Farouk Systems

Trademark Trial and Appeal Board

Jun 19, 2008

No. 78646723 (T.T.A.B. Jun. 19, 2008)

Mailed: June 19, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Farouk Systems, Inc.
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Serial No. 78646723
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Ben D. Tobor of Greenberg Traurig, LLP for Farouk Systems,
Inc.

Steven Fine, Trademark Examining Attorney, Law Office 110
(Chris A. F. Pedersen, Managing Attorney).
_______

Before Drost, Kuhlke and Cataldo, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Farouk Systems, Inc., applicant, seeks registration on
the Principal Register of the mark BIOSILK (in standard
character form) for goods ultimately identified as
“clothing, namely, women’s blouses, sweaters, dresses,
pants, jackets, and accessories; and men’s clothing,
namely, shirts, pants, jackets, and accessories” in
International Class 25.1

1 Application Serial No. 78646723, filed June 8, 2005, alleging a
bona fide intention to use the mark in commerce under Section
1(b) of the Trademark Act, 15 U.S.C. §1051(b).

THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 78646723
2
Registration has been refused under Section 2(a) of
the Trademark Act, 15 U.S.C. §1052(a), on the ground that
applicant’s mark is deceptive. In addition, the examining
attorney also refused registration on the basis of a
requirement that applicant amend its identification of
goods to indicate, if accurate, that the clothing is made
of silk.
When the refusals were made final, applicant appealed
and briefs have been filed.2
As a preliminary matter, we note that the examining
attorney does not address the requirement to amend the
identification of goods other than to state that the
requirement was made final and in connection with the
refusal under Section 2(a) the examining attorney asserts
that “since the applicant has declined to limit its
clothing to clothing made of silk, the examining attorney
must assume that at least some of the clothing will not be
made of silk.” Br. p. 3. Accordingly, we consider the
requirement to amend the identification of goods no longer
in issue and only consider the refusal under Section 2(a).

2 The exhibits attached to applicant’s reply brief are untimely
and have not been considered. Trademark Rule 2.142(d). While
the Board may take judicial notice of dictionary definitions, the
Board may not take judicial notice of excerpts from online
sources unless they have a printed equivalent. In re
CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002).
Serial No. 78646723
3
Deceptiveness
The test for determining whether a mark is deceptive
under Section 2(a) has been stated by the Court of Appeals
for the Federal Circuit as: 1) is the term misdescriptive
of the character, quality, function, composition or use of
the goods; 2) are prospective purchasers likely to believe
that the misdescription actually describes the goods; and
3) is the misdescription likely to affect the decision to
purchase. In re Budge Manufacturing Co., Inc., 857 F.2d
773, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988) (LOVEE LAMB held
deceptive for seat covers not made of lambskin). See also
In re Phillips-Van Heusen Corp., 63 USPQ2d 1047 (TTAB 2002)
(SUPER SILK held deceptive for clothing made of silk-like
fabric) and In re Shapely, Inc., 231 USPQ 72 (TTAB 1986)
(SILKEASE held deceptive as applied to clothing not made of
silk).
As the examining attorney notes, absent a
clarification in the identification of goods we must
presume that the goods include items not consisting of
silk. Indeed, applicant has stated that it “simply does
not know of what materials its clothing line will be made
of.” Br. p. 3.
In traversing the refusal, applicant argues that the
term BIOSILK is not misdescriptive of the goods because it
Serial No. 78646723
4
is “a single integrated term, or mark” and it does not
begin with the term SILK. Br. p. 3. Further, applicant
asserts that there is no definition for BIOSILK. See The
Webster’s New World Collegiate Dictionary (3rd ed. 1996) and
online dictionary excerpts attached to Applicant’s February
25, 2007 response. Rather, applicant argues that the
meaning to prospective purchasers would be “a very famous
coined mark that has had tremendous commercial success and
recognition throughout the world” and applicant’s “use in
connection with clothing would be recognized as an
expansion of a very well-known trademark to another product
line.” Br. p. 4. In support of this contention, applicant
submitted a summary of results from the Google search
engine based on a search of the word BIOSILK, wherein
several of the “hits” relate to applicant’s cosmetic goods.3
In support of his contention that BIOSILK is
misdescriptive of the goods, the examining attorney states
that “the mark is a combination of the prefix BIO- and the
word SILK. It would be so perceived by prospective
purchasers, who would therefore be led to believe that the

