Louis J. Balady

Trademark Trial and Appeal Board

Sep 28, 2015

No. 86124961 (T.T.A.B. Sep. 28, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: September 28, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Louis J. Balady
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Serial No. 86124961

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Matthew H. Swyers of The Trademark Company for Louis J. Balady.

Rudy R. Singleton, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
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Before Ritchie, Masiello, and Goodman,
Administrative Trademark Judges.

Opinion by Masiello, Administrative Trademark Judge:
Louis J. Balady (“Applicant”) has filed an application for registration on the
Principal Register of the mark SELFIES in standard characters for “Interactive
photo kiosks for capturing, printing and uploading digital images for future use,” in
International Class 9.1

1 Application Serial No. 86124961 was filed on November 21, 2013 under Trademark Act
Section 1(b), 15 U.S.C. § 1051(b), on the basis of Applicant’s bona fide intent to use the
mark in commerce.
Serial No. 86124961
2
The Trademark Examining Attorney 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
merely describes the identified goods. When the Examining Attorney made the
refusal final, Applicant appealed. Applicant and the Examining Attorney have filed
briefs.
Section 2(e)(1) of the Trademark Act provides for the refusal of registration of “a
mark which, (1) when used on or in connection with the goods of the applicant is
merely descriptive or deceptively misdescriptive of them.” 15 U.S.C. § 1052(e)(1). A
term is merely descriptive of goods within the meaning of Section 2(e)(1) if it
forthwith conveys an immediate idea of an ingredient, quality, characteristic,
feature, function, purpose or use of the goods. In re Chamber of Commerce of the
U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); see also In re Gyulay,
820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Whether a mark is merely
descriptive is determined in relation to the goods for which registration is sought
and the context in which the term is used, not in the abstract or on the basis of
guesswork. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218
(CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other words,
we evaluate whether someone who knows what the goods are will understand the
mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Med.
Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). A mark need
not immediately convey an idea of each and every specific feature of the goods in
order to be considered merely descriptive; it is enough if it describes one significant
Serial No. 86124961
3
attribute, function or property of the goods. See In re Gyulay, 3 USPQ2d at 1010; In
re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338
(TTAB 1973). It is the Examining Attorney’s burden to show that a term is merely
descriptive of an applicant’s goods or services. In re Gyulay, 3 USPQ2d at 1010; In
re Accelerate s.a.l., 101 USPQ2d 2047, 2052 (TTAB 2012).
The Examining Attorney has made of record the following dictionary definition
of the word “selfie”:2
NOUN (plural selfies)
• informal
A photograph that one has taken of oneself, typically
taken with a smartphone or webcam and uploaded to a
social media website.
Applicant made of record one page of the entry for “Selfie” from
,3 and then filed, as an exhibit to his brief, the entire entry.4
Although evidence filed with an appeal brief is untimely, see 37 C.F.R. § 2.142(d)
and TBMP § 1207.01 (2015), the Examining Attorney expressly indicated that he
does not object to this evidence,5 and discussed it in his brief. Accordingly, we will
consider it. See, e.g., In re Sadoru Group Ltd., 105 USPQ2d 1484, 1485, 1489 n.6
(TTAB 2012); TBMP § 1207.03. The entry states, in relevant part:
A selfie (/’selfi:/) is a self-portrait photograph, typically
taken with a hand-held digital camera or camera phone.

