DashAmerica, Inc., dba Pearl Izumi USA, Inc.

Trademark Trial and Appeal Board

Mar 13, 2019

87564276 (T.T.A.B. Mar. 13, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 13, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re DashAmerica, Inc., dba Pearl Izumi USA, Inc.
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Serial No. 87564276
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Rod S. Berman of Jeffer Mangels Butler & Mitchell LLP,
for DashAmerica, Inc.
Jonathan R. Falk, Trademark Examining Attorney, Law Office 111,
Chris Doninger, Managing Attorney.
_____

Before Cataldo, Wellington and Lynch,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
Applicant, DashAmerica, Inc., dba Pearl Izumi USA, Inc., seeks registration on
the Principal Register of the mark BIKESTYLE (in standard characters), identifying
Cycling apparel, namely, gloves, socks, arm and leg warmers, pants,
tights, shorts, jerseys, shirts, t-shirts, vests, sweaters, jackets, warm-up
suits, rain suits; anoraks, singlets, tank-tops, cycling shorts, underwear,
knickers, warm-up pants, skirts, skorts, pullovers, rainwear, cycling
jerseys, cycling bib shorts, sports bras, crop tops, balaclavas, visors
being headwear; baselayers, namely, tops, bottoms and underwear;
headwear, hats, caps being headwear, headbands in Class 25.1

1 Application Serial No. 87564276 was filed on August 10, 2017, pursuant to Section 1(b) of
the Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide
intention to use the mark in commerce.
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The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that
Applicant’s BIKESTYLE mark is merely descriptive of the identified goods.2 The
Examining Attorney argues:
In this case, both the individual components and the composite result
are descriptive of applicant’s goods and do not create a unique,
incongruous, or nondescriptive meaning in relation to the goods.
Specifically, the wording merely describes that it is a particular fashion
of clothing made for bicycling. This combined wording creates no unique,
incongruous, or otherwise nondescriptive meaning in relation to such
cycling clothes.3

When the refusal was made final, Applicant appealed. Applicant and the
Examining Attorney have filed briefs. For the reasons discussed below, we affirm the
refusal of registration.
I. Request for Judicial Notice or to Reopen Prosecution
Applicant attached to its reply brief evidence in the form of copies of third-party
registrations retrieved from the USPTO’s Trademark Examination Search System
(TESS) database.4 Applicant requests the Board to take judicial notice of these third-
party registrations or, in the alternative, to suspend the instant appeal and reopen
prosecution in order to allow their introduction.5
The Board does not take judicial notice of applications or registrations; they must
be proved by competent evidence. See, e.g., In re Jonathan Drew Inc., 97 USPQ2d

