Belle Garden LLC

Trademark Trial and Appeal Board

Aug 28, 2006

No. 78411088 (T.T.A.B. Aug. 28, 2006)

Hearing: Mailed:
April 11, 2006 August 28, 2006
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Belle Garden LLC
________

Serial No. 78411088
_______

David Bogart Dort of Dort Close IP, PLLC for Belle Garden
LLC.

Jason Eric Lott, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
_______

Before Seeherman, Hohein and Bucher, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Belle Garden LLC seeks registration on the Principal
Register of the mark GARDEN BAG (in standard character
format) for goods identified in the application as “flower
and plant holders made of cloth” in International Class 21.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this mark given applicant’s failure to disclaim

1 Application Serial No. 78411088 was filed on April 30, 2004
based upon applicant’s allegation of first use anywhere and use
in commerce at least as early as April 26, 2004.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Serial No. 78411088
- 2 -
the word “bag” as required by the Trademark Examining
Attorney.
Applicant and the Trademark Examining Attorney have
fully briefed the case, and both appeared at an oral
hearing held before this panel of the Board. We affirm the
refusal to register.
The issue herein is straightforward. The Trademark
Examining Attorney takes the position that the term “bag”
is merely descriptive and should be disclaimed. By
contrast, applicant argues that the term “bag” is, at
worst, suggestive of its goods, rather than descriptive,
and does not need to be disclaimed. Applicant’s brief pp.
2 - 5.
As explained by the Trademark Examining Attorney,
Section 6(a) of the Trademark Act, 15 U.S.C. § 1056(a),
states that the Office may require an applicant to disclaim
an unregistrable component of a mark. Inasmuch as Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e), bars the
registration of a mark which is merely descriptive of the
goods, the Office may require that applicant disclaim a
merely descriptive portion of a mark. In the event that
applicant does not comply with this disclaimer requirement,
Serial No. 78411088
- 3 -
the Trademark Examining Attorney may refuse registration of
the entire mark.
Applicant takes the position that its “holders for …
plants” are “planters” – and not “bags.” However, even if
we accept that the word “planters” may well be a generic
category or class of goods for these plant holders, it does
not foreclose the possibility that the word “bag” continues
to be merely descriptive of the involved goods. It is in
this context that we explore the record to see if it
supports the position of the Trademark Examining Attorney:
namely, if applicant’s plant holder made of cloth looks
like a bag, functions as a bag, and is referred to as a bag
by applicant, then we should find “bag” to be a merely
descriptive term for the goods.
Applicant’s
website depicts a
flexible cloth
container hanging
from the arm of a
wooden bench and
holding a plant.

BelleGarden's original
Garden Bag was
created especially for
plants. Our cutting
edge design maintains
the beauty of the fabric
while allowing water to
escape from the
container, protecting
your plant's roots.
Serial No. 78411088
- 4 -
In this website example, applicant has also pluralized
its mark in a way that excentuates the highly descriptive
nature of the second term of this suggestive combined mark.
Then with its request for
reconsideration, applicant submitted
a specimen using the word “bag”
twice to describe its planter.

So, just as it has often been said that, if it walks
like a duck and quacks like a duck, it is a duck – it is
likewise the case with applicant’s planter that inasmuch as
the record shows that it looks like a bag and is referred
to even by applicant as a bag, consumers would immediately
perceive the product as a bag.
Accordingly, we find that the word “bag” in
applicant’s mark immediately and directly conveys specific
information about the nature of this planter, i.e., it
tells consumers that the planter is in the form of a bag.
Hence, we affirm the refusal of the Trademark Examining
Attorney to register the mark absent a disclaimer of the
unregistrable component, “bag.”
Decision: The requirement for a disclaimer of the
word “bag” on the ground that this term is merely
descriptive of the identified goods is affirmed.
Serial No. 78411088
- 5 -
However, in accordance with Trademark Rule 2.142(g),
this decision will be set aside and this application will
be returned to the Trademark Examining Attorney to place it
in condition for publication for opposition, if applicant,
no more than thirty days from the mailing date of this
decision, submits an appropriately worded disclaimer,
namely:
No claim is made to the exclusive right to
use the word “Bag” apart from the mark as
shown.