Erik M. Pelton & Associates, PLLC

Trademark Trial and Appeal Board

Apr 29, 2015

No. 85817818 (T.T.A.B. Apr. 29, 2015)

This Opinion is Not a
Precedent of the TTAB

Oral Hearing:
March 12, 2015
Mailed:
April 29, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Erik M. Pelton & Associates, PLLC
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Serial No. 85817818
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Erik M. Pelton of Erik M. Pelton & Associates, PLLC,
for Erik M. Pelton & Associates, PLLC.
Jason Paul Blair, Trademark Examining Attorney, Law Office 104,
Chris Doninger, Managing Attorney.
_____

Before Zervas, Kuhlke and Mermelstein,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Erik M. Pelton & Associates, PLLC (“Applicant”) seeks registration on the
Principal Register of the proposed mark TUESDAY TRADEMARK TIP (in standard
characters) for “Providing online newsletters in the field of brands, trademarks, and
trademark law via e-mail” in International Class 41.1

1 Application Serial No. 85817818 was filed on January 8, 2013, pursuant to Section 1(a) of
the Trademark Act, 35 U.S.C. § 1051(a), claiming first use on January 7, 2013 and first use
in commerce on January 8, 2013.
Serial No. 85817818
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The 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, when used
in connection with Applicant’s services, TUESDAY TRADEMARK TIP would be
merely descriptive of such services because Applicant “provide[s] advice on
trademarks on the third day of the week ….”2 After the refusal was made final,
Applicant requested reconsideration and filed an appeal. The Examining Attorney
denied the request for reconsideration, the Board resumed the appeal, Applicant
and the Examining Attorney filed briefs, and the Board conducted an oral hearing
on March 12, 2015.
A term is deemed to be merely descriptive of goods or services, within the
meaning of Section 2(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 Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and In re
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (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 merely descriptive; it is enough 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); and In re MBAssociates,
180 USPQ 338 (TTAB 1973). It is well-established that the determination of mere
descriptiveness must be made not in the abstract, but in relation to the goods or
services for which registration is sought. In re Abcor, 200 USPQ at 218;

2 Examining Attorney’s Brief at unnumbered p. 6.
Serial No. 85817818
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The Examining Attorney, relying on dictionary definitions for each of the terms
in the Applicant’s proposed mark, finds the combination of terms merely descriptive
of Applicant’s identified services.
Applicant, of course, disputes the Examining Attorney’s findings. While
Applicant does not dispute that it provides a tip on the subject of trademarks on
Tuesdays, Applicant argues that its proposed mark is unitary and hence not merely
descriptive because it “employs a unique alliterative and trochaic sound pattern
that creates a distinctive commercial impression beyond that of its individual
elements ….”3 Applicant explains, “[a]s a result of this rhythmic effect, Applicant’s
TUESDAY TRADEMARK TIP mark would not be perceived by consumers as
merely descriptive, but instead as a distinctive unitary whole with an aurally
pleasing meter and rhythmic significance above and beyond the dictionary
definitions of the individual words that comprise Applicant’s mark.”4 Applicant
relies on In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983), where the Board held
that no disclaimer of the term LIGHT was required in the mark LIGHT N’ LIVELY
for low calorie mayonnaise because the phrase as a whole has “an alliterative lilting
cadence which encourages persons encountering it to perceive it as a whole.” Id.
Alliteration, in and of itself, does not render a mark unitary. In In re Lean Line,
Inc., 229 USPQ 781 (TTAB 1986), the Board considered the mark LEAN LINE in

3 Applicant's Brief at 5. “Trochee” is defined in the record as “a metrical foot used in formal
poetry consisting of a stressed syllable followed by an unstressed one”
(accessed July 23, 2013); and “trimeter” is defined in
the record as “a metre of three metrical feet per line”
(accessed July 24, 2013).
4 Applicant's Brief at 5.
Serial No. 85817818
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connection with various low-calorie food products, and the appropriateness of the
requirement for a disclaimer of “LEAN.” The Board affirmed the disclaimer
requirement, stating:
“‘LEAN LINE’ is not an expression, like “LIGHT ‘N LIVELY” or
“SUGAR & SPICE” [held not merely descriptive of bakery products in
In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968)],
which has any known use or application apart from the goods in
question. … [T]here is nothing in the record to suggest that the mere
fact that both words which form the mark begin with the letter ‘L’
would cause purchasers to miss the merely descriptive significance of
the term ‘LEAN’ or consider the entire mark to be a unitary
expression.”

