Joseph A. TabeDownload PDFTrademark Trial and Appeal BoardJul 10, 2015No. 86164579 (T.T.A.B. Jul. 10, 2015) Copy Citation This Opinion is not a Precedent of the TTAB Mailed: July 10, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Joseph A. Tabe _____ Serial Nos. 86163225 and 86164579 _____ Matthew H. Swyers of The Trademark Company PLLC for Joseph A. Tabe. Heather A. Sapp, Trademark Examining Attorney, Law Office 117, Hellen Bryan-Johnson, Managing Attorney. _____ Before Seeherman, Wellington and Wolfson, Administrative Trademark Judges. Opinion by Seeherman, Administrative Trademark Judge: On January 11, 2014, Joseph A. Tabe (“Applicant”), dba Fashion Social Media, filed an application (Serial No. 86163225) to register FASHION SOCIAL MEDIA, in standard characters, for services in Class 35. On January 14, 2014, Applicant, dba Fashion Social Network, filed a second application to register FASHION SOCIAL NETWORK in standard characters (Serial No. 86164579) as a mark for services in Class 35. The following services are identified in both applications: Serial Nos. 86163225 and 86164579 - 2 - Advertising and marketing services provided by means of indirect methods of marketing communications;, [sic] namely, social media, search engine marketing, inquiry marketing, internet marketing, live chat marketing, mobile marketing, blogging, Internet television marketing and other forms of passive, sharable or viral communications channels, providing business information in the field of fashion and fashion social media, providing marketing consulting in the field of fashion and fashion social media, executing social media strategy and marketing consultancy focusing on clients to create and extend their product and brand strategies by building virally engaging marketing solutions, providing a website that displays rankings of fashion topics of information; e.g. models, fashion, dress code, community culture, brands, styles, trends, trending, beauty, photographic images, arts, hair stylists, fashion expressions, expressions, love, the popularity of social happenings based on social media for entertainment and fashion world purposes, providing technology consulting in the field of social media and fashion, online service for connecting social network users with retailers for the purpose of facilitating discounted purchases of fashionable products, providing a website for users with specific informed recommendations of specific consumer products and services validated by the users' inputted preferences and social network, computer services, namely, providing an interactive web site featuring technology that allows users to consolidate and manage centralized fashion and social networks, accounts, and connections to existing and emerging application programming interfaces (APIs), conducting on-line personal lifestyle performance assessments based on principles of emotional happiness by means of the users' inputted preferences and social network, providing fashion education and faith-based devotionals via social networks, organization of fashion education and shows for commercial purposes, entertainment in the nature of fashion shows, entertainment and fashion services, namely, production and distribution of ongoing television programs in the field of fashion, models, dress code, trending, branding, styles, celebrity etc, organization of fashion shows for entertainment and education purposes, production and distribution of videos in the field of education, fashion, clothing, wearable, garments, styles, brands, expressions, modeling, fashion advertisement, retail store services featuring virtual goods, namely, clothing, wearable, fashionable, electronics, digital, imagery for use in online virtual worlds. Personal stylist services, namely, evaluating the physical attributes, lifestyle, lifestyle expression, corporate fashion, casual fashion, cultural fashion, community fashion, and fashion styles of others and recommending Serial Nos. 86163225 and 86164579 - 3 - clothing and accessories to achieve the personal image desired by the client. The latter application for FASHION SOCIAL NETWORK includes the following additional services, also in Class 35: providing a network for fashion show; fashion world show; celebrity fashion media; celebrity model media; fashion world celebrities; dress world media; dress code world media, a platform for fashion social media, a platform for fashion social networking, a platform for discussing fashion topics of information, fashion television broadcasting platform.1 Registration of both applications was refused by the Examining Attorney pursuant to Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that the marks are merely descriptive of the identified services. Applicant appealed the refusals of registration, and filed appeal briefs in each appeal. The Examining Attorney then filed a motion to consolidate the appeals on the basis that both involve common issues of law and fact. The Board consolidated the appeals on May 4, 2015, and the Examining Attorney filed a single brief with respect to both appeals. Applicant did not file a reply brief. We decide both appeals in this single opinion We affirm the refusal with respect to each application. Section 2(e)(1) prohibits the registration of a mark which, when used in connection with the goods of the applicant, is merely descriptive of them. Section 3 1 Application Serial No. 86164579 for FASHION SOCIAL NETWORK is based on Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), and claims first use of the mark as early as June 7, 2010 and first use in commerce as early as May 25, 2012. Application Serial No. 86163225 for FASHION SOCIAL MEDIA is also based on Section 1(a) and claims first use as early as August 7, 2010 and first use in commerce as early as May 25, 2012. Serial Nos. 86163225 and 86164579 - 4 - makes this prohibition applicable to service marks. 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. See, e.g., 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, 1009 (Fed. Cir. 1987). Determining the descriptiveness of a mark is done in relation to an applicant’s identified goods and/or services, the context in which the mark is being used, and the possible significance the mark would have to the average purchaser because of the manner of its use or intended use. See In re Chamber of Commerce of the U.S., 102 USPQ2d at 1219 (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). Descriptiveness of a mark is not considered in the abstract. In re Bayer Aktiengesellschaft, 82 USPQ2d at 1831. 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). With respect to the application for FASHION SOCIAL MEDIA, the Examining Attorney relies on definitions for “fashion” as meaning “a popular trend, especially in styles of dress and ornament or manners of behaviors”2 and for “social media” as “websites and applications that enable users to create and share content or to participate in social networking.”3 When these terms are taken together, as FASHION SOCIAL MEDIA, the Examining Attorney contends that the mark 2 Oxford Dictionaries, www.oxforddictionaries.com, November 25, 2014 Office action, p. 24. 