Art Jewdaica LLC

Trademark Trial and Appeal Board

Jul 28, 2011

No. 77588463 (T.T.A.B. Jul. 28, 2011)

Mailed:
July 28, 2011
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Art Jewdaica LLC
________

Serial No. 77588463
Serial No. 77588471
Serial No. 77588479 &
Serial No. 77588481
_______

Gene S. Winter of St. Onge Steward Johnston & Reens LLC for
Art Jewdaica LLC.

Karen K. Bush, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Seeherman, Bucher and Lykos, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Art Jewdaica LLC seeks registration on the Principal
Register of the term JEWDAICA (in standard character format)
for goods as follows:
“sculptures of metal” in Int. Class 6;1
“jewelry; sculptures made of precious metal” in
International Class 14;2
“art pictures; art prints; lithographic works
of art; paintings and calligraphic works;
posters” in International Class 16;3

1 Application Serial No. 77588463 was filed on October 8, 2008
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce.
2 Application Serial No. 77588471 was filed on October 8, 2008
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial Nos. 77588463, 77588471, 77588479 & 77588481
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and seeks registration on the Supplemental Register for the
same term, JEWDAICA, for the following services:
“retail store and on-line retail store services
featuring jewelry, sculptures and works of art”
in International Class 35.4
In all four applications, applicant has asserted that no
claim is made to the exclusive right to use the word “Judaica”
apart from the mark as shown.
Procedural History
Initially, the Trademark Examining Attorney refused
registration for all four applications on the ground that the
term is merely descriptive under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. § 1052(e)(1). When applicant amended
the ‘481 service mark application to an application on the
Supplemental Register, the Trademark Examining Attorney
refused registration of that application pursuant to Section
23 of the Trademark Act on the basis that the term was generic
for those recited services. In response to the final refusals
of the Trademark Examining Attorney, applicant appealed all
four refusals to this Board, at which time the appeals were

3 Application Serial No. 77588479 was filed on October 8, 2008
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce.
4 Application Serial No. 77588481 was filed on October 8, 2008
based upon claims of first use anywhere and first use in commerce
at least as early as December 23, 2003.

Serial Nos. 77588463, 77588471, 77588479 & 77588481
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consolidated. The applicant filed an identical brief in all
four applications while the Trademark Examining Attorney filed
an identical brief for the three Principal Register
applications for goods and a slightly different brief in the
‘481 Supplemental Register application for the recited
services.
We affirm all four of the refusals to register.
Issues on Appeal
The issues on appeal are: (1) whether the term JEWDAICA
is merely descriptive for applicant’s listed goods; and (2)
whether such term is generic for the recited services.
Arguments of Applicant and the Trademark Examining Attorney
Applicant sets forth several arguments in favor of
registration of its mark. In support of its position that the
term JEWDAICA is neither merely descriptive of the identified
goods nor generic for the recited services, applicant argues
that the various dictionary definitions of the word “Judaica”
are not clear enough to convey immediately information about
the goods or to name the services. Moreover, applicant argues
that its proposed mark constitutes a play on words (i.e.,
between the terms “jewelry” and “Judaic”). Applicant points
out that it has disclaimed the word “Judaica,” clearly limiting
Serial Nos. 77588463, 77588471, 77588479 & 77588481
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any proprietary rights to the specific spelling of “Jewdaica.”
Finally, applicant reminds us that in the event that any doubt
remains in making a determination under Section 2(e)(1) of the
Act, such doubt must be resolved in favor of applicant.
By contrast, in support of her position, the Trademark
Examining Attorney argues that the term “Jewdaica” is the
phonetic equivalent of the word “Judaica,” and that the term
“Judaica” identifies “things pertaining to Jewish life and
customs, especially when of a historical, literary, or
artistic nature.” She argues that even though the various
dictionary definitions for this word are not exactly the same,
the overall meaning of the word “Judaica” is clear. Namely,
she contends that the overall meaning of the term “Judaica”
clearly refers to materials that pertain to the religion of
Judaism or Jewish life, culture and customs.
The Trademark Examining Attorney also asserts, in
addition to “Jewdaica” being the phonetic equivalent of
“Judaica,” that potential customers will view it as the same
word with the same meaning, i.e., as an acceptable, alternate
spelling of the term, “Judaica” – analogous to frequent,
alternative spellings of “Hanukkah,” “Hanukka,” “Chanukah”
“Chanukkah,” etc.
As for applicant’s double entendre argument, the
Trademark Examining Attorney points out that, while initially
Serial Nos. 77588463, 77588471, 77588479 & 77588481
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applicant suggested that its coined term played on the words
“Jew” and “Judaica,” applicant now contends it plays on
“jewelry” and “Judaic.” The Trademark Examining Attorney
argues that for a tribunal to find the presence of a double
entendre, both (or all) meanings should be readily apparent to
consumers. However, she contends that if applicant itself is
unsure of the nature of its alleged double entendre, then the
average consumer is unlikely readily to recognize the play on
words.
As to applicant’s proffered disclaimer of the word
“Judaica,” the Trademark Examining Attorney correctly contends
that under Section 6 of the Act,5 such a disclaimer cannot make
registrable a standard character term that is in its entirety
merely descriptive or generic.
Mere Descriptiveness
A mark is merely descriptive, and therefore unregistrable
pursuant to the provisions of Section 2(e)(1) of the Trademark
Act, 15 U.S.C. § 1052(e)(1), if it immediately conveys
“knowledge of a quality, feature, function, or characteristic
of the goods or services.” In re Bayer Aktiengesellschaft,
488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) [ASPIRINA

