Encompass Group, LLC

Trademark Trial and Appeal Board

Apr 20, 2006

No. 76311395 (T.T.A.B. Apr. 20, 2006)

Mailed: April 20, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Encompass Group, LLC1
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Serial No. 76311395
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Robert B. Kennedy of Baker, Donelson, Bearman & Caldwell for
Encompass Group, LLC.

Kathleen M. Vanston, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
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Before Quinn, Walters and Kuhlke, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

Encompass Group, LLC has filed an application to
register on the Principal Register the mark SILK EASE, in
standard character form, for “health care apparel worn by
professional medical personnel, namely, scrub suits and
examination gowns,” in International Class 10.2 The

1 The assignment records of the USPTO show that this application has
been assigned to Wachovia Bank.

2 Serial No. 76311395, filed September 10, 2001, based on an allegation
of a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 76311395
2
application includes a disclaimer of SILK apart from the
mark as a whole.
The examining attorney has issued a final refusal to
register, under Section 2(e)(1) of the Trademark Act, 15
U.S.C. 1052(e)(1), on the ground that applicant’s mark is
deceptively misdescriptive in connection with its goods, and
under Section 2(a) of the Trademark Act, 15 U.S.C. 1052(a),
on the ground that applicant’s mark is deceptive.
Applicant has appealed. Both applicant and the
examining attorney have filed briefs.
The refusals are based on the examining attorney’s
allegation, not disputed by applicant, that the goods to be
identified by the mark will not contain silk. The examining
attorney states that silk is a fabric and that silk and silk
blends are often used in the production of clothing in
general and scrubs in particular. She contends that the
mark SILK EASE, if used in connection with the identified
goods, will convey the impression that the goods are made of
silk, not that the goods merely have a “silky” feel. The
examining attorney argues that because applicant’s goods do
not contain silk fibers, SILK EASE misdescribes the
identified garments, noting that washable silk is a
relatively new product that is desirable in clothing,
particularly casual clothing, because of its ease of care
and comfort; that the strength, comfort and durability of
Serial No. 76311395
3
garments made of silk blends would make those blends
suitable for a hospital environment; that consumers,
including consumers purchasing health care apparel, are
likely to believe that SILK EASE scrub suits and examination
gowns made of a soft fabric actually contain silk; and that,
in view thereof, whether the identified goods contain silk
is likely to materially affect the decision to purchase
these types of goods.
In support of her position, the examining attorney
submitted a definition of “silk” from The American Heritage
Dictionary of the English Language, 4th ed. 2000
(www.dictionary.com)3; excerpts of Internet websites;
excerpts of articles retrieved from the LEXIS NEXIS
database; and copies of third-party registrations wherein
the marks contain the term “silk,” the identified goods are
made in whole or part of silk, and the term “silk” is
disclaimed.
The examining attorney alleges that the prior case of
In re Shapely, Inc., 231 USPQ 72 (TTAB 1986) (SILKEASE found
to be deceptive in connection with women’s clothing, namely,
women’s blouses and ladies dresses made of polyester crepe
de chine) is analogous to the case before us. She also

3 “n. 1. a. A fine lustrous fiber composed mainly of fibroin and
produced by certain insect larvae to form cocoons, especially the
strong, elastic, fibrous secretion of silkworms used to make thread and
fabric. b. thread or fabric made from this fiber. c. a garment made
from this fabric. … adj. Composed of or similar to the fiber or the
fabric silk.”
Serial No. 76311395
4
references In re Phillips-VanHeusen Corp., 63 USPQ2d 1047
(TTAB 2002), wherein the Board found SUPER SILK to be
deceptive in connection with shirts made of a silk-like
fabric, but not containing silk as a component.
The excerpted Internet websites include the home page
for Jasco Uniform Co. (www.jascouniform.com) with a box
containing links to descriptions of their various types of
scrubs, including “Soft and Cheap Scrubs,” “Denim Scrubs,”
and “Silk and TieDye Scrubs.” The latter links to a page
that includes the heading “Soft as Silk Scrubs,” with the
following description: “Feels like silk with a no care silk-
like fabric. It’s like wearing pajamas. Available in 5
prints & colors.” One of the Internet websites,
www.nursesdirect.com, advertised applicant’s garments with
the following description:
SCRUB JACKET offers the perfect combination of
style and silky soft comfort. Microfiber
polyester.
SILK EASE™ SCRUB SEPARATES These microfiber
polyester scrubs are oh-so-soft and comfortable. …

The examining attorney contends that scrub suits and
examination gowns may, in fact, be made of silk. One of the
Internet websites, www.scrubsgallery.com, includes the
following item for sale:
Annika
Cherokee Nursing uniforms & scrubs: Styles: NEW
MICA SILK #2700 XS – 3X & 350E XS – 3X. …

Serial No. 76311395
5
An excerpt from the Daily News Record (August 14, 1998),
retrieved from the LEXIS NEXIS database includes the
following statement:
Pieces range from woven and knit separates to
robes, boxers and even kimonos and gid (short
kimonos). Shown here are the silk/cotton blend
scrub shirt and drawstring pant.

