Major League Umpires

Trademark Trial and Appeal Board

Jul 11, 2001

No. 75154506 (T.T.A.B. Jul. 11, 2001)

7/11/01
Paper No. 19
EJS
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Major League Umpires
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Serial No. 75/154,506
_______
John S. Child, Jr. of Dann Dorfman Herrell and Skillman PC
for Major League Umpires.
Mary Rossman, Trademark Examining Attorney, Law Office 109
(Ronald Sussman, Managing Attorney)
_______
Before Cissel, Seeherman and Hairston, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Major League Umpires, a limited liability corporation,
has appealed from the final refusal of the Trademark
Examining Attorney to register MAJOR LEAGUE UMPIRE as a
trademark for “clothing, namely, shirts, tee-shirts,
jackets, caps, trousers, socks, wind resistant jackets,
wristbands, uniforms and shoes,” in Class 25, and “face
masks, chest protectors and shin guards for athletic us
THIS DISPOSITION
IS CITABLE AS PRECEDENT
OF THE T.T.A.B. e,”
Ser. No. 75/154,506
2
in Class 28.1 Registration has been refused pursuant to
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 identified goods.
The appeal has been fully briefed. Although applicant
initially requested an oral hearing, it subsequently
withdrew that request.
Preliminarily, we must address a procedural matter.
With its reply brief applicant has offered to amend the
identification of goods to limit them to “retail sale to
the general public” to address the Examining Attorney’s
contention that the mark is merely descriptive because it
describes the class of consumers of the products. If
applicant had wished to amend the identification in this
manner, the proper procedure was to file a request for
remand. Nor will we treat this offer made in the reply
brief as a request for remand. Applicant has provided no
reason as to why it waited until its reply brief to proffer
an amendment to its identification, although the Examining
Attorney’s position was known to it since the initial
Office action. Moreover, it is noted that after the filing
1 Application Serial No. 75/154,506, filed August 22, 1996,
based on an assertion of a bona fide intention to use the mark in
commerce.
Ser. No. 75/154,506
3
of its appeal applicant requested and was granted a remand
of the application in order to submit new evidence; even at
that point applicant could have offered an amendment to the
identification as part of that request. In any event,
because major league umpires are part of the general
public, and because of the arguments made by the Examining
Attorney, discussed below, it is clear that the amendment
suggested by applicant would not overcome the Examining
Attorney’s objections.
It is the Examining Attorney’s position that
applicant’s mark is merely descriptive because it
immediately informs prospective purchasers 1) that the
goods have been designed and/or invented by a major league
umpire; 2) that they are to be provided by major league
umpires; 3) that they are for use in umpiring major league
baseball games and other athletic competitions; and 4) that
their quality is equivalent to those used by major league
umpires.
It is well-established that a term which describes the
provider of goods or services is also merely descriptive of
those goods and services. In re E. I. Kane Inc., 221 USPQ
1203 (TTAB 1984), and cases cited therein. Here, the
evidence shows that “the officers and partners of Applicant
are employed as major league baseball umpires.” Response
Ser. No. 75/154,506
4
mailed June 19, 1997, p. 2. Moreover, applicant, in its
advertisements for its goods, includes the information that
it “is owned and operated by three National League umpires:
Paul Runge (#17), Joe West (#22), and Jerry Layne (#24).”
“Referee” magazine, March 1998, submitted with applicant’s
request for remand mailed May 4, 1998. Applicant’s website
also prominently advertises that it is owned and operated
by three National League umpires,2 and the biographies of
these men, also prominently featured on the website, list
their activities as major league umpires.
Accordingly, there can be no question that MAJOR
LEAGUE UMPIRE describes the provider of the identified
goods. Applicant, however, asserts that “marks designating
providers are merely descriptive of the goods or services
only if the mark itself is descriptive of the goods or
services.” Reply brief, p. 6. To the extent that
applicant is contending that a mark which is descriptive of
the provider of the goods or services must also separately
be merely descriptive of a different characteristic of the
goods or services, such a requirement would appear to be
redundant. Generally, if a mark is merely descriptive of a
characteristic of the goods or services, there would be no
2 We take judicial notice that the National League is part of
Major League Baseball.
Ser. No. 75/154,506
5
need to reach the question of whether the mark also
describes the provider of the service. We acknowledge that
the cases cited in Kane involve marks which include words
which more directly reference the goods or services, e.g.,
THE PHONE COMPANY for telephones (emphasis added) (In re
The Phone Company, Inc., 218 USPQ 1027 (TTAB 1983));
STRIPPERS for furniture stripping services (In re
Quatomatic, Inc., 185 USPQ 59 (TTAB 1974)). However, the
general rule, as enunciated in Kane, does not require the
interpretation suggested by applicant. Certainly,
“doctor’s diet” for a diet plan would be understood by
consumers as describing a diet designed or provided by a
doctor, even though “doctor” does not describe the
qualities or mechanics (e.g., low fat, low carbohydrate) of
the diet plan. Further, the Board found, in In re Old
Boone Distillery Co.¸172 USPQ 697 (TTAB 1972), that
