Gaz Concepts Inc.

Trademark Trial and Appeal Board

Sep 20, 2018

No. 87120743 (T.T.A.B. Sep. 20, 2018)

Mailed: September 20, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
In re Gaz Concepts Inc.
_____

Serial No. 87120743
_____

John Zaccaria and Alan Federbush of Notaro Michalos & Zaccharia PC,
for Gaz Concepts Inc.
Patrick Shanahan, Trademark Examining Attorney, Law Office 116,
Christine Cooper, Managing Attorney.
_____

Before Hightower, Lynch and Pologeorgis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
Gaz Concepts Inc. (“Applicant”) seeks registration on the Principal Register of the
mark MODERN DECOR (in standard characters) for the following goods:
Shower heads; electric dispenser for air freshener, in Class 11;

Tissue box covers of textile, shower curtain rings, shower rods, suction
cup hooks made of silicone polymer, mirrors, bath pillows, curtain rings,
throw pillows, clothes hangers, coat hangers, coat racks, storage racks,
tie racks, shoe racks, shoe cabinets; self-contained modular and non-
modular plastic storage units consisting of storage shelves and drawers;
drawers, shelving, chests of drawers, hat racks, drawer organizers,
drawer dividers, non-metal fabric storage bin organizer, storage racks,
baker's racks, sweater storage racks; self-contained modular and non-
modular plastic storage units consisting of storage shelves and drawers;
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 87120743
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plastic storage crates, plastic drawer self-lining material; stackable
storage shelves and racks; free-standing storage closets, luggage racks
for indoor use, garment racks; bathroom shelf towers, space saver
shelves, bathroom storage shelves, shower mirrors, bath mirrors,
memory foam pillows, bath cushions, in International Class 20;

Wall dispenser, namely, soap dispenser, shampoo dispenser, lotion
dispenser; tumblers for use as drinking glasses, soap dispensers,
toothbrush holder, trash cans, ceramic tissue box covers, suction shower
and sink caddies, shower caddies, countertop paper towel holders, lotion
dispensers, shampoo dispensers, suction wall caddies for bathroom use,
suction corner caddies for bathroom use, toilet tissue caddies, toilet
brush set consisting primarily of toilet brushes, toilet brush holders,
bathroom caddies, shower organizer in the nature of shower caddies,
toilet tissue holders, bathroom storage tower, toilet paper stands,
shower organizer in the nature of caddies, bathroom organizers in the
nature of bathroom caddies, bathroom vanity organizers in the nature
of caddies, bath accessory organizers in the nature of caddies, laundry
hampers for domestic or household use; clothes pins, clothes drying
racks, empty spray bottles, lint rollers, lint brushes, electric lint
removers, dish drainers; countertop holders for paper towels; spice
racks; non-electric kitchen containers not being of precious metal;
portable plastic containers for storing household and kitchen goods;
shaped ironing board pads; ironing board covers, shaped; ironing boards;
ironing board caddies; metal closet organizer components and
accessories sold individually, namely, baskets, bins, free-standing and
stackable boxes and storage, in International Class 21;

Laundry bags, laundry wash bags; closet organizer components and
accessories sold individually, namely, cloth and vinyl storage bags for
clothing; household storage bags made of fabric for storing laundry;
clothes lines, in International Class 22;

Shower curtains, shower curtain liners, toilet seat covers of textile,
curtains, curtain liners, comforters, bed sheets, pillow cases, pillow
shams, bed skirts, blanket throws, bedspreads, bed blankets, quilts;
table cloths not of paper; table linens, towels; fabric window treatments
and covers, namely, curtains and draperies, sheers, swags, and
valances; shower curtains, bath towels, wash cloths, bath mitts, bath
gloves, bath sheets, bath linens; textile fabrics for home and commercial
interiors, in International Class 24; and

Serial No. 87120743
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Shower rugs, bathroom mats, bathroom rugs, in International Class 27.1

