Jeff L. Kaplan

Trademark Trial and Appeal Board

Oct 20, 1998

No. 74671277 (T.T.A.B. Oct. 20, 1998)

Paper No. 18
GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB OCT. 20, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Jeff L. Kaplan
________
Serial No. 74/671,277
_______
Jeff L. Kaplan for applicant.
Ronald R. Sussman, Senior Trademark Attorney, Law Office 108,
(David Shallant, Managing Attorney).
_______
Before Hohein, Walters and Wendel, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
An application has been filed by Jeff L. Kaplan to
register the designation "BALLISTIC NYLON" as a trademark for
goods originally identified as "luggage, bags and related
items".1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
the designation "BALLISTIC NYLON," when applied to applicant's
goods, so resembles the mark "BALLISTIC LITE," which is

1 Ser. No. 74/671,277, filed on May 8, 1995, which alleges dates of
first use of March 3, 1991. The term "NYLON" is disclaimed.
Ser. No. 74/671,277
2
registered for "luggage,"2 as to be likely to cause confusion,
mistake or deception. Registration also has been finally refused
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. §2(e)(1),
on the basis that, when used in connection with applicant's
goods, the designation "BALLISTIC NYLON" is at least a merely
descriptive, if not a generic, term for such goods.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusals to
register.
As a preliminary matter, however, there is an issue as
to what goods are properly the subject of the application. In
the first Office Action, applicant was advised with respect to
the original identification of his goods that "[t]he phrase 'bags
and related items' in the identification of goods clause is
unacceptable as indefinite" and that applicant "must amend the
identification to replace this phrase with the generic names of
the goods on which the mark is used, e.g. tote bags, garment bags
for travel." Applicant, in response, requested amendment of the
identification of his goods to "tote bags, garment bags and
luggage".
The Examining Attorney,3 in view of applicant's failure
to specify the type(s) of garment bags, indicated in the second

2 Reg. No. 1,784,138, issued on July 27, 1993, which sets forth dates
of first use of March 31, 1992. The term "LITE" is disclaimed.
3 Although the Trademark Examining Attorney initially in charge of this
case subsequently left the Patent and Trademark Office and the case,
commencing with the issuance of the Office Action which finally
refused registration, has since been handled by the Senior Trademark
Ser. No. 74/671,277
3
Office Action that "the term ’garment bags’ is unacceptable as
indefinite" since such goods "are properly classified in Class 18
if they are ’garment bags for travel’ and in Class 22 if they are
’garment bags for storage.’" As a consequence thereof, the
Examining Attorney suggested, inter alia, that (emphasis added):
If any acceptable substitute specimens
that applicant may submit in response to this
Office Action evidence that the mark is used
to identify finished goods, applicant may
amend the identification to adopt either or
both of the following:
tote bags, garment bag for travel and
luggage (Class 18); [and/or]
garment bags for storage (Class 22).
However, besides noting that adoption of both of the
suggested identifications of goods would require compliance with
the requirements for a combined application, the Examining
Attorney also pointed out that (emphasis added):
Applicant is advised that its recently
submitted unacceptable substitute specimens
evidence that the mark identifies the fabric
of finished goods rather than the finished
goods. Applicant is advised that its
specimens must conform with the
identification of goods clause. Therefore,
depending upon the nature of any acceptable
substitute specimens that applicant may
submit in response to this Office Action, it
may be necessary that applicant amend the
identification of goods clause to indicate
that the mark identifies a textile fabric
from which applicant’s finished goods are
made. ....
We note, however, that amending applicant’s goods so as to
identify them as a textile fabric from which certain finished

Attorney noted above, the term "Examining Attorney" will be used for
ease of reference to each.
Ser. No. 74/671,277
4
goods are made would appear to be impermissible in this case
inasmuch as a textile fabric is clearly beyond the scope of both
the "luggage, bags and related items" set forth in the original
identification and such finished products as the "tote bags,
garment bags and luggage" listed in the first amended
identification.