2 Examining Attorney’s Brief, 9 TTABVUE 2.
3 9 TTABVUE 7.
4 Applicant’s reply brief; 10 TTABVUE 10-96.
5 10 TTABVUE 6-7, FN 3.
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1640, 1644 n.11 (TTAB 2011) (stating that “the Board’s well-established practice is
not to take judicial notice of registrations that reside in the USPTO”); Beech Aircraft
Corp. v. Lightning Aircraft Co., 1 USPQ2d 1290, 1293 (TTAB 1986) (“[W]e do not take
judicial notice of application and registration files that reside in the Patent and
Trademark Office.”).
Applicant’s request for judicial notice is denied.
The proper procedure for an applicant or examining attorney to introduce evidence
after an appeal has been filed is to submit a timely written request with the Board to
suspend the appeal and remand the application for further examination. See
Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d). See also Trademark Trial and Appeal
Board Manual of Procedure (TBMP) § 1207.02 and authorities cited therein. The
request must include a showing of good cause therefor, which may take the form of a
satisfactory explanation as to why the evidence was not filed prior to appeal.
In this case, Applicant’s request for remand, embedded in a footnote in Applicant’s
reply brief, does not include any showing of good cause or other explanation for
Applicant’s failure to introduce the evidence during prosecution of its involved
application. See, e.g., In re Adlon Brand Gmbh & Co., 120 USPQ2d 1717, 1725 (TTAB
2016) (applicant’s request for remand, included in applicant’s brief, denied,
explaining that proper procedure “was to file with the Board, after the filing of the
appeal but before briefing, a request for remand with a showing of good cause.”); In
re Luxuria s.r.o., 100 USPQ2d 1146, 1147 (TTAB 2011) (applicant’s request for
remand denied for failure to show good cause).
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Applicant’s request for remand is denied.
We turn then to consideration of the issue under appeal.
II. Mere Descriptiveness
In the absence of acquired distinctiveness, Section 2(e)(1) of the Trademark Act
prohibits registration on the Principal Register of “a mark which, (1) when used on
or in connection with the goods of the applicant is merely descriptive . . . of them.” 15
U.S.C. § 1052(e)(1). As noted above, a term is “merely descriptive” within the meaning
of Section 2(e)(1) if it “immediately conveys knowledge of a quality, feature, function,
or characteristic of the goods or services with which it is used.” In re Chamber of
Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012)
(quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed.
Cir. 2007)). “On the other hand, if one must exercise mature thought or follow a multi-
stage reasoning process in order to determine what product or service characteristics
the term indicates, the term is suggestive rather than merely descriptive.” In re
Tennis in the Round, Inc., 199 USPQ 496, 498 (TTAB 1978); see also In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987).
A term need only describe a single feature or attribute of the identified goods to
be descriptive. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d
1807, 1812 (Fed. Cir. 2001). Whether a mark is merely descriptive cannot be
determined in the abstract or on the basis of guesswork. Descriptiveness must be
evaluated “in relation to the particular goods for which registration is sought, the
context in which it is being used, and the possible significance that the term would
Serial No. 87564276
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have to the average purchaser of the goods because of the manner of its use or
intended use.” Chamber of Commerce of the U.S., 102 USPQ2d at 1219 (quoting In re
Bayer AG, 82 USPQ2d at 1831). In other words, we evaluate 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); In re Tower Tech Inc., 64 USPQ2d 1314,
1316-17 (TTAB 2002).
1. Evidence of Record
The components of Applicant’s proposed mark are defined as follows:
The word “bike” is defined, inter alia, as “a bicycle.”6

The term “style” is defined, inter alia, as “the fashion of the moment,
especially of dress; vogue: clothes that are in style” “a particular fashion,”
and to design or fashion in a certain way.”7

The Examining Attorney further introduced printouts of pages from sixteen third-
party commercial and informational websites featuring clothing items for use in
connection with bicycles and cycling, identified as follows:8
Backcountry.com offers men’s bike apparel, including bike jerseys, bike shorts
and bibs, bike jackets and vests, bike tights and knickers, bike baselayers, bike
casual wear and bike compression shorts;

Competitivecyclist.com offers men’s road bike clothing, including road bike
tops, road bike bottoms, road bike accessories and road bike shoes;

Goreapparel.com offers men’s and women’s bike wear;

6 November 15, 2017 first Office Action at .pdf 6, definition from The American Heritage
Dictionary of the English Language, Fifth ed. (2017).
7 Id. at .pdf 7.
8 December 29, 2017 final Office Action at .pdf 47-50; July 30, 2018 Office Action denying
Applicant’s Request for Reconsideration at .pdf 3-14.
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Steepandcheap.com offers mountain bike apparel;

Trieverythingstore.com offers bike and cycling apparel including cycling
jerseys;

Bicycling.com discusses independent bike apparel companies;

Rivbike.com offers bike clothing;

Dakine.com offers bike apparel;

Jandd.com offers bike clothing;

Bikeradar.com discusses the best road bike clothing;

Pocsports.com offers mountain biking apparel;

Scott-sports.com offers bike apparel for men;

Evo.com offers bike clothing for men and women;

Ems.com offers bike clothing and shoes, including bike jerseys; bike jackets
and vests, bike shorts, bike pants and tights, bike shoes, bike socks, bike gloves
and bike headwear;

Patagonia.com offers mountain bike clothing and gear for men and women; and

Trek.com offers bike clothing and cycling clothing.

