Nike, Inc.

Trademark Trial and Appeal Board

Mar 30, 2011

No. 77615883 (T.T.A.B. Mar. 30, 2011)

Mailed: 3/30/11

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Nike, Inc.
________

Serial No. 77615883
_______

Stephanie Vardavas for Nike, Inc.

Richard F. White, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Quinn, Cataldo and Taylor, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

Nike, Inc. filed an application to register the mark
VICTORY RED for “golf club heads; golf club shafts; golf
bags; [and] golf ball markers” (in International Class 28).1
The trademark examining attorney refused registration
based on applicant’s failure to comply with a requirement
to disclaim the term “RED” apart from the mark as used in
connection with applicant’s goods. According to the

1 Application Serial No. 77615883, filed November 17, 2008,
asserting first use anywhere and first use in commerce on
November 1, 2008.
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Ser No. 77615883
2
examining attorney, the term is merely descriptive of
applicant’s goods because the color red appears on the golf
equipment.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs. We
reverse.
Before turning to the merits of the disclaimer
requirement, a preliminary matter requires our attention.
Applicant, in its request for reconsideration filed
February 5, 2010, reiterated its position that the term
“RED” is not merely descriptive, but it also referenced for
the first time acquired distinctiveness under Section 2(f)
of the word “RED” as used in connection with applicant’s
goods; a declaration setting forth sales figures
accompanied the request. In denying the request for
reconsideration on March 23, 2010, the examining attorney
neither noted nor responded to applicant’s reference to
Section 2(f). Applicant, in its appeal brief, maintained
that the term “RED” is not merely descriptive, but it also
stated that even if the Board disagrees, “the word ‘RED’ in
the Mark has acquired secondary meaning and can be allowed
for this reason.” (Brief, p. 13). The examining attorney,
in his brief, addressed for the first time applicant’s
references to acquired distinctiveness, indicating that
Ser No. 77615883
3
“applicant has not explicitly claimed acquired
distinctiveness in the alternative, as to the term RED and
it appears that it would be inappropriate to treat the
applicant’s assertions as such.” (Brief, p. 13). In its
reply brief, applicant makes no further reference to
acquired distinctiveness.
TMEP §1212.02(f)(i) (7th ed. 2010) provides that a
claim of acquired distinctiveness may apply to a portion of
a mark (a claim of Section 2(f) “in part”). However,
neither applicant nor the examining attorney followed the
preferred practice when an applicant asserts (or attempts
to assert), in the alternative, a claim of acquired
distinctiveness, as would appear to be the case herein. An
applicant may argue against the merits of a Section 2(e)(1)
mere descriptiveness refusal and, in the alternative, claim
that the matter sought for registration has acquired
distinctiveness under Section 2(f). See TMEP §1212.02(c)
(7th ed. 2010); and TBMP §1215 (2d ed. rev. 2004). See also
In re Capital Formation Counselors, Inc., 219 USPQ 916, 918
(TTAB 1983). It is applicant’s responsibility to make
clear that it is taking alternative positions; further, the
examining attorney, beginning with his initial silence to
applicant’s first reference to Section 2(e)(1), failed to
clearly state his position with respect to applicant’s
Ser No. 77615883
4
apparent attempt to claim, in the alternative, acquired
distinctiveness.
As just noted, applicant, in its reply brief, did not
dispute the examining attorney’s statement in his brief
that a Section 2(f) claim was never explicitly raised and,
thus, was inappropriate for consideration. In view of the
uncertainty with the alternative claim, and the fact that
applicant and the examining attorney did not effectively
engage on this specific issue, we decline to give it any
further consideration. However, as is apparent from our
decision on this appeal, the point is moot inasmuch as
resort to Section 2(f) is not necessary.
We now turn to the substantive merits of the
disclaimer requirement. Applicant argues that the term
“RED” is not merely descriptive of its goods that display
red color accents. Rather, the term is
inextricably associated with the
professional golfer Tiger Woods. His
persona is the red Nike shirt. As such
the mark as a whole signifies and
suggests Tiger Woods and his incredible
abilities on the golf course, and
evokes an image of victory on the golf
course, which then resonates to the
goods. The word “RED,” when used in
the mark VICTORY RED, has its own
specific meaning and significance, and
is not merely descriptive of the goods

Ser No. 77615883
5
(Brief, p. 1). Applicant highlights the renown of Tiger
Woods as the most famous athlete in the world, and his
tradition of always wearing a red Nike shirt on the final
day of golf tournaments in which he is playing. According
to applicant,
the red accents on Applicant’s products
are used to evoke – just as the use of
“RED” within VICTORY RED is used to
evoke – the connection of three things:
(1) the world class golfer Tiger Woods,
(2) his red Nike shirt, and (3) winning
the game of golf. The mark VICTORY RED
makes consumers imagine Tiger Woods
wearing the red Nike shirt, and VICTORY
RED suggests to consumers that, with
VICTORY RED golf equipment, they too
can visualize themselves as powerful,
victorious golfers.

