Id. at 17.

Applicant responds in its reply brief that “[o]nly a single specimen is required for

registration in a single trademark class,” and that the fact “[t]hat some exhibits might

67 The Federal Circuit originally issued this opinion as nonprecedential on January 14, 2019,

but subsequently reissued it as a precedential opinion on April 10, 2019.

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Serial No. 86824279

not qualify as use specimens does not negate others, even if a minority, that do.” 16

TTABVUE 4. Applicant claims that it

has made of record multiple specimens including: the

initial specimen, Exhibit 10 (mascot in front of grocery

store freezer stocked with Yarnell ice cream); Ex. 13a

(holding ice cream, in front of grocery store dairy shelves);

Ex. 15a (cartoon named Scoop, showing both “Yarnell” and

“Scoop” on the mascot, with face cutout for photos, attached

to Yarnell ice cream truck); Ex. 15b (cartoon Scoop mascot

on side of ice cream truck, showing “Scoop,” on the mascot’s

cap and shirt); Ex. 15c (close-up of ice cream truck with

cartooned Scoop mascot, showing “Scoop” on the mascot).

Further, the word SCOOP is manifest in Exhibits 10, 13a,

15a, 15b and 15c [and] Exhibit 16 (a video with audio)

loudly shows recognition of mascot as both “Scoop” and as

an agent for Yarnell. . . . [T]he trademark SCOOP appears

on more than Applicant’s mascot’s shirt, it also appears on

Applicant’s ice cream truck, and on a photo backdrop

adjacent to Applicant’s ice cream truck. . . . Applicant’s

original use specimen . . . well meets all legal requirements,

as do each of the other five specimens.

Id. at 4-5.

The applied-for mark appears only on the shirt worn by Applicant’s human or

cartoon mascot,68 and it is visible in that manner in the additional specimens a total

of four different times.69 We will consider the original specimen and these four

additional specimens that bear the applied-for mark.

68As noted above, in the vast majority of depictions of the live mascot, his shirt bears

Applicant’s YARNELL’S house mark rather than the applied-for mark.

69 August 4, 2016 Response to Office Action at TSDR 91, 95-96; 4 TTABVUE 133. The mascot’s

shirt in the video discussed by Applicant appears to bear the YARNELL’S mark. The mascot

is referred to verbally as “Scoop” by a person who introduces him.

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Serial No. 86824279

2. The Sufficiency of Applicant’s Specimens

“A mark is deemed in use in commerce on goods when, among other things, ‘it is

placed in any manner on the goods or their containers or the displays associated

therewith or on the tags or labels affixed thereto.’” Siny, 2019 USPQ2d 11362, *2

(quoting 15 U.S.C. § 1127). The record shows that marks for ice cream and frozen

confections are typically affixed to the containers for those goods, in the manner in

which Applicant’s original specimen displays its YARNELL’S mark:

Applicant argues that it uses the applied-for mark on displays associated with its ice

cream and frozen confections, rather than on their containers. Applicant made of

record multiple examples of what it describes as “[t]ypical displays associated with

the goods.” 7 TTABVUE 11 (citing TMEP § 904.03(g)). We depict one below:

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Serial No. 86824279

70

Applicant’s claimed displays take two forms: (1) a live mascot wearing a shirt bearing

the word “Scoop,” who makes personal appearances “at product promotions and

distributions of the frozen confections and ice creams,” and (2) Applicant’s ice cream

trucks displaying a cartoon version of the mascot wearing a shirt bearing the word

“Scoop,” which are parked at such product promotions and distributions.

With respect to the first form, Applicant cites no case in which a live person has

been found to be a “display associated with” goods,71 and we have found none.

