Mutassem Halawi

Trademark Trial and Appeal Board

Jan 4, 2007

No. 78587753 (T.T.A.B. Jan. 4, 2007)

Mailed: 1/4/07

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Mutassem Halawi
________

Serial No. 78587753
_______

Tama L. Drenski of Renner, Kenner, Greive, Bobak, Taylor &
Weber for Mutassem Halawi.

Ray Thomas, Jr., Trademark Examining Attorney, Law Office
102 (Thomas V. Shaw).
_______

Before Quinn, Hohein and Bergsman, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed by Mutassem Halawi to
register on the Principal Register the mark PIZZABOGO (in
standard character form) for “restaurant services” in
International Class 43.1
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. §
1052(e)(1), on the ground that applicant’s mark, if used in

1 Application Serial No. 78587753, filed March 15, 2005, alleging
a bona fide intent to use the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78587753
2
connection with applicant’s services, would be merely
descriptive thereof.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.2
The examining attorney maintains that the proposed
mark merely describes a feature or characteristic of
applicant’s restaurant services through which pizza is
offered on a “buy one get one free” (“BOGO”) basis.
According to the examining attorney, the proposed compound
mark is nothing more than a combination of the merely
descriptive word “pizza” and the merely descriptive acronym
“BOGO.” In support of the refusal, the examining attorney
introduced, inter alia, a dictionary definition of “pizza,”
an acronym dictionary listing for “BOGO,” copies of third-
party registrations of unitary marks comprising the
formative word “PIZZA” followed by endings such as

2 Applicant, with its appeal brief, submitted portions of the
file history of a third-party application. The examining
attorney objected to this submission as untimely. Trademark Rule
2.142(d) provides that the record in the application should be
complete prior to the filing of an appeal, and that the Board
will ordinarily not consider additional evidence filed after the
appeal is filed. See TBMP § 1207.01 (2d ed. rev. 2004).
Applicant referred to the third-party application in its request
for reconsideration. The examining attorney, in denying the
request, implicitly referred to this application. In view
thereof, we have elected to consider the evidence to be of record
in determining the merits of this appeal. TBMP § 1207.03 (2d ed.
rev. 2004).
Ser No. 78587753
3
“-LETTO,” “-NO,” and “-TO,” an excerpt from applicant’s
website, and excerpts from numerous third-party websites.
Applicant argues that his mark must be considered as a
whole in determining the mere descriptivness thereof, and
that, when the mark is so considered, the refusal must be
reversed. In making this argument, applicant contends that
the examining attorney improperly dissected the mark, and
that the derived combination of the definitions of “pizza”
and “BOGO” results in a mark that is only suggestive, not
merely descriptive. According to applicant, “[t]he
distinctive nature of Applicant’s lyrical, fun-to-say,
catchy mark is much more than the sum of its parts.”
(Appeal Brief, p. 3). Applicant argues that the formative
“BOGO” would not be viewed by a reasonable consumer as an
acronym when it appears, as in applicant’s mark, as part of
the larger term PIZZABOGO: “the composite unitary mark
‘PIZZABOGO’ would not be generally understood as
representing ‘pizza buy one get one’ because the formative
‘bogo’ appears as an indivisible part of a unitary mark
‘PIZZABOGO,’ and thus loses any acronym character that it
might otherwise have.” (Appeal Brief, p. 5). Applicant
asserts that it is rare to have a single term comprising a
word and an acronym, as in the case of applicant’s proposed
mark, and that the examining attorney’s evidence shows only
Ser No. 78587753
4
that BOGO has been used alone, but never in combination
with another word to form a single term. Moreover,
applicant argues, and in any event, the initials “BOGO” are
not merely descriptive of applicant’s services. In this
connection, applicant points to two meanings of “BOGO”
other than “buy one get one (free),” namely “beyond our
galaxy online” and “buy one give one.” Applicant offers a
detailed critique of the examining attorney’s evidence,
acknowledging its “sheer volume,” but contending that a
close analysis shows only six uses of the terms “pizza” and
“BOGO” in an adjacent manner. In support of his position,
applicant submitted a TESS search report listing over 2,000
third-party registrations of marks comprising, in part,
“PIZZA,”3 and copies of five third-party registrations of
BOGO marks.
A term is merely descriptive of goods or services,
within the meaning of Trademark Act Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. See, e.g., In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and In re Abcor

