Guard Master Inc.

Trademark Trial and Appeal Board

Aug 29, 2013

No. 85419062 (T.T.A.B. Aug. 29, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: August 29, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Guard Master Inc.
_____

Serial No. 85419062
_____

Ludomir A. Budzyn of Hoffmann & Baron, LLP,
for Guard Master Inc.
Tasneem Hussain, Trademark Examining Attorney, Law Office 105,
Thomas G. Howell, Managing Attorney.
_____

Before Bucher, Shaw and Gorowitz,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
Guard Master Inc. (“applicant”) seeks registration on the Principal Register of
the mark BEDGEAR (in standard character format) for “retail store and online retail
store services featuring clothing, sleep accessories and bedding” in International
Class 35.1
The examining attorney has refused registration on the ground that the term is
merely descriptive under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1).

1 Application Serial No. 85419062 was filed on September 9, 2011, based upon applicant’s
allegation of a bona fide intention to use the mark in commerce.
Serial No. 85419062
2

When the refusal was made final, applicant appealed and requested
reconsideration. After the examining attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
A term is merely descriptive if it immediately conveys knowledge of a
significant quality, characteristic, function, feature or purpose of the products or
services it identifies. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir.
1987). Whether a particular term is merely descriptive is determined in relation to
the goods or services for which registration is sought and the context in which the
term is used. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218
(CCPA 1978); and In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other
words, the question is whether someone who knows what the services or products
are will understand the mark immediately to convey information about them. In re
MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003).
Applicant argues that this term is suggestive, not descriptive; that the
examining attorney has failed properly to apply the legal tests for determining
descriptiveness; that the dictionary definitions utilized by the examining attorney
support applicant’s position of publication of the mark; that the examining
attorney has impermissibly separated the mark into separate elements when
determining descriptiveness; that the Board has found analogous marks to be
suggestive in non-precedential decisions where the marks bear a “striking
similarity” to the mark in the case at bar; that a number of third-party retail store
service marks registered on the Principal Register indicate that the United
States Patent and Trademark Office routinely registers highly similar “Gear”
Serial No. 85419062
3

marks; and in spite of three different attempts2 by the examining attorney to
support her view that the term “bed gear” has been used by third parties in the
marketplace to describe and identify goods including clothing, sleep accessories
and bedding using the results of Internet and LEXIS/NEXIS searches, the record
shows only a very few examples of a wide variety of quite different items that
have been described as “bed gear.”
By contrast, the examining attorney contends that each of the individual
words is merely descriptive of applicant’s services, and that in this case, the
individual components of a mark retain their descriptive meaning in relation to
the services so that the combination (“Bedgear”) results in a composite mark that
is itself descriptive and not registrable. In fact, this combined term does not
create a unique, incongruous or non-descriptive meaning in relation to the recited
services, but instead, “bed gear” has been shown to be a “term of art” in the bedding
and clothing industries. Specifically, the examining attorney contends that the
evidence of record clearly demonstrated that the term “bed gear” is descriptive of
items such as those listed in applicant’s recitation of services; and that contrary to
applicant’s allegations, third party registrations demonstrate that similar
composite marks involving “----gear” formatives, when used in connection with
analogous goods and services, have been found by the Office in the past to be
merely descriptive thereof.

2 First office action (of December 15, 2011), second office action (of June 25, 2012), and
the Office’s denial of applicant’s request for reconsideration (of February 4, 2013).
Serial No. 85419062
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The examining attorney has supplied for the record the following dictionary
definitions of the words “bed” and “gear”:

bed - definition
NOUN
1. for sleeping on -- a piece of furniture that you sleep on, consisting of a soft comfortable part called a mattress
and a base 3

gear - definition
NOUN
2. clothes and equipment -- the special clothes and equipment that you use for a particular activity 4

