American Furniture Warehouse CO

Trademark Trial and Appeal Board

Apr 23, 2018

No. 86407531 (T.T.A.B. Apr. 23, 2018)

This Opinion is a
Precedent of the TTAB

Mailed: April 23, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re American Furniture Warehouse CO
_____
Serial No. 86407531
_____
Ellen Reilly of The Reilly Intellectual Property Law Firm
for American Furniture Warehouse CO.

John D. Dalier, Trademark Examining Attorney, Law Office 106,
Mary Sparrow, Managing Attorney.
_____
Before Ritchie, Shaw, and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:
I. Background
American Furniture Warehouse CO (“Applicant”) seeks registration on the
Principal Register of the mark for “retail furniture stores” in
Serial No. 86407531
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International Class 35.1 Applicant claims ownership of the following three
registrations:
• Registration No. 4326532, which issued on the Principal Register on
April 30, 2013 for AMERICAN FURNITURE WAREHOUSE in
standard characters for “Computerized on-line retail store services in
the field of Furniture; Customer service in the field of retail store
services; Discount stores in the field of Furniture; Marketing services,
namely, retail store services in the field of furniture; On-line retail
store services featuring a wide variety of consumer goods of others;
Retail discount store services in the field of furniture; Retail furniture
stores; Retail store and on-line retail store services featuring furniture;
Retail stores featuring furniture,” with a claim of acquired
distinctiveness as to the entire mark;

• Registration No. 4390854, which issued on the Principal Register on
August 27, 2013 for for “Retail store services
featuring furniture and accessories; Retail furniture stores,” with a
claim of acquired distinctiveness-in-part as to AMERICAN
FURNITURE WAREHOUSE; and

• Registration No. 5101213, which issued on the Principal Register on
December 13, 2016 for for “Retail furniture
stores,” with a claim of acquired distinctiveness-in-part as to
AMERICAN and FURNITURE.

The Examining Attorney made varying requirements during prosecution of the
application, but ultimately issued a final refusal of registration absent a disclaimer

1 Application Serial No. 86407531 was filed September 26, 2014 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on an allegation of first use and use of the mark
in commerce at least as early as September 30, 2013. The description of the mark states: “The
mark consists of a stylized, curved letter ‘A’ that begins the word ‘AMERICAN’. The letter ‘A’
in ‘AMERICAN’ has stripes on the left side and on the right a swooping ribbon design filled
with stars and an outer line that turns and dots the letter ‘I’ with one star. Under the word
‘AMERICAN’ is the wording ‘FURNITURE WAREHOUSE’ and under ‘AMERICAN
FURNITURE WAREHOUSE’ is the wording ‘LIFESTYLE FURNITURE’.”
Serial No. 86407531
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of the wording AMERICAN FURNITURE WAREHOUSE as primarily geographically
descriptive, and of the word FURNITURE from the bottom line of the mark as
generic. Earlier in the prosecution of this Application, Applicant submitted a
disclaimer of FURNITURE and a statement of acquired distinctiveness-in-part as to
AMERICAN FURNITURE WAREHOUSE based on its prior registrations,
Registration Nos. 4326532 and 4390854.2 Applicant subsequently withdrew the
disclaimer and Section 2(f)-in-part claim and argued against both grounds for the
required disclaimers, but also claimed and continued to argue acquired
distinctiveness-in-part, such that the ultimate status of the Section 2(f)-in-part claim
is ambiguous.3

