Moti Shniberg

Trademark Trial and Appeal Board

Apr 6, 2006

No. 78083495 (T.T.A.B. Apr. 6, 2006)

Mailed:
6 April 2006
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Moti Shniberg
________

Serial No. 78083495
_______

Moti Shniberg, pro se.

Scott Baldwin, Trademark Examining Attorney, Law Office 112
(Janice O’Lear, Managing Attorney).
_______

Before Seeherman, Quinn, and Drost, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On September 11, 2001,1 applicant Moti Shniberg filed
an intent-to-use application to register on the Principal
Register the following mark, in standard character or typed
form:
SEPTEMBER 11, 2001

1 USPTO records indicate that the application was transmitted
electronically at “17:37:56 EDT” on September 11, 2001.
Therefore, the application was filed after events of the morning
of September 11th.
THIS DISPOSITION
IS CITABLE
AS PRECEDENT OF
THE TTAB
Ser No. 78083495
2
The goods and services in the application were
ultimately amended to read as follows:
Books in the field of history; series of fictional
books (Class 16) and

Entertainment in the nature of ongoing radio programs
in the field of news; entertainment in the nature of
ongoing television programs in the field of drama;
entertainment in the nature of television news shows;
entertainment in the nature of theater productions;
entertainment in the nature of visual and audio
performances, and musical variety, news and comedy
shows; entertainment namely, production of operas,
television shows, plays, radio programs; entertainment
services, namely providing a radio program in the
field of news and historical events; entertainment,
namely, television news shows (Class 41).

The examining attorney2 has refused to register the
mark on the ground that the mark is deceptively
misdescriptive under Section 2(e)(1) of the Trademark Act.
15 U.S.C. 1052(e)(1).3 Applicant, in his response to the

2 The current examining attorney was not the original examining
attorney in the case.
3 The examining attorney also advised applicant (Brief at 4)
that:
The examining attorney hereby withdraws the refusal under
Sections 1, 2, 3, and 45 of the Trademark Act. However,
the applicant is advised that, upon consideration of an
amendment to allege use or statement of use, the refusal
may be reinstated on the grounds that the mark does not
function as a trademark or service mark. In addition,
based solely upon the assertions made by the applicant for
the record that none of the applicant’s books or
entertainment services will in any way cover the events of
September 11, 2001, the examining attorney withdraws the
refusal under Section 2(e)(1) as merely descriptive. The
discovery of any information that contradicts such
assertions will result in the reinstatement of the
aforementioned refusal.

Ser No. 78083495
3
examining attorney’s requirement for information dated June
26, 2003 at 2, provided the following information:
None of applicant's books [is] on the subject of the
events of September 11, 2001.

None of applicant's entertainment services will in any
way cover the events of September 11, 2001.

The examining attorney submitted evidence about the
terrorist attacks of September 11, 2001, and also evidence
about books and other publications about the events of
September 11, 2001. The examining attorney concluded that,
inasmuch as applicant’s books and entertainment services do
not concern the events of September 11, 2001, the mark is
deceptively misdescriptive.
Applicant responds (Brief at 9-11, footnotes omitted)
to the deceptively misdescriptive refusal as follows:
The Examining Attorney has refused the registration of
the mark on a cumulative basis that the mark is both
descriptive and misdescriptive. That is to say, the
Examining Attorney did not refuse registration because
the mark in question is descriptive or, in the
alternative, if the mark is not descriptive, that it
is deceptively misdescriptive. Rather, as stated
above, the Examining Attorney refused registration
because he ruled that the mark is at the same time
both descriptive and deceptively misdescriptive.

That is not permissible, even more, it is not
logically tenable to allege that the mark is both

Therefore, the only issue before us is the issue of whether the
applied-for term is deceptively misdescriptive. In considering
this issue, however, while we have treated “SEPTEMBER 11, 2001”
as a mark for the identified goods and services, our comments
should not be taken as a finding that the term functions as a
mark.
Ser No. 78083495
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descriptive and deceptively misdescriptive. That is
because each of these positions is the diametrically
opposed counterpoint of the other. They are mutually
exclusive.

The utter untenability of raising both grounds on a
cumulative basis is a bedrock principle of logic and
was recognized by Aristotle over 2000 years ago, who
described it as the principle of non-contradiction
thusly:

“Evidently then such a principle is the most certain
of all; which principle this is, let us proceed to
say. It is that the same attribute cannot at the same
time belong and not belong to the same subject in the
same respect.”…

The application of this bedrock principle of logic to
the instant case is clear and direct. A mark cannot
both describe and misdescribe. To so claim that a
mark is both descriptive and deceptively
misdescriptive is to commit a fatal error in logic.
Because such a position by the Examiner is
fundamentally illogical, the Applicant is not able to
formulate a reply with respect to these grounds for
refusal. In order for the applicant to reply to these
two grounds of refusal, the applicant would have to
violate the principle of non-contradiction. But in so
doing, the applicant would have to exit the recognized
bounds of logical discourse. The upshot is that these
two grounds for refusal must be summarily dismissed.

