Guozhou Tang

Trademark Trial and Appeal Board

Mar 8, 2019

No. 87630035 (T.T.A.B. Mar. 8, 2019)

This Opinion is not a
Precedent of the TTAB

Mailed: March 8, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Tang
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Serial No. 87630035
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Adam E. Schwartz of Schwartz Intellectual Property Law PLLC
for Guozhou Tang.

Katherine C. Weigle Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
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Before Kuhlke, Ritchie and Heasley,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Guozhou Tang (“Applicant”) seeks registration on the Principal Register of the
standard character mark NEW SILK ROAD for various items of jewelry and jewelry
related goods in International Class 14; leather and leather goods in International
Class 18; and various clothing items in International Class 25.1

1 Application Serial No. 87630035 was filed on October 2, 2017, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention
to use the mark in commerce.

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The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a), on the ground that it
is deceptive. The refusal to register only applies to the clothing in International Class
25. When the refusal was made final, Applicant appealed and briefs have been filed.
We reverse the refusal.
In accordance with Section 2(a) of the Trademark Act, registration must be
refused if a term is deceptive with respect to a feature or an ingredient of the
identified goods. In re Budge Mfg. Co. Inc., 857 F.2d 773, 8 USPQ2d 1259, 1260 (Fed.
Cir. 1988). The test for deceptiveness is whether all three of the following criteria are
met:
(1) Is the term misdescriptive of the character, quality,
function, composition or use of the goods?
(2) If so, are prospective purchasers likely to believe that
the misdescription actually describes the goods?
(3) If so, is the misdescription likely to affect the
purchasing decision of a significant portion of relevant
consumers?
Id.; see also In re Spirits Int’l, N.V., 563 F.3d 1347, 90 USPQ2d 1489, 1495 (Fed. Cir.
2009) (holding that the test for materiality incorporates a requirement that a
“significant portion of the relevant consumers be deceived”).
The Examining Attorney argues that SILK is misdescriptive of the goods because
they are not primarily made of silk, consumers are likely to believe the
misdescription, and the misdescription is material because clothing primarily made
of silk is more appealing and desirable. Applicant argues that consumers would
understand the mark NEW SILK ROAD as a reference to the historical Silk Road
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widely known to consumers; the word SILK would not be taken by itself, rather
consumers would perceive the meaning of the unitary whole NEW SILK ROAD. In
support of its position, Applicant submitted an extended excerpt from Wikipedia
describing the Silk Road:2
The Silk Road or Silk Route was an ancient network of
trade routes that were for centuries central to cultural
interaction originally through regions of Eurasia
connecting the East and West and stretching from the
Korean peninsula and Japan to the Mediterranean Sea. …
While the term is of modern coinage, the Silk Road derives
its name from the lucrative trade in silk carried out along
its length … Trade on the Silk Road played a significant
role in the development of the civilizations of China, Korea,
Japan, the Indian subcontinent, Persia, Europe, the Horn
of Africa and Arabia, opening long-distance political and
economic relations between the civilizations. Though silk
was certainly the major trade item exported from China,
many other goods were traded, as well as religions,
syncretic philosophies, and various technologies. … In
addition to economic trade, the Silk Road was a route for
cultural trade among the civilizations along its network. …
In June 2014, UNESCO designated the Chang’an-
Tianshan corridor of the Silk Road as a World Heritage
Site.
The Examining Attorney is correct that “[a] mark is deceptive even if only a
portion of the mark is deceptive.” Ex. Att. Br. 6 TTABVUE 10 (citing In re White
Jasmine LLC, 106 USPQ2d 1385, 1391 (TTAB 2013) (WHITE JASMINE deceptive
for tea that did not include white tea)). See also In re Shapely, Inc., 231 USPQ 72
(TTAB 1986) (SILKEASE deceptive for clothing not made of silk). However,

2 March 22, 2018 Response at 5. Citations to the application record refer to the Trademark
Office’s online Trademark Status and Document Retrieval system (TSDR) by date and page
number.
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“[m]isdescriptiveness of a term may be negated by its meaning in the context of the
whole mark inasmuch as the combination is seen together and makes a unitary
impression.” Budge Mfg., 8 USPQ2d at 1261 (citing A.F. Gallun & Sons Corp. v.
Aristocrat Leather Prods., Inc., 135 USPQ 459, 460 (TTAB 1962) (COPY CALF not
descriptive, but rather suggests imitation of calf skin).
Although the word SILK might be misdescriptive of goods not made with silk, we
must consider the term with regard to the mark as a whole. A.F. Gallun v. Aristocrat,
135 USPQ at 460. See also In re Sharky’s Drygoods Co., 23 USPQ2d 1061, 1062 (TTAB
1992) (reversing refusal under Section 2(a) to register PARIS BEACH CLUB because
in context, PARIS is part of an incongruous and humorous phrase, and would not be
understood as the geographic origin of the goods). Even in a Section 2(a) refusal that
narrows the focus on the allegedly deceptive matter, the refusal may not be based on
taking the term out of context when doing so would change its significance in the
mark. In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1748 (TTAB
2016).
We find THE NEW SILK ROAD to be more in the nature of COPY CALF and
PARIS BEACH CLUB in that the term SILK in the phrase NEW SILK ROAD cannot
be separated from the meaning derived from the whole mark NEW SILK ROAD.
While it may be that the “Silk Road derived its name precisely because silk was a
major trade product along such routes” (Ex. Att. Br. 6 TTABVUE 11), the meaning
and commercial impression of the SILK ROAD is not limited to trading in silk
products. The Silk Road is a historical trading route known for trade in many
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products, as well as expanding economic, cultural and technological exchange around
the world. Contrary to the Examining Attorney’s position, the wording NEW SILK
ROAD does “create a distinct, independent meaning, separate and apart from the
significance of its parts.” Ex. Att. 6 TTABVUE 11. Because taking the word SILK out
of context changes the significance of the term, we find that SILK in the mark NEW
SILK ROAD is not deceptively misdescriptive, and the applied-for mark, taken as a
whole, is not deceptive under Section 2(a).
Decision: The refusal to register Applicant’s mark is reversed.