Fleit, Jacobson, Cohn & Price, Washington, D.C., for applicant.

R.A. Straser, Trademark Examining Attorney, Law Office 7 (Lynne Beresford, Managing Attorney) for the Patent and Trademark Office.

Before Rice, Rooney, and Simms, Members.

Simms, Member.

Cooperative Produttori Latte E Fontina Valle D'Aosta, an Italian cooperative, has appealed from the final refusal of the Trademark Examining Attorney to register the certification mark shown above for "FONTINA cheese."^[1]

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The Examining Attorney has made final a requirement of a disclaimer of the word FONTINA apart from the mark under Sections 2(e)(1) and 6 of the Trademark Act, 15 USC §§1052(e)(1) and 1056, because the word FONTINA merely describes or is the generic name for a type of cheese. We affirm.

Early in the prosecution of this case, in response to an inquiry of the Examining Attorney, applicant indicated that the word FONTINA can be translated to English to mean "very soft, tender" and refers to a type of cheese which is produced in an area of Italy in the mountains of the Aosta Valley. (Applicant's response filed February 22, 1982).

Since the mark sought to be registered appeared to be used as a certification mark rather than as a trademark by applicant, applicant eventually (after an initial amendment to a collective mark application) amended its trademark application to one seeking registration of a certification mark.^[2]

According to applicant's attorney, applicant is an association of producers of "genuine FONTINA-type cheese" from the Valle D'Aosta region in Italy. Applicant's attorney represents that, under Italian law, a cheese may be called FONTINA only if it is from the Valle D'Aosta, is made from the milk of the camoscio breed of cattle (depicted in the mark), and meets certain other standards set up by Italian law. It is applicant's position that, although FONTINA is merely descriptive, it is not a generic term.^[3] Citing TMEP Section 1305.03(b) applicant argues that the term FONTINA in its mark is only suggestive of the certification and does not describe the cheese in connection with which the certification mark is used. Finally, applicant argues that the term FONTINA is an integral part of the mark and need not be disclaimed.

Of record is a definition of the word "fontina" from Webster's Third New International Dictionary:

fontina . . . n -s often cap [It]: a semisoft to hard ripened cheese of Italian origin that varies in flavor from mild to medium sharp.

In addition, The Encyclopedia of Italian Cooking (1981), made of record by applicant, reveals the following information concerning fontina cheese in a section of that book dealing with regional cooking:

The best-known cheese of the area [Piemonte and Valle d'Aosta] is fontina, a rich, creamy cheese made with milk from two special breeds of local cattle. It is used extensively in cooking, but is best known for its inclusion in the famous Piedmontese dish Fonduta. . .

Fontina

A semi-hard cheese from Val d'Aosta, fontina takes its name from Mount Fontin near the town of Aosta. It is one of the most famous of all Italian cheeses, and many cheese connoisseurs rank it amongst the top cheeses in the world for its sweet, nutty flavour and deliciously creamy texture. Although it is classed as a table cheese, it is most often found in the celebrated Piedmontese specialityFonduta. . . and in other rich cooked dishes.

In addition, the following sentence is found in a caption accompanying a photograph in that section of the encyclopedia:

In this area cattle are bred primarily for their milk which is used to make the popular creamy cheese fontina.

There is also evidence of record that a third party (Universal Foods Corporation) markets a domestic cheese branded FONTINELLA,^[4]described in the specimen labels as "A FONTINA CHEESE MADE FROM PASTEURIZED MILK, RENNET AND SALT." Finally, applicant has submitted pages from The Living Section of The New York Times on the subject of imported cheeses. This article discusses a cheese called "Fontina Val d'Aosta". The author indicates that a younger, milder and softer type of cheese, not made in the Val d'Aosta, sometimes bears the label "Fontal," and is cheaper than the genuine "Fontina Val d'Aosta". To this evidence we would also add the definition of "fontina" from Cassell's Italian Dictionary (1978), defining that word as "Kind of soft cheese." In re Sony Corporation of America, 218 USPQ 453, 455, n.2 (TTAB 1983).

