Fáilte Ireland

Trademark Trial and Appeal Board

Feb 14, 2017

No. 86975779 (T.T.A.B. Feb. 14, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: February 14, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Fáilte Ireland
_____

Serial No. 86975779
_____

Colin O’Brian of Partridge Partners PC,
for Fáilte Ireland.
Don Johnson, Trademark Examining Attorney, Law Office 104,
Danya Browne, Managing Attorney.
_____

Before Quinn, Cataldo and Ritchie,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
Fáilte Ireland (“Applicant”) seeks registration on the Principal Register of
DUBLIN PASS (in standard characters) as a mark for
Advertising services; television and radio advertising;
public relations; promoting the goods and services of
others through the distribution of discount cards in
International Class 35; and
Information services for entertainment, recreation and
education in International Class 41.1

1 Application Serial No. 86975779 was filed on November 7, 2013, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
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The Trademark Examining Attorney has 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 the proposed mark merely describes a characteristic or feature of the
recited services.2
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board.3 We affirm the refusal to register.
Mere Descriptiveness
The test for determining whether a mark is merely descriptive is whether it
immediately conveys information concerning a significant quality, characteristic,
function, ingredient, attribute or feature of the product or service in connection with
which it is used, or intended to be used. In re Chamber of Commerce of the U.S., 675
F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). See also In re Oppedahl &
Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (quoting Estate

Trademark Act and a claim of priority under Section 44(d) of the Trademark Act. Applicant
subsequently amended the filing basis to assert ownership of European Office for
Harmonization in the Internal Market (OHIM) Registration No. 012284964, issued on
November 11, 2014, under Section 44(e) of the Trademark Act, and deleted Section 1(b) as a
filing basis.
Applicant disclaimed “PASS” apart from the mark as shown “as to promoting the goods
and services of others through the distribution of discount cards.”
This application is the child of application Serial No. 86112932, amended to seek
registration on the Supplemental Register and issuing as Registration No. 4745301 on May
26, 2013, reciting goods in Classes 9 and 16 and services in Class 41.

2 Registration previously had been refused under Trademark Act Section 2(e)(2), 15 U.S.C.
§ 1052(e)(2), on the ground that the proposed mark is primarily merely geographically
descriptive of certain of the recited goods and services (prior to division).
3 In his January 13, 2016 final Office action, the Examining Attorney noted that Applicant
may amend the involved application to seek registration on the Supplemental Register.
However, Applicant did not request such an amendment, and registrability on the
Supplemental Register of DUBLIN PASS in connection with the services recited herein is
not before us.
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of P.D. Beckwith, Inc. v. Commissioner, 252 U.S. 538, 543 (1920) (“A mark is merely
descriptive if it ‘consist[s] merely of words descriptive of the qualities, ingredients or
characteristics of’ the goods or services related to the mark.”)). See also In re
TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015). The
determination of whether a mark is merely descriptive must be made “in relation to
the goods [or services] for which registration is sought, the context in which it is
being used, and the possible significance that the term would have to the average
purchaser of the goods because of the manner of its use or intended use.” In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (citing In
re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978)). It is not
necessary, in order to find a mark merely descriptive, that the mark describe each
feature of the goods or services, only that it describe a single, significant ingredient,
quality, characteristic, function, feature, purpose or use of the goods or services.
Chamber of Commerce of the U.S., 102 USPQ2d at 1219; In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987).
Where a mark consists of multiple words, the mere combination of descriptive
words does not necessarily create a nondescriptive word or phrase. In re Phoseon
Tech., Inc., 103 UPQ2d 1822, 1823 (TTAB 2012); In re Associated Theatre Clubs Co.,
9 USPQ2d 1660, 1662 (TTAB 1988). If each component retains its merely
descriptive significance in relation to the goods or services, the combination results
in a composite that is itself merely descriptive. Oppedahl & Larson LLP, 71
USPQ2d at 1371. However, a mark comprising a combination of merely descriptive
Serial No. 86975779
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components is registrable if the combination of terms creates a unitary mark with a
nondescriptive meaning, or if the composite has a bizarre or incongruous meaning
as applied to the goods or services. See generally In re Colonial Stores Inc., 394 F.2d
549, 157 USPQ 382 (CCPA 1968). See also In re Shutts, 217 USPQ 363, 364-65
(TTAB 1983).
Evidence and Argument.
The Examining Attorney contends that
Applicant’s mark is composed of the terms “Dublin,” the most populace
city in Ireland and “pass,” a ticket for admission. These terms have the
same meaning when combined and used in the context of Applicant’s
services. Specifically, the terms in the mark describe the place and
manner in which Applicant’s services are offered, namely, their
advertising, public relations, promotion and information services are
about or in relation to Dublin, and they are offered in connection with
a ticket or pass being offered by Applicant. Thus, Applicant’s mark as a
composite is descriptive of Applicant’s service.

