Authentic Fitness Products, Inc.

Trademark Trial and Appeal Board

Aug 2, 2000

No. 75442401 (T.T.A.B. Aug. 2, 2000)

Paper No. 9
HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG 2, 00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Authentic Fitness Products, Inc.
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Serial No. 75/442,401
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Karen Artz Ash and Monique L. Ribando of Amster, Rothstein
& Ebenstein for Authentic Fitness Products, Inc.
Jeri J. Fickes, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Seeherman, Wendel and Bottorff, Administrative
Trademark Judges.
Opinion by Wendel, Administrative Trademark Judge:
Authentic Fitness Products, Inc. has filed an
application to register the mark TEE SWEAT for “men’s,
women’s and children’s activewear clothing, namely, fleece
shirts, overalls, pants, sweaters, jackets, skirts, hats,
gloves.”1

1 Serial No. 75/442,401, filed February 26, 1998, claiming a
first use date and a first use in commerce date of November 1995.
Ser No. 75/442,401
2
Registration has been finally refused on the ground
that the mark is merely descriptive under Section 2(e)(1)
of the Trademark Act. Applicant and the Examining Attorney
have filed briefs, but an oral hearing was not requested.2
The Examining Attorney argues that the proposed mark
TEE SWEAT merely describes at least some of applicant’s
activewear clothing. Relying upon dictionary definitions
for the terms “tee,” “T-shirt,” “sweat,” and “sweatshirt,”3
as well as Nexis excerpts showing use of the terms “tee”
and “sweat” to refer to particular types of shirts, she
maintains that TEE SWEAT merely describes garments having
attributes of both tee shirts and sweat apparel, or more
particularly, sweat shirts. She points to applicant’s
specimens and the description thereon of that specific item
as a “sweatshirt in tee-shirt weight” as evidence that
applicant’s goods do include a hybrid of this nature. She
argues that the pairing of the two descriptive terms does
not create a unitary mark with a separate non-descriptive

2 The request for reconsideration filed by applicant on September
8, 1999 has only recently been associated with the application
file. We find applicant’s arguments therein to be virtually
identical with arguments made in its brief and thus ones fully
considered by the Examining Attorney in writing her brief.
Accordingly, we have determined that there is no need at this
point to remand the case to the Examining Attorney for any
further consideration.
3 Although the Examining Attorney did not introduce these
definitions until her brief, we may take judicial notice of such
matter and accordingly have considered the definitions.
Ser No. 75/442,401
3
meaning; that whether understood by purchasers as a “sweat”
type of “tee” or as a “tee” “sweat” [shirt], the combined
terms retain their descriptive significance.
Applicant insists that the mark TEE SWEAT requires the
consumer to expend imagination to reach any conclusion
about the nature of the goods identified thereby; that,
although prospective customers, upon encountering
applicant’s mark may envision some type of T-shirt or
sweatshirt or even a short-sleeved sweatshirt, the true
nature of applicant’s clothing is not readily apparent from
the mark. Applicant argues that TEE SWEAT is at most
suggestive of a type of garment for sports activities, and
points to several third-party registrations for marks
containing the term SWEAT as a portion thereof for similar
goods as evidence4 of the suggestiveness of applicant’s mark
as a whole.5 Finally, applicant urges that any doubt as to
whether the mark is merely descriptive should be resolved
in applicant’s favor.
A term or phrase is merely descriptive within the
meaning of Section 2(e)(1) if it immediately conveys

4 The Examining Attorney has objected to applicant’s listing of
these third-party registrations in its brief as untimely under
Trademark Rule 2.142(d) and as improper in form. We sustain the
objection on both grounds and have given the third-party
registrations no consideration in reaching our decision.
5 Applicant has offered in its brief to disclaim the term SWEAT,
as has been done in many of the third-party registrations.
Ser No. 75/442,401
4
information about a characteristic or feature of the goods
with which it is being used. Whether or not a particular
term is merely descriptive is not determined in the
abstract, but rather in relation to the goods for which
registration is sought, the context in which the
designation is being used, and the significance the
designation is likely to have, because of the manner in
which it is used, to the average purchaser as he encounters
the goods bearing the designation. See In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
It is not necessary that the term or phrase describe all
the characteristics or features of the goods in order to be
merely descriptive; it is sufficient if the term or phrase
describes one significant attribute thereof. See In re
Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991).
We find the dictionary definitions6 and the Nexis
evidence fully adequate to conclude that the term TEE would

6 The dictionary definitions relied upon are:
tee 4. T-shirt
T-shirt (also tee shirt) 1. a short-sleeved, collared
undershirt. 2. an outer shirt of a design
similar to the T-shirt.