(Brief, pp. 4-5). Applicant points out that the amount of
the color red used on its products is minimal, and
sometimes is non-existent; and that, in any event, red
accents are an ornamental touch that serve no purpose other
than to suggest to consumers an image of Tiger Woods
winning a golf tournament while wearing a red Nike golf
shirt. “The clear meaning of ‘red’ within VICTORY RED is
to suggest Tiger Woods and the red Nike shirt that he has
made into a sports icon, and to the consumer VICTORY RED
means a better golf game. RED in VICTORY RED does not
describe an accent of color, it conveys the symbol of Tiger
Woods and being the best.” (Reply Brief, pp. 5-6).
Ser No. 77615883
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Applicant has introduced several exhibits in support of its
position, including excerpts from printed publications,
photographs, and third-party registrations (with file
history specimens showing use of each of the registered
marks).
The examining attorney maintains that color names like
“red” appearing in trademarks may be merely descriptive
when used in connection with goods that appear in the named
color. In this case, the examining attorney states that
the term “RED” in applicant’s mark merely describes a
characteristic of the goods, namely “that the color RED
appears on the applicant’s identified golf products.”
(Brief, p. 4). The examining attorney specifically points
to the facts that applicant’s golf clubs display a red
stripe in the club head cavity or back, and that the
stylized letters “VR” are displayed, of which the upper-
right corner appears in the color red; according to the
examining attorney, “potential consumers considering the
purchase of golf equipment are likely to expect Victory Red
equipment to feature a color red somewhere on the product.”
(Final Refusal, 8/6/09). The examining attorney is not
persuaded by applicant’s argument based on a red shirt worn
by Tiger Woods because, in the view of the examining
attorney, the connection between the red accent on golf
Ser No. 77615883
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equipment and Tiger Woods’ red golf shirt is not supported
by the record. (Brief, pp. 6-8). But, at the same time,
the examining attorney states that the color red “is a
significant feature/characteristic because as the applicant
provides, it is used to ‘suggest to the consumer that Tiger
Woods endorses the product...’” (Brief, p. 9). In support
of the refusal, the examining attorney relied upon two
third-party registrations of marks that include the term
RED as a portion thereof covering golf equipment, both
registrations with disclaimers of RED. On the other hand,
the examining attorney discounted the third-party
registrations of marks that contain color names (not
disclaimed) relied upon by applicant, asserting that each
case must stand on its own set of facts. The examining
attorney also introduced excerpts of third-party websites
showing the color red used as “accents” on golf clubs of
applicant’s competitors.
The examining attorney may require an applicant to
disclaim an unregistrable component of a mark otherwise
registrable. Section 6 of the Trademark Act, 15 U.S.C.
§1056. This section of the statute was amended in 1962 to
allow the exercise of greater discretion by examining
attorneys in determining whether a disclaimer is necessary.
See TMEP §1213.01(a) (7th ed. 2010). Merely descriptive or
Ser No. 77615883
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generic terms are unregistrable under Section 2(e)(1) of
the Trademark Act, 15 U.S.C. §1052(e)(1), and therefore are
subject to disclaimer if the mark is otherwise registrable.
Failure to comply with a disclaimer requirement is grounds
for refusal of registration. See In re Omaha National
Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); and
In re Box Solutions Corp., 79 USPQ2d 1953 (TTAB 2006).
The examining attorney bears the burden of showing
that “RED” is merely descriptive of applicant’s golf
equipment. In re Merrill, Lynch, Pierce, Fenner, and Smith
Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987).
A term is descriptive if it "forthwith conveys an immediate
idea of the ingredients, qualities or characteristics of
the goods." Abercrombie & Fitch Co. v. Hunting World,
Inc., 537 F.2d 4, 189 USPQ 759, 765 (2d Cir. 1976)
(emphasis added). See In re Abcor Development Corp., 616
F.2d 525, 200 USPQ 215 (CCPA 1978). Moreover, in order to
be descriptive, the term must immediately convey
information as to the qualities, features or
characteristics of the goods and/or services with a "degree
of particularity." Plus Products v. Medical Modalities
Associates, Inc., 211 USPQ 1199, 1204-1205 (TTAB 1981).
See In re Diet Tabs, Inc., 231 USPQ 587, 588 (TTAB 1986);
Holiday Inns, Inc. v. Monolith Enterprises, 212 USPQ 949,
Ser No. 77615883
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952 (TTAB 1981); In re TMS Corp. of the Americas, 200 USPQ
57, 59 (TTAB 1978); and In re Gourmet Bakers, Inc., 173
USPQ 565 (TTAB 1972). Whether a particular term is merely
descriptive is determined in relation to the goods for
which registration is sought and the context in which the
term is used, not in the abstract or on the basis of
guesswork.
The record is replete with articles (some with
photographs) about the accomplishments of Tiger Woods as a
professional golfer, and his status as the most famous
athlete in the world, and one of the most recognizable
celebrities on the planet. The fact that Tiger Woods wears
a red shirt on the final day of a golf tournament is
commonly known, and this tradition has been well documented
by the media and others. (Applicant’s request for remand,
5/19/10, Exs. A-Z, AA-MM). The examples include pictures
of Tiger Woods in a red shirt on the cover of the video
game “Tiger Woods PGA Tour ’10,” and on the cover of Sports
Illustrated magazine for a story about him captioned “Red
Alert!”. In an article about Tiger Woods at the Masters
golf tournament, the author wrote about “[t]he return of
the red shirt on the leaderboard in Sunday’s final round.”
(Cleveland Plain Dealer, 4/12/10).
Ser No. 77615883
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Below is a typical advertisement run by applicant
showing Tiger Woods in a red Nike golf shirt, and
applicant’s golf clubs bearing red accents. This
appearance of the color red on applicant’s golf equipment
is the basis upon which the examining attorney asserts that
the term “RED” is merely descriptive of the golf clubs.

