THIS OPINION IS A
`PRECEDENT OF THE TTAB
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`Mailed:
`March 5, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
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`Trademark Trial and Appeal Board
`_____
`
`In re White Jasmine LLC
`_____
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`Serial No. 77115548
`_____
`
`Tricia L. Schulz of Foley & Lardner LLP for White Jasmine LLC.
`
`Christine C. Martin, Trademark Examining Attorney, Law Office 104 (Chris
`Doninger, Managing Attorney).
`
`_____
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`Before Holtzman, Bergsman and Adlin, Administrative Trademark Judges.
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`Opinion by Bergsman, Administrative Trademark Judge:
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`White Jasmine LLC (“applicant”) filed a use-based application to register on
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`the Principal Register the mark WHITE JASMINE and design, shown below, for
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`“beverages made of tea; black tea; flavourings of tea; spice blends; spices,” in Class
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`30.
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`

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`Serial No. 77115548
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`Applicant has acknowledged that its goods contain neither white tea, nor white
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`jasmine, and has claimed that the term “White Jasmine” has acquired
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`distinctiveness.
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`The Trademark Examining Attorney refused registration on the following
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`grounds:
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`1.
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`The word “White” in the mark is deceptive under Section 2(a) of the
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`Trademark Act of 1946, 15 U.S.C. § 1052(a); and
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`
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`2.
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`The term “White Jasmine” must be disclaimed under Sections 2(e)(1)
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`and 6 of the Trademark Act because the term “White Jasmine” as used by applicant
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`is either deceptively misdescriptive, and without acquired distinctiveness, or
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`generic.
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`The examining attorney submitted
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`the
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`following evidence, which
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`demonstrates that WHITE JASMINE refers to a type of tea, and that this type of
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`tea is made of white tea, scented or flavored with jasmine:
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`
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`1.
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`ShipshewanaShops.com website advertising the sale of Asian
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` Jasmine White Tea.1
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`Asian Jasmine White Tea
`Tea Name: Asian Jasmine White Tea (White Tea
`Collection).
`Shopwiki.com website advertising the sale of White Jasmine Tea,
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`2.
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`including Choice Organic White Jasmine Tea, Flowering Teas White Jasmine,
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`Asian White Jasmine, and Jasmine White Tea.2
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`1 September 16, 2008 Office action.
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`2
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`MyViitaNet.comm website aadvertisingg the sale
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`of White TTea – Jasmmine
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`Serial NNo. 77115548
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`3
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`ea).3 Jasmine Tenic White J(i.e., Chhoice Organ
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`4.
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`ChoicceOrganicTTeas.com wwebsite “Orrganic Whiite Teas” wwebpage.4 The
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`webpage describess white teaas as followws:
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`White teas aree the leastt processedd of all teeas. Tend
`er
`buds
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`and leavees are hand plucked,, gently wiithered, annd
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`driedd. This minnimal handdling resultts in the chharacteristtic
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`light and delicaate flavor.
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`The webbpage also identifies “White Jassmine Tea”” as followss:
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`nd a leaves anc white teaked organicially pluckWe mmarry spec
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`with ambrrosial jasmmine-scenteed green teaa to createe a
`buds
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`delicaate and ssweet cup with miild hints
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`of fragrannt
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`floweers.5
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`2 Septemmber 16, 20008 Office acttion.
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`3 Septemmber 16, 20008 Office acttion.
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`4 Augustt 31, 2009 OOffice action
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`5 See also the Amazoon.com webbsite advertiising the salle of Choicee Organic WWhite Jasminne
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`ember 8, 20n and SepteOffice actioTea (Junne 18, 2007
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`10 Office acction) and CCooks’Nook.ccom
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`website wwebpage addvertising C
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`HOICE ORRGANIC Whhite Jasminee Tea (Auguust 31, 20099
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`Office acction). The wwebpage deescribes the product as
`follows:
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`Choicce Organic WWhite Jasmmine Tea iss the resultt of speciallly-
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`plucked organic
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`white tea leeaves with
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`jasmine sceented organnic
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`greenn teas to create a delicaate and sweeet cup with
`mild hints
`of
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`fragraant flowers.