In further support of the refusal of registration, the Examining Attorney has
submitted copies of fourteen third-party registrations of BIKE-formative marks, and
four third-party registrations of STYLE-formative marks, all issued on the Principal
Register with respective disclaimers of, inter alia, “BIKE” and “STYLE,” identifying
various clothing items. The following examples are illustrative (all marks in standard
characters unless otherwise noted):9

9 December 29, 2017 final Office Action at .pdf 7-46; 51-64.
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BIKE BARN and design, identifying various items of bicycling clothing in
Class 25 (Reg. No. 3919222);

BIKE RELIGION, identifying various items of athletic apparel, including
cyclists’ jerseys in Class 25 (Reg. No. 4047966);

DURANGO MUSIC CITY STYLE, identifying “footwear” in Class 25 (Reg. No.
5330701); and

STYLE DU MONDE (in stylized form), identifying “men’s and women’s
jackets, coats, vests” in Class 25 (Reg. No. 5342247).

2. Discussion
The evidence introduced into the record by the Examining Attorney indicates, and
Applicant acknowledges, that the goods identified in the involved application may be
described by the terms “bike clothing,” “bike apparel,” “bike wear,” “cycling wear” and
“cycling clothing”. The record also indicates that, individually, the terms “BIKE” and
“STYLE” have been disclaimed in connection with clothing items, including athletic
clothing used for bicycling.
The internet and registration evidence excerpted above clearly indicates that third
parties discuss, offer for sale, and register marks for various clothing items
specifically intended for use while bicycling. In addition, “Applicant does not dispute,
and has never disputed, that ‘bike’ is used by third parties as part of their description
of apparel that can be worn for biking or cycling.”10 Thus, there is no question that
the term “bike” merely describes a feature of Applicant’s goods, which are cycling
apparel. The evidence of record also supports a finding that the term “style” describes
clothing items of a particular fashion or clothing that is designed or fashioned in a

10 10 TTABVUE 6, n 2.
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certain way, namely, for riding bikes. Indeed, as described in the application,
Applicant’s goods are specifically prefaced as “cycling apparel” and include cycling
shorts and jerseys. Viewed in the context of these goods, Applicant’s mark merely
describes goods that are designed or fashioned for people riding bikes. The dictionary
definitions also indicate that particularly in the clothing context, the term “style” may
refer to something fashionable or a particular type of fashion, which in this case could
be what is fashionable in bicycle clothing.
When two or more merely descriptive terms are combined, as is the case with the
terms BIKE and STYLE comprising the mark at issue herein, the determination of
whether the composite mark BIKESTYLE also has a merely descriptive significance
turns on whether the combination of terms evokes a new and unique commercial
impression. “In considering a mark as a whole, the Board may weigh the individual
components of the mark to determine the overall impression or the descriptiveness of
the mark and its various components.” In re Oppedahl & Larson LLP, 71 USPQ2d
1370, 1372 (Fed. Cir. 2004) (PATENTS.COM merely descriptive of computer software
for managing a database of records that could include patents and for tracking the
status of the records by means of the internet). See also In re Petroglyph Games Inc.,
91 USPQ2d 1332, 1337 (TTAB 2009) (BATTLECAM merely descriptive for computer
game software); In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1823 (TTAB 2012)
(SEMICONDUCTOR LIGHT MATRIX merely descriptive of light and UV curing
systems composed primarily of light-emitting diodes for industrial and commercial
applications). In this case, the evidence of record establishes that Applicant’s
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BIKESTYLE mark merely describes clothing of a particular fashion, i.e., bike fashion,
or clothing fashioned for bicycling. Thus, the mark BIKESTYLE immediately
describes a characteristic of feature of Applicant’s various items of cycling apparel,
namely, that it is apparel fashioned for bicycling or bike fashion, without the need for
multistage reasoning.
Applicant argues that “‘style’ has numerous meanings, many of which could apply
here.”11 However, as noted above we determine whether a term is merely descriptive
not in the abstract, but in relation to the goods or services for which registration is
sought, the context in which it is being used on or in connection with those goods or
services, and the possible significance that the term would have to the average
purchaser of the goods or services because of the manner of its use. That a term may
have other meanings in different contexts is not controlling. In re Bright-Crest, Ltd.,
204 USPQ at 593. Moreover, “[t]he question is not whether someone presented with
only the mark could guess what the goods or services are. Rather, the question is
whether someone who knows what the goods or services are will understand the mark
to convey information about them.” In re Tower Tech Inc., 64 USPQ2d at 1316-17. See
also In re Patent & Trademark Services Inc., 49 USPQ2d 1537 (TTAB 1998); In re
Home Builders Association of Greenville, 18 USPQ2d 1313 (TTAB 1990). The evidence
of record establishes that BIKESTYLE has a descriptive meaning – apparel fashioned
for or fashionable for bicycling – in connection with the identified goods. The fact that