The Trademark 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
Applicant’s mark, in its entirety, is merely descriptive of the goods identified in its
application.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal resumed. We affirm the refusal to register.2
I. Mere Descriptiveness – Applicable Law
A mark is merely descriptive of goods or services within the meaning of Section
2(e)(1) of the Trademark Act if it forthwith conveys an immediate idea of an
ingredient, quality, characteristic, feature, function, purpose or use of the goods or

1 Application Serial No. 87120743, filed on July 29, 2016, based on an allegation of use in
commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming (1) May
2016 as both the date of first use and the date of first use in commerce for the goods identified
in International Classes 20, 21, and 24; (2) August 2016 as both the date of first use and the
date of first use in commerce for the goods identified in International Class 27; and (3)
November 2016 as the date of first use and the date of first use in commerce for the goods
identified in International Classes 11 and 22.
2 All TTABVUE and Trademark Status and Document Retrieval (“TSDR”) citations reference
the docket and electronic file database for the involved application. All citations to the TSDR
database are to the downloadable .PDF version of the documents.
After filing its appeal brief, Applicant requested remand of its involved application so that
it could, in the alternative, amend its application to one on the Supplemental Register in the
event the Board affirmed the Examining Attorney’s mere descriptiveness refusal. 5
TTABVUE. The request for remand was granted. 6 TTABVUE. In his denial of Applicant’s
request for reconsideration, the Examining Attorney noted that an amendment to the
Supplemental Register would be acceptable should the Board affirm the mere descriptiveness
refusal. 7 TTABVUE 2.

Serial No. 87120743
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services. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217,
1219 (Fed. Cir. 2012); see also In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir.
1987). Whether a mark is merely descriptive is determined in relation to the goods or
services for which registration is sought and the context in which the mark is used,
not in the abstract or on the basis of guesswork. In re Abcor Dev. Corp., 588 F.2d 811,
200 USPQ2d 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB
2002). In other words, we evaluate whether someone who knows what the goods or
services are will understand the mark to convey information about them. DuoProSS
Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757
(Fed. Cir. 2012). A mark need not immediately convey an idea of each and every
specific feature of the goods or services in order to be considered merely descriptive;
it is enough if it describes one significant attribute, function or property of the goods
or services. See In re Gyulay, 3 USPQ2d at 1010; In re H.U.D.D.L.E., 216 USPQ 358,
359 (TTAB 1982); In re MBAssociates, 180 USPQ 338, 339 (TTAB 1973).
When two or more merely descriptive terms are combined, the determination of
whether the combined mark is also merely descriptive turns on whether the
combination of terms evokes a non-descriptive commercial impression. 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. In
re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004)
(quoting Estate of P.D. Beckwith, Inc. v. Commr., 252 U.S. 538, 543 (1920)); see also
In re Tower Tech, Inc., 64 USPQ2d 1314, 1318 (TTAB 2002) (SMARTTOWER merely
Serial No. 87120743
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descriptive of commercial and industrial cooling towers); In re Sun Microsystems Inc.,
59 USPQ2d 1084, 1087 (TTAB 2001) (AGENTBEANS merely descriptive of computer
programs for use in developing and deploying application programs).
On the other hand, a mark comprising a combination of merely descriptive
components is registrable if the combination of terms creates a unitary mark with a
non-descriptive meaning, or if the composite has an incongruous meaning as applied
to the goods or services. See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382
(CCPA 1968) (SUGAR & SPICE for “bakery products”); In re Shutts, 217 USPQ 363,
365 (TTAB 1983) (SNO-RAKE for “a snow removal hand tool having a handle with a
snow-removing head at one end, the head being of solid uninterrupted construction
without prongs”). In this regard, “incongruity is one of the accepted guideposts in the
evolved set of legal principles for discriminating the suggestive from the descriptive
mark.” Shutts, 217 USPQ at 365; see also In re Tennis in the Round, Inc., 199 USPQ
496, 498 (TTAB 1978) (the association of applicant's mark TENNIS IN THE ROUND
with the phrase “theater-in-the-round” creates an incongruity because applicant’s
services do not involve a tennis court in the middle of an auditorium). Thus, we must
consider the issue of descriptiveness by looking at the mark in its entirety.
In support of his Section 2(e)(1) refusal, the Examining Attorney submitted the
dictionary definitions of the terms “modern” and “decor” which are defined as follows:3
Modern: contemporary; having a style that is newer and different from
older, more traditional styles.