2 TSDR April 20, 2015 Response to Office Action (Section 2(f)-in-part); TSDR May 12, 2015
Examiner’s Amendment (disclaimer of “FURNITURE”).
3 In its September 1, 2015 Response to Office Action, Applicant withdrew the Section 2(f)-in-
part claim and the disclaimer and requested that they be deleted, explaining that it had
submitted them based on the Examining Attorney’s previous position – which had since
changed – that the disclaimer and Section 2(f)-in-part claim would put the application in
condition for approval to publish for opposition. TSDR September 1, 2015 Response to Office
Action; see also TSDR January 29, 2015 Office Action. Both the disclaimer and the Section
2(f)-in-part claim were deleted from the TSDR record at that point. TSDR September 9, 2015
“Trademark Snap Shot Amendment & Mail Processing Stylesheet.” However, in Applicant’s
later April 11, 2016 Response to Office Action, after arguing that AMERICAN FURNITURE
WAREHOUSE is not primarily geographically descriptive, Applicant stated “Nevertheless,
Applicant has submitted a 2(f) disclaimer in part [sic] for ‘AMERICAN FURNITURE
WAREHOUSE.’” In that same submission in the “Additional Statements Section,” Applicant
included a Section 2(f)-in-part claim that “AMERICAN FURNITURE WAREHOUSE has
become distinctive of the goods/services as evidenced by the ownership on the Principal
Register for the same mark for sufficiently similar goods/services of active U.S. Registration
No(s). 4326532, 4390854.” Id. Thus, at that point, the Section 2(f)-in-part claim was
reinserted in the TSDR record. TSDR April 12, 2016 “Trademark Snap Shot Amendment &
Mail Processing Stylesheet.” However, in Applicant’s next Response to Office Action dated
November 2, 2016, Applicant stated, “Applicant previously submitted a 2(f) disclaimer in part
[sic] for ‘AMERICAN FURNITURE WAREHOUSE.’ This disclaimer has been rejected by the
Examiner and is withdrawn by Applicant.” TSDR November 2, 2016 Response to Office
Action at 1. The Section 2(f)-in-part claim remained in the TSDR record. TSDR November 4,
2016 “Trademark Snap Shot Amendment & Mail Processing Stylesheet.” In the January 27,
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After the final Office Action maintaining the requirement for a disclaimer of
AMERICAN FURNITURE WAREHOUSE and FURNITURE, Applicant appealed. In
its Brief, Applicant argues against the substantive grounds for the required
disclaimers, but also requests that on appeal, the Board “allow [the mark] to be
registered with a 2(F)-in part claim as to ‘AMERICAN FURNITURE WAREHOUSE’
and a disclaimer as to the term FURNITURE that follows LIFESTYLE.”4 The
Examining Attorney states that “Applicant has appealed the Examining Attorney’s
final rejection of Applicant’s claim of acquired distinctiveness as to ‘AMERICAN
FURNITURE WAREHOUSE’ under Trademark Act Section 2(f).”5 Based on a review
of the entire record and briefing, we determine that Applicant has maintained the
claim of Section 2(f)-in-part, in the alternative, for purposes of this appeal.
The appeal has been fully briefed.
II. Disclaimer Requirements
Under Section 6(a) of the Trademark Act, 15 U.S.C. § 1056(a), an applicant may
be required to disclaim an unregistrable component of a mark otherwise registrable.
Failure to provide the required disclaimer constitutes a ground for refusing
registration. See In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1088-89 (Fed.
Cir. 2005). In this case, the Examining Attorney takes the position that AMERICAN

2017 final Office Action, the Examining Attorney stated without explanation that
“Applicant’s claim of acquired distinctiveness as to ‘AMERICAN FURNITURE
WAREHOUSE’ is again rejected,” and also noted that Applicant refused to provide the
required disclaimer of FURNITURE. TSDR January 27, 2017 Office Action at 1.
4 4 TTABVUE 22 (Applicant’s Brief).
5 6 TTABVUE 3 (Examining Attorney’s Brief).
Serial No. 86407531
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is a geographically descriptive term, and FURNITURE WAREHOUSE is generic,
such that as a whole, AMERICAN FURNITURE WAREHOUSE is primarily
geographically descriptive. The Examining Attorney also takes the position that
FURNITURE is generic and therefore must be disclaimed. Applicant previously
disputed this requirement but as of the briefing stage, apparently no longer contests
it.
As a threshold matter, we take note of Applicant’s Registration No. 4326532 for
the mark AMERICAN FURNITURE WAREHOUSE in standard characters,
registered under Section 2(f), for services that include those identified in the subject
application. This claim of acquired distinctiveness, which was made to overcome a
refusal under Section 2(e)(2), can be viewed as a concession by Applicant that the
wording itself is not inherently distinctive for those services. In re Thomas Nelson
Inc., 97 USPQ2d 1712, 1713 (TTAB 2011). However, in this appeal, Applicant argues
that this wording is not primarily geographically descriptive, and we therefore
address the issue for completeness and because at least one of Applicant’s arguments
involves the stylization of its applied-for mark.
A. Whether AMERICAN FURNITURE WAREHOUSE Is Primarily
Geographically Descriptive
Establishing that a term is primarily geographically descriptive under Section
2(e)(2), 15 U.S.C. § 1052(e)(2), requires a showing that:
1. the primary significance of the term in the mark sought to be registered is the
name of a place generally known to the public, and
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2. the public would make an association between the services and the place
named in the mark by believing that the services originate in that place.
In re Societe Generale des Eaux Minerals de Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450,
1451-52 (Fed. Cir. 1987); In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1853
(TTAB 2014). The second prong, or services-place association, can be presumed when
the services do in fact emanate from the place named in the mark. Hollywood Lawyers
Online, 110 USPQ2d at 1853; In re JT Tobacconists, 59 USPQ2d 1080, 1082 (TTAB
2001) (“[W]here there is no genuine issue that the geographical significance of a term
is its primary significance, and where the geographical place named by the term is
neither obscure nor remote, a public association of the goods or services with the place
may ordinarily be presumed from the fact that the applicant’s goods or services come
from the geographical place named in the mark.”). “Finally, ‘the presence of generic
or highly descriptive terms in a mark which also contains a primarily geographically
descriptive term does not serve to detract from the primary geographical significance
of the mark as a whole.’” Hollywood Lawyers Online, 110 USPQ2d at 1853-54 (citation
omitted).
AMERICAN is defined as “relating to the U.S. or the people who live there.”6
Applicant contends that in its mark, “‘AMERICAN’ is not a geographic location but a
modifier to ‘FURNITURE WAREHOUSE.’”7 However, other than a conclusory
assertion that AMERICAN is “arbitrary,” Applicant offers no alternative significance

