Banana Republic (Apparel), LLC

Trademark Trial and Appeal Board

May 9, 2013

No. 77375380 (T.T.A.B. May. 9, 2013)

Exparte Appeal No.77375380

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THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: May 9, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Banana Republic (Apparel), LLC
_____

Serial Nos. 77375273 and 77375380
_____

J. Allison Strickland of Fross Zelnick Lehrman & Zissu PC for Banana Republic
(Apparel), LLC.

Leigh A. Lowry, Trademark Examining Attorney, Law Office 115 (John Lincoski,
Managing Attorney).
_____

Before Bucher, Kuhlke and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Banana Republic (Apparel), LLC (“applicant”) seeks registration of the mark
shown below

Exparte Appeal No.77375380

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for “a line of higher end handbags, purses, wallets, duffel bags, credit card cases,
briefcases, shaving bags sold empty, and tote bags, excluding products personalized
with the intended user's initials” in International Class 18 (the “Class 18
Application”);1 and “a line of higher end clothing, namely, belts; tops; blouses; jeans;
pants; shirts; shorts; sweaters; t-shirts; vests; blazers; coats; jackets; skirts; suits;
dresses; loungewear; gloves; headwear; scarves; ties, excluding products
personalized with the intended user's initials” in International Class 25 (the “Class
25 Application”).2 As described in each application, “[t]he mark consists of stylized
letters ‘BR’ above the word ‘MONOGRAM.’” In each application, applicant claims
ownership of three registrations for the stylized portion of its involved mark only,
i.e. the stylized letters “BR.”3
In each application, the examining attorney refused registration absent a
disclaimer of the word MONOGRAM, finding that that the term is merely
descriptive of applicant’s goods in both classes under Section 2(e)(1) of the Act, and
that applicant’s evidence of acquired distinctiveness under Section 2(f) of the Act is
insufficient. After the refusals were made final, applicant appealed and requested
reconsideration. In its requests for reconsideration, applicant amended its
identifications of goods. Specifically, applicant’s original identifications of goods
included only the products in question, but applicant amended both identifications

1 Application Serial No. 77375273, filed January 18, 2008, and amended to allege first use
dates of May 31, 2008.
2 Application Serial No. 77375380, filed January 18, 2008, and amended to allege first use
dates of April 8, 2008.
3 Registration Nos. 3096787, 3124964 and 3248232.
Exparte Appeal No.77375380

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to preface each with the phrase “a line of higher end” and to include at the end of
each the limiting phrase “excluding products personalized with the intended user’s
initials.” Applicant argued that as a result of the amendments, the mark is not
merely descriptive, and also withdrew its claim of acquired distinctiveness in the
Class 18 Application only. The examining attorney denied the requests for
reconsideration, and in doing so added a new ground for refusal, finding that
“applicant’s amendment to the identification[s] of goods to exclude ‘products
personalized with the intended user’s initials’ renders the MONOGRAM portion of
the mark [deceptively] misdescriptive under Section 2(e)(1).” The appeals resumed
and the Board consolidated them. Applicant and the examining attorney have filed
briefs.
Analysis
In her appeal brief, the examining attorney makes clear that the disclaimer
requirement is based on her finding that MONOGRAM is both merely descriptive
and deceptively misdescriptive of the goods, as amended. Examining Attorney’s
Brief at 1-2. We address each issue separately, recognizing that under Section 6(a)
of the Act, “[t]he Director may require the applicant to disclaim an unregistrable
component of a mark otherwise registrable,” such as a component which is merely
descriptive or deceptively misdescriptive under Section 2(e)(1). Failure to comply
with a disclaimer requirement is a ground upon which registration may be refused.
See In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395, 1399-1400 (Fed. Cir. 2006); In
re Stereotaxis, Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005).
Exparte Appeal No.77375380

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Disclaimer Requirement Based on Mere Descriptiveness4
A mark 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. In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828 (Fed. Cir.
2007); and In re Abcor Development, 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). A mark 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; rather, it is sufficient that the mark describes one significant attribute,
function or property of the goods or services. In re H.U.D.D.L.E., 216 USPQ 358
(TTAB 1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a
mark is merely descriptive is determined not in the abstract, but in relation to the
goods or services for which registration is sought, the context in which it is being
used on or in connection with the goods or services, and the possible significance
that the mark would have to the average purchaser of the goods or services because
of the manner of its use. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).