Decor: The way that a room or the inside of a building is decorated.

3 September 29, 2016 Office Action, TSDR pp. 10-18 (from www.merriam-webster.com).
Serial No. 87120743
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Additionally, the Examining Attorney submitted the definition of the phrase “modern
design” which is defined as “a style of décor that focuses on minimalism, neutral
colors, clean design lines and environmentally-friendly materials.”4
As further evidence of the descriptiveness of Applicant’s applied-for mark, the
Examining Attorney submitted numerous use-based, third-party registrations for
marks that include the terms “modern” or “decor” for goods identical or similar to
those of Applicant and where such terms have been disclaimed or where the marks
have been registered on the Supplemental Register.5 For example:6
• CRAFTY DECOR (DECOR disclaimed) (Reg. No. 2271145) for “kits for making
bed comforters, valances, pillows and cushions; comprised of polyester batting
and patterns” in International Class 22;

• MODERN FLAMES (MODERN disclaimed) (Reg. No. 4076325) for
“Fireplaces, namely, electric fireplaces and decorative hearths therefor” in
International Class 11;

• HOME DECOR CENTER (registered on the Supplemental Register; CENTER
disclaimed) (Reg. No. 4184562) for “Area rugs; Artificial turf for laying on the
surfaces of recreational areas; Borders being wall decorations in the nature of
wall coverings; Carpet backing; Carpet padding; Carpet tiles; Carpet tiles for
covering floors; Carpet tiles made of textiles; Carpet underlay; Carpet
underlays; Carpet underlays, namely, rug grippers; Carpet underlining;
Carpeting; Carpets; Carpets and rugs; Carpets for automobiles; Carpets, rugs,
mats and matting, linoleum for covering existing floors; Cloth wall coverings;
Cork for use as a floor or wall covering; Decorative slip-resistant floor covering
in sheet form; Foam mats for use on play area surfaces; Fur rugs; Non-textile
wall coverings; Non-textile wall hangings; Oriental non-woven rugs (mosen);

4 April 25, 2017 Office Action, TSDR pp. 66-67 (from www.yourdictionary.com).
5 Id., TSDR pp. 6-65.
6 The third-party registrations submitted by the Examining Attorney for the marks
AMERICAN MODERN (Reg. No. 3857123) and MORDERN WARDROBE (Reg. No. 3342309)
have been cancelled. As explained infra, a cancelled registration is generally evidence only of
the fact that that registration issued and therefore is not evidence that a mark, or portion
thereof, is descriptive. See Bond v. Taylor, 119 USPQ2d 1049, 1054-55 (TTAB 2016).
Accordingly, these two third-party registrations have been given no consideration.
Serial No. 87120743
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Plastic tiles employed as a synthetic skiing surface or laid to prevent wear in
high traffic areas of conventional skiing facilities; Plastic wall coverings;
Primary carpet backing; Resilient hard surface covering for floors, walls and
other surfaces; Rugs; Rugs, namely, floor runners; Sheets of plastic for covering
walls; Tapestry-style wall hangings, not of textile; Underlay for carpets; Vinyl
wall coverings; Wall coverings of cork; Wall coverings of paper; Wall coverings
of plastic; Wall coverings of textile; Wall paper; Wallpaper in the nature of
roomsize decorative adhesive wall coverings” in International Class 27;

• DÉCOR SERIES (registered on the Supplemental Register) (Reg. No. 4277517)
for “toilet seats; toilets” in International Class 11;

• LOOM DECOR (DECOR disclaimed) (Reg. No. 4176308) for “Fabrics used in
home decoration, namely, table linens, napkins, bedding, window treatments,
towels, pillows, shower curtains, placemats, wall art, aprons and floor
coverings” in International Class 24;

