87099335 (T.T.A.B. Sep. 27, 2019)

Abbyson Living LLC

Trademark Trial and Appeal BoardSep 27, 2019

87099335 (T.T.A.B. Sep. 27, 2019)

Mailed: September 27, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board ——— In re Abbyson Living LLC ——— Serial No. 87099335 ——— Jaye G. Heybl, Ferguson Case Orr Paterson LLP, for Applicant. Benji Paradewelai, Trademark Examining Attorney, Law Office 101, Ronald R. Suss- man, Managing Attorney. ——— Before Mermelstein, Larkin, and English, Administrative Trademark Judges. Opinion by Mermelstein, Administrative Trademark Judge: Alleging an intent to use its mark in commerce, Applicant seeks registration on the Principal Register of the mark CYPRESS (in standard characters) for “furniture” in International Class 20.1 Registration was initially refused on the ground that the mark is merely descriptive of the identified goods.2 When Applicant informed the Ex- amining Attorney that its furniture “is not made of cypress wood,” 4 TTABVUE 4-5 (Req. for Recon. (Oct. 10, 2017)), the Examining Attorney issued a refusal to register 1 Filed July 11, 2016. 2 Registration was additionally refused under Trademark Act § 2(d), but the refusal was with- drawn when the cited registration was cancelled. This Opinion is Not a Precedent of the TTAB Serial No. 87099335 - 2 - on the ground that the mark is deceptively misdescriptive. Trademark Act § 2(e)(1), 15 U.S.C. § 1052(e)(1). When the refusal was made final, Applicant appealed. We affirm. I. Applicable Law The test for determining whether a term is deceptively mis- descriptive involves a determination of (1) whether the matter sought to be registered misdescribes the goods and, if so, (2) whether anyone is likely to believe the misrepre- sentation. In re White Jasmine LLC, 106 USPQ2d 1385, 1394 (TTAB 2013) (citing In re Quady Winery Inc., 221 USPQ 1213, 1214 (TTAB 1984)). The first prong of the test is satisfied if the mark is merely descriptive of a signif- icant property that the goods could, but do not, possess. In re Hinton, 116 USPQ2d 1051, 1052 (TTAB 2015). And to be merely descriptive, a mark must “immediately convey[ ] knowledge of a quality, feature, function, or characteristic of the goods . . . with which it is used.” In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (quoting In re Bayer AG, 488 F.3d 960, 963, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). Under the second prong of the test, we ask whether a reasonably prudent con- sumer would be likely to believe the misrepresentation made by the mark. In re Hin- ton, 116 USPQ2d at 1052 (citing R.J. Reynolds Tobacco Co. v. Brown & William- son Tobacco Corp., 226 USPQ 169, 179 (TTAB 1985)). Serial No. 87099335 - 3 - II. Discussion A. Does CYPRESS misdescribe furniture not made of cypress? The Examining Attorney’s evidence amply demonstrates that “cypress” is the com- mon name of a genus of trees, and that the wood of the cypress tree — also known as “cypress” — is used to make furniture. E.g., Ofc. Action (Oct. 3, 2016), TSDR 11 (def- inition of “cypress”); TSDR 20–21 (webpage for Don Hostetler’s Fine Cypress Furni- ture); TSDR 23–24 (webpage for Cypress Moon Handmade Cypress Furniture); TSDR 25 (webpage for Southern Cypress Furniture); TSDR 27–29 (myNewOrleans.com ar- ticle: Cypress Furniture); TSDR 36 (webpage Woodworking with Bald Cypress); TSDR 38 (webpage Best Woods for Outdoor Projects (including cypress)); Ofc. Action (Apr. 10, 2017), TSDR 8–9 (Times-Picayune article discussing a cypress dining table); TSDR 10–12 (Arkansas Democrat-Gazette article mentioning “handcrafted cypress furniture”); TSDR 14 (Times-Picayune article mentioning “furniture made from Lou- isiana cypress”); Ofc. Action (May 23, 2018), TSDR 36–40 (webpage of FurnitureBarn USA advertising “Cypress” furniture); TSDR 52 (webpage advertising cypress dresser); TSDR 61–67 (SANDYDELUCA DESIGN webpage “How To Choose The Cy- press Wood Furniture”).3 This evidence shows that CYPRESS is commonly used to describe furniture made of cypress. A consumer seeing the mark CYPRESS used in connection with furniture would therefore immediately, and without conjecture, understand the mark to refer 3 While the cited evidence is sufficient to support the Examining Attorney’s case, there is considerably more in the record. Serial No. 87099335 - 4 - to the composition of the furniture. The mark would thus be merely descriptive if the furniture in question were made in whole or in part of cypress. But because Applicant maintains that its goods are not made of cypress, the mark is misdescriptive. B. Are consumers likely to believe that Applicant’s furniture sold under the CYPRESS mark is made of cypress? It is also clear from the evidence of record, see above-cited examples, that a rea- sonably prudent consumer would believe Applicant’s misrepresentation. Cypress is more than a merely theoretical or unusual material