70 August 4, 2016 Response to Office Action at TSDR 111.

71 Applicant analogizes the uses of its live mascot as a display associated with its goods to the

use of the BEANIE mascot of the city of Lima, Ohio, 7 TTABVUE 11-12; 16 TTABVUE 6, and

the use of other product spokespersons. 13 TTABVUE 4; 16 TTABVUE 6. Applicant made of

record information from the TESS database regarding registrations of the BEANIE word

mark for t-shirts and baseball caps, 4 TTABVUE 31-33; the Beanie design mark for lapel

pins, various printed materials, and t-shirts, id. at 34-36; and the marks THE MOST

INTERESTING MAN IN THE WORLD for beer, August 4, 2016 Response to Office Action at

TSDR 25-26, HEY CULLIGAN MAN! and CULLIGAN MAN for servicing water treatment

equipment and related services, id. at TSDR 33-34, 36-37, and THE BURGER KING and

design for birthday party services and restaurant services. 4 TTABVUE 20-21. These

registrations show that product-related characters can function as marks for goods and

services, but because Applicant did not include the specimens of use that supported these

registrations, we do not know whether the registrations issued on the basis of specimens

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Serial No. 86824279

“‘Section 45 of the Trademark Act does not define the term ‘display associated

therewith,’” In re Kohr Bros., Inc., 121 USPQ2d 1793, 1794 (TTAB 2017) (quoting In

re Shipley Co., 230 USPQ 691, 692 (TTAB 1986)), but Applicant acknowledges that

“[t]ypical displays associated with the goods are point-of-sale material such as

banners, shelf-talkers, window displays, menus, and similar devices.” 7 TTABVUE

11 (citing TMEP § 904.03(g)). This category of “point-of-sale material” cannot easily

be stretched to conclude that humans making live personal appearances at an event

or venue are “similar devices” to banners or window displays. The TMEP’s discussion

of displays associated with the goods suggests, at the very least, that Applicant’s

theory tests the limits of what the word “displays” in the statute can reasonably be

understood to mean.

Nevertheless, the Board “must make a case-by-case determination of whether a

particular use asserted to be a ‘display’ is adequate to demonstrate use in commerce,’”

Kohr Bros., 121 USPQ2d at 1794 (quoting Shipley Co., 230 USPQ at 692), and our

primary reviewing court has “cautioned against bright-line rules in this context.”

Siny, 2019 USPQ2d 11362, *3. Accordingly, while we do not foreclose the possibility

that a human being making a live personal appearance at an event or in a venue can

qualify as a “display associated” with the goods within the meaning of Section 45 of

the Trademark Act, we find on this record that neither the live mascot nor his cartoon

counterpart so qualify.

comprising displays associated with the goods, or on the basis of some other use of the

character marks.

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Serial No. 86824279

“‘A display used in association with the goods is essentially a point-of-sale display

designed to catch the attention of purchasers as an inducement to consummate a

sale.’” Kohr Bros., 121 USPQ2d at 1795 n.5 (quoting In re U.S. Tsubaki, Inc., 109

USPQ2d 2002, 2003 (TTAB 2014)). An important “‘factor in the analysis of whether

a specimen is an acceptable display used in association with the goods is whether the

mark is displayed in [ ] . . . such a way that the customer can easily associate the

mark with the goods.’” Kohr Bros., 121 USPQ2d at 1795 (quoting In re Osterberg, 83

USPQ2d 1220, 1223 (TTAB 2007)). A display “‘must be designed to catch the attention

of purchasers and prospective purchasers as an inducement to make a sale,” and

“must prominently display the mark in question and associate it with, or relate it to,

the goods.’” Kohr Bros., 121 USPQ2d at 1795 (quoting TMEP § 904.03(g)).

Applicant argues that “[t]he word SCOOP is manifest” on its ice cream trucks “in

text.” 7 TTABVUE 13. We disagree. As shown below, the applied-for mark is not

particularly noticeable, much less eye-catching, when it appears on Applicant’s trucks

bearing the cartoon mascot:

72

72 4 TTABVUE 134. Applicant described this specimen as a “photo backdrop adjacent to

Applicant’s ice cream truck.” 16 TTABVUE 5.

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Serial No. 86824279

73

The mere fact that the applied-for mark appears in proximity to the goods is not

enough to show that these specimens constitute displays associated with the goods.