6 TSDR January 27, 2017 Office Action at 24 (macmillandictionary.com).
7 4 TTABVUE 14-15 (Applicant’s Brief).
Serial No. 86407531
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of the term, and we cannot find one in the record. Thus, we find that the primary
significance of AMERICAN is geographic, the adjective form of AMERICA, a place
generally known to the American public. See In re Monograms Am., Inc., 51 USPQ2d
1317, 1320 (TTAB 1999) (affirming Section 2(e)(2) refusal of MONOGRAMS
AMERICA where “applicant has produced no evidence of other potential connotations
for the term AMERICA standing alone”). Applicant asserts that the “bare possibility”
that the services could emanate from an American company does not establish the
requisite services-place association.8 However, as reflected in its specimen of use,
Applicant’s retail furniture stores are located in the United States. Applicant’s
website also states that it has “the largest selection of furniture under one roof in the
United States,” and has “thirteen locations throughout Colorado and Arizona.”9 We
find that consumers would believe that Applicant’s services originate in America. See
In re BankAmerica Corp., 231 USPQ 873, 875 (TTAB 1986) (“Applicant has given no
persuasive explanation why its services identified by the mark … would not be
associated with the United States. Accordingly, for applicant’s services which
concededly emanate from this country, a public association of those services with
America may be presumed.”).
As for the FURNITURE WAREHOUSE wording, Applicant’s identified services
are retail furniture stores, and the record includes definitions of WAREHOUSE as
“[a] place in which goods or merchandise are stored” and as “[a] large, usually

8 Id. at 15.
9 TSDR January 27, 2017 Office Action at 21 (afw.com).
Serial No. 86407531
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wholesale shop.”10 The Examining Attorney supplemented these definitions with
websites of some third-party retail furniture stores using “Furniture Warehouse,”
although we observe that most appear to use the term in the manner of a mark or as
a trade name.11 However, in one example, the website of Express Furniture
Warehouse describes its business as “Your Discount Furniture Warehouse” and
invites consumers to “Come into one of our warehouses….”12 In addition, the record
includes several third-party registrations of marks that include the term
FURNITURE WAREHOUSE in connection with retail furniture store services in
which the registrants disclaimed FURNITURE WAREHOUSE.13 The registrations
are not on the Supplemental Register or under Section 2(f), such that the disclaimers
do not necessarily point to genericness. However, “‘[s]uch third party registrations
show the sense in which the word is used in ordinary parlance and may show that a
particular term has descriptive significance as applied to certain goods or services,’”
in this case with retail furniture store services. See In re Box Solutions Corp., 79
USPQ2d 1953, 1955 (TTAB 2006) (quoting Institut Nat’l Des Appellations D’Origine
v. Vintners Int’l Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992)).
According to Applicant, the definition of WAREHOUSE does not encompass
“retail furniture stores,” and the word merely suggests its large stock of furniture and

10 TSDR June 24, 2015 Office Action at 2 (American Heritage Dictionary).
11 TSDR October 9, 2015 Office Action at 2-6; TSDR January 27, 2017 Office Action at 14-
18.
12 TSDR January 27, 2017 Office Action at 17 (expressfurniturewarehouse.com).
13 TSDR January 27, 2017 Office Action at 2-11.
Serial No. 86407531
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“lower prices, such as those one would expect from a wholesale shop.”14 Presumably,
Applicant is attempting to draw a distinction between its retail services and
wholesale services that may be typical of certain warehouse stores. However, the
meaning of FURNITURE WAREHOUSE encompasses Applicant’s own
characterization of its services as a shop with a large stock of furniture at wholesale
prices. One definition in the record indicates that a warehouse can be a place in which
merchandise is stored, and Applicant’s website promoting its retail furniture stores
shows the following warehouse setting, presumably storing the furniture it sells:

