Boot Royalty Co., L.P.

Trademark Trial and Appeal Board

Jun 24, 2004

No. 76281084 (T.T.A.B. Jun. 24, 2004)

Mailed: June 24, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Boot Royalty Company, L.P.
________
Serial No. 76281084
_______
Charles S. Cotropia of Sidley Austin Brown & Wood L.L.P.
for Boot Royalty Company, L.P.
Jeri Fickes, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______
Before Quinn, Chapman and Bucher, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
On July 6, 2001, Boot Royalty Company, L.P. (a
Delaware limited partnership) filed an application to
register the mark BARN ROPERS on the Principal Register for
“footwear, namely, boots” in International Class 25. The
application is based on applicant’s assertion of a bona
fide intention to use the mark in commerce on the
identified goods.
The Examining Attorney initially refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76281084
2
§1052(d). In its response thereto, applicant argued, inter
alia, as follows (applicant’s March 27, 2002 response, p.
3):
As the attached materials demonstrate,1
the term “roper” is a generic term used
to describe a particular type of boot.
Generally, a “roper” is considered to
be a type of boot with a lower heel,
lower overall height, and significantly
less adornment than a typical western-
style or “cowboy” boot.
In the next Office action, the Examining Attorney
withdrew her refusal to register under Section 2(d) of the
Trademark Act, and refused registration on the grounds that
applicant’s mark, BARN ROPERS, is (i) deceptive in relation
to applicant’s goods under Section 2(a) of the Trademark
Act, 15 U.S.C. §1052(a); (ii) deceptively misdescriptive of
applicant’s goods under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. §1052(e)(1); and/or (iii) merely descriptive
of applicant’s goods under Section 2(e)(1) of the Trademark
Act, 15 U.S.C. §1052(e)(1). She also required that
applicant indicate whether the mark has any significance in
the relevant trade pursuant to Trademark Rule 2.61(b). She
inquired “Specifically, are applicant’s goods a combination
1 The attached materials consist of six exhibits -- all being
printouts of pages from various websites showing use of the term
“roper” or “ropers” as a type of boot.
Ser. No. 76281084
3
of a barn boot and roper boot, or a barn boot with a roper
heel?” (August 22, 2002 Office action, unnumbered page 3.)
When the three refusals to register were made final,
applicant appealed to the Board, and both applicant and the
Examining Attorney filed briefs. Applicant did not request
an oral hearing.
The Examining Attorney submitted one full story and
several excerpted stories retrieved from the Nexis database
and printouts of pages from the Internet to show that the
terms “barn” and “roper” each describe a type of boot and
that both types of boots are suitable for particular
functions. Specifically she asserts that “barn” boots are
suitable for performing barn chores such as mucking stalls
and grooming horses, or they are used for their resistance
to the infiltration of the elements such as water; and that
“roper” boots are designed to fit in stirrups in a way to
accommodate roping work and also to accommodate walking and
ground work with greater ease than other cowboy boot
styles.
Examples of the stories retrieved from the Nexis
database which were submitted by the Examining Attorney are
reproduced below:
Headline: Secrets of the Boot
…Cowboy Boots …
Ser. No. 76281084
4
Q. What if you don’t want high heels
and curly toes?
A. Try the style known as the roper.
It has a walking heel, a staff (or leg)
about three inches shorter than average
cowboy boots. A roping boot tends to
bend around the stirrup as the rider
leans back to tighten the rope. Ropers
are constructed with no heavy mid-sole
or shank to cause the toes to curl.
Ropers are the boots to wear when you
are planning to spend a lot of time off
the horse. … “Albuquerque Tribune,”
July 25, 1995;
Headline: From Classic Hats to Fancy
Footwear, Riders and Fans Take a
Western Look
…Boot trends are also going
traditional, said Garr. Although
“ropers” still sell, most customers now
want the basic boot. A roper boot has
stitching all the way around the shoe-
like sole, a rounder toe and flatter
heel. Traditional cowboy boots have
stitching only three-quarters of the
way around with a narrow, curved and
reinforced shank under the arch for
harder wear and tear. … “Arkansas
Democrat-Gazette,” June 29, 1997;
Headline: The Good, The Great and The
Good Griefs
…Dress wear by Varvatos means either
black or camel, with the snap of
officers’ coats and leather roper
boots. … “The Houston Chronicle,”
February 22, 2001;
Headline: The Inauguration of George
W. Bush, Ballgowns and Boots Take the
Spotlight
…velvet Donna Karan gown she wore to
both of George W.’s gubernatorial
inaugurals. Her fancy footwear will be
her trusty roper boots. … “The Houston
Chronicle,” January 18, 2001;
Ser. No. 76281084
5
Headline: My Car, and My Son Are
Transformed
…Eventually, I’ll begin to look for
another used vehicle for day-to-day
driving. This time I’ll get one so
uncool, Tim won’t even think to object
if I drive in my barn boots, leave the
floor mats bunched and cockeyed, and
let the dogs ride shotgun, moist noses
pressed to the window. … “The
Christian Science Monitor,” April 29,
2002; and
Headline: A Special Land, A Special
Time
…20 below or 10 below, even, says
folklorist James P. Leary, as he sits
in jeans and manure-resistant barn
boots in his UW-Madison office. “I
like to be outside then. Not forever,
but I like to go out. … “Milwaukee
Journal Sentinel,” July 18, 1999.
