America's Cup Properties, Inc.

Trademark Trial and Appeal Board

Jun 27, 2013

No. 85444582 (T.T.A.B. Jun. 27, 2013)

Mailed: June 27, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re America’s Cup Properties, Inc.
________

Serial No. 85444582
_______

James R. Menker of Holley & Menker PA for America’s Cup
Properties, Inc.

Andrea Hack, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
_______

Before Wellington, Hightower, and Masiello, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Sherwood Development Group LLC, applicant, filed an
application to register the mark:

on the Principal Register for services ultimately
identified as:
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 85444582
2
Promoting public awareness of ocean conservation and
environmental matters; Charitable services, namely,
organizing and developing projects and initiatives to
promote awareness of oceanic and environmental
conservation; Promoting public awareness of the need
for oceanic and environmental conservation by
providing an internet website featuring news and
information in the field of oceanic and environmental
conservation; Public advocacy to promote awareness of
oceanic and environmental conservation; Developing
advertising and promotional campaigns for others
geared toward oceanic and environmental issues in
International Class 35.1

Registration has been finally refused pursuant to
Section 6(a) of the Trademark Act, 15 U.S.C. § 1056(a),
based on applicant’s failure to comply with an Office
requirement to disclaim HEALTHY OCEAN PROJECT because the
wording is merely descriptive of applicant’s services
within the meaning of Section 2(e)(1) of the Trademark Act,
15 U.S.C. § 1052(e)(1).
Applicant appealed the final refusal. Briefs were
filed.
An examining attorney may require an applicant to
disclaim an unregistrable component of a mark otherwise
registrable. Trademark Act Section 6(a). Merely
descriptive terms are unregistrable under Trademark Act
Section 2(e)(1) and, therefore, are subject to disclaimer
if the mark is otherwise registrable. Failure to comply

1 Application Serial No. 85444582, filed on October 11, 2011, is
based on an allegation of use in commerce under Section 1(a) of
Serial No. 85444582
3
with a disclaimer requirement is grounds for refusal of
registration. See In re Omaha National Corp., 819 F.2d
1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Richardson Ink
Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975); In re National
Presto Industries, Inc., 197 USPQ 188 (TTAB 1977); and In
re Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB
1968).
A term is deemed to be merely descriptive of goods or
services within the meaning of Section 2(e)(1) if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. See, e.g., In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
A term need not immediately convey an idea of each and
every specific feature of the applicant’s goods or services
in order to be considered merely descriptive; it is enough
that the term describes one significant attribute, function
or property of the goods or services. See In re
H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates,
180 USPQ 338 (TTAB 1973).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods or services

the Trademark Act.
Serial No. 85444582
4
for which registration is sought, the context in which it
is being used on or in connection with those goods or
services, and the possible significance that the term would
have to the average purchaser of the goods or services
because of the manner of its use. That a term may have
other meanings in different contexts is not controlling.
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Finally, “[a] mark can be descriptive if it describes the
intended users of the goods or services.” In re
Planalytics, Inc., 70 USPQ2d 1453, 1454 (TTAB 2004).
With the above principles in mind, we find the wording
HEALTHY OCEAN PROJECT to be merely descriptive of the
recited services. Upon viewing the proposed mark as a
whole and in connection with the recited services,
consumers will immediately understand HEALTHY OCEAN PROJECT
as describing the subject matter or objective of those
services, i.e., that applicant is creating public awareness
and advocating a project (or campaign) to promote
environmentally healthy oceans. In support of the
disclaimer requirement, the examining attorney introduced
evidence showing that it is not uncommon parlance for the
term “health(y)” to modify or be used in conjunction with
“ocean,” including applicant’s own use of “ocean health” on
its website. To wit, a printout from applicant’s website
Serial No. 85444582
5
describes an “ambitious goal with the AC Healthy Ocean
Project to develop the world’s largest communication
outreach program focused on improving ocean health.”2
(emphasis in italics provided). In her brief, the
examining attorney identifies seventeen excerpts from
various third-party websites wherein the term “healthy
oceans” (or “health” in connection with “oceans”) is used
to describe ecological efforts and/or environmental
concerns relating to conservation of the quality of ocean
waters.3 We see no need to repeat this ample display of
third-party use in this decision; rather, we conclude the
record effectively establishes that consumers viewing
applicant’s mark in connection with its services involving
“ocean conservation and environmental matters” will have no
trouble understanding the import of the wording HEALTHY
OCEAN.
As to the latter term, PROJECT, in the wording that
the examining attorney requires to be disclaimed, we find
that it too is merely descriptive. A “project” is defined
as “something that is contemplated, devised, or planned;

