Brian Packard

Trademark Trial and Appeal Board

Sep 24, 2019

87766484 (T.T.A.B. Sep. 24, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 24, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Brian Packard
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Serial No. 87766484
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Rebecca C. Christon of Hayes Soloway PC,
for Brian Packard.
Robert Clark, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
_____

Before Zervas, Kuczma and Larkin,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Brian Packard (“Applicant”) seeks registration on the Principal Register of the
mark

Serial No. 87766484
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for “portable skating rink structures, not of metal” in International Class 19.1
The Examining Attorney has required that the wording “YARDRINK” be
disclaimed because it is merely descriptive of a feature of the goods. See Trademark
Act §§ 2(e)(1) and 6(a), 15 U.S.C. §§ 1052(e)(1) and 1056(a).
After the Trademark Examining Attorney issued a final requirement for a
disclaimer, Applicant filed an appeal along with a request for reconsideration. The
Examining Attorney was not persuaded and the Board then resumed the appeal and
set the time for filing briefs. Both Applicant and the Examining Attorney filed briefs.
We affirm the disclaimer requirement.
I. Evidentiary Issues
First, Applicant’s objection to the woodfordmfg.com Internet address included
within the March 22, 2019 Office Action is sustained. The full webpage corresponding
to the Internet address was not submitted into the record; the webpages submitted
into evidence are blank. Providing only a website address or hyperlink to Internet
materials is insufficient to make such materials of record. In re Olin Corp., 124
USPQ2d 1327, 1332 n.15 (TTAB 2017); In re Powermat Inc., 105 USPQ2d 1789, 1791
(TTAB 2013); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP)
§ 710.01(b) (June 2019).

1 Application Serial No. 87766484 was filed on January 23, 2018. Applicant alleges a bona
fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15
U.S.C. § 1051(b). The mark is described as “consist[ing] of the word ‘YARDRINK’ in stylized
letters with the ‘Y’ and second ‘R’ capitalized. The ‘I’ is dotted with a stylized hockey puck
with five triangular lines coming out of the top of the hockey puck. The word ‘YARDRINK’
and the hockey puck and lines are inside of a rectangular shape with rounded corners.” Color
is not claimed as a feature of the mark.
Serial No. 87766484
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Second, Applicant referred to several registrations for marks containing the word
YARD in its August 7, 2018 Response and for marks containing the word RINK in its
Request for Reconsideration but did not submit copies of these registrations. TBMP
1208.02 states in relevant part:
[T]o make a third-party registration of record … a copy of
the registration (from either the electronic records of the
Office or the paper USPTO record) showing the current
status and title of the registration must be submitted. Mere
listings of registrations … are not sufficient to make the
registrations of record. However, there are limited
circumstances in which the Board will consider such
listings. In particular, if an applicant includes a listing of
registrations in a response to an Office action, and the
examining attorney does not advise the applicant that the
listing is insufficient to make the registrations of record at
a point when the applicant can correct the error, the
examining attorney will be deemed to have waived any
objection to consideration of the list itself, for whatever
probative value it may have. … Similarly, if the examining
attorney discusses the registrations in an Office action or
brief, without objecting to them, the registrations will be
treated as stipulated into the record. … However, the
Board will not consider more than the information
provided by the applicant. Thus, if the applicant has
provided only a list of registration numbers and/or marks,
the list will have very limited probative value.
Because the Examining Attorney did not advise the Examining Attorney that the
listing of registrations was insufficient to make the listing of registrations of record,
the Examining Attorney has waived any objection to the registrations and we
consider them but only insofar as the information provided by Applicant. In re City of
Houston, 101 USPQ2d 1534, 1536 (TTAB 2010).
Serial No. 87766484
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II. Applicable Law
Merely descriptive terms are unregistrable, under Trademark Act Section 2(e)(1),
15 U.S.C. § 1052(e)(1), and, therefore, are subject to disclaimer if the mark is
otherwise registrable. An Examining Attorney may therefore require an applicant to
disclaim an unregistrable component of a mark otherwise registrable. Trademark Act
Section 6(a), 15 U.S.C. § 1056(a). Failure to comply with a disclaimer requirement is
grounds for refusal of registration. See In re Omaha Nat’l Corp., 819 F.2d 1117, 2
USPQ2d 1859 (Fed. Cir. 1987); In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46
(CCPA 1975); In re Ginc UK Ltd., 90 USPQ2d 1472 (TTAB 2007).
Thus, a term must be disclaimed apart from the mark as shown if it is deemed to
be merely descriptive of the subject goods or services. “A term is merely descriptive if
it immediately conveys knowledge of a quality, feature, function, or characteristic of
the goods or services with which it is used.” In re Bayer Aktiengesellschaft, 488 F.3d
960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (citing In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987)); In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215,
217-18 (CCPA 1978).
III. Analysis
The Examining Attorney maintains that the proposed mark is made up of two
individual components, YARD and RINK, which retain their descriptive meaning in
connection with the subject goods and services, and relies on the following evidence
with regard to the term “YARD”:
Serial No. 87766484
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· Definitions of “yard” from Cambridge Academic Content
Dictionary (“a piece of land next to a house, usually used
for growing flowers, grass, and other plants.”)2
· ironsleek.com - “Tum Your Yard Into a Hockey Skating
Haven With Backyard Ice Rink Kits From Iron Sleek”.3
· ezicerinks.com - “The 60 Minute Backyard Rink”.4
· homedepot.com – “Yard Rover 5 cu. Ft. Poly Dual-Wheel
Residential Yard Cart”.5
· amleo.com – “Yard Rake with Adjustable Head”.6
· houzz.com – “Yard Fire Pit”.7
· wayfair.com – “Cat on a Branch Yard Statue”.8
For the term RINK, the Examining Attorney submitted a definition from the
Merriam-Webster Dictionary, with one of the definitions of “RINK” being “an often
enclosed area that has a special surface of ice, smooth pavement, etc., and that is used
for skating.”9
The Examining Attorney states that the evidence demonstrates that “YARD”
merely describes a characteristic or feature of Applicant’s goods, i.e., “a piece of land
surrounding a house” where the goods would be used; “RINK” is generic because
Applicant’s goods include a skating rink; and the wording merely describes a

