From: Eisnach, Michael
`
`
`
`Sent: 8/25/2016 12:02:44 PM
`
`
`
`To: TTAB EFiling
`
`
`
`CC:
`
`
`
`Subject: U.S. TRADEMARK APPLICATION NO. 86321169 - GOLDENBERRY - Volcano-TM-0 - EXAMINER
`BRIEF
`
`
`
`*************************************************
`
`Attachment Information:
`
`Count: 1
`
`Files: 86321169.doc
`
`
`
`
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`
`
`U.S. APPLICATION SERIAL NO. 86321169
`
`
`
`MARK: GOLDENBERRY
`
`
`
`
`
`CORRESPONDENT ADDRESS:
` IRA COHEN, ESQ.
`
`
` HENKEL & COHEN, P.A.
`
` 18001 OLD CUTLER RD STE 600
`
` MIAMI, FL 33157-6444
`
`
`
`
`
`
`
`
`
`APPLICANT: Volcano Produce, Inc.
`
`
`
`CORRESPONDENT’S REFERENCE/DOCKET NO:
`
` Volcano-TM-0
`
`CORRESPONDENT E-MAIL ADDRESS:
`
` ic@miamibusinesslitigators.com
`
`
`
`*86321169*
`
`
`
`GENERAL TRADEMARK INFORMATION:
`
`http://www.uspto.gov/trademarks/index.jsp
`
`
`
`TTAB INFORMATION:
`
`http://www.uspto.gov/trademarks/process/appeal/index.js
`p
`
`
`
`EXAMINING ATTORNEY’S APPEAL BRIEF
`
`
`
`
`
`
`Applicant, Volcano Produce, Inc., has appealed the trademark examining attorney’s final refusal
`
`to register the mark GOLDENBERRY in standard characters for “fresh fruits” pursuant to Trademark Act
`
`Section 2(e)(1), 15 U.S.C. §1052(e)(1), on the grounds that the mark is merely descriptive of the applied-
`
`for goods.
`
`I.
`
`FACTS
`
`

`
`On June 26, 2014, Volcano Produce, Inc. applied for the mark GOLDENBERRY in connection with
`
`“fresh fruit” in International Class 31 on the Principal Register.
`
`On October 9, 2014, registration was refused pursuant to Trademark Act Sections 1, 2, and 45,
`
`15 U.S.C. §§1051-1052, 1127, for the applied-for mark being a varietal name of a type of fruit, as well
`
`under Sections 1, 2 and 45 of the Trademark Act, 15 U.S.C. §§1051, 1127 for failure to provide a
`
`specimen of use for an application filed under Section 1(a) of the Trademark Act. In addition, a
`
`requirement for information about the goods was issued under 37 C.F.R. §2.61(b).
`
`On April 9, 2015, applicant responded to the initial Office action and provided a specimen of use
`
`and responded to the information requirement under 37 C.F.R. §2.61(b).
`
`On April 29, 2015, based on applicant’s response, the varietal refusal under Trademark Act
`
`Sections 1, 2, and 45 was withdrawn. However, a refusal under Section 2(e)(1) was issued for the
`
`applied-for mark being merely descriptive. In addition, applicant’s specimen was refused under
`
`Trademark Act Sections 1, 2 and 45, 15 U.S.C. §§1051, 1127.
`
`On October 29, 2015, applicant responded to the subsequent Office action by providing a
`
`substitute specimen of use.
`
`On November 18, 2015, the trademark examining attorney issued a final Office action under
`
`Section 2(e)(1) of the Trademark Act and withdrew the Section 1, 2 and 45 refusal based on applicant’s
`
`substitute specimen.
`
`On January 11, 2016, applicant filed a request for reconsideration of the Section 2(e)(1) refusal,
`
`which was denied on February 1, 2016.
`
`On May 13, 2016, applicant filed the instant appeal.
`
`II.
`
`ISSUE ON APPEAL
`
`