Kohr Bros., 121 USPQ2d at 1794-95. The applied-for mark is visually subordinate on

Applicant’s trucks to the YARNELL’S house mark, which appears in lettering that is

much larger and more prominent than the relatively small script in which the

applied-for mark appears on the “uniform” of the cartoon character. The word “Scoop”

that appears on the uniform is used as, and thus is likely to be perceived as, the name

of the cartoon character himself, rather than as a mark identifying the goods. The

goods are identified by the mark YARNELL’S that appears in large lettering

elsewhere on the specimens as “Yarnell’s Premium Ice Cream.” The specimens do not

display the applied-for mark in “such a way that the customer can easily associate

the mark with the goods.” Id. at 1795; cf. In re Duvernoy & Sons, Inc., 212 F.2d 202,

73 4 TTABVUE at 96. The cartoon mascot alone is reproduced elsewhere in the record. Id. at

97.

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Serial No. 86824279

101 USPQ 288, 289 (CCPA 1954) (“[W]e think it is clear from the exhibits that

Duvernoy & Sons, Inc., appellant’s trade name (generally shown in large, fanciful

letters), is relied upon to denote origin and that ‘Consistently Superior’ is merely an

adjunct thereto, operating in the shadow thereof, to indicate to purchasers that

appellant’s goods are always superior in quality.”).

Applicant’s original specimen, and one of its additional specimens shown below,

74

show the live mascot appearing in stores in which we assume Applicant’s ice cream

can be purchased by a consumer after he or she receives a free promotional sample.

The store is clearly “a point-of-sale location,” Siny, 2019 USPQ2d 11362, *3, but we

find that the specimens showing the live mascot do not constitute a display associated

with the goods. When the applied-for mark appears on the live mascot’s uniform as a

nametag, it identifies, and is associated with (in the words of Applicant’s goods

74 4 TTABVUE 133.

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Serial No. 86824279

identification) “a mascot named SCOOP,” not the goods that he promotes and

distributes. The association of the applied-for mark with the mascot, not the goods

per se, is reinforced by the fact that when he makes personal appearances, “Scoop is

generally introduced by his mascot name, ‘Scoop,’ often excitedly.” 4 TTABVUE 131

(Bell Decl. ¶ 6). The record as a whole shows that the mascot is identified and referred

to as “Scoop” whenever he appears, including in the vast majority of cases where his

“name” does not appear on his uniform.

Applicant argues in its reply brief that the fact that “a consumer may associate

one trademark with a company does not preclude another mark.” 16 TTABVUE 7.

We agree. Indeed, it has long been “settled that a product label or in the case of a

service mark, an advertisement or similar material can bear more than one mark

without diminishing the identifying function of each.” In re Morganroth, 208 USPQ2d

284, 287 (TTAB 1980). But “the salient question is whether the designation in

question, as used, will be recognized in itself as an indication of origin for the

particular product or service,” id., and the specimens here do not show that SCOOP

will be “recognized in itself as an indication of origin” for Applicant’s ice cream and

frozen confections, rather than simply as the name of Applicant’s live or cartoon

mascot.

We add that three of Applicant’s specimens suffer from the additional defect that

they do not appear to have a point-of-sale nature, or to be “calculated to consummate

a sale.” U.S. Tsubaki, 109 USPQ2d at 2009. “In determining whether a specimen

qualifies as a display associated with the goods, one important consideration is

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Serial No. 86824279

whether the display is at a point-of-sale location.” Siny, 2019 USPQ2d 11362, *3

(citing Sones, 93 USPQ2d at 2009). “Mere advertising is not enough to qualify as such

a display,” id., and “to be more than mere advertising, a point-of-sale display

associated with the goods must do more than simply promote the goods and induce a

person to buy them; that is the purpose of advertising in general. The specimen must

be ‘calculated to consummate a sale.’” U.S. Tsubaki, 109 USPQ2d at 2009 (quoting In

re Bright of America, Inc., 205 USPQ 63, 71 (TTAB 1979)); see also TMEP § 904.03(g)

(“These items must be designed to catch the attention of purchasers and prospective

purchasers as an inducement to make a sale”).