The term “bed” immediately describes the purpose of applicant’s sleep
accessories and bedding, i.e., they are used on beds. The examining attorney also
included several examples from third-party registrations where the word “bed”
and even the term “bed gear” have been disclaimed: 5

for “retail mattress stores” in International Class
35;6

3 http://www.macmillandictionary.com/dictionary/british/bed#bed_4
4 http://www.macmillandictionary.com/dictionary/british/gear
5 Some examples of third-party registrations cited by the examining attorney have since
been cancelled, e.g., Registration No. 3009891 [BED DOCTOR] not a used-based
registration, and then cancelled § 8, and Registration No. 3147327 [ ] cancelled
§ 8.
6 Registration No. 3294134 issued on September 18, 2007, Section 8 affidavit accepted and
Section 15 affidavit acknowledged. No claim is made to the exclusive right to use the words
“The Bed Store” apart from the mark as shown.
Serial No. 85419062
5

ATHLETIX BED GEAR for “home textiles, namely, bed linen, bed sheets” in
International Class 24;7

We see from the above dictionary entry that the term “Gear” means items like
clothes or equipment used for a specified purpose or activity. Hence, when “Gear” is
used in connection with the term “Bed,” it describes that the goods are articles used
specifically for beds and/or sleeping.
Applicant concedes that under the examining attorney’s dictionary definition of
the word “gear,” a hypothetical term like “camping gear” may well be merely
descriptive of special clothes and equipment used for “camping.” However, applicant
argues that this is true because “camping” is an “activity” under the latter clause of
the dictionary entry, while the word “bed” does not name a particular activity.
Furthermore, applicant argues that the illustrative examples for “gear” from the
dictionary entry support the conclusion that the word “gear” should be construed in
this restrictive manner.
However, for our purposes, the operative part of the definition is “special clothes
and equipment” to be used in some specific context. We find nothing in this
dictionary entry, in our law or in our precedent from which we must conclude that
the term “gear” fails immediately to convey information if the term modifying it is
not an activity. In fact, the examining attorney has included copies of registrations
for the following service marks in which the marks have structural similarities to
applicant’s proposed mark (e.g., noun plus “gear”) and that were registered on the

7 Registration No. 4004318 issued on August 2, 2011. No claim is made to the exclusive
right to use the words “Bed Gear” apart from the mark as shown. It appears as if applicant
has recently filed a cancellation petition (Canc. No. 92057298) against this registration.
Serial No. 85419062
6

Supplemental Register, the word “Gear” is disclaimed or the mark was registered
under § 2(f) of the Act, indicating that the United States Patent and Trademark
Office treats the term “gear” as merely descriptive for similar online retail store
services:8
COMPUTERGEAR for “wholesale distributorship and retail mail order
services featuring garments, neckwear, caps,
jewelry, time pieces, soft sculptures and notions, all
bearing computer related designs” in International
Class 35;9
CREWGEAR for “retail and wholesale store services, via
telephone, mail order, showroom, and Internet
catalog featuring items relating to the aviation
profession or of interest to aviation enthusiasts,
including uniform components, publications,
accessories for foreign and domestic travel,
organizers, flight bags, catalog cases, electronics,
maps and guides, apparel, sunglasses, jewelry
luggage, logbooks and novelties of others” in
International Class 35;10
GREEKGEAR for “online retail store and mail order store
featuring sorority and fraternity merchandise,
namely t-shirts, sweatshirts, hats, and many gift
items, namely license plate frames, pens, pencils,
picture frames, glassware, mugs, stuffed animals,
tote bags, magnets, stickers, desk items, and
jewelry which references the names of sororities
and fraternities” in International Class 35;11