4 In its April 4, 2011 request for reconsideration after final action, applicant did not
continue to argue against the refusal based on mere descriptiveness. Instead, applicant
stated “in view of the Office’s continuing requirement, applicant will defer to the Office’s
determination in order for its application to proceed. However, applicant claims that its
mark has acquired distinctiveness ….” It is settled that where an applicant “amends its
application to seek registration based on acquired distinctiveness without expressly
reserving its right to argue that its mark is inherently distinctive,” it is deemed to have
admitted that its mark is not inherently distinctive. See e.g. In re Thomas Nelson, Inc., 97
USPQ2d 1712, 1713 (TTAB 2011). While applicant’s apparent attempt to reserve its right
to continue arguing that its mark is not merely descriptive was vague at best, we do not
find that applicant waived its right to continue claiming inherent distinctiveness. In the
future, however, applicant should take significantly greater care in reserving its rights.
Exparte Appeal No.77375380

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It is settled that “[t]he question is not whether someone presented with only the
mark could guess what the goods or services are. 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, 1316-17
(TTAB 2002).
Here, the examining attorney relies in part on the following dictionary
definitions of “monogram”: (1) “[a] design composed of one or more letters, typically
the initials of a name, used as an identifying mark”;5 and (2) “a design of one or
more letters, usually the initials of a name, used to decorate or identify an object.”6
Office Action Feb. 11, 2008. Based on these definitions, the examining attorney
argues that MONOGRAM describes a feature of applicant’s goods, specifically that
they sometimes include “the initials of the designer, sometimes in a repetitive or
wallpaper pattern, but also in a single instance like a conventional monogram.”
Examining Attorney’s Brief at 5.
For example, the examining attorney relies on, inter alia, the following
evidence:
• a printout of a Style File blog entry entitled “Letter
Men” from the “style.com” website which states: “On
Wednesday, Phillip Lim embroidered a sweater with the
‘Laverne & Shirley’-style PL monogram. Then, last night,
Zac Posen trotted out a top emblazoned with his own
moniker. The third designer to get in on the act? None
other than Ralph Lauren, who studded the pocket of a red
plaid shirt with a rhinestone RL. Three makes a trend;

5 American Heritage Dictionary of the English Language (4th ed. 2000).
6 Encarta World English Dictionary (North American Edition 2002).
Exparte Appeal No.77375380

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monogrammers should be doing a booming business come
fall.” Office Action Nov. 15, 2011;

• printouts from the “purseuing.com” website which
describe and picture: (1) a Michael Kors Jet Set
Monogram Milo Large Shoulder Tote, which bears the
initials MK; (2) a Coach Pop C Large Spotlight Handbag,
which bears “graphic Coach monogram decals” that
appear as the letter “C;” and (3) a Louis Vuitton
Monogram Canvas Etoile Shopper which bears the letters
“LV;” id.;

• printouts from the “michaelkors.com” website which
offers a wide variety of totes, bags, wristlets, satchels and
wallets bearing the initials “MK;” id.;

• a printout from the “stylehive.com” website promoting
applicant’s BR Monogram logo pocket square which bears
applicant’s involved mark. id.;

• printouts from the “piperlime.gap.com” website which
offers the Juicy Couture JC Monogram Ms. Daydreamer
shoulder bag bearing the initials “JC” and the Michael
Kors Grayson Large Jet Set Monogram satchel bag
bearing the initials MK, Office Action June 11, 2012; id.;

• a printout from the “luxedesignerhandbags.com”
website offering a pre-owned Gucci Black Monogram
Large Tote bag bearing Gucci’s “G” monogram; id.;

• printouts from the “louisvuitton.com” website offering
various clothing items and bags bearing the Louis Vuitton
monogram “LV;” id.; and

• a printout from the “macys.com” website offering a
Calvin Klein Handbag, Brasil Monogram Signature Tote
bearing the Calvin Klein monogram “CK;” Id.