One of the specimens is a still image of the live mascot from what appears to be a

23-second video in which the mascot apparently encourages fans of the University of

Arkansas Razorbacks to “PIG OUT!”:

75

75 August 4, 2016 Response to Office Action at TSDR 91.

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Serial No. 86824279

Applicant did not make the video itself of record. There is no evidence that the goods

may be purchased using information provided in the video. Cf. In re Hydron Techs.,

Inc., 51 USPQ2d 1531, 1533-34 (TTAB 1999) (holding that a 28:45 infomercial for

skin care products was a display associated with the goods where the goods were

shown either immediately before or immediately after the applied-for mark was

displayed in the video, and information enabling viewers to order the goods was given

in a reasonable time after the goods were shown).

The two other specimens display some variant of the cartoon mascot on one of

Applicant’s trucks used to distribute ice cream at Applicant’s “product promotions

and distributions.” Assuming, without deciding, that these specimens pertain to the

identified goods as “promoted and distributed by a mascot named SCOOP”

(emphasis added), there is nothing on the face of the additional specimens indicative

of a point-of-sale nature, such as a price list, and Mr. Bell’s declaration is silent with

respect to the trucks.76 We cannot find on this record that the substitute specimens

were used “at a point-of-sale location,” Siny, 2019 USPQ2d 11362, *3, or were

“calculated to consummate a sale.” U.S. Tsubaki, 109 USPQ2d at 2009. Cf. Shipley

Co., 230 USPQ at 693-94 (display of mark at trade show where consumers could order

the goods held to be a point-of-sale display associated with the goods).

76 He focuses on the live mascot, who “usually appears in proximity to Yarnell ice cream and

frozen confections” and “often distributes Yarnell ice cream and frozen confections.” 4

TTABVUE 131 (Bell Decl. ¶¶ 9-10).

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Serial No. 86824279

Because Applicant did not submit specimens showing use of the applied-for mark

in commerce in connection with the identified goods, we affirm the refusal to register

on that ground.

E. Failure to Function Refusal

“[A] proposed trademark is registrable only if it functions as an identifier of the

source of the applicant’s goods or services.” In re DePorter, 129 USPQ2d 1298, 1299

(TTAB 2019) (citing 15 U.S.C. §§ 1051, 1052, and 1127). “The Trademark Act is not

an act to register mere words, but rather to register trademarks. Before there can be

registration, there must be a trademark, and unless words have been so used they

cannot qualify.’” Id. (quoting In re Bose Corp., 546 F.2d 893, 192 USPQ 213, 215

(CCPA 1976)). There are multiple reasons why a proposed mark may fail to function

as one. See generally TMEP § 1202 (Oct. 2018).

The Examining Attorney argues that the applied-for mark SCOOP fails to

function as a mark because consumers would perceive it is as “merely conveying an

informational message and not as a means to identify and distinguish the applicant’s

goods from those of others.” 15 TTABVUE 4. She thus invokes the line of cases

holding that “terms and expressions that merely convey an informational message

are not registrable.” DePorter, 129 USPQ2d at 1299 (citing In re Eagle Crest, 96

USPQ2d 1227, 1229 (TTAB 2010)). The Examining Attorney points to the evidence

discussed above regarding the descriptiveness of SCOOP as a serving size of the

goods, and claims that “because consumers are accustomed to seeing ‘SCOOP’ used

in this manner, they would immediately perceive this term as merely informational

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Serial No. 86824279

matter indicating that the applicant offers servings of ice cream or frozen

confections.” Id. She also argues that “the applied-for mark, as used on the specimen

of record, does not function as a trademark because it does not identify the goods of

the applicant and distinguish them from the goods of others, nor does it serve to

indicate the source of applicant’s goods.” Id. at 5.

Applicant argues that “consumers actually do perceive Applicant Yarnell as the

source of the mascot Scoop as well as the goods the mascot promotes.” 13 TTABVUE

4. Applicant points to the email discussed above and the fact that the mascot “is

constantly in immediate proximity to Applicant’s name and its goods” and “is always

in uniform, bearing the Yarnell name on his hat, and often the Yarnell name on his

uniform shirt” when the mascot makes live appearances. Id. Applicant claims that

the “cases cited in the final refusal, [Eagle Crest], In re Aerospace Optics, Inc., 78

USPQ2d 1861 (TTAB 2006), and In re Hulting, 107 USPQ2d 1175 (TTAB 2013), thus

do not support refusal.” Id.

