No. 86529647 (T.T.A.B. Feb. 13, 2018)

Branded LLC

Trademark Trial and Appeal BoardFeb 13, 2018

No. 86529647 (T.T.A.B. Feb. 13, 2018)

This Opinion is Not a Precedent of the TTAB Hearing: January 18, 2018 Mailed: February 13, 2018 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Branded LLC _____ Serial No. 86529647 _____ Jeffrey M. Furr, of Furr Law Firm, for Branded LLC. John C. Boone, Trademark Examining Attorney, Law Office 104,1 Dayna Browne, Managing Attorney. _____ Before Shaw, Adlin, and Larkin, Administrative Trademark Judges. Opinion by Larkin, Administrative Trademark Judge: Branded LLC (“Applicant”) seeks registration on the Supplemental Register of the claimed mark TWEEDS in standard characters for “shirts; sweaters,” in International Class 25.2 The Trademark Examining Attorney has refused 1 Trademark Examining Attorney Timothy J. Finnegan examined the subject application and filed the Patent and Trademark Office’s brief, but left federal service prior to the oral hearing. Trademark Examining Attorney Cory Boone appeared at the oral hearing on behalf of the Patent and Trademark Office. 2 Application Serial No. 86529647 was filed on February 10, 2015 under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), on the basis of Applicant’s claim of first use of the mark on June 25, 1987 and first use of the mark in commerce on July 1, 1987. Applicant originally Serial No. 86529647 - 2 - registration of Applicant’s proposed mark under Section 23(c) of the Trademark Act, 15 U.S.C. § 1091(c), on the ground that it is a generic name for the identified goods, is incapable of distinguishing them, and is therefore ineligible for registration on the Supplemental Register. When the refusal was made final, Applicant appealed and requested reconsideration, which was denied. Applicant and the Examining Attorney have filed briefs, and counsel for Applicant and the Examining Attorney appeared at an oral hearing before the panel on January 18, 2018. We affirm the refusal to register. I. Record on Appeal The record on appeal consists of: 1. Dictionary definitions of the words “tweed” and “tweeds;”3 2. Internet webpages regarding various types of tweed fabric;4 3. Webpages showing use of the words “tweed” and “tweeds” in connection with woolen clothing, including coats, jackets, pants, kilts, skirts, hats, and ties;5 4. The results of a Google search for “tweed shirts;”6 sought registration on the Principal Register, but amended its application during prosecution to seek registration on the Supplemental Register. 3 May 20, 2015 Office Action at 2-8; July 30, 2015 Office Action at 2-4; April 26, 2016 Office Action at 93-102; November 21, 2016 Office Action at 6-17. The Examining Attorney made the same definitions, as well as some other evidence, of record in more than one office action. This is unnecessary and confusing, and should be avoided. 4 November 21, 2016 Office Action at 2-5. 5 July 30, 2015 Office Action at 6-47. 6 April 26, 2016 Office Action at 2-4. Serial No. 86529647 - 3 - 5. Webpages displaying shirts referred to as “tweed” shirts and “tweed” shirt jackets;7 6. The results of a Google search for “tweed sweaters;”8 and 7. Webpages displaying sweaters referred to as “tweed” sweaters and “tweed” sweater jackets, or sweaters made of tweed fabric.9 II. Genericness Refusal Before discussing whether the claimed mark is generic, we must address Applicant’s suggestion that its ownership of a prior registration of TWEEDS for shirts and sweaters is relevant. Applicant argues: This mark was previously registered, and owned by applicant, in association with the exact same goods in US Registration Number 1697698. The mark was not previously determined to be generic. The law and rules in this area of what is a generic trademark and what is not have not changed since the mark previously registered. The marketplace in this area has not changed since the mark previously registered. In refusing registration of this application based on genericness, the Examining Attorney is running counter to the previous correct findings of the USPTO. The Examining Attorney has not shown or proved any changes to the marketplace or commerce which would co[n]vert “TWEEDS” from a mark that was placed and registered on the principal register to a mark that is generic. 