The examining attorney also argues that MONOGRAM “merely describes that
the identified goods feature or can feature monograms” in the form of the user’s
Exparte Appeal No.77375380

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initials. For example, the examining attorney relies on, inter alia, the following
evidence:
• printouts from the “Monogramming and Engraving”
section of the “brooksbrothers.com” website which allows
users to add initials to their clothing or tote bag
purchases and offers a variety of “monogram styles,”
“monogram colors” and “monogram locations” for the
chosen initials; Office Action Feb. 11, 2008;

• printouts from the “Create Your Own Skinny Polo”
section of the “ralphlauren.com” website which allows
users to add initials in a variety of colors to their
purchased shirts; id.;

• printouts from the “Monogramming” section of the
“landsend.com” website which allows users to add initials
to their clothing, tote bag, toiletry kit and duffle bag
purchases, in a variety of styles; id.;

• printouts from “The Monogram Shop” section of the
“jcrew.com” website which allows users to add initials to
their purchased clothing and tote (beach) bags, in various
colors and styles; Office Action Oct. 4, 2010;

• printouts from the “talbots.com” website which offer
the option to add initials to purchased clothing; id.;

• printouts from the “garnethill.com” website which offer
the option to add initials to purchased clothing; id.;

• printouts from the “Monogramming” section of the
“hartmann.com” website which states that “Monogram
personalization is a great way to make a Hartmann item
truly your own” and provides prices for adding initials to
“business cases,” “personal leather goods” and “luggage
tags” in a variety of styles; id.;

• printouts from the “Monogramming” section of the
“llbean.com” website which offers the option to add
initials to purchased clothing, duffle bags and other
luggage; id.;

Exparte Appeal No.77375380

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• printouts from the “Personalize” section of the
“orvis.com” website which offers the option of adding
initials to purchased items; id;

• a printout of an article from the “style.com” website
which states “What’s better than a Louis Vuitton
monogram bag? A Louis Vuitton bag with your own
monogram on it. That’s the thinking behind the house’s
Mon Monogram service. The company has been allowing
customers to personalize luggage and smaller items like
wallets for a while …;” Office Action Nov. 15, 2011;

• a printout of a Style File blog entry entitled “Letter
Men, Prada’s Calling,” from the “style.com” website which
states: “But for the guys, [Miuccia Prada] threw in an
additional detail – bags and belt-slung sacs embroidered
with oversized, varsity-jacket-style lettering … Starting
January 15, backpacks, trolleys, and shopping bags in
saffiano leather or camouflage print can be customized
with made-to-order multicolored saffiano leather letters.
The service will be available on prada.com and at twelve
Prada stores worldwide;” id.;7

• a printout of the “Custom Bags” section of the
“longchamp.com” website which offers customization of
purchased handbags and purses. id.;

• a printout from the “Custom Monogram Shop” section
of the “juicycouture.com” website which offers the option
to add initials to purchased clothing items; Office Action
June 11, 2012;

• printouts from the Little Monogram Shop’s
“thelittlemonogramshop.net” website which offers
“personalized gifts for every occasion, including clothing;
id.; and

• printouts from The Monogram Shop’s website
“cvillemonogramshop.com” which offers “unique,

7 The examining attorney relies on a substantively similar “tweet” by @thepop referencing
personalization and monogramming services available at Gucci’s London store. Because
this evidence concerns services offered outside of the United States, it has been given no
consideration.
Exparte Appeal No.77375380

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personalized gifts for all occasions” including cosmetic and
tote bags and clothing. Id.

Finally, the examining attorney relies on a number of “live” trademark
registrations which include the word MONOGRAM and which are either registered
on the Supplemental Register or in which the word MONOGRAM is disclaimed,
including the following:
Mark Owner Register/No. Disclaimer Goods/Services
Monogram Market Monogram Market,
Inc.
Supplemental
/3559289
MARKET Retail store
services
featuring
personalized
goods and gifts
EMB EMBROIDERY/
MONOGRAM
BUSINESS
VNU Business
Media, Inc.
Principal/
2623117
EMBROIDERY
/MONOGRAM
BUSINESS
Publications,
namely,
magazines in the
field of screen
printers,
embroidery,
monogram and
decorated
apparel