DISTILLER’S LIGHT was merely descriptive of scotch whisky.
Obviously DISTILLER’S describes the provider of the whisky,
not the whisky itself.
Having found that MAJOR LEAGUE UMPIRE is merely
descriptive on the basis that it describes the provider of
the goods, we will discuss in a more abbreviated fashion
the additional reasons given by the Examining Attorney as
to why she has refused registration. We would point out,
Ser. No. 75/154,506
6
though, that the mark MAJOR LEAGUE UMPIRE also immediately
conveys to purchasers information about a designer of at
least some of the goods. Applicant’s advertisements tout
the fact that a protective vest it sells was invented by
“Major League Umpire Joe West.” The “Referee” magazine
advertisements submitted by applicant also show that third
parties advertise their products as being designed by major
league umpires. See, for example, the Gerry Davis Sports
advertisement in “Referee” November 1997, which features
“The Gerry Davis Plate Shoe Designed by National League
umpire Gerry Davis.” This same advertisement states that
“Gerry Davis National Umpire Clinics will bring Major
League Umpires to your Backyard! Gerry will bring a crew
of AL and NL umpires to your site to serve as lead
instructors.” The purchasers of applicant’s protective
gear as well as of the clothing that would be worn during a
game are likely to read magazines such as “Referee” (as
witnessed by applicant’s advertising its goods in this
publication) and would be aware that major league umpires
design umpire clothing and gear. Therefore, the mark MAJOR
LEAGUE UMPIRE would immediately convey to such purchasers a
characteristic of the gear/clothing, i.e., that it is
designed by a major league umpire.
Ser. No. 75/154,506
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As for the remaining points made by the Examining
Attorney, there is no question that major league umpires
are among the class of purchasers of applicant’s goods.
Applicant stated that “the officers and partners expect to
offer the clothing and equipment referenced in the
identification of goods by mail order to umpires at all
levels of professional and amateur baseball….” Response
mailed June 19, 1997. Although one of applicant’s
principals later submitted a declaration stating that the
goods “are not intended to be sold or directed to the
umpires employed by either the National or American Leagues
of Professional Baseball Clubs (i.e., the Major League
Umpires),” it is clear that major league umpires comprise
part of applicant’s buying public.
The primary argument made by applicant is that, even
though major league umpires can be purchasers of its goods,
in this case the number of such umpires (68) is so small
that they do not comprise a significant portion of the
market for the goods. Therefore, although applicant
recognizes that a mark may be found to be merely
descriptive if it describes the users of the goods, in this
case applicant contends that the fact that major league
umpires are purchasers of the goods is not a significant
characteristic of the goods.
Ser. No. 75/154,506
8
We would point out that although applicant
characterizes its customers as the general public, in fact,
its goods are directed at only those members of the general
public who are umpires, a much smaller group. Looking at
this group, we cannot determine, on this record, whether a
significant number of the purchasers of applicant’s
identified goods would be major league umpires, as opposed
to minor league or Little League or other umpires.
Accordingly, we cannot determine that the mark is
descriptive of a significant number of the purchasers of
the goods. Therefore, because it is not clear whether the
mark describes a significant characteristic of the goods in
terms of the purchasers, we cannot say that the mark is
merely descriptive on this basis.
On the other hand, MAJOR LEAGUE UMPIRE does describe
the goods as being of a type used by major league umpires.
The evidence shows that applicant does intend to sell the
same goods used by major league umpires. As applicant
acknowledged in its response mailed June 19, 1997, it is
“still negotiating with suppliers of clothing and equipment
of the types currently used by major league baseball
umpires.” Consumers will therefore understand the mark
MAJOR LEAGUE UMPIRE, if used on the identified goods, to
describe goods which are used by major league umpires.
Ser. No. 75/154,506
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Finally, we reject the Examining Attorney’s argument
that, because “major league” is a laudatory term, MAJOR
LEAGUE UMPIRE merely describes the products as being of
high quality. The words “major league,” as used in the
mark, clearly describe the “umpires,” not the goods.
There is one final procedural point. At page 5 of its
appeal brief applicant states that “the factual evidence
provided by Applicant and the Examining Attorney
demonstrate[s] that under the Hunter Publishing test,
Applicant’s mark is also distinctive and, therefore, should
be registered even if found to be descriptive.”3 To the
extent that applicant, by this statement, seeks to claim
that its mark has acquired distinctiveness and is therefore
registrable under the provisions of Section 2(f) of the
Act, that claim is untimely. A Section 2(f) claim cannot
be raised for the first time in an appeal brief; it must be
raised during the prosecution of the application, at a
point when the Examining Attorney has the opportunity to
consider it and respond to it by argument and/or evidence.
See Trademark Rule 2.142(d). Accordingly, the Board has
given no consideration to such a claim.
Decision: The refusal of registration is affirmed.
3 Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d
1996 (TTAB 1986).