The Internet evidence also includes the results of a
Google search of “silk clothing” listing numerous sites
advertising silk clothing; the results of a Google search
for “silky feel” listing numerous sites using the phrase to
describe various goods including clothing, hosiery, pet
collars, bedding and skin care products; and the results of
a Google search for “silky scrubs” listing a few websites
advertising various brands of scrubs, including the brand
“Silky Scrubs.”
Also from the Internet, the examining attorney
submitted excerpts of websites indicating that silk fibers
may be blended with other fibers, such as cotton or wool, to
create blended fabrics.
Articles made of record from the LEXIS NEXIS database
demonstrate the wide variety of uses for silk fabric and
fibers, from clothing to medical and industrial uses, and
reference the characteristics and popularity of washable
silk fabric. Silk is described as a fiber that is extremely
strong and resilient, with insulating properties.
Serial No. 76311395
6
Applicant contends that the term “silk” in its mark is
suggestive of a quality of its scrub suits and examination
gowns, quoting a definition of “silky” from Random House
Dictionary as “of or like silk; smooth, lustrous, soft, or
delicate: silky skin”; that the second term in the mark,
“ease,” reinforces the suggestive connotation of “silk” as
“soft”; and that the professional and institutional buyers
of applicant’s goods would not view the mark as connoting
the material from which the goods are made because silk is
not suitable for use on clothing required in the medical
environment.
Applicant contends that its mark is suggestive of a
trait of its goods, namely, that the scrub suits and
examination gowns have a “silky” feel; that the
pronunciation of its mark, SILK EASE, with the long “e”
sound immediately following the “k” in “silk,” leads the
speaker to hear the term “silky”, supporting this
connotation of “silk” in applicant’s mark as the feel of the
fabric; that the addition of the term “ease” to the term
“silk” in its mark “guide[s] the meaning or connotation of
the mark to that of ‘silky’ for it suggests a smooth, soft
or delicate feel” (brief, p. 2).4

4 Applicant mentions Registration No. 2028553 for the mark SILKEASE,
purportedly for washing compound, arguing that it clearly suggests a
silky feel. Applicant did not submit a copy of this registration and,
thus, it is of limited value. Moreover, applicant’s statements
regarding the connotation of the registered mark are mere speculation.

Serial No. 76311395
7
Applicant seeks to distinguish the Board’s decision in
In re Shapely, Inc., supra, on the ground that the
identified goods therein, women’s blouses and dresses made
of polyester crepe de chine, are goods that are commonly
made of silk, whereas, its scrub suits and examination gowns
are not the type of goods that would be made of silk; and,
unlike the case now before us, the mark in Shapely was in a
design format and the Board noted the dominance of the term
“silk” in that design.
We begin by considering whether the proposed mark, SILK
EASE, is deceptively misdescriptive in connection with the
identified goods, “health care apparel worn by professional
medical personnel, namely, scrub suits and examination
gowns.” The inquiry is twofold. First, we must determine
whether the proposed mark misdescribes a characteristic,
quality, function, composition or use of the goods. If so,
we must determine whether prospective purchasers are likely
to believe that the misdescription actually describes the
goods. The burden is on the Examining Attorney to submit
sufficient evidence to establish that the term sought to be
registered falls within the proscription of the statute. In
re Berman Bros. Harlem Furniture Inc., 26 USPQ2d 1514 (TTAB
1993) citing In re Budge Manufacturing Co., Inc., 857 F.2d
773, 8 USPQ2d 1259 (Fed. Cir. 1988). In other words, to
consider whether the mark is deceptively misdescriptive
Serial No. 76311395
8
under Section 2(e)(1), we consider the first two factors in
the three-part test, noted below, for determining whether a
mark is deceptive under Section 2(a) enunciated by the Court
of Appeals for the Federal Circuit in In re Budge
Manufacturing Co., Inc., 857 F.2d 773, 8 USPQ2d 1259, 1260
(1988):
1. Is the term misdescriptive of the character,
quality, function, composition or use of the
goods?
2. If so, are prospective purchasers likely to
believe that the misdescription actually
describes the goods?
3. If so, is the misdescription likely to affect
the decision to purchase?