3 Although applicant merely provided a list of the registrations,
the examining attorney has considered the registrations to be of
record. See In re Total Quality Group Inc., 51 USPQ2d 1474, 1477
n. 6 (TTAB 1999); and TBMP § 1208.02 (2ed. rev. 2004).
Ser No. 78587753
5
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). A term need not immediately convey an idea of each
and every specific feature of the applicant’s goods or
services in order to be considered merely descriptive; it
is enough that the term describes one significant
attribute, function or property of the goods or services.
See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); and In re
MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods or services
for which registration is sought, the context in which it
is being used or is intended to be used on or in connection
with those goods or services, and the possible significance
that the term would have to the average purchaser of the
goods or services because of the manner of its use or
intended use. That a term may have other meanings in
different contexts is not controlling. In re Polo
International Inc., 51 USPQ2d 1061 (TTAB 1999); and In re
Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). It is
settled that:
....the question of whether a mark is
merely descriptive must be determined
not in the abstract, that is, not by
asking whether one can guess, from the
mark itself, considered in a vacuum,
what the goods or services are, but
rather in relation to the goods or
Ser No. 78587753
6
services for which registration is
sought, that is, by asking whether,
when the mark is seen on the goods or
services, it immediately conveys
information about their nature.

In re Patent & Trademark Services Inc., 49 USPQ2d 1537,
1539 (TTAB 1998).
When two or more merely descriptive terms are
combined, the determination of whether the composite mark
also has a merely descriptive significance turns on the
question of whether the combination of terms evokes a new
and unique commercial impression. If each component
retains its merely descriptive significance in relation to
the goods or services, the combination results in a
composite that is itself merely descriptive. See, e.g., In
re Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002) [SMARTTOWER
merely descriptive of commercial and industrial cooling
towers]; In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB
2001) [AGENTBEANS merely descriptive of computer programs
for use in development and deployment of application
programs]; In re Putnam Publishing Co., 39 USPQ2d 2021
(TTAB 1996) [FOOD & BEVERAGE ONLINE merely descriptive of
news information services for the food processing
industry]; and In re Copytele Inc., 31 USPQ2d 1540 (TTAB
1994) [SCREEN FAX PHONE merely descriptive of facsimile
terminals employing electrophoretic displays].
Ser No. 78587753
7
The term “pizza” is defined as “a baked pie of Italian
origin consisting of a shallow breadlike crust covered with
seasonal tomato sauce, cheese, and often other toppings,
such as sausage or olives.” (www.dictionary.com). The
examining attorney also made of record a listing of the
acronym “BOGO” showing it to mean “Buy One Get One.”
(www.acronymfinder.com).
The record includes an excerpt from applicant’s
website that shows applicant offers pizza with a “Buy 1 Get
1 Free” deal.
The examining attorney’s evidence also includes
numerous uses of the acronym “BOGO” in connection with a
variety of goods and services. The following uses are
representative of the website excerpts relied upon by the
examining attorney:
Washington Post consumer columnist
Margaret Webb Pressler writes: “I also
got a huge response about the growing
use of buy-one-get-one-free promotions,
or BOGOs, as they’re called in the
industry...Shoppers don’t understand
why retailers offer this kind of
promotion when it’s no better for
customers and no more profitable for
stores than a half-price sale.” On the
contrary, BOGOs can be much more
profitable for stores than a half-price
sale...The BOGO doubles the store’s
profits!...Although BOGOs may make
consumers worse off they generally
increase total welfare...
(www.marginalrevolution.com)
Ser No. 78587753
8

Two-for-One Dining Programs
...started bold BOGO (Buy one get one
free) direct mail coupon inserts during
9 months of off season.
(www.restaurantreport.com)

Fundraiser cards come in all shapes and
sizes, but all have the same
concept...The cards have an offer or
multiple offers on the back. Many of
the cards have peel-off coupons with
BOGO (Buy one, Get one) offers, free
breadsticks with the purchase of a
large pizza or a free two-liter with
any pizza purchase...“Most of the
offers are BOGO...”
(www.pmq.com)