6 TTABVUE 6.4 In support of this contention, the Examining Attorney has
introduced into the record the following encyclopedia entries for “DUBLIN:”
“city, capital of Ireland, located on the east coast in the province of Leinster.
Situated at the head of Dublin Bay of the Irish Sea, Dublin is the country’s chief
port, centre of financial and commercial power, and seat of culture.;”5
“Dublin is the capital and most populous city of Ireland;”6

4 Citations to the briefs refer to TTABVUE, the Board’s online docket system, by page
number. Citations to the examination record refer to the Trademark Office’s online
Trademark Status and Document Retrieval system (TSDR), by date and page number.
5 Brittanica.com. December 31, 2013 Office action at 10.
6 Wikipedia.org. Id. at 12. We have considered this Wikipedia evidence because it
essentially is cumulative of and is corroborated by the other evidence of record, and because
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“city in the Republic of Ireland and Dublin county, on Dublin Bay at the
mouth of the Liffey River.”7
The Examining Attorney also has introduced into the record dictionary definitions
of the term “PASS.” According to these definitions, “PASS” may be defined as –
“to go or make one’s way through;”8
“a written permission to move about freely in a place or to leave or enter it;”9
“a document that lets you go somewhere or do something is a pass. You can
have a backstage pass at a concert, a three-day pass from a military base, or a hall
pass for using the restroom during class.”10
The Examining Attorney further has introduced pages from Applicant’s Internet
website showing use of DUBLIN PASS in connection with a sightseeing card.11

it was made of record early enough to give Applicant the opportunity to challenge or rebut
it. See In re IP Carrier Consulting Group, 84 USPQ2d 1032, (TTAB 2007).
7 Columbiagazetteer.org. Id. at 52.
8 Merriam-webster.com. Id. at 47.
9 Merriam-webster.com. Id. at 50.
10 Vocabulary.com. September 2, 2015 Office action at 9.
11 December 31, 2013 Office action at 29-36.
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Applicant asserts that
the Mark creates a unique commercial impression that is not
automatically clear to the consumer. The entire Mark, “DUBLIN
PASS,” is unique to the Ireland National Tourism Development
Authority as advertising and information services in Classes 35 and
41. The Mark’s use is not common or widespread within the
information or advertising services industries nor does it have an
accepted meaning to consumers.

4 TTABVUE 8-9. In support of this contention, Applicant submitted into the record
pages from the online versions of three dictionaries showing no match for the term
“Dublin pass.”12 However, the absence of a dictionary definition of “DUBLIN PASS”
is not dispositive. Rather, it is well-settled that even if Applicant is the first and/or
the only user of the term “DUBLIN PASS” in connection with its services, it is well
settled that such does not entitle Applicant to the registration thereof if the term
has been shown to immediately convey only a merely descriptive significance in the
context of Applicant’s services. See, e.g., In re National Shooting Sports Foundation,
Inc., 219 USPQ 1018, 1020 (TTAB 1983); In re Mark A. Gould, M.D., 173 USPQ 243,
245 (TTAB 1972).
Applicant also argues that
the presence of other registered marks using a modifier and the word
“pass” as programs that promote tourism and provide discounts for
various attractions in a given area illustrates that the USPTO has
accepted similar marks before and, thus, believes such marks are not
descriptive.13

12 Oxforddictionaries.com; dictionary.cambridge.org; merriam-webster.com. Applicant’s
December 3, 2015 communication, Exhibit B at 39-41.
13 4 TTABVUE 9.
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In support of this contention, Applicant introduced into the record copies of the
following third party registrations for various PASS formative marks, all in
standard characters:14
Reg. No. 4829811, on the Principal Register under Section 2(f), for the mark
THE PARIS PASS (“PASS” disclaimed in Class 9) for
electronically encoded and bar-coded cards containing admission
tickets for various attractions (Class 9); travel guidebooks (Class 16);
administration of a program for enabling participants to obtain
discounts to enter a number of tourist attractions and use local
transportation (Class 35); travel ticket reservation services (Class 39);
ticket reservation and booking services for entertainment, sporting and
cultural events (Class 41).