Trademark Rule 2.71(b) provides in this regard that
"[t]he identification of goods ... may be amended to clarify or
limit the identification, but additions will not be permitted."
Such rule, moreover, has been strictly interpreted. See, e.g.,
In re M. V Et Associes, 21 USPQ2d 1629, 1630 (Comm’r Pats. 1991)
and In re Swen Sonic Corp., 21 USPQ2d 1794, 1795 (Comm’r Pats.
1991). Nevertheless, contrary thereto, the Examining Attorney
offered the further suggestion that (emphasis added):
If any acceptable substitute specimens
that applicant may submit in response to this
Office Action evidence that the mark is used
to identify the textile fabric from which
applicant’s finished goods are made,
applicant may amend the identification to
adopt either or both of the following:
textile fabric sold as a component part
of tote bags, garment bag for travel and
luggage (Class 18); [and/or]
textile fabric sold as a component part
of garment bags for storage (Class 22).
Applicant, in attempting to follow the Examining
Attorney’s guidance, requested the following further amendment in
reply (emphasis added):
Please amend the identification to:
textile fabrics sold as a component part of
tote bags, garment bags for travel and
luggage. Please amend the identification of
Ser. No. 74/671,277
5
finished goods to: tote bags, garment bags
for travel and luggage.
Although the Examining Attorney advised applicant in the third
Office Action that, among other things, "[a]pplicant’s [further]
amendment to the identification of goods clause and substitute
specimens are acceptable," a review of the file shows that, for
reason(s) unknown and without informing applicant, the Patent and
Trademark Office actually amended applicant’s goods to read:
"textile fabric sold as a component part of tote bags, garment
bags for travel and luggage". As noted above, such an
identification is impermissible and it is clear that, while
applicant desires to obtain a registration covering tote bags,
garment bags for travel, luggage, and the textile fabric which is
sold as a component part of the former items, the latter product
is beyond the scope of applicant’s goods as originally identified
and as thereafter twice amended. Applicant’s goods consequently
must be regarded for purposes of this appeal as being limited to
tote bags, garment bags for travel and luggage. We hasten to
point out, however, that irrespective of whether applicant’s
goods were instead to be treated as limited to or including
textile fabric sold as a component part of tote bags, garment
bags for travel and luggage, our decision with respect to the
grounds for refusal would still be that the designation
"BALLISTIC NYLON" is not registrable in light of both Sections
2(d) and 2(e)(1) of the statute.
Turning now to consideration of the refusal under
Section 2(d), applicant asserts that "[c]onsumers of luggage are
Ser. No. 74/671,277
6
’specialized and very discriminating’" since "[t]he average cost
of a piece of quality luggage which Appellant sells is well over
$200.00." Applicant argues, in essence, that in view thereof,
confusion is not likely from contemporaneous use of his
"BALLISTIC NYLON" mark for tote bags, garment bags for travel and
luggage and registrant’s use of its "BALLISTIC LITE" mark for
luggage because (underlining in original):
The Appellant[’]s mark, "BALLISTIC
NYLON[,]" is a unitary term and it is the
unit which creates the commercial impression
upon the customer. The Appellant agrees that
the only difference between the cited
registration, "BALLISTIC LITE[,]" and the
Appellant[’]s mark are the words LITE and
NYLON, BUT it is these two words that create
the source indicator.
The cited registrant sells a product
which uses the term Ballistic Lite. This
simply informs the customer that their
product is very light-weight. It takes a
very careful inspection of the product to
determine what it is made of. It could be
manufactured from: wool, rayon, leather,
polyester, plastic, vinyl, aluminum,
cellulose, ripstock, scotch-guard or
polyurethane.
