Burlen Corporation

Trademark Trial and Appeal Board

Mar 24, 2008

No. 78737709 (T.T.A.B. Mar. 24, 2008)

Mailed: March 24, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Burlen Corporation
________

Serial No. 78737709
(filed October 21, 2005)
_______

Michael D. Hobbs, Jr. of Troutman Sanders LLP for Belen
Corporation.

Irene D. Williams, Trademark Examining Attorney, Law Office
112 (Angela Wilson, Managing Attorney).
_______

Before Grendel, Rogers and Wellington,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Applicant, Burlen Corporation, has applied to register
the mark GIRL BOXER (in standard character form) on the
Principal Register for underwear in International Class 25.1

1 Application Serial No. 78737709 was filed October 21, 2005,
based upon applicant’s assertion of its bona fide intent to use
the mark in commerce. Applicant filed an amendment to allege use
on October 2, 2006, alleging a date of first use in commerce on
May 5, 2006.

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Serial No. 78737709
2
The trademark examining attorney refused registration
of the mark under Section 2(e)(1) of the Trademark Act on
the ground that applicant’s mark is merely descriptive of
applicant’s goods.
After the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs.
After careful consideration of the evidence of record and
the arguments, we affirm the refusal to register.
It is well settled that a term is considered to be
merely descriptive of goods and/or services, within the
meaning of Section 2(e)(1) of the Trademark Act, if it
immediately describes an ingredient, quality,
characteristic or feature thereof or if it directly conveys
information regarding the nature, function, purpose or use
of the goods and/or services. See Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052; see also In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
It is not necessary that a term describe all of the
properties or functions of the goods and/or services in
order for it to be considered to be merely descriptive
thereof; rather, it is sufficient if the term describes a
significant attribute or feature about them. Moreover,
whether a term is merely descriptive is determined not in
the abstract, but in relation to the goods and/or services
Serial No. 78737709
3
for which registration is sought. See In re Bright-Crest,
Ltd., 204 USPQ 591 (TTAB 1979). Thus, "[w]hether consumers
could guess what the product is from consideration of the
mark alone is not the test." In re American Greetings
Corp., 226 USPQ 365 (TTAB 1985). Rather, the issue is
whether someone who knows what the goods are will
understand the mark to convey information about them. In
re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002);
In re Patent & Trademark Services Inc., 49 USPQ2d 1537,
1539 (TTAB 1998); In re Home Builders Association of
Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990).
Before we apply the aforementioned principles to the
case at hand, we provide the following discussion of the
relevant evidence of record.
The following definitions, taken from The American
Heritage Dictionary of the English Language (4th ed. 2000),
are of record:2
“Girl”: A female child.
“Boxer”: 1. Sports One who fights with the fists as a
sport.
2. boxers Boxer shorts

2 The Board may take judicial notice of dictionary definitions.
See University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983). More than one definition is in the record for
the term “boxer”; the definition provided in this decision is
representative of those.

Serial No. 78737709
4
“Boxer
Shorts”: Men’s underwear shorts characterized by
loose fit.

The examining attorney has also made of record five
NEXIS database article excerpts containing references to
women (or young women) wearing boxer shorts.3 These
excerpts include:
... time around, madras plaids are popping onto store
racks in micro-mini skirts, hippie-chic peasant tops
and boxer shorts – in the young women ’s
departments, not on the Father’s Day gift
table.

[from The News Journal (Wilmington, DE), March 19,
2006]4

- - -
... a little more traditional, but today's briefs are
looking very sexy, with some mimicking a short, tight
version of boxer shorts. A lot of younger women are
even moving over to the practical and sexy briefs.
The real answer of course, is to wear something that
feels comfortable and looks good. What do YOU ...

[from Palm Beach Post (Florida), November 5, 2005]

3 Attached to November 22, 2006 Office Action. Applicant’s
objection to one of the article excerpts (from Circle Publishing
Ltd.’s Geographical) is well-taken inasmuch as that article
appears to emanate from a foreign publication without any
evidence of circulation in the United States. In re Wilcher
Corp., 40 USPQ2d 1929, 1931 (TTAB 1996) (in absence of evidence
establishing substantial circulation of foreign publications in
U.S., they are not competent to show significance of term to
general American public). Accordingly, that article excerpt was
not given consideration.
4 It appears the extra alphanumeric characters in this excerpt
were somehow inserted when the excerpt was retrieved by the NEXIS
system. When these characters are ignored, the excerpt remains
easily readable.
Serial No. 78737709
5
The examining attorney also made of record screenshots
from two online retail websites advertising boxer shorts
for girls.5 They appear as follows:

[appearing on www.walmart.com on February 7, 2007]
and

[appearing on www.gabbys.net on February 7, 2007].
Applicant argues that these two website advertisements
constitute “infringement of [applicant’s] mark” and