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`3
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`Serial NNo. 77115548
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`5
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`6.
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`Tea.6
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`FoodLocker.comm website wwebpage addvertising AARGO Whhite Jasminne
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`2009 isssue of The NNew York Times: “It’s made froom organicc white jasmmine tea.”99
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`ChinaStore.raddio86.com wwebsite webbpage adveertising “WWhite Jasmmine
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`Spring BBud.”7
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`m
`of
`of
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`ng Bud temine SprinOur WWhite Jas
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`a was harrvested fro
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`the mmountain aareas of FFujian provvince in thhe spring
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`2007. Made onnly from the most tennder leavess, it is one
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`the best varietiees of whitee jasmine teea.
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`7
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` GolddenStarTeaa.com webssite webpaage advertiising Goldden Star WWhite
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`a unique ng Tea, “aJasminee Sparklin
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`beverage
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`that invittes you too change
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`your
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`expectations abouut how you enjoy tea..”8 This prroduct wass reviewedd in Januarry 7,
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`8.
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`Etsy.com websiite advertiising the ssale of “WWhite Jasmmine Tea –– All
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`Organicc,” and displaying a
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`depiction
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`of a packaage of “Whhite Jasminne Tea” wwhose
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`label lissts “white ppeony tea” and “jasmiine buds” aamong the
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`product’s iingredientss.10
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`6 Augustt 31, 2009 OOffice action.
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`7 Augustt 31, 2009 OOffice action
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`. Although
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`indicatess that the onnline retaileer ships prooduct worldwwide.
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`8 Augustt 31, 2009 OOffice action.
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`9 Trademmark Examiining Attornney’s Suppleemental Briief. See alsoo the articlee posted on tthe
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`SFGate.ccom websitee (January 11, 2009) revviewing the
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`Golden Starr White Jassmine Sparkkling
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`Tea. (March 5, 20100 Office actiion).
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`10 Septemmber 8, 2010 Office actiion.
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`the prices aare listed inn pounds, thhe website
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`4
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`Serial NNo. 77115548
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`9.
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`Pure--Essential-Oils.us weebsite advvertising t
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`he sale off jasmine
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`tea,
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`includinng white jaasmine tea.11 (Emphaasis added)).
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`Jasmmine Tea Coollection
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`Whenn tea is prrocessed inn the preseence of rigght-bloominng
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`floweers, the deelicate sweeet aroma
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`infuses eaach tea leaaf.
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`We’vee created
`a jasmine
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`tea collecction that
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`will delighht
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`arl, jasminne green annd
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`jasmiine tea entthusiasts: jasmine pe
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`jasmiine white.
`Also
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`known ass Dragon PPhoenix p
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`earl tea, oour jasminne
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`oolonng pearls coombine dellicate and
`unopened
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`buds whicch
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`delighht all the ssenses as tthey unfurrl while steeeping. Ouur
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`jasmiine green uuses top quality whoole leaf teaa to create
`a
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`highlly flavoredd green teaa. The disstinctive ssilver needdle
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`whitee is the bassis of whitee jasminee tea.
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`10. An arrticle posteed on the BBrightHub.
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`1, 2009).12 com websitte (July 31
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`(Emphaasis added).
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`ne Tea s of JasminHealtth Benefits
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`*
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`*
`**
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`or blaack) that hhave been fllavored witth jasminee flowers.
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`Jasmmine tea is mmade fromm tea leavess (green, ooolong, whitte,
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`11 Septemmber 8, 2010 Office actiion
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`12 Augusst 31, 2009 OOffice actionn.
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`5
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`

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`Serial No. 77115548
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`*
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`*
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`*
`Preparing Jasmine Tea
`Green jasmine tea …
`Oolong jasmine tea …
`White jasmine tea: Bring water temperature to 185° F,
`pour 1 cup of water over 2 teaspoons of loose leaf, cover,
`steep 5-8 minutes, and strain.
