Cleopatra Bell

Trademark Trial and Appeal Board

Jan 7, 2016

No. 86187124 (T.T.A.B. Jan. 7, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: January 7, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
________

In re Bell
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Serial Nos. 86187124
_______

Laurence P. Colton of Smith Risley Tempel Santos LLC,
for Cleopatra Bell.

Khanh M. Le, Trademark Examining Attorney, Law Office 116,
Christine Cooper, Managing Attorney.
_______

Before Quinn, Cataldo, and Gorowitz,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
Cleopatra Bell (“Applicant”) filed an application to register the designation BUY
AN INMATE A BOOK (in standard characters) for “charitable services, namely,
providing books to people; charitable services, namely, providing books to inmates
and the incarcerated” in International Class 41.1

1 Application Serial No. 86187124, filed February 7, 2014 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intention to use the mark in
commerce.
Application Serial No. 86187124

2

The trademark examining attorney refused registration under Section 2(e)(1) of
the Trademark Act, 15 U.S.C. § 1052(e)(1), on the basis that Applicant’s mark,
when used in connection with Applicant’s services, is merely descriptive thereof.
When the refusal to register was made final, Applicant appealed. Applicant and
the examining attorney filed briefs. We affirm the refusal.
Applicant argues that its applied-for mark cannot be dissected into individual
components, but rather must be considered as a whole when determining the
descriptiveness of the mark. To this point, Applicant contends that a combination of
descriptive words nevertheless may be registrable if the juxtaposition of the words
is inventive or evokes a unique commercial impression:
Under the specifics [sic] facts of this case, Appli-
cant’s Mark signifies to the relevant consumer, in con-
nection with the applied-for charitable services, more
than just the mere descriptive definition of it [s ic]
component words. Applicant’s Mark is, instead, more
similar to phrases like “teach a man to fish,” “give a dog a
bone,” “give a child a smile,” and the less positive “some-
one please buy that man a book/newspaper/internet sub-
scription.” Applicant’s Mark, like these other short
“meme” like “mantras” or phrases, carries with it im-
portant mental “baggage” that ignites the relevant con-
sumer’s imagination when considering the applied-for
charitable services.
Moreover, Applicant’s Mark is incongruous within the
very context of the applied-for charitable services be-
cause BUY AN INMATE A BOOK does not immedi-
ately convey ACTUAL knowledge of a quality, feature,
function, or characteristic of the charitable services.
Instead, Applicant’s Mark would signify to the relevant
consumer the unexpected and unconventional combina-
tion of “buy” an “inmate” – or criminal - something
within the context of a charity. This is simply not the
expected course that the relevant consumer would expect.
Donations are the usual charitable option. Nonetheless,
Application Serial No. 86187124

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the charitable service associated with Applicant’s Mark
are directed towards this unconventional, but more ef-
fective and beneficial, charitable service of providing
inmates with not-the-usual donated book. The charita-
ble service provides specific and relevant books, benefi-
cial to inmates – purchased by the relevant consumers.

(4 TTABVUE 14-15). Applicant concludes that its mark “evokes a new and unique
commercial impression in the minds of the relevant consumer by leveraging off an
incongruous phrase.” (4 TTABVUE 15). Applicant specifically points to the absence
of evidence showing third-party uses of the mark it seeks to register in connection
with charitable services. Finally, Applicant urges that any doubt about the issue of
descriptiveness must be resolved in its favor because, “[a]t a bare minimum,
Applicant’s mark presents a muddled and messy legal analysis,” and that “the legal
framework of past precedent does not provide a clear answer.” (4 TTABVUE 18).
Applicant provided an excerpt of a competitor’s website, InmateAid, showing that it
“has made buying a book for your inmate as easy as the click of the mouse.”
(Attachment to Response, Nov. 14, 2014).
The examining attorney maintains that Applicant’s charitable services feature
the purchase of books for inmates and, therefore, the applied-for mark is merely
descriptive. The examining attorney submitted dictionary definitions, a portion of
Applicant’s website, and excerpts retrieved from printed publications.
A term is merely descriptive of goods or services within the meaning of Section
2(e)(1) if it forthwith conveys an immediate idea of an ingredient, quality, character-
istic, feature, function, purpose or use of the goods or services. In re Chamber of
Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). See
Application Serial No. 86187124

4

also In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Whether a mark
is merely descriptive is determined in relation to the goods or services for which reg-
istration is sought and the context in which the term is used, not in the abstract or
on the basis of guesswork. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ
215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). A term
need not immediately convey an idea of each and every specific feature of the goods
or services in order to be considered merely descriptive; it is enough if it describes
one significant attribute, function or property of them. See In re Gyulay, 3 USPQ2d
at 1010; In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180
USPQ 338 (TTAB 1973). This requires consideration of the context in which the
mark is used or intended to be used in connection with those goods or services, and
the possible significance that the mark would have to the average purchaser of the
goods or services in the relevant marketplace. See In re Chamber of Commerce of the
U.S., 102 USPQ2d at 1219; In re Bayer Aktiengesellschaft, 488 F.3d 960, 82
USPQ2d 1828, 1831 (Fed. Cir. 2007); In re Abcor Dev. Corp., 200 USPQ at 218; In re
Venture Lending Assocs., 226 USPQ 285 (TTAB 1985). The question is not whether
someone presented only with the mark could guess the goods or services listed in
the identification. Rather, the question is whether someone who knows what the
goods or services are will understand the mark to convey information about them.
DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d
1753, 1757 (Fed. Cir. 2012), quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-
1317 (TTAB 2002). See also In re Patent & Trademark Services Inc., 49 USPQ2d
Application Serial No. 86187124