`
`The sole issue on appeal is whether applicant’s mark is merely descriptive of the applied-for
`
`goods under Section 2(e)(1) of the Trademark Act.
`
`Applicant states that the mark was refused in the alternative for being generic in the April 29,
`
`2015, Office action; however, the section referred to by the applicant was not a refusal, rather it was an
`
`advisory indicating that because the mark appeared to be generic, no amendment to proceed under
`
`Trademark Act Section 2(f) nor an amendment to the Supplemental Register could be recommended.
`
`See Applicant’s Brief p. 2. Applicant has never amended the application to the Supplemental Register
`
`nor has the instant application ever been refused under Section 23(c) of the Trademark Act. See TMEP
`
`1209.02(a).
`
`III.
`
`ARGUMENT
`
`GOLDENBERRY, WHEN USED IN CONNECTION WITH APPLICANT’S GOODS, IS MERELY DESCRIPTIVE OF
`A FEATURE OF APPLICANT’S GOODS
`
`
`
`A mark is merely descriptive if it describes an ingredient, quality, characteristic, function,
`
`feature, purpose, or use of an applicant’s goods. TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d
`
`872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171,
`
`1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)).
`
`A. Applicant’s Mark is Merely Descriptive of a Feature of Applicant’s Goods
`
`
`
`Here, applicant’s mark is GOLDENBERRY in connection with “fresh fruits.” GOLDEN is defined as
`
`“colored or shining like gold” and “having a deep yellow color of gold.” See the definition from the
`
`Oxford Dictionaries and Merriam-Webster, respectively, February 1, 2016 Request for Reconsideration
`
`pp.5-6, 14-15. BERRY is defined as “a small roundish juicy fruit without a stone” and “a small fruit…that
`
`has many small seeds.” See id. at pp. 2-3, 8-9. Thus, applicant’s mark conveys that the goods are berries
`
`that are golden in color. In fact, applicant’s goods are berries that are golden in color. See Applicant’s
`
`

`
`Specimen submitted on October 29, 2015. Moreover, applicant concedes that “[t]he fruit is a berry…”
`
`Applicant’s Brief p. 12. However, applicant contends the goods are “yellow in color” and that “[t]here is
`
`no ‘golden’ color.” Id. On the other hand, multiple dictionary definitions of record indicate that golden
`
`is a shade of yellow. Further, applicant also states in its brief, “[t]o be sure, there are many kinds of
`
`berries and, as discussed, infra, many are yellow or golden in color.” Id. at p. 13. Thus, applicant’s mark
`
`is merely descriptive of a feature of the goods.
`
`Generally, if the individual components of a mark retain their descriptive meaning in relation to
`
`the goods, the combination results in a composite mark that is itself descriptive and not registrable.
`
`See, e.g., In re Leonhardt, 109 USPQ2d 2091 (TTAB 2008) (BOBBLE POPS held merely descriptive for
`
`"candy," which the record showed was a lollipop candy featuring a bobble head device); In re Cox
`
`Enters., 82 USPQ2d 1040, 1043 (TTAB 2007) (holding THEATL merely descriptive of publications
`
`featuring news and information about Atlanta where THEATL was the equivalent of the nickname THE
`
`ATL for the city of Atlanta). Here, the components of the mark comprise a nickname for the type of fruit
`
`offered by the applicant. Applicant’s packaging states “goldenberry, also known as uchuva, cape
`
`gooseberry or physalis peruviana, is a super fruit native to South America,” which implies that
`
`“goldenberry” is one of several names by which the fruit is known. See October 29, 2015, Response to
`
`Office action, p.2. Only where the combination of descriptive terms creates a unitary mark with a
`
`unique, incongruous, or otherwise nondescriptive meaning in relation to the goods is the combined
`
`mark registrable. See In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013). In this case, both
`
`the individual components and the composite result are descriptive of applicant’s goods and do not
`
`create a unique, incongruous, or nondescriptive meaning in relation to the goods. Moreover, applicant
`
`has not put forth any alternative meanings of the mark that are not merely descriptive of the goods. As
`
`a result, applicant’s mark is merely descriptive of applicant’s goods.
`
`

`
`B. GOLDENBERRY Immediately Conveys Knowledge About a Feature of the Applied-For Goods and
`is Understood By Consumers to Describe the Applied-For Goods
`
`
`
`A mark is also merely descriptive if “it immediately conveys knowledge of a quality, feature,
`
`function, or characteristic of [an applicant’s] goods.” In re The Chamber of Commerce of the U.S., 675
`
`F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488
`
`F.3d 960, 963, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). Here, the evidence of record makes clear that
`
`GOLDENBERRY immediately conveys to consumers that the goods are berries that are golden in color.
`
`On the other hand, applicant states “[a] fair degree of one’s imagination is required to make the leap
`
`from the mark to what goods are involved.” Applicant’s Brief p. 12. Applicant does not state what
`
`imagination or thought a consumer must engage in to reach a conclusion about the nature of the goods.
`
`The evidence of record, however, makes clear not only that the mark immediately conveys knowledge
`
`of a feature of the mark but also that consumers associate the words “goldenberry” and “golden berry”
`
`with the applied-for goods. Below are examples from the record of this wording being used in various
`
`media outlets to describe the applied-for goods, namely, fresh fruit.
`
`•
`
`•
`
`•
`
`“Ask in the market and you will hear of Goldenberries, which is descriptive, though it sounds
`
`like strayed in from a rather lush fairy tale.” The Economic Times, See February 1, 2016 Denial
`
`of Request for Reconsideration p.29.
`
` “Once you learn about aronia berries and golden berries, both of which are increasingly
`
`available in stores and online, you’ll be chomping at the bit to sample them.” People.com,
`
`See November 18, 2015 Final Office action pp. 2-7.
`
`“The Pichuberry has become popular throughout the world, and has many alternate names.
`
`It is commonly referred to as a gooseberry, golden berry, Peruvian cherry, and ground berry.”
`
`Fox News Latino, see id. at pp. 31-34.
`
`

