Daniel Dayan

Trademark Trial and Appeal Board

Mar 21, 2002

No. 75358966 (T.T.A.B. Mar. 21, 2002)

3/21/02

Paper No. 24
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Daniel Dayan
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Serial No. 75/358,966
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Philip A. Kantor for applicant.

Amos T. Matthews, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______

Before Simms, Hairston and Wendel, Administrative Trademark
Judges.

Opinion by Hairston, Administrative Trademark Judge:

Daniel Dayan has filed an application to register the
mark BABY GOLF for “clothing, namely newborn, infant and
toddler shirts, one-piece outfits, coveralls, pants and
dresses.”1
The Trademark Examining Attorney has refused
registration under Section 2(e)(1) of the Trademark Act on

1 Serial No. 75/358,966, filed September 18, 1997; based on an
allegation of a bona fide intention to use the mark in commerce.
The word BABY has been disclaimed apart from the mark as shown.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/358,966
2
the ground that applicant’s mark, if used in connection
with the identified goods, would be merely descriptive of
them.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs, but
an oral hearing was not requested.
The Examining Attorney contends that the mark BABY
GOLF immediately conveys information about the nature of
applicant’s goods, namely, that it is clothing for very
young children with a golf theme or motif. In support of
the refusal, the Examining Attorney submitted dictionary
entries for the words “baby” and “golf”. In addition, he
submitted, inter alia, six excerpts of articles retrieved
from the NEXIS database that refer to “baby golf clubs” or
“baby golf shoes.” Following are examples of the excerpts:
One company, Wee Golf, has gone as far as
manufacturing baby golf clubs.
(The Arizona Republic, October 10, 1997);

. . .provincial bassinet, a Burberry baby
carriage (worth $4,250) and a wardrobe
stocked with everything from blue-and-
white onesies to baby golf shoes.
(People, February 12, 2001); and

There are golf-ball display cases for
collectors, desk sets, tapestries, pictures
of famous courses, baby golf shoes, barbeque
utensils with a golf-grip handle . . .
(The Kansas City Star November 11, 1998).

Ser No. 75/358,966
3
Applicant, on the other hand, contends that its mark
is at most suggestive of its goods. According to
applicant, none of its clothing possesses the usual
attributes of golf clothing, namely, cuffed trousers or
high, overlapping socks, and that the only “nexus between
[a}pplicant’s clothing and golf is a style and attitude
suggestive of a ‘country club’ theme.” With respect to the
NEXIS excerpts relied on by the Examining Attorney,
applicant maintains that the uses of “baby golf shoes”
therein are not references to apparel at all, but rather to
miniature replicas of adult golf shoes which are used for
display purposes only. In addition, applicant argues that
it cannot be discerned whether the uses of “baby golf
clubs” are references to golf clubs for older children, or
to miniature replicas of golf clubs. Further, applicant
argues that the mark has a certain incongruity in that
newborns, infants and toddlers cannot and do not play golf.
A mark is merely descriptive if it immediately
describes the ingredients, qualities, or characteristics of
the goods or services or if it conveys information
regarding a function, purpose, or use of the goods or
services. In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 217 (CCPA 1978). A term may be descriptive even
Ser No. 75/358,966
4
if it only describes one of the qualities or
characteristics of the goods or services. In re Gyulay,
820 F.2d 1216, 1217, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987).
Moreover, whether the term is merely descriptive is
determined not in the abstract, but in relation to the
goods for which registration is sought. In re
Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
There is no dispute that the word BABY is descriptive
of applicant’s clothing. In this regard, we note that
applicant has disclaimed the word apart from the mark as
shown. Moreover, although applicant contends that none of
its actual clothing “possesses the usual attributes of golf
clothing,” the identification of goods in applicant’s
application is not restricted so as to exclude this type of
clothing. In other words, the identification of goods is
broad enough to include clothing of a type that resembles
golf clothing and, in particular, may include what are
commonly referred to as “golf shirts.” In fact, golf
shirts in newborn and infant sizes are among the items
Ser No. 75/358,966
5
featured in applicant’s catalog sheet.2 Thus, the word GOLF
is equally descriptive of applicant’s clothing.
The combination of the words BABY GOLF does not result
in an incongruity. Rather, the combination simply conveys
the merely descriptive meaning of its parts. See e.g., In
re International Game Technology Inc., 1 USPQ2d 1587 (TTAB
1986) where ON-LINE, ON-DEMAND was held merely descriptive
of computer lottery terminals, which operate on-line and
provide tickets on demand; and In re Nash-Fitch Co., 160
USPQ 210 (TTAB 1968) where TENDER FRESH was held
unregistrable on the Supplemental Register for fresh cut
chickens.
Under the circumstances, we agree with the Examining
Attorney that the term BABY GOLF immediately describes a
significant characteristic of applicant’s clothing, namely,
that it is golf-style clothing for babies.
Decision: The refusal to register under Section
2(e)(1) is affirmed.

2 Although applicant based its application on an intent-to-use
the mark, during the course of prosecution, applicant submitted a
catalog sheet. We note, however, that applicant has not filed an
amendment to allege use.