CauseForce, Inc.

Trademark Trial and Appeal Board

Feb 15, 2008

No. 78625097 (T.T.A.B. Feb. 15, 2008)

Mailed: February 15, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re CauseForce, Inc.
________

Serial No. 78624761
Serial No. 78625097
_______

Thomas W. Cook of Thomas Cook Intellectual Property
Attorneys for CauseForce, Inc.

Brian Pino, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______

Before Quinn, Hairston and Wellington,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

CauseForce, Inc. filed applications to register the
mark THE UNDERWEAR AFFAIR (in typed character format) and
the mark appearing to the right
on the Principal Register for
services ultimately identified
as: “charitable fundraising,
namely, organizing athletic
events to generate funds for

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Serial Nos. 78624761 and 78625097
2
research on, and treatment of, cancers below the waist” in
International Class 36.1
The trademark examining attorney refused registration
of THE UNDERWEAR AFFAIR (in standard character format)
under Section 2(e)(1) of the Trademark Act on the ground
that applicant’s mark is merely descriptive of applicant’s
services. The examining attorney refused registration of
the mark THE UNDERWEAR AFFAIR (in stylized letters) with an
underwear design based on applicant’s failure to comply
with the requirement under Section 6 of the Trademark Act
to disclaim the phrase “THE UNDERWEAR AFFAIR” apart from
the mark because the phrase is merely descriptive of
applicant’s services. Although the grounds for refusal are
different, the issue is the same, namely, whether or not
the mark (and phrase) “THE UNDERWEAR AFFAIR” is merely
descriptive of the recited services.
After the refusals were made final, applicant filed
requests for reconsideration and appealed. The examining
attorney denied the requests for reconsideration.
Applicant and the examining attorney filed briefs on the
issue under appeal. Because the applications are owned by

1 Application Serial Nos. 78624761 and 78625097 were filed May 6,
2005, based upon applicant’s assertion of its bona fide intent to
use the marks in commerce in connection with the recited
services.

Serial Nos. 78624761 and 78625097
3
the same applicant, were reviewed by the same examining
attorney, and involve common issues of fact and law, we
have consolidated the appeals. Both refusals are reversed.
The examining attorney contends that THE UNDERWEAR
AFFAIR is “merely descriptive because it is a combination
of merely descriptive terms that immediately describes a
feature of the applicant’s services, that is, that the
services include, or is, an affair in which underwear is
featured or worn.” Brief, p. 7.2 Specifically, he argues
that the word “affair” encompasses applicant’s charitable
fundraising athletic events; that “participants in
[applicant’s] charitable fundraising affair are encouraged
to wear underwear as their sole piece of outerwear attire”;
that “applicant’s website shows many images of people
wearing underwear as the sole piece of clothing, displays
images of underwear, and consistently emphasizes the
underwear theme throughout the website”; and that,
therefore, the term “underwear” is also “merely descriptive
because the word tells the customer that the wearing of
underwear as the sole piece of clothing is encouraged and
takes place.” Brief, p. 5.

2 Unless otherwise specified, references are to briefs filed in
application Serial No. 78624761.
Serial Nos. 78624761 and 78625097
4
In support of his position, the examining attorney
submitted copies of definitions, of which we take judicial
notice, from The American Heritage Dictionary of the
English Language (4th ed. 2000) of the terms “underwear”
and “affair”; copies of printouts from four different
third-party websites using the term “affair” in connection
with fundraising events; and copies of printouts from
applicant’s website.
Applicant contends that THE UNDERWEAR AFFAIR is, at
most, suggestive of “one of the ways that [applicant’s]
organizers attempt to draw attention to the need for
research funds for cancers that occur below the waist (and
entice entrants to a fun, costumed event, and donors to
support such an event).” Brief, p. 4. In particular,
applicant acknowledges that some of the attendees of its
fundraising events are encouraged to wear underwear, but
not as the term is defined, but in the manner of a costume.
Brief, p. 3. And, “[t]hese costumes impart a message about
the use of funds donated,” i.e., for research on cancers
below the waist. Id.
The examining attorney bears the burden of showing
that a mark is merely descriptive of the identified goods
or services. See In re Merrill, Lynch, Pierce, Fenner, and
Smith Inc., 828 F.2d 21567, 4 USPQ2d 1141, 1143 (Fed. Cir.
Serial Nos. 78624761 and 78625097
5
1987). 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.
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, in order to find that a mark is
merely descriptive, that the mark describe each feature of
the goods or services, only that it describe a single,
significant quality, feature, etc. In re Venture Lending
Associates, 226 USPQ 285 (TTAB 1985). Moreover, whether a
term is merely descriptive is determined not in the
abstract, but in relation to the goods and/or services 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 [or service] is from
consideration of the mark alone is not the test." In re
American Greetings Corp., 226 USPQ 365 (TTAB 1985).
However, upon encountering the goods or services under
the mark, should a multistage reasoning process or resort
to imagination be required in order to determine the
Serial Nos. 78624761 and 78625097
6
attributes or characteristics of the product or services,
the mark is suggestive rather than merely descriptive. See
In re Abcor Development Corp., supra.; Plyboo America Inc.
v. Smith & Fong Co., 51 USPQ2d 1633 (TTAB 1999); and In re
Atavio, 25 USPQ2d 1361, 1362 (TTAB 1992). Often there is
fine line separating suggestiveness from mere
descriptiveness, and determining which side of the line a
mark falls on frequently involves a good measure of
subjective judgment. To the extent that there is any doubt
in resolving this decision, such doubt is resolved in
applicant's favor. In re Atavio, 25 USPQ2d 1361, 1363 (TTAB
1992).
There is a good deal of incongruity between the phrase
THE UNDERWEAR AFFAIR and applicant’s charitable fundraising
services, namely, organizing athletic events to generate
funds for research on, and treatment of, cancers below the
waist, inasmuch as people are not accustomed to wearing
and/or seeing others in their underwear at charitable
fundraising events. The rhyming of the words “underwear”
and “affair” further highlights the fanciful nature of the
phrase THE UNDERWEAR AFFAIR. There is no evidence that
underwear is commonly used as a theme or costume at
charitable fundraising events, other than applicant’s use,
such that we may conclude that the phrase would be
Serial Nos. 78624761 and 78625097
7
perceived as merely describing a feature of applicant’s
services. As a result of the incongruity, when viewing THE
UNDERWEAR AFFAIR in connection with applicant’s services, a
certain level of imagination is needed before one construes
this phrase as describing a charitable fundraiser where
underwear is being worn by as a costume by participants.
Accordingly, we conclude that the examining attorney
has not established that the mark (and phrase) THE
UNDERWEAR AFFAIR, when applied to applicant's services is
merely descriptive; that some mental processing is required
in order for recipients of and prospective customers for
applicant's services to understand the significance of the
mark (and phrase) as it pertains to applicant's services.
Decision: The refusals under Sections 2(e)(1) and 6 of
the Act are reversed.