Appellant[’]s mark is a source
indicator. It tells the smart and
informative customer that the product is
manufactured from nylon. The added term,
Ballistic, indicates a high-tech, strong, and
durable piece of luggage. This mark,
Ballistic Nylon, coined and originated in
1991 differentiates us from our competitors.
Accordingly, applicant urges that because "[t]he
Examining Attorney has not considered the marks in their
entireties in determining whether there is a likelihood of
confusion," the Section 2(d) refusal must be reversed.
Nevertheless, applicant additionally maintains, in light of the
Ser. No. 74/671,277
7
information which he has furnished concerning a variety of third-
party registrations for marks consisting of or containing the
word "BALLISTIC,"4 that:
The word Ballistic by itself is very
descriptive and is a common word .... The
common word should be excluded from the
comparison of the similarity between the two
marks. In doing so, ... the remaining
portion of the two marks will determine the
difference between the marks. ....
We agree with the Examining Attorney, however, that
confusion is likely. While the respective marks must be compared
in their entireties, it is nevertheless the case that, in
articulating reasons for reaching a conclusion on the issue of

4 The information regarding such registrations, we note, was originally
mentioned in a list which was set forth in applicant’s response to the
second Office Action and was reiterated in applicant’s main brief.
The Examining Attorney, in his brief, has objected to such
information, contending that "the registrations were not properly made
of record and should not be considered." As a general proposition, it
is pointed out that a mere listing of information concerning third-
party registrations is insufficient to make the registrations of
record inasmuch as the Board does not take judicial notice of
registrations which reside in the Patent and Trademark Office. See,
e.g., In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974). The proper
procedure for making of record information relating to third-party
registrations is, instead, to submit either a copy of the actual
registrations or the electronic equivalent thereof, i.e., a printout
of each of the registrations which has been taken from the Patent and
Trademark Office’s own computerized database. See, e.g., In re
Consolidated Cigar Corp., 35 USPQ2d 1290, 1292 (TTAB 1995) at n. 3; In
re Smith & Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) at n. 3; and In
re Melville Corp., 18 USPQ2d 1386, 1388-89 (TTAB 1991) at n. 2.
Nevertheless, inasmuch as no objection to the information furnished by
applicant was raised until the Examining Attorney filed his appeal
brief, the objection is considered to have been waived and we have
treated such information as being of record. However, because none of
the third-party registrations (which cover separate registrations of
the mark "BALLISTIC" for "golf clubs," "sportswear," "video games" and
"sunglasses" and registrations of the marks "BALLISTIC BLAST" for
"fireworks" and "BALLISTIC TIPS" for "bullets") is for the goods which
are the same as or closely related to those at issue in this case, the
third-party registrations are of no probative value with respect to
the question of likelihood of confusion other than to show that the
cited registrant’s "BALLISTIC LITE" mark is entitled to a broad scope
of protection since it is the only "BALLISTIC"-formative mark which is
Ser. No. 74/671,277
8
likelihood of confusion, "there is nothing improper in stating
that, for rational reasons, more or less weight has been given to
a particular feature of a mark, provided [that] the ultimate
conclusion rests on consideration of the marks in their
entireties." In re National Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985). For instance, "that a particular
feature is descriptive or generic with respect to the involved
goods ... is one commonly accepted rationale for giving less
weight to a portion of a mark ...." 224 USPQ at 751.
Here, as applicant concedes, the disclaimed term "LITE"
in registrant’s "BALLISTIC LITE" is descriptive of luggage which
is light-weight, while the disclaimed word "NYLON" in applicant’s
"BALLISTIC NYLON" mark, as applicant also admits and the evidence
of record confirms,5 is a generic term for the strong and durable
fabric from which tote bags, garment bags for travel and luggage
may be made and thus is descriptive of such goods. We concur,

registered in the field of luggage, tote bags and garment bags for
travel.
