David Amini

Trademark Trial and Appeal Board

May 3, 2002

No. 75862136 (T.T.A.B. May. 3, 2002)

5/3/02

Paper No. 12
RFC

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________

In re David Amini
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Serial No. 75/862,136
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Myron Amer for David Amini.

Jason F. Turner, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______

Before Cissel, Seeherman and Holtzman, Administrative
Trademark Judges.

Opinion by Cissel, Administrative Trademark Judge:
On December 2, 1999, applicant, an individual who is a
citizen of the United States and a resident of the state of
New York, filed the above-identified application to
register the mark “GIOIA” on the Principal Register for
“jewelry,” in Class 16. The application was based on
applicant’s claim of use of the mark in interstate commerce
since November 1, 1997.
The Examining Attorney refused registration under
Section 2(e)(1) of Lanham Act, 15 U.S.C. 1052(e)(1), on the
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/862,136
2
ground that the term sought to be registered is merely
descriptive of the goods specified the application. In
support of the refusal to register, he attached a copy of a
page from Cassell’s Italian Dictionary, Macmillen (1967),
wherein the Italian word “gioia” is defined as “jewel.”
Applicant amended the application to seek registration
on the Supplemental Register.
The Examining Attorney refused registration on the
Supplemental Register under Section 23 of the Lanham Act on
the ground that the term applicant seeks to register is
generic in connection with the goods specified in the
application, and is therefore incapable of identifying
applicant’s goods and distinguishing them from similar
products manufactured or sold by others.
Applicant responded to the refusal to register the
mark on the Supplemental Register by amending the
identification-of-goods clause to read as follows: “a
decorative article of metal construction material worn on
the person.”
The Examining Attorney maintained the refusal to
register the mark on the Supplemental Register. In support
of the refusal, he quoted a dictionary definition of the
English word “jewel,” which is, as noted above, what
“GIOIA” translates into, as meaning “a costly ornament of
Ser No. 75/862,136
3
precious metal or gems.” The American Heritage Dictionary
of the English Language, Third Edition, Houghton Miffflin
Company, (1992).
Additionally, he held that the wording used in the
amended identification-of-goods clause was unacceptable
because it exceeded the scope of the original
identification, and he suggested that applicant adopt the
following, if it were accurate: “jewelry, namely, and(sic)
ornamental article of precious metal worn on the person
which attaches to the front of a garment using a safety pin
connector,” in Class 14.
Applicant responded by amending the clause to read “an
ornamental article of precious metal worn on the person
which attaches to the front of a garment using a safety pin
connector.” Applicant did not adopt the suggested
reference to “jewelry,” contending that “jewel” and
“jewelry,” are different words with different meanings. In
support of his position, applicant included a definition of
“jewel” from Webster’s College Dictionary. The word is
defined therein as “a fashioned ornament for personal
adornment, esp. of a precious metal set with gems.”
The Examining Attorney accepted the amended
identification-of-goods clause, but made the refusal to
register “GIOIA” on the Supplemental Register final with
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his third Office Action. Submitted with this Action were
copies of excerpts from published articles the Examining
Attorney had retrieved in a search of the Nexis automated
database of publications. He argued that these excerpts
demonstrate that ornamental pins are considered to be
jewels.1
Applicant timely filed a Notice of Appeal, along with
an appeal brief. The Examining Attorney also filed a
brief, and applicant filed a reply brief. Applicant did
not request an oral hearing before the Board.
A generic term is unregistrable on the Supplemental
Register because it is incapable of identifying and
distinguishing the goods which it names. Section 23 of the
Act. The test for determining whether a term is generic,
and therefore unregistrable on the Supplemental Register,
has two parts. First, we must determine what the genus or
class of goods is. The second part of the test is
determining if the term sought to be registered is
understood by the relevant purchasing public primarily to
refer to that genus of goods. In re The Society of
Reproductive Medicine, 188 F.3d 1341, 51 USPQ2d 1832 (Fed.

1The articles do not provide clear evidence of the Examining
Attorney’s position, and we do not rely on them in reaching our
decision herein. For example, one shows that pins can contain
jewels, in the sense of gemstones, and another refers not to an
actual jewel, but rather, to a plant.
Ser No. 75/862,136
5
Cir. 1999); H. Marvin Ginn Corp. v. International
Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ
528 (Fed. Cir. 1986).
Another important legal principle which is critical to
our resolution of this appeal is that the foreign
equivalent of a descriptive English word is itself
considered descriptive. In re Geo. A. Hormel & Co., 277
USPQ 813 (TTAB 1985); In re Optica International, 196 USPQ
775 (TTAB 1977). Generic terms are considered to be the
ultimate in descriptiveness, BellSouth Corp. v.
DataNational Corp., 35 USPQ2d 1554 (Fed. Cir. 1995), and
the foreign equivalent of a generic term is itself generic,
and therefore is unregistrable. Weiss Noodle Co. v. Golden
Cracknel & Specialty Co., 129 USPQ 411, 290 F.2d 845 (CCPA
1961).
In the case at hand, applicant has identified his
goods as “an ornamental article of precious metal worn on
the person which attaches to the front of a garment using a
safety pin connector.” The record clearly establishes that
a jewel is an ornament of precious metal for personal
adornment. The dictionary definition submitted by
applicant himself shows that “jewel” is a generic term for
applicant’s identified goods. Moreover, Webster’s Ninth
New Collegiate Dictionary, 1985 edition (of which the Board
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may take judicial notice), defines a “jewel” as an ornament
of precious metal often set with stones or decorated with
enamel and worn as an accessory of dress.” Also, the
Italian dictionary of record clearly establishes that
“GIOIA” is the Italian equivalent of the word “jewel.”
In view of the three dictionary definitions which we
have quoted, it is clear that the relevant purchasers of
applicant’s goods would understand “jewel” to refer
primarily to the genus or class of goods which includes
precious metal ornaments worn on clothing. In other words,
the word applicant seeks to register is the foreign
equivalent of the generic term for his goods.
In In re Analog Devices, Inc., 6 USPQ2d 1808 (TTAB
1988), aff’d 10 USPQ2d 1879, 871 F.2d 1097 (Fed. Cir.
1989), “ANALOG DEVICES” was held generic for electronic
devices which have analog capabilities. The goods were a
subset of the genus named by the mark. In the instant
case, the same is true. “Jewel” names the genus.
Notwithstanding the convoluted language adopted by
applicant’s attorney to identify applicant’s goods, they
are basically “ornamental pins made of precious metal,”
which the record establishes are a subset of the genus
“jewels.” “GIOIA,” the Italian word for “jewel,” thus
names the product, but does not identify its source.
Ser No. 75/862,136
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As noted above, neither a generic term nor its foreign
equivalent is registrable on the Supplemental Register
because neither is capable of identifying applicant’s goods
and distinguishing them from similar goods produced are
sold by others. As the foreign equivalent of the generic
term for applicant’s goods, “GIOIA” is unregistrable on the
Supplemental Register.
DECISION: the refusal to register is affirmed.