The cases referred to in the relevant section of the
TMEP with respect to deceptively misdescriptive marks
are not to the contrary. In none of these cases does
one find a situation in which the Examiner (or
opponent) asserted in a cumulative fashion that the
mark at issue is both descriptive and deceptively
misdescriptive.

After a lengthy prosecution, applicant seeks the
reversal of what is now the examining attorney’s sole
remaining ground of refusal.
Ser No. 78083495
5
The two-prong test for whether a mark is deceptively
misdescriptive has been set out as follows: “(i) whether
the mark misdescribes the goods [or services] to which it
applies; and (ii) whether consumers are likely to believe
the misdescription.” Glendale International Corp. v. U.S.
Patent and Trademark Office, 374 F. Supp.2d 479, 75 USPQ2d
1139, 1143 (E.D. Va. 2005). See also In re Phillips-Van
Heusen Corp., 63 USPQ2d 1047, 1048 (TTAB 2002) and In re
Quady Winery Incorporated, 221 USPQ 1213, 1214 (TTAB 1984).
The Federal Circuit also addressed the question of
misdescriptiveness in Hoover Co. v. Royal Appliance
Manufacturing Co., 238 F.3d 1357, 57 USPQ2d 1720 (Fed. Cir.
2001). In that case, the Court held: “‘A mark may be
‘deceptively misdescriptive’ under § 2(e) if it
misrepresents any fact concerning the goods that may
materially induce a purchaser’s decision to buy.’ 2
McCarthy on Trademarks § 11:56.” 57 USPQ2d at 1723.4 The
Court had earlier noted that in deceptiveness cases, the
misdescription is “likely to affect the decision to
purchase.” 57 USPQ2d at 1723 (underlining added).

4 The current section 11:56 of McCarthy’s explains that: “A mark
will be held ‘deceptive’ under § 2(a) only where the user of the
mark knows that such misleading use will bestow upon the product
an appearance of greater quality of salability than it has.” 2
McCarthy on Trademarks and Unfair Competition (4th ed. 2006)
§ 11:56.
Ser No. 78083495
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Similarly, the Glendale court emphasized that: “Where the
misdescription is a material factor in the consumer’s
purchasing decision, the mark is not merely ‘deceptively
misdescriptive,’ but ‘deceptive.’” Glendale International,
75 USPQ2d at 1144 n. 10. Therefore, the misdescription
must concern a feature that would be relevant to a
purchasing decision.5 If the misdescription is more than
simply a relevant factor that may be considered in
purchasing decisions but is a material factor, the mark
would also be deceptive.6
We begin our analysis by noting that applicant’s mark
is simply the date “SEPTEMBER 11, 2001.” On that date, at
8:46 in the morning, American Airlines Flight 11 slammed
into the north tower of the World Trade Center. Shortly
afterward, at 9:03, United Airlines Flight 175 struck the
south tower of the World Trade Center. www.cnn.com,
September 11, 2004. At 9:59 and 10:29 a.m., the south and
north towers collapsed. Id. Also that same morning,

5 For example, if pizza is sold under the mark FOUNDRY PIZZA and
the pizza is not made in, or associated with, an old foundry, the
fact that potential purchasers may believe that the pizza may be
made in an old foundry building would not result in the mark
being deceptively misdescriptive. In the Phillips-Van Heusen
case, the board explained that for “a term to misdescribe goods
or services, the term must be merely descriptive … of a
significant aspect of the goods or services which the goods or
services plausibly possess but in fact do not.” 63 USPQ2d at
1051.
6 The issue of whether the mark is deceptive is not before us.
Ser No. 78083495
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American Airlines Flight 77 struck the Pentagon in
Arlington, Virginia, and United Airlines Flight 93 crashed
in Shanksville, Pennsylvania. These plane crashes occurred
after the planes were hijacked by nineteen terrorists.
These attacks killed more than 2,970 people. Id.
As a result of the events of that day, the date,
September 11, 2001, has been the subject of numerous books
and media coverage.
What We Saw: The Events of September 11, 2001, in
Words, Pictures, and Video with DVD
www.powells.com

September 11, 2001
A collection of 150 front pages from major newspapers
throughout the world, “September 11, 2001” presents a
stunning, shocking gallery of headlines and images,
revealing the world’s reaction to the horrendous
terrorist attacks of 9/11.
www.powells.com

One Nation: America Remembers September 11, 2001
This is about firemen going in amidst the rubble, but
it is also about a Frenchman in Paris holding up a
sign that says, “We are all Americans.” This is about
our leaders taking charge, but it is also about
schoolchildren in Iowa hanging an American flag on a
tree in their backyard. Beginning with the history of
lower Manhattan, the book explains what happened on
September 11, profiles many of the heroes, victims and
rescuers…
www.walmart.com

Above Hallowed Ground: A Photographic Record of
September 11, 2001
On the morning of September 11th, a new kind of horror
shook the world. Terrorists crashed two passenger
airlines into the World Trade Center in the worst
attack on U.S. soil in the nation’s history.
http://barnesandnoble.com
Ser No. 78083495
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Tower Stories: The Autobiography of September 11,
2001
No other book written about September 11th displays the
compassion, the breadth of focus, and the exacting eye
for historic details that Tower Stories offers on
every single page.
http://barnesandnoble.com

Capturing bin Laden: Priority before 9/11?
NBC News

Living with Terror: The World Speaks a Year After
9/11
WAMU – Award-winning journalists Robin Lustig and
Deborah Amos hosted two-hour live event featuring
call-outs by top foreign correspondents, comments from
dignitaries, and questions from around the world.
http://understandingamerica.publicradio.org

The Day America Changed: Complete Coverage
In observance of the one-year commemoration of Sept.
11, the Fox News Channel and Foxnews.com present a
special package of programming, stories, features and
background material designed to honor and reflect on
the day that America was forever changed.
www.foxnews.com

The examining attorney noted that “September 11, 2001
appeared in 39,766 stories” in the computerized database he
searched. First Office Action at 2. In addition, a Barnes
& Noble search report for the keywords “September 11, 2001”
identified 1,089 titles.
The evidence demonstrates that the date of September
11, 2001, has acquired special significance in America.
For example, in an interview on September 14, 2003, Vice
President Cheney was asked: “Has the nation recovered from
September 11, 2001?” MSNBC, Meet the Press with Tim
Ser No. 78083495
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Russert. The Vice President’s reply was: “Well, I think
in many respects, recovered, yes. On the other hand, there
are some things that’ll never be the same.” Another
website reports that: “We knew life in America would never
be the same after the terrorist attacks of September 11,
2001, but no one knew exactly how it would change.”
http://understandingamerica.publicradio.org. The Chicago
Daily Herald on February 21, 2002, reported that the
“initiatives from Attorney General Jim Ryan helped to
address some of the threats that are ever-present in our
lives since Sept. 11, 2001.” A Newsday story on February
21, 2002, explains that: “The events of September 11,
2001, show that a mass appeal is neither a safe nor an
efficient way to collect blood.” The evidence that the
examining attorney submitted establishes that the date
“September 11, 2001” is commonly used as a direct reference
to the terrorist attacks on that date.
“[F]or a term to misdescribe goods or services, the
term must be merely descriptive, rather than suggestive, of
a significant aspect of the goods or services which the
goods or services plausibly possess but in fact do not.”
Phillips-Van Heusen, 63 USPQ2d at 1051. A term is merely
descriptive if it immediately describes the ingredients,
qualities, or characteristics of the goods or services or
Ser No. 78083495
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if it conveys information regarding a function, purpose, or
use of the goods or services. In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978). Here,
such goods and services as books in the field of history,
ongoing radio programs in the field of news, and television
news shows about the events of September 11, 2001, are
described by that date. Indeed, the date alone is a
shorthand way of referring to the events of that day such
as when Vice President Cheney was asked: “Has the nation
recovered from September 11, 2001?” The evidence shows
that many publications and other media concerning the
events of September 11 have used the date in the title of
the books, articles, shows, and similar goods and services.
From this information, we conclude that the term “SEPTEMBER
11, 2001” merely describes the subject matter of books and
entertainment services concerning the events of September
11th.
However, applicant has maintained that:
None of applicant's books [is] on the subject of the
events of September 11, 2001.

None of applicant's entertainment services will in any
way cover the events of September 11, 2001.