`Black jasmine tea …
`
`*
`*
`*
`Green and white jasmine teas are best for iced tea. …
`11. An article posted in the FoodsEditorials.com website.13 (Emphasis
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`
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`added).
`
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`Tea: How is Jasmine Tea Different From Other Teas?
`*
`*
`*
`So, if you’re in the market for jasmine tea, which should
`you choose?
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`*
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`*
`
`*
`Jasmine Green Tea? …
`Oolong Jasmine Tea? …
`White Jasmine Tea? The combination of light and
`sweet tea with fragrant jasmine makes for a very delicate
`flavor. As white tea gains popularity in the Western
`world, it’s likely that white jasmine tea will become easier
`to find. Because white tea, like green tea, is unfermented,
`you’ll gain the same health benefits from drinking white
`tea that green tea provides.
`Black Jasmine Tea? …
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`13 August 31, 2009 Office action.
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`6
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`Serial No. 77115548
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`12. Another article posted on the FoodEditorials.com website entitled
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`“Tea: Drinking Jasmine Tea.”14 (Emphasis added).
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`Jasmine tea is the most popular variety of flavored tea.
`This is in part because Jasmine has been used to scent
`and flavor every variety of tea: white, black, green and
`oolong. So, no matter what your preference in tea, there
`is a Jasmine tea for you.
`*
`*
`*
`While the majority of jasmine tea is green tea, there are
`also quite a few white and oolong jasmine teas. White
`tea, in particular, lends itself quite well to being combined
`with jasmine because both offer a sweet and subtle flavor
`and fragrance.
`
`*
`*
`*
`Jasmine tea, particularly, green and white jasmine teas,
`are also wonderful for iced tea.
`13. An article posted on the Tea-Brewery.com website entitled “Why
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`
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`Jasmine Tea is Different from Other Tea.”15 (Emphasis added).
`
`In the Fujian Province of China, the highest quality
`Jasmine tea is grown. The leaves in this location are
`extremely large and they are the most heavily scented. In
`fact, because the leaves are so loose, whether loose green
`tea, loose black tea, loose oolong tea, or loose white tea,
`they have the ability to absorb the fragrance of the
`Jasmine petals [sic] than tea grown anywhere else in the
`world.
`
`*
`Jasmine Green Tea …
`Oolong Jasmine Tea …
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`*
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`*
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`White Jasmine Tea
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`14 March 21, 2010 Office action.
`15 September 8, 2010 Office action.
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`7
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`Serial No. 77115548
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`Another popular type of Jasmine tea uses white tea as the
`base, giving the tea a light and delicate flavor and
`soothing aroma. Interestingly, because white tea is only
`produced once a year and there are few growers, it is
`considered rare. Therefore, quality white tea is a little
`more challenging to find and it is the most expensive tea
`sold.
`For over 700 years, white tea was consumed only in Asian
`countries and for special occasions such as formal tea
`ceremonies. However, this type of tea is now very popular
`in westernized countries. Because of growing consumer
`demand, finding good white tea is a little more difficult to
`find. This type of tea is also unfermented, meaning it has
`a high level of antioxidants and very little caffeine just
`like green tea does.
`Black Jasmine Tea …
`14. An article posted on the Buzzle.com website (May 26, 2007).16
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`
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`(Emphasis added).
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`
`Ordering Jasmine Tea Online
`Most tea drinkers have tried some form of jasmine tea at
`one time or another. And, most love at least one variety
`of jasmine tea. However, there are so many varieties of
`jasmine tea that it may take you some time to try them
`all! Jasmine tea is created by blending just bloomed
`jasmine petals with fine loose tea. The result is an
`incredible fragrance and a sweet flavor.
`*
`*
`*
`So, while you’re ordering, be sure to sample the many
`flavors that can be found in jasmine tea.
`Jasmine Green Tea …
`Oolong Jasmine Tea …
`White Jasmine Tea – The combination of light and
`sweet white tea with a fragrant jasmine makes for a very
`
`16 August 31, 2009 Office action.