Dodie Robertson Principal/
3284575
MONOGRAM Monogramming
of clothing

Notcina Corp. Principal/
3190909
MONOGRAMS
and
DIGITIZING
SOFTWARE
Computer
software for
automatically
digitizing and
converting
monogram
patterns to
stiches, for use
in home and
industrial type
embroidery
machines
MRS. MONOGRAM Johnston Design Principal/ MONOGRAM Embroidery and
Exparte Appeal No.77375380

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Associates, LLC 3218931 stitching
services
Monarch Monograms Ellen Luckett Baker Principal/
3225059
MONOGRAMS Embroidering;
Embroidery
services

Car Shoe SA Principal/
3910338
MONOGRAM Footwear
MONOGRAM
EMPREINTE
Louis Vuitton
Malletier Société
Anonyme
Principal/
3924902
MONOGRAM … traveling bags
… handbags …
DELIGHTFUL
MONOGRAM
Louis Vuitton
Malletier Société
Anonyme
Principal/
4021248
MONOGRAM … traveling bags
… handbags …

This evidence establishes that the word MONOGRAM is merely descriptive
because it identifies a common feature of bags and clothing. In fact, it is clear from
the evidence of record that tote bags, wallets, shirts, jackets and other products
identical or similar to those applicant offers under the involved mark commonly
bear the initials, or “monogram,” of their designers. Applicant’s argument that its
goods are not likely to be monogrammed because those offered under the involved
mark are “high end” is belied by the evidence that designers of high end products
such as Phillip Lim and Louis Vuitton affix their initials to products included in
applicant’s identifications of goods. Similarly, applicant’s specific exclusion of
“products personalized with the intended user’s initials” does not change the result
because the examining attorney has established that designers’ initials, as opposed
to those of intended users, often appear on applicant’s products.8

8 Notwithstanding applicant’s assertions to the contrary during prosecution of the
applications, the examining attorney has also introduced evidence that applicant offers a
BR MONOGRAM (Stylized) logo pocket square. Office Action Nov. 15, 2011 (printout from
Exparte Appeal No.77375380

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Furthermore, even though applicant does not seek registration for “products
personalized with the intended user’s initials,” the evidence of record leaves no
doubt that applicant’s goods are commonly personalized with their user’s initials by
other sellers of clothing and bags, and thus MONOGRAM describes a feature of
clothing and bags. The assertion that applicant itself does not monogram its
products does not impact the mere descriptiveness of MONOGRAM because
applicant’s products may still be monogrammed by a third party, after their
purchase from applicant.
Finally, the third-party registrations in which MONOGRAM is disclaimed or
registered on the Supplemental Register provide further evidence that the term is
merely descriptive of applicant’s goods. Sweats Fashions Inc. v. Pannill Knitting
Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1797 & n.1 (Fed. Cir. 1987).
Applicant’s arguments against the disclaimer requirement are unavailing.
Applicant first argues that “[t]he primary significance of the term MONOGRAM in
the Applicant’s Mark is that the Applicant’s goods are the Applicant’s high-end,
high-quality line. A typical consumer will interpret MONOGRAM in the Mark
exactly like the similar word SIGNATURE in other marks as indicating that the
goods are the trademark owner’s best, most fashionable and most prestigious.”
Applicant’s Brief at 8. There is absolutely no evidence, however, that the word

“stylehive.com”). And one of the articles upon which applicant relies reports that one of
applicant’s employees told a reporter that applicant was “working on” offering its own
monogramming services. Manley Dec. Ex. D (“Banana Republic, Monogram and the
Compromise of ‘Affordable Luxury’,” Men’s Flair, April 12, 2008).
Exparte Appeal No.77375380