Id. at 782.5
As noted, Applicant has analyzed the rhythm or cadence of its designation and
found that it fits within what it labels as a catalectic trochaic trimeter. It is unlikely
that typical purchasers of Applicant’s services would undertake the same analysis
and realize that TUESDAY TRADEMARK TIP is a catalectic trochaic trimeter. And
even if some purchasers did recognize the particular rhythm of applicant’s proposed
mark, it is highly doubtful that they would on that basis consider an otherwise
descriptive mark to be distinctive. The fact that the metre of applicant’s proposed
mark can be categorized with a Latinate term is beside the point.
In addition, in Dena Corporation v. Belvedere International, Inc., 950 F.2d 1555;
21 USPQ2d 1047, 1052 (Fed. Cir. 1991), the Court of Appeals for the Federal Circuit
considered the characteristics of a unitary term. The court stated:
A unitary mark has certain observable characteristics. Specifically,
its elements are inseparable. In a unitary mark, these observable

5 Bracketed material in original.
Serial No. 85817818
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characteristics must combine to show that the mark has a distinct
meaning of its own independent of the meaning of its constituent
elements. In other words, a unitary mark must create a single and
distinct commercial impression. This test for unitariness requires the
Board to determine “how the average purchaser would encounter the
mark under normal marketing of such goods and also … what the
reaction of the average purchaser would be to this display of the
mark.” Magic Muffler, 184 USPQ at 126.

Thus, even if there is a rhythm or cadence in TUESDAY TRADEMARK TIP we
are not persuaded that the average purchaser would consider them to create “a
single and distinct commercial impression.” The initial syllables of the terms differ,
the component words do not have the same number of syllables and the terms
terminate with different sounds. Moreover, any cadence or rhythm in the
designation is not particularly noticeable in view of the brevity of the three-term
mark, and certainly not comparable to the “lilting cadence” of LIGHT ‘N LIVELY or
even of “Peter, Peter, Pumpkin Eater,” referred to by Applicant at p. 6 of its Brief.
Applicant also argues that its designation creates a “triple entendre capable of
multiple meanings, all of which are readily apparent and at least one of which is
non-descriptive as applied to Applicant’s services.”6 Applicant explains:
The Examining Attorney correctly cites one definition of the word
“tip,” namely “a piece of advice or expert or authoritative information.”
However, the word “tip” is also defined as “to raise and tilt forward in
salute” (i.e. “I tip my hat to you”) and “the usually pointed end of
something.” As explained below, both of these alternative definitions
are readily apparent from Applicant’s mark, but are non-descriptive.

Applicant is a trademark law practice that has advised clients on
trademark matters for more than ten years. It is thus in the nature of
Applicant’s business to act as an authoritative source of trademark-
related information and to stress the utility of trademark law. Indeed,

6 Applicant's Brief at 8.
Serial No. 85817818
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Applicant focuses the bulk of its marketing activities on stressing such
things. Therefore, in providing a small bit of trademark-related advice
to clients every Tuesday, Applicant not only publishes a “hint,” but also
stresses how important it is for clients to be constantly engaged with
the subject of trademarks (i.e. “tips” its hat to trademarks) and
emphasizes that each such hint is the “tip” of the large and complex
“iceberg” that comprises trademark law. Thus, Applicant’s TUESDAY
TRADEMARK TIP mark implicates each of these definitions every
time Applicant issues out a trademark “tip” on Tuesdays.7

Marks with more than one connotation or significance as applied to particular
goods are not necessarily merely descriptive of such goods. In re National Tea Co.,
144 USPQ 286 (TTAB 1965) (finding double entendre for NO BONES ABOUT IT for
goods including meat). But by the same token, a mark is not necessarily distinctive
merely because it has (or words comprising it have) more than one sense or
meaning. As is usually the case, the context in which a word or phrase is used is
critical. Towne v. Eisner, 245 U.S. 418, 425 (1918) (“A word is not a crystal,
transparent and unchanging, it is the skin of a living thought and may vary greatly
in colour and content according to the circumstances and time in which it is used.”).
Two of the definitions of “tip” proffered by Applicant in this case are not likely to be
considered by consumers of Applicant’s services when used to identify Applicant’s
trademark and branding newsletters. “Tip of the iceberg that comprises trademark
law” and “tipping a hat” are unlikely to come to mind when the definition, “a piece
of advice or expert or authoritative information,” is readily determined by the other
terms in the designation.

7 Applicant's Brief at 8-9 (citations to record omitted.).
Serial No. 85817818
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In addition, Applicant’s use of “tip” as demonstrated in its specimen of use filed
with its application belies Applicant’s point. Applicant designates “Tip #1” as,
“Stand Out. When using your brand names, put them in bold, or
italics, or a different color. This will not only enhance your trademark
protection but it will demonstrate to consumers that the name is
[i]mportant a[n]d special.”

The “tip” is also followed with the invitation “for more trademark tips and news see
my blog at www.IPelton.com.” The two alternative meanings offered by Applicant
do not come to mind when invited to view “more trademark tips and news.” Only
one meaning of “tip” (“a piece of advice or authoritative information”), which is a
merely descriptive meaning, attaches to Applicant’s designation.
In sum, TUESDAY TRADEMARK TIP retains the ordinary meaning of the three
merely descriptive individual terms which make up the designation describing the
services as a tip given on Tuesdays on the subject of trademarks.8 By doing so,
Applicant’s designation does not have a single and distinct commercial impression
independent from the individual terms in the designation. The Examining
Attorney’s refusal to register Applicant’s designation under Section 2(e)(1) is
therefore affirmed.
Decision: The refusal to register Applicant’s proposed mark under Section
2(e)(1) of the Trademark Act is affirmed.

8 The definitions in the record reflect the ordinary meaning of the individual terms in
Applicant’s designation.