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`8
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`

`
`Serial No. 77115548
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`delicate flavor. This is one tea that even most non tea
`drinkers can enjoy. And, white tea carries all the health
`benefits of green tea. White tea is the rarest of all teas, so
`white jasmine tea may be a bit more difficult to find than
`other jasmine teas.
`Black Jasmine Tea …
`15. An article posted on the Buzzle.com website (June 7, 2007).17
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`
`
`(Emphasis added).
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`Tea: Grading Jasmine Tea
`What makes jasmine tea so wonderful is its special blend
`of high quality loose tea leaves with jasmine petals. The
`jasmine petals impart a delicate yet very aromatic
`fragrance and a slightly sweet flavor to the tea.
`Jasmine tea is the most popular flavored tea in the world.
`The first jasmine tea was produced in China and made
`from green tea. Today, however, jasmine flowers are used
`to scent teas from all over the world, in black, white,
`green and oolong varieties.
`What makes jasmine tea so wonderful is its special blend
`of high quality loose tea leaves with jasmine petals. The
`jasmine petals impart a delicate yet very aromatic
`fragrance and slightly sweet flavor to the tea.
`*
`*
`*
`So, understanding how the jasmine tea you’re considering
`is graded really means understanding how the tea variety
`that the jasmine tea is made from is graded. Here are
`some examples to help make it easier to understand.
`Black Tea …
`Green Tea …
`Oolong Tea …
`White Tea
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`17 June 18, 2007 Office action.
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`9
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`Serial NNo. 77115548
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`White tea’s graading is soomewhat ssimpler, beecause wheen
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`the teea leaves wwere plucked is not ppart of deteermining thhe
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`qualiity. All white tea iss from a fifirst pluckiing, becausse
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`theree is only
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`one pluckking of whhite tea dduring eacch
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`growiing seasonn. Therefore, choosinng white jjasmine teea
`from
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`China simmply meanss choosing
`one of the
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`two higheest
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`gradees of whitte tea, Siilver Needdles or WWhite Peonny.
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`Howeever, if youu choose a
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`white Ceyllon jasminne or a whiite
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`Darjeeeling jasmmine tea, the graading will
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`be totallly
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`differrent.
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`To choose a ggood jasmiine tea, bbegin by
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`determininng
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`whether you
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`want a wwhite, greeen, blackk or oolonng
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`jasmmine tea.
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`16. WebIIndia123.coom websitee featuringg a gardeninng page abbout Jasmiine.18
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`The webbpage repoorts that thhe common
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`name of thhe jasminee plant is “PPoets Jasmmine,
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`Common White Jaasmine.”
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`hite flowe
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`rs
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`Jasmmine or Jesssamine, tthe sweet-sscented w
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`belonngs [sic] to the genus Jasminumm. …
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`Growwn all oveer the world for itss fragrancce, Jasminne
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`floweers are used to flavor jasmine teea and othher herbal oor
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`blackk teas.
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`17. Engliish-Countrry-Garden.ccom websitte advertissing the saale of “Commmon
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`lants.19 White JJasmine” pl
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`18 Augusst 31, 2009 OOffice actionn.
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`19 Augusst 31, 2009 OOffice actionn.
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`10
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`

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`Serial NNo. 77115548
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`8. Wikippedia entryy for jasmiine.20 The
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`photograpphs displayy white flowwers.
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`1
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`n below. nch, shownsmine Brane White Jasnting “Theraph of painThere iss a photogr
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`Inn its Decemmber 17, 20007 responnse, applicaant submittted evidencce to show
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`that
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`the termm “White JJasmine” iidentifies aa particulaar scent. TThe PerfummeCountryy.com
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`webpage advertisees “White JJasmine PPerfume byy Woods of
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`Windsor.”” A news sstory
`
`
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`posted
`
`
`
`on TheSceentedLife.ccom website (Novemmber 27, 22007) desccribes a wwhite
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`jasminee and mint fragrance.
`
`The SScented Liffe: All about fragrannce
`
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`
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`Jo Malone Whitte Jasminee & Mint
`ne, scent fromm Jo Malon
`
`
`
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`mes a new e pond comFromm across th
`
`
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`
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`nichee perfumerr whose Orange Blosssom perfumme combinees
`
`
`
`
`
`
`
`
`a sorrt of naturaalism withh minimaliism in a veery pleasinng
`way.