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“monogram” conveys this meaning to “typical consumers,” and the alleged meaning
is belied by the only dictionary definitions of record.
We recognize that applicant promotes BR MONOGRAM as its “higher end” line,
including on social networks where applicant has many followers, and by sending
an “advertising mailer” to customers in the Fall of 2008 which described BR
MONOGRAM as a “limited edition collection, defined by exquisite fabrics,
distinctive details and modern silhouettes. Monogram is our most eloquent
expression of style.” Declaration of Kristen Manley, applicant’s Corporate Counsel
for Brand Services, submitted with Office Action response of October 21, 2011
(“Manley Dec.”) Ex. B.9 Similarly, New York City’s tourism website included a
listing for applicant’s BR MONOGRAM “pop up,” i.e. temporary, Manhattan store
which opened in 2008, and the listing describes the BR MONOGRAM line as
“similar to the company’s tried-and-true classic style, but … less ‘everyday,’ with
slightly higher prices and even better quality fabrics than Banana Republic’s
already high-caliber clothing.” Id. Ex. C; see also, id. Exs. D-F (articles from, inter
alia, Women’s Wear Daily, “portfolio.com,” DNR, Luxist, “msnbc.com,” and New
York Post describing the pop up store as “upmarket,” “upscale,” and “higher-priced,”
and BR MONOGRAM as a “signature label”). However, much of this evidence is
from the first half of 2008, when the temporary store was in operation, and even if
certain of applicant’s customers have come to associate the term “monogram” with

9 Ms. Manley submitted two declarations, one for the Class 18 Application and another for
the Class 25 Application. They are extremely similar, and unless otherwise indicated,
citations are to the declaration submitted with the Class 18 Application.
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applicant’s “higher end” line, the other evidence of record, including the only
dictionary definitions, establishes that “monogram” is most commonly used to
signify a user’s or designer’s initials, rather than applicant’s or another party’s
“higher end” collection. Perhaps more importantly, because applicant seeks
registration of a composite mark, comprised of applicant’s own monogram BR and
the word MONOGRAM, consumers will be more likely to associate the word
MONOGRAM with applicant’s BR monogram, placed in close proximity thereto,
than with an upscale collection, especially where the references to the intended
“upscale” connotation are online, in certain articles or in promotional materials
presumably not at consumers’ fingertips, whereas consumers will be directly
presented with applicant’s mark containing its BR monogram in close proximity to
the word MONOGRAM. Moreover, most of the references to the intended “upscale”
connotation do not display applicant’s involved mark. In short, applicant’s
promotion of and the unsolicited media attention accorded to BR MONOGRAM is
simply not enough to overcome the commonly understood meaning of “monogram,”
especially where a large number of third party sellers and ultimate users of bags
and clothing, not to mention applicant itself, use the term “monogram” as the record
shows it to be commonly understood.10

10 Applicant’s argument that MONOGRAM is not descriptive because it has multiple
meanings, including those cited by the examining attorney and the connotation of the “best
and highest quality,” as urged by applicant, is unavailing. In re IP Carrier Consulting
Group, 84 USPQ2d 1028, 1034 (TTAB 2007) (“The fact that ‘pipe’ has multiple meanings,
some of which are not descriptive, is not controlling or relevant to the descriptiveness
analysis. So long as any one of the meanings of a word is descriptive, the word may be
merely descriptive.”).

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Applicant next argues that the examining attorney erred “in equating the word
‘monogram’ (a noun) with the word ‘monogrammed’ (an adjective) … A shirt bearing
a purchaser’s initials as a monogram is a ‘monogrammed shirt,’ not a ‘monogram
shirt,’ in common speech.” Applicant’s Brief at 11-12 (emphasis in original). We are
not persuaded. The dictionary definitions and other evidence of record make clear
that “monogram” means a user’s or designer’s initials placed on objects, even if
those objects may also be described as “monogrammed.”11 Applicant’s reliance on In
re Gentex Corp., 150 USPQ 828 (TTAB 1966) is misplaced, because in that case
there was no evidence that the mark RIOTER merely described “protective
helmets”; in this case, by contrast, there is a great deal of evidence that
MONOGRAM merely describes a feature of applicant’s goods.
Finally, applicant introduced printouts from Office records regarding 38 third-
party Principal Register trademark registrations including the word MONOGRAM
which is not disclaimed, and argues that they establish that MONOGRAM is a
source identifier and that consumers will perceive it as such. This evidence is not
persuasive, however, because none of the registrations are for clothing or bags.
Instead, applicant relies on registrations for products such as “chocolate coating,”
“cleaning preparations for toilets,” “mops,” “student loan services” and a wide range
of other products and services which do not generally bear the initials of their user