7 April 26, 2016 Office Action at 13-45; November 21, 2016 Office Action at 40-50; June 9, 2017 Denial of Request for Reconsideration at 12-32, 37-42. 8 April 26, 2016 Office Action at 46-48; November 21, 2016 Office Action at 24-25. 9 April 26, 2016 Office Action at 58-92; November 21, 2016 Office Action at 18-23, 26-39; June 9, 2017 Denial of Request for Reconsideration at 2-11, 33-36, 43-55. Serial No. 86529647 - 4 - 8 TTABVUE 5.10 Applicant’s position is meritless. “The PTO is required to examine all trademark applications for compliance with each and every eligibility requirement, including non-genericness, even if the PTO earlier mistakenly registered a similar or identical mark suffering the same defect.” In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016) (existence of subsisting incontestable standard character registration of CHURRASCOS for restaurant services on the Principal Register did not preclude finding that stylized CHURRASCOS mark was generic for the same restaurant services). “Thus, whether or not the term [‘tweeds’] was generic when it was registered, [the Board] must evaluate the evidence in the present record to determine whether there is sufficient evidence to establish that it is ineligible.” Id. Turning to the substantive question on this appeal, “[i]n order to qualify for registration on the Supplemental Register, a proposed mark ‘must be capable of distinguishing the applicant’s goods or services.’” In re Empire Tech. Dev. LLC, 123 USPQ2d 1544, 1547 (TTAB 2017) (quoting In re Emergency Alert Sols. Grp., LLC, 122 USPQ2d 1088, 1089 (TTAB 2017) (quoting 15 U.S.C. § 1091(c))). “‘Generic terms do no so qualify.’” Id. (quoting Emergency Alert Sols., 122 USPQ2d at 1089). “‘A generic term ‘is the common descriptive name of a class of goods or services.’” Id. (quoting Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827, 1830 (Fed. Cir. 2015) (internal quotation omitted)). “The test for 10 The referenced registration is not in the record, and we do not know why it is no longer subsisting, or when it was cancelled or expired. Serial No. 86529647 - 5 - determining whether a proposed mark is generic is its primary significance to the relevant public.” Id. “Determining whether a mark is generic therefore involves a two- step inquiry: First, what is the genus of goods or services at issue? Second, is the term sought to be registered understood by the relevant public primarily to refer to that genus of goods or services?” H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986). The Examining Attorney must establish that TWEEDS is generic by clear evidence of generic use. Empire Tech., 123 USPQ2d at 1547 (citing In re Hotels.com, L.P., 573 F.3d 1300, 91 USPQ2d 1532, 1533 (Fed. Cir. 2009)). A. The Genus of Goods “The genus of goods is often defined by the identification in the subject application . . . .” Id. (citing In re Meridian Rack & Pinion, 114 USPQ2d 1462, 1463 (TTAB 2015)). Applicant argues that the “genus here is shirts and sweaters,” 8 TTABVUE 4, while the Examining Attorney argues that “the application identifies the goods as ‘shirts, sweaters’, namely, clothing, which adequately defines the genus at issue.” 11 TTABVUE 4-5.11 We find that the identification adequately identifies two genuses of goods: “shirts” and “sweaters.” Applicant’s claimed mark may be refused registration 11 It is unclear whether the Examining Attorney contends that “clothing,” which subsumes “shirts” and “sweaters,” is the genus, rather than the individual items of clothing identified in the application. As discussed below, the Examining Attorney discusses Internet evidence that he claims shows “the widespread generic quality of the words ‘tweed’ and ‘tweeds’ when used by retail clothing stores to describe clothing, namely, shirts and sweaters, of tweed cloth,” 11 TTABVUE 5 (emphasis added), but the identification does not read “clothing, namely, shirts and sweaters,” and he must show that Applicant’s claimed mark is generic for the identified goods. Serial No. 86529647 - 6 - for both goods in Class 25 if it is the generic name for either one. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). B. The Relevant Purchasing Public’s Understanding of TWEEDS for Shirts and Sweaters We turn now to the second Marvin Ginn inquiry, whether TWEEDS is understood by the relevant purchasing public to refer to shirts or sweaters. 1. Defining the Relevant Purchasing Public We agree with the Examining Attorney that “the relevant public is the purchasing or consuming public for the identified goods,” which here is “ordinary consumers who purchase Applicant’s goods, because there are no restrictions or limitations to the channels of trade or classes of customers in Applicant’s identification.” 11 TTABVUE 5. 2. The Evidence Regarding the Public’s Understanding of TWEEDS “‘Evidence of the public’s understanding of a proposed mark may be obtained ‘from any competent source, such as consumer surveys, dictionaries, newspapers and other publications.’” Empire Tech., 123 USPQ2d at 1548-49 (quoting Princeton Vanguard, 114 USPQ2d at 1830 (internal quotation omitted)). Testimony regarding the public’s understanding may also be considered. In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985). a. Dictionary Definitions of “Tweed” and “Tweeds” The Examining Attorney made of record dictionary definitions of “tweed” as “a rough-surfaced woolen cloth, typically of mixed flecked colors, originally produced in Serial No. 86529647 - 7 - Scotland,” OXFORD DICTIONARIES (oxforddictionaries.com/us),12 and “a rough woolen cloth that is woven with different colored threads.” MERRIAM-WEBSTER ONLINE DICTIONARY (merriam-webster.com).13 The Examining Attorney also made of record dictionary definitions of “tweeds” as “clothes made of tweed,” OXFORD DICTIONARIES,14 and “tweed clothing (such as a suit).” MERRIAM-WEBSTER ONLINE DICTIONARY.15 Taken together, these definitions indicate that “tweeds” refers to a category of clothing made of rough, multicolored woolen cloth. It is not sufficient, however, for the Examining Attorney to show that “tweeds” refers to tweed clothing other than shirts and sweaters, such as jackets, pants, or skirts. That is to say, the Examining Attorney’s evidence establishing the existence of a broad category of men’s and women’s tweed clothing,16 tweed field coats, jackets, and headwear,17 tweed ties,18 and tweed trousers,19 does not carry his burden of showing that “tweeds” refers to a category of shirts or sweaters. See Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341, 1366 (TTAB 2013). We turn to the record to determine whether the category of clothing referred to as “tweeds” includes 12 May 20, 2015 Office Action at 2. 13 Id. at 5. 14 Id. at 2. 15 Id. at 5. 16 July 30, 2015 Office Action at 5-7, 44-47. 17 Id. at 28-31. 18 Id. at 32. 19 Id. at 41-42. Serial No. 86529647 - 8 - shirts and sweaters, or whether there are other categories of shirts and sweaters referred to as “tweeds.” b. Internet Evidence of Use of “Tweed” and “Tweeds” in Connection with Shirts and Sweaters The Examining Attorney made of record multiple webpages displaying and offering for sale shirts referred to as “tweed” shirts,20 and sweaters referred to as “tweed” sweaters. We reproduce examples of those webpages below. Tweed Shirts21 20 Two websites displaying tweed shirts appear to be the Australian versions of the sites (countryroad.com.au/shop, April 26, 2016 Office Action at 30-33 and trenery.com.au/shop, April 26, 2016 Office Action at 34-38), while pages from two websites displaying tweed shirts appear to be United Kingdom pages (ebay.co.uk, April 26, 2016 Office Action at 41-45, and theprojektstore.co.uk, April 26, 2016 Office Action at 50). We have given no weight to these webpages in the absence of evidence regarding their exposure to Americans. 