Therefore, the mark “SEPTEMBER 11, 2001” would not merely
describe applicant’s goods and services. But the record
shows that the date of September 11, 2001, has been used to
Ser No. 78083495
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describe numerous books, articles, and shows. When the
mark, “SEPTEMBER 11, 2001,” is used to identify these goods
and services and the subject matter of the goods and
services is not concerned with the events of September 11,
2001, the mark is misdescriptive. Therefore, the first
prong of the test for misdescriptiveness is satisfied.
Next, we address the second prong, which is whether
consumers are likely to believe the misdescription. As
described above, there have been numerous books, articles,
and shows about the events of September 11th. See, e.g.,
What We Saw: The Events of September 11, 2001, in Words,
Pictures, and Video with DVD; September 11, 2001; One
Nation: America Remembers September 11, 2001; and Above
Hallowed Ground: A Photograph Record of September 11,
2001. Consumers, upon seeing the mark “SEPTEMBER 11, 2001”
in connection with applicant’s books and entertainment
services, would believe that they are simply additional
books or entertainment services on the subject of the
events concerning the terrorist attacks of September 11,
2001.7 While the nature of the misdescription would become
known after consumers studied applicant’s books and

7 We add that the Federal Circuit has held that “book titles are
often descriptive of book contents” and “this court’s case law
prohibits proprietary rights for single book titles.” Herbko
International Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d
1375, 1379-80 (Fed. Cir. 2002).
Ser No. 78083495
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entertainment services, that does not prevent the mark from
being deceptively misdescriptive. See, e.g., In re Budge
Manufacturing Co., 857 F.2d 773, 8 USPQ2d 1259, 1261 (Fed.
Cir. 1988) (“Congress has said that the advantages of
registration may not be extended to a mark which deceives
the public. Thus, the mark standing alone must pass
muster, for that is what the applicant seeks to register,
not extraneous explanatory statements”). Therefore, the
second prong of the misdescriptiveness test is also
satisfied. This misdescription would be relevant to
consumers who would be interested in books or entertainment
services concerning the terrorist attacks of September 11,
2001, and the misdescription “may materially induce a
purchaser’s decision to buy” or use the goods or services.
Hoover Co., 57 USPQ2d at 1723.
In response to the examining attorney’s refusal,
applicant essentially makes a semantic argument that its
mark cannot be both descriptive and misdescriptive relying
on Aristotle’s principle of non-contradiction. There are
several problems with applicant’s argument, the most
important of which is that the examining attorney has
withdrawn the descriptiveness refusal. Therefore, even if
this was a problem, it has now been eliminated. Second,
applicant asserts that the examining attorney “did not
Ser No. 78083495
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refuse registration because the mark in question is
descriptive or, in the alternative, if the mark is not
descriptive, that it is deceptively misdescriptive.
Rather, as stated above, the Examining Attorney refused
registration because he ruled that the mark is at the same
time both descriptive and deceptively misdescriptive.”
Brief at 9. This is not what the examining attorney did in
this case. In the Office action dated April 25, 2003, the
examining attorney refused registration on the grounds that
(1) applicant’s term failed to function as a mark, (2) the
term was merely descriptive, and (3) applicant failed to
comply with the examining attorney’s requirement for
information about whether the goods or services would
concern the events of September 11, 2001. When applicant
filed a response that asserted that its goods and services
would not concern the events of September 11th, the
examining attorney, in the February 26, 2004, Office
action, continued the failure to function as a mark and
merely descriptive refusals without additional comments but
he added a new refusal on the ground that the mark is
deceptively misdescriptive. The examining attorney
explained (p.2) that “[i]f the applicant’s goods and
services are in no way related to the tragic events of
September 11, 2001, then purchasers of the applicant’s
Ser No. 78083495
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goods are likely to erroneously believe that the
applicant’s books and entertainment services are on the
subject of September 11, 2001.” The examining attorney’s
Office action dated November 30, 2004, again continued the
refusals for failure to function as a mark and mere
descriptiveness and also made them final without additional
comments and made the refusal on the ground of deceptive
misdescriptiveness final and explained his rationale for
this refusal.
Thus, the prosecution/examination history of this
application contradicts applicant’s argument that the
examining attorney refused registration on the grounds that
that “the mark is both descriptive and misdescriptive.”
Brief at 9. The refusals of mere descriptiveness and
deceptive misdescriptiveness are simply alternative
refusals that would encompass whatever explanation
applicant provided concerning the subject matter of his
books and entertainment services. When the examining
attorney was convinced that applicant’s goods and services
would not relate to the events of September 11, he withdrew
the descriptiveness refusal. But see footnote 3.
Therefore, we conclude that the mark “SEPTEMBER 11,
2001,” if it were used on books and entertainment services
Ser No. 78083495
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that do not concern the events of September 11, 2001, is
deceptively misdescriptive.
DECISION: The examining attorney’s refusal is
affirmed.