5

1537, 1539 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d
1313, 1317 (TTAB 1990); In re American Greetings Corp., 226 USPQ 365, 366
(TTAB 1985).
When two or more merely descriptive terms are combined, the determination of
whether the composite mark also has a merely descriptive significance turns on the
question of whether the combination of terms evokes a new and unique commercial
impression. If each component retains its merely descriptive significance in relation
to the goods or services, the combination results in a composite that is itself merely
descriptive. In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371
(Fed. Cir. 2004), quoting Estate of P.D. Beckwith, Inc. v. Commissioner, 252 U.S.
538, 543 (1920). See also In re Tower Tech, Inc., 64 USPQ2d at 1318 (SMARTTOW-
ER merely descriptive of commercial and industrial cooling towers); In re Sun Mi-
crosystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely descriptive
of computer programs for use in developing and deploying application programs); In
re Putman Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE
ONLINE merely descriptive of news and information services in the food processing
industry). However, a mark comprising a combination of merely descriptive compo-
nents is registrable if the combination of terms creates a unitary mark with a
unique, non-descriptive meaning, or if the composite has a bizarre or incongruous
meaning as applied to the goods or services. See In re Colonial Stores Inc., 394 F.2d
549, 157 USPQ 382 (CCPA 1968) (SUGAR & SPICE for “bakery products”); In re
Shutts, 217 USPQ 363 (TTAB 1983) (SNO-RAKE for “a snow removal hand tool
Application Serial No. 86187124

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having a handle with a snow-removing head at one end, the head being of solid un-
interrupted construction without prongs”). “If one must exercise mature thought or
follow a multi-stage reasoning process in order to determine what characteristics
the term identifies, the term is suggestive rather than merely descriptive.” In re
Tennis in the Round, Inc., 199 USPQ 496, 497 (TTAB 1978). See also In re Shutts,
217 USPQ at 364-365; In re Universal Water Systems, Inc., 209 USPQ 165, 166
(TTAB 1980).
The word “buy” is defined as “to acquire in exchange for money or its equivalent;
purchase.” The word “inmate” means “someone who is kept in prison.” The word
“book” is defined as “a written work that is published, either as printed pages inside
a cover or electronically.” (Attachments to Office action, May 15, 2014).
The record includes an excerpt of Applicant’s website wherein Applicant
describes her “BUY AN INMATE A BOOK CAMPAIGN”:
One way you can assist is by purchasing one or more
copies of Cleopatra Bell’s Ethical Will [Applicant’s book]
and send a copy directly to the places below [including
programs supplying books for prison inmates], to someone
you know who is currently an inmate, or you can take
copies you purchased and donate them to institutions
near you (please receive permission from the institution
before you do that). My goal is to visit several correctional
institutions and share the message.

(www.buyaninmateabook.weebly.com attached to Office action, Nov. 28, 2014).
Also of record are excerpts of the following printed publications:
The Inmate Ministry Foundation relies on donations to
buy books for the inmates…
(Bradenton Herald (FL), Oct. 12, 2013)

Application Serial No. 86187124

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Bucher reached into his own pockets to buy the required
books for the inmates because they have little money and
a donor couldn’t be found.
(Topeka Capital-Journal (KS), May 2, 2009)

Brown took the opportunity to brag about … a $12,000
grant he and the county librarian obtained to buy books
for the inmates.
(St. Petersburg Times (FL), Feb. 2, 1989)

The combination of the words “BUY,” “AN,” “INMATE,” “A,” and “BOOK” to
form Applicant’s mark does not evoke a new and unique commercial impression.
Rather, no imagination or thought is required by a prospective purchaser to discern
that a significant purpose or feature of Applicant’s “charitable services, namely,
providing books to people; charitable services, namely, providing books to inmates
and the incarcerated” is for patrons to buy books for prison inmates. Indeed,
Applicant states that “[t]he charitable service provides specific and relevant books,
beneficial to inmates – purchased by the relevant consumers.” (4 TTABVUE 15).
The applied-for mark BUY AN INMATE A BOOK immediately describes, without
conjecture or speculation, a significant feature of the services. Purchasers clearly
will understand that Applicant’s services provide a conduit for them to buy a book
for a prison inmate. Our view is confirmed by the terminology in the recitation of
services and the language on Applicant’s website. See DuoProSS Meditech Corp. v.
Inviro Med. Devices, Ltd., 103 USPQ2d at 1757 (SNAP SIMPLY SAFER merely
descriptive for “medical devices, namely, cannulae; medical, hypodermic, aspiration
and injection needles; medical, hypodermic, aspiration and injection syringes”); In re
Associated Theatre Clubs Co., 9 USPQ2d 1660, 1663 (TTAB 1988) (GROUP SALES
Application Serial No. 86187124

8

BOX OFFICE is nothing more than a combination of the two common descriptive
terms most applicable to Applicant’s services which in combination achieve no
different status but remain a common descriptive compound expression).
The fact that an applicant may be the first and only user (as Applicant claims)
of a merely descriptive designation does not justify registration if the only
significance conveyed by the term is merely descriptive. See In re Nat'l Shooting
Sports Found., Inc., 219 USPQ 1018 (TTAB 1983) (SHOOTING, HUNTING,
OUTDOOR TRADE SHOW AND CONFERENCE held apt descriptive name for
conducting and arranging trade shows in the hunting, shooting, and outdoor sports
products field).
Accordingly, we find that the composite phrase BUY AN INMATE A BOOK is
merely descriptive of Applicant’s charitable services, namely, that they feature the
purchase of books for prison inmates.
Decision: The refusal to register is affirmed.