21 As discussed below, most of the shirts referred to as “tweed” shirts, and a few of the sweaters referred to as “tweed” sweaters, are described as being made of materials other than wool. Uses of “tweed” to refer to categories of non-woolen shirts and sweaters that have the look, appearance, or style of tweed fabric (i.e., that appear to be rough fabric with different colored threads) are no less significant in determining whether TWEEDS is generic than are uses of “tweed” to refer to categories of shirts and sweaters actually made of tweed fabric, because both uses of TWEEDS define a genus of the goods. Indeed, Applicant does not distinguish between the evidence regarding shirts and sweaters made of tweed fabric, and the evidence regarding shirts and sweaters that have the look, appearance, or style of tweed fabric, in acknowledging that the “examples given by the examining attorney use the word ‘tweed’ to indicate the type of sweater or shirt being offered.” 8 TTABVUE 4. Serial No. 86529647 - 9 - November 21, 2016 Office Action at 40-41 (highlighting added). Serial No. 86529647 - 10 - June 9, 2017 Denial of Request for Reconsideration at 29-32. November 21, 2016 Office Action at 46. April 26, 2016 Office Action at 13-14.22 22 The webpages displaying this shirt state that it is made of cotton. April 26, 2016 Office Action at 14. Serial No. 86529647 - 11 - April 26, 2016 Office Action at 17-18 (highlighting added).23 23 The webpages displaying this shirt state that it is made of cotton and polyester. April 26, 2016 Office Action at 17. Serial No. 86529647 - 12 - April 26, 2016 Office Action at 26-27.24 June 9, 2017 Denial of Request for Reconsideration at 12-14.25 24 The webpages displaying this shirt state that it is made of cotton and polyester, which are described as “[g]rey tweed-like material.” April 26, 2016 Office Action at 27. 25 The webpages displaying this shirt state that the “[t]weed shirt boasts a supersoft suede- inspired finish,” but that it is made of polyester. June 9, 2017 Denial of Request for Reconsideration at 13-14. Serial No. 86529647 - 13 - June 9, 2017 Denial of Request for Reconsideration at 24-25.26 Tweed Sweaters 26 The webpages displaying this shirt state that the “Bristol Tweed Long Sleeve is a soft, trusty cotton flannel in a subtle and classic tweedy weave.” June 9, 2017 Denial of Request for Reconsideration at 25. Serial No. 86529647 - 14 - April 26, 2016 Office Action at 58-60. April 26, 2016 Office Action at 61-66. April 26, 2016 Office Action at 73-74. Serial No. 86529647 - 15 - April 26, 2016 Office Action at 75-78. April 26, 2016 Office Action at 82-83. Serial No. 86529647 - 16 - November 21, 2016 Office Action at 33-34. Serial No. 86529647 - 17 - Serial No. 86529647 - 18 - June 9, 2017 Denial of Request for Reconsideration at 2-3.27 27 The webpages displaying this sweater state that it is made of 55% cotton, 25% wool, and 20% polyester yarn and “is knit with color-flecked yarns for the look of tweed.” June 9, 2017 Denial of Request for Reconsideration at 3. Serial No. 86529647 - 19 - June 9, 2017 Denial of Request for Reconsideration at 34.28 June 9, 2017 Denial of Request for Reconsideration at 50-51 (highlighting added).29 Applicant does not challenge the quantity or quality of the Examining Attorney’s evidence, or offer any countervailing evidence. To the contrary, Applicant readily agrees that “it is possible to find shirts and sweaters that are made of tweed,”30 and that the “examples given by the examining attorney use the word ‘tweed’ to indicate the type of sweater or shirt being offered.” 8 TTABVUE 4 (emphasis added). Applicant nevertheless claims that “tweeds” is not the generic name even for “shirts and sweaters that are made of tweed” because “[t]weed is a fabric, not a shirt 28 The webpages displaying this sweater state that it is made of cotton, rayon, and polyester, but is “in tweed with fringe hem.” June 9, 2017 Denial of Request for Reconsideration at 34. 