from which to build furniture, and the record makes clear that a number of retailers sell furniture made of cypress, and describe it using the word “cypress.” Therefore, prospective purchasers seeing Applicant’s mark CYPRESS used on furniture would readily believe that it is made — at least in substantial part — of cypress. C. Applicant’s arguments. Applicant maintains that the mark does not misdescribe the goods: The Examining Attorney states that the mark misde- scribes that the furniture is made of cypress wood. How- ever, the mark is CYPRESS, not CYPRESS WOOD. The mark CYPRESS is not immediately descriptive of the goods. Accordingly is [sic] cannot be misdescriptive of the goods. App. Br., 19 TTABVUE 4. We disagree. While the mark is not CYPRESS WOOD, it is abundantly clear from the evidence of record that the word “cypress” alone is commonly used to generically refer to the wood of the cypress tree and to describe furniture made from it. While some of the evidence shows use of the term “cypress wood,” we have no doubt that Serial No. 87099335 - 5 - consumers would understand that to be equivalent to “cypress” when the context in- dicates reference to wood or articles made of wood. Applicant further argues that even if the mark is misdescriptive, purchasers are unlikely to believe the misrepresentation: CYPRESS is used as a mark by third parties for various goods, from lamps to rugs. See Exhibit A. CYPRESS is even a registered mark on the principal registry for the goods “recreational vehicles, namely, park trailers and destina- tion style travel trailers made of wood and as house- like style tiny houses”, which the Applicant stated in an Office Action response are not made from cypress wood (Reg. No. 4,763,070) (emphasis added). See Exhibit B. Yet there is no indication of consumers believing that any of these products are made from the cypress plant rather than CYPRESS being a suggestive mark. App. Br., 19 TTABVUE 5. Again, we disagree. The fact that CYPRESS is used on items such as rugs or cloth- ing, which are not normally made of cypress or any wood, shows only that the term is sometimes used as an arbitrary designation. But it does not follow that CYPRESS is not descriptive or misdescriptive when used on goods that are or could be made of cypress. Applicant also points to a registration for the mark CYPRESS for “recrea- tional vehicles, namely, park trailers and destination style travel trailers made of wood and as house-like style tiny houses,” as evidence that its mark is registrable. However, the question before us is whether the mark in the application before us is registrable based on this record. Third-party registrations “are not conclusive on the question of descriptiveness.” In re Scholastic Testing Serv., Inc., 196 USPQ 517, 519 (TTAB 1977). Even if there are third-party registrations using similar words, the Board “must decide each case on its own merits.” In re Nett Designs, Inc., 236 F.3d Serial No. 87099335 - 6 - 1339, 1342, 57 USPQ2d 1564 (Fed. Cir. 2001). We find that the noted registration is entitled to little weight in our decision. Finally, Applicant correctly points out that the question of descriptiveness may not be resolved by guesswork, but rather must be considered from the prospective of someone who knows what the goods are. DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). Applicant con- tends, however, that “A normal consumer of furniture would not be led to think that all furniture would be made of wood especially cypress wood.” App. Br., 19 TTABVUE 5. The problem with Applicant’s argument is that the application identifies Appli- cant’s goods as simply “furniture.” Because there is no limitation in the application, we must construe Applicant’s furniture to include all furniture, including furniture that is or could be made of cypress. See Stone Lion Capital Partners, LP v. Lion Cap- ital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1163 (Fed. Cir. 2014) (“Parties that choose to recite services in their trademark application that exceed their actual ser- vices will be held to the broader scope of the application.”). And if the mark is misde- scriptive with respect to any goods within the scope of the identification, registration must be refused. In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46, 47 (CCPA 1975) (citing In re Am. Soc’y Clinical Pathologists, Inc., 442 F.2d 1404, 169 USPQ 800, 801 (CCPA 1971)). Whether customers would think that all furniture is made of wood in general or cypress in particular is irrelevant. III. Conclusion Having considered all of the evidence and argument of record, including that which we have not specifically discussed, we conclude that Applicant’s mark, Serial No. 87099335 - 7 - CYPRESS, is deceptively misdescriptive of “furniture.” Decision: The refusal to register under Trademark Act §§ 2(e)(1) is affirmed.