Based on the record before us, we find that relevant
purchasers will not perceive the term “RED” as merely
Ser No. 77615883
11
describing the golf equipment, even though red may be used
as ornamentation on the equipment. We agree with
applicant’s assessment that its use of the color red on
golf equipment is strictly as an accent splash or an
ornamental touch. In the words of applicant, this “use of
the color red is not prominent or conspicuous, nor is it
even a distinguishing feature.” (Brief, p. 6). Rather,
the color is “simply an ornamental, suggestive touch, used
for no reason except to further suggest to the consumer
that Tiger Woods endorses the product, and when it comes to
him, ‘RED’ equals victory.” (Brief, p. 6). Unlike the
situation with some products, there is nothing in the
record to suggest that consumers perceive color names as
descriptive terms for golf equipment. Simply put, the term
“RED” does not merely describe any attribute of the
equipment itself; rather, it only names the color that is
used as an accent or decorative feature on the equipment.
The examining attorney has failed to give appropriate
consideration to the full context in which the term “RED”
is used as part of applicant’s mark VICTORY RED for golf
equipment. In re Ramacle, 66 USPQ2d 1222, 1224 (TTAB
2002).
Consumers will not perceive the term “RED” in the mark
VICTORY RED as somehow merely describing the fact that
Ser No. 77615883
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applicant’s goods have a red accent or stripe on them, even
though they do. The term “RED,” as used in applicant’s
mark and in the context of applicant’s goods, has a greater
meaning in context than the fact that the goods display a
red accent. Thus, the present case is readily
distinguishable, as explained by applicant, from the
principal case relied upon by the examining attorney. See
In re The Molson Industries Limited, 192 USPQ 402 (TTAB
1976) (required disclaimer of “GOLDEN ALE” for ale).
Applicant has introduced numerous third-party
registrations and, in each case, a specimen from the file
history. As often stated, we are not bound by the prior
actions of examining attorneys. See 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.”). Nevertheless, the
registrations are illustrative in suggesting that the
Office on numerous occasions has not required disclaimers
of color names appearing in trademarks, even when the goods
display the named color.
Applicant highlights numerous third-party registered
marks that include a color name (no disclaimer) for golf
Ser No. 77615883
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equipment whereon the color is displayed (e.g., BLACK
THUNDER for golf clubs that are black or have black
accents; RED MAX for golf balls with a red dot; and BLUE
MAGIC for blue-colored golf shafts). Applicant states that
the examples “show that minor uses of color ornamentation,
when used in connection with a suggestive mark containing a
color word, do not require a disclaimer when the mark
itself is suggesting a greater idea.” (Brief, p. 12).
As shown by some of the other registrations, a word in
a trademark often conveys ideas that do not describe the
product, but instead reference a decorative feature on the
goods that evokes the same idea set forth in a word in the
trademark. The examples include uses of the words “TIGER”
or “SHARK” in marks for products (e.g., fishing rods or
sport balls) on which is depicted a representation of a
tiger or a shark, respectively. The fact that the word
describes a decorative feature on the product does not mean
that the word merely describes a characteristic or feature
of the goods.
Accordingly, while the term “RED” in applicant’s
trademark may name the color of ornamentation or accent on
applicant’s goods, the term does not describe any attribute
of the equipment itself. Accordingly, the term “RED” is
Ser No. 77615883
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not merely descriptive when used in connection with
applicant’s golf equipment.
Decision: The refusal to register is reversed.