14 TSDR September 1, 2015 office Action at 1.
Serial No. 86407531
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Another definition in the record indicates that a warehouse refers to a large shop that
usually sells at wholesale, thereby also including a large retail shop. Also, third-party
use evidence shows the term used in connection with retail furniture stores, and the
terms have been disclaimed by others in connection with retail furniture store
services. Thus, this second definition of WAREHOUSE also seems to encompass
Applicant’s retail furniture stores.
We find FURNITURE WAREHOUSE to be “the common descriptive name of a
class of goods or services.” In re Cordua Rests., 823 F.3d 594, 118 USPQ2d 1632, 1634
(Fed. Cir. 2016) (citations omitted). We agree with the Examining Attorney that this
term is generic for a class of retail furniture stores, such that as a whole, the wording
AMERICAN FURNITURE WAREHOUSE qualifies as primarily geographically
descriptive. See In re Wada, 194 F.3d 1297, 52 USPQ2d 1539, 1540 (Fed. Cir. 1999)
(affirming Board’s finding that in the mark NEW YORK WAYS GALLERY “the
addition of the words WAYS GALLERY to NEW YORK did not detract from the
primary geographic significance of the mark”); In re Wine Soc’y of Am., Inc., 12
USPQ2d 1139, 1141-42 (TTAB 1989) (THE WINE SOCIETY OF AMERICA deemed
primarily geographically descriptive where THE WINE SOCIETY immediately
conveys to the public the nature of applicant’s organization and OF AMERICA merely
indicates the geographic origin of the wine society’s services and activities).
B. Whether Applicant’s Mark Is Unitary
Applicant argues that no disclaimer of AMERICAN FURNITURE WAREHOUSE
or FURNITURE WAREHOUSE should be required because its mark,
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, is unitary. However, other than referring to its prior Registration
No. 4390854 “incorporating the design,” Applicant provides no explanation why the
elements of its mark are not separable for purposes of a disclaimer. Also, two of
Applicant’s prior registrations of similar marks, on which Applicant heavily relies in
this case, work against its claim of unitariness. Registration No. 4390854,
, contains a claim of acquired distinctiveness-in-part as to
AMERICAN FURNITURE WAREHOUSE and Registration No. 5101213,
, contains a claim of acquired distinctiveness-in-part as to
AMERICAN and FURNITURE. These claims of acquired distinctiveness-in-part
signal that these marks are not unitary in nature, because “if a mark is unitary for
purposes of avoiding a disclaimer, a claim of § 2(f) in part would generally not be
appropriate since the elements are so merged together that they cannot be regarded
as separable.” TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP)
§ 1212.02(f)(ii) (Oct. 2017). In the mark in the subject application, we find the
elements of the mark as a whole “not so merged together that they cannot be regarded
as separate.” Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 21 USPQ2d 1047, 1052
(Fed. Cir. 1991).
Serial No. 86407531
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C. Acquired Distinctiveness of AMERICAN FURNITURE WAREHOUSE
While the Examining Attorney insists that any Section 2(f)-in-part claim must be
limited to AMERICAN, with a disclaimer of FURNITURE WAREHOUSE, the only
explanation for this requirement was the alleged genericness of FURNITURE
WAREHOUSE. The Examining Attorney does not argue that the entire phrase
AMERICAN FURNITURE WAREHOUSE is incapable of source-indicating
significance. Cf. In re Bee Pollen from England Ltd., 219 USPQ 163, 166 (TTAB 1983)
(“We conclude that ‘BEE POLLEN FROM ENGLAND’ is incapable of distinguishing
the bee pollen of one manufacturer or importer of bee pollen from England from that
of another.”). Rather, the Examining Attorney contends that the phrase as a whole is
primarily geographically descriptive.
Examination policy set forth in the TMEP provides that “[a]n applicant may claim
that a geographic component of a mark has acquired distinctiveness under § 2(f).
Thus, if the examining attorney requires a disclaimer of matter that is primarily
geographically descriptive under § 2(e)(2), the applicant may seek to overcome the
disclaimer requirement by submitting a showing that the geographic component has
acquired distinctiveness under § 2(f).” TMEP § 1210.07(b). In this case, Applicant
seeks to overcome the disclaimer requirement for AMERICAN FURNITURE
WAREHOUSE by claiming acquired distinctiveness as to that phrase. The
appropriate claim of acquired distinctiveness-in-part depends on which wording
consumers allegedly have come to view as a source indicator for Applicant, in this
Serial No. 86407531
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case based on the marks in Applicant’s prior registrations. As explained in an
example in TMEP § 1212.02(f)(ii)(B):
if the mark is NATIONAL CAR RENTAL combined with
an inherently distinctive design element, and the applicant
can show acquired distinctiveness as to the entire wording,
the proper § 2(f) statement is § 2(f) in part as to the
wording NATIONAL CAR RENTAL with a separate
disclaimer of CAR RENTAL. In these examples, it would
be improper to limit the § 2(f) statement to the word
NATIONAL because the applicant is not claiming acquired
distinctiveness as to NATIONAL, but rather as to the
wording NATIONAL CAR RENTAL.
The Examining Attorney erroneously takes the position that the alleged genericness
of FURNITURE WAREHOUSE means that it cannot be part of the claim of acquired
distinctiveness. While a generic term standing alone certainly cannot acquire
distinctiveness, H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987,
228 USPQ 528, 530 (Fed. Cir. 1986), and cases cited therein, as in the NATIONAL
CAR RENTAL example, the generic term may be included in the claim of acquired
distinctiveness as long as an accompanying disclaimer of the generic term is provided.
Apart from the mistaken contention that the genericness of FURNITURE
WAREHOUSE precludes its inclusion in a claim of acquired distinctiveness, the
Examining Attorney made no other challenge to the sufficiency of the claim of
acquired distinctiveness-in-part.15 The Examining Attorney did not, for example,
argue that because of its nature or common use, AMERICAN FURNITURE
WAREHOUSE should be subject to a higher standard of proof of acquired