`
`
`
`
`
` This lateest perfume is inspirred by a suun drencheed
`mornning in an
`
`
`
`
`
`nt ne and Minhite JasminEnglish gaarden, Wh
`
`captuures the
`
`
`scent of jjasmine, wwild rose
`
`and whiite
`
`
`
`
`
`nt. of wild mincted twist oan unexpecblossoms with a
`
`
`
`
`We findd this evidence releevant not
`
`only becaause scent
`
`
`
`is one off the quallities
`
`
`
`consumers perceiive in tea and tea
`
`
`
`
`
`
`
`beveragess, but als
`
`o because
`
`
`
` if consummers
`
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`recognizze WHITE JASMINEE as a fraggrance, wee infer thatt they recoognize it hhas a
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`20 Appliccant’s September 1, 20110 response..
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`Serial No. 77115548
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`flavor. See e.g., WebIndia123.com (“Grown all over the world for its fragrance,
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`Jasmine flowers are used to flavor jasmine tea”); Buzzle.com (June 7, 2007) (“The
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`jasmine petals impart a delicate yet very aromatic fragrance and a slightly sweet
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`flavor to the tea.”); FoodEditorials.com (“Jasmine tea is the most popular variety of
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`flavored tea. This is in part because Jasmine has been used to scent and flavor
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`every variety of tea”).
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`The examples of competitors’ use of the term “White Jasmine” as the name of
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`their goods is persuasive evidence that the relevant consumers perceive the term as
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`the name of a type of tea (e.g., Choice Organic White Jasmine Tea, Argo White
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`Jasmine Tea, and White Jasmine Spring Bud). Continental Airlines Inc. v. United
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`Airlines Inc., 53 USPQ2d 1385, 1395 (TTAB 1999) (“evidence of competitors’ use of
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`particular words as the name of their goods or services is, of course, persuasive
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`evidence that those words would be perceived by purchasers as a generic
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`designation for the goods or services”) (citation omitted); see also Corbin v. Gould,
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`133 U.S. 308, 313-14 (1890) (where those in the tea business used the term “Tycoon”
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`to describe a class of teas, the term was incapable of protection, and instead was “a
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`term which all men engaged in the tea business had an equal right to use, and
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`which belonged to no one individual, either as a trade-mark or a trade label. It
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`belonged to the public, as the common property of the trade . . . .”)
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`
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`A. Whether the wording “White” in the mark is deceptive under Section 2(a) of
`the Trademark Act of 1946, 15 U.S.C. § 1052(a)?
`This application has had a difficult prosecution as evidenced, in part, by its
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`February 24, 2007 filing date. In the September 16, 2008 Office action (the third
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`Serial No. 77115548
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`Office action), the Trademark Examining Attorney refused registration on the
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`ground that applicant’s mark is deceptive under Section 2(a) of the Trademark Act
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`because applicant’s goods do not include white jasmine.
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`In the March 5, 2010 Office Action (the fifth Office action), the Trademark
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`Examining Attorney withdrew the Section 2(a) deceptiveness refusal with respect to
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`the term “White Jasmine” but continued the refusal as to the term “White.”21 The
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`Trademark Examining Attorney provided the following explanation for the refusal:
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`In this case, applicant’s mark includes the wording
`“WHITE,” which indicates that the goods contain white
`tea. This feature or ingredient is important to a
`significant portion of the relevant consumers’ purchasing
`decision because white tea is believed to have health
`benefits.
`If the goods do not, in fact, contain white tea, the applied-
`for mark will deceive the public as to a material factor in
`its purchasing decision.
`Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a), is an absolute bar to
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`the registration of deceptive matter on either the Principal Register or the
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`Supplemental Register. It is well established that a mark may be found deceptive
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`on the basis of a single deceptive term that is embedded in a larger mark,22 and
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`neither a disclaimer of the deceptive matter nor a claim that it has acquired
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`distinctiveness under § 2(f) can obviate a refusal under § 2(a) on the ground that the
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`21 The issue of whether the term WHITE JASMINE is deceptive is therefore not before us.