• BIG TIME DECOR (DECOR disclaimed) (Reg. No. 4642309) for “bathroom
vanities” in International Class 20;

• NICHE MODERN (MODERN disclaimed) (Reg. No. 4713366) for “Lighting for
indoor use, namely, lamps, floor and table lamps, wall lamps, sconce lighting
fixtures, ceiling lights, wall lights, chandeliers, lighting fixtures for residential
use for bathrooms and kitchens in the nature of pendants and multi-pendant
fixtures; lighting fixtures for commercial use for hotels, restaurants, bars, and
offices” in International Class 11 and “Dinnerware; decorative bowls, serving
trays, plates, dishes; glassware, namely, drinking glasses, juice glasses,
cocktail glasses, carafes; stemware, namely, wine glasses, champagne flutes;
bar and wine accessories, namely, bottle stoppers especially adapted for use
with flasks and decanters; cocktail containers, namely, drinking glasses, juice
glasses, cocktail glasses and carafes” in International Class 21;

• MODERN FORMS (MODERN disclaimed) (Reg. No. 4433935) for “Lighting
products, namely, light fixtures, LED light bulbs and LED lighting fixtures,
pendant light fixtures, ceiling lights, table lamps, floor lamps, wall lights,
sconce lighting fixtures; LED lighting fixtures; OLED (Organic LED) fixtures;
lamps and structural parts therefor; electric lighting fixtures and structural
parts therefor; LED (light emitting diodes) lighting fixtures for use in display,
commercial, hospitality, residential, and architectural accent lighting
applications; LED (light emitting diode) lighting fixtures; LED landscape
lights; LED lighting fixtures for indoor and outdoor lighting applications;
chandeliers” in International Class 11;

Serial No. 87120743
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• MODERN LANTERN (registered on the Supplemental Register; LANTERN
disclaimed) for “Component parts for light fixtures and lamps, namely, kits for
converting corded light fixtures and lamps to cordless light fixtures and lamps,
consisting primarily of a battery, battery housing, and wiring” in International
Class 11;

• OMO MODERN (MODERN disclaimed) (Reg. No. 4705317) for “furniture” in
International Class 20;

• GO MODERN (MODERN disclaimed) (Reg. No. 4810970) for “Home
furnishings and decor, namely, furniture, and sculptures made of resin” in
International Class 20;

• (DECOR disclaimed) (Reg. No. 4740711) for “Lighting
fixtures, lamps, ceiling lights, chandeliers” in International Class 11;

• MODERN BLOCK (MODERN disclaimed) (Reg. No. 4767244) for “Carpets,
rugs, mats, and matting for covering existing floors; carpeting; carpet backing;
carpet tiles” in International Class 27;

• (DECOR disclaimed) Reg. No. 4820937) for “Bed blankets;
Bed covers; Bed linen; Bed skirts; Bedspreads; Comforters; Coverlets; Covers
for cushions; Curtains; Drapery; Duvet covers; Mattress covers; Quilts; Shams;
Throws.”;

