Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov

ESTTA Tracking number: ESTTA1079328

Filing date: 09/02/2020

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 88573025

Applicant Elkay Plastics Co., Inc.

Applied for Mark COMPOSTA

CorrespondenceAddress

GARY M ANDERSONFULWIDER PATTON LLP6100 CENTER DRIVE SUITE 1200LOS ANGELES, CA 90045UNITED STATESPrimary Email: docketla@fulpat.comSecondary Email(s): astocks@fulpat.com, ganderson@fulpat.comNo phone number provided.

Submission Appeal Brief

Attachments MAIN BRIEF.pdf(49029 bytes )EXHIBITS.pdf(1129826 bytes )

Filer's Name Gary M. Anderson

Filer's email ganderson@fulpat.com, astocks@fulpat.com, docketla@fulpat.com

Signature /gary m. anderson/

Date 09/02/2020

1079075.1 ELKAY-98830

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

In the Matter of

Applicant: Elkay Plastics Co., Inc.

Serial No.: 88/573,025

Filing Date: August 9, 2019

Mark: COMPOSTA

Sahar Nasserghodsi

Examining Attorney

Law Office 115

September 2, 2020

APPLICANT'S MAIN BRIEF

1079075.1 i ELKAY-98830

TABLE OF CONTENTS

Page

I. DESCRIPTION OF RECORD……………………………………………………………1

II. STATEMENT OF ISSUES……………………………………………………………….2

III. RECITATION OF FACTS…...………………………………………………………...…3

IV. ARGUMENT…………………………………………………………………………..….3

A. English Translation Requirement………………………………………………....3

B. Merely Descriptive Refusal……………………….………………………………4

V. CONCLUSION…………………………………………………………………………...6

1079075.1 ii ELKAY-98830

TABLE OF AUTHORITIES

Page(s)

Cases

Application of Quik-Print Copy Solutions, Inc., 616 F.2d 523, 205 USPQ 505

(C.C.P.A. 1980) .........................................................................................................................5

In re MBNA America Bank, N.A., F.3d 1328 (Fed.Cir.2003) .........................................................5

Other Authorities

Bab.la English to Italian ...............................................................................................................3, 4

Cambridge Dictionary, Italian to English ........................................................................................3

The Collins Italian – English Dictionary .........................................................................................4

Yandex Translate .............................................................................................................................4

TMEP § 1207.01(b)(vi) ..................................................................................................................4

1079075.1 1 ELKAY-98830

This Appeal Brief is filed in response to the Examining Attorney's Denial of Applicant's

Request for Reconsideration After Final Action. In the Denial the Examining Attorney

maintained the Section 2(e)(1) refusal that Applicant’s mark was merely descriptive of a feature

of Applicant’s goods.

I. DESCRIPTION OF RECORD

On August 9, 2019, Applicant filed the instant application on an intent-to-use basis to

register the mark COMPOSTA for use in connection with “bags, pouches, film and rigid

containers for use in the food service, industrial and commercial industries,” in Class 16 [TSDR

Doc. 1]

On November 14, 2019, the Examining Attorney issued an Office Action. In said Office

Action the Examining Attorney initially refused registration of the mark under Section 2(e)(1)

holding that COMPOSTA translates to “compost” and thus was merely descriptive of a feature

of Applicant’s goods. The Examining Attorney also issued a Section 2(d) refusal over

Registration Nos. 4,633,237 and 4,851,549. The Examining Attorney also required an

amendment to the Identification of Goods and an English translation of the mark. [TSDR Doc.

6]

On February 18, 2020, Applicant filed a response to the Office Action. In said response

the Applicant amended the Identification of Goods and provided an English translation of the

mark. Applicant also submitted arguments against the Section 2(e)(1) and Section 2(d) initial

refusals. [TSDR Doc. 8]

On March 6, 2020, the Examining Attorney issued a Final Office Action. In said Final

Office Action, the Examining Attorney maintained the Section 2(e)(1) and Section 2(d) Refusals.