5 In addition, we judicially notice that The Random House Dictionary of
the English Language (2d ed. 1987) at 1333 defines "nylon" as "any of
a class of thermoplastic polyamides capable of extrusion when molten
into fibers, sheets, etc., of extreme toughness, strength, and
elasticity, synthesized by the interaction of a dicarboxylic acid with
a diamine: used esp. for yarn, fabrics, and bristles, as for brushes.
.... [1938; coined as a generic by the du Pont Chemical Co. as
distinct from known words and having no prior meaning or use ....]"
Similarly, The American Heritage Dictionary of the English Language
(3d ed. 1992) at 1244 defines "nylon" as "1.a. any of a family of
high-strength, resilient synthetic polymers, the molecules of which
contain the recurring amide group CONH. b. Cloth or yarn made from
one of these synthetic materials. .... [Coined by its inventors,
E.I. Du Pont de Nemours and Co., Inc.]" It is settled that the Board
may properly take judicial notice of dictionary definitions. See,
e.g., Hancock v. American Steel & Wire Co. of New Jersey, 203 F.2d
737, 97 USPQ 330, 332 (CCPA 1953) and University of Notre Dame du Lac
v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser. No. 74/671,277
9
therefore, with the Examining Attorney that, in light of the
clearly descriptive significance of the words "LITE" and "NYLON,"
it is the term "BALLISTIC" which principally serves as the
dominant element in each of the respective marks when such marks
are considered in their entireties. Clearly, as respectively
used in connection with luggage and goods which are so closely
related thereto as tote bags and garment bags for travel, the
marks "BALLISTIC LITE" and "BALLISTIC NYLON" project
substantially the same overall commercial impression. Thus, even
if purchasers and prospective customers were to notice the
differences in the marks, it would still be reasonable for them
to believe mistakenly that applicant’s "BALLISTIC NYLON" luggage,
tote bags and garment bags for travel constitute a more durable
or stronger line of products which emanate from or are affiliated
with or sponsored by the same source as registrant’s light-weight
"BALLISTIC LITE" luggage.
Turning next to the refusal under Section 2(e)(1),
applicant contends that he "originated and coined the term,
’BALLISTIC NYLON’." In particular, applicant insists that
(underlining in original):
The Examining Attorney has based his
decision only on a Lexis/Nexis database and
by the introduction of various catalogs and
advertisements as shown in the Office
Actions. While there have been some uses of
Ballistic Nylon in ads and articles, the
great majority of those ads and articles are
mentioning a product that was coined and
originated by the Appellant, and the fact
that Appellant originated a new industry.
Largely, it appears that the media and
various companies have misused or are making
a play on Appellant[’]s mark. ....
Appellant has sent letters to various
Ser. No. 74/671,277
10
companies informing them of our use of our
mark. The Appellant also points out that
none of the companies that have received this
letter have ever filed for a trademark
registration under the Ballistic Nylon mark.
Applicant, however, has submitted only a single, dated sample of
his asserted attempts to police his claim of rights in the
designation "BALLISTIC NYLON".6 Moreover, while applicant, in an
attempt to counter the Examining Attorney’s evidence, has
furnished excerpts from several publications to support his
argument that "there is no such type of manufactured nylon called
Ballistic Nylon," the excerpts are lacking in probative value
inasmuch as all but one is undated and the one which is dated
fails to provide any pertinent information.7

6 Such example consists of a June 3, 1992 letter, signed by applicant
as "Pres." of "Travel-Wear Inc.," which is addressed to "Samsonite
Corporation" and states, in relevant part, that:
Please be advised that the mark, "BALLISTIC NYLON[,]"
is the trademark used by our company to describe our line
of luggage and bags.
This mark has been in use since May of 1991 ....
Please advice [sic] your advertising department as
well as corporate officers of our claim.
