Hammerhouse Designs, LLC

Trademark Trial and Appeal Board

Sep 9, 2016

No. 86224107 (T.T.A.B. Sep. 9, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: September 9, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Hammerhouse Designs, LLC
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Serial No. 86224107
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Lawrence E. Laubscher Jr. of Laubscher Spendlove & Laubscher PC,
for Hammerhouse Designs, LLC.
Tamara Frazier, Trademark Examining Attorney, Law Office 116,
Christine Cooper, Managing Attorney.
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Before Bergsman, Kuczma and Pologeorgis,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Hammerhouse Designs, LLC (“Applicant”) seeks registration on the Principal
Register of the mark for:
Restaurant services in International Class 43.1

1 Application Serial No. 86224107 was filed on March 18, 2014, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b). The mark consists of the stylized words LITTLE
TAVERN SHOPS. “No claim is made to the exclusive right to use TAVERN or SHOPS apart
from the mark as shown.”
Serial No. 86224107
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The Trademark Examining Attorney refused registration of Applicant’s mark
under § 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that the
proposed mark is merely descriptive, and found Applicant’s claim of acquired
distinctiveness under § 2(f), 15 U.S.C. 1052(f), insufficient.
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. Applicant and the Examining Attorney have filed briefs. We
affirm the refusal to register.
I. Descriptiveness
A term is merely descriptive within the meaning of § 2(e)(1) if it immediately
conveys knowledge of a quality, characteristic, function, feature, purpose or use of the
goods with which it is used. In re Chamber of Commerce of the U.S., 675 F.3d 1297,
102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009, 1010 (Fed. Cir. 1987). Whether a particular term is merely descriptive must be
determined not in the abstract, but in relation to the goods for which registration is
sought, the context in which the term is used, and the possible significance that the
term is likely to have to the average prospective purchaser encountering the goods in
the marketplace. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218
(CCPA 1978); In re Phoseon Technology Inc., 103 USPQ2d 1822, 1823 (TTAB 2012).
Registration of the applied-for mark Little Tavern Shops (Stylized) has been
refused on the ground that the components of the applied-for mark are descriptive
and retain their descriptive meanings when combined such that the overall composite
mark is descriptive. Because Little Tavern Shop (Stylized) is a composite mark, the
Serial No. 86224107
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Examining Attorney is permitted to examine the meaning of each component
individually, and then determine whether the mark as a whole is merely descriptive.
See DuoProSS Meditech Corp. v. Inviro Medical Devices Ltd., 695 F3d 1247, 103
USPQ2d 1753, 1758 (Fed. Cir. 2012); In re Oppedahl & Larson LLP, 373 F.3d 1171,
71 USPQ2d 1370, 1372 (Fed. Cir. 2004) (citing In re Nat’l Data Corp., 753 F.2d 1056,
224 USPQ 749 (Fed. Cir. 1985)). In determining whether Applicant’s mark is merely
descriptive, we must consider the mark in its entirety, with a view toward “what the
purchasing public would think when confronted with the mark as a whole.” Cf. In re
Hutchinson Technology Inc., 852 F.2d 552, 7 USPQ2d 1490, 1492 (Fed. Cir. 1988).
The question is not whether someone presented only with the mark could guess
the products or activities listed in the description of goods. Rather, the question is
whether someone who knows what the products or services are will understand the
mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Med.
Devices, Ltd., 103 USPQ2d at 1757 (quoting In re Tower Tech, Inc., 64 USPQ2d 1314,
1316-1317 (TTAB 2002)).
The definition of “little” is “small in size; not big; not large; tiny.”2 The term
“tavern” is “a place where liquors are sold to be consumed on the premises; a public
house for travelers and others; inn.”3 “Shops” means “a retail store, especially a small

2 See Dictionary.com http://dictionary.reference.com/browse/little?r=66 based on the
Random House Dictionary, © Random House, Inc. 2014, attached to Office Action of 6/25/
2014, pp. 5-6.
3 See Dictionary.com http://dictionary.reference.com/browse/tavern?s=t based on the
Random House Dictionary, © Random House, Inc. 2014, attached to Office Action of 6/25/
2014, pp. 9-10.
Serial No. 86224107
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one; a small store or department in a large store selling a specific or select type of
goods.”4 Based on the foregoing, the Examining Attorney concludes that the literal
portion of Applicant’s mark “little tavern shops,” describes the nature, characteristic
and source of its restaurant services, i.e., a little tavern shop featuring restaurant
services.
Applicant notes that according to the dictionary definitions cited by the
Examining Attorney, if the mark were “Little Shops,” a descriptiveness refusal would
have merit. However, Applicant argues that its mark is Little Tavern Shops, with the
addition of the term “tavern” rendering the mark suggestive.5 In support, Applicant
offers that it seeks to replicate the restaurant services sold under the identical mark
in cancelled Registration No. 566135, noting that those restaurants which previously
operated under the stylized LITTLE TAVERN SHOPS mark did not serve liquors;
Applicant intends to use the mark for the same services i.e., it does not intend to sell
liquor at its restaurant. Thus, Applicant concludes that the term “tavern” is arbitrary
as it relates to Applicant’s services, rendering the mark Little Tavern Shops
suggestive rather than descriptive.6

4 See Dictionary.com http://dictionary.reference.com/browse/shops?s=t based on the
Random House Dictionary, © Random House, Inc. 2014, attached to Office Action of 6/25/
2014, pp. 12-13 Office Action dated 6/25/ 2014, pp. 12-13.
5 Appellant’s Brief p. 3 (4 TTABVUE 7).
6 Appellant’s Brief p. 3 (4 TTABVUE 7). Applicant intends to use the applied-for mark for a
restaurant that will not serve liquor for consumption on the premises, seeking to replicate
the restaurant services (which did not serve liquor) provided by the owner of the cancelled
federal registration for the same mark. In footnote 1 of its Brief, Applicant also notes that it
will seek to withdraw the disclaimer of “Tavern.” Inasmuch as a withdrawal of the disclaimer
of “Tavern” will not place the mark in condition for publication, Applicant’s attempt to
disclaim is moot.
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However, the description of Applicant’s services in its application is “restaurant
services.” It is common for restaurants to serve beverages containing liquor and there
is nothing in Applicant’s identification of services that excludes the service of
alcoholic beverages. Thus, when considering the word “tavern” as it relates to
restaurant services, “tavern” is descriptive of a type of restaurant, especially a
restaurant that serves alcoholic drinks.
The additional evidence introduced by the Examining Attorney also shows that
“tavern” is used in a descriptive manner for restaurant services:
● Ramparts Tavern: “A local Alexandria restaurant since 1978….Pair
your meal with wine from our list of over 80 or beer from out list of over
100….”7

● Kaizen Tavern: “Menus … Sushi. Tacos. Cocktails. Located in the Del
Ray neighborhood….”8

● John Strongbow’s Tavern: “At John Strongbow’s Tavern we are proud to
bring history and the arts to life on our [sic] your plate, your tankards,
your chalices, our walls and our stage. We expand the boundaries of the
modern culinary arts by bringing back historic, hand-prepared dishes to
the culinary world. We feature the wonders of the ancient brewing and
wine-making arts….”9

● Gadsby’s Tavern: “…Taverns, like Gadsby’s, provided travelers with
much needed rest, food and drink, ….”10

7 Final Office Action of 8/11/2015, pp. 5-18, http://www.opentable.com/ramparts-tavern
08/11/2015.
8 Final Office Action of 8/11/2015, pp. 19, 26, https://www.facebook.com/pages/KAiZEN-
TAVERN/520416724741160 08/11/2015.
9 Final Office Action of 8/11/2015, pp. 33-34, http:/johnstrongbows.com/menu/ 08/11/2015.
10 Final Office Action of 8/11/2015, p. 36, http://www.gadsbystavernrestaurant.com/html/
history.html 8/11/15.
Serial No. 86224107
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● The Tavern Restaurant: “A Relaxed & Casual Dining
Experience…Extensive Beer & Wine List….”11

The foregoing evidence confirms that businesses having the term “Tavern” in their
names serve food as well as beverages, including alcoholic beverages.
Only where the combination of descriptive terms creates a unitary mark with a
unique, incongruous, or otherwise nondescriptive meaning in relation to the goods
and/or services is the combined mark registrable. See In re Colonial Stores, Inc., 394
F.2d 549, 551, 157 USPQ 382, 384 (CCPA 1968); In re Positec Grp. Ltd., 108 USPQ2d
1161, 1162-63 (TTAB 2013). If the individual components of a mark retain their
descriptive meaning in relation to the services, the combination results in a composite
mark that is itself descriptive and not registrable. In re Phoseon Tech., Inc., 103
USPQ2d at 1823; see, e.g., In re King Koil Licensing Co., 79 USPQ2d 1048, 1052
(TTAB 2006) (holding THE BREATHABLE MATTRESS merely descriptive of beds,
mattresses, box springs, and pillows where the evidence showed that the term
“BREATHABLE” retained its ordinary dictionary meaning when combined with the
term “MATTRESS” and the resulting combination was used in the relevant industry
in a descriptive sense); In re Associated Theatre Clubs Co., 9 USPQ2d 1660, 1663
(TTAB 1988) (holding GROUP SALES BOX OFFICE merely descriptive of theater
ticket sales services, because such wording “is nothing more than a combination of
the two common descriptive terms most applicable to applicant’s services which in
combination achieve no different status but remain a common descriptive compound

11 Final Office Action of 8/11/2015, p. 37, http://www.abingdontavern.com 8/11/2015.
Serial No. 86224107
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expression”). When considering Applicant’s mark as a whole in connection with the
services at issue, Little Tavern Shops (Stylized) would be perceived by consumers as
nothing more than a description of a restaurant serving food and drink, and thus is
merely descriptive of Applicant’s “restaurant services.”
Applicant argues that it applied for “a three word mark, with the words ‘little’ and
‘tavern’ being written above the word ‘shops’ in a larger and different font. In
addition, the bottom of the letter L extends below the word ‘little’ and the top of the
letter T extends above the word ‘tavern’. It is thus a compound mark with a distinctive
appearance.”12
Although the applied-for mark shows the wording in stylized lettering, the
stylization of the lettering in which Applicant’s mark appears does not create a
separate and inherently distinctive commercial impression separate and apart from
the descriptive term Little Tavern Shops. See In re Cordua Rests., Inc., 823 F.3d 594,
118 USPQ2d 1632, 1639-40 (Fed. Cir. 2016); In re Sadoru Grp., Ltd., 105 USPQ2d
1484, 1490 (TTAB 2012); In re Guilford Mills, Inc., 33 USPQ2d 1042, 1044 (TTAB
1994). Thus, we find that the mark as a whole is merely descriptive.
While it is the Board’s policy to resolve doubts in favor of the applicant and allow
a mark to be published, see In re Merrill Lynch, Pierce, Fenner, and Smith Inc., 828
F.2d 1567, 4 USPQ 1141, 1144 (Fed. Cir. 1987); In re Morton-Norwich Products, Inc.,
209 USPQ 791, 791 (TTAB 1981); In re Gourmet Bakers, Inc., 173 USPQ 565, 565

