Bruce D. Watts

Trademark Trial and Appeal Board

Aug 7, 2000

No. 75529793 (T.T.A.B. Aug. 7, 2000)

Hearing: Paper No. 031
August 1, 2000 RLS/cv
8/7/00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Bruce D. Watts
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Serial No. 75/529,793
_______
Bruce D. Watts, pro se.
Robert Clark, Trademark Examining Attorney, Henry S. Zak,
Senior Trademark Attorney, Law Office 108 (David Shallant,
Managing Attorney)
_______
Before Simms, Wendel and Holtzman, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Bruce D. Watts (applicant) has appealed from the final
refusal of the Trademark Examining Attorney to register the
asserted mark BIRTHDAY BALLOONS for mail order gift balloon
services.1 The Examining Attorney ultimately issued a final

1 Application Serial No. 75/529,793, filed July 31, 1998,
claiming use since January 1, 1998, and use in commerce since
July 7, 1998. The application was amended to the Supplemental
Register on March 22, 1999. Accordingly, the claim by applicant
at the oral hearing that this application should be considered as
one under Section 2(f) of the Act, which pertains only to
Principal Register applications, is irrelevant. The entire
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/529,793
2
refusal to register on the ground that the asserted mark is
generic for applicant's services and therefore incapable of
distinguishing applicant's services from those of others.
See Section 23 of the Act, 15 USC §1091. Applicant and the
Examining Attorney have submitted briefs and an oral
hearing was held.2
The evidence in this case submitted on behalf of the
Office consists of excerpts from the Nexis computer search
system showing appearances of the words "birthday
balloons," and third-party registrations where the goods
have been identified as "birthday party balloons," or
similar terminology. The excerpts noted in the Examining
Attorney's brief are the following:

record, however, has been considered in making our determination
of registrability.
Although the original description of goods/services was
listed as "mail-order gift balloon," and while applicant has not
formally amended this description as requested by the Examining
Attorney, both applicant and the Examining Attorney have treated
this application as a service mark application to register the
mark for mail order gift balloon services, or mail order services
featuring gift balloons. See applicant’s response, filed March
22, 1999, and applicant’s reply brief, Point #5. However, even
if we were to decide this case as if the description were
“novelty gift items, namely, balloons for birthdays,” as
suggested by applicant at the oral hearing, we would reach the
same result.
We note that applicant has attempted to disclaim the words
"BIRTHDAY" and "BALLOONS" during the prosecution of this case.
As the Examining Attorney has noted, an applicant may not
disclaim the entire mark. See Dena Corp. v. Belvedere
International Inc., 950 F.2d 1555, 21 USPQ2d 1047, 1051 (Fed.
Cir. 1991), TMEP §§1213.07 and 1213.09(b), and cases cited there.
Ser. No. 75/529,793
3
We showed up at her door with a bunch of
birthday balloons…
The Detroit News, March 8, 1999
*****
"The company sends workers birthday
balloons, cards and vouchers…"
The Atlanta Journal and Constitution,
January 24, 1999
The Examining Attorney maintains that the evidence of
record shows use of the asserted mark in a generic sense,
that is, to identify a type of balloon. Accordingly, the
Examining Attorney argues that the term is a common name
for applicant's services of delivering birthday balloons.
Applicant, appearing pro se, argues that, when
purchasing such balloons, one would ask for "balloons for a
birthday" rather than for "birthday balloons." Response,
filed April 12, 1999. Applicant also maintains in his
reply brief that the asserted mark is "unique, creative,
descriptive, distinctive," reflecting applicant's mail
order gift service which delivers balloons for birthdays.
Applicant acknowledges that "Birthday Balloons" is merely
descriptive and would probably indicate balloons for
birthdays to the average American, but that applicant was
the first to use this phrase. Applicant also devotes a