7 Specifically, while the designation is not listed in what applicant
claims are excerpts from such publications as "The Modern Textile
Dictionary," "Encyclopedia Americana--Deluxe Library Edition,"
"FairChild’s Dictionary of Textiles" and "Introductory Textile
Science," no copyright page or other source of information has been
provided to support applicant’s contention that the evidence
constitutes "a recent glossary of all names used in the textile
industry" (underlining in original) or is otherwise reasonably
current. The sole excerpt for which a date of publication can be
found, namely, pages from the Consumers’ Guide to PRODUCT GRADES and
TERMS (1993), does not include any page(s) on which a listing of the
designation "BALLISTIC NYLON" would be expected to be found and, in
any event, contains the following "disclaimer": "While every effort
has been made to ensure the reliability of the information presented
in this publication, Gale Research Inc. does not guarantee the
accuracy of the data contained herein."
Ser. No. 74/671,277
11
Applicant additionally maintains that, while he "agrees
that the two word[s], ’BALLISTIC’ and ’NYLON[,]’ by themselves
are descriptive," the "composite term, ’BALLISTIC NYLON[,]’ is
... a highly suggestive term." According to applicant, "[s]imply
because a mark imparts information about the physical
characteristics of the goods does not render it incapable of
function[ing] as a trademark" and that any doubt on the issue of
mere descriptiveness should be resolved, in accordance with the
Board’s practice, in applicant’s favor.
The Examining Attorney, on the other hand, correctly
notes that "[a] term which describes a characteristic ... or
feature of a product is considered merely descriptive of the
product itself." In the present case, the Examining Attorney
maintains that "[t]he evidence of record indicates that
’ballistic nylon’ is a common descriptive term for a particular
type of fabric which is used in the manufacture of luggage."
Inasmuch as the specimens of use furnished by applicant "clearly
show that applicant’s goods are made of ballistic nylon," the
Examining Attorney concludes that the designation "BALLISTIC
NYLON" merely describes a characteristic or feature thereof,
namely, the fabric or material from which applicant’s tote bags,
garment bags for travel and luggage are made.
Specifically, the Examining Attorney points out that
one of the hang tags submitted by applicant touts "BALLISTIC
NYLON" as one of the listed features of applicant’s luggage.8

8 Such features also include: "HEAVY DUTY WATERPROOF," "EXPANDIBLE
CAPACITY," "LARGE ORGANIZER POCKET," "KEY KEEPER," "LEATHER CARRY
Ser. No. 74/671,277
12
The Examining Attorney also accurately observes that "the same is
true for the three-fold tag for the ’Portfolio Collection’ ...,
which uses ’BALLISTIC NYLON’ in a generic manner on the first
inside page," and "in the same type style and font," as such
other generically described features or characteristics as "Top
Grain Leather" and "Heavy Nylon Zipper".
Furthermore, while conceding that "applicant cannot
control the media’s use of the term ’ballistic nylon,’" the
Examining Attorney nevertheless contends that "the media’s use of
a term is evidence of the meaning of that term as understood by
its readers." The Examining Attorney, in particular, notes that
the record contains evidence extracted from the "LEXIS/NEXIS"
database, a catalog, and Internet website advertisements which
"clearly shows that not only is ’ballistic nylon’ understood in
the trade as a generic term for a type of fabric commonly used in
the manufacture of luggage, but [it is so] ... understood by
consumers of luggage as well since manufacturers tout the fact
that their goods are made from ballistic nylon" and "would be
unlikely to do this if they believed consumers were unaware of
the meaning of the term."
In this regard, the following "LEXIS/NEXIS" excerpts
are representative and plainly demonstrate, with but one possible
exception in which the term "ballistic" is initially capitalized,
that the designation "BALLISTIC NYLON" is used to signify a

HANDLE," "PADDED SHOULDER STRAP," "LARGE FRONT POCKET," "LARGE REAR
POCKET" and "SELF HEALING ZIPPER".