BOGO
Another marketing incentive is the buy-
one-get-one-free (BOGO) option. If you
dine out with a spouse, colleagues, or
a friend, consider eating out at
restaurants offering a buy-one-get-one-
free coupon.
(www.collegecentral.com)

Free BOGO Pizza Delivery
(www.birchbaychamber.com)

Miscellaneous Coupons
Erin’s Coupon Swap
Domino’s Pizza BOGO Free any Pizza
(www.home.earthlink.net/-n-side-out)

Domino’s Pizza (BOGO)
(www.goodshepherdcollinsville.org)

Safeway Dec. 29-Jan 4
Red Baron classic, pan, or french bread
pizza BOGO (3.99)
(www.pinchingyourpennies.com)

LDS Vacuum Shopper
BOGO SALE
BUY ONE GET ONE FREE
Ser No. 78587753
9
B.O.G.O. (Buy One Get One)
Our Biggest Sale Yet – Buy One, Get One
Free!!!
(www.vacuumshopper.stores.yahoo.net)

BOGOs & SPECIALS
BOGO – (BUY ONE GET ONE FREE)
Country Life Max Multi(vitamin) for Men
(www.vnfnutrition.com)

Based on the meanings of the individual terms “PIZZA”
and “BOGO,” and the numerous third-party uses of “BOGO” in
connection with a variety of goods and services, including
restaurant services, offered on a “buy one get one free”
basis, we conclude that the combination PIZZABOGO also is
as merely descriptive as the individual terms. When the
proposed mark is viewed in the context of applicant’s
services, the term PIZZABOGO immediately informs
prospective customers that applicant’s restaurant services
involve offering pizza on a “buy one, get one free” basis.
Contrary to applicant’s arguments, applicant’s proposed
usage does not create an unusual or nonsensical usage. The
term “PIZZA” is a readily recognized component of the mark,
and customers will easily be able to separate out the
“BOGO” component; in doing so, they will need no
imagination or thought to discern that applicant, through
his restaurant services, offers pizza on a buy-one-get-one-
free basis.
Ser No. 78587753
10
Applicant’s contention that the term “BOGO” has the
alternative meanings of “beyond our galaxy online” or “buy
one give one” is entirely unpersuasive. The mere
descriptiveness of the specific term “BOGO” in applicant’s
proposed mark must be determined in the specific context of
the involved services. The fact that a term may have
different meanings in other contexts is not controlling on
the question of mere descriptiveness. In re Chopper
Industries, 222 USPQ 258 (TTAB 1984). Likewise,
applicant’s contention that “BOGO” “calls to mind the
similar words ‘GOGO,’ ‘TO GO,’ and ‘POGO’” is of no moment.
The third-party registrations of PIZZA and BOGO marks
submitted by applicant do not compel a different result
herein.4 In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001) [“Even if some prior
registrations had some characteristics similar to
[applicant’s] application, the PTO’s allowance of such
prior registrations does not bind the board or this
court.”]. While uniform treatment under the Trademark Act
is an administrative goal, our task in this appeal is to
determine, based on the record before us, whether

4 We should add that the examining attorney’s evidence of third-
party registrations of unitary marks comprising the formative
word “PIZZA” followed by endings such as “-LETTO,” “-NO,” and “-
TO” do not aid his case for refusal.
Ser No. 78587753
11
applicant’s particular mark sought to be registered is
merely descriptive. In re Stenographic Machines, Inc., 199
USPQ 313, 317 (Comm’r Pats. 1978) [“Consistency of Office
practice must be secondary to correctness of Office
practice.”]. As is often stated, each case must be decided
on its own merits. In re Best Software Inc., 58 USPQ2d
1314 (TTAB 2001).
Lastly, the fact that applicant may be the first and
only user of the merely descriptive term PIZZABOGO for
restaurant services does not justify registration inasmuch
as the only significance conveyed by the term is merely
descriptive. In re National Shooting Sports Foundation,
Inc., 219 USPQ 1018 (TTAB 1983).
Decision: The refusal to register is affirmed.