sweat 39. Informal. a. (of clothes) made to be worn
for exercise, sports or other physical activity.
b. made of the absorbent fabric used for such
clothes: sweat dresses.
Ser No. 75/442,401
5
be likely to be viewed by potential purchasers as the
equivalent of the term “T-shirt,” and the term SWEAT as a
reference to activewear clothing, or, if used in connection
with a shirt with a fleeced backing, as the type of shirt
known as a “sweatshirt.” Both terms would have descriptive
significance when used in connection with items such as
applicant’s fleece shirts, which obviously are of the type
of clothing described as “sweat” apparel and which may
patterned in the style of a T-shirt.
We are not limited in our analysis, however, to the
generally understood meanings of the terms TEE and SWEAT
and their applicability to applicant’s goods. Evidence of
the context in which the mark is being used on labels or in
advertising material is also probative of the reaction of
prospective purchasers to the mark. See In re
Pharmaceutical Innovations, Inc., 217 USPQ 365 (TTAB 1983).
Here, the specimens of record show that applicant’s
TEE SWEAT sweatshirt is being explicitly represented to

c. of, for, or associated with such clothes:
the sweat look in sportswear.
sweatshirt a usually long-sleeved, collarless, oversize
pullover made traditionally of heavy cotton
jersey that has a fleeced backing.
Ser No. 75/442,401
6
purchasers on labels or hang tags as being a “sweatshirt in
tee-shirt weight.” Purchasers are not simply encountering
a “fleece shirt” of any type, but a particular style in
which the characteristics of a sweatshirt and a tee-shirt
have been combined in a specific manner and which is being
touted as a hybrid of this nature. Clearly, upon seeing
the mark TEE SWEAT on a shirt of this type, potential
purchasers would immediately grasp the descriptive
significance of the designation. Not only is each
component TEE and SWEAT descriptive of a particular feature
of the goods; the combination TEE SWEAT is descriptive of
the hybrid containing these features.7 There is no
suggestive element in the mark as a whole, as argued by
applicant; instead the combination of the two descriptive
words results in a term or phrase which is also descriptive
of applicant’s goods.8

7 The dissent contends that the combination of TEE and SWEAT
results in a composite term with an incongruous meaning “because
tee-shirts and sweatshirts are different items of apparel,” and
because it would not be immediately apparent “whether the TEE
SWEAT shirt is a tee-shirt made of fleece (sweatshirt material),
or whether it is a light weight sweatshirt.” We believe,
however, that TEE SWEAT is merely descriptive of either and both
of those possible products. The incongruity, if any, resides in
the hybrid nature of the product itself, not in the mark.
8 In its application, applicant claimed ownership of S.N.
74/607,636 for the mark TEE SWEATS BY AUTHENTIC FITNESS for
similar goods. Upon review of Office records, we note that
applicant has disclaimed TEE SWEATS in that application.
Ser No. 75/442,401
7
Accordingly, we find no element of doubt here. The
proposed mark TEE SWEAT when used in connection with at
least some of applicant’s goods is merely descriptive
thereof. It is well settled that registration is properly
refused if the proposed mark is merely descriptive of any
of the goods for which registration is sought. See In re
Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988) and the
cases cited therein.
Decision: The refusal under Section 2(e)(1) is
affirmed.
H. R. Wendel
C. M. Bottorff
Administrative Trademark Judges,
Trademark Trial and Appeal Board
Ser No. 75/442,401
8
Seeherman, Administrative Trademark Judge, dissenting:
As the cases recognize, there is but a thin line of
distinction between a suggestive and a merely descriptive
term. In re Recovery, Inc., 196 USPQ 830 (TTAB 1977).
Here, I think that TEE SWEAT for applicant’s identified
clothing items falls on the suggestive side of that line.
Although there is no question that the individual elements
in the mark, TEE and SWEAT, are descriptive terms for,
respectively, tee shirts and sweatshirts, when these terms
are combined in the mark TEE SWEAT the mark as a whole has
an incongruous meaning because tee-shirts and sweatshirts
are different items of apparel. One who is told that the
mark is being used for a fleece shirt would not know
whether the TEE SWEAT shirt is a tee-shirt made of fleece
(sweatshirt material), or whether it is a light weight
sweatshirt. In fact, it is only when one views the
description of the product on the specimen labels,
“Sweatshirt in tee-shirt weight,” that one can understand
what the item is. However, the test for whether a term is
merely descriptive is not whether one can understand, after
the product is explained, what the mark refers to, or how
it is derived. Rather, to be found merely descriptive a
mark must immediately convey information concerning a
quality, characteristic, attribute or feature of a product.
Ser No. 75/442,401
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In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
TEE SWEAT does not immediately convey such information
about the identified fleece shirts (or, for that matter,
the other clothing items) with which the mark is used.
Accordingly, I would reverse the refusal of
registration.
E. J. Seeherman
Administrative Trademark Judge
Trademark Trial and Appeal Board