`Moreover, the issue of whether the word “Jasmine” is deceptive when used in connection
`with tea other than jasmine tea is not before us.
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`22 See 15 U.S.C. § 1052(a) (a trademark is ineligible for registration if “it [c]onsists of or
`comprises . . . deceptive matter”) (emphasis added). See generally In re Fox, 702 F.3d 633,
`638 (Fed. Cir. 2012) (in § 1052(a), the term “comprises” means “includes”).
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`mark consists of or comprises deceptive matter. See Am. Speech-Language-Hearing
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`Ass’n v. Nat'l Hearing Aid Society, 224 USPQ 798, 808 (TTAB 1984); In re Charles
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`S. Loeb Pipes, Inc., 190 USPQ 238, 241 (TTAB 1975).
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`The issue on appeal is whether the mark is deceptive as applied to any of the
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`goods in the application. See In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694,
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`1695 (TTAB 1992) (“The only issue on appeal therefore is whether the mark is
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`deceptive as applied to the goods in the application.”). See also In re Analog Devices
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`Inc., 6 USPQ2d 1808, 1810 (TTAB 1988), aff’d without pub. op., 871 F.2d 1097, 10
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`USPQ2d 1879 (Fed. Cir. 1989) (if the mark is descriptive of any of the goods or
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`services for which registration is sought, it is proper to refuse registration as to the
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`entire class).
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`The Court of Appeals for the Federal Circuit, our primary reviewing court,
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`has articulated the following test for whether a mark consists of or comprises
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`deceptive matter:
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`(1)
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`Is the term misdescriptive of the character, quality, function,
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`composition or use of the goods?
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`(2)
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`If so, are prospective purchasers
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`likely to believe that the
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`misdescription actually describes the goods?
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`(3)
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`If so, is the misdescription likely to affect a significant portion of the
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`relevant consumers’ decision to purchase?
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`In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988), aff’g 8
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`USPQ2d 1790 (TTAB 1987).
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`Serial No. 77115548
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`1.
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`Is the term “White” in the mark WHITE JASMINE misdescriptive of
`the character, quality, function, composition or use of the goods?
`As the starting point for our analysis, we note that for a term to misdescribe
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`goods, the term must be merely descriptive of a significant aspect of the goods which
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`the goods could plausibly possess but in fact do not. In re Phillips-Van Heusen
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`Corp., 63 USPQ2d 1047, 1051 (TTAB 2002). The goods at issue in this case include,
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`inter alia, tea. Indeed, tea encompasses “beverages made of tea.” “Tea” is defined,
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`inter alia, as “an aromatic beverage prepared from tea leaves by infusion with
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`boiling water.”23 According to the ENCYCLOPEDIA BRITANNICA,
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`Tea, beverage produced by steeping in freshly boiled
`water the young leaves and leaf buds of the tea plant,
`Camellia sinensis.24
`Thus, the goods at issue are tea, and, as shown by the evidence above, the
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`term WHITE JASMINE refers to a type of tea (i.e., white jasmine tea). White
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`jasmine tea is a subcategory of two types of tea: white tea and jasmine tea.25
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`Consequently, the word “White” immediately describes, without conjecture or
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`speculation, a significant ingredient of tea. That is, tea purchasers will clearly
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`understand that because white tea is a type of tea, the word “White” in the term
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`23 MERRIAM-WEBSTER ONLINE DICTIONARY AND THESAURUS (m-w.com) (2012). The
`Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C.
`Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505
`(Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular
`fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
`24 The Board may take judicial notice of information from encyclopedias. Productos Lacteos
`Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 n.6 (TTAB
`2011).
`25 See e.g., the article “Tea: Grading Jasmine Tea” posted on the Buzzle.com website (May
`26, 2007) identifying white jasmine as a type of jasmine tea and white tea (August 31, 2009
`Office action) (“choosing a quality white jasmine tea from China simply means choosing one
`of the two highest grades of white tea.”).
