Palms Free Inc.

Trademark Trial and Appeal Board

Jan 5, 2016

No. 86229868 (T.T.A.B. Jan. 5, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: January 5, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Palms Free Inc.
_____

Serial No. 86229868
_____

John F. Vodopia of John F. Vodopia, PC,
for Palms Free Inc.
Christopher Law, Trademark Examining Attorney, Law Office 105,
Susan Hayash, Managing Attorney.
_____

Before Bergsman, Wolfson and Kuczma,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Palms Free Inc. (“Applicant”) seeks registration on the Principal Register of the
mark PALMS FREE (in standard characters) for “universal phone holders and
harnesses,” in International Class 9.1
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(e)(1) of the Trademark Act of 1946, 15 U.S.C. § 1052(e)(1), on
the ground that Applicant’s mark is merely descriptive: that is, the term “Palms

1 Application Serial No. 86229868 was filed on March 24, 2014, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
Serial No. 86229868
- 2 -

Free” when used in connection with universal phone holders and harnesses directly
conveys to consumers that Applicant’s product has a hands-free feature that
permits users to use their hands for purposes other than holding the phone.2
After the Examining Attorney made the refusal final, Applicant appealed to this
Board. We affirm the refusal to register.
A term is merely descriptive of goods or services within the meaning of 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. In re
Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed.
Cir. 2012). See also, In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
Whether a mark or a component of a mark is merely descriptive is determined in
relation to the goods or 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
Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle,
66 USPQ2d 1222, 1224 (TTAB 2002). A term need not immediately convey an idea
of each and every specific feature of the goods or services in order to be considered
merely descriptive; it is enough if it describes one significant attribute, function or
property of them. See In re Gyulay, 3 USPQ2d at 1010; In re H.U.D.D.L.E., 216
USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). This
requires consideration of the context in which the mark is used or intended to be
used in connection with those goods or services, and the possible significance that

2 6 TTABVUE 5.
Serial No. 86229868
- 3 -

the mark would have to the average purchaser of the goods or services in the
marketplace. See In re Chamber of Commerce of the U.S., 102 USPQ2d at 1219; In
re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007);
In re Abcor Dev. Corp., 200 USPQ at 218; In re Venture Lending Assocs., 226 USPQ
285 (TTAB 1985). The question is not whether someone presented only with the
mark could guess the products or activities listed in the description of goods or
services. Rather, the question is whether someone who knows what the products or
services are will understand the mark to convey information about them. DuoProSS
Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757
(Fed. Cir. 2012) (quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB
2002). See also In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539
(TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313, 1317
(TTAB 1990); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
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 nondescriptive 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. In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371
(Fed. Cir. 2004) (quoting Estate of P.D. Beckwith, Inc. v. Commissioner, 252 U.S.
538, 543 (1920)). See also In re Tower Tech, Inc., 64 USPQ2d at 1318
(SMARTTOWER merely descriptive of commercial and industrial cooling towers);
Serial No. 86229868
- 4 -

In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely
descriptive of computer programs for use in developing and deploying application
programs); In re Putman Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD &
BEVERAGE ONLINE merely descriptive of news and information services in the
food processing industry). However, a mark comprising a combination of merely
descriptive components is registrable if the combination of terms creates a unitary
mark with a non-descriptive meaning, or if the composite has an incongruous
meaning as applied to the goods or services. See In re Colonial Stores Inc., 394 F.2d
549, 157 USPQ 382 (CCPA 1968) (SUGAR & SPICE for “bakery products”); In re
Shutts, 217 USPQ 363 (TTAB 1983) (SNO-RAKE for “a snow removal hand tool
having a handle with a snow-removing head at one end, the head being of solid
uninterrupted construction without prongs”). Thus, we must consider the issue of
descriptiveness by looking at the mark in its entirety.
“On the other hand, if one must exercise mature thought or follow a multi-stage
reasoning process in order to determine what product or service characteristics the
term indicates, the term is suggestive rather than merely descriptive.” In re Tennis
in the Round, Inc., 199 USPQ 496, 498 (TTAB 1978). See also, In re Shutts, 217
USPQ at 364-65; In re Universal Water Systems, Inc., 209 USPQ 165, 166 (TTAB
1980). In this regard, “incongruity is one of the accepted guideposts in the evolved
set of legal principles for discriminating the suggestive from the descriptive mark.”
In re Shutts, 217 USPQ at 365. See also In re Tennis in the Round, Inc., 199 USPQ
at 498 (the association of applicant’s mark TENNIS IN THE ROUND with the
Serial No. 86229868
- 5 -

phrase “theater-in-the-round” creates an incongruity because applicant’s services do
not involve a tennis court in the middle of an auditorium).
The word “Palm” is defined, inter alia, as “[t]he inner surface of the hand that
extends from the wrist to the base of the fingers.”3
The word “Free” is defined, inter alia, as “not subject to external restraint” and
“not bound, fastened, or attached.”4
When used in connection with a universal phone holder or harness, the term
PALMS FREE means an unencumbered hand. There is no incongruity to that term.
With respect to Applicant’s intended use of the mark PALMS FREE, Applicant
explains that its “applied-for mark PALMS FREE will be used with a universal
phone holder and/or harness that frees the user’s palms and permits them to be
used for other purposes while using a phone.”5 Thus, when used in connection with
a universal phone holder and/or harness, the mark PALMS FREE describes a
feature of Applicant’s products (i.e., that using a phone will be a hands-free event).
Applicant argues to the contrary that consumers will have to use their
imagination and reasoning to associate PALMS FREE with a phone holder or
harness.6
Users in the marketplace confronted with the mark
PALMS FREE may reason that the trademark describes a
device associated with a phone, or a phone that has hands

3 Yahoo! Education website (yahoo.com) attached to the June 30, 2014 Office Action. See
also the definitions attached to the December 12, 2014 Office Action.
4 Id.
5 4 TTABVUE 5.
6 4 TTABVUE 6.
Serial No. 86229868
- 6 -

free capability (such as for use in an automobile), but no
true device will come definitively to mind so the mark
cannot be said to “describe” the subject goods.
Applicant respectfully asserts, therefore, that while the
aggregate mark or phrase “palms free” may suggest any
type of a device or apparatus that might be operated
without reliance upon a user’s hands, no particular device
is described so the mark is not merely descriptive but
suggestive and, therefore statutory under section 2(e).
Put another way, Applicant agrees that a consumer could
guess that a PALMS FREE device could be a phone
harness or holder that allows a user to “hold” a phone
without relying on the use of the user’s hand to do so, but
cannot agree that doing so suggests that the mark is
descriptive. “Whether consumers could guess what the
product is from consideration of the mark alone is not the
test.”7
Applicant is correct that the test is not whether consumers could guess what the
product is after seeing the mark. However, as noted above, the issue is whether
someone who knows what the products are will understand the mark to convey
information about them. In this case, the products are universal phone holders and
harnesses and the mark PALMS FREE describes a feature or purpose of the
products by directly conveying to consumers that their hands will be unencumbered.
The fact that Applicant may be the first to use this term doesn’t make it distinctive.
See Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341, 1362 (TTAB 2013)
(“Even if applicant was the first and/or sole user of a generic term or phrase, as it
claims, that does not entitle applicant to register such a term or phrase as a mark.”)
(internal citations omitted).

7 5 TTABVUE 6-7.
Serial No. 86229868
- 7 -

Decision: The refusal to register Applicant’s mark PALMS FREE is affirmed.