1-800-Flowers.Com, Inc.

Trademark Trial and Appeal Board

Aug 27, 2008

No. 76634212 (T.T.A.B. Aug. 27, 2008)

Mailed:
August 27, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re 1-800-Flowers.Com, Inc.
________

Serial No. 76634212
_______

Thomas M. Galgano of Galgano & Associates, PLLC for 1-800-
Flowers.Com.

Dominic J. Salemi, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Hohein, Zervas and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

1-800-Flowers.Com, Inc., by merger with Fresh
Intellectual Properties, Inc.,1 is the owner of a use-based
application for registration of the mark SEND-A-MESSAGE, in
standard character format, for services ultimately
identified as “message delivery services – namely arranging
for delivery of and providing access to pre-recorded
personalized message intended for recipient of

1 Fresh Intellectual Properties, Inc. merged into 1-800-
Flowers.Com, Inc. The merger was recorded with the Assignment
Branch of the U.S. Patent and Trademark Office on January 16,
2008, at reel 3697, frame 0880.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 76634212
2
a gift,” in Class 38. Applicant claimed November 1, 1999
as its dates of first use anywhere and first use in
commerce.
The Trademark Examining Attorney refused registration
under Section 2(e)(1) of the Trademark Act of 1946, 15
U.S.C. §1052(e)(1), on the ground that the mark is merely
descriptive and on the ground that the mark is generic.
Based on the prosecution history, it is not clear whether
the issue on appeal is just whether the mark is merely
descriptive or whether the mark is merely descriptive and
generic. A summary of the relevant prosecution history is
set forth below.
Date Event

June 19, 2006 Registration is refused on the ground that
the mark is merely descriptive.

November 30,
2006
Applicant amends the application to seek
registration under Section 2(f) based on
applicant’s declaration of substantially
exclusive and continuous use for five years.

January 17,
2007
The descriptiveness refusal is continued on
the ground that the mark is “purely
informational, in other words, it is
generic.”

February 28,
2007
Applicant amends application to the
Supplemental Register.

March 4, 2007 Registration is refused on the ground that
the mark is generic.
Serial No. 76634212
3

Date Event

May 16, 2007 Applicant amends the application back to the
Principal Register and argues that the mark
is suggestive, not descriptive or generic.

June 13, 2007 The refusal to register the mark is made
final on the ground that it is merely
descriptive.

February 13,
2008
In its brief, applicant argues that the mark
is neither merely descriptive nor generic,
and therefore it is registrable on the
Principal Register, on the Principal
Register under Section 2(f), or on the
Supplemental Register.

April 17, 2008 In the Examining Attorney’s Appeal Brief,
the examining attorney argues that
registration should be refused on the ground
that the mark is merely descriptive.

May 9, 2008 In its reply brief, applicant argues that
because the examining attorney did not
address the issue of genericness in his
brief, he has withdrawn the refusal based on
the ground that the mark is generic, and
therefore his previous refusal to register
the mark on the Supplemental Register was in
error. In its conclusion, applicant argues
that if the mark is not registrable on the
Principal Register, it is registrable on the
Supplemental Register.

At various times during the prosecution of this
application, applicant has claimed that its mark is
inherently distinctive, and if it is not inherently
distinctive, then it may be registered on the Principal
Register under Section 2(f) of the Trademark Act of 1946 or
on the Supplemental Register. While the examining attorney
Serial No. 76634212
4
has refused registration on the ground that applicant’s
mark is merely descriptive and generic, in his appeal
brief, the examining attorney did not address applicant’s
alternative grounds for registration.
We note, however, that it is the examining attorney’s
responsibility to clarify the outstanding refusals and
requirements in each Office Action.
When acting on an amended application,
the examining attorney should note all
outstanding refusals and requirements
in every Office action. The examining
attorney should indicate whether
particular refusals or requirements are
withdrawn or whether the applicant’s
response is acceptable, where
appropriate.
To prevent any misunderstanding, every
refusal or requirement in the prior
action that is still outstanding must
be repeated or referred to. Even when
suspending action on an application,
the examining attorney should note all
outstanding refusals or requirements.
TMEP §713.02 (5th ed. 2007). The examining attorney
steadfastly refused registration on the ground that the
mark is merely descriptive, but never clarified the status
of his genericness refusal.
In view of the fact that applicant has argued that its
mark is not merely descriptive, that its mark has acquired
distinctiveness, and that its mark is registrable on the
Supplemental Register, and because the examining attorney
Serial No. 76634212
5
did not clarify the status of his genericness refusal, we
use our discretion to find that the applicant has argued
the merits of the examining attorney’s descriptiveness
refusal and, in the alternative, claims that its mark has
either acquired distinctiveness and is registrable on the
Principal Register under Section 2(f) of the Trademark Act
of 1946, or if distinctiveness has not been shown, is
otherwise entitled to registration on the Supplemental
Register. See TMEP §1212.02(c) (5th ed. 2007).
A. Whether SEND-A-MESSAGE is merely descriptive?
In his January 17, 2007 Office Action, the examining
attorney continued his refusal to register applicant’s mark
SEND-A-MESSAGE for “message delivery services – namely
arranging for delivery of and providing access to pre-
recorded personalized message intended for recipient of a
gift” as being merely descriptive, “notwithstanding
applicant’s claim of acquired distinctiveness,” “because
[the mark] is purely informational, in other words, it is
generic.” In support of his refusal, the examining
attorney included the following dictionary definitions for
the words “send” and “message.”2