3 Id., p. 2. Serial Nos. 86163225 and 86164579 - 5 - describes a feature and subject matter of the services, namely, websites and applications that enable users to create and share content about the fashion industry or to participate in social networking about the fashion industry. In further support of her position, the Examining Attorney points out that Applicant’s own identification highlights that “social media” is a feature of his services. Many of the services are specifically stated to be provided by means of “social media” or to be in the field of “fashion social media,” for example, “Advertising and marketing services provided by …social media”; “Providing business information in the field of fashion and fashion social media”; Providing marketing consulting in the field of fashion and fashion social media”; “Providing a website that displays ranking of fashion topics of information, e.g., … the popularity of social happenings based on social media for …fashion world purposes; “Providing technology consulting in the field of social media and fashion”; and “Providing fashion education …via social networks.” She also points out that Applicant’s marketing materials describe his services as “a fashion social media network,”4 and as impacting “community awareness through the fashion social media network.”5 These materials also urge potential purchasers/investors, “Let us bring fashion social network and fashion social media to your community as a tool for fashion knowledge sharing and for fashion products distribution.”6 4 Original specimen, filed January 11, 2014, p. 14. 5 Id. at 18. 6 Id. at 28. Serial Nos. 86163225 and 86164579 - 6 - Based on the foregoing, we have no doubt that consumers would immediately understand, upon seeing the mark FASHION SOCIAL MEDIA used in connection with the above highlighted services, that these services relate to the topic of fashion using social media. Accordingly, the mark is merely descriptive of these services. We are not persuaded by Applicant’s arguments that the mark is suggestive. For example, Applicant points out that there are several definitions of “fashion,” including “manner; way; mode” and “to bend (a plate) without preheating.” However, as stated above, the meaning of a term must be considered in relation to the identified services (described, in part, as being “in the field of fashion and fashion social media”), and when used in connection with Applicant’s identified services it is clear that the definition referenced by the Examining Attorney would apply. Applicant poses the questions whether FASHION SOCIAL MEDIA creates “an instant association with fashion shows, educational videos, marketing information, or personal stylist services?” “Or does the term FASHION SOCIAL MEDIA automatically cause a consumer to think of a social networking site?” Brief, 4 TTABVUE 15. Applicant implies, of course, that the answer to these questions is “no.” But to the extent that Applicant contends that to be merely descriptive a mark must immediately tell a consumer what the goods or services are, that is not a correct application of the test. As explained above, descriptiveness of a mark is not considered in the abstract; the question is whether someone who knows what the services or products are will understand the mark immediately to convey Serial Nos. 86163225 and 86164579 - 7 - information about them. Further, to the extent that Applicant contends that the mark must directly convey information about all of the services listed in the identification, that again is not correct. “A mark ‘need not recite each feature of the relevant goods or services in detail to be descriptive,’ it need only describe a single feature or attribute.” Chamber of Commerce, 102 USPQ2d at 1219 (quoting In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001)). Further, “a mark need not be merely descriptive of all recited goods or services in an application. A descriptiveness refusal is proper ‘if the mark is descriptive of any of the [services] for which registration is sought.” Id. (quoting In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087 (Fed. Cir. 2005)). Applicant also relies on several third-party registrations for marks that include the term FASHION for which no disclaimer of FASHION was required. However, many of these marks are unitary terms, either because FASHION is not a separate word, or it is used as part of a slogan, e.g., FASHIONLAB, FASHION.ME, FIRST COMES FASHION; according to examination policy, disclaimer of FASHION would not be required in such circumstances. See TMEP §§ 1213.05; 1213.05(b); 1213.05(b)(i). Accordingly, we affirm the refusal of registration with respect to the mark FASHION SOCIAL MEDIA. We reach the same conclusion for the mark FASHION SOCIAL NETWORK. Much of the evidence submitted by Applicant and the Examining Attorney in connection with this application is the same as that submitted in the FASHION Serial Nos. 86163225 and 86164579 - 8 - SOCIAL MEDIA application, so we need not repeat it here. In addition to the definition of “fashion,” the Examining Attorney has made of record definitions of “social networking”: “The use of dedicated websites and applications to interact with other users, or to find people with similar interests to oneself”;7 “the creation and sharing of information and ideas in online communities accessed via mobile and web-based technologies.8 In addition to the foregoing evidence, we note Applicant’s description of his services in his application as involving a “social network.” See, in particular, “providing fashion education … via social networks” and “a platform for fashion social networking.” In addition, Applicant’s marketing materials use “fashion social network” in a descriptive sense, e.g., his fashion world media and fashion search engine platform encompass a fashion social network.9 Again, we have no doubt that consumers encountering the mark FASHION SOCIAL NETWORK in connection with, for example, the service of “providing fashion education … via social networks” would immediately understand that a major characteristic of the service is to provide information about fashion through a social network. Because the mark immediately and directly conveys information about characteristics of the service, we find that it is merely descriptive. 7 Oxford Dictionaries, www.oxforddictionaries.com, November 25, 2014 Office action, p. 7. 8 Macmillan Dictionary, www.macmillandictionary.com, November 25, 2014 Office action, p. 11. 9 Original specimen, filed January 14, 2014, p. 5. Serial Nos. 86163225 and 86164579 - 9 - Applicant makes the same arguments as it did for FASHION MEDIA NETWORK with respect to why FASHION SOCIAL NETWORK is not merely descriptive; we find these arguments similarly unpersuasive. Decision: The refusals to register Applicant’s marks FASHION MEDIA NETWORK and FASHION SOCIAL NETWORK on the ground that they are merely descriptive of Applicant’s identified services are affirmed. Copy with citationCopy as parenthetical citation