2 May 4, 2018 Office Action, TSDR 2.
3 August 28, 2018 Office Action at 7.
4 Id. at TSDR 2.
5 March 22, 2019 Office Action, TSDR 3.
6 Id. at 11.
7 Id. at 24.
8 Id. at 14.
9 Id. at 32.
Serial No. 87766484
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characteristic of the goods which include a rink that purchasers can put in their
yards.10 We agree.
The question then is whether the combination of the terms immediately describes
a feature, function or characteristic of the goods. Applicant states that thought and
imagination are required, offering suggested meanings for the designation as “a
roller-skating surface used in conjunction with a business ‘yard’”; a product that is
“an alley for lawn bowling”; and “a 36-inch (one yard) rink intended for tabletop use
with dolls.”11 The determination of whether a mark is merely descriptive is made in
relation to an applicant’s identified goods, not in the abstract. DuoProSS Meditech
Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir.
2012); In re The Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217,
1219 (Fed. Cir. 2012). In the context of “portable skating rink structures, not of
metal,” there is no basis to attach to “YardRink” the meanings identified by
Applicant. Also, it is well settled that so long as any one of the meanings of a term is
descriptive when considered in connection with the identified goods or services, the
term may be considered to be merely descriptive. See, e.g., In re Polo Int’l Inc., 51
USPQ2d 1061, 1062-63 (TTAB 1999) (finding that DOC in DOC-CONTROL would be
understood to refer to the “documents” managed by applicant’s software, not “doctor”
as shown in dictionary definition); In re Chopper Indus., 222 USPQ 258, 259 (TTAB

10 11 TTABVUE 10.
11 9 TTABVUE 9.
Serial No. 87766484
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1984) (CHOPPER is merely descriptive for “axes” despite having other, non-
descriptive, meanings).
The Examining Attorney’s evidence includes use of “backyard ice rink” and
“backyard rink.” Applicant is not persuaded that these phrases suggest that little
imagination or thought is needed to glean the meaning of “YardRink.” We disagree.
They are promoted to the consuming public for goods which are the same or similar
to Applicant’s goods, and “backyard” and “yard” have essentially the same meanings.
Compare the definition of “yard” (“a piece of land next to a house, usually used for
growing flowers, grass, and other plants”) with “backyard” (an area of grass behind
someone’s house.”)12 The fact that the Examining Attorney has not included specific
uses of “yard rink” by third-parties is not inimical to his position; the mere fact that
an applicant is the first to use a descriptive term in connection with its goods does
not imbue the term with source-identifying significance. In re National Shooting
Sports Found., Inc., 219 USPQ 1018, 1020 (TTAB 1983) (the fact that the applicant
may be the first to use a merely descriptive designation does not “justify registration
if the term projects only merely descriptive significance.”).
Further, Applicant argues that descriptive words like “backyard ice rink” and
“backyard rink” will still be available for use by others even if the wording YardRink