Reg. No. 4829810 (owned by the same entity as Reg. No. 4289811 above), on
the Principal Register under Section 2(f), for the mark THE LONDON PASS
(“PASS” disclaimed in Class 9) for the same goods and services recited above.
Reg. No. 4484656, on the Principal Register, for the mark EXPLORER PASS
(“PASS” disclaimed) for
cards, which are not magnetically encoded, for use in business
transactions, namely, enabling admission to attractions and offering
savings on shopping, dining and travel (Class 9); promoting tourism in
various cities through pre-paid discounted admissions to and offering
discounts at various attractions and restaurants within a given city
(Class 35).

Reg. No. 4754613, on the Principal Register, for the mark CITY PASS
(“CITY” disclaimed) for
promoting tourism in various cities through pay-one-price package of
admission tickets to multiple attractions within a given city or region;
online retail store services featuring pay-one-price packages of

14 Applicant’s December 3, 2015 communication, Exhibit A at 18-37.
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admission tickets to multiple attractions within a given city or region;
advertising and marketing services for others in the field of travel and
tourism, namely, providing advertisements and promotional
information by means of a global computer network; administration of
a business affiliate program in the field of travel and tourism (Class
35);

providing information in the field of travel over a global computer
network; providing information in the field of tourism, namely,
excursions, day trips, and sightseeing travel tours, over a global
computer network; travel agency services, namely, arranging ticket
reservations for sightseeing travel tours (Class 39);

entertainment services, namely, arranging ticket reservations for
recreational and leisure events, namely, attendance at theme parks,
amusement parks, planetariums, zoos and aquarium attractions;
providing discount tickets to multiple attractions within a given city or
region by means of a global computer network; providing
entertainment information to tourists and travelers about theme
parks, amusement parks, planetariums, zoos and aquarium
attractions; providing educational information to tourists and travelers
about museums, cultural and landmark venues (Class 41).

Reg. No. 4770574, on the Supplemental Register, for the mark PUBPASS for
promotion, advertising, and marketing services for bars, pubs,
breweries, bistros, cafes, canteens, clubs, and restaurants through the
sale and distribution of passport-sized booklets entitling booklet holder
to free drinks (Class 35).

Reg. No. 4692748, on the Principal Register, for the mark BACKSTAGE
PASS for
consumer loyalty services, namely, administration of a consumer
loyalty program featuring loyalty points that provide casino, hotel,
restaurant and bar benefits to reward repeat visitors; arranging and
conducting incentive reward programs to promote the sale of casino,
hotel, restaurant and bar services (Class 35).

Reg. No. 4360982, on the Principal Register, for the mark CONCERTPASS
for
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management, organization and development of loyalty programs for
others for commercial, promotional and/or advertising purposes, the
loyalty programs featuring the use of event technologies including
online applications, computer files and databases and communications
equipment such as the Internet, mobile phones, barcodes and RFID
(Class 35);

communications services provided as part of a loyalty program,
namely, providing electronic transmission of users’ preferences and
others’ promotional and advertising information about events via the
Internet, mobile phones, barcodes and RFID (Class 38).

Reg. No. 4461834, on the Principal Register, for the mark EPIC PASS
(“PASS” disclaimed) for
ski resort services featuring a ski pass program (Class 41).

We find that the third-party registrations do not support Applicant’s position.
First, as is well established, we must make our decision in each case on its own
merits “[e]ven if some prior registrations had some characteristics similar to” the
current application, “the PTO’s allowance of such prior registrations does not bind
the Board … .” In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001). Moreover, of the eight registrations upon which Applicant relies, one is
registered on the Supplemental Register and two are registered under Section 2(f)
based on acquired distinctiveness. In addition, four of the registrations include a
disclaimer of the term “PASS” apart from the mark as shown. As a result, these
registrations show mixed treatment of the term “PASS” in the context of services
related to those recited in the involved application. Moreover, these registrations
are not conclusive on the question of the mere descriptiveness of DUBLIN PASS
inasmuch as we are not privy to the prosecution histories thereof. In re
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International Taste Inc., 53 USPQ2d 1604, 1606 (TTAB 2000) (“With respect to
third-party registrations which include disclaimers...we do not have before us any
information from the registration files as to why an Examining Attorney required
and/or why the applicant/registrant offered such disclaimers.”).
Finally, Applicant contends that “the term ‘pass’ is a word with a variety of
definitions, many of which do not aptly describe the nature of Applicant’s
services.”15 In support of this contention, Applicant introduced into the record a
definition of “PASS” showing a variety of meanings in diverse contexts.16 Applicant
notes that the “non-descriptive use of ‘PASS’ is found in many currently registered
trademarks in International Classes 35 and 41”17 and introduced into the record
copies of the following third-party registrations for marks, all on the Principal
Register in standard characters unless otherwise noted, in support thereof:
Reg. No. 4842712 for the mark PEPSI PASS for
incentive awards program to promote the sale of non-alcoholic
beverages whereby participants accumulate points from purchases and
brand engagement that can be redeemed for non-alcoholic beverages,
merchandise, discounts or cash prizes in Class 35;