11 Applicant’s suggestion that the distinction between nouns and adjectives is necessarily
relevant to the question of mere descriptiveness is inaccurate. See In re Central Sprinkler
Co., 49 USPQ2d 1194, 1199 (TTAB 1998).
Exparte Appeal No.77375380

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or designer. In this case, by contrast, we are concerned with clothes and bags, and
the evidence establishes that these are goods that commonly bear a monogram.
In short, the evidence of record leaves no doubt that MONOGRAM is merely
descriptive of applicant’s high-end clothing, handbags, purses and other products,
even though none of those products are “personalized with the intended user’s
initials” by applicant itself. Accordingly, the disclaimer requirement on the basis of
mere descriptiveness is affirmed.
Disclaimer Requirement Based On Deceptive Misdescriptiveness
Under Section 2(e)(1) of the Act, terms that are deceptively misdescriptive of the
goods to which they are applied are unregistrable. “The test for determining
whether a term is deceptively misdescriptive 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 misrepresentation.” In re White Jasmine
LLC, 106 USPQ2d 1385, 1394 (TTAB 2013).
Here, the dictionary definitions and other evidence of record make clear that
MONOGRAM misdescribes applicant’s goods. Indeed, MONOGRAM is defined as a
design, “typically” or “usually” the “initials of a name,” which is used to “decorate”
or “identify” an object. But applicant’s goods specifically exclude “products
personalized with the intended user’s initials,” and thus the use of MONOGRAM is
misdescriptive.12

12 Neither of applicant’s specimens of use show use of the involved mark directly on
applicant’s goods. Rather, applicant’s specimens consist of a sign on the wall of one of
applicant’s stores, a detachable hangtag affixed to clothing and a hanger bearing the mark
on which applicant’s clothes are hung. To the extent that any of applicant’s goods bear the
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The evidence of record also establishes that consumers are likely to believe the
misrepresentation. In fact, the evidence establishes that companies which offer
clothing, tote bags, purses and related products often offer monogramming services,
specifically the ability to personalize these goods with the intended user’s initials.
Here, however, applicant’s mark includes MONOGRAM but applicant will not offer
this type of monogramming service, as many of its competitors do and consumers
have therefore come to expect.
In short, the evidence of record leaves no doubt that MONOGRAM is
deceptively misdescriptive of applicant’s high-end clothing, handbags, purses and
other products, precisely because none of those products are “personalized with the
intended user’s initials,” as consumers have come to expect that such goods may be
monogrammed, by applicant or another entity. Accordingly, the disclaimer
requirement on the basis of deceptive misdescriptiveness is affirmed.
Acquired Distinctiveness
Applicant bears the burden of establishing that its mark has acquired
distinctiveness under Section 2(f) of the Act. In re Steelbuilding.com, 415 F.3d
1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005). In determining whether applicant
has met this burden, “the Board may examine copying, advertising expenditures,
sales success, length and exclusivity of use, unsolicited media coverage, and

involved mark, consumers will interpret the word MONOGRAM as describing the stylized
initials BR appearing directly above it.