2 The examining attorney cited “dictionary.reference.com” as his
source. This is the only evidence submitted by the examining
attorney during the prosecution of the application.
Serial No. 76634212
6
SEND
to cause to be conveyed or transmitted
to a designation: to send a letter.

MESSAGE
a communication containing some
information, news, advice, request, or
the like, sent by messenger, radio,
telephone, or other means.

A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
function, feature or purpose of the products or services it
identifies. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009,
1009 (Fed. Cir. 1987). Whether a particular term is merely
descriptive is determined in relation to the products or
services for which registration is sought and the context
in which the term is used, not in the abstract or on the
basis of guesswork. In re Abcor Development Corp., 588
F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66
USPQ2d 1222, 1224 (TTAB 2002). In other words, the
question is not whether someone presented only with the
mark could guess what the goods or services are. Rather,
the question is whether someone who knows what the goods or
services are will understand the mark to convey information
about them. In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-
1317 (TTAB 2002); In re Patent & Trademark Services Inc.,
49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders
Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB
Serial No. 76634212
7
1990); In re American Greetings Corp., 226 USPQ 365, 366
(TTAB 1985).
“On the other hand, if one must exercise mature
thought or follow a multi-stage reasoning process in order
to determine what product or service characteristics the
term indicates, the term is suggestive rather than merely
descriptive.” In re Tennis in the Round, Inc., 199 USPQ
496, 497 (TTAB 1978). See also, In re Shutts, 217 USPQ
363, 364-365 (TTAB 1983); In re Universal Water Systems,
Inc., 209 USPQ 165, 166 (TTAB 1980).
Accordingly, we start our analysis of the
registrability of SEND-A-MESSAGE by inquiring whether that
term describes a characteristic, quality, function or
purpose of applicant’s message delivery services intended
for the recipient of a gift, not whether we can guess what
the services are by looking at the mark. Purchasers of
applicant’s services will immediately understand the mark
SEND-A-MESSAGE as describing the fact that applicant’s
services involve the delivery of a message. They will not
have to undertake a multiple step reasoning process to
understand from the mark something significant about the
services. The term SEND-A-MESSAGE immediately tells
consumers exactly what the services are.
Serial No. 76634212
8
Applicant contends that SEND-A-MESSAGE is a “novel
combination of the terms SEND, A and MESSAGE,” and
therefore is it suggestive, not descriptive. Applicant
cites one application and three registrations with a “Send
A” prefix and argues that if these marks were “found to be
registrable on the Principal Register, so too should
Applicant’s mark.”3 Applicant referenced the following
marks:
Reg/App No. Mark Goods/Services

788348424 SEND A SONG Entertainment in the nature of
personalized, pre-recorded
musical telephone messages

2511365 SEND-A-MEAL Providing the ordering and
delivery of food from restaurants
to consumers through a global
computer information network

2073928
(Canceled)
SEND A GRAM Telephonic delivery of pre-
recorded messages

2496897 SEND A SCENT Transportation and delivery by
air, road, rail and water, of
gifts, packages, fragrances,
colognes, bath oils, body
lotions, soaps and scented
products

