Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE BONGRAIN INTERNATIONAL (AMERICAN) CORP.
Serial No. 576,010
September 28, 1990
Hearing: August 23, 1990
Thomas E. Young, Robert V. Vickers, Alfred C. Body and/or E. Kent Daniels, Jr. for applicant
Jerry L. Price
Trademark Examining Attorney
Law Office 2
(Ron Williams, Managing Attorney)
Before Simms, Hanak and Quinn
Bongrain International (American) Corp. (applicant) has appealed from the final refusal of the Trademark Examining Attorney to register on the Supplemental Register the asserted mark BABY BRIE for soft ripened cheese sold to consumers in the form of a wheel. [FN1] The Examining Attorney has refused registration on the basis that BABY BRIE is the apt name of applicant's goods and is therefore incapable of identifying its goods and distinguishing them from those of others. Applicant, on the other hand, contends that while the evidence of record may support the descriptiveness of the term "baby" or "mini" in connection with smaller size Brie cheese, there is nothing in this record which supports consumer recognition of either of these terms as defining a separate genus or category of Brie cheese.
This is the third time applicant has been before the Board seeking to register the asserted mark BABY BRIE for soft ripened cheese. In the first case, In re Bongrain International Corp., 229 USPQ 67 (TTAB 1985) (Bongrain I), the Board held that these words were merely descriptive of applicant's cheese ("The fact that the term ["baby"] is used in a descriptive manner as to a variety of cheeses indicates that it would be afforded the same connotation by purchasers when used with other cheeses as well, including brie."). In In re Bongrain International (American) Corp., ___ USPQ2d ___ (TTAB March 31, 1989) (Bongrain II), applicant sought registration of these words on the Principal Register pursuant to the provisions of Section 2(f) of the Act, 15 USC 1052(f). In that case, the Board held:
[W]e believe that this record establishes that the term "BABY BRIE" is an apt descriptive name for Brie cheese because it contains the generic term modified by the size indicator. We believe that purchasers of cheese, aware of the fact that others sell "baby" cheeses in smaller sizes, will not view the term BABY BRIE as an indication of origin but rather will likely understand the expression as a designation of the category or type of cheese being sold.
The Board also held that, even if this term were capable of distinguishing applicant's goods, applicant's evidence of acquired distinctiveness was insufficient to support registrablity. The U.S. Court of Appeals for the Federal Circuit affirmed the Board's decision refusing registration at 13 USPQ2d 1727 (1990). In affirming, the court stated, at 1728-1729:
*2 The evidence of record clearly indicates that "BABY BRIE" is merely descriptive of the product and hence is not registrable. Addition of the modifier "baby" signifies simply small size. There is ample evidence that in the food industry "baby" is often used to indicate size. The Board points out that a 1977 price list shows that the term "baby" was used in the retail cheese business "as a size indicator with respect to a number of different cheeses" long before Bongrain began using it in 1983. The Board lists also seven instances of use of the term with respect to different varieties of cheese. It is likewise used in the food industry generally as a size indicator with respect to vegetables and other products ...
Even if Bongrain's packages are slightly larger than those of some competitors, they may still properly be regarded by purchasers as "baby" size, since they are less than half the size described in Larousse Gastronomique as small ...
The Board likewise ruled correctly that appellant's evidence as to acquired distinctiveness or secondary meaning was insufficient to permit registration under Section 1052(f). Growth in sales was the principal factor upon which appellant relied to show distinctiveness. But, as the Board observed (App. 9), this may indicate the popularity of the product itself rather than recognition of the mark "BABY BRIE" as indicative of origin; or it may indicate acceptance of Bongrain's other mark "Alouette", which was used along with "BABY BRIE" on the packages (App. 23). [Footnotes omitted.]
The record in this case is substantially identical to that before the Board and the Court in Bongrain II. It consists of, among other things, an excerpt from Larousse Gastronomique: The Encyclopedia of Food, Wine & Cookery, by Prosper Montagne (1961), indicating that Brie cheeses are made in a variety of sizes and that a small wheel would not exceed thirteen inches in diameter; excerpts from the LEXIS/NEXIS database showing that the term "baby" has been used as a size indicator with respect to a number of different cheeses other than Brie; a 1977 price list from Gourm-E-Co Imports, a gourmet cheese shop, showing that the term "baby" was then used in the trade as a size indicator with respect to a number of different cheeses long before applicant began using the term; and other LEXIS/NEXIS excerpts showing that the term "baby" is used as a size designator with respect to a number of different food products.
More particularly, the evidence contains references to reports carried by the wire services making references to "Baby Goudas" and "baby Edams." The price list of the gourmet cheese shop contains listings of seven "Baby" cheeses including "Baby Swiss," "Baby Muenster," "Baby Cheshire" and "Baby Red Goudas." The food references which include the term "baby" show it used as a size designation for a variety of foods other than cheese, such as "baby eggplant," "baby pears," "baby asparagus spears," "stuffed baby cabbage," "baby spinach salad," "baby carrots," "baby corn," "baby artichoke hearts," "baby cauliflower" and "baby goat cheeses." [FN2]
*3 We agree with what the Examining Attorney has stated in his brief, 7:
The evidence of record clearly shows that the term "Baby" functions only as a size indicator amounting to a subgenus of small cheeses. This meets the first test set forth in Ginn [H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed.Cir.1986) ]. The evidence also reveals that members of the food trade and the consuming public recognize the term "Baby" as referring to a subgenus of small cheeses. This meets the second Ginn test.
Applicant's asserted mark is an apt descriptive name for its Brie cheese because it contains the generic term modified by the size indicator. We believe that purchasers of cheese, aware of the fact that others sell "baby" cheeses, will not view the term BABY BRIE as an indication of origin but will simply understand these words as a designation of a category of Brie cheese (smaller Brie cheese). [FN3] We believe that the Office has satisfied its evidentiary burden by producing evidence, including dictionary definitions, analogous trade usage and usage in other material which has been exposed to the purchasing public, that the separate words joined to form applicant's mark have a meaning identical to the meaning common usage would ascribe to those words. In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111-1112 (Fed.Cir.1987). See also In re Armour and Company, 220 USPQ 76 (TTAB 1983) ("THE PETITE FILET" for canned ham held unregistrable on the Supplemental Register). Because we believe that this asserted mark is generic and would be perceived by the purchasing public as a common or apt name for applicant's small Brie cheese rather than as a mark identifying the source of applicant's goods, the refusal of registration must be upheld.
Decision: The refusal of registration is affirmed.
R. L. Simms
E. W. Hanak
T. J. Quinn
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 576,010, filed January 2, 1986, claiming use since September 7, 1983.
FN2. Applicant's argument made in its reply brief, 4, that the term "baby" used in connection with vegetables is used only in a "descriptive" manner and not a "generic" manner is not understood. It can hardly be argued that such terms as "baby eggplant" or "baby carrots" are merely descriptive terms which are capable of indicating origin in any one entity.
FN3. "Baby" is defined in Webster's Third New International Dictionary (1976) as follows: