L-7 Designs, Inc.

Trademark Trial and Appeal Board

Aug 16, 2006

No. 76562232 (T.T.A.B. Aug. 16, 2006)

Mailed: August 16, 2006
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re L-7 Designs, Inc.
________

Serial No. 76562232
_______

Dara L. Onofrio of Onofrio Law for L-7 Designs, Inc.

Mitchell Front, Trademark Examining Attorney, Law Office 111
(Craig D. Taylor, Managing Attorney).
_______

Before Hohein, Hairston and Holtzman, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

L-7 Designs, Inc. has filed an application to register
on the Principal Register in standard character form the term
"HANDMADE MODERN" for "kits for making furniture comprised
primarily of unfinished or finished wood; metal composites or
metal pieces; [and] foam, plastic, fabric or self stick veneers,
namely[,] kits for making tables, kits for making table tops and
kits for making bookshelves" in International Class 20.1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the

1 Ser. No. 76562232, filed on November 28, 2003, which is based on an
allegation of a bona fide intention to use such term in commerce.

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser. No. 76562232
2
ground that, when used in connection with applicant's goods, the
term "HANDMADE MODERN" is merely descriptive thereof.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it forthwith conveys
information concerning any significant ingredient, quality,
characteristic, feature, function, purpose, subject matter or use
of the goods or services. See, e.g., In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987); and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). It is not necessary that a term 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 term describes a significant attribute or idea
about them. Moreover, whether a term 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 or is intended to be used on or in connection
with those goods or services and the possible significance that
the term would have to the average purchaser of the goods or
services because of the manner of such use. See In re Bright-
Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Thus, "[w]hether
consumers could guess what the product [or service] is from
Ser. No. 76562232
3
consideration of the mark alone is not the test." In re American
Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Applicant, in its brief, argues among other things that
the Examining Attorney has "improperly dissected the Applicant's
mark and accorded undue weight to the individual word elements of
HANDMADE MODERN" instead of considering such term as a whole.
Noting, in addition, that the Examining Attorney "has only
submitted evidence demonstrating that the terms, 'HANDMADE' and
MODERN[,]' are descriptive when viewed individually, not in
combination," applicant contends that:
Applicant's mark when viewed in its
entirety, including composite terms, conveys
a distinct commercial impression that is only
suggestive of the products. It is well
established that a non-descriptive mark can
result from the combination of two or more
descriptive terms if it conveys a distinct
commercial impression. See In re Colonial
Stores, Inc., 394 F.2d 549, 157 USPQ 382
(C.C.P.A. 1968) (SUGAR & SPICE held not
merely descriptive of bakery products); In re
TBG Inc., 229 USPQ 759 (TTAB 1986) (SHOWROOM
ON LINE held not merely descriptive of
computerized interior furnishings product
information service); In re Shutts, 217 USPQ
363 (TTAB 1983) (SNO-RAKE held not merely
descriptive of a snow removal hand tool).

HANDMADE MODERN when viewed in its
entirety conveys an original commercial
impression that is merely suggestive of the
goods.

Citing a definition of "modern" which it made of
record, applicant further argues that:
The Merriam-Webster Online Dictionary at
www.merrianwebster.com contains the following
definition:

Modern: 1a: of, relating to, or
characteristic of the present or the
Ser. No. 76562232
4
immediate past: CONTEMPORARY. 1b: of,
relating to, or characteristic of a
period extending from a relevant remote
past to the present time. 2: involving
recent techniques, methods, or ideas:
UP-TO-DATE. 3: capitalized: of,
relating to, or having the
characteristics of the present or most
recent period of development of a
language. 4: of or relating to
modernism: MODERNIST.

