Ed Labowicz

Trademark Trial and Appeal Board

Apr 10, 2012

No. 79080056 (T.T.A.B. Apr. 10, 2012)

Mailed:
April 10, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Ed Labowicz
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Serial No. 79080056
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Edward Labowicz, pro se.

Fred Carl III, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
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Before Seeherman, Ritchie and Kuczma, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Edward Labowicz, a citizen of Poland, has appealed
from the final refusal of the trademark examining attorney
to register BELUGA and design, as shown below, for “fishing
tackle.”1

1 Application Serial No. 79080056 filed March 25, 2010 pursuant
to Section 66(a) of the Trademark Act, based on an application
filed with the International Bureau on October 15, 2009.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 79080056
2

The application includes the following information:
“Beluga” word is made up of black letters with a
wide gold rim, where the gold rim from the
exterior is outlined with a thin black line.
Above the word “beluga” is a drawing depicting
the head and torso piece of fish in white, gold,
brown and black colours.

The color(s) white, gold, brown and black is/are
claimed as a feature of the mark.

Registration has been refused pursuant to Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on
the ground that applicant’s mark is merely descriptive of
his identified goods.
We must first make some clarifications regarding the
record. Applicant initially filed two copies of his appeal
brief, the first on December 15, 2010 and a second on
January 10, 2011. The argument section in both of these
copies is the same. However, the brief filed on
January 10, 2011 includes as an attachment a printout from
The Trade Marks and Designs Registration Office of the
European Union showing that applicant owns a Community
Trademark Registration for BELUGA for fishing tackle. This
Ser No. 79080056
3
printout was not included with the December 15, 2010 brief,
while the December 15 copy has an attachment showing
payment of the appeal fee and the January 10 copy does not.
Both copies include Office actions and applicant’s
response. We point out that it is not necessary to include
Office actions and responses because they are already part
of the application file.
When the application was transmitted to the examining
attorney for preparation of his appeal brief he requested
remand in order to submit evidence in response to a newly
asserted “statement of fact” that was made by applicant in
his brief. The Board granted this request, and after the
examining attorney issued an action making the new evidence
of record, applicant was given the opportunity to file a
supplemental appeal brief. Applicant filed two copies of
his supplemental appeal brief, on June 8 and June 24, 2011.
Again, the argument section in both copies is identical,
although the June 8, 2011 submission includes attachments
consisting of Wikipedia listings for “Beluga,” “Beluga
whale” and “Beluga (sturgeon).”
The examining attorney, in his brief, has asserted
that “both of applicant’s appeal briefs of January 10, 2011
and June 8, 2011 include new evidence not previously of
record,” and has objected thereto. Brief, unnumbered p. 2.
Ser No. 79080056
4
We point out such a blanket statement is not particularly
helpful, as the Board must then determine which attachments
are actually the subject of the examining attorney’s
objection. As noted, most of the attachments to
applicant’s briefs consist of Office actions and responses,
and these documents are of record. So is the Wikipedia
article that was attached to applicant’s June 8, 2011 reply
brief, as the examining attorney had submitted it as an
attachment to an Office action. Thus, the only material
that was not previously made of record are the applicant’s
Community trademark registration information and the
Wikipedia entries for “Beluga” and “Beluga whale.”2 We
agree that this material is untimely, see Trademark Rule
2.142(d), and it has not been considered. We point out,
however, that whether or not this material was considered
would have no effect on our decision herein. A decision by
another jurisdiction about the registrability of a
trademark in that jurisdiction is irrelevant to our
determination, since we must follow the law in the United
States. As for the Wikipedia listings, as acknowledged by
the examining attorney, “other materials in the record

2 The appeal fee payment information submitted with the
January 10, 2011 brief was in response to the Board’s
December 21, 2010 order stating that the appeal could not be
entertained because it was not accompanied by the statutory fee.

Ser No. 79080056
5
admit to the existence of a cetacean known as a ‘beluga
whale,’” brief, unnumbered p. 6, and we may take judicial
notice that “beluga” is defined as “1. The white whale.
2. A sturgeon, huso huso, of the Black and Caspian seas,
whose roe is used for caviar. Also called ‘beluga
sturgeon.’”3
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052(e)(1), if it forthwith
conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the
goods or services. In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 217-18 (CCPA 1978). A term need not
immediately convey an idea of each and every specific
feature of the applicant’s goods or services in order to be
considered to be merely descriptive; rather, it is
sufficient that the term describes one significant
attribute, function or property of the goods or services.
In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re
MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a term is
merely descriptive is determined not in the abstract, but

3 The American Heritage Dictionary of the English Language 1970.
The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
Ser No. 79080056
6
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 the 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 591, 593 (TTAB 1979).
It is the examining attorney’s position that
applicant’s mark BELUGA for “fishing tackle” describes a
purpose for the identified goods, namely, that the fishing
tackle can be used to catch beluga. In support of the
refusal, the examining attorney has submitted evidence that
“beluga” identifies a type of fish, e.g.:
Beluga (sturgeon)
The beluga or European sturgeon (huso huso) is a
species of anadromous fish in the sturgeon family
(Acipenseridae) of order Acipenseriformes. It is
found primarily in the Caspian and Black Sea
basins, and occasionally in the Adriatic Sea.
Heavily fished for the female’s valuable roe—
known as beluga caviar—the beluga is a huge (some
documented specimens attain nearly 6 meters (19
feet), slow-growing and late-maturing fish that
can live for 118 years. The species’ numbers
have been greatly reduced by overfishing and
poaching, prompting many governments to enact
restrictions on its trade. …
www.wikipedia.com

We agree that consumers viewing the mark in connection
with fishing tackle would immediately understand that the
Ser No. 79080056
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tackle is used to fish for beluga, and therefore the mark
directly describes a purpose of the goods.
Applicant argues that “the average buyer will not
think that it is possible to go fishing for BELUGA, a large
sea fish as he imagines it to be, with an ordinary,
commonly available fishing tackle.” Supplemental brief,
p. 2. To the extent that applicant is referring to the
fact that the term “beluga” is also used in connection with
a “beluga whale,” it would be clear to consumers that the
word “beluga” in applicant’s mark refers to the sturgeon
fish, as the picture of the fish is part of the mark.4 To
the extent that applicant is arguing that, because beluga
are large sea fish, and that therefore fishing tackle is
not used to fish for them, the examining attorney has shown
that this is not correct. See evidence attached to April
25, 2011 Office action, showing accounts of sports fishing
for beluga using rods and reels,5 as well as other articles
which refer to using fishing tackle in fishing for
similarly large sea fish such as marlin.

4 The examining attorney has made of record several pictures of
the beluga fish that clearly are the same as the design
represented in the mark.
5 www.jjphoto.dk/jj_fishing/articles/kazakhstan_sturgeon_uk.htm,
also published in The Steelheader Salmon & Trout News,
www.steelheadermag.com.

Ser No. 79080056
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Applicant also appears to argue that potential buyers
will not assume that the fishing tackle will be designed
solely for catching beluga. However, it does not matter if
the fishing tackle can be used to catch other fish; if the
mark describes one type of fish that may be caught with the
tackle, then the mark is descriptive of a purpose of the
tackle.
We have considered all of applicant’s arguments,
including those not specifically discussed in this opinion,
but are not persuaded thereby. In view of the evidence
submitted by the examining attorney, we find that BELUGA
will be understood as immediately and directly describing a
purpose of the identified “fishing tackle,” and that the
mark is merely descriptive of the goods.
Decision: The refusal of registration is affirmed.