8 Several third-party registrations cited by the examining attorney have since expired,
namely, Registration No. 2627941 [TRUCKGEAR]; and Registration No. 3022398
[POCKETGEAR.COM].
9 Registration No. 2403331 issued on November 14, 2000; renewed. Acquired
distinctiveness shown as to the entire mark under § 2(f) of the Act.
10 Registration No. 2692719 issued on March 4, 2003; renewed. Acquired distinctiveness
shown as to the entire mark under § 2(f) of the Act.
11 Registration No. 2716683 issued on the Supplemental Register on May 13, 2003;
renewed.
Serial No. 85419062
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UNDERGEAR for “online retail store services in the field of
clothing, footwear, exercise equipment, and
personal body care products” in International Class
35;12
PistolGear for “online retail store services featuring firearms
goods and accessories” in International Class 35;13

for “retail store services featuring automotive parts
and accessories” in International Class 35;14
IRONWORKERGEAR for “online retail store services featuring tools, hard
hats, work boots and safety items” in International
Class 35;15 and
Big Game Gear for “online retail store services featuring hunting,
marine, fishing, tactical, and camping gear, and
issuing gift certificates which may then be
redeemed for goods or services” in International
Class 35.16

Applicant countered with third-party registrations involving “----gear----”
formatives which it argues support its position herein: 17

for “online catalog, ordering and retail store
services, featuring adult entertainment and adult

12 Registration No. 2864005 issued on July 20, 2004; Section 8 affidavit accepted and
Section 15 affidavit acknowledged. Acquired distinctiveness shown as to the entire mark
under § 2(f) of the Act.
13 Registration No. 3203162 issued on the Supplemental Register on January 23, 2007;
Section 8 affidavit (six-year) accepted.
14 Registration No. 3236699 issued on May 1, 2007. No claim is made to the exclusive right
to use the word “Accessories” apart from the mark as shown. Acquired distinctiveness
shown as to the term “AutoGear” under § 2(f) of the Act.
15 Registration No. 4049154 issued on November 1, 2011. Acquired distinctiveness under
§ 2(f) of the Act shown as to the entire mark.
16 Registration No. 4119763 issued on the Supplemental Register on March 27, 2012. No
claim is made to the exclusive right to use the word “Gear” apart from the mark as shown.
17 One third-party registration cited by applicant was cancelled § 8, namely, Registration
No. 3164979 [ ].
Serial No. 85419062
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novelties, prerecorded video tapes, DVDs, books,
adult toys and novelties, underwear, lingerie, erotic
clothing and costumes” in International Class 35;18
PALMGEAR for a variety of goods and services related to Palm
brand handheld computers;19
AUTOGEAR for “retail store services featuring automotive parts
and accessories” in International Class 35;20
SPICYGEAR for “online retail store services featuring adult
products, vibrators, sex toys, dildos, adult DVDs,
condoms, personal lubricants, and adult sexual
aids; retail store services featuring adult products,
vibrators, sex toys, dildos, adult DVDs, condoms,
personal lubricants, and adult sexual aids” in
International Class 35;21
SCUBAGEARPLUS for “online retail store services featuring scuba gear
and scuba accessories” in International Class 35;22
AQUAGEAR for “online retail store services featuring swimming
equipment and accessories, aquatic exercise
equipment and accessories, water therapy
equipment, water exercise clothing, recorded videos,
and swim suit care products; online retail store
services featuring jewelry, snorkeling equipment,
books, recorded music, waterproof music players,
swim diapers, backpacks, equipment bags and
water toys” in International Class 35;23 and
GETREADYGEAR for “online retail store services featuring emergency
preparedness supplies, survival gear and survival
kits consisting of food, water, shelter, sanitation,
first aid, lighting, radios and tools” in International
Class 35.24

18 Registration No. 3208416 issued on February 13, 2007; Section 8 affidavit accepted and
Section 15 affidavit acknowledged.
19 Registration No. 3221220 issued on March 27, 2007.
20 Registration No. 3237771 issued on May 1, 2007.
21 Registration No. 3501484 issued on September 16, 2008.
22 Registration No. 3549718 issued on December 23, 2008.
23 Registration No. 3814395 issued on July 6, 2010.
24 Registration No. 3839840 issued on August 31, 2010.
Serial No. 85419062
9