Ser. No. 74/671,277
13
category, class or type of fabric from which luggage, tote bags
and travel garment bags are made (emphasis added):
"Then there’s DKNY’s ankle boot made out
of ballistic nylon (the nylon used in
luggage) for $98." -- San Francisco Examiner,
December 14, 1995, Style, at B-3;
"Tumi’s new Wheel-A-Way suitcases are
full-size soft-sided ballistic nylon luggage
...." -- Chicago Tribune, October 25, 1995,
Travel, at 12;
"Size is critical if you want to carry
your garment bag on the plane. Four-suiters
can be as bulky as suitcases. The most
durable of the bags are made of ballistic
nylon, once used as a cover for bulletproof
vests. Prices for good garment bags range
from $150 to $460." -- Chicago Tribune,
December 20, 1992, Travel, at 2);
"Free-standing ballistic nylon and
leather garment bag (right) that unzips to a
hanging three-suiter with wrinkle-reducing
interlinings and organizers, $525." -- N.Y.
Times, October 25, 1992, §6, at 52, col. 1;
"Today's luggage may be made of molded
plastics and ballistic nylon, while
yesteryear's was wood and wool, but the
questions remain essentially the same: Is
hard luggage preferable to soft? ...." --
Houston Chronicle, September 22, 1991,
Travel, at 1 (article headlined: "THE LATEST
ON LUGGAGE: AN OPEN AND SHUT CASE");
"All of the bags are made from 1050
denier Ballistic nylon, which is one of the
strongest luggage fabrics available today."
-- ASAP, March 1991, at 78; and
"Another durable luggage material
recommended for frequent travelers is what
the luggage trade calls 'ballistic nylon.'
This long-lasting, tightly woven fabric used
to make bulletproof vests is a good bet ...."
-- The Record, January 14, 1990, Travel, at
T13.
Ser. No. 74/671,277
14
The catalog excerpt and Internet advertising made of
record similarly show that, for the most part, the designation
"BALLISTIC NYLON" is used in a generic manner to indicate the
fabric or material from which a variety of luggage items are
made. Representative examples are reproduced below (emphasis
added):
"OUR EXCLUSIVE TRAVELLER’S EDGE3
BALLISTIC LUGGAGE was uniquely designed to
meet our own rigid specifications and
incorporate all the features that we know
travellers demand. The first thing you’ll
notice is their exterior--attractive, of
course, but also exceptionally durable.
That’s because they’re made with a 2500
denier ballistic nylon that’s similar to the
material in bullet-proof vests, unlike other
luggage brands that use a lower quality
polyester/nylon. ...." -- United Airlines
High Street Emporium, Spring 1996, at 16;
"Through innovative design and unequaled
quality, Travelpro remains the number one
luggage of the professional traveler.
PLATINUM SERIES .... Great for business or
leisure travel. Features a removable suit
compartment. Made of ballistic nylon with
leather padded handles. ...." -- http://-
www.innovationluggage.com/p0000025.htm, as of
April 17, 1997 (but last modified on January
2, 1997);
"... CorduraR and Ballistic nylon have
revolutionized the luggage industry. In the
12 years or so that this luggage has been in
existence, I have seen only a very few pieces
of this luggage come into our repair center.
Why would you insult many of your readers who
have bought ballistic nylon luggage for its
wear, and not for its ability to withstand an
attack? The benefits of ballistic nylon
luggage have clearly proven over the years."
-- http://www.llgma.com/consumer/retail.html,
as of April 17, 1997 (© 1997; letter to
Luggage & Leather Goods Manufacturers of
America, Inc. entitled "RETAILER SPEAKOUT:
Ser. No. 74/671,277
15
THE MERITS OF PURCHASING QUALITY LUGGAGE");
and
"Be sure to visit our luggage store:
Excess Baggage for information regarding
great deals on luggage ... and our complete
line of business briefs and brief cases.
Find out why these soft sided ballistic nylon
and leather computer briefs are a great
value." .... -- http://www.baggage.com/, as
of April 17, 1997 (© 1996).