The Examining Attorney required a further amendment to the Identification of Goods and

repeated the request for an English translation of the mark disagreeing with the translation

previously provided by Applicant. [TSDR Doc. 10]

On May 11, 2020, Applicant filed a Request For Reconsideration After Final Office

Action. In its Request For Reconsideration, Applicant argued against the Examining Attorney’s

proposed translation of the mark and submitted two alternative translations. The Applicant also

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further amended the Identification of Goods. Applicant submitted further arguments against the

Section 2(e )(1) – merely descriptive refusal and the Section 2(d) – likelihood of confusion

refusals. [TSDR Doc. 11]

On May 28, 2020, Applicant’s attorney had a telephonic interview with the Examining

Attorney. During the interview, the Examining Attorney indicated that she was withdrawing the

Section 2(d)(1) – likelihood of confusion refusal. Additionally, during the interview, Applicant

agreed to a further amendment to the Identification of Goods and to the English translation of the

mark. The Examining Attorney entered an Examiner’s Amendment on May 28, 2020. In said

Examiner’s Amendment the Applicant and Examining Attorney agreed to submit the English

translation of COMPOSTA in the alternative, namely, “composed,” “compote” or “compost.”

[TSDR Doc. 15]

On May 29, 2020, Applicant filed an Amendment to Allege Use. [TSDR Doc. 18]

On June 5, 2020, the Examining Attorney entered an Examiner’s Amendment further

amending the Identification of Goods in conformation with Applicant’s Attorney’s email of June

2, 2020. [TSDR Doc. 24]

On June 5, 2020, the Examining Attorney issued a Denial of Applicant’s Request For

Reconsideration After Final Action. In said Denial, the Examining Attorney maintained the

Section 2(e)(1) merely descriptive refusal. The Examining Attorney indicated that Applicant had

satisfied the classification and Identification of Goods requirement and the English translation

requirement of the Final Office Action . [TSDR Doc. 25]

II. STATEMEN TO ISSUES

There are two issues in this appeal.

Issue No. 1: What is the proper English translation of Applicant’s mark COMPOSTA?

Is it “composed,” “compote” or “compost”?

Issue No. 2: Is Applicant’s mark COMPOSTA merely descriptive of Applicant’s

goods, namely,

1079075.1 3 ELKAY-98830

Class 16: Pouches and rigid containers all made from kraft paper and kraft board for

packaging use in the food service industry; Plastic pouches and films all made from bio-resin for

use in the food service industry for packaging; Rigid containers consisting primarily of kraft

paper, kraft board and also including bio-resin, for packaging use in the food service industry; all

aforementioned goods being compostable.

Class 20: Plastic rigid containers made from bio-resin for use in the food service

industry; Rigid containers consisting primarily of a bio-resin plastic substitute and also including

kraft paper and kraft board, for packaging use in the food service industry; all aforementioned

goods being compostable.

III. RECITATION OF FACTS

Applicant’s goods are a variety of containers and packaging materials, all used in the

food service industry. All of the Applicant’s goods are manufactured from compostable

materials.

IV. ARGUMENT

A. English Translation Requirement

In the first Office Action the Examining Attorney took the position that Applicant's mark

was an Italian word and that it translated to "compost" in English. Applicant responded that

COMPOSTA was a coined or created term. However, following the Examining Attorney's

contention that it was an Italian word, Applicant submitted a Google Translate Italian to English

translation of "COMPOSTA" as meaning "composed" in English and not, "compost" as

contended by the Examining Attorney. [see Exhibit 1, which was included in Applicant’s

Response] In the Final Action, the Examining Attorney failed to give any weight to Applicant's

evidence and maintained that COMPOSTA means "compost" in English.

In support of her position, the Examining Attorney cited the Cambridge Dictionary,

Italian to English translation of "composta." The Examining Attorney's translation provided two

translations for "composta." The first translation is "compote, fruit preserve." The secondary

translation is "compost." In further support, the Examining Attorney cited a bab.la English to

Italian translation that translates compost in English into "composta" in Italian. However, the

1079075.1 4 ELKAY-98830

example of the use of "compost" in the bab.la English to Italian is that of a compote or fruit

preserve. The example given is "I need only tell you that, as we speak, approximately 200,000

tonnes of peach compost have remained unsold." [see Exhibit 2, which was cited in the Final

Office Action]

It it’s Request For Reconsideration After Final Office Action. Applicant submitted

additional evidence supporting Applicant's position as to the meaning of "compost." The

Yandex Translate translates composta to composed in English. The Collins Italian – English

Dictionary translates "composta" as "compote." And translate.com/italian-english translates

"composta" to "composed." [see Exhibit 3 which was Exhibit 1 to the Request For

Reconsideration.

