Madson Products, LLC

Trademark Trial and Appeal Board

Sep 13, 2007

No. 78565462 (T.T.A.B. Sep. 13, 2007)

Hearing: June 14, 2007
Mailed: September 13, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Madson Products, LLC
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Serial No. 78565462
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Craig J. Madson of Madson & Metcalf for Madson Products,
LLC.

Brian Pino, Trademark Examining Attorney, Law Office 114 (K.
Margaret Le, Managing Attorney).
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Before Walters, Holtzman and Kuhlke, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

Madson Products, LLC has filed an application to
register on the Principal Register the mark YAK SAK for
“fluid-tight paper or plastic utility bags used for motion
sickness and disposal of unpleasant matter,” in
International Class 16.1

1 Serial No. 78565462, filed February 11, 2005, based on an allegation
of a bona fide intention to use the mark in commerce.
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 78565462
2
The examining attorney has issued a final refusal to
register, 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 in connection with its goods.
Applicant has appealed. Both applicant and the
examining attorney have filed briefs. We reverse the
refusal to register.
The examining attorney contends that the mark is merely
descriptive of the identified goods because YAK SAK
immediately tells prospective purchasers that the goods are
a sack that holds yack; that yack is an American slang term
meaning “vomit,” which is clearly “unpleasant matter,”
referring to the identification of goods; and that the novel
spelling of the merely descriptive terms “yack” and “sack”
does not diminish the merely descriptive nature of the mark
if purchasers would perceive the different spelling as the
equivalent of the descriptive term, as is the case here,
citing Andrew J. McPartland, Inc. v. Montgomery Ward & Co.,
Inc., 164 F.2d 603, 76 USPQ 97 (C.C.P.A. 1947), cert.
denied, 333 U.S. 875, 77 USPQ 676 (S. Ct. 1948).
The examining attorney submitted the following
definitions in support of the refusal:
Macquaire Dictionary Book of Slang –
www.macquairedictionary.com.au2:

2 This definition appears to be from an Australia-based website and, as
such, is insufficient to establish the definition of the slang term
“yack” or “yak” in the United States. However, we find the additional
Serial No. 78565462
3
yack – verb – 1. to vomit. 2. to talk or chatter.
noun 1. an instance of vomiting 2. to chat.
yak – essentially same definition.

American Heritage Dictionary of the English
Language 4th ed. 2000 – www.bartleby.com:
sack – noun 1.a. a large bag of coarse material
for holding objects in bulk. b. a similar
container of paper or plastic. c. the amount that
such a container can hold.

NTC’s Dictionary of Slang and Colloquial
Expressions 3rd ed. Richard Spears 2000:
yack – 1. a foolish person 2. idle chatter
yak – 1. to talk. 2. a chat. 3. a joke. 4. a laugh
from a joke. 5. to vomit.

Slang American Style (same author and publisher)
1997 and essentially same definitions

The Slangman Guide to Dirty English – Dangerous
Expressions Americans Use Every Day - David Burke
– 2003:
yak – used with friends – to vomit

Applicant contends that its mark is, at most,
suggestive, requiring a multistep reasoning process, and
applicant describes its goods as a versatile, foldable,
utility bag that can be used for disposal of any unpleasant
material, e.g., diapers, dog excrement, etc., available for
emergency situations. Applicant states that airplane
sickness bags are most similar to its goods; that its goods
are the subject of a pending patent application; and that
airplane sickness bags are usually available only on
airplanes, not in stores.

