Linda Wolk

Trademark Trial and Appeal Board

Aug 26, 2009

No. 76695415 (T.T.A.B. Aug. 26, 2009)

Mailed: August 26, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Linda Wolk
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Serial No. 76695415
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Myron Amer for Linda Wolk

David H. Stine, Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney)
_______

Before Quinn, Kuhlke and Wellington, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Linda Wolk, applicant, has filed an application to
register the mark T-SKIRT in standard characters on the
Principal Register for “a garment, namely, a skirt, not
made of stretchable cotton fabric” in International Class
25. The application was filed on January 23, 2009, under
Section 1(b) of the Trademark Act, 15 U.S.C. §1052(b),
alleging a bona fide intention to use the proposed mark in
commerce. Applicant has disclaimed the word “skirt.”
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B
Serial No. 76695415
2
The examining attorney has refused registration under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the ground that applicant’s mark is merely
descriptive of its goods. Both applicant and the examining
attorney have filed briefs. We affirm the refusal to
register.
“A mark is merely descriptive if it ‘consist[s] merely
of words descriptive of the qualities, ingredients or
characteristics of’ the goods or services related to the
mark.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 71
USPQ2d 1370, 1371 (Fed. Cir. 2004), quoting, Estate of P.D.
Beckwith, Inc. v. Commissioner, 252 U.S. 538, 543 (1920).
See also In re MBNA America Bank N.A., 340 F.3d 1328, 67
USPQ2d 1778, 1780 (Fed. Cir. 2003). The test for
determining whether a mark is merely descriptive is whether
it immediately conveys information concerning a significant
quality, characteristic, function, ingredient, attribute or
feature of the product or service in connection with which
it is used, or intended to be used. In re Engineering
Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re Bright-
Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not
necessary, in order to find a mark merely descriptive, that
the mark describe each feature of the goods or services,
only that it describe a single, significant ingredient,
Serial No. 76695415
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quality, characteristic, function, feature, purpose or use
of the goods or services. In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987).
Further, it is well-established that the determination
of mere descriptiveness must be made not in the abstract,
but in relation to the goods or services for which
registration is sought, the context in which the mark is
used, and the impact that it is likely to make on the
average purchaser of such goods or services. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA
1978).
The examining attorney argues that “the term ‘t-skirt’
is used in the relevant context to describe or denote a
type or category of garment, namely a skirt-type garment
based on or derived from an oversized t-shirt and/or
produced from a t-shirt. It is clear from applicant’s
generic goods description that applicant’s goods, skirts,
fall within this type or category of goods....” Br. p. 2.
In support of his position, the examining attorney
submitted the following online dictionary definition:
T-SKIRT: 1. a really long T-shirt that extends
below the waistline to just above the knees. T-
skirts are fast becoming a stylin way for young
males to cover up their underwear without
actually having to pull their pants up above
their asses. 2. a skirt fabricated by making
alterations to a t-shirt. 3. a shirt usually
Serial No. 76695415
4
worn by the ‘urban’ type that goes down to, or
past the knee region, this shirt may look more
like a skirt- hence the name. (Urban Dictionary
retrieved on April 6, 2009 from
urbandictionary.com).

In addition, the examining attorney submitted pages
from a website retrieved from the Internet wherein the term
“t-skirt” is used to describe a skirt made from a t-shirt.
An excerpt is set forth below:
I’m starting with this t-skirt – you just need
one t-shirt and some basic sewing ability. (do
stuff! Leethal blog retrieved on April 6, 2009
from leethal.colordlights.net)

Applicant argues that the term “t-skirt” does not
appear in the “Randomhouse [sic] Webster’s College
Dictionary.” Br. p. 3. In addition, applicant argues that
applicant “does not manufacture its product out of tee
shirt material which is stretchable cotton [and] because of
its construction material, i.e. not of stretchable cotton,
different from t-shirts [this] difference...obviates the
likelihood of confusion.”1 Id.
The examining attorney argues in response that “there
is absolutely no evidence that all t-shirts are made of
stretchable cotton fabric; it is deemed quite likely, on
the contrary, that some t-shirts may be made of synthetic

1 Presumably, applicant intended to argue that the difference in
construction material obviates the refusal based on mere
descriptiveness inasmuch as there is no refusal based on
likelihood of confusion under Section 2(d) of the Trademark Act.
Serial No. 76695415
5
or synthetic blend materials, for example, [and t]he
evidence pertaining to the descriptive usage of the term
‘t-skirt’ as a descriptive designation for a type or
category of skirt-type garment makes absolutely no
reference to material composition; i.e., there is no
evidence that failure to be made of ‘stretchable cotton
fabric’ in any way disqualifies a garment from being
considered a ‘t-skirt.’” Br. p. 4. In addition, citing to
In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed.
Cir. 1987), the examining attorney argues that the lack of
a reference to “t-skirt” in a standard dictionary “is not
controlling on the question of registrability.” Id. The
examining attorney also notes that the disclaimer of the
“term ‘skirt’ has no impact here, since the entire
designation ‘t-skirt’ has clear descriptive significance in
the relevant field. If the applied-for mark is not
registrable as a whole, a disclaimer will not make it
regsitrable.” Id.
Based on the evidence of record, the examining
attorney has established prima facie that the term “t-
skirt” is descriptive of applicant’s identified goods “a
garment, namely, a skirt, not made of stretchable cotton
fabric.” Applicant’s arguments do not sufficiently rebut
this showing. In particular, the argument that the
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exclusion of certain fabric obviates the descriptive
refusal is unpersuasive. We take judicial notice of the
following definition for the word t-shirt: 1. A short-
sleeved, collarless undershirt 2. An outer shirt of a
design similar to the T-shirt. [Perhaps from its being
shaped like the letter T when spread out.] The American
Heritage Dictionary of the English Language (4th ed. 2009).2
Nothing in this definition requires a specific fabric. The
evidence shows that the word “t-skirt” is used to describe
certain clothing items, including skirts, and the addition
of wording excluding certain fabric to the identification
of goods does not obviate such a finding.
We are persuaded that when applied to applicant’s
goods, “a garment, namely, a skirt, not made of stretchable
cotton fabric,” T-SKIRT immediately describes, without need
for conjecture or speculation, a significant feature of the
goods, namely that they are a type of skirt.
Decision: The refusal to register under Section
2(e)(1) is affirmed.

2 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).