3 With regard to the third party registration referenced by
applicant in its brief, we first note that the registration is
not of record and, as such, is of no probative value. We further
add that it is well established that each case must stand on its
own and prior decisions by examining attorneys are not binding on
the Board. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001).
Serial No. 78646723
5
clothing items are made of or contain silk.” Br. p. 3.
The examining attorney also argues that the addition of the
prefix BIO does not “provide a basis for believing that the
goods are in fact not made of real silk.” Br. p. 3. The
prefix BIO is defined as “life; living organisms or
tissue.” Merriam-Webster’s Collegiate Dictionary (10th ed.
1999).4 The term SILK is defined as “a lustrous tough
elastic fiber produced by silkworms and used for textiles.”
Id.5 Thus, the examining attorney argues that “one would
expect a prefix connoting life and living things to be used
in association with natural fibers rather than synthetic
ones.” Br. p. 4.
We find that the term BIOSILK when used on clothing
would connote the natural fiber silk and, thus, would
misdescribe clothing not made of silk. With regard to
applicant’s argument centered on the alleged renown of the
word BIOSILK with applicant’s cosmetic products, as the
examining attorney stated “[w]hile consumers of hair care
products may associate BIOSILK clothing with the source of

4 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983). The examining attorney requested judicial
notice of another definition, but the dictionary excerpt was not
attached to the brief, therefore, the Board provides its own
reference.

5 University of Notre Dame du Lac, supra.
Serial No. 78646723
6
hair care or other products, many others who seek to
purchase clothing would either not recognize the name or
not think to associate the source of such clothing with the
source of items other than clothing.”6 Br. pp. 5-6.
With regard to the next inquiry, whether consumers
would believe the misrepresentation, silk is a common
material for clothing and consumers would certainly believe
that applicant’s clothing is made from silk.
We now consider whether the misdescription is likely
to affect the decision to purchase. The examining attorney
submitted printouts from several websites to show that silk
is a desirable material for applicant’s goods. See “A 2 Z
of Health, Beauty and Fitness,” health.learninginfo.org
(“Silk is the most luxurious of the natural fibers...Silk
has a low density and is therefore much lighter than wool,
cotton, linen or rayon. Silk is used in dresses, skirts,
blouses, jackets, accessories and underwear.”); and
“Properties and Characteristics of Silk,” articlesender.com
(“Cultivated silk ... has a number of interesting and
desirable properties that have been admired for over 5,000
years ... Silk clothing keeps one cool in the summer, and

6 We further note that the search summaries provided by applicant
are not sufficient to establish that its mark is well known for
cosmetics. Cf. In re Fitch IBCA, Inc., 64 USPQ2d 1058, 1060
(TTAB 2002).

Serial No. 78646723
7
it provides surprising warmth in the winter ... For all
these reasons silk has been desired for centuries.”) Based
on the evidence of record, we find that the misdescription
would effect the decision to purchase.
Finally, we are not persuaded that this case presents
the possible exception noted in In re Shapely, Inc., supra,
wherein a term containing “silk for wearing apparel” may be
registrable. The example given in Shapely is the adjective
“silken” which has the “common connotation of something
resembling silk rather than necessarily meaning silk
content.” Shapely, supra at 75. Here, the term contains
the noun SILK modified by the prefix BIO which to the
extent it adds meaning could serve to underscore it as a
natural fiber.
In summary, the examining attorney has made a prima
facia showing that the term BIOSILK is misdescriptive of
applicant’s clothing not made of silk, that potential
purchasers would believe this misdescription, and that the
presence or absence of silk would materially affect the
purchasing decision, which has not been rebutted by
applicant. Thus, we conclude that the mark BIOSILK is
deceptive in connection with the identified goods.
Decision: The refusal to register under Section
2(a) of the Trademark Act is affirmed.