The Examining Attorney also submitted printouts of
pages from two different Internet websites, specifically,
one showing that the company offers men’s boots (with a
roper heel) and “Barn Boots” (www.drewsboots.com/boulet);
and at www.gprix.com/erbbootp.htm it states the following:
“EPC Rubber Barn Boots Durable and waterproof. Features a
loose fitting 15” shaft for easy-on easy-off, long wearing
gripper tread sole for good traction and spur rest for
easier boot removable.”
The Examining Attorney contends that the proposed mark
is deceptive when used on boots that “may not combine the
features of barn boots and roper boots” (brief, p. 2); that
Ser. No. 76281084
6
consumers could “plausibly believe that applicant’s boots
have both barn boot and roper boot features” (brief, p. 6);
and that this misrepresentation will materially affect
consumers’ decisions to purchase the goods.
Further, she argues that even if the mark is not
deceptive under Section 2(a), the mark is deceptively
misdescriptive under Section 2(e)(1) if applicant’s goods
do not (or if use has not yet commenced, will not) include
the features of barn boots and roper boots; or it is merely
descriptive of applicant’s goods if they do (or will)
include said features.
Applicant contends that there is no deception under
Section 2(a) because (i) the combination of the words
“BARN” and “ROPERS” in a single mark is a coined term that
has no meaning in the industry, but is instead a unique and
incongruous combination of terms, and the combination
cannot be misdescriptive as it has no recognized
descriptive significance; (ii) that assuming arrguendo
there is a misdescriptiveness, there is no evidence that
purchasers would believe the misdescription actually
describes the boots as there are many types of boots
suitable for doing “barn chores”; and (iii) because there
is no misdescription and purchasers are not likely to
believe any possible misdescription, the alleged
Ser. No. 76281084
7
misdescription cannot be likely to affect the decision to
purchase.
Applicant argues that the mark is not deceptively
misdescriptive under Section 2(e)(1) for essentially the
same reasons set forth with regard to the first two prongs
of the Section 2(a) deceptiveness test. Finally, applicant
argues that the mark is not merely descriptive under
Section 2(e)(1) as the combination of terms is at most,
suggestive of the goods; that this combination of
potentially descriptive terms creates an incongruous or
ambiguous commercial impression; that purchasers, upon
encountering the mark, must follow a multi-step reasoning
process to determine any characteristics of applicant’s
goods; and that competitors would not be limited in using
terms necessary to describe their goods.
Applicant generally contends that there is no evidence
showing use of the combined words “barn” and “ropers”
together in connection with boots; that the goods would be
visible to consumers and even a casual perception allows
consumers to avoid any alleged deception regarding the
appearance and style of applicant’s boots; that the word
“barn” is a general term which is evocative of a farm or
ranch setting; and that any doubt is resolved in
applicant’s favor.
Ser. No. 76281084
8
Turning first to the question of whether the mark is
either deceptively misdescriptive or merely descriptive of
the goods, we start with applicant’s failure to respond to
the Examining Attorney’s inquiries (second Office action
dated August 22, 2002) regarding information about
applicant’s goods, and specifically, whether or not the
goods are (i) a combination of a barn boot and a roper boot
or (ii) a barn boot with a roper heel.
In its response to the second Office action, applicant
responded to each of the three refusals to register, but
made no comment or response of any kind to the Examining
Attorney’s requirement for information under Trademark Rule
2.61(b). That is, applicant did not either provide the
requested information or state that there was not yet any
such information, or argue that there were valid reasons
why it should not be required to provide such information.
