No. 85144291 (T.T.A.B. Apr. 26, 2013)

Messe Frankfurt Exhibition GmbH

Trademark Trial and Appeal BoardApr 26, 2013

No. 85144291 (T.T.A.B. Apr. 26, 2013)

Mailed: April 26, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board ———— In re Messe Frankfurt Exhibition GmbH ———— Application No. 85144291 Filed October 4, 2010 ———— Russell D. Culbertson, The Culbertson Group, PC, for applicant. David E. Tooley, Jr., Trademark Examining Attorney, Law Office 112, Angela Wil- son, Managing Attorney. ———— Before Cataldo, Mermelstein, and Lykos, Administrative Trademark Judges. Opinion by Mermelstein, Administrative Trademark Judge: Messe Frankfurt Exhibition GmbH seeks registration of the mark HOMETEX- TILES SOURCING, stylized as shown: for Advertising; advertising services, namely, presentation of business companies and their goods and services, also via the Internet; advertising services, namely, sales promo- tion for others; arranging contacts between commercial partners in trade and industry, also via the Internet; rental of advertising space and advertising material. This Opinion is not a Precedent of the TTAB Application No. 85144291 in International Class 35.1 Registration has been finally refused on the ground that the mark, when used in connection with the identified services, is merely descrip- tive of them.2 Trademark Act § 2(e)(1); 15 U.S.C. § 1052(e)(1). We affirm the refusal to register. I. Applicable Law A term is merely descriptive if it immediately conveys knowledge of a signifi- cant quality, characteristic, function, feature or purpose of the services with which it is used. See, e.g., In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009-10 (Fed. Cir. 1987). Whether a particular term is merely descriptive is deter- mined in relation to the services 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 Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other words, the issue is whether someone who knows what the services are will understand the mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re Tower Tech, Inc., 64 USPQ2d 1 Based on the allegation of a bona fide intention to use the mark in commerce. Applicant submitted statements indicating that “[t]he mark consists of ‘hometextiles’ in yellow-green lettering and ‘sourcing’ in gray lettering,” and “[t]he color(s) yellow-green and gray is/are claimed as a feature of the mark.” 2 The final Office action also included a requirement pursuant to Trademark Rule 2.61 for additional information about the services in connection with which applicant intends to use the mark. The examining attorney withdrew this requirement in his brief on appeal, Ex. Att. Br. at 2 (unnumbered), and we consider the issue moot. Application No. 85144291 1314, 1316-17 (TTAB 2002); In re Patent & Trademark Servs. Inc., 49 USPQ2d 1537, 1539 (TTAB 1998). “On the other hand, if one must exercise mature thought or follow a multi-stage reasoning process in order to determine what product or ser- vice characteristics the term indicates, the term is suggestive rather than merely descriptive.” E.g., In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003); In re Shutts, 217 USPQ 363, 364-65 (TTAB 1983). II. Discussion In determining whether applicant’s mark is descriptive of its identified services, we consider the meaning of the mark and its relationship to the services. Appli- cant’s mark is HOMETEXTILES SOURCING, in stylized form. The first term of applicant’s mark — HOMETEXTILES — appears in yellow-green and comprises the words “home” and “textiles.” Although the words are concatenated in applicant’s mark, they are nonetheless easily recognizable as separate and familiar terms. This is particularly so because the stylized mark depicts the word “home” in a heavier- weight typeface than the word “textiles,” making it readily apparent that the term is comprised of two distinct words, notwithstanding the lack of a space between them. The second term of applicant’s mark is the word SOURCING, which appears below the first term, in gray. Although applicant’s mark is depicted in stylized form (including color), the stylization used is minimal, and does not itself add any dis- tinctive feature to the mark. The evidence of record makes clear that the phrase “home textiles” refers to fab- rics used for home applications. The examining attorney’s evidence includes: Application No. 85144291 • Web page of SHARA, which touts its “Home Textile Decor!” The page includes links to pages on the topics of “Beddings,” “Cushions,” “Table Linens,” “Kitchen Linens,” “Curtains,” and “Throws,” and a link to “Home Textile Products.” http://www.sharindia.com/ (Dec. 13, 2010); • Web page for Spoon Home Textiles, selling “quilts, aprons & pillows.” http://www.spoonhometextiles.com/quilts/nantucket_quilt_green.html (Dec. 13, 2010); • Web page for Home Textiles Today, whose “exclusive report contains the Top 50 Home Textiles Retailers [and] the Top 15 Home Textiles Manufacturers....” The web site also notes that “Wal-Mart retains the top spot in our 2010 ranking of top retailers. Who else made the list? Click here to check out HTT’s exclusive survey of the Top 50 home textiles retailers.” http://www.hometextilestoday.com (Dec. 13, 2010). • Applicant’s own press release, announcing the “Home Textiles Fabric Sourcing Expo” scheduled for July 2010: Based on industry feedback and a high level of interest from sup- pliers, the opportunity has arisen in North America for an event focused on fabric and material sourcing for home application (lin- ens, towels, pillows, window coverings, furniture, etc.). ... About Home Textiles Fabric Sourcing Expo The only event in North America focused solely on sourcing for fabrics and materials intended for home applications. ... http://www.hometextilessourcing.com/press/press_060110.html (July 21, 2011). The examining attorney has likewise submitted evidence of the meaning of the term “sourcing,” including this definition: Source ... Verb intr. To obtain parts or materials from another business, coun- try, or locale: They are sourcing from abroad in order to save money. Application No. 85144291 Yahoo! Education (online dictionary), http://education. yahoo.com/ reference/ diction- ary/ entry/source (July 21, 2011). The examining attorney submitted three web pages which evidence use of the term “sourcing” in the textile industry: PLEETOOX Textile Sourcing Bringing Business and Textiles Together Customized Textiles and Stand-Out Event Products Welcome to Pleetoox! Your online wholesale source for bland and logo textile products for corporate events, par- ties, promotions and demonstrations. We have all quali- ties of linen and paper products for every kind of profes- sional or private event and celebration. ... http://www.pleetoox.com/store/ (Dec. 13, 2010). TEXTILE SOURCE The Premier International Wholesale Textile Sourc- ing Directory ... Find Textiles Companies and Fabrics by Searching our Global Directory Search the textile companies in our database which con- tains information supplied by thousands of wholesale tex- tile and fabric companies from around the world. START YOUR SEARCH Search for fabric suppliers that serve the following industries: Apparel, Contract/Commercial Interior, Fil- tration, Floor Coverings, Furniture & Upholstery, Geotex- tiles, Gifts & Accessories, Home Fashions, Industrial, Ma- rine, Medical, Military, Outdoor, Safety, Sports, Tech- nical, Theatrical and Transportation. We also include textile designers, plus chemical, machin- ery, fiber, yarn, finishing, printing and dyeing companies involved in the textile supply chain in our directory. http://www.textilesource.com/ (Dec. 13, 2010). Application No. 85144291 KOT TEXTILE SOURCING Source for home Decor & Furnishing Products  Floor Coverings  Doormats  Bathroom Mats  Bed linen  Towels  Table linen  Windows [sic] coverings  Quilts ...  Cushions & Chair pads ... http://www.kottextilesourcing.com/ (Dec. 13, 2010). According to its brief, applicant intends to use the mark in connection with a trade show which represents a “sourcing venue” at which buyers, that is, those seeking textiles [sic] manufacturers, may locate manufacturers from which the buyers may obtain or source textiles. It is also clear at least from the Appel- lant’s response to the request for information set out in the July 21, 2011 Office Action that Appellant’s claimed advertising and related services are all offered or intend- ed to be offered to exhibitors at the textile sourcing trade show. The claimed services are all related to business ad- vertising or promotion and are offered and performed in connection with this trade show. The purpose of the ser- vices is to promote the textile manufacturers exhibiting at the trade show. (See Appellant’s response filed November 9, 2011). In this light, Appellant submits that the designation “hometextiles sourcing” does not immediately convey knowledge of any ingredient, quality, or characteristic of the claimed advertising and other services, and does not directly convey information regarding the nature, func- tion, purpose, or use of the claimed advertising and other services. Rather, “hometextiles sourcing” suggests an ac- Application No. 85144291 tivity that is facilitated by a trade show which collects textile manufacturers in one place to provide a market- place for textile buyers. App. Br. at 7. While the information about applicant’s actual activities is helpful, we do not read applicant’s recitation of services so narrowly. In particular, the relevant ser- vices for purposes of determining registrability are not the services which applicant asserts that it is actually providing or intends to provide. Instead, the services we are primarily concerned with are those set out in the application. The fact that ap- plicant provides or intends to provide only a narrower subset of those services is not relevant in determining descriptiveness for purposes of registrability. See Octocom Sys. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the question of registrability of an ap- plicant’s mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which sales of the goods are directed.”). It is clear from its recitation of services that applicant seeks registration of its mark for use in connection with an array of advertising and promotional services which are not tied to a trade show or even limited to any particular trade or indus- try. If applicant is successful, those broadly-described services will define the scope of applicant’s registration. Thus, we must determine whether applicant’s mark is Application No. 85144291 descriptive of any of the recited services, not just those narrower services in connec- tion with which applicant asserts that it actually uses or intends to use its mark. The question then is whether applicant’s mark, HOMETEXTILES SOURCING (which is equivalent to “home textiles sourcing”), is descriptive of services encom- passed by applicant’s recited advertising and promotional services. As applicant puts it, “[t]he function, purpose, and use of the claimed services are to promote tex- tile manufacturers who seek buyers for their products.” App. Br. at 8. But it is per- fectly clear that “promot[ing] textile manufacturers who seek buyers for their prod- ucts” is just one kind of “sales promotion for others” or “arranging contacts between commercial partners in trade and industry,” both of which are included in appli- cant’s recitation of services. The textile manufacturers whom applicant seeks to promote will immediately understand that applicant’s use of the terms HOMETEXTILES SOURCING is a reference to the obtaining (i.e., “sourcing” of) textiles for the home from other busi- nesses, the very business which applicant intends to advertise, promote, and facili- tate. As the examining attorney’s evidence makes clear, applicant’s potential cus- tomers — especially those in the textile manufacturing industry and their buyers — will readily understand HOMETEXTILES to mean textiles for home applications and SOURC- ING to be the process of obtaining those materials from another business, country, or locale. The fact that applicant is not itself buying or selling textiles is irrelevant; HOMETEXTILES SOURCING is descriptive of the activity which applicant intends to promote and facilitate, and is thus descriptive of the identified services. Application No. 85144291 Seizing on some possibly imprecise language used by the examining attorney, applicant ar- gues that because the examining attorney has not found any references to the words “home tex- tile sourcing industry” or the “home textile sourcing entity,” it does not appear that such things exist. This is both faulty logic and irrelevant. Applicant’s mark and services are directed to sourcing for the home textiles industry. Whether or not there are entities, or even a whole indus- try, which sources textiles for the home textiles industry is irrelevant (although if they did exist, they would appear to be potential customers for applicant’s services). Similarly, applicant argues that “sourcing” refers to obtaining products from another busi- ness, country, or locale. In contrast, Appellant’s advertis- ing and promotional services are directed to textile manu- facturers and suppliers exhibiting at a trade show. The word “sourcing” applies to an activity of attendees of the trade show, not the exhibitors to whom the advertising and promotional services are marketed. That is, “sourc- ing” is an activity of buyers (those seeking textile manu- facturers) who attend the trade show to locate manufac- turers from which the buyers may obtain or source tex- tiles. The evidence does not show that Appellant’s claimed advertising and promotional services are “geared exclu- sively to home textiles sourcing entities.” To the contrary, the evidence shows that Appellant’s claimed advertising and promotional services are directed to textile manufac- turers wishing to connect with home textiles buyers. Reply Br. at 2-3 (citations omitted). Again, the services recited in the subject application are not limited to those rendered to tex- tile manufacturers and suppliers; they also include advertising, promotion, and facilitation ser- vices rendered purchasers of those textiles, as well as any intermediaries, to the extent they are common in the textiles (or any other) industry. But even if applicant’s recitation of services were limited to those provided to manufacturers and suppliers of textiles, HOMETEXTILES SOURC- Application No. 85144291 ING would still be descriptive, because it names the purpose of those services — regardless of the fact that it is the buyer (and not the manufacturer) who actually does the “sourcing.” Finally, we note applicant’s argument that doubt in a descriptiveness case should be re- solved in its favor. App. Br. at 5. Applicant is correct, but this is not a case in which we have any doubt; the applied-for mark immediately, and without conjecture, describes a significant feature, characteristic, or purpose of the identified services, namely that they offer advertising, sales promotion, and sales facilitation for those sourcing textiles for home applications. III. Conclusion We have carefully considered all of the record evidence and argument, including that which we have not specifically discussed. For the foregoing reasons, we find HOMETEXTILES SOURCING (stylized) to be merely descriptive of the identified services under Trademark Act § 2(e)(1). Decision: The refusal to register is AFFIRMED and registration to applicant is refused.