The definitions of the term MODERN ...
are not specifically meant to be
"descriptive" in relation to kits for making
furniture. Moreover, these "do it yourself"
kits will include items such as wood veneer
applied to furniture, contact paper applied
as decorative surface elements, resin powder,
elements to construct small furniture or home
furnishing accessories, textile printing kits
and kits to use in conjunction with computers
for printing fabric designs. Consequently,
the word modern in conjunction with the
described items does not "naturally direct
attention to the purpose or function of the
product." Zatarain's, Inc. v. Oak Grove
Smokehouse, Inc., 698 F.2d 786 (5th Cir.
1983).

When examining the terms together, ...
"HANDMADE MODERN" the phrase as a whole is
"suggestive" not descriptive of the types of
goods ... because it "requires the consumer
to exercise imagination in order to draw a
conclusion as to the nature of the goods and
services". Zatarain's, Inc. v. Oak Grove
Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983)
....

The entire mark "HANDMADE MODERN" does
not automatically cause one to conclude that
the nature of the goods consists of kits to
build furniture and thus it is a suggestive
mark. Moreover, HANDMADE MODERN could just
as easily convey or be "suggestive" of
specialty clothing or pottery.

Noting, in addition, that "[a]nother test to measure
the descriptiveness of an item analyzes the extent to which a
Ser. No. 76562232
5
term has been used by others who are marketing similar products,"
applicant contends that:
A search of the [I]nternet revealed that the
term "HANDMADE MODERN" is not used by others
to market kits for building furniture.
Instead, the term was occasionally used to
describe jewelry and rugs. Since others have
not used the same term to market similar
products[,] it can be concluded that HANDMADE
MODERN is not descriptive.

Furthermore, the TTAB [in TBG] has held
that an Examiner's failure to cite any third-
party uses of a mark rejected for being
"merely descriptive" can support an
applicant's argument that the mark has no
immediate, obvious meaning in relation to its
services. ....

Applicant also asserts that the furniture made from its
kits is more properly or accurately described as "retro" in
character and style rather than "modern," pointing out that:
In March 2005, the book HANDMADE MODERN:
MID-CENTURY INSPIRED PROJECTS FOR YOUR HOME
... by the Applicant, L-7 Designs, Inc.
([Author:] Todd Oldham)[,] was published.
The HANDMADE MODERN kits take inspiration
from the projects described in this book.

In fact, the term ["]modern["] does not
describe the spectrum of projects in the
book. For example, the Corduroy Ottoman ...,
Storage Bench ... and the Thrifty Throne ...
are more adequately described as "retro" in
style and character. The Merriam Webster
Online Dictionary defines ["]retro["] as:
"relating to, reviving, or being the styles
and especially the fashions of the past:
fashionably nostalgic or old-fashioned" ....
Since the kits take inspiration from the
retro projects of Applicant's book, the term
["]modern["] does not necessarily describe
the goods.

Lastly, applicant urges that because "furniture can
often include the word modern, the wording MODERN in the mark
Ser. No. 76562232
6
does not adequately identify the Applicant's goods with any one
degree of particularity." The term "HANDMADE MODERN," applicant
insists, "requires the customer to use thought, imagination, and
extrapolation, and thus is suggestive" of its kits for making
furniture.
The Examining Attorney, on the other hand, argues that
the term "HANDMADE MODERN, taken as a whole, merely describes a
feature, characteristic and quality of the applicant's kits for
making furniture." As the Examining notes, the definition which
he made of record from The American Heritage Dictionary of the
English Language (3rd ed. 1992) defines the term "handmade" as
meaning "made or prepared by hand rather than by machine."
Therefore, he maintains, "[c]onsumers who purchase the
applicant's kits will be constructing tables and bookshelves by
hand," which "will result in a handmade piece of furniture"
(italics in original). The Examining Attorney also contends that
"applicant's kits will feature designs based on modern furniture"
(italics in original), pointing out that the "attached excerpts
of 20 stories taken from the LEXIS/NEXIS computer database,"
which he made of record, demonstrate that "the term 'modern' is
commonly used to refer to a style of furniture." The following
excerpts are illustrative (emphasis added):
"'[I]t doesn't take a lot of money to
buy good design,' says Roberts, the owner of
Zeitgeist Modern Furniture Classics in
Denver. ....
....
Midcentury [sic] modern furniture, from
the 1940s through the 1960s, is what makes
Dave and Yvonne Steers most comfortable. The
look suits their 1955 Denver house." -- Sun-
Ser. No. 76562232
7
Sentinel (Fort Lauderdale, FL), June 11, 2004
(article headlined: "EXPERTS SAY GOOD
FURNITURE IS TIMELESS");