• DL DÉCOR (DÉCOR disclaimed) (Reg. No. 4785022) for, among other things,
“Cake stands; Candle holders; Candle holders not of precious metal; Candle
rings; Candlesticks; Candlesticks with wind protection; Candy boxes; Candy
boxes, not of precious metal; Carving boards; Champagne flutes; Cocktail
picks; Cocktail shakers; Coffee cups; Coffee mugs; Coffee services; Cookie
cutters; Cookie jars; Cork screws; Cup cake molds; Cups; Dinnerware; Dishes;
Dishware; Dispensers for liquid soap; Drinking glasses; Floor vases; Flower
bowls; Flower vases; Glass beverageware; Glass boxes; Glass carafes; Glass
dishes; Glass floor vases; Glass jars; Glass mugs; Glass pans; Glass stoppers;
Glass storage jars; Ice buckets; Ice pails; Ice scoops; Mugs; Mugs, not of
precious metal; Mustard pots; Napkin rings; Napkin rings not of precious
metals; Non-electric candelabras; Non-electric coffee servers not of precious
metal; Pillar candle plate made in whole or in part of precious metal; Pillar
candle plates; Pitchers; Plastic containers in the shape of fruits and vegetables
for storing individual fruits and vegetables, and for extending the life of those
fruits and vegetables; Plastic containers, namely, cake boxes for household use;
Serial No. 87120743
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Plates; Plates for hors d'oeuvre; Salad bowls; Sauceboats not of precious
metals; Serving dishes; Serving forks; Serving ladles; Serving platters; Serving
platters not of precious metal; Serving platters of precious metal; Servingware
for serving food; Shallow bowls; Slotted spoons; Soap boxes; Soap dishes; Soap
dispensers; Stands for dishes; Stemware; Sugar bowls; Table place card
holders not of precious metal; Tea services; Tea services not of precious metal;
Tea sets; Urns; Vases; Votive candle holders; Whisks; Wine glasses; Wine
openers; Wine pourers; Wood chopping blocks; Wood chopping boards for
kitchen use; Wood cooking planks for use in grilling” in International Class 21;

• (MODERN disclaimed) (Reg. No. 5117538) for “Aquarium
lights; Ceiling lights; Flashlights; Fluorescent lamp tubes; Headlights for
automobiles; Lamp mantles; Lamps; LED (light emitting diode) lighting
fixtures; Lighting apparatus, namely, lighting installations; Lights for
vehicles; Searchlights; Electric lamps; LED light assemblies for street lights,
signs, commercial lighting, automobiles, buildings, and other architectural
uses; Lights, electric, for Christmas trees; Luminous house numbers” in
International Class 11; and

• DOOR DECOR (registered on Supplemental Register) (Reg. No. 5093175) for
“floor mats” in International Class 27.

The Examining Attorney also submitted Internet evidence comprised of
screenshots from the www.kirkland.com and www.wayfair.com commercial websites
which the Examining Attorney argues demonstrates the descriptive nature of
Applicant’s applied-for mark in connection with the identified goods.7 Specifically,
excerpts from the Kirkland’s website submitted by the Examining Attorney identify
a “collection” of household goods that are identified as “Modern Farmhouse Decor.”
Additionally, evidence from the Wayfair website identifies “Bathroom Accessories &
Decor.” This site also claims to offer “an excellent selection of bathroom
décor...whether you’re on the hunt for modern bathroom mirrors or bathroom

7 April 25, 2017 Office Action, TSDR pp. 72-78.
Serial No. 87120743
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furniture, or you prefer more traditional bath accessories.” Also, this site refers to
bathroom products that are of a “Modern & Contemporary Bathroom Design” as well
as those of a “Traditional Bathroom Design.”
The Examining Attorney argues that all of the foregoing evidence demonstrates
that the plain meaning of the wording “modern decor,” in the context of Applicant’s
identified goods, references exactly what the relevant consumer would understand it
to mean; i.e., bath, kitchen and household furnishings that possess a decorative,
modern style.
In traversing the refusal, Applicant argues that (1) its identified goods are not
purely decor or used solely for decorative purposes; instead, the identified goods are
generally household accessories and storage products with functional uses and
purposes; (2) the Examining Attorney’s submitted evidence does not demonstrate
that the phrase “modern decor” is descriptive of Applicant’s identified goods inasmuch
as the evidence does not show use of the phrase “modern decor” as a unitary phrase;
(3) at best, the wording “modern decor” suggests a characteristic of Applicant’s
collective line of goods that is only imputed by the Office to the goods recited in
Applicant’s application; (4) the Examining Attorney failed to establish that
Applicant’s competitors need to use the phrase “modern decor” descriptively; and (5)
the USPTO has previously allowed other MODERN-formative marks for goods
similar or identical to Applicant’s to register without a disclaimer of the term
“modern.”8 Additionally, Applicant requests that the Board resolve any doubt as to