2 Because applicant’s petition to make special was granted, the
Board is taking this case out of order and deciding it now. See
Trademark Rule 2.146 and TMEP §§1102.04 and 1102.04(a).
Ser. No. 75/529,793
4
considerable amount of his time noting the existence of
what he regards as examples of similar terms which have
been registered by this Office.
In order to determine whether the term is generic as
applied to goods or services identified in an application
or registration, one looks to how the term is perceived by
the relevant public. If this term is understood by the
relevant public primarily to refer to the classification or
category of goods (or services) at issue, the term is
generic. See H. Marvin Ginn Corp. v. International
Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ
528, 530 (Fed. Cir. 1986). Evidence of the public's
understanding of a term may be obtained from such sources
as dictionaries, newspapers, magazines, trade journals and
other publications. In re Northland Aluminum Products,
Inc., 777 F.2d 1566, 227 USPQ 961, 963 (Fed. Cir. 1985).
We agree with the Examining Attorney that the evidence
of record is sufficient to establish that the asserted mark
"BIRTHDAY BALLOONS" identifies to the general public the
category or class of applicant's mail order services--that
those mail order gift services involve the delivery of
balloons for birthdays. Applicant's asserted mark tells
the general public that applicant provides balloons for
birthdays, or birthday balloons, a term which we find
Ser. No. 75/529,793
5
interchangeable with balloons for birthdays. As such, the
asserted mark is incapable of identifying and
distinguishing applicant's services from those of others
who are engaged in the delivery of birthday balloons.
With respect to applicant’s argument that there is an
insufficient number of references to “birthday balloons” in
the record, we note that the Examining Attorney’s evidence
consists of six excerpts from U.S. publications (out of
“542 stories”) in the months of January-March 1999,
attached to the March 15, 1999 Office action, and seven
excerpts (out of “664 stories”) in the months of August-
September 1999 attached to the November 3, 1999 Office
action. Applicant indicates, on the other hand, that his
Nexis search showed that “BIRTHDAY BALLOONS” was used “once
in the United States.” Applicant’s response, filed October
27, 1999. However, this is undoubtedly due to the narrow
parameter of applicant’s search request, apparently
conducted on September 16, 1999 (“DATE AFT 9/6/99 AND
BIRTHDAY BALLOONS”). While the Examining Attorney could
have submitted more excerpts than he did, we believe that
this record is sufficient to demonstrate that the asserted
mark is a generic term for applicant’s services featuring
the delivery of balloons for birthdays.
Ser. No. 75/529,793
6
Although largely irrelevant to our determination, the
numerous examples of other registered marks cited by
applicant can be distinguished. Some of those registered
trademarks, although sometimes consisting of common or
ordinary words found in the dictionary, are considered
either arbitrary or "suggestive" with respect to the
identified goods and services. BURGER KING, DAIRY QUEEN
and PIZZA HUT, for example, fall into the "suggestive" (not
"merely descriptive" or "generic") category of marks. The
fact that a word may be found in the dictionary is not
fatal to registration, of course. Other registered marks
cited by applicant contain disclaimers of descriptive or
generic terminology, or were registered under the
provisions of Section 2(f) of the Act, providing for the
registration of marks which have acquired distinctiveness.
Such marks include UNITED STATES POSTAL SERVICE, KELLOGG'S
RAISIN BRAN, KELLOGG'S CORN FLAKES. In any event, each
application for registration of a mark for particular goods
or services must be separately evaluated. See In re
BankAmerica Corporation, 231 USPQ 873, 876 (TTAB 1986) and
cases cited therein. In that case, we noted that Section
20 of the Trademark Act gives the Board authority to decide
appeals from adverse final decisions of Examining Attorneys
and that this duty may not and should not be delegated by
Ser. No. 75/529,793
7
adoption of conclusions reached by Examining Attorneys in
different cases on different records.
Finally, we should point out that the fact that
applicant may have been the first to use a descriptive or
generic designation does not justify registration if the
term has only merely descriptive and/or generic
significance. See In re National Shooting Sports
Foundation, Inc., 219 USPQ 1018, 1020 (TTAB 1983) and cases
cited therein.
Decision: The refusal of registration is affirmed.
R.L. Simms
H. R. Wendel
T. E. Holtzman
Administrative Trademark Judges
Trademark Trial and Appeal Board