Lydia Anne Juge

Trademark Trial and Appeal Board

Feb 6, 2013

No. 76704219 (T.T.A.B. Feb. 6, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Hearing: Mailed:
December 6, 2012 February 6, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Lydia Anne Juge.
_____

Serial No. 76704219
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Cary J. Deaton, Esq. for Lydia Anne Juge.

Karen P. Severson, Trademark Examining Attorney, Law Office 117 (J. Brett
Golden, Managing Attorney).
_____

Before Zervas, Bergsman and Shaw, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Lydia Anne Juge (“applicant”) filed a use based application to register the
mark ANTIQUES OF PARIS, in standard character form, for “retail store services
featuring international antiques,” in Class 35. Applicant disclaimed the exclusive
right to use the word “Antiques.”
The Trademark Examining Attorney refused registration under Section
2(e)(1) of the Trademark Act of 1946, 15 U.S.C. § 1052(e)(1), on the ground that the
mark ANTIQUES OF PARIS in connection with retail store services in the field of
antiques is merely descriptive. The Examining Attorney also refused registration
Serial No. 76704219

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on the ground that applicant failed to comply with his requirement for additional
information pursuant to Trademark Rule 2.61(b). Specifically, applicant was
requested to indicate the nature of the goods offered the retail store services and
whether applicant’s services are affiliated with a Paris antique dealer. In view of
the fact that the recitation of services is for “retail store services featuring
international antiques” which encompasses antiques from Paris, the requirement
for additional information does not add anything to the prosecution of this
application, and we give it no further consideration.
To support the descriptiveness refusal, the Trademark Examining Attorney
introduced the following evidence:
1. A definition of the word “antique” from the Merriam-Webster
dictionary (m-w.com).1 An “antique” is defined as follows:
1: a relic or object of ancient times
2: a: a work of art, piece of furniture, or decorative
object made at an earlier period and
according to various customs laws at least
100 years ago
b: a manufactured product (as an automobile)
from an earlier period
2. A definition of the word “Paris” from the Merriam-Webster dictionary
(m-w.com).2 “Paris” is identified as a city in northeastern Texas and as a city in
France along the Seine river.

1 December 15, 2010 Office action.
2 December 15, 2010 Office action.
Serial No. 76704219

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3. An excerpt from the Discover France! Website (discoverfrance.net)
providing links to antique markets in Paris, France.3
4. A copy of a news article appearing in the online version of The
Telegraph newspaper (telegraph.co.uk) featuring a story about the antique markets
of Paris, “Paris: touring the city’s antiques markets,” posted on September 3, 2009.4
5. A copy of applicant’s home page (aop.tsdwebsites.com) featuring the
Eiffel Tower, a Parisian landmark, and other photos conjuring-up impressions of
Paris, France.5
In addition, the ENCYLOPAEDIA BRITANNICA identifies Paris as the capital
city of France, noting that “[f]or centuries [sic] Paris has been one of the world’s
most important and attractive cities” and that it “has retained its importance as a
centre for education and intellectual pursuits.”6
“A term is merely descriptive if it immediately conveys knowledge of a
quality, feature, function, or characteristic of the goods or services with which it is
used." In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987).
Whether a particular term is merely descriptive is determined in relation to the
goods or services for which registration is sought and the context in which the term

3 May 12, 2011 Office action.
4 May 12, 2011 Office action. Although the source is a newspaper and website in the United
Kingdom, the face of the website indicates that there is a North American version and an
American shopper is, in part, the subject of the story. Accordingly, we have considered this
news story as being available to American readers.
5 November 29, 2011 Office action.
6 “Paris,” ENCYCLOPAEDIA BRITANNICA (2013). We may take judicial notice of
information from encyclopedias. Fed. R. Evid. 201; Productos Lacteos Tocumbo S.A. de C.V.
v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 n.61 (TTAB 2011).
Serial No. 76704219

4

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, the question is not whether someone
presented only with the mark could guess the products listed in the description of
goods. Rather, the question is whether someone who knows what the products are
will understand the mark to convey information about them. In re Tower Tech, Inc.,
64 USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent & Trademark Services Inc.,
49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders Association of Greenville,
18 USPQ2d 1313, 1317 (TTAB 1990); In re American Greetings Corp., 226 USPQ
365, 366 (TTAB 1985).
When two or more merely descriptive terms are combined, the determination
of whether the composite mark also has a merely descriptive significance turns on
the question of whether the combination of terms evokes a new and unique
commercial impression. If each component retains its merely descriptive
significance in relation to the goods or services, the combination results in a
composite that is itself merely descriptive. See In re Tower Tech, Inc., 64 USPQ2d
1314 (SMARTTOWER merely descriptive of commercial and industrial cooking
towers); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001)
(AGENTBEANS merely descriptive of computer programs for use in developing and
deploying application programs); In re Putman Publishing Co., 39 USPQ2d 2021
(TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of news and
Serial No. 76704219

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information services in the food processing industry). In this regard, we must
consider the issue of descriptiveness by looking at the mark in its entirety.
However, “if one must exercise mature thought or follow a multi-stage
reasoning process in order to determine what product or service characteristics the
term indicates, the term is suggestive rather than merely descriptive.” In re Tennis
in the Round, Inc., 199 USPQ 496, 498 (TTAB 1978). See also, In re Shutts, 217
USPQ 363, 364-365 (TTAB 1983); In re Universal Water Systems, Inc., 209 USPQ
165, 166 (TTAB 1980). In this regard, “incongruity is one of the accepted guideposts
in the evolved set of legal principles for discriminating the suggestive from the
descriptive mark.” In re Shutts, 217 USPQ at 365.
A consumer encountering an antique store with the name ANTIQUES OF
PARIS will immediately know, without having to resort to any thought, analysis or
guesswork, that the proprietor is selling antiques from Paris, France. Any other
interpretation defies credulity. In this regard, we note that applicant’s trade dress
features a French theme. The specimen of use shows the mark ANTIQUES OF
PARIS superimposed over a fleur-de-lis design. A fleur-de-lis is the heraldic
bearing of the royal family of France.7
Applicant argues that ANTIQUES OF PARIS has a dual meaning: Paris,
France and a first name, such as Paris Hilton. We disagree. When the mark

7 Dictionary.com derived from the RANDOM HOUSE DICTIONARY (2013). The Board may
take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet
Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983), including online dictionaries that exist in printed format or have regular fixed
editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
Serial N

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