Mason Shoe Mfg. Co.

Trademark Trial and Appeal Board

Dec 14, 2000

No. 75404671 (T.T.A.B. Dec. 14, 2000)

12/14/00 Paper No. 10
emc/ewh
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Mason Shoe Manufacturing Co.
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Serial No. 75/404,671
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Paul A. Welter of Merchant & Gould P.C. for Mason Shoe
Manufacturing Co.
Jennifer M. Martin, Trademark Examining Attorney, Law Office
102 (Thomas Shaw, Managing Attorney).
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Before Cissel, Hanak and Hairston, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Mason Shoe Manufacturing Co. (applicant) seeks to
register in typed drawing form SHOE MALL for “computerized
online retail services in the field of footwear and
clothing; retail catalog services in the field of footwear
and clothing.” The intent-to-use application was filed on
December 12, 1997. Applicant has disclaimed the exclusive
right to use SHOE.
The Examining Attorney has refused registration on the
basis that applicant’s mark, as applied to applicant’s
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/404,671
2
services, is merely descriptive pursuant to Section 2(e)(1)
of the Trademark Act.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request a hearing.
As has been stated repeatedly, “a term is merely
descriptive if it forthwith conveys an immediate idea of the
ingredients, qualities or characteristics of the goods [or
services].” In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 218 (CCPA 1978) (emphasis added); Abercrombie &
Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 189 USPQ 759,
765 (2nd Cir. 1976). A term is suggestive if it requires
some thought to reach a conclusion as to the nature of the
goods or services. Abcor Development Corp., 200 USPQ at
218.
In support of his refusal, the Examining Attorney
relies upon dictionary definitions; excerpts of stories from
the NEXIS database; printouts from selected websites; and
eight third-party registrations.
The first dictionary relied upon by the Examining
Attorney defines the word “mall” as follows: “A large, often
enclosed shopping complex containing various stores,
businesses, and restaurants usually accessible by common
passageways.” The American Heritage Dictionary of the
English Language (3d ed. 1992). The second dictionary
relied upon by the Examining Attorney defines the word
“mall” as follows: “On the World Wide Web, a shopping
Ser. No. 75/404,671
3
service that provides Web publishing space for business
storefronts (Web pages that describe retail or service
offerings). Malls typically offer credit-card ordering by
means of secure servers and shopping carts, which enable
users to select purchases and pay for them all when they are
finished shopping.” Webster’s New World Dictionary of
Computer Terms (7th ed. 1999).
As the preceding dictionary definitions make clear, a
mall –- whether of the traditional kind or of the on-line
kind -- is by definition a collection of various stores and
businesses. Thus, the very dictionary definitions made of
record by the Examining Attorney support applicant’s
contention that the word “mall” is somewhat incongruous when
applied to a single retail service “because the term ‘mall’
is so well known as describing a multi-vendor shopping
complex.” (Applicant’s reply brief page 6). Moreover, the
vast majority of the remainder of the Examining Attorney’s
evidence also supports the notion that the word “mall” is
associated with a “complex” (either of brick and mortar or
online). For example, a story appearing in the April 11,
1997 edition of ASAP contains the following sentence: “In
keeping with the window shopping motif, Net. Commerce also
has the capacity to support an on-line mall, where vendors
and merchants choose to conduct on-line commerce from
connected sites.”
Moreover, the Examining Attorney’s website evidence
also supports the concept that an on-line mall involves many
Ser. No. 75/404,671
4
vendors, and not just a single vendor. For example, the
Examining Attorney made of record pages from the Alta Vista
browser which list various malls such as the Total Mall,
Global Internet Shopping Mall and the Mall of Cyberspace.
Again, this evidence supports the notion that the word
“mall” is associated with a collection of vendors and not a
single vendor.
Finally, with regard to the eight third-party
registrations made of record by the Examining Attorney,
these registrations are for marks containing the word “mall”
which are registered on the Supplemental Register, or are
registered on the Principal Register with a disclaimer of
the word “mall.” Two comments are in order. First, it
appears that the Examining Attorney’s search revealed that
there were at least 30 registrations containing the word
“mall.” However, for whatever reasons, the Examining
Attorney chose to make of record just eight third-party
registrations. In addition, these eight registrations are
not in order. Rather, they comprise “document numbers” 1,
3, 6, 19, 22, 23, 24 and 30. We are left to speculate as to
whether the other third-party registrations were on the
Principal Register without a disclaimer of the word “mall.”
Second, in any event, these eight third-party
registrations involve services provided by more than one
entity. For example, the registration for the mark
ENTREPRENEURS MALL is for the following service:
“Disseminating of advertising for others, namely
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5
manufacturers and service providers, via on-line electronic
communications network.” Registration Number 2,050,059. In
other words, the very third-party registrations relied upon
by the Examining Attorney which contained the word “mall”
involve various manufacturers and service providers.
In short, the Examining Attorney’s own evidence
establishes that the word “mall” –- whether used in a
traditional sense or in its on-line sense –- refers to a
“complex” involving multiple stores and businesses.
Accordingly, when used in conjunction with a single service
provider (i.e. applicant), the term SHOE MALL, in its
entirety, requires at least some thought to reach the
conclusion that the services in question are being provided
by a single entity and not by multiple entities.
In any event, to the extent that there are doubts on
the issue of mere descriptiveness, it is the practice of
this Board to resolve such doubts in applicant’s favor. In
re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972).
Decision: The refusal to register is reversed.