5 § 6 (15 U.S.C. § 1056). Disclaimers
(a) The Director may require the applicant to disclaim an
unregistrable component of a mark otherwise registrable …
Serial Nos. 77588463, 77588471, 77588479 & 77588481
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is merely descriptive of analgesic product]. See also In re
MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780
(Fed. Cir. 2003) [MONTANA SERIES and PHILADELPHIA CARD are
merely descriptive of applicant’s “affinity” credit card
services; a “mark is merely descriptive if the ultimate
consumers immediately associate it with a quality or
characteristic of the product or service”]; In re Nett
Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001) [THE ULTIMATE BIKE RACK is merely descriptive of bicycle
racks]; and In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009
(Fed. Cir. 1987) [APPLE PIE is merely descriptive of a
potpourri mixture]. Descriptiveness of a mark is not
considered in the abstract, but in relation to the particular
goods or services for which registration is sought. That is,
when we analyze the evidence of record, we must keep in mind
that the test is not whether prospective purchasers can guess
what applicant’s goods [or services] are after seeing only
applicant’s mark. In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 218 (CCPA 1978). 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); and
In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539
(TTAB 1998).
Serial Nos. 77588463, 77588471, 77588479 & 77588481
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In addition to considering the applied-for mark in
relation to the goods or services for which registration is
sought, we must also consider the context in which the mark is
used and the significance that the mark is likely to have on
the average purchaser encountering the goods or services in
the marketplace. In re Omaha National Corp., 819 F.2d 1117,
2 USPQ2d 1859 (Fed. Cir. 1987); In re Pennzoil Products Co.,
20 USPQ2d 1753 (TTAB 1991); and In re Engineering Systems
Corp., 2 USPQ2d 1075 (TTAB 1986).
Hence, the ultimate question before us is whether the
term JEWDAICA conveys information about a significant
purpose, function or use of applicant’s goods with the
immediacy and particularity required by the Trademark Act.
The Trademark Examining Attorney has submitted the
following dictionary definitions of the word “Judaica”:

Ju·da·i·ca [ joo-dey-i-kuh]
plural noun
things pertaining to Jewish life and customs, especially when of a historical,
literary, or artistic nature, as books or ritual objects.
Origin: 1920–25; < Latin, noun use of neuter plural of jūdaicus Judaic 6

Ju·da·i·ca
noun
historical and literary materials related to Judiasm 7

6 judaica. Dictionary.com. Dictionary.com Unabridged. Random
House, Inc. http://dictionary.reference.com/browse/judaica (accessed by the
Examining Attorney on January 8, 2009).
7 judaica. Dictionary.com. Dictionary.com Unabridged. Princeton
Univ. http://dictionary.reference.com/browse/judaica (accessed by the
Examining Attorney on January 8, 2009).
Serial Nos. 77588463, 77588471, 77588479 & 77588481
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Ju·dai·ca (-i kә)
noun
1. books, papers, objects, data, etc. having to do
with Jews or Judaism
2. a collection of such materials
Origin: ModL < L Judaicus, Judaic 8

Ju·dai·ca
Jewish culture or artifacts: the Jewish religion, customs and culture, or
artifacts and historical and literary materials that relate to them. 9