8 Applicant’s Appeal Brief, pp. 4-11, 4 TTABVUE 5-12.
Serial No. 87120743
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whether Applicant’s MODERN DECOR mark is descriptive in Applicant’s favor and
allow the application to proceed to publication.9
In support of its arguments, Applicant submitted, inter alia, copies of third-party
registrations (some of which are cancelled) which purportedly demonstrate that the
USPTO has not treated the word MODERN as a descriptive term for goods identical
or similar to Applicant’s identified goods.10
We find Applicant’s arguments and supporting evidence unpersuasive. First,
while Applicant’s goods include some functional items, the definition of decor
encompasses such items and the evidence of record demonstrates that such goods
may also be decorative in nature. The Internet evidence from the Kirkland and
Wayfair websites shows that goods similar or identical to those of Applicant, while
functional, are also considered as part of a room’s decor and may possess a modern
style.
Applicant’s argument that the evidence submitted by the Examining Attorney
does not show commercial use of the phrase “modern decor” alone is also unavailing.
While the evidence submitted does not display the wording “modern decor” as a
unitary phrase, when considering all the evidence of record, including the dictionary
definitions of the individual terms “modern” and “decor,” we find that the composite
wording “modern decor” is clearly descriptive of the decorative style of the goods
offered by Applicant. Nothing about the combination of each terms creates an

9 Id. at p. 11, 4 TTABVUE 12.
10 March 29, 2017 Response to Office Action, TSDR pp. 24-47.
Serial No. 87120743
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incongruity or changes their individual significance, and the combination therefore
results in a composite that is itself merely descriptive. See Oppedahl & Larson, 71
USPQ2d at 1372. Likewise, Applicant’s argument that the Examining Attorney has
failed to demonstrate that Applicant’s competitors need to use the wording “modern
decor” descriptively is also without merit. There is no requirement that the
Examining Attorney prove that others have used the mark at issue commercially or
that they need to use it. See In re Fat Boys Water Sports LLC, 118 USPQ2d 1511,
1514 (TTAB 2016). Indeed, the fact that Applicant may be the first or only user of a
descriptive term does not necessarily render that term distinctive. In re Phoseon
Tech., Inc., 103 USPQ2d 1822, 1826 (TTAB 2012); In re Sun Microsystems, Inc., 59
USPQ2d 1084, 1087 (TTAB 2001).
We next turn to Applicant’s argument that because the USPTO has previously
allowed other MODERN-formative marks to register without a disclaimer of the word
“modern,” the term “modern” cannot be viewed as descriptive of Applicant’s goods. As
noted above, Applicant submitted live and cancelled registrations to support its
argument. With regard to the cancelled third-party registrations submitted by
Applicant,11 we note again that a cancelled registration is generally evidence only of
the fact that that registration issued and therefore is not evidence that a mark is not
descriptive. See Bond v. Taylor, 119 USPQ2d at 1054-55; In re Kysela Pere et Fils
Ltd., 98 USPQ2d 1261, 1264 (TTAB 2011) (“‘dead’ or cancelled registrations have no

11 The third-party registrations submitted by Applicant for the marks MODERN HOUSE
(Reg. No. 3706426) and MODERN LOFT (Reg. No. 3303211) have been cancelled. See March
29, 2017 Response to Office Action, TSDR pp. 25-29 and 46-47.
Serial No. 87120743
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probative value at all”); In re Brown Forman Corp., 81 USPQ2d 1284, 1286 n.3 (TTAB
2006). Thus, we accord the cancelled registrations submitted by Applicant little, if
any, probative value.
The live, use-based third-party registrations cited by Applicant in support of its
position are as follows:12
• MODERN OBJECTS (Reg. No. 2690268) for “decorative metal
hardware, metal cabinet hardware, metal kitchen hardware and
metal bath hardware, namely, door pulls, drawer pulls, handles,
knobs, hinges, hooks, hangars, tiles, controls, faceplates” in
International Class 6;

• MODERN IMPRESSIONS (Reg. No. 4966439) for “Bed blankets; Bed
sheets; Bed throws; Comforters” in International Class 24;