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`Serial No. 77115548
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`WHITE JASMINE designates that the tea is white tea or at least contains white
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`tea.
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`Applicant has indicated that its tea does not contain white tea leaves (see
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`Applicant’s February 24, 2011, Request for Reconsideration, part III), yet
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`consumers will expect, upon encountering WHITE JASMINE on applicant’s goods,
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`that the goods will consist in significant part of white tea. We note that applicant’s
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`identification of goods includes “black tea,” but there is nothing in the record to
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`indicate that white tea includes black tea.
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`Accordingly, it is clear that the term WHITE JASMINE misdescribes tea that
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`is not white tea and, in this case, includes black tea.
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`2.
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`Are prospective purchasers likely to believe that the misdescription
`actually describes the goods?
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`Given the various types of teas (e.g., black, green, white and oolong), their
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`popularity and specific attributes, it is quite likely that customers of applicant’s
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`products would believe that applicant’s tea is white tea when it could be any of the
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`above-noted teas.
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`3.
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`Is the misdescription likely to affect a significant portion of the
`relevant consumers’ decision to purchase?
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`To establish that the misdescriptive quality or characteristic would be a
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`material factor in the purchasing decision of a significant portion of the relevant
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`consumers, the examining attorney must provide evidence that the misdescription
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`would make the product or service more appealing or desirable to prospective
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`purchasers. In re Juleigh Jeans Sportswear Inc., 24 USPQ2d at 1698-99; TMEP
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`Serial No. 77115548
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`§1203.02(d). Here, to support the contention that white tea is more appealing or
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`desirable because it provides health benefits, the Examining Attorney introduced
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`the evidence listed below.
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`a.
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`The Wikipedia entry for “white tea” provides that studies have
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`shown that “white tea had high anti-inflammatory, anti-collagenase, and anti-
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`elastase properties which could potentially reduce the risks of developing
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`rheumatoid arthritis, some cancers, heart disease & slow the enzymatic break down
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`of elastin and collagen (ie [sic] wrinkles or sagging) which accompany aging.”26
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`b.
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`About.com: Alternative Medicine
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`This webpage features an article entitled “White Tea – Benefits of White Tea”
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`(May 27, 2009).27 It identifies and discusses how white tea helps obesity control,
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`cancer prevention, and skin protection.
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`c.
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`eHow.com
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`This webpage features an article entitled “How to Drink White Tea to
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`Prevent the Common Cold” by Kristie Leong, M.D.28 Dr. Leong writes that white
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`tea can help to reduce the incidence of colds and bacterial and viral infections.
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`d.
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`Articlesbase.com
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`This webpage features an article entitled “Lose Weight On White Tea Diet”
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`(May 8, 2009).29 The article reports that “white tea has special qualities that can
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`26 March 5, 2010 Office action.
`27 March 5, 2010 Office action.
`28 March 5, 2010 Office action.
`29 March 5, 2010 Office action.
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`Serial No. 77115548
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`help you lose weight.” “The latest tests have shown that compounds in white tea
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`prevent the storage of fat and helps break down existing fat deposits in the body.”
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`e. White Tea Guide (whiteteaguide.com)30
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`Health Benefits Of White Tea
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`Tea has been used as a medicine for centuries. Now
`modern science is discovering what people in China and
`throughout the world have long known: tea is good for
`you. While green and black tea are very healthy, white
`tea is the least processed tea and has the highest
`antioxidant levels. It may be the supreme Drink of
`Health.
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`The article in this website identifies and discusses the following benefits of white
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`tea: high levels of antioxidants, cancer prevention, lower blood pressure, lower
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`cholesterol, heart protection, creates stronger bones, natural killer of bacteria and
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`viruses, and promotes healthier teeth and gums.
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`f.
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`Suite101.com31
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`Health Benefits of White Tea (March 29, 2008)
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`Increases Bone Density, Fights Cancer, Lowers
`Cholesterol and More
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`Learn the facts about white tea. This 5,000 year old
`beverage is showing promise in keeping you healthy. It’s
`also delicious and easy to make.