3 Applicant’s Brief, p. 4.
4 A third-party application is evidence only of the fact that it
was filed; it has no other probative value. Nevertheless, in
determining whether applicant’s mark is descriptive, we have
considered the referenced application as evidence that the USPTO
has considered the mark registrable because it was published for
opposition. See Interpayment Services Ltd. v. Docters & Thiede,
66 USPQ2d 1463, 1467 n.6 (TTAB 2003).
Serial No. 76634212
9
First, SEND-A-MESSAGE is not a “novel combination of
the terms SEND, A and MESSAGE.” The four third-party marks
referenced by applicant demonstrate that the term SEND-A
followed by a descriptive or generic term is not original.
Second, the third-party registrations submitted by
applicant do not rebut our finding that the mark SEND-A-
MESSAGE is merely descriptive. Section 20 of the Trademark
Act of 1946, 15 U.S.C. §1070, gives the Board the authority
and duty to decide an appeal from an adverse final decision
of the examining attorney. This duty may not be delegated
by the adoption of conclusions reach by other examining
attorneys on different records. Suffice it to say that
each case must be decided on its own merits based on the
evidence of record. See In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed., Cir. 2001).
Finally, applicant has not provided any examples of a
multiple step reasoning process or an incongruity in the
combination of words forming the mark SEND-A-MESSAGE.
Applicant merely concludes, without any explanation, that
“[t]he meaning of SEND-A-MESSAGE when used in connection
with a messaging service which allows recording of a
personalized message and retrieval by the gift recipient of
Serial No. 76634212
10
it through a pin system, will not be grasped without ‘some
measure of imagination and mental pause.’”5
In view of the foregoing, we find that applicant’s
mark SEND-A-MESSAGE used in connection with “message
delivery services – namely arranging for delivery of and
providing access to pre-recorded personalized message
intended for recipient of a gift” is merely descriptive.
B. Whether SEND-A-MESSAGE has acquired distinctiveness?
In its November 30, 2006 response, applicant claimed
that its mark has acquired distinctiveness and amended its
application to seek registration under Section 2(f) of the
Trademark Act of 1946, 15 U.S.C. §1052(f). In support of
its claim of acquired distinctiveness, applicant submitted
the declaration of Christopher G. McCann, applicant’s
President, who attested to the fact that SEND-A-MESSAGE has
become distinctive of applicant’s services by the
substantially exclusive and continuous use of the mark for
five years.
The amount of evidence necessary to establish
secondary meaning varies – “the greater the degree of
description a term has, the heavier the burden to prove it
has attained secondary meaning.” In re Bongrain
International Corp., 894 F.2d 1316, 1317 n.4, 13 USPQ2d

5 Applicant’s Brief, p. 4.
Serial No. 76634212
11
1727, 1728 n.4 (Fed. Cir. 1990); Yamaha Int’l Corp. v.
Hoshino Gakki Co. Ltd., 840 F.2d 1572, 1581, 6 USPQ2d 1001,
1005 (Fed. Cir. 1988). Accordingly, if the mark is highly
descriptive of the services in the application, the
statement of five years’ use alone is insufficient to
establish acquired distinctiveness. See In re Kalmbach
Publishing Co., 14 USPQ2d 1490, 1492 (TTAB 1989)
(applicant’s sole evidence of acquired distinctiveness, a
claim of use since 1975, held insufficient to establish
that the highly descriptive, if not generic, designation
RADIO CONTROL BUYERS GUIDE had become distinctive of
applicant’s magazines); In re Gray Inc., 3 USPQ2d 1558,
1559 (TTAB 1987) (“[T]o support registration of PROTECTIVE
EQUIPMENT [for burglar and fire alarms and burglar and fire
alarm surveillance services] on the Principal Register a
showing considerably stronger than a prima facie statement
of five years’ substantially exclusive use is required.”).
Cf. In re Synergistics Research Corp., 218 USPQ 165 (TTAB
1983) (applicant’s declaration of five years’ use held
sufficient to support registrability under §2(f) of BALL
DARTS for equipment sold as a unit for playing a target
game, in view of lack of evidence that the term is highly
descriptive (e.g., no dictionary evidence of any meaning of
Serial No. 76634212
12
BALL DARTS and no evidence of use of the term by
competitors or the public)).
The mark SEND-A-MESSAGE used in connection with
message delivery services intended for the recipient of a
gift is so highly descriptive that a statement of five
years’ substantially exclusive and continuous use is not
sufficient to establish that the mark has acquired
distinctiveness.
C. Whether SEND-A-MESSAGE is genric?
There is a two-part test used to determine whether a
designation is generic: (1) What is the class of goods or
services at issue? and (2) Does the relevant public
understand the designation primarily to refer to that class
of goods or services? H. Marvin Ginn Corp. v.
International Association of Fire Chiefs, Inc., 782 F.2d
987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986). The test
turns upon the primary significance that the term would
have to the relevant public. The examining attorney has
the burden of proving that a term is generic by clear
evidence. In re Merrill Lynch, Pierce, Fenner & Smith
Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987).
Because the Trademark Examining Attorney produced no
evidence at all regarding the public’s understanding of the
Serial No. 76634212
13
phrase SEND-A-MESSAGE as it relates to message delivery
services intended for the recipient of a gift, the
Examining Attorney failed to carry his burden. The
Examining Attorney may not simply cite dictionary
definitions in lieu of conducting an inquiry into the
meaning of the disputed phrase to hold it generic. In re
Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d
1807, 1810 (Fed. Cir. 2001), citing In re American
Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832, 1836
(Fed. Cir. 1999). Accordingly, based on this record, the
phrase SEND-A-MESSAGE is not a generic term.
Decision: The refusal to register SEND-A-MESSAGE on
the Principal Register on the ground that the mark is
merely descriptive and that applicant has not shown that
the mark has acquired distinctiveness is affirmed.
The refusal to register SEND-A-MESSAGE on the
Supplemental Register ground that the mark is generic is
reversed. The application is deemed to be amended to the
Supplemental Register and the mark will be registered on
the Supplemental Register in due course.