12 From the Merriam-Webster Dictionary accessed at https://www.merriam-
webster.com/dictionary/backyard on September 20, 2019. We take judicial notice of this
definition. The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame
du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or
regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
Serial No. 87766484
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registers.13 This may be the case, but the fact that there are other terms which also
describe Applicant’s goods does not mean that YardRink is not also merely descriptive
of such goods. Philip Morris Inc. v. Liggett & Myers Tobacco Co., 139 USPQ 240, 242
(TTAB 1963) (“while there may be other names which may be used in lieu of
‘COUPON’ by opposer with the same effect in connection with its premium
promotions, this does not alter the descriptive character and significance of
‘COUPON’ in the tobacco industry nor can it serve as a basis for applicant to
appropriate said term to its exclusive use.”). A merely-descriptive designation is not
registrable despite the availability of other descriptive terms.
Applicant discusses five registrations which include the term RINK (with no
indication as to whether the term RINK was disclaimed or whether the registrations
are on the Supplemental or Principal Registers) and six registrations which include
or comprise the term YARD (without a disclaimer of the term YARD and no indication
as to the Register on which the mark registered). Some of these marks are possibly
unitary and others are possibly for unrelated goods and hence have no bearing on the
descriptiveness of the applied-for term for the identified goods. (Applicant has not
identified the goods for some of the registrations). The registrations therefore are not
particularly probative and are not persuasive on the question of mere descriptiveness.
Further, each case must be decided on its own facts and the Board is not bound by
prior decisions involving different records. See In re Nett Designs, Inc., 236 F. 3d 1339,
57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Datapipe, Inc., 111 USPQ2d 1330, 1336

13 9 TTABVUE 11.
Serial No. 87766484
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(TTAB 2014), cf. In re Shinnecock Smoke Shop, 571 F.2d 1171, 91 USPQ2d 1218, 1221
(Fed. Cir. 2009) (“Even if all of the third-party registrations should have been refused
registration under section 1052(a), such errors do not bind the USPTO to improperly
register Applicant’s marks.”). We point out too that mere descriptiveness is
determined based on the evidence of record at the time a registration is sought. In re
theDot Commc’ns Network LLC, 101 USPQ2d 1062, 1064 (TTAB 2011).
The evidence does not reflect that the combination of YARD and RINK creates a
term with a commercial impression separate and apart from its descriptive
components. There is no unique, incongruous or otherwise non-descriptive meaning
in relation to the goods; the term retains its descriptiveness. See In re Colonial Stores
Inc., 394 F.2d 549, 157 USPQ 382, 384 (CCPA 1968). Applicant has not identified any
distinct meaning arising from the combination of terms and the evidence in the record
unambiguously demonstrates the meaning each term has in the context of the goods.
We therefore find that the term YardRink as it appears in the mark is a combination
of two merely descriptive terms which do not create a commercial impression separate
and apart from its components, and that the term YardRink for the identified goods
is merely descriptive of a feature of those goods and hence must be disclaimed.
Applicant urges us to resolve any doubts that we may have as to the conclusion of
this appeal in his favor. However, we have no doubts.
Decision: The refusal to register in view of the requirement for a disclaimer is
affirmed.
Serial No. 87766484
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If, however, Applicant submits the required disclaimer within 30 days of the date
of this opinion, the opinion will be set aside, and the application passed to publication
for opposition. Trademark Rule 2.142(g). If the disclaimer is submitted, the wording
should read as follows: “No claim is made to the exclusive right to use ‘YARD RINK’
apart from the mark as shown.” See TRADEMARK MANUAL OF EXAMINING PROCEDURE
(TMEP) § 1213.08(a)(i) (Oct. 2018).