2 Definition at , Office Action
of March 18, 2014 at 5.
3 Response of March 18, 2014 at 17.
4 Applicant’s brief, 4 TTABVUE 16-24.
5 Examining Attorney’s brief, 6 TTABVUE 11 fn.1.
Serial No. 86124961
4
Selfies are often shared on social networking services
such as Facebook, Instagram, or Twitter. … Most selfies
are taken with a camera held at arm’s length or pointed
at a mirror, rather than by using a self-timer.6
Applicant’s brief states the following with respect to Applicant’s goods:
The Applicant’s kiosks provide individuals and couples to
take pictures of themselves without the use of a handheld
digital camera phone. … [T]he individual who purchases
the services of one of Applicant’s kiosks is able to produce
an image for uploading on social media which has the
“look” of a self-portrait, in that it is casual and flattering,
but without the subject of the photo needing to hold the
camera at arms’ length or to use a mirror.
[I]mages produced in the Applicant’s kiosks are
technically “self-portraits” in the sense that the subject of
the photo is the person who determines when to capture
the image and at what angle, and also in the sense that
the subject of the image is also the author of the image.
Despite falling into the broader category of “self-portraits”
the other components usually associated with the term
“SELFIES” are absent, such as the use of one’s own
personal equipment such as a phone or digital camera,
the use of an extended arm or mirror to achieve the
appropriate angle, and the haphazard framing which
accompanies the awkwardness of a “selfie” taken with a
phone or digital camera.7
The Examining Attorney, in support of his case, has made of record four items,
found on the Internet, which discuss photo kiosks that are similar in nature to
Applicant’s goods, in that they are photo booths that produce photos of users and
then allow the users to upload the photos to social media. We note in particular the
following excerpts from those items:

6 Applicant’s brief, 4 TTABVUE 16.
7 Id. at 12, 4 TTABVUE 13.
Serial No. 86124961
5
Selfie Photo Booth
… Guests … are given a wireless remote and can trigger
selfies at their own pace.8
***
How Selfies Are Re-Energizing The New York
Public Library
These photobooth selfies weren’t taken at a bar. They’re
from the New York Public Library, which is mobilizing
fans through pictures.9
***
Sacramento start-up company uses selfies to
market businesses
You might call it marketing with selfies. …
According to iSnap, they have 450 kiosks in seven
countries. The photo stations have been referred to as
“selfie machines.”10
***
With today’s technologies and the rampant onslaught of
“selfies” and moments being captured by camera, it just
makes sense to have a kiosk that lets you do exactly that.
A plus? You can post this directly to social media sites
like Facebook and Twitter. You can find this kiosk at
American Savings bank. Get your picture taken today!11
The evidence shows that a “selfie” is, in its essence, a photographic self-portrait;
and that such photographs “are often shared on social networking services.”12 In
this sense, the “digital images” that Applicant’s kiosks produce “for uploading” are

8 Advertisement for Simon Elliott Events, Office Action of October 15, 2014 at 5.
9 Article at , id. at 7.
10 Article at , id. at 12-14.
11 Web page at , Office Action of March 18, 2014 at 8.
12 Wikipedia entry for “selfie,” 4 TTABVUE 16.
Serial No. 86124961
6
“selfies” as that term is widely understood. Although the record indicates that “Most
selfies are taken with a camera held at arm’s length or pointed at a mirror,”13 we do
not agree with Applicant’s contention that a photographic self-portrait that is made
without the “use of one’s own personal equipment such as a phone or digital camera,
[and] the use of an extended arm or mirror”14 would not be considered a “selfie” by
Applicant’s customers. Nor do we agree that, in order to qualify as a “selfie,” a
photographic self-portrait must be characterized by “the haphazard framing which
accompanies the awkwardness of a ‘selfie’ taken with a phone or digital camera.”15
Our conclusion in this regard is strongly supported by the fact that third parties
have independently chosen the word “selfie” and “selfies” to describe the
photographs made by kiosks similar to Applicant’s, and have referred to such kiosks
as “Selfie Photo Booth” and “selfie machines,” despite the fact that those kiosks do
not involve the use of a hand-held camera, a phone, or a mirror.
The record demonstrates that SELFIES conveys an immediate idea of a feature,
function and purpose of Applicant’s goods, to wit, that Applicant’s goods allow users
to create photographic portraits of themselves and, moreover, assist such users in
uploading those portraits to social media on the Internet. We therefore affirm the
Examining Attorney’s refusal to register the mark SELFIES on the ground that the
mark is merely descriptive under Trademark Act Section 2(e)(1).
Decision: The refusal to register is affirmed.

13 Id. (emphasis added).
14 Applicant’s brief at 12, 4 TTABVUE 13.
15 Id.