Reg. No. 4781133 for the mark PASS MORE THAN JUST GAS! for
conducting medical examination preparation and review courses and
providing course material in connection therewith in Class 41;

Reg. No. 4783386 for the mark MINISTRY PASS (“MINISTRY” disclaimed)

15 4 TTABVUE 11.
16 Dictionary.com. Applicant’s December 3, 2015 communication, Exhibit C at 42-58.
17 4 TTABVUE 12.
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online subscription-based retail store services featuring downloadable
digital content primarily of a religious or spiritual nature in Class 35;

Reg. No. 4770758, on the Supplemental Register, for the mark ACCESS
UNTIL YOU PASS for
educational services, namely, conducting online courses in the field of
accounting test preparation in Class 41;

Reg. No. 4748878 for the mark UFC FIGHT PASS (“FIGHT” disclaimed) for
entertainment services, namely, provision of non-downloadable
television programs and other multimedia programs via a video-on-
demand service; entertainment services, namely, providing ongoing
non-downloadable television and multimedia programs featuring
entertainment, sports and mixed martial arts delivered by the
Internet; entertainment services, namely, a multimedia program series
featuring entertainment, sports and mixed martial arts distributed via
various platforms across multiple forms of transmission media;
entertainment services, namely, providing webcasts in the field of
entertainment, sports and mixed martial arts in Class 41;

Reg. No. 4746276 for the mark shown below (“PUB PASS” disclaimed) for
membership club services in the nature of providing discounts to
members in the field of beverages, food, and entrance fees at all
participating bars, pubs, gastropubs, taverns, clubs, and restaurants in
Class 35;

Reg. No. 4745183 for the mark POD PASS for
retail and on-line grocery store services featuring home delivery
service in Class 35;

Reg. No. 4504808 for the mark MAGIC PASS (“PASS” disclaimed) for
Entertainment services in the nature of basketball exhibitions;
entertainment services in the nature of arranging ticket reservations
for admission to pre-game shows, namely, performances provided prior
to basketball exhibitions in Class 41.
Serial No. 86975779
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However, of these eight registrations, one is issued on the Supplemental
Register and two include disclaimers of the word “PASS.” In addition, these
registrations recite services including grocery store services, beverage sales
incentive programs, exam preparation and review courses, television programming,
restaurant membership programs and basketball exhibitions that have little to do
with the services at issue in the involved application. See Nat’l Cable Television
Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1430 (Fed.
Cir. 1991) (discounting the probative value of third-party use where such uses were
unrelated to services at issue); SBS Products Inc. v. Sterling Plastic & Rubber
Products Inc., 8 USPQ2d 1147, 1149 n.6 (TTAB 1988) (“[E]ven if evidence of such
third-party use were submitted, it would be of no aid to respondent herein where
the third-party usage was for goods unrelated to either petitioner’s skin care
products or respondent’s stuffing box sealant”). Applicant’s arguments regarding
the other meanings of the word “PASS” do not take into account the perception of
the consumer as to meaning in the context of Applicant’s services, i.e., what
meaning is relevant to advertising, promotion, public relations and information
services. In re RiseSmart Inc., 104 USPQ2d 1931, 1933 (TTAB 2012); In re Chopper
Indus., 222 USPQ 258, 259 (TTAB 1984). As a result, we find these registrations are
not persuasive on the descriptiveness of the term “PASS” in relation to all of
Applicant’s recited services.