Given the nature of the refusals at issue in this case, it
obviously would have been helpful to the Board and to the
Examining Attorney if applicant had simply responded to the
Office’s inquiries about applicant’s goods.2
2 Likewise, it would have been helpful had the Trademark
Examining Attorney made final her requirement for such
information pursuant to Trademark Rule 2.61(b). See, In re
Planalytics, Inc., 70 USPQ2d 1453, 1457 (TTAB 2004); In re DTI
Partnership LLP, 67 USPQ2d 1699 (TTAB 2003); and In re SPX Corp.,
63 USPQ2d 1592, 1597 (TTAB 2002). (footnote continued)
Ser. No. 76281084
9
In her brief on appeal, the Examining Attorney stated
the following (footnote 1):
…As for the issuance of the alternative
mere descriptiveness refusal under
Section 2(e)(1), applicant has not
directly responded to the examining
attorney’s August 22, 2002 inquiry as
to whether the goods are (will be) a
combination of a barn boot and roper
boot, or a barn boot with a roper heel.
That the proposed mark is merely
descriptive or deceptively
misdescriptive of the goods remain
equal possibilities.
In its reply brief, applicant continued its arguments
that none of the alternative bases for refusal are proper,
but applicant made no specific response to the Examining
Attorney’s comment in footnote 1 of her brief. However,
contained within the section of applicant’s reply brief
addressing the merely descriptive refusal, it made
the following ambiguously (and carefully) worded statement:
“[T]he so-called ‘hybrid of barn and roper boots,’ as those
terms are defined by the Examining Attorney, has never been
created.” (Reply brief, p. 6.) Thus, the record remains
devoid of any definitive statement or information from
The Board considered remanding this application to the
Examining Attorney, but concluded that it would be futile and
would cause unnecessary delay as the Examining Attorney already
made a clear requirement for information under Trademark Rule
2.61(b) and she referenced it again in her brief on appeal, all
with no information forthcoming from applicant. Quite frankly,
the Board is at a loss in understanding why this requirement was
not made final in light of applicant’s non-compliance.
Ser. No. 76281084
10
applicant regarding the characteristics and properties of
the “footwear, namely, boots” on which it asserts it has a
bona fide intention to use the mark BARN ROPERS.
The test to be applied in determining whether or not a
mark is deceptively misdescriptive under Section 2(e)(1) is
set forth as follows: (1) whether the term misdescribes a
characteristic, quality, function, composition or use of
the goods, and (2) if so, whether prospective purchasers
are likely to believe the misdescription actually describes
the goods. See In re Berman Bros. Harlem Furniture Inc.,
26 USPQ2d 1514 (TTAB 1993); and In re Quady Winery, Inc.,
221 USPQ 1213 (TTAB 1984).
The test for determining whether a mark is merely
descriptive is whether the term immediately conveys
information concerning a significant quality,
characteristic, function, ingredient, attribute or feature
of the goods or services in connection with which it is
used or is intended to be used. See In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978);
In re Eden Foods Inc., 24 USPQ2d 1757 (TTAB 1992); and In
re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
Of course, the determination of deceptive
misdescriptiveness and/or mere descriptiveness must be made
not in the abstract, but in relation to the goods or
Ser. No. 76281084
11
services for which registration is sought, the context in
which the term is being used or is intended to be used on
or in connection with those goods or services, and the
impact that it is likely to make on the average purchaser
of such goods or services. See In re Consolidated Cigar
Co., 35 USPQ2d 1290 (TTAB 1995); and In re Pennzoil
Products Co., 20 USPQ2d 1753 (TTAB 1991).
In considering the record before us, we find that
there is clear evidence that both words “barn” and “roper”
refer to a type of boot. (See, for example, the web sites
of various boot manufacturers, and the stories from the
Nexis database referred to above.) Applicant itself
asserted that “roper” is generic for a type of boot.
Applicant’s argument that the word “barn” may connote a
farm or ranch setting is not persuasive because we must
consider the terms in the context of the identified goods,
boots.
Contrary to applicant’s contention, the combination of
these two common English-language words does not create an
incongruous or unique mark. Rather, applicant’s mark, BARN
ROPERS, when used in connection with applicant’s identified
goods, either immediately describes or misdescribes,
essential characteristics of applicant’s goods.
Ser. No. 76281084
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While evidence of descriptive use of the multiple
words together is generally persuasive that such a multiple
word mark is merely descriptive, there is no requirement
for evidence showing all the words used together in order
to hold a multiple word mark to be merely descriptive. See
In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564
(Fed. Cir. 2001.) See also, In re Shiva Corp., 48 USPQ2d
1957 (TTAB 1998).