See also, In re Woolrich Woolen Mills, Inc., 13 USPQ2d 1235
(TTAB 1989).
Does the mark misdescribe the goods?
The evidence establishes that clothing is often made of
silk or silk blend fabrics, that at least some scrubs are
made of fabric containing silk, and that the identified
scrubs and gowns are not made of silk.
Other than argument and dictionary definitions, supra,
applicant has provided little basis for us to conclude that
“silk” in SILK EASE connotes the feel of a fabric, rather
than the fiber itself. The term used is “silk” not “silky”;
and it is the term “silky” that would be likely to connote
the feel of the fabric. We are not persuaded that
purchasers would perceive of the term “silk” in the mark as
“silky” because of the long “e” at the beginning of the word
Serial No. 76311395
9
“ease” that follows. The additional word “ease” in the mark
does not detract from the meaning of silk as a fabric when
considering the mark as a whole. We take judicial notice of
the definition of “ease” as, in relevant part, “a state of
comfort”5 and, thus, conclude that “ease” would be likely to
be perceived in the mark as suggesting comfort rather than
the feel of the fabric. Therefore, we conclude that the
mark misdescribes the goods because it connotes comfortable
scrubs and examination gowns made of silk.
Are consumers likely to believe the misrepresentation?
The mark must misdescribe the goods in such a manner
that consumers would be likely to believe the
misrepresentation. In re Quady Winery, Inc., 221 USPQ 1213,
12 14 (TTAB 1984).
The evidence clearly establishes that consumers are
used to seeing all types of clothing made of silk and silk
blends and that silk blends and washable silks are strong,
washable and comfortable. There are two website excerpts in
the record indicating that there are scrubs on the market
made of silk or silk blends, as well as scrubs made of
silky-feeling fabrics. Further, there is no evidence that
scrubs worn by medical personnel and examination gowns are
not or should not be made of silk or silk blends. There is
also evidence, as noted supra, that fabrics containing silk

5 Webster’s II New Riverside University Dictionary, 1984.
Serial No. 76311395
10
are both comfortable and durable and that these are
desirable qualities in, at least, scrubs. It is reasonable
to assume that buyers of scrubs for medical personnel and
examination gowns would encompass a wide range of types of
buyers, including small medical practices and large
institutions, as well as individual medical technicians,
nurses and doctors. Thus, the sophistication of such
purchasers is likely to vary widely. We find that this
class of reasonably prudent buyers is likely to believe that
scrubs and examination gowns identified by the mark SILK
EASE are made of fabric that includes silk.
Having met the first two prongs of the Budge test, we
conclude that the mark SILK EASE is deceptively
misdescriptive in connection with the identified goods.6 We
now turn to the question of whether the mark is also
deceptive.
Will the misrepresentation materially affect
the decision to purchase?

As noted above, it is reasonable to assume that comfort
is a desirable characteristic of the identified goods.
Further, several of the excerpts in the record tout the

6 We note that even if the nature of the goods is revealed by matter on
labels on the goods themselves, this does not preclude a determination
that a mark is deceptively misdescriptive. See Tanners' Council of
America, Inc. v. Samsonite Corporation, 204 USPQ 150 (TTAB 1979) ("We
are not persuaded, therefore, that the labels identifying the material
as 'urethane vinyl' dispel the impression that respondent's goods are
made of leather."), citing R. Neumann & Co. v. Overseas Shipments,
Inc., 326 F.2d 786, 140 USPQ 276 (CCPA 1964). Thus, applicant's
argument is not well taken.
Serial No. 76311395
11
comfort and feel of the scrubs being advertised. This
evidence is sufficient to establish that the qualities of
silk fibers in fabrics used in scrubs and examination gowns
would be attractive to prospective purchasers and would
materially affect the purchasing decision. Thus, we
conclude that the mark SILK EASE is deceptive in connection
with the identified goods.
We note that, while we have reached the same conclusion
of deceptiveness herein as we did in Shapely, supra, our
decision in this case is based on a different set of facts.
Materiality was found in Shapely based on the prominence of
the term SILK in the composite design mark and advertising
copy promising "the look and feel of the finest silks" on
the garment hangtag, which was the specimen of record and
only evidence in the file.
Decision: The refusal under Section 2(e)(1) of the Act
is affirmed. The refusal under Section 2(a) of the Act is
affirmed.