`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`“Fresh goldenberries aren’t common outside of South America, but the dried variety is
`
`available at most supermarkets.” HuffingtonPost.com, see id. at pp. 16-17.
`
`“Goldenberries: Also known as Cape gooseberries, these nutrient-dense sweet-and-tart
`
`alleged superfruits grow in high-altitude South American and India, where folk-medicine
`
`practitioners have long used them to combat jaundice.” HuffingtonPost.com, see id. at p. 27.
`
`“European explorers introduced [the ground cherry] to South Africa in the 1800s and that’s
`
`how it got one of its common names, the Cape gooseberry. It’s also known as the Inca berry,
`
`golden berry or my favorite, Amour en cage, or love in a cage. Vermont Public Radio, see id.
`
`at p. 38.
`
`“Golden berries, also known as Physalis peruviana, is South American fruit that’s highly
`
`concentrated with nutrients and bioactive compounds.” Global Healing Center Natural
`
`Health & Organic Living, See April 29, 2015, Office action pp.22-24.
`
`“Golden berries recommended by Dr. Oz for their fat burning properties, are among the
`
`superfoods that people all over the world have begun to incorporate into their daily meal
`
`plans.” RawGuru.com, see id. at pp.28-30.
`
`“Goldenberries contain anti-inflammatory bioflavonoids and are also a good source of
`
`vitamins A (great for eye health!) and C…Have I enticed you to try them for yourself? Whole
`
`Foods stocks Navitas Naturals Goldenberries ($6) and Kopali Organic Goldenberries ($4), but
`
`you can easily order them online.” PopSugar.com, see id. at pp.32-33.
`
`“Though new to the market in the U.S., golden berries have a long history of exportation and
`
`use in Europe, the Middle East, and China.” RenegadeHealth.com, see id. at pp.55-56.
`
`“You’re eating your acai berries, right? What about your goji berries? Okay, then, try this one
`
`– are you eating your goldenberries? Maybe not.” International Business Times, See February
`
`1, 2016, Denial of Request for Reconsideration pp. 37-39.
`
`

`
`On the other hand, applicant contends that the evidence of record is merely a “hodge-podge of
`
`non-academic articles, along with a ‘Wikipedia’ entry, the latter of which clearly is not a scholarly, peer-
`
`reviewed article.” Applicant’s Brief p. 12. However, articles from the online Wikipedia® encyclopedia
`
`may be used to support a refusal or requirement, provided that an applicant has an opportunity to rebut
`
`such evidence and the first use of a Wikipedia article was in a non-final Office action. See In re IP Carrier
`
`Consulting Grp., 84 USPQ2d 1028, 1032 (TTAB 2007); TBMP §1208.03; TMEP §710.01(b). Further,
`
`although the articles of record are not scholarly works or peer-reviewed journals, the articles span a
`
`wide range of sources, from news websites, to business publications, to pop culture magazines, to
`
`health blogs, which would cover a large cross-section of consumers. Material obtained from the
`
`Internet is generally accepted as competent evidence. See In re Leonhardt, 109 USPQ2d 2091, 2098
`
`(TTAB 2008) (accepting Internet evidence to show descriptiveness); TBMP §1208.03; TMEP §710.01(b).
`
`The Internet has become integral to daily life in the United States, with Census Bureau data showing
`
`approximately three-quarters of American households used the Internet in 2013 to engage in personal
`
`communications, to obtain news, information, and entertainment, and to do banking and shopping. See
`
`In re Nieves & Nieves LLC, 113 USPQ2d at 1642. Thus, the widespread use of the Internet in the United
`
`States suggests that Internet evidence may be probative of public perception in trademark examination.
`
`Accordingly, the evidence of record supports that the mark would be perceived by purchasers as being is
`
`merely descriptive of a type of fresh fruit.
`
`Applicant also contends that because the mark does not appear on a “List of Types of Berries
`
`from A to Z” from the GardeningChannel.com nor in a list of USDA List of Approved Names that the
`
`mark cannot be either generic or merely descriptive of the goods. See Applicant’s Brief pp. 12-13.
`
`However, this evidence does not per se demonstrate that the mark is suggestive. The news articles, blog
`
`posts and magazine articles referenced above make clear that “goldenberry” is perceived by the public
`
`as being commonly used name to describe the goods as issue.
`
`