It is apparent from the convoluted history of this application that both the Examining Attorney and applicant's attorney have had some difficulty determining the nature of the term FONTINA. It is unfortunate that, in view of this confusion, we do not have a better record on which to base our decision. Additional material, such as product information from applicant or its members, other references to the term in books on cheese, cooking or food in general, evidence relating to use of the term in trade publications and in newspapers and magazines available to the purchasing public (through the LEXIS/NEXIS computer search system), and evidence of uses of this term in the marketplace by other cheese producers (perhaps available at deli or cheese counters of local supermarkets or specialty shops) would have provided a more complete record. Nevertheless, based on this record, we believe that, considered as a whole, the evidence demonstrates that fontina is the name of a type of cheese and that the disclaimer requirement should be affirmed.

While the evidence of record reveals that fontina cheese originated in Italy and that genuine fontina cheese may still come from there, it does not support applicant's position that "fontina" is a certification mark indicating regional origin. Rather, the lower-case treatment of this word by the references to name a kind of cheese with certain hardness, texture and flavor characteristics, and the fact that the record reveals that there is a domestic fontina cheese demonstrates to us that, to the American purchaser, "fontina" primarily signifies a type of cheese (much like brie, swiss, parmesan or mozzarella) regardless of regional origin, rather than a mark of certification. Compare Community of Roquefort v. William Faehndrich, Inc., 303 F.2d 494, 133 USPQ 633 (2d Cir. 1962). Being the name of a type of cheese, competing certifiers and others should be free to use this term descriptively. Nor do we agree with applicant that a different standard for determining descriptiveness prevails with respect to certification marks. In re National Association of Legal Secretaries, 221 USPQ 50, 52 (TTAB 1983) and McCarthy, Trademarks and Unfair Competition §19.32E (2d ed. 1984).

Accordingly, and since the term FONTINA, the only literal portion in applicant's mark, is a separable element creating a separate commercial impression, we affirm the requirement of the Examining Attorney for a disclaimer of this word. See, for example, Florists' Transworld Delivery Assoc. v. Teleflora Inc., 208 USPQ 858, 863-864 (TTAB 1980).

Decision: The refusal of registration is affirmed.

[1] Serial No. 220,631, filed June 21, 1979, claiming use since January 1, 1958 and use in commerce since January 1, 1978. Applicant has also submitted a certified copy of an Italian registration and the renewal thereof covering the mark here sought to be registered.

[2] Section 4 of the Act, 15 USC §1054, provides:

Subject to the provisions relating to the registration of trademarks, so far as they are applicable, collective and certification marks, including indications of regional origin used in commerce, shall be registrable under this Act, in the same manner and with the same effect as are trademarks, by persons, and nations, States, municipalities, and the like, exercising legitimate control over the use of the marks sought to be registered, even though not possessing an industrial or commercial establishment, and when registered they shall be entitled to the protection provided herein in the case of trademarks, except when used so as to represent falsely that the owner or a user thereof makes or sells the goods or performs the services on or in connection with which such mark is used. The Commissioner may establish a separate register for such collective marks and certification marks. Applications and procedure under this section shall conform as nearly as practicable to those prescribed for the registration of trademarks.Section 45 of the Act defines a certification mark as follows:

The term "certification mark" means a mark used upon or in connection with the products or services of one or more persons other than the owner of the mark to certify regional or other origin, material, mode of manufacture, quality, accuracy or other characteristics of such goods or services or that the work or labor on the goods or services was performed by members of a union or other organization.

[3] Applicant states in its reply brief, 4:

To the extent the Trademark Attorney contends FONTINA is "merely descriptive" with respect to the goods on which Applicant's certification mark is and will be applied, certainly Applicant does not contest this. Indeed, that is precisely what makes it a certification mark. The placement of the mark on the goods indicates to the consumer that the cheese isgenuine FONTINA cheese.

However, in an earlier request for reconsideration (filed Feb. 1, 1984), in arguing against a Section 2(d) refusal (see f.n. (4) ), applicant's attorney stated:

There is no indication that the word "Fontina" has acquired a secondary meaning as an indicator of the origin of cheese or any other product . . . of the cited registrations, or is likely to be treated as such . . . In fact, it is clear that a reasonable purchaser of the cheese would equate FONTINA with a type of cheese, not a brand of cheese. (Emphasis in original.)

[4] This registered mark was cited as a bar to registration under Section 2(d) but was later withdrawn as a reference.