Applicant's submits that the evidence of record shows that the primary translation of

"composta" is either "composed" or "compote." Applicant submits that the Examining

Attorney's proposed translation is at best the third possible translation of "Composta." The

Examining Attorney's single, secondary translation is insufficient to support the Examining

Attorney's position. As set forth in the TMEP, if the evidence shows that the relevant English

translation is literal and direct, and no contradictory evidence of shades of meaning or other

relevant meanings exits, the doctrine generally should be applied by the Examining Attorney.”

(emphasis added) TMEP § 1207.01(b)(vi).

Applicant respectfully submits that in the instant case the contradictory evidence of

record regarding the meaning of COMPOSTA precludes the application of the doctrine of

foreign equivalence. There is not clear, uncontradicted evidence in the record as to the proper

English translation of the word.

B. Merely Descriptive Refusal

The Examining Attorney has maintained the position Applicant's mark "COMPOSTA" is

merely descriptive. In support of this position the Examining Attorney states that COMPOSTA

means "compost" in English. However, as shown in Applicant's evidence the Italian word

"composta" means "composed" or "compote" and not “compost.”

1079075.1 5 ELKAY-98830

Since, contrary to the Examining Attorney's position, COMPOSTA translates as

"composed," or "compote" the Examining Attorney's citation to various websites (Attachments

to the Office Action) are not relevant. Additionally, Applicant notes that the two marks

previously cited against it for the now withdrawn Section 2(d) refusal, "COMPOSTABOX" and

"COMPOST-A-PAK" are both registered on the Principal Register without a disclaimer of

"COMPOST."

Specifically, Applicant notes that the mark COMPOSTABOX (Reg. No. 4,851,549) is

registered for use in connection with "coated, leak proof, biodegradable and compostable

cardboard boxes for storage, shipment and in-box composting of compostable material."

(emphasis added) The mark is registered on the principal register. Similarly, the mark

COMPOST-A-PAK (Reg. No. 4,633,237) is registered for use in connection with "compostable

paper-pulp based to-go containers for food." (emphasis added) It too is registered on the

principal register without a disclaimer of "compost."

Applicant respectfully submits that it is inconsistent for the Trademark Office to allow

the two cited Registrations, both of which actually contain the word compost, without

disclaimers thereby admitting that trademarks are not merely descriptive, yet refuse Applicant's

registration for a word that does not mean compost.

Accordingly, Applicant respectfully submits that its COMPOSTA mark which translates

as composed or compote is not merely descriptive of Applicant's goods.

Further, Applicant respectfully submits that its mark COMPOSTA is not merely

descriptive regardless of the translation of the mark. For a mark to be merely descriptive it must

immediately and only describe a feature or characteristic of the goods or services. If it takes

some imagination on the part of the consumer, then the mark is suggestive, but not merely

descriptive. Application of Quik-Print Copy Solutions, Inc., 616 F.2d 523, 525, 205 USPQ 505

(C.C.P.A. 1980); In re MBNA America Bank, N.A., F.3d 1328 (Fed.Cir 2003)

Applicant submits that its mark COMPOSTA may be suggestive but it is not merely

descriptive. Given that the primary translation of COMPOSTA is either "composed" or

1079075.1 6 ELKAY-98830

"compote," Applicant submits that it would take imagination on the part of the consumer to

associate "COMPOSTA" with "compost."

V. CONCLUSION

Accordingly, Applicant respectfully requests that the Board reverse the Examining

Attorney’s Section 2(e)(1) Refusal.

Dated: September 2, 2020

By:

Respectfully submitted,

/Gary M. Anderson/

Gary M. Anderson

FULWIDER PATTON LLP

Attorneys for Applicant

Exhibit 1

Exhibit 2

Exhibit 3