While it is true that these seven registered composite marks contain the term
GEAR, the modifying word(s) in each case appears to be distinctive (PALM----) or
suggestive (SPICY----, GET READY----, SCUBA----PLUS, etc.). Consequently, we find
that these registrations fail to support the registration of the proposed mark.
The examining attorney argues that applicant’s proposed mark is merely
descriptive based upon the individual definitions of the words “bed” and “gear,” and
that the combination of the two words fails to create a unique or incongruous
meaning that would obviate the descriptive meaning. However, applicant’s argues
that in order to sustain this refusal, it is necessary for us to find that somewhere
these dictionary definitions point specifically to retail store services. But “[i]n
determining whether a term is merely descriptive of the services in connection with
which that term is used, we must analyze the term in relation to the services recited
in the application, the context in which it is used and the possible significance it
would have to the recipient of such services.” In re Pencils Inc., 9 USPQ2d 1410,
1411 (TTAB 1988). Therefore, applicant’s arguments are not persuasive.
Applicant also finds a legally-significant distinction between “bed gear” as two
words and its own novel spelling of “Bedgear” as a single, run-together word.25 We
disagree. Consumers’ breaking applicant’s proposed mark, “Bedgear,” into its
components, “bed” and “gear,” is not actually counted as the first stage in the
requisite “multistage reasoning process.” In cases such as the one at bar, that
process happens instantaneously and without hesitation. In fact, our precedent has
long held that a novel spelling that is the phonetic equivalent of a merely

25 See e.g., Footnote 31.
Serial No. 85419062
10

descriptive term is also merely descriptive if purchasers would perceive the
different spelling as the equivalent of the descriptive term. See Andrew J.
McPartland, Inc. v. Montgomery Ward & Co., 164 F.2d 603, 76 USPQ 97 (CCPA
1947) (holding KWIXTART, the phonetic spelling of “quick start,” to be merely
descriptive of electric storage batteries); and In re Carlson, 91 USPQ2d 1198 (TTAB
2009) (holding URBANHOUZING phonetic spelling of “urban” and “housing,” merely
descriptive of real estate services). Consequently, we find that consumers would
instantly perceive the term BEDGEAR to be equivalent to the words “Bed Gear.”
Applicant argues that it has made out a case for the proposition “that a
consumer will not necessarily surmise Applicant’s services, even after going through
an analysis of the Applicant mark.” However, we disagree with applicant’s
suggestion that the test is whether a blindfolded person could guess correctly
exactly what applicant’s services are after being prompted only with applicant’s
proposed mark. See In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
218 (CCPA 1978) (GASBADGE merely descriptive of a “gas monitoring badge”;
“Appellant’s abstract test is deficient – not only in denying consideration of evidence
of the advertising materials directed to its goods, but in failing to require
consideration of its mark ‘when applied to the goods’ as required by statute.”).
Rather, as noted above, the correct question is whether someone who knows what
the goods are will understand the mark to convey information about them. In re
MBNA America Bank N.A., 67 USPQ2d at 1780. Applied to the case at bar, it is not
a requirement of the case law that the prospective customer herein, upon seeing or
Serial No. 85419062
11

hearing the alleged mark for the first time, knows immediately the detailed listing
of sleep accessories or bedding items that comprise applicant’s “bed gear.”
Accordingly, we agree with the conclusions of the examining attorney that the
proposed composite mark is descriptive of the purpose of the recited services.
In addition to deducing the meaning of the composite term from the individual
definitions, and pointing to third-party registrations, the examining attorney has
also included in the evidence of record examples where third parties have used the
term “Bed Gear” to refer to bedding:
Shavel Home Products
Athletix Bed Gear Sheet Set,
Twin X-Long, Blue
Athletix Bed Gear offers the same cool
comfort as your favorite athletic
sportswear; now available for your bed.
Great vibrant colors that will last. Easy
care, wrinkle free with a great fit. Available
in Twin, Twin X-Long, Full and Queen
sizes. 26
27

26 http://www.sears.com/shavel-home-products-athletix-bed-gear-sheet-set/p-
SPM7576221808?prdNo=4. See also this registrant’s disclaimer at fn. 7, supra.
27 http://www.ideamarketers.com/ as accessed by the examining attorney on December 15,
2011.
Serial No. 85419062
12