definitions sufficient to find that the term is similarly used in
American slang, along with applicant’s concession, in its response of
March 17, 2006, that the term is so defined.
Serial No. 78565462
4
Applicant also claims that its mark is a double
entendre chosen for its dual meanings. Applicant states
that the “yak” portion of the mark is not a misspelling;
rather, applicant chose the term “yak” so that the purchaser
will think, first, of the so-named pack animal, “suggesting
that the product is tough, rugged and durable … in essence,
strong like a yak” (brief, p. 11). Applicant argues,
further, that the mark as a whole, YAK SAK, will be
similarly perceived as suggesting the toughness and
ruggedness of the sack, similar to “sacks” used on “yaks”;
and, equally, to those familiar with the slang meaning of
the term “yak,” the mark will be perceived as suggesting a
sack used to hold vomit. Applicant also suggests that the
other slang definitions of “yak,” such as “to chat” could be
relevant, for example, the definition of “yak” as “to chat”
could suggest that applicant’s “sack” “has a talk or buzz
about it” (brief, p. 12).
Applicant argues that competitors do not need to use
the mark YAK SAK to describe similar goods, noting in this
regard, without evidence, that the only other use of the
term as a whole is the well known dry bags used with kayaks
and bicycles called yak saks. Applicant’s argument is not
well taken. It is well established that a word need not be
in common use in an industry to be descriptive, and the mere
fact that an applicant may be the first to use a descriptive
Serial No. 78565462
5
term in connection with its goods or services does not imbue
the term with source-identifying significance. In re Hunter
Fan Co., 78 USPQ2d 1474 (TTAB 2006). See also, In re
National Shooting Sports Foundation, Inc., 210 USPQ 1018
(TTAB 1983).
Finally, applicant requests that the Board resolve any
doubt on the issue of descriptiveness in applicant’s favor.
The test for determining whether a mark is merely
descriptive is whether it immediately conveys information
concerning a 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 that a mark is merely
descriptive, that the mark describe each feature of the
goods or services, only that it describe a single,
significant quality, feature, etc. In re Venture Lending
Associates, 226 USPQ 285 (TTAB 1985). Further, it is well-
established that the determination of mere descriptiveness
must be made not in the abstract or on the basis of
guesswork, 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
Serial No. 78565462
6
average purchaser of such goods or services. In re
Recovery, 196 USPQ 830 (TTAB 1977).
We agree with the examining attorney that, when
considered in connection with the identified goods, YAK SAK,
merely describes a sack or bag that is used to hold vomit,
which is certainly an unpleasant material. The examining
attorney has clearly established that one meaning of “yack”
is “vomit,” and “yak” will be perceived as a mere
misspelling of “yack.” We are not persuaded by applicant’s
subsequent arguments that, because ‘yack” is a slang term,
we should not conclude prospective purchasers will be aware
of this meaning of “yack” or attribute that meaning to the
term “yak” in the mark YAK SAK. Applicant conceded that
this is one meaning of the term and that this meaning is
part of the intended double entendre effect of its chosen
mark.
However, we also agree with applicant that its mark is
likely to be understood as a double entendre in connection
with the identified goods. “Yak” is equally likely to be
perceived as indicating the so-named animal. In this case,
YAK SAK is likely to be understood as suggesting the
toughness of the sack. In this context, the mark is, at
most, suggestive of the identified goods and the examining
attorney has not contended or established otherwise. A
double entendre is “an ambiguity of meaning arising from
Serial No. 78565462
7
language that lends itself to more than one interpretation.”
In re The Place Inc., 76 USPQ2d 1467 (TTAB 2005). As in The
Place, supra, both meanings of the mark in the case before
us are readily apparent from the mark itself without
reference to other indicia. See also In re Grand
Metropolitan Foodservice, Inc., 30 USPQ2d 1974 (TTAB 1994).
We do not find that the double entendre extends to
other slang meanings of the term “yak,” as those terms are
not relevant in the context of the identified goods, despite
applicant’s contentions to the contrary.
In conclusion, the mark YAK SAK is a double entendre
when considered in connection with “fluid-tight paper or
plastic utility bags used for motion sickness and disposal
of unpleasant matter,” and only one of the two likely
meanings, discussed supra, of the mark YAK SAK is merely
descriptive in connection with applicant’s goods. Thus, the
examining attorney has not established that the mark as a
whole is merely descriptive in connection with the
identified goods.
Decision: The refusal under Section 2(e)(1) of the Act
is reversed.