I recognize that trademark law is a nuanced thing and I don’t expect the average person to be familiar with all of its intricacies. Hell, I write about trademarks all the time and I could probably fill a law school gymnasium with what I still don’t know about it. But I honestly am often surprised by how often the concept that you cannot trademark, or monopolize, a term that is purely descriptive of the product or service the mark is for. It seems to me that the concept that you cannot lock up language in commerce when that language describes a product for which there will be competing products seems to me to be quite obvious, yet it escapes far too many people.
And sometimes they have to be taught this multiple times before it takes. Randy White owns Doc Ford’s Rum Bar & Grille in Florida and includes on its menu a dish called “Yucatan Shrimp.” It’s a dish consisting of, well shrimp. And it’s cooked in the style popularized in the Yucatan region of Mexico. You probably already guessed all of that, because the name of the dish is purely descriptive. Despite that, White attempted to get a trademark on the term.
This has gone through several steps to date. First, the examiner reviewed the application, did their homework on the term, found it in use all over the place and noted its descriptive nature, and then denied the mark. White appealed the decision to the USPTO’s TTAB, which reviewed the examiner’s work and affirmed it. Not content with being taught about descriptive marks twice, White then appealed that decision to the Court of Appeals, which has now also affirmed the examiner’s and TTAB’s decision.
There’s a lot of good detail in the decision embedded below, but the highlights consist of the court doing what I can only describe as educating White and his attorneys on trademark law.
Substantial evidence supports the Board’s conclusion that the YUCATAN SHRIMP mark is merely descriptive of Mr. White’s goods. The examiner marshalled a legion of recipes and descriptions of “Yucatan Shrimp” dishes from third-party cooking and restaurant webpages, showing that the public understands “Yucatan Shrimp” to refer to a dish that features shrimp prepared with a set of common ingredients associated with Mexican cuisine, such as hot peppers or sauce, citrus juice, and cilantro. J.A. 39–113. The Board found that the third-party evidence establishes that YUCATAN SHRIMP is recognized as a dish using shrimp and particular ingredients associated with Mexican cuisine. J.A. 8.
The Board also relied on Mr. White’s own usage of the mark on his restaurant’s menu. The menu describes the dish as originating in Quintana Roo, Mexico, which encompasses a portion of the Yucatan Peninsula. J.A. 24, 26. And the menu explains that the dish is prepared using the same ingredients as the third-party dishes described above, further supporting the Board’s finding that the public would recognize the YUCATAN SHRIMP mark as describing a shrimp dish with common ingredients.
White tried to poke some very specific holes in the TTAB’s reasoning, but to no avail. He said that the TTAB should have had to prove that there was a specific style of cooking understood by the public to have originated in the Yucatan: denied by the court. He said that the TTAB changed the reasoning of the refusal compared to the original examiner because the examiner referred to the descriptive nature of the cooking style being from the “Yucatan,” while the TTAB referred to it as descriptive of “Mexican-inspired” food and that this made the TTAB’s review improper: denied by the court. White asserted that the examiner failed to consider “evidence” White provided by not reviewing a news article about the dish and restaurant: denied by the court, because it doesn’t change the reasoning of the examiner in any real way.
But this one is my favorite:
Finally, Mr. White contends that any doubts as to descriptiveness should have been resolved in his favor. This argument simply repackages Mr. White’s complaints about the Board’s adverse finding. There is no basis on this record to conclude that the examiner or the Board doubted the descriptiveness of the mark or that they improperly resolved any doubts against Mr. White.
Thrice now, White and his legal team have been told the mark is descriptive and to go away. Hopefully, as the saying goes, here endeth the lesson.