2 Printout from website attached to Office action dated February
1, 2012.
3 Third-party website printouts attached to Office action dated
October 16, 2012.
Serial No. 85444582
6
plan; scheme.”4 Thus, when prefaced with HEALTHY OCEAN and,
again, viewed in the context of promoting public awareness
in matters involving “ocean conservation and environmental
matters,” potential recipients of these services will
clearly understand “project” as a reference to applicant’s
plan or initiative in this regard. In addition, the
examining attorney submitted numerous third-party
registrations for marks containing the term PROJECT, with
said term disclaimed, in connection with promoting public
awareness services in various fields of use. These
registrations are probative and help further show that the
term is merely descriptive in connection with promoting
public awareness services. Sweats Fashions Inc. v. Pannill
Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1797 & n.1
(Fed. Cir. 1987); see also, In re Box Solutions Corp., 79
USPQ2d 1953, 1955 (TTAB 2006).
Applicant argues that the wording HEALTHY OCEAN
PROJECT is only suggestive, not descriptive, and that
“[r]ather than informing consumers of a specific or
concrete feature of the identified services, the wording is
only likely to conjure up indirect mental associations in
the consumer’s mind of what it is hoped will be

4 Printouts of dictionary definition taken from
www.dictionary.com, based on Random House Dictionary (2013),
Serial No. 85444582
7
accomplished by and through applicant’s services.” Brief,
p. 6. According to applicant, “the ordinary consumer will
pause and reflect on the use of the wording before
understanding anything specific about [the] services...”
Id. Applicant also contends that “[e]ven if a ‘healthy
ocean’ was a concept that could be readily quantified or
measured, consumers will inevitably have vastly different
ideas about how the identified services could directly
achieve a ‘healthy ocean.’” Id. at p. 7.
The aforementioned arguments set forth by applicant
are not persuasive. While “healthy ocean project” may
conjure a broad range of methods for conserving the
conditions of ocean waters, the fact that every specific
feature of applicant’s services is not identified in the
wording is not fatal to a finding that the term is merely
descriptive. Put simply, wording that describes
applicant’s services or their subject matter in broad terms
may be merely descriptive. In this case, we find that
consumers will easily and immediately understand that the
phrase “healthy ocean project” is being used to merely
describe applicant’s promoting public awareness services

attached to Office action dated February 1, 2012 and the brief
filed by the examining attorney.
Serial No. 85444582
8
involving its efforts or project for an ecologically sound
or “healthy” ocean.
In view of the above, we find that the disclaimer
requirement is appropriate.
Decision: The refusal to register based on the requirement
to disclaim the wording HEALTHY OCEAN PROJECT is affirmed.
However, if applicant submits the required disclaimer to
the Board within thirty days, this decision will be set
aside as to the affirmance of the disclaimer requirement.5
See Trademark Rule 2.142(g), 37 C.F.R. § 2.142.

5 The standardized printing format for the required disclaimer
text is as follows: “No claim is made to the exclusive right to
use HEALTHY OCEAN PROJECT apart from the mark as shown.” TMEP
§ 1213.08(a)(1) (April 2013).