12 Appellant’s Brief p. 2 (4 TTABVUE 6).
Serial No. 86224107
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(TTAB 1972), here, however, there is no such doubt about the descriptiveness of the
applied-for mark.
II. Acquired Distinctiveness
Applicant argues that its stylized mark was previously registered by a different
owner (under Registration Nos. 549509, 566135 and 1733380) and that Applicant
should benefit from the acquired distinctiveness of the mark acquired by the prior
owner.13 More specifically, Applicant states that “[t]hese registrations show that the
mark is capable of acquiring secondary meaning through use. Applicant intends to
re-introduce the LITTLE TAVERN SHOPS brand as demonstrated by the subject
application. Currently, the mark is not in use. However, as a result of its long period
of use, it still has residual secondary meaning, particularly in view of the stylized
appearance of the mark. The residual secondary meaning is sufficient to support
registration on the principal register.”14 However, even if Applicant owned the
registrations it cites, the registrations are no longer active and have been cancelled.
It is well established that a claim of acquired distinctiveness cannot be based on
registrations that are cancelled or expired. See e.g., In re Koninklijke Philips Elecs.
N.V., 112 USPQ2d 1177, 1186 (TTAB 2014); In re BankAmerica Corp., 229 USPQ
852, 853 (TTAB 1986).
Additionally, if the registrations were active, the fact that third-party
registrations exist for marks allegedly similar to Applicant’s mark is not conclusive

13 Appellant’s Brief p. 4 (4 TTABVUE 8).
14 Response to Office Action 12/19/2014.
Serial No. 86224107
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on the issue of descriptiveness. An applied-for mark that is merely descriptive, like
Applicant’s mark, does not become registrable simply because other seemingly
similar marks appear on the register. In re Scholastic Testing Serv., Inc., 196 USPQ
517, 519 (TTAB 1977); Trademark Manual of Examining Procedure §1209.03(a)
(April 2016).
The question of whether a mark is merely descriptive is determined based on the
evidence of record at the time each registration is sought. Each case must be decided
on its own facts and the Board is not bound by prior decisions involving different
records. In re theDot Commc’ns Network LLC , 101 USPQ2d 1062, 1064 (TTAB 2011);
see also In re Nett Designs, Inc., 236 F. 3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001); In re Datapipe, Inc., 111 USPQ2d 1330, 1336 (TTAB 2014). Nonetheless,
when considering the two prior registrations that covered restaurant services,
namely Registration Nos. 566135 and 1733380, which have since been cancelled, the
record indicates that those registrations were based on acquired distinctiveness
under § 2(f), illustrating the descriptive nature of Applicant’s mark.
Lastly, Applicant notes that in the Office Action of June 25, 2014, the Examining
Attorney said that if Applicant’s mark was in use, the application could be amended
to the Supplemental Register. Applicant argues that it has been working toward
opening a restaurant under the applied-for mark, but has not had the funds to
complete the restaurant. If its mark was not refused registration, and not opposed,
Applicant “would have had up to an additional thirty months to begin providing
services under the mark before a registration would issue. 15 U.S.C. § 1051(d)(2).”
Serial No. 86224107
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Thus, Applicant maintains it is effectively being penalized by the descriptiveness
refusal due to its inability to begin using the mark. If the refusal is upheld, Applicant
complains that it may lose the benefit of its filing date as a constructive use date and
thus its priority over any third party seeking to register or use a mark identical or
similar to Applicant’s mark.15 However, a mark in an intent-to-use application under
15 U.S.C. §1051(b), such as Applicant’s mark, is not eligible for registration on the
Supplemental Register until the applicant has submitted an acceptable allegation of
use (i.e., either an amendment to allege use that meets the requirements of 37 C.F.R.
§ 2.76 (b) and (c), or a statement of use that meets the requirements of 37 C.F.R.
§ 2.88 (b) and (c)). 37 C.F.R. §§ 2.47(d), 2.75(b). Because Applicant has not submitted
proof of use of the mark, the mark is not eligible for registration on the Supplemental
Register.
Based on the insufficient evidence, Applicant’s 2(f) claim of acquired
distinctiveness is not acceptable to overcome the 2(e)(1) merely descriptive refusal.

Decision: The refusal to register Applicant’s applied-for mark
under § 2(e)(1) of the Trademark Act is affirmed and Applicant
has not established that the mark has acquired distinctiveness under § 2(f) of the
Trademark Act.

15 Appellant’s Brief p. 4 (4 TTABVUE 8).