Precedential No.21: TTAB Finds MALAI Generic for Ice Cream

Author:Mr John L. Welch
Profession:Wolf, Greenfield & Sacks, P.C.

Finding that relevant consumers would understand the term MALAI to refer to a key aspect of "ice cream, gelato, dairy-free ice cream, frozen yogurt, frozen desserts, ice cream sandwiches, sorbet, freezer pops, and ice cream sundaes," the Board affirmed a refusal to register on the ground of genericness. In re Twenty-Two Desserts, LLC, Serial No. 86586833 (August 6, 2019) [precedential] (Opinion by Judge Frances Wolfson).

The Board applied its standard two-part test for determining whether a term is generic: (1) what is the genus (class or category) of the goods or services at issue; and (2) does the relevant public understand the term primarily to refer to that genus. Princeton Vanguard, 114 USPQ2d at 1830 (citing Marvin Ginn, 228 USPQ at 530); Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1462 (TTAB 2014). "Any term that the relevant public uses or understands to refer to the genus of goods, or a key aspect or subcategory of the genus, is generic." Citing Royal Crown Co., Inc. v. The Coca-Cola Co., 127 USPQ2d 1041, 1046-1047 (Fed. Cir. 2018); In re Cordua Rests., Inc., 118 USPQ2d 1632, 1638 (Fed. Cir. 2016). The USPTO must present "clear evidence" of genericness to support such a refusal. See In re, 91 USPQ2d 1252, 1253 (Fed. Cir. 2009); Cordua, 118 USPQ2d at 1533.

There was no dispute that applicant's identification of goods adequately defines the genus at issue. The relevant consuming public comprises ordinary consumers who purchase and eat ice cream products. The question, then, was how does the relevant public perceive the term MALAI in the context of applicant's goods?

Examining Attorney Jason Paul Blair relied on a dictionary definition of "malai" (an Indian cooking ingredient) and a Wikipedia entry for "Ras Malai" as a type of dessert, in maintaining that that the word MALAI "is commonly used in the English language as a genus of rich, high-fat creams commonly used in Indian and South Asian culinary dishes, especially dishes with a sweet taste." He also submitted articles, recipes, and material from several Internet sources that identify "malai" as a cream.

The Board agreed with the examining attorney that the record evidence showed that "'malai' has an independent meaning in English for a specific cooking ingredient, cream." Moreover, "malai" has been used to identify a creamy food principally made from malai, including items that fall within - i.e., are a sub-group or type of - the goods...

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