The Personal Stash and Roxy Cottontail are proud to present
the “Sleep with Roxy Cottontail” collection; featuring the
Ganja Queen of booty beats suspended in a green dream sensi
fantasy. Stimulate your senses and fill your room with
delicious eye candy head & bed gear you’ll find yourself
drooling on. The “Roxy Cottontail Kush” pillowcase is em-
blazed with Roxy’s iconic Bunny Logo sculpted of Cotton Candy
Bubba Kush. Pillowcases come pre-packaged in the I BUD
YOU signature [zipper storage bags] and include a special
release “I BUD ROXY” stickers! 28

Dries Van Noten sends bed gear down catwalk
PARIS (AP) — When it comes to menswear, Dries Van Noten
rarely plays by the rules.
But even by his own standards, he set himself a tough challenge
for fall-winter 2013, aiming to produce clothes for men "that may
not ever been in their wardrobe."
Considering that one main theme of the show was the use of
nighttime pajamas for day jackets and outerwear, in this challenge
the Belgian designer most definitely succeeded. That is, of course,
provided there are no sleepwalkers out there with black, orange
and paisley pajamas in their closet. 29

Le Doux is my latest obsession. The swimsuit line is
designed by dynamic mother and daughter duo
Mary and Juliana Renz. The Brazilian beauties
launched the line in 2005 and immediately attracted
a celebrity following. Jennifer Lopez, Kim
Kardashian and Evangeline Lily are just a handful
of celebs who love their seductive bikinis with extra
fabric in the booty for “cultural adjustments.” With
this much success in sexy swim-gear, it's only
natural that they branched out to sexy bed-gear --
hence, Le Doux Lingerie. Their latest expansion
features the same sultry silhouettes and incorporates
fine silks and laces for lingerie worthy of its
Brazilian heritage. My favorite from the collection is
the Passion Fruit set. Find this, and many more
luscious options online at
www.ledouxswimwear.com for $118. 30

28 http://www.ibudyou.com/
29 http://news.yahoo.com/dries-van-noten-sends-bed-gear-down-catwalk-205851604.html
30 http://www.papermag.com/2009/04/market_watch_le_doux_passion_f.php
Serial No. 85419062
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We also note that the examining attorney conducted Internet searches for the
term “bed gear” on December 15, 2011, revealing mostly baby items such as
strollers, a play pen and crib mattresses on the Target website
[http://www.target.com/s/bed+gear]31 and a portable infant sleeper and children’s
pajamas on the website located at http://www.shopstyle.com/.
Finally, the examining attorney introduced half-a-dozen Lexis/Nexis excerpts
from various newspapers published in the ‘80s and ‘90s demonstrated usage of the
term “bed gear” in connection with bed linens, sleeping bags, etc.:
DESIGNER SHEETS: CLASS FOR THE MASSES
“As the designer behind Cannon Mills’ Clarence House name, Mr.
Roberts believes he has brought high-fashion glamour to the prosaic
world of mass-produced bedgear ... . Sales of his sheets are expected to
soar ... ” 32

BEDS: AN AWAKENING “THE BEDROOM APPEARS TO
BE EMERGING AS A SECOND GREAT ROOM.”
“Until recently, we had practically stopped looking at the bed as a piece
of furniture, viewing it as a box spring and mattress to be outfitted with
dust ruffles, layers of sheets, plumped with comforters and stacked
with piles of pillows. The bed was either devoid of head or footboard,
or so submerged in bed gear that the last thing you might have noticed
was the style of the frame.” 33

SALTWATER VACATIONS
“Every passenger is issued a plastic bucket and cup upon boarding, and
some plastic to wrap bed gear in to protect it from dampness.” 34