It is well settled that a designation is considered to
be merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it immediately describes
an ingredient, quality, characteristic or feature thereof or if
it directly conveys information regarding the nature, function,
purpose or use of the goods or services. See In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). It is not necessary that a designation describe all of
the properties or functions of the goods or services in order for
it to be considered to be merely descriptive thereof; rather, it
is sufficient if the designation describes a significant
attribute or idea about them. Moreover, whether a designation is
merely descriptive is determined not in the abstract but in
relation to the goods or services for which registration is
sought, the context in which it is being used on or in connection
with those goods or services and the possible significance that
the designation would have to the average purchaser of the goods
or services because of the manner of its use. See In re Bright-
Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Consequently,
"[w]hether consumers could guess what the product [or service] is
Ser. No. 74/671,277
16
from consideration of the mark alone is not the test." In re
American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
It is also well established that, in the case of a
generic designation, the burden is on the Patent and Trademark
Office to show the genericness of the designation by "clear
evidence" thereof. See, e.g., In re Merrill Lynch, Pierce,
Fenner & Smith, Inc., supra at 1143. See also In re Gould Paper
Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111 (Fed. Cir. 1987). As
to the standard for evaluating genericness, the Board in In re
Leatherman Tool Group Inc., 32 USPQ2d 1443, 1449 (TTAB 1994),
stated that:
The test for determining whether a
designation is generic, as applied to the
goods [or services] set forth in an
application or registration, turns upon how
the term is perceived by the relevant public.
See Magic Wand Inc. v. RDB Inc., 940 F.2d
638, 19 USPQ2d 1551, 1552-53 (Fed. Cir. 1991)
and cases cited therein at 1553. Such
perception is the primary consideration in a
determination of genericness. See Loglan
Institute Inc. v. Logical Language Group
Inc., 962 F.2d 1038, 22 USPQ2d 1531, 1532
(Fed. Cir. 1992). As Section 14(3) of the
Trademark Act, 15 U.S.C. §1064(3), makes
clear, "[a] ... mark shall not be deemed to
be the generic name of goods [or services]
solely because such mark is also used as a
name to identify a unique product [or
service]"; instead, "[t]he primary
significance of the ... mark to the relevant
public rather than purchaser motivation shall
be the test for determining whether the ...
mark [is or] has become the generic name of
the goods [or service] on or in connection
with which it has been used." Consequently,
if the designation sought to be registered is
understood by the relevant public primarily
to refer to the class or genus of goods [or
services] at issue, the term is generic. See
H. Marvin Ginn Corp. v. International
Association of Fire Chiefs, Inc., [728 F.2d
987, 228 USPQ 528, 530 (Fed. Cir. 1986)] ....
Ser. No. 74/671,277
17
Evidence of the relevant public’s
understanding of a term may be obtained from
any competent source, including newspapers,
magazines, dictionaries, catalogs and other
publications. See In re Northland Aluminum
Products, Inc., 777 F.2d 1566, 227 USPQ 961,
963 (Fed. Cir. 1985).
Upon careful consideration of the entire record, we
agree with the Examining Attorney that the designation "BALLISTIC
NYLON" is a generic term for a type of textile fabric or material
which is used, inter alia, in the manufacture of luggage, tote
bags and garment bags for travel. While we are mindful of
applicant’s contentions that he coined and originated such term,
that he created a new industry and that the media and various
companies have misused or otherwise made a play on the name, we
find that virtually all of the "LEXIS/NEXIS" excerpts clearly
demonstrate that the designation "BALLISTIC NYLON" primarily
signifies, to those in the luggage, tote bag and travel garment
bag field and to customers for such products, a particular kind
of fabric or textile material from which the products are
principally made. In fact, it is especially notable that, more
than one year prior to applicant’s claimed date of first use of
such designation for his goods, one of "LEXIS/NEXIS" excerpts
generically refers to "BALLISTIC NYLON" as the name utilized by
"the luggage trade" for a "durable luggage material". The
catalog and Internet advertising excerpts likewise show, for the
most part, that the designation "BALLISTIC NYLON" primarily
signifies a durable fabric or material from which luggage and
other travel bags are fabricated. In addition, applicant’s own
specimens of use plainly utilize the designation "BALLISTIC
Ser. No. 74/671,277
18
NYLON" in a generic fashion to indicate the kind of material from
which applicant’s goods are constructed.