`
`Applicant also contends that “competitors do not need to use the name or mark GOLDENBERRY,
`
`to describe their goods.” Applicant’s Brief p. 15. Two major reasons for not protecting descriptive marks
`
`are (1) to prevent the owner of a descriptive mark from inhibiting competition in the marketplace and
`
`(2) to avoid the possibility of costly infringement suits brought by the trademark owner. In re Abcor Dev.
`
`Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978); TMEP §1209. Businesses and competitors
`
`should be free to use descriptive language when describing their own goods to the public in advertising
`
`and marketing materials. See In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001). In the instant
`
`case, a number of companies use “goldenberry” or variants thereof to describe the goods at issue.
`
`Below are examples of various companies from the evidence of record.
`
`• Health Warrior is launching a line of protein bars featuring lemon goldenberries,
`
`“which is quickly becoming a crowd favorite,” according to Shane Emmett, the co-
`
`founder and CEO of Health Warrior. See November 18, 2015 Final Office action p.
`
`42-44.
`
`• Sunfood Super Foods sells “Golden Berries.” See April 29, 2015 Office action pp. 12-
`
`13.
`
`• BF Bulkfoods sells “Golden Berries.” See id. at p.14.
`
`• Navitas Naturals sells organic “goldenberries.” See id. at p. 15.
`
`• Terrasoul Superfoods sells organic dried “Golden Berries.” See id. at p. 20.
`
`• Essential Living Foods sells organic, raw Goldenberries. See id. at pp. 47-48, 52.
`
`• “Golden berry” has been used in a patent application to describe an ingredient in a
`
`patent application for a drink and preparation method. See id. at pp. 2-5.
`
`Accordingly, the evidence of record makes clear that competitors use the term “goldenberry” to
`
`describe their goods and that consumers understand “goldenberry” to describe the goods at issue.
`
`

`
`Finally, applicant argues that the overwhelming majority of the evidence submitted by applicant
`
`shows the “Cape Gooseberry” is the common name for the fruit at issue. Id. at 12. Indeed, the evidence
`
`of record does show that Cape Gooseberry is another name used in connection with the applied-for
`
`goods. However, “golden berry,” “goldenberry,” “Physalis peruviana,” and “physalis” are all also used to
`
`describe the applied-for goods. Further, the Dictionary of Food: International Cooking Terms from A to
`
`Z, states that Cape Gooseberry is “[a] cherry-sized, yellow-fleshed, slightly sour fruit of a plant Physalis
`
`peruviana originally from Peru…[a]lso called physalis, goldenberry.” October 9, 2015, Office action, p. 9
`
`(emphasis added). Moreover, applicant’s specimens state that applicant’s goods are the Physalis
`
`peruviana. See Applicant’s specimens dated April 9, 2015, and October 29, 2015. Most notably,
`
`applicant’s website lists “Goldenberrys” as a type of fruit, describing the Physalis Peruviana fruit as
`
`“[a]lso known as the Uchuva, Golden Berry, or Inca Berry is native to South America.” See October 9,
`
`2015, Office action, pp. 12-14. Thus, the evidence of record makes clear that the applicant’s goods,
`
`which include the Physalis peruviana, are commonly described as a goldenberry.
`
`IV.
`
`CONCLUSION
`
`The evidence of record demonstrates that the applied-for mark is merely descriptive of the
`
`applied-for goods. Thus, the refusal under Section 2(e)(1) of the Trademark Act should be affirmed.
`
`Respectfully submitted,
`
`
`
`
`
`

`
`/Michael Eisnach/
`
`Examining Attorney
`
`Law Office 104
`
`(571) 272-2592
`
`Michael.Eisnach@uspto.gov
`
`
`
`
`
`Dayna Browne
`
`Managing Attorney
`
`Law Office 104