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Analysis
The record shows that the term “DUBLIN” describes the capital city of the
Republic of Ireland. Applicant does not dispute this meaning, and no other meaning
of the term is apparent. The record further shows that in connection with the
recited advertising, promotional and information services, the term “PASS” means
“a written permission to move about freely in a place or to leave or enter it”18 or “a
document that lets you go somewhere or do something.”19 The combination of these
terms describes a document providing permission to move about freely in the city of
Dublin.
The record further shows that Applicant uses its mark in connection with services
that include promoting the goods and services of others in the city of Dublin. “[N]ot
only will you have free admission to great visitor attractions but the Dublin Pass
also entitles you to 26 extra benefits, offers and discounts at various locations.”20
“Dublin has so many great places to see, and with your Dublin Pass, you can enjoy
free entry to 32 major attractions. See where to use it here.”21 The evidence of
record also shows that Applicant provides information regarding entertainment and
recreation in the city of Dublin, including travel maps, guidebooks, and “general

18 Merriam-webster.com. December 31, 2013 Office action at 50.
19 Vocabulary.com. September 2, 2015 Office action at 9.
20 December 31, 2013 Office action at 29-36.
21 Id.
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visitor information” about free and discounted attractions under the DUBLIN PASS
mark.22
The evidence excerpted above clearly indicates that Applicant uses its mark to
advertise, promote, engage in public relations and provide information relating to a
document, or pass, which allows visitors free or discounted access to various sites in
Dublin. The evidence further establishes that DUBLIN PASS merely describes a
document allowing the user to move about freely in Dublin. Applicant’s Class 35
services include “advertising services; television and radio advertising; public
relations.” These broadly identified services include providing advertising and
public relations regarding documents that allow users to freely move about the city
of Dublin. Further, Applicant’s Class 35 services include “promoting the goods and
services of others through the distribution of discount cards.” These services, as
identified, specifically relate to promoting the goods and services of others available
to users of documents permitting free movement around Dublin and thus also
describe a feature or characteristic thereof. As such, DUBLIN PASS merely
describes a feature or characteristic of the Class 35 services. Similarly, Applicant’s
Class 41 services include “information services for entertainment, recreation and
education.” These broadly identified services also include providing information
regarding documents permitting free movement around the city of Dublin for
entertainment, recreation and educational purposes. As a result, DUBLIN PASS
merely describes a feature or characteristic of the Class 41 services.

22 Id.
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We agree with Applicant that its recited services in this application are not the
tickets or permits themselves, i.e., goods, or tourism services provided under such
permits or tickets.23 Applicant’s services recited herein provide promotional and
informational services regarding its tickets or permits allowing free or discounted
travel in the city of Dublin. Nonetheless, the services in the application involved
herein are either worded broadly enough to include, or specifically indicate that
they include, advertising, promotion, public relations and information regarding a
document, or pass, that allows the user to freely move about the city of Dublin, gain
free or discounted access to visitor attractions, and even traverse the long lines at
many of these attractions.
As noted above, Applicant’s arguments regarding the other meanings of the word
PASS do not take into account the perception of the consumer as to meaning in the
context of Applicant’s identified services. In re RiseSmart Inc., 104 USPQ2d at
1933; In re Chopper Indus., 222 USPQ at 259. In our analysis of the proposed mark,
DUBLIN PASS, we must consider “the context in which it is being used, 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 or intended use.” Chamber of
Commerce of the U.S., 102 USPQ2d at 1219. Applicant’s broad identification
encompasses advertising, public relations and information services in any field.
Applicant’s promotional services specifically relate to discount cards or passes.
Applicant’s website makes clear that a significant feature of its pass is that it is

23 These goods and services are identified under Applicant’s parent application, now
Registered on the Supplemental Register as discussed above.
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used for providing access to visitor sites in Dublin. See Chamber of Commerce of the
U.S., 102 USPQ2d at 1219. See also In re Bayer Aktiengesellschaft, 82 USPQ2d at
1832 (Internet evidence may be considered for purposes of evaluating a trademark).
Where the combination of descriptive terms creates a unitary mark with a
unique, incongruous or otherwise non-descriptive meaning in relation to the goods
or services, the mark is registrable. Colonial Stores, Inc., 157 USPQ at 384.
Applicant’s use of the term DUBLIN PASS does not evoke other meanings such that
“the merely descriptive significance of the term[s] is lost in the mark as a whole.”
RiseSmart Inc., 104 USPQ2d at 1934 (quoting In re Kraft, Inc., 218 USPQ 571, 573
(TTAB 1983)). See also In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB
2002) and In re Cryomedical Sciences Inc., 32 USPQ2d 1377, 1379 (TTAB 1994). In
the context of Applicant’s advertising, public relations, promotion and information
services, the meaning of DUBLIN PASS clearly relates to documents allowing
unfettered access to sites in the city of Dublin, there is no incongruity or double
entendre.
Decision: The refusal to register Applicant’s mark DUBLIN PASS is affirmed.