On the whole, therefore, it is clear from the
evidentiary record that, to members of the relevant public,
including producers of luggage and travel bags as well as
ordinary consumers of such products, the designation "BALLISTIC
NYLON" generically names the fabric or material used in
applicant’s tote bags, garment bags for travel and luggage. As
such, the designation "BALLISTIC NYLON" immediately describes,
without speculation or conjecture, a significant characteristic
or feature of applicant’s goods and appears, in fact, to
designate a category or class of luggage and related travel bags
which are constructed by a variety of manufacturers from the
textile fabric or material commonly known as ballistic nylon.
In reaching this conclusion, we have not ignored or
disregarded the claimed attempts by applicant to police its
asserted rights. The lone letter submitted by applicant as
evidence of such efforts, however, makes no demand that the
recipient cease and desist from use of the designation "BALLISTIC
NYLON," nor does it otherwise seek to assert control over the
nature and quality of the goods marketed under the designation by
offering to discuss arrangements for acquiring a license from
applicant to use such term. Applicant’s assertions of
proprietary rights, as demonstrated by single letter which is
over five years old, are simply outweighed by the fact that
virtually all of the "LEXIS/NEXIS," catalog and Internet
advertising excerpts readily and unambiguously demonstrate
Ser. No. 74/671,277
19
generic rather than proprietary usages of the "BALLISTIC NYLON"
designation. This case is thus unlike the situation in Merrill
Lynch, supra at 1143-44, which presented a mixture of uses which
our principal reviewing court found to be so indeterminate as to
be insufficient proof of genericness. The record herein,
instead, satisfactorily establishes that, to the relevant public,
the designation "BALLISTIC NYLON" primarily means or signifies a
type or kind of textile fabric or material from which luggage,
tote bags and garment travel bags are commonly made and thus, at
the very least, the designation conveys forthwith a significant
feature or characteristic--if not naming a category or class--of
such products.
Furthermore, even if, as applicant insists, he was the
first person to utilize the "BALLISTIC NYLON" designation in
connection with tote bags, garment bags for travel and luggage,
such fact is simply not dispositive where, as here, the
evidentiary record clearly shows that the designation
unequivocally projects a merely descriptive, if not a generic,
connotation. See, e.g., In re MBAssociates, 180 USPQ 338, 339
(TTAB 1973). Finally, the fact that none of the reference works
cited by applicant lists "BALLISTIC NYLON" as a textile fabric or
fiber is not controlling on the issue of descriptiveness where,
as here, the Examining Attorney has shown by competent evidence
that such designation has a well understood and recognized
meaning as both a type or kind of durable material from which
luggage, tote bags and garment bags for travel are constructed
and a class or category of products made from such material.
Ser. No. 74/671,277
20
See, e.g., In re Gould Paper Corp., supra at 1112 ["SCREENWIPE"
for a "premoistened, antistatic cloth for cleaning computer and
television screens" found incapable of being registered]; In re
Pharmaceutical Innovations, Inc., 217 USPQ 365, 367 (TTAB 1983)
["ULTRA/PHONIC" for "diagnostic ultra sound conductivity or
scanning gel" held merely descriptive]; and In re Orleans Wines,
Ltd., 196 USPQ 516, 517 (TTAB 1977) ["BREADSPRED" for "jellies
and jams" held merely descriptive].
Decision: The refusals under Sections 2(d) and 2(e)(1)
are affirmed.
G. D. Hohein
C. E. Walters
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board