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consumer studies (linking the name to a source),” though “no single factor is
determinative.” Id.
It is settled that “the applicant’s burden of showing acquired distinctiveness
increases with the level of descriptiveness; a more descriptive term requires more
evidence of secondary meaning.” Id. (citing In re Bongrain Intern. (Am.) Corp., 894
F.2d 1316, 13 USPQ2d 1727 (Fed. Cir. 1990)). Here, for the reasons set forth above,
we find that applicant’s mark is highly descriptive, and that applicant’s burden is
“concomitantly high.” Id.
Applicant has not met this burden. It introduced a copy of one advertisement in
Vogue, Manley Dec. Ex. A, but that advertisement bears only the stylized initials
BR (which as indicated is separately used and registered), without the
accompanying MONOGRAM which is part of the involved mark and the part which
is subject to the disclaimer requirement. And while Ms. Manley testified generally
that applicant ran other advertisements of some type in other unspecified
publications, it is not clear whether these advertisements included the involved
mark or were like the one in Vogue. Applicant’s mailer, discussed above and
included as Exhibit B to the Manley declaration, includes the involved mark, as
does applicant’s website, if sporadically, but all told applicant’s promotional efforts
are underwhelming at best, especially because applicant and others often do not use
the involved mark, but instead only the words BR MONOGRAM or simply
MONOGRAM, and because applicant does not provide any quantitative information
on its promotional efforts. Similarly, the publications and websites which mention
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BR MONOGRAM usually do not display the involved stylized mark as it appears in
the drawing, and the quantity of this evidence is also insufficient, especially for a
mark as highly descriptive as applicant’s. Applicant has sold “hundreds of
thousands of dollars worth” of goods identified in the Class 18 Application and “tens
of millions of dollars worth” of goods identified in the Class 25 Application. Manley
Dec. in Class 18 Application ¶ 13; Manley Dec. in Class 25 Application ¶ 14.
However, this evidence is insufficient, especially given that applicant’s mark is
highly descriptive, as it is unclear whether applicant’s sales success is a function of
the products’ popularity (as opposed to consumer recognition of the involved mark),
or derives from the stylized BR component of applicant’s mark (as opposed to the
mark in the drawing at issue). See In re Bongrain, 894 F.2d at 1316, 13 USPQ2d at
1729.
More importantly, the quantity and quality of evidence of use of MONOGRAM
by third parties establishes that applicant’s mark has not acquired distinctiveness.
To the contrary, the evidence that Phillip Lim, Ralph Lauren, Zac Posen, Michael
Kors, Coach and Louis Vuitton, among others, monogram some of their bags and
clothes with their own initials, and the evidence that Brooks Brothers, Ralph
Lauren, Lands End, J. Crew, Talbots, Garnet Hill, Hartmann, L.L. Bean, Orvis and
Juicy Couture offer monogramming services for clothes and bags, all establish that
applicant’s use of MONOGRAM is anything but “exclusive.” Levi Strauss & Co. v.
Genesco, Inc., 742 F.2d 1401, 222 USPQ 939, 940-41 (Fed. Cir. 1984) (“When the
record shows that purchasers are confronted with more than one (let alone
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numerous) independent users of a term or device, an application for registration
under Section 2(f) cannot be successful, for distinctiveness on which purchasers may
rely is lacking under such circumstances.”); see also, Racine Industries Inc. v. Bane-
Clene Corp., 35 USPQ2d 1832, 1840 (TTAB 1994).
Applicant’s Request for Remand
In the event the disclaimer requirement is affirmed, applicant requests in the
alternative, in its brief, and for the first time since the appeal resumed, that this
case be remanded to the examining attorney “to consider 2(f) evidence based on five
years’ continuous use,” pointing out that by the time the appeal is decided, “the fifth
anniversary of Applicant’s first use date in early 2008 will likely have passed.” The
examining attorney objects to remand.
We decline applicant’s alternative request. As TBMP § 1205.01 (3d ed. rev.
2012), upon which applicant relies, makes clear, the Board has the discretion to
deny a request for remand, including when it “would serve no useful purpose.”
Here, remand would serve no useful purpose because MONOGRAM is so highly
descriptive, and so extensively used by third parties, that evidence that applicant
has used its mark for more than five years would be insufficient to establish
acquired distinctiveness. In re Ennco Display Systems, Inc., 56 USPQ2d 1279, 1286
(TTAB 2000) (while Board may consider evidence of continuous use for more than
five years, “the language of the statute is permissive, and the weight to be accorded
this kind of evidence depends on the facts and circumstances of the particular
case”). Applicant has already submitted what would be considered stronger
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20
evidence of acquired distinctiveness, and a declaration stating that its mark has
now been used for five years would not add to the weight of the evidence.
Conclusion
After careful consideration of all of the evidence and argument presented,
including evidence and argument not specifically discussed herein, we find that
there is no doubt that MONOGRAM is merely descriptive and deceptively
misdescriptive, and without acquired distinctiveness, for the goods identified in
applicant’s Class 18 Application and Class 25 Application.
Decision: The refusal to register in the absence of a disclaimer of
MONOGRAM is affirmed. This decision will be set aside if, within thirty days of
the mailing date of this order, applicant submits to the Board a proper disclaimer of
MONOGRAM in each application. Trademark Rule 2.142(g). The disclaimer
should be worded as follows: “No claim is made to the exclusive right to use the
word MONOGRAM apart from the mark as shown.”