IP Law Daily SALAD STATION properly refused for restaurant because it was merely descriptive
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Monday, November 28, 2016

SALAD STATION properly refused for restaurant because it was merely descriptive

By Peter Reap, J.D., LL.M.

A Trademark Examining Attorney properly refused to register Applicant Salad Town’s THE SALAD STATION marks for restaurant services because they were merely descriptive and, for Applicant’s design mark, Applicant failed to submit a required disclaimer, the Trademark Trial and Appeal Board has decided. Thus, the refusals to register were affirmed (In re Salad Town, LLC, November 21, 2016, Kuczma, L.).

Specifically, Applicant sought registration of the two marks THE SALAD STATION (in standard characters) and THE SALAD STATION and Design, both for: Restaurant services in International Class 43. The application for the second of the marks includes the following description: "The mark consists of the word "THE" inside the top curve of a large "S" that stands tall enough to begin the word "SALAD" and "STATION" with the "O" in "station" in the form of a tomato."

The Trademark Examining Attorney refused registration of THE SALAD STATION mark (Application Serial No. 86414039) under Section 2(e)(1) of the Trademark Act, on the ground that the proposed mark is merely descriptive and, as regards the THE SALAD STATION and Design mark (Application Serial No. 86414055), required a disclaimer of the wording in the mark because it is merely descriptive of the identified services. Applicant appealed.

Descriptiveness. For a term to be merely descriptive within the meaning of § 2(e)(1), it is not necessary that the term describe each feature of the goods or services, only that it conveys a single, significant ingredient, quality, characteristic, feature, function, purpose or use of the goods or services with which it is used, the Board noted. The Examining Attorney relied on the definition of "salad station" as a term commonly used to describe a restaurant feature, which is also known as a "salad bar," consisting of a self-service selection of various salad ingredients and toppings, allowing customers to construct their own salad. Additionally, the Examining Attorney submitted screenshots from thirteen third-party websites demonstrating that the term "salad station" is commonly used to describe such a feature of a restaurant.

Based on the Examining Attorney’s evidence, consumers are accustomed to seeing the term "salad station" used to describe a feature of a restaurant that provides a selection of various salad ingredients and toppings, allowing customers to construct their own salad, i.e., a salad bar. Thus, the wording "salad station" merely describes a feature of a restaurant, the Board determined. Additionally, adding the term "THE" to a descriptive term such as "SALAD STATION" does not add any source-indicating significance or otherwise affect the term’s descriptiveness.

A screenshot from Applicant’s website showed that a feature of Applicant’s services is a salad bar. Applicant argued that although its restaurant contains a salad bar, THE SALAD STATION does not describe the restaurant in general, stating "according to the meaning ascribed to it by the Examining Attorney, it would describe only the salad bar within the restaurant, not the restaurant itself."

However, a mark may be merely descriptive even if it does not describe the full scope and extent of Applicant’s services, the Board noted. It is enough that the term describes only one significant function, attribute, or property of the services. Therefore, the wording "The Salad Station" is merely descriptive of Applicant’s restaurant services because, at the very least, it describes a significant feature of Applicant’s restaurant services, even if Applicant also offers soups, spuds, and beverages in addition to a salad station.

A descriptive term immediately and directly conveys some information about the services, the Board stated. If, on the other hand, THE SALAD STATION requires imagination, thought, and perception to arrive at the qualities or characteristics of the services, then the mark is suggestive. Applicant argued that THE SALAD STATION, when used in connection with its restaurant services, is suggestive because "the consumer would see that THE SALAD STATION is actually the name of the restaurant itself. The consumer then needs to use a reasoning process to determine that THE SALAD STATION is actually a full-service restaurant that offers more than a salad bar."

Due to third-parties’ use of the term "salad station" to identify a salad bar, consumers would immediately understand that "salad station" used in Applicant’s mark identifies a feature of Applicant’s restaurant consisting of a selection of various salad ingredients and toppings, allowing customers to construct their own salad. No imagination, thought, or perception is needed to understand that a feature of Applicant’s restaurant is a salad station, according to the Board.

Applicant also submitted copies of third-party registrations for marks containing the term "station," arguing that these "marks use the name of a station as a brand or moniker for the products or services offered as a whole" and have been allowed to register, and therefore Applicant’s mark should also be allowed to register. Applicant relied on only four registrations for service marks that include the word "station," and there was no indication that the records in those cases for phrases such as "taco station" and "chianti station" included the same type of descriptiveness evidence of record for "salad station," the Board reasoned.

Regardless, an applied-for descriptive mark such as THE SALAD STATION does not become registrable simply because four other arguably similar marks appear on the register. Therefore, the refusal under § 2(e)(1) was upheld because the record showed that the mark "THE SALAD STATION" is merely descriptive of restaurant services, the Board explained.

Disclaimer. Merely descriptive terms are unregistrable, under Trademark Act Section 2(e)(1), and, therefore, are subject to disclaimer if the mark is otherwise registrable. Thus, the Examining Attorney properly required Applicant to disclaim "the salad station" component of its otherwise registrable mark in Serial No. 86414055 because it merely describes a characteristic or feature of Applicant’s services and thus is an unregistrable component of the mark.

Thus, refusal of registration of the THE SALAD STATION and Design mark, Serial No. 86414055, based on Applicant’s failure to submit such disclaimer, was also affirmed, the Board held. In the event that Applicant submits the required disclaimer within 30 days from the date of this decision, the refusal will be set aside, the Board said.

The case is Serial Nos. 86414039 and 86414055.

Attorneys: H. Michael Drumm (Drumm Law LLC) for Salad Town, LLC. Colleen Mulcrone, Trademark Examining Attorney.

Companies: Salad Town, LLC

MainStory: TopStory Trademark USPTO

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