If applicant’s boots intended to be sold under this
mark are either barn boots with a roper heel or are a boot
which combines the characteristics of both a barn boot and
a roper boot, then the mark is merely descriptive and
purchasers would so understand, without need of conjecture
or speculation. No exercise of imagination or mental
processing would be required in order for purchasers or
prospective customers for applicant’s goods to readily
perceive the merely descriptive significance of the term
BARN ROPERS as it pertains to applicant’s goods. See, In
re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);
and In re Omaha National Corporation, 819 F.2d 1117, 2
USPQ2d 1859 (Fed. Cir. 1987). See also, In re Copytele
Inc., 31 USPQ2d 1540 (TTAB 1994).
If, however, applicant’s boots intended to be sold
under this mark are either not barn boots with a roper heel
Ser. No. 76281084
13
or are not a boot which combines the characteristics of a
barn boot and a roper boot, then the mark is deceptively
misdescriptive. As explained above, this record
establishes that “barn” and “roper” each identify a type of
boot, designed for specific functions, respectively. We
find that purchasers and prospective purchasers are likely
to believe that the misdescription actually describes
applicant’s goods. The fact that upon seeing the boot,
they may understand that it does not have the
characteristics of a barn boot or a roper boot, does not
negate their understanding up to that point when they
inspect the goods. See R. Neumann & Co. v. Bon-Ton Auto
Upholstery, Inc., 326 F.2d 799, 140 USPQ 245 (CCPA 1964);
R. Neumann & Co. v. Overseas Shipments, Inc., 326 F.2d 786,
140 USPQ 276 (CCPA 1964); In re Berman Bros., supra; In re
Woodward & Lothrop Inc., 4 USPQ2d 1412 (TTAB 1987); In re
Quady Winery, supra; and The American Meat Institute et al.
v. Horace W. Longacre, Inc., 211 USPQ 712 (TTAB 1981). Cf.
In re Automatic Radio Mfg. Co., Inc., 404 F.2d 1391, 160
USPQ 233 (CCPA 1969); In re Lyphomed Inc., 1 USPQ2d 1430
(TTAB 1986); and In re Econoheat, Inc., 218 USPQ 381 (TTAB
1983).
Accordingly, in the alternative (both under Section
2(e)(1) of the Trademark Act), we hold that the term BARN
Ser. No. 76281084
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ROPERS when used on “boots” is merely descriptive if the
boots include the characteristics of barn boots and/or
roper boots; and we hold that the term is deceptively
misdescriptive of the goods if the boots do not include the
characteristics of barn boots and/or roper boots.
This brings us to consideration of the refusal to
register under Section 2(a) of the Trademark Act which is
determined under the following three-prong test:
(1) whether the term is misdescriptive of the
character, quality, function, composition or use of the
goods;
(2) if so, whether prospective purchasers are likely
to believe that the misdescription actually describes the
goods; and
(3) if so, whether the misdescription is likely to
affect the decision to purchase. See In re Budge,
Manufacturing Co. Inc., 857 F.2d 773, 8 USPQ2d 1259 (Fed.
Cir. 1988), aff’g 8 USPQ2d 1790 (TTAB 1988).
There is no dispute that the term “ropers” is generic
for a type of boot. Moreover, although applicant argues
the term “barn” can have other general meanings, applicant
does not seriously dispute that the term refers to a type
of boot. We find that “barn” does refer to a type of boot
Ser. No. 76281084
15
as established by the Examining Attorney’s Internet and
Nexis evidence.
Even assuming arguendo that the mark, in the
alternative is deceptively misdescriptive, there is simply
no evidence that the misdescription is likely to affect
purchasers’ decisions to buy applicant’s products. See
U.S. West Inc. v. BellSouth Corp., 18 USPQ2d 1307 (TTAB
1990). Cf. In re Budge Manufacturing Co. Inc., supra; In
re Organik Technologies, Inc., 41 USPQ2d 1690 (TTAB 1997);
and In re Shapely, Inc., 231 USPQ 72 (TTAB 1986).
As explained previously, due to the lack of
information from applicant about its goods, we cannot
definitively state that the term misdescribes the goods.
Thus, in the unusual circumstances of this case, the first
prong of the test is not met. In any event, even if the
term misdescribes the goods, we agree with applicant that
the record does not establish that use of the
misdescriptive term is likely to affect purchasers’
decisions to buy applicant’s goods. The third prong of the
test is not met. Accordingly, the Section 2(a) refusal to
register must be reversed.
Decision: The refusal to register on the ground that
the proposed mark is deceptive under Section 2(a) of the
Trademark Act is reversed. The refusals to register on the
Ser. No. 76281084
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grounds that the proposed mark is deceptively
misdescriptive or merely descriptive under Section 2(e)(1)
are affirmed.