"... manufacturers cut corners, rattan
starts to look ratty and is soon surpassed in
popularity by plywood and molded fiberglass
modern furniture." -- Los Angeles Times, June
10, 2004;

"Ted Boerner, ... a modern furniture
designer based in San Francisco, has opened a
New York showroom ...." -- New York Times,
June 10, 2004;

These guys are the fathers of the modern
furniture movement, and ... owner Carl
Tranghese has stocked his store with their
distinctive sofas, chairs, tables, and
bureaus." -- Boston Globe, June 6, 2004;

"The retro-style barbershop is a
contrast to the stylish and ever-changing
Plaza Lounge and Café next door, which has
modern furniture and trendy drinks like
mojitos." -- Newsday (New York, NY), June 6,
2004;

"'If you're doing a plain polka dot, it
brings a more youthful, fun look to modern
furniture,' advises Becky Bishop Hill, owner
of New Metropolis, a contemporary furniture
and accessories store in Winter Park." --
Orlando Sentinel (Florida), June 6, 2004;

"In that way, if you live in a
traditional house but have a few pieces of
Modern furniture and you want a more
contemporary feeling, her fabrics, as well as
lighting, can pull it all together, she
adds." -- Biloxi Sun Herald, June 5, 2004,
and Chicago Tribune, May 30, 2004;

"The company's heritage was rich, its
reputation as an innovative manufacturer of
modern furniture secure, but, when Lynch took
over in 1994, the company was widely
recognized as mismanaged ...." -- Union
Leader (Manchester, NH), May 23, 2004;

"The accent is on textures with a blend
of European and Scandinavian modern
furniture, seen in the living room's custom
Ser. No. 76562232
8
wood pieces ...." -- Sarasota Harold-Tribune
(Florida), May 2, 2004;

"Modern furniture dominates this room, a
highlight being a womb chair by early
Modernist designer Eero Sarinen." --
Baltimore Sun, April 25, 2004;

"Robert Bruce Thomas creates pieces of
upscale modern furniture so hip they're
admired by art thieves." -- Richmond Times
Dispatch (Virginia), March 15, 2004; and

"The home is furnished with appropriate-
to-the-era mid-century modern furniture,
which is negotiable with the sale." --Detroit
News, February 6, 2004 (article headlined in
part: "Modernist house fulfills its
promise").

With respect to the book referenced by applicant, the
Examining Attorney observes that such book "contains 52 home
projects" and, after noting applicant's previously mentioned
statement that its "HANDMADE MODERN furniture kits 'take
inspiration from the projects described in this book,'" points
out that (italics in originals):
In a forward section of the book, the
author ... makes clear that the projects in
the book are based on modern design. The
author states:

I've always admired the modern
aesthetic in design. But it's
interesting to me how design has strayed
so far away from the roots of true
modernism, which always combined hand-
kissed sensibilities with technology and
automation. Sadly, most people have
come to think of modernism as cold or
sterile or antiseptic or wildly
uncomfortable--or all of the above. But
it's really not that way at all.
Modernism can be every bit as warm and
decorative and wonderfully cozy (not to
mention unimpeachably pretty) as the
most traditional overstuffed bergere--or
fully feathered nest.
Ser. No. 76562232
9

With this book, we've accented the
aspects that keep modernism warm and
vital, always emphasizing the handmade
in Handmade Modern ....