Furthermore, the Trademark Examining Attorney has
submitted evidence from commercial and informational Internet
websites indicating the range of items included in the
category of “Judaica.” Certainly, in an ex parte proceeding,
materials obtained from the Internet are acceptable as evidence
of potential exposure to a term by the relevant public. See
In re Fitch IBCA, Inc., 64 USPQ2d 1058 (TTAB 2002). The
following examples are illustrative of these websites:

Thank you for visiting Art at the Center - Judaica Gallery. Here you can find that elegant or
perhaps funky piece, maybe a modestly-priced gift, or a museum-quality collector's piece, or just
something that pleases you. There is Judaica for everyone over a wide price range: Jewish arts and
crafts, ritual items, Israeli and Yiddish posters, gifts, jewelry, and more.
10

8 judaica. yourDictionary.com. Webster’s New World College
Dictionary http://www.yourdictionary.com/judaica (accessed by the
Trademark Examining Attorney January 2011).
9 judaica. World English Dictionary www.dictionary.msn.com/
(accessed by the Trademark Examining Attorney January 2011).
10 http://www.artatthecenter.com/
Serial Nos. 77588463, 77588471, 77588479 & 77588481
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Applicant cites to
additional language
from this same
website:

“Judaica – Describes
the ceremonial or
ritual objects/clothing
that Jews use to
perform religious
commandments or
traditions (Mitzvot).
Much more than a
tool, Judaica is an
extension of one’s
personal search for
connection,
spirituality, and a
visible identifier of a
Jewish home. Judaica
is available in a great
range of materials,
craftsmanship; for
young and old alike;
fun and serious;
moderately priced and
exclusive - all reflect
the diversity of the
Jewish people.”
11

11 http://www.judaism.com/ The website language on the right box
above as quoted by applicant is not treated as would be a dictionary
definition from a reference work. However, we find that it
complements nicely the various dictionary entries and other website
information offered by the Trademark Examining Attorney in helping
understand the breadth of the materials included in “Judaica.”
Serial Nos. 77588463, 77588471, 77588479 & 77588481
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Judaica-Art is a provider of fine art oil paintings at discount prices. We make the most beautiful
hand painted oil painting reproductions on canvas. Museum quality masterpieces that can be
turned into oil paintings reproductions from only $159. Real hand painted work. Now you can
have works of real art on your walls for a fraction of the price. If you have a painting you want us
to reproduce, we can paint any picture!!
Click here to see our Gallery. 12
We find that the evidence reproduced herein supports a
finding that, as applied to applicant’s goods, the term
“Judaica” would immediately describe, without conjecture or
speculation, a significant characteristic or feature of such
goods. As noted above, applicant’s goods are identified as
sculptures, jewelry, paintings, posters and other works of
art, which would include such items that pertain to Jewish
culture and religion. We conclude from these websites that
these types of products are called “Judaica,” and that online
merchants selling these types of products are known as Judaica
websites.
We are not persuaded by applicant’s argument that the
word “Judaica” is suggestive, at worst, because the dictionary
definitions made of record by the Trademark Examining Attorney
leave one with a nebulous connotation that “cannot immediately

12 http://www.judaica-art.com/

Serial Nos. 77588463, 77588471, 77588479 & 77588481
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describes or conveys information as to the ingredients,
qualities or characteristics of the goods and services with a
degree of particularity.” Applicant’s brief at 6. The above
dictionary entries support a finding that the word “Judaica”
conveys information about materials pertaining to Jewish life
and customs including historical or literary materials, items
of an artistic nature, or books and ritual objects related to
Judaism. In addition, the Internet websites establish that
Judaica includes, inter alia, artwork and crafts, historical
replicas and items of religious ritual, jewelry, Israeli and
Yiddish posters, etc.
As such, the evidence of dictionary definitions and pages
drawn from Internet sites support a finding that prospective
users of applicant’s goods would be accustomed to encountering
the word “Judaica” used to describe the types of goods that
applicant intends to market under the term JEWDAICA. Hence,
we find that the word “Judaica” would be highly descriptive of
applicant’s goods.
Applicant next argues that the position of the Trademark
Examining Attorney fails inasmuch as applicant spells the term
as JEWDAICA with the initial letters “Jew-” rather than
leading with the traditional letters “Ju-.” As a result,
applicant contends that its proposed mark, JEWDAICA, “is
Serial Nos. 77588463, 77588471, 77588479 & 77588481
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materially different from the word ‘Judaica’.”13 Rather,
applicant claims that it is a “specific and imaginative and
distinct”14 term, and that as a result, “a particular impression
is created [in the eyes of the prospective consumer] of the
proposed brand which does not allow him to immediately refer to
the word Judaica.”15
The real question, then, is whether the term JEWDAICA
will be viewed as merely a variation of the word “Judaica,” or
whether it will be viewed as a coined term that takes some
degree of thought to understand. We find that substituting
the initial letters “Jew-[daica]” for the traditional letters
“Ju-[daica]” does not transform this merely descriptive word
into a coined term that requires thought to decipher; rather,
the relevant consumers of these goods will immediately
recognize JEWDAICA as the equivalent of the word “Judaica,”
that the meaning of the term will be readily understood, and
hence, that JEWDAICA directly conveys information about a
significant characteristic or purpose of the identified goods.
For example, in the case of In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831-32
(Fed. Cir. 2007), the Court affirmed the Board’s decision that