• (Reg. No. 4400586) for “textile fabrics for home
and commercial interiors” in International Class 24;

• MODERN LIVING (Reg. No. 4302572) for “pillows, namely, accent
pillows and decorative pillows” in International Class 20 and “quilts,
bed skirts, throw blankets; bath towels and beach towels” in
International Class 24;

• MODERN SUITES (Reg. No. 4639196) for “Bed blankets; Bed sheets;
Bedspreads; Blanket throws; Comforters; Dust ruffles; Duvet covers;
Duvets; Fabric window coverings and treatments, namely, curtains,
draperies, sheers, swags and valances; Fitted bed sheets; Flat bed
sheets; Mattress pads; Pillow cases; Pillow shams; Sheet sets;
Shower curtains” in International Class 24; and

• MODERN.PLACE (Reg. No. 5137142) for “Lighting fixtures; Electric
pendant lighting fixtures; LED light strips for decorative purposes”
in International Class 11.

12 Id., TSDR pp. 30-45.
Serial No. 87120743
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Applicant’s third-party registration evidence is inconclusive. Unlike Applicant’s
mark, several of these marks arguably are unitary. Although other of the third-party
registrations submitted by Applicant appear to show that the USPTO has allowed
the registration of certain marks that include the term MODERN to be registered
without a disclaimer of said term, our desire for consistency with the decisions of prior
examining attorneys must yield to proper determinations under the Trademark Act
and rules. See In re Shabby Chic Brands, LLC, 122 USPQ2d 1139, 1145 (TTAB 2017)
(citing In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1635 (Fed. Cir.
2016)). The Board must assess each mark on its own facts and record. In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). Indeed, the
Board has previously found that:
It is axiomatic that we must decide each case on its own merits. The bare
fact that the USPTO allowed the marks in the referenced third-party
registrations to register is of little persuasive value and does not dictate
the result in this case nor does it rebut our finding that LITTLE
MERMAID is descriptive in the context of this mark. When a mark is
refused registration, and the applicant appeals, we must decide the case
based on the record in that case in accordance with the governing
statutory standard. We are not estopped or disqualified from applying
the statute because, in a prior application which we did not review (and
could not have), an examining attorney (or attorneys) may have
overlooked a relevant statutory provision and, perhaps erroneously,
allowed an application to register.

In re United Trademark Holdings, Inc., 122 USPQ2d 1796, 1800 (TTAB 2017).
Moreover, the small number of third-party registrations submitted by Applicant is by
no means overwhelming, given how many third-party registrations are of record for
MODERN-formative marks wherein the term MODERN is disclaimed or where such
marks are registered on the Supplemental Register.
Serial No. 87120743
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II. Conclusion
We have carefully considered all arguments and evidence of record, including any
not specifically discussed. Based on the evidence of record, we conclude that the
designation MODERN DECOR is merely descriptive of Applicant’s identified goods
since the mark merely describes the decorative style of the goods. We further find
that the combination of the descriptive terms “modern” and “decor” do not create a
non-descriptive or incongruous meaning. Instead, we find that each component
retains its merely descriptive significance in relation to Applicant’s identified goods,
the combination of which results in a composite mark that is itself merely descriptive.
Moreover, while Applicant correctly states the general principle that any doubt as to
descriptiveness must be resolved in its favor, in this case, we have no doubt that
MODERN DECOR is merely descriptive of a feature or characteristic of Applicant’s
identified goods under Section 2(e)(1) of the Trademark Act.
Decision: The refusal to register Applicant’s MODERN DECOR mark on the
Principal Register under Section 2(e)(1) of the Trademark Act on the ground that the
designation, in its entirety, is merely descriptive of Applicant’s identified goods is
affirmed. In light of this affirmance, we grant Applicant’s request, in the alternative,
to amend its application to seek registration of its mark on the Supplemental
Register. Accordingly, Applicant’s involved application is hereby amended pursuant
to Applicant’s alternative request and will proceed to issuance of a registration on the
Supplemental Register.