15 6 TTABVUE 15-18 (Examining Attorney’s Brief).
Serial No. 86407531
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distinctiveness. Given that we do not have such a contention before us, pursuant to
Trademark Rule 2.41(a)(1), 37 C.F.R. § 2.41(a), we accept Applicant’s prior
Registration Nos. 4326532 and 4390854, as sufficient evidence of acquired
distinctiveness-in-part of AMERICAN FURNITURE WAREHOUSE. Nonetheless, as
noted above, we agree with the Examining Attorney that FURNITURE
WAREHOUSE constitutes a generic term for retail furniture stores, and therefore it
must be disclaimed.
D. Disclaimer of FURNITURE
As for the required disclaimer of FURNITURE that appears on the bottom line of
Applicant’s mark , Applicant offers no argument against the
requirement and actually requests that its mark be registered with “a disclaimer as
to the term FURNITURE that follows LIFESTYLE.”16
III. Conclusion
In closing, we acknowledge, as Applicant has pointed out, that its prior
registrations “have registered in the past without disclaimers.”17 While we recognize
that “consistency is highly desirable,” In re Omega SA, 494 F.3d 1362, 83 USPQ2d
1541, 1544 (Fed. Cir. 2007), consistency in examination is not itself a substantive rule
of trademark law, and a desire for consistency with the decisions of prior examining
attorneys must yield to proper determinations under the Trademark Act and rules.

16 4 TTABVUE 22 (Applicant’s Brief) and 7 TTABVUE 8 (Applicant’s Reply Brief).
17 7 TTABVUE 6 (Applicant’s Reply Brief); see also 4 TTABVUE 13 (Applicant’s Brief).
Serial No. 86407531
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See In re Cordua Rests., 118 USPQ2d at 1635. The Board must assess each mark on
its own facts and record. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564,
1566 (Fed. Cir. 2001).
Although AMERICAN FURNITURE WAREHOUSE is primarily geographically
descriptive, we reverse the requirement that the entire term be disclaimed, instead
accepting Applicant’s claim of Section 2(f)-in-part as to the wording AMERICAN
FURNITURE WAREHOUSE, as long as Applicant submits a disclaimer of the
generic portion, FURNITURE WAREHOUSE. The requirement that Applicant
disclaim the second appearance of the word FURNITURE in the mark also is
affirmed.
Decision: The refusal to register Applicant’s mark is affirmed. However, if
Applicant submits the required disclaimer of FURNITURE WAREHOUSE and
FURNITURE to the Board within 30 days,18 this decision will be set aside as to the
affirmance of the disclaimer requirements, and the application then shall proceed to
publication. See Trademark Rule 2.142(g), 37 C.F.R. § 2.142(g) (allowing for entry of
a disclaimer after a decision on appeal).

18 The proper format for the disclaimer is: “No claim is made to the exclusive right to use
‘FURNITURE WAREHOUSE’ and ‘FURNITURE’ apart from the mark as shown.” See TMEP
§ 1213.08(a)(i).