.... This page of the book was ...
attached as evidence. This statement makes
clear that the applicant is emphasizing
modern design principles for its projects.
If the applicant's kits are to be based on
the projects contained in this book, then the
kits will clearly feature modern designs.
Furthermore, in the above statement, the
applicant places great emphasis on the fact
that such projects will be handmade.

Based upon such evidence, the Examining Attorney
concludes that not only are the words "HANDMADE" and "MODERN,"
when used in connection with applicant's goods, respectively
descriptive of kits for making furniture which is made by hand
and is modern in style, but the combined term "HANDMADE MODERN"
likewise merely describes kits for making modern furniture by
hand. While acknowledging that applicant correctly asserts that
"a mark that combines descriptive terms may be registrable if the
composite creates a unitary mark with a separate, nondescriptive
meaning," the Examining Attorney properly adds, however, that "if
each component retains its descriptive significance in relation
to the goods or services, the combination results in a composite
that is itself descriptive." See, e.g., In re Putnam Publishing
Co., 39 USPQ2d 2021, 2022 (TTAB 1996) [term "FOOD & BEVERAGE ON-
LINE" found merely descriptive of news and information service
for the food processing industry]; and In re Entenmann's Inc., 15
USPQ2d 1750, 1751 (TTAB 1990) [term "OATNUT" held merely
descriptive of bread containing oats and hazelnuts]. Here, the
Ser. No. 76562232
10
Examining Attorney insists, "the wording handmade and modern both
retain their descriptive significance as applied to the goods"
inasmuch as applicant's "kits will be used to make modern-
inspired furniture pieces by hand" (italics in original).
Applicant's argument that the word "modern" is "not specifically
meant to be 'descriptive in relation to the kits for making
furniture" is "not persuasive," according to the Examining
Attorney, because the evidence demonstrates that "the term modern
has a specific meaning in the context of the goods" (italics in
original). Thus, as the Examining Attorney correctly observes,
"[t]he fact that a term may have different meanings in other
contexts is not controlling on the question of [mere]
descriptiveness." See, e.g., In re Chopper Industries, 222 USPQ
258, 259 (TTAB 1984); In re Bright-Crest, Ltd., supra; and In re
Champion International Corp., 183 USPQ 318, 320 (TTAB 1974).
Upon consideration of the arguments and evidence
presented, we agree with the Examining Attorney that the term
"HANDMADE MODERN" is merely descriptive of applicant's goods.
Such term immediately conveys, without the need for speculation,
imagination or conjecture, that a significant feature or
characteristic of applicant's "kits for making furniture" is that
they permit the purchaser thereof to assemble a piece of modern
style furniture which is made by hand. Plainly, when viewed in
the context of applicant's goods, there is nothing in the term
"HANDMADE MODERN" which is incongruous, ambiguous or even
suggestive, nor is there anything which would necessitate the
gathering of further information, in order for the merely
Ser. No. 76562232
11
descriptive significance thereof to be readily apparent to
consumers of applicant's goods. Instead, such term merely
describes, with the requisite particularity, two significant
features or characteristics of applicant's goods, namely, that
its kits are for making Danish, Scandinavian or other modern
styles of furniture by hand. See, e.g., In re Entenmann's Inc.,
supra ["term OATNUT readily informs purchasers, with the required
degree of particularity, of two not inconsequential ingredients
in applicant's bread"]. Finally, as the Examining Attorney has
also properly noted, it is well settled that the fact that
applicant may be or intends to be the first and/or sole user of a
merely descriptive term does not entitle it to registration
thereof where, as here, the evidence of record demonstrates that
the term projects only a merely descriptive significance in the
context of applicant's goods. See, e.g., In re National Shooting
Sports Foundation, Inc., 219 USPQ 1018, 1020 (TTAB 1983); and In
re Mark A. Gould, M.D., 173 USPQ 243, 245 (TTAB 1972).
Decision: The refusal under Section 2(e)(1) is
affirmed.