5 Attached to February 7, 2007 Office Action.
Serial No. 78737709
6
applicant is “in the process of addressing the
infringement.” Brief, pp. 17-18. And, in its reply brief,
applicant states that these “infringing uses have been
addressed, and the sites no longer [make] any reference to
Applicant’s mark.” Reply brief, p. 3.
We find that the phrases “Girls’ Boxer Shorts, 2
pack” and “Girl’s Boxer Shorts” on the respective websites
are being used descriptively or generically to refer to the
type of product being sold and not as a source identifier.
Specifically, the former website clearly shows the source
of the goods as “mary-kate and ashley brand” and the latter
website has language under the image of the goods stating
“Manufactured by: Gabby’s.” Thus, it is clear from these
advertisements that the goods are being described as girl’s
(or girls’) boxer shorts. Regardless of whether these uses
of the terms remain on the respective websites, mere
cessation of use would not dictate a conclusion that the
uses were abandoned because they were infringing; and there
is nothing in the record to indicate that the uses, if they
have stopped, were stopped because the users acknowledged
them to be infringing. The uses, if stopped, may have been
stopped merely to avoid conflict between applicant and the
users.
Serial No. 78737709
7
Applicant identified sixteen third-party registrations
for marks containing, in part, the terms “boxer” or “girl”
for use on underwear without requiring a disclaimer of
either term or a showing of acquired distinctiveness.6
Brief, p. 11. Applicant argues that these registrations
are evidence that “the PTO has consistently recognized that
by their commonly understood definitions, the words 'girl'
and 'boxer' are vague, require imagination to connect with
underwear, and do not describe underwear with the immediacy
characteristic of descriptive marks.” Brief, p. 12.
Third-party registrations may be used in the manner of
a dictionary definition to illustrate how a term is
perceived in the trade or industry. In re J.M. Originals
Inc., 6 USPQ2d 1393 (TTAB 1987). However, it has been held
by our principal reviewing court that even “if some prior
registrations had some characteristics similar to
[applicant's] application, the PTO's allowance of such
prior registrations does not bind the Board or this court.”
In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564,
1566 (Fed. Cir. 2001).

6 TARR database printouts were attached as an exhibit to
applicant’s response (filed October 2, 2006) response to an
Office Action. Applicant also identified several applications,
but these have no probative value. In re Phillips-Van Heusen
Corp., 63 USPQ2d 1047, 1049 n.4 (TTAB 2002).
Serial No. 78737709
8
Here, it only takes a cursory review of the third-
party registrations to realize that applicant’s reliance
thereon and the conclusions it draws from their existence
are not well-founded. All of the cited registered marks
containing the term “boxer” or “girl” are also accompanied
by suggestive or other non-descriptive matter making the
respective marks, each considered as a whole, non-
descriptive. In some cases, the additional matter in the
marks changes the overall commercial impression or
connotation of the marks. For example, the mark JOE BOXER
connotes the name of a person and the marks COCKYGIRL,
SUPERGIRL, and PARTY GIRL have other connotations such as,
respectively, a type of girl who is very confident, a
superhero, and a party-goer. It may be that the additional
non-descriptive matter or different (non-descriptive)
connotation created by the various combinations “carried”
the marks and may explain why they are on the Principal
Register without a disclaimer or showing of acquired
distinctiveness.
Based on all of the evidence of record and the
arguments presented, we find that the examining attorney
has met her burden of establishing that the mark GIRL BOXER
is merely descriptive of the identified goods, i.e.,
underwear. We agree with the examining attorney that
Serial No. 78737709
9
applicant’s mark, when used in connection with underwear,
is merely descriptive because “the term BOXER describes the
goods and GIRL designates the audience for which the goods
are intended.” Brief, p. 5. While the dictionary
definitions of record make it clear that boxers are an
underwear style for men, the NEXIS evidence of record
establishes that boxers or boxer-style underwear may be
worn by and marketed to younger women, i.e., girls.
Indeed, the first article excerpt identified above
demonstrates this in describing madras plaid-pattern boxer
shorts which may be found in the young women’s clothing
department. The second article excerpt also illustrates
that even if women aren’t wearing the same boxer shorts as
men, they are wearing boxer-style underwear. In
particular, the article highlights a current fashion, “but
today's briefs are looking very sexy, with some mimicking a
short, tight version of boxer shorts. A lot of younger
women are even moving over to the practical and sexy
briefs….” The online advertisements take the level of
descriptiveness a step further by using the terms “girls’
boxers” or “girl’s boxers” to describe the genus of goods.
Taken together, the evidence is sufficient for purposes of
establishing that boxers or boxer-style underwear are being
marketed to younger women or “girls.” Applicant’s
Serial No. 78737709
10
identification of goods, "underwear," is definitely broad
enough to cover all types of underwear, including boxers or
a boxer-style underwear for younger women, i.e., girls.
We are not persuaded by applicant’s argument that
because “boxer” is defined as a style of underwear worn by
men, an incongruity results when the term is combined with
“girl,” as in applicant’s mark. To the extent that any
incongruity lies within the combination of the terms “girl”
and “boxer”, it does not rise to such a level as to create
ambiguity in the meaning of applicant’s mark when viewed in
connection with underwear. Applicant’s mark does not
require any exercise of mental processing in order to
readily perceive the descriptive significance of the mark
as it relates to underwear. Rather, consumers will
immediately understand applicant’s mark as describing a
"boxer" type of underwear to be worn by girls. We do not
find the combination of the terms to be so unusual as to
negate or diminish the descriptive nature of the mark. In
fact, any possible incongruity would not arise unless a
prospective consumer of underwear, upon considering
applicant's proposed mark, first concluded that the
underwear was for girls and were boxer shorts. At that
point, consumers unaware of an emerging market for such
goods might very well find the terms somewhat incongruous;
Serial No. 78737709
11
but such prospective consumers would already have been
immediately provided with information about significant
characteristics of underwear for girls that are either
boxers or in the style of boxers, without any further need
of thought or imagination to discern the nature of the
goods. Such is the essence of descriptive words.
Moreover, consumers looking for boxers for girls, because
already aware of their existence would not perceive any
incongruity at all.
In summary, we are persuaded that when applied to
applicant's goods, the mark GIRL BOXER immediately
describes, without conjecture or speculation, applicant's
goods, i.e., underwear. No exercise of imagination,
cogitation, or mental processing is required in order for
prospective consumers of applicant's goods to readily
perceive the merely descriptive significance of the mark as
it pertains to applicant's goods.
Decision: The refusal to register is affirmed.