11 Applicant’s Brief, 7 TTABVUE 7.
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the term “style” may possess additional meanings in other contexts does not diminish
the descriptive significance of the term in connection with the goods at issue herein.
Applicant further argues:
Here, there is no evidence of record that any third party uses “bikestyle,”
“bike style,” “bicycle style,” “cycling style,” to describe any apparel,
footwear, or any other goods to be used for either the sport of cycling or
riding a bicycle in general. Instead, the evidence submitted by the
Examining Attorney shows that third parties are using the phrases
“bike apparel,” “bike clothing,” “bike wear,” “bike gear,” “biking
apparel,” to describe clothing sold specifically for the purposes of
cycling.12

There is no need for the Examining Attorney to demonstrate that others have used
the mark BIKESTYLE at issue or that they need to use the term “bike style” to
describe cycling apparel, although such proof might be highly relevant to an analysis
under Section 2(e)(1). In re Fat Boys Water Sports LLC, 118 USPQ2d at 1515. In
addition, “[t]here is no requirement that the Office prove actual competitor use or
need; it is well established that even if an applicant is the only user of a merely
descriptive term, this does not justify registration of that term.” In re Carlson, 91
USPQ2d 1198, 1203 (TTAB 2009).
Applicant further argues:
Consumers are likely to understand the coined term as a play on the
similar sounding word “lifestyle,” but with an eye towards the bicycling
community in particular, as well as the term “freestyle” – a type of
bicycle competition and a term conveying the absence of rules or
restrictions.13

12 7 TTABVUE 8-9.
13 7 TTABVUE 9.
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Although the application at issue is based on intent-to-use, Applicant submitted
screenshots from its website in support of its position that it “supplies its ‘captivating
products to help promote the bicycle…culture’”14 and that its BIKESTYLE mark
“refers to all aspects that embody the interests of cyclists, and, in turn, the cyclists’
way of life.”15 However, Applicant’s evidence that its products are intended to promote
cycling culture does not diminish the descriptiveness of BIKESTYLE in relation to
cycling apparel. Simply put, there is insufficient evidence that consumers will view
BIKESTYLE as suggesting bicycle culture given the plain meaning of the mark as
applied to various items of clothing to be worn while bicycling. Similarly, there is
little, if any, evidence to support Applicant’s contention that consumers will view
BIKESTYLE, applied to its cycling apparel, as evocative of a bike lifestyle or freestyle
bicycling when the common meanings of the terms BIKE and STYLE comprising the
mark immediately describe apparel fashioned for bicycling. See In re Fat Boys Water
Sports LLC, 118 USPQ2d at 1516 (TTAB 2016) (“The two component words of the
mark combine in a manner and order that would be easily interpreted by persons
familiar with the English language and the goods. They would be immediately
understood ….”); In re Petroglyph Games Inc., 91 USPQ2d at 1341 (TTAB 2009)
(“[B]ecause the combination of the terms does not result in a composite that alters
the meaning of either of the elements, refusal on the ground of descriptiveness is
appropriate.”).

14 June 17, 2018 request for Reconsideration at .pdf 6, 8-13, emphasis supplied by Applicant.
15 June 17, 2018 Request for Reconsideration at .pdf 6.
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3. Summary and Conclusion
Based upon all arguments and evidence of record, including any not specifically
discussed, we find the Examining Attorney has met the burden of showing that
BIKESTYLE is merely descriptive of the goods identified in Applicant’s application
under Section 2(e)(1) of the Trademark Act. 16
Decision: The refusal to register Applicant’s mark BIKESTYLE is affirmed.

16 We note that our determination herein does not preclude Applicant from attempting to
show that BIKESTYLE has acquired distinctiveness as a mark for these goods, or that
BIKESTYLE is capable of registration on the Supplemental Register, in a subsequent
application.