Attorney(s) appearing for the Case
Thomas E. Young, Body, Vickers & Daniels, Cleveland, Ohio, argued for appellant. With him on the brief was Robert V. Vickers.
Albin F. Drost, Associate Sol., Office of the Sol., of Arlington, Va., argued for appellee. With him on the brief was Fred E. McKelvey, Sol.
Before NEWMAN and MAYER, Circuit Judges, and DUMBAULD, Senior District Judge.
United States Court of Appeals, Federal Circuit.
DUMBAULD, Senior District Judge.
Appellant, Bongrain International (American) Corporation, appeals1 from the Trademark Trial and Appeal Board's refusal to register the words BABY BRIE on the Principal Register, pursuant to Section 2(f) of the Lanham Act of July 5, 1946, 60 Stat. 427, 428-29, 15 U.S.C. § 1052(f), for soft ripened cheese,2 on the ground that the words are merely descriptive and hence registration is precluded by Section 2(e)(1) of the Act, 15 U.S.C. § 1052(e)(1).3 The Board also held that applicant's evidence of acquired distinctiveness was insufficient to support registrability.4 The issue whether the term sought to be registered was "deceptively misdescriptive" was withdrawn during the proceedings. We affirm.
The evidence of record clearly indicates that "BABY BRIE" is merely descriptive of the product and hence is not registrable.5 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. (App. 3-4).
The public's understanding of this usage can not be eradicated by the mere fact that appellant sells its Brie cheese in packages somewhat larger than those of some other sellers.6
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.7 It would be intolerable sophistry if a seller such as Bongrain could escape the unregistrability of a merely descriptive mark by simply increasing the size of its package.8
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). The possible existence of secondary meaning is a question of fact, and it is not possible for us to find the Board's determination to be clearly erroneous. Yamaha Int'l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1581 (Fed.Cir.1988).9
Accordingly, the decision of the Board is