13 Applicant’s brief at 9.
14 Id.
15 Id.

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ASPIRINA is merely descriptive for analgesic goods, quoting the
Board’s statement that “[t]he mere addition of the letter ‘A’
at the end of the generic term ‘aspirin’ is simply
insufficient to transform ASPIRINA into an inherently
distinctive mark for analgesics.” The Court also stated that:
Adding an “a” to aspirin results in virtually no
distinction with respect to the visual impressions of
the terms. Importantly, both terms will be used in
association with the same analgesic goods in this
country. There are, however, some differences in
sound. ASPIRINA contains four syllables and aspirin
contains two or three syllables (depending on how it
is pronounced). ASPIRINA also contains different
syllables and the emphasis is on the third syllable
for ASPIRINA, whereas the emphasis is on the first
syllable for aspirin. When the mark ASPIRINA is
considered as a whole, the significant similarities
in appearance and meaning of ASPIRINA and aspirin
demonstrate that the Board's finding that ASPIRINA is
merely descriptive of analgesic goods is supported by
substantial evidence. [footnote omitted]

See also, Fleetwood Co. v. Mende, 298 F.2d 797, 132 USPQ 458,
460 (CCPA 1962) [“TINTZ [is] a phonetic spelling of ‘tints’”].
A slight misspelling does not convert an otherwise descriptive
term into a suggestive one. In re Quik-Print Copy Shops, 616
F.2d 523, 205 USPQ 505, 507 n.9 (CCPA 1980) [QUIK-PRINT held
descriptive; “There is no legally significant difference here
between ‘quik’ and ‘quick’”].
In this case, substituting the letters “Jew-” for the
leading letters “Ju-” of “Judaica” creates even less of a
difference, inasmuch as “Judaica” and JEWDAICA are aurally
identical. There is little difference in their appearance.
Serial Nos. 77588463, 77588471, 77588479 & 77588481
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Further, the meaning of JEWDAICA remains the same as that of
Judaica, in that many words relating to the Jewish religion
use “Ju” instead of “Jew”, e.g., Judaism, Judaic, Judaize.
Hence, we disagree with applicant’s argument that its
applied-for term JEWDAICA is not merely descriptive or generic
because of the difference between it and “Judaica,”, and find
that this slight difference in spelling is not significant.
JEWDAICA is merely a misspelling of the word “Judaica” that
will be recognized immediately. In fact, applicant’s decision
to spell the first syllable as “Jew” simply reinforces the
overall connotation of the adopted term.
Another argument made by applicant is that its adopted
term constitutes a play on words or double entendre (i.e.,
between the terms “jewelry” and “Judaica”). However, we are
not persuaded that this alleged double meaning will be readily
apparent to consumers. While the “Jew-” syllable will be
understood as a reference to the descriptive word “Jew,” there
is no basis for us to conclude that the average consumer will
detect any suggestion of “jewelry” within applicant’s chosen
term. As noted above, even applicant did not recognize such a
suggestion when it initially argued against the refusal of
registration.
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Accordingly, we find that applicant’s mark, as applied to
the goods in International Classes 6, 14 and 16 is merely
descriptive as contemplated by Section 2(e)(1) of the Act.
Genericness
A term is generic, and therefore prohibited from
registration on the Supplemental Register, if it refers to the
class, genus or category of goods and/or services on or in
connection with which it is used. See In re Dial-A-Mattress
Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir.
2001), citing H. Marvin Ginn Corp. v. International
Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528
(Fed. Cir. 1986). The test for determining whether a term is
generic is its primary significance to the relevant public.
See Section 14(3) of the Act. See also In re American
Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir.
1999); Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d
1551 (Fed. Cir. 1991); and H. Marvin Ginn Corp., 228 USPQ at
530.
The Trademark Examining Attorney has the burden of
establishing by clear evidence that a term is generic and thus
unregistrable. See In re Merrill Lynch, Pierce, Fenner and
Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987).
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Evidence of the relevant public’s understanding of a term
may be obtained from any competent source, including