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`*
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`*
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`*
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`Health Benefits of White Tea
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`What’s all the fuss about? Well, you name it. Undergoing
`less processing than many other tea varieties, white tea
`can have ten times the antioxidant power of Vitamin E
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`30 September 8, 2010 Office action.
`31 September 8, 2010 Office action.
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`Serial No. 77115548
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`and impressively high concentration of polyphenols and
`catechins. This power punch can help fight the ravages of
`aging caused by free radicals in your system. It can also
`help to lower cholesterol and inhibit the development of
`cancer cells. Side benefits include white tea’s ability to
`help increase bone density, aid the immune system, and
`help lower blood pressure.
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`g. White Tea (whitetea.com)32
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`Benefits of White Tea
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`Tea has been used for medicinal purposes for centuries.
`In ancient China, people used white tea to cure many
`different ailments; and while they may not have
`understood the reason tea made them feel better, they
`knew it worked. Over the past few decades, however,
`science has discovered that the benefits of white tea are
`more than just the drinker’s imagination. In fact, the
`benefits of white tea are more than even the scientist’s
`thought they would find.
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`The webpage identifies and discusses the antioxidants that help fight aging, cancer
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`and diabetes, the fluoride that helps fight tooth decay, and that white tea drinkers
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`have greater bone density. See also FoodEditorials.com (“White Tea Health
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`Benefits”); Tea-Brewery.com (white jasmine tea has a high level of antioxidants and
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`very little caffeine), Tenren.com (white tea may have the strongest anti-cancer
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`potential of all teas)
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`The evidence establishes that consumers perceive that white tea has
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`desirable health benefits. Thus, the misdescription is material to consumers
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`interested in purchasing or drinking white tea to obtain these health benefits, and
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`is likely to induce such purchasers to buy or drink the tea. The word “White,” which
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`32 September 8, 2010 Office action.
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`Serial No. 77115548
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`describes applicant’s tea as believably being a white tea, is therefore deceptive
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`within the meaning of Section 2(a) of the Trademark Act.
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`B. Whether the term “White Jasmine” should be disclaimed as either
`deceptively misdescriptive or generic?
`Because the refusal as deceptive under Section 2(a) absolutely bars
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`registration, the question of a disclaimer of a portion of the mark becomes moot.
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`However, in the interest of completeness, the disclaimer requirement will be
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`considered in the alternative. According to the Trademark Examining Attorney,
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`“applicant must disclaim the wording ‘WHITE JASMINE’ apart from the mark as
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`shown because the wording is generic or deceptively misdescriptive in the context of
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`applicant’s goods, namely, ‘Beverages made of tea; Black tea; Flavourings of tea;
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`Spice Blends; Spices.’”33 While the examining attorney could not, it appears, decide
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`unequivocally on the basis for the disclaimer requirement, we ultimately find
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`“WHITE JASMINE” deceptively misdescriptive for the identified goods, and affirm
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`the disclaimer requirement on that ground.
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`As noted above, the mark includes a design element in addition to the
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`wording WHITE JASMINE. Section 6(a) of the Trademark Act, 15 U.S.C. § 1056(a)
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`reads, in relevant part, as follows:
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`The Director may require the applicant to disclaim an
`unregistrable component of a mark otherwise registrable.
`A disclaimer is a statement that the applicant or registrant does not claim
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`the exclusive right to use a specified element or elements of the mark in a
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`trademark application or registration. “The effect of a disclaimer is to disavow any
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`33 Trademark Examining Attorney Brief, p. 6 (unnumbered).
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`Serial No. 77115548
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`exclusive right to the use of a specified word, phrase, or design outside of its use
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`within a composite mark.” In re Franklin Press, Inc., 597 F.2d 270, 201 USPQ 662,
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`665 (CCPA 1979); see also Sprague Electric Co. v. Erie Resistor Corp., 101 USPQ
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`486, 486-87 (Comm’r Pats. 1954) (“As used in trade mark registrations, a disclaimer
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`of a component of a composite mark amounts merely to a statement that, in so far
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`as that particular registration is concerned, no