31 In addition to arguing that strollers and a play pen are not related to beds, applicant
demonstrates that its own search of the Target website using the run-together term
“bedgear” resulted in zero hits.
32 The New York Times, July 19, 1981.
33 The Miami Herald, November 1, 1987.
34 The Christian Science Monitor, May 31, 1988.
Serial No. 85419062
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WELL-DRESSED BEDS ARE LAYERED IN TODAY'S
HIGH-FASHION LINENS
“It may be hard to imagine spending that kind of money to outfit a bed,
but consider the assemblage of the haute bed gear of the `80s. In
addition to the standard fitted and flat sheets, there are tubular neck-roll
pillows, European square pillows and narrow, rectangular breakfast
pillows.” 35

AMERICA: BY ANY MEANS; RIVER RUNNING: WENDING
THROUGH WILDERNESS
“A dry change of clothes and bed gear in waterproof bags can be a
potential lifesaver.” 36

THE NUTS AND BOLTS OF TREKKING TO THE POLE
“Our bed gear consisted of two sleeping bags and a bivouac sack...”37

AT SOME HILTONS, ROOM TO UNWIND
The custom pillows and mattress were easier on the back than standard
hotel bed gear.” 38

From all of this evidence, applicant is correct in noting that the evidence of
record shows that the term “bed gear” sometimes refers to items such as men’s
pajamas, women’s lingerie, or baby items (e.g., an infant sleeper, a play pen or
strollers) – all connected in some way to sleeping, beds, etc. In any case, it is
undeniable that this term has also been used over more than three decades as a
term for bedding. Hence, we conclude from the record as a whole that the term “Bed
Gear” is generally descriptive of things related to beds, including mattresses;
pillows; bed cover sets including comforters, shams, sheets and pillowcases; sleeping
bags, etc. While we cannot be sure exactly what all applicant may intend to include

35 The Miami Herald, November 13, 1988.
36 The Dallas Morning News, May 16, 1993.
37 The Chicago Tribune, February 13, 1994.
38 The Washington Post, June 13, 1999.
Serial No. 85419062
15

in the initial clause of the recitation of services, “ … retail store services featuring
clothing, … ” it is a well settled legal principle that where a mark may be merely
descriptive of one or more services/goods in an application (e.g., “retail store services
featuring … sleep accessories and bedding”) but may not be as clearly descriptive as
applied to others, registration is properly refused if the subject matter for
registration is descriptive of any of the services and/or goods for which registration
is sought. See In re Analog Devices Inc., 6 USPQ2d 1808, 1810 (TTAB 1988).
In fact, the record also contains the following screen print from applicant’s own
website:
39
To the extent that applicant’s goods will include bedding essentials such as
mattress protection pads and encasements, pillow protectors, pillows and bedding

39 http://www.guard-master.com/ourbrands.html :
Serial No. 85419062
16

fabrics such as performance sheets, we find the applied-for term to be merely
descriptive.
Finally, we also find that the instant case is factually different from cases cited
by applicant, such as In re On Tech. Corp., 41 USPQ2d 1475 (TTAB 1996). In that
case, AUDITTRACK was found to be suggestive for “computer software for
monitoring activity on a computer network” inasmuch as the software “does not
audit a track or track an audit.” In fact, combining the words “Audit” and Track”
into the mark AUDITTRACK creates a redundancy because the network auditing
done by applicant’s computer software is essentially the tracking of selected user
activities. As a result, “purchasers and prospective customers would have to pause
and reflect on the significance of the combined designation AUDITTRACK in order
to understand that, as applied to applicant’s product, the software offered under
such term monitors a computer network in the sense that it can audit the network
and track various user activities thereon.” Id. at 1477. Such is not the case with the
proposed mark herein.
In conclusion, we find that should the term BEDGEAR be used in connection
with “retail store and online retail store services featuring clothing, sleep
accessories and bedding,” it immediately conveys knowledge, without any conjecture
or speculation, of a significant purpose of the services applicant recites herein.
Decision: The refusal to register applicant’s applied-for term, BEDGEAR, under
Section 2(e)(1) of the Lanham Act is hereby affirmed.