testimony, surveys, dictionaries, trade journals, newspapers,
and other publications. See In re Northland Aluminum
Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985).
The determination of whether a term is generic involves a
two-part inquiry: First, what is the category or class of the
services at issue? Second, is the term sought to be
registered understood by the relevant public primarily to
refer to that category of services? See H. Marvin Ginn Corp.,
228 USPQ at 530.
With respect to the first part of the inquiry, we find,
in this case, that the genus of services in the ‘481 service
mark application is appropriately identified by applicant’s
recitation of “retail store services featuring jewelry,
sculptures and works of art.”
The second part of the inquiry is whether the term sought
to be registered would be understood by the relevant public
primarily to refer to that category of services. As to an
identification of the relevant public, given the nature of the
goods sold through these recited services, it is reasonable to
assume that Jews would make up a significant percentage of
applicant’s consumers.
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The dictionary definitions and websites made a part of
this record amply demonstrate that “Judaica” would be
understood to refer to a very specific sub-category of these
services, namely, retail store services featuring jewelry,
sculptures and works of art pertaining to Jewish life and
customs. In other words, “Judaica” is a generic term for the
recited services. However, we must still determine whether
applicant’s alternative spelling changes the result under
Section 23 of the Act.
We find that our earlier discussion about applicant’s
having adopted a slightly misspelled version of the word
“Judaica” applies here as well, namely, the fact applicant is
using the word JEWDAICA does not result in its being
understood as anything other than the generic term. See,
e.g., In re Stanbel, Inc., 16 USPQ2d 1469 (TTAB 1990), aff'd
without pub. op., 20 USPQ2d 1319 (Fed. Cir. 1991) [where the
record established that the term “ice pack” was a generic
designation for a “nontoxic reusable ice substitute for use in
food and beverage coolers,” applicant’s asserted mark ICE PAK
was held generic and, therefore, unregistrable].
The misspelling here still results in a term that is the
phonetic equivalent of the generic term and appears nearly the
same. In view of the phonetic and connotative equivalence and
visual similarity, as discussed previously, we have no doubt
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but that the two terms would be viewed as being equivalents.
In other words, applicant’s use of the term JEWDAICA would be
understood by relevant purchasers as primarily naming the type
of retail operation, namely, retail store services featuring
jewelry, sculptures and works of art having a relevance to
Jewish culture and religion.
In short, “retail store services featuring jewelry,
sculptures and works of art” is the name of a category or
class of services marketing items that pertain to Judaism,
Jewish life and customs. In this case, because the term
JEWDAICA directly names the most important or central aspect
or purpose of applicant’s services, namely, that they are
focused on items of Jewish culture and religion, this term is
generic and should be freely available for use by competitors.
See In re Sun Oil Co., 426 F.2d 401, 165 USPQ 718 (CCPA 1970)
[CUSTOMBLENDED for gasoline held generic because category of
gasoline was blended personally for the motorist]; In re
Helena Rubinstein, Inc., 410 F.2d 438, 161 USPQ 606 (CCPA
1969) [PASTEURIZED for face cream held generic]; In re Central
Sprinkler Company, 49 USPQ2d 1194 (TTAB 1998) [ATTIC for
automatic sprinklers for fire protection of attics held
generic]; and In re Reckitt & Colman, North America Inc., 18
USPQ2d 1389 (TTAB 1991) [PERMA PRESS for soil and stain
removers held generic].
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Therefore, we conclude that the Trademark Examining
Attorney has met the burden of establishing that JEWDAICA is
incapable of identifying and distinguishing the source of the
recited services.
Decision: The refusals of the three applications for
goods in International Classes 6, 14 and 16 under Section
2(e)(1) of the Lanham Act on the ground that the proposed mark
is merely descriptive are hereby affirmed, and the refusal
under Section 23 of the Act on the ground that the mark is
generic for the recited services is likewise affirmed.