Many of the Board’s failure-to-function cases have dealt with phrases in the

American vernacular that were found to be incapable of functioning as marks due to

their nature. See, e.g., Hulting, 107 USPQ2d at 1177 (affirming refusal to register

“No More RINOs!” (short for “No More Republicans in Name Only”) for clothing and

other goods); Eagle Crest, 96 USPQ2d at 1232 (affirming refusal to register “Once a

Marine, Always a Marine” for clothing because it would be perceived as an

informational slogan “to express support, admiration or affiliation with the

Marines”); In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1460-61 (TTAB 1998)

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Serial No. 86824279

(affirming refusal to register “Drive Safely” for automobiles because it would be

perceived as an everyday, commonplace safety admonition); D.C. One Wholesaler, Inc.

v. Chien, 120 USPQ2d 1710, 1716 (TTAB 2016) (sustaining opposition to registration

of I ♥ DC for clothing because it would be perceived as “an expression of enthusiasm,

affection or affiliation with respect to the city of Washington, D.C.”).77 SCOOP is not

such a phrase, but a single word may fail to function as a mark if it does not identify

and distinguish an applicant’s goods or services.

In Aerospace Optics, the Board found that the word SPECTRUM did not function

as a mark for “pushbutton switches with dimmable illumination for use in military

and civilian aircraft cockpits, aviation crewstations, ships and command,

communications, control and intelligence systems” “because of the informational

nature of the term, but also because of the way it appears on the specimen.” 78

USPQ2d at 1864. The Board found that the word “spectrum” meant a “continuum of

color formed when a beam of white light is dispersed (as by passage through a prism)

77 Cf. In re Helena Rubinstein, Inc., 410 F.2d 438, 161 USPQ 606, 609 (CCPA 1969) (“The

specimens of record disclose that ‘PASTEURIZED’ appears in association with the

internationally well-known name ‘Helena Rubinstein.’ Such concurrent usage would, in our

judgment, be emanative of the conclusion that the ordinary purchaser would not consider the

mark indicative of the origin of the goods. . . . It seems to us that the marks speak irrefutably

for themselves that appellant’s face creams are pasteurized or substantially so, and are

clearly so descriptive of the goods as to be incapable of distinguishing them from the goods of

others.”); In re J. Hungerford Smith Co., 279 F.2d 694, 126 USPQ 372, 373 (CCPA 1960) (“On

both specimens ‘J. Hungerford Smith’s’ and ‘J H S’ appear in the largest lettering. The first

specimen bears in smaller letters additional words ‘Imitation Burgundy Cherry Syrup,’ while

the second bears the words ‘Cream-Pak Brand Burgundy Cherry Flavoring Syrup’ with ‘Reg.

U. S. Pat. Off.’ appearing beneath the quoted word ‘Burgundy.’ . . . Use of the words ‘Cream-

Pak Brand’ in addition to ‘J. Hungerford Smith’s’ serves as a further indication that

‘Burgundy’ is not used in the sense of a trademark for the syrup. We agree with the Patent

Office that, so far as the record shows, appellant has not used ‘Burgundy’ as a trademark for

a soft drink syrup, but only as a flavor designation.”) (paragraph break eliminated).

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Serial No. 86824279

so that its component wavelengths are arranged in order,” id. at 1863-64, and that as

the mark was used on the specimen of record, “the applied-for mark merely informs

the potential purchaser of an aspect of the goods, namely, the multiple color feature.”

Id. at 1864.

As discussed above, the applied-for mark is merely (and highly) descriptive of “ice

cream and frozen confections promoted and distributed by a mascot named SCOOP

at product promotions and distributions of the frozen confections and ice cream,” and

it does not serve as a source indicator as it is depicted on the specimens of record. Our

findings in connection with these refusals establish that SCOOP also fails to function

as a mark for the identified goods because, at most, it merely informs purchasers of

the serving size of the goods. Id. Accordingly, we affirm the refusal on that ground.

Decision: The refusal to register is affirmed.

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