29 The webpages displaying this sweater describe it as a “Tweed sweater in tinted wool and cashmere.” June 9, 2017 Denial of Request for Reconsideration at 51. 30 Applicant’s counsel acknowledged at the oral hearing that a number of Applicant’s shirts and sweaters were made of tweed fabric. Serial No. 86529647 - 20 - or sweater,” and “tweeds” is thus “merely descriptive of a type of sweater or shirt.” 8 TTABVUE 4.31 These arguments misapprehend the law of genericness. The use of “tweed” to “indicate the type of sweater or shirt being offered,” 8 TTABVUE 4, is use of the word in its adjectival form, rather than in its noun form to identify a fabric, but generic adjectives are just as unprotectable as generic nouns. In Sheetz of Del., supra, the Board found that the adjective “footlong” was generic for “sandwiches, excluding hot dogs” because the record showed that “‘Footlong, as used by applicant, identifies a type or category of sandwich and that the relevant public understands the term ‘Footlong’ to refer to that class of products that includes 12- inch sandwiches.” 108 USPQ2d at 1366. The Board “readily acknowledge[d] that ‘Footlong’ is not the name of a food product; rather it is an adjective referring to the length of the sandwich. This adjectival use, however, does not remove ‘Footlong’ from being generic when used in connection with sandwiches” because “the term does not merely describe a sandwich, but in fact identifies a category of sandwiches included within the relevant genus.” Id. The Board noted that “[a]lthough it has sometimes been said that ‘generic names are nouns and descriptive uses are adjectives,’ such a rule is not consistent with the Board’s precedent or that of many courts; genericness cannot be determined simply by applying prescriptivist rules based on parts of 31 Applicant also argues, without any evidentiary support, that the “goods have been offered in commerce with this mark since 1987” and that the “mark has become distinctive with these goods and is recognized by consumers as an indicator of source for the goods,” 8 TTABVUE 5, but a “generic mark, being the ‘ultimate in descriptiveness,’ cannot acquire distinctiveness.” In re La. Fish Fry Prods., Ltd. 797 F.3d 1332, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015) (quoting Marvin Ginn, 228 USPQ at 530). Because we find that TWEEDS is a generic name for Applicant’s goods, no amount of evidence of acquired distinctiveness could establish that it is registrable. See, e.g., Northland Aluminum, 227 USPQ at 964. Serial No. 86529647 - 21 - speech.” Id. (citing MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 12:10 (4th ed. rev. March 2013)); see also In re Cent. Sprinkler Co., 49 USPQ2d 1194, 1199 (TTAB 1998). Applicant’s acknowledgment that the “examples given by the examining attorney use the word ‘tweed’ to indicate the type of sweater or shirt being offered,” 8 TTABVUE 4, is a concession that the proposed mark TWEEDS “does not merely describe a [sweater or shirt], but in fact identifies a category of [sweater or shirt] included within the relevant genus.” Sheetz of Del., 108 USPQ2d at 1366; see also Cordua Rests., 118 USPQ2d at 1637 (“a term can be generic for a genus of goods or services if the relevant public . . . understands the term to refer to a key aspect of that genus . . . .”). The pluralization of the word “tweed” as TWEEDS in the claimed mark does not alter its meaning as referring to categories of shirts and sweaters. Id. On the basis of the record as a whole, we find that the Examining Attorney has established, by clear evidence of generic use, that Applicant’s claimed mark TWEEDS is understood by the relevant purchasing public to refer to categories of shirts and sweaters that are made of tweed fabric, or that have the appearance, look, or style of tweed fabric. The proposed mark is thus incapable of distinguishing Applicant’s goods, making it ineligible for registration on the Supplemental Register. Decision: The refusal to register Applicant’s mark on the Supplemental Register is affirmed.