Premium Outlet Partners, L.P.

Trademark Trial and Appeal Board

Dec 21, 2020

87982158 (T.T.A.B. Dec. 21, 2020)

Mailed: December 21, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board

———
In re Premium Outlet Partners, L.P.
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Serial No. 87982158
———
Daniel L. Boots and Michael J. McGee, of Dentons Bingham Greenbaum LLP for
Premium Outlet Partners, L.P.
April Roach, Trademark Examining Attorney, Law Office 115, Daniel Brody,
Managing Attorney.
———
Before Cataldo, Lykos and Lynch, Administrative Trademark Judges.
Opinion by Cataldo, Administrative Trademark Judge:
Applicant, Premium Outlet Partners, L.P., applied to register LOS ANGELES
PREMIUM OUTLETS (in standard characters, LOS ANGELES and OUTLETS
disclaimed) on the Principal Register with a claim of acquired distinctiveness under
Trademark Act Section 2(f), 15 U.S.C. § 1052(f) in part as to PREMIUM OUTLETS,1

1 Filed June 6, 2018 under Section 1(b) of the Trademark Act, 15 U.S.C. § 1052(b), alleging a
bona fide intent to use the mark in commerce as to all classes of services. Applicant submitted
This Opinion is not a
Precedent of the TTAB
Serial No. 87982158

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identifying the following services, as amended (emphasis added):
Business management services in connection with retail
shopping centers; promoting the goods and services of
others by means of operating retail shopping
centers, namely, operating shopping facilities
providing access to the retail stores of others ;
advertising and marketing services; digital marketing
services; promoting the goods and services of others by
means of on-line and in-person marketing of gift cards
redeemable for the purchase of the goods and services of
others; promoting the goods and services of others by
means of sponsorship relationships and strategic alliances;
on-line retail store services in the field of gift cards in Class
35;
Real estate management and leasing of retail shopping
center space; retail shopping center services, namely,
rental of shopping center space in Class 36; and
Real estate development of retail shopping centers,
namely, the planning and management of the construction
of retail shopping venues in International Class 37.

its disclaimer of OUTLETS in response to the Examining Attorney’s requirement, and its
disclaimer of LOS ANGELES in its brief, (6 TTABVUE 8) in order to overcome the Examining
Attorney’s refusal of registration under Trademark Act Section 2(e)(2), 15 U.S.C. § 1052(e)(2).
In her brief, (8 TTABVUE 4) the Trademark Examining Attorney accepted the disclaimer
and indicated that the Section 2(e)(2) refusal “is now moot.” (Id.) Accordingly, we consider
the Section 2(e)(2) refusal to be withdrawn, and give it no consideration.
This application is the child application of Serial No. 87951181 for the mark LOS ANGELES
PREMIUM OUTLETS in standard characters, with a Section 2(f) claim as to PREMIUM
OUTLETS and a disclaimer of LOS ANGELES and OUTLETS, identifying goods in Class 9
and services in Class 41.
All citations to documents contained in the Trademark Status and Document Retrieval
(TSDR) database are to the downloadable .pdf versions of the documents in the USPTO TSDR
Case Viewer. See, e.g., In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1402 n.4 (TTAB
2018). References to the briefs on appeal refer to the Board’s TTABVUE docket system.
Before the TTABVUE designation is the docket entry number; and after this designation are
the page references, if applicable.
Serial No. 87982158

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Applicant appeals from the Examining Attorney’s final refusal to register based
upon Applicant’s failure to submit an acceptable identification of certain services
listed in Class 35.
I. Judicial Notice
We exercise our discretion to take judicial notice of the dictionary definitions
submitted by the Examining Attorney with her appeal brief, retrieved from merriam-
webster.com.2 It is well-settled that the Board may take judicial notice of dictionary
definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ
594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including
online dictionaries that exist in printed format or have regular fixed editions. In re
Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118
USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96
USPQ2d 1031, 1038 n.14 (TTAB 2010); In re Red Bull GmbH, 78 USPQ2d 1375, 1378
(TTAB 2006).
We turn now to the merits of this appeal.
II. Identification of Services
In order to comply with statutory and regulatory requirements for filing an
application, the wording of the identification must be clear and complete. 15 U.S.C.
§§ 1051(a)(2) and 1051(b)(2); 37 C.F.R. § 2.32(a)(6). The USPTO has discretion to
require the degree of particularity deemed necessary to identify with specificity the

2 8 TTABVUE 8-27; 9 TTABVUE 2-18.

Serial No. 87982158

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goods or services covered by the mark. See In re Omega SA, 494 F.3d 1362, 83
USPQ2d 1541, 1544 (Fed. Cir. 2007); In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A.,
109 USPQ2d 1593, 1597 (TTAB 2014).
In this case, the Examining Attorney argues that the wording “promoting the
goods and services of others by means of operating retail shopping centers, namely,
operating shopping facilities providing access to the retail stores of others” in the
current identification of Class 35 services is indefinite because it “does not make clear
how operation of a shopping center facility and providing access to stores is a type of
promotional service.”3
In the application as originally filed, Applicant identified the services in question
as “promoting the goods and services of others by means of operating retail shopping
centers.”4 The Examining Attorney provides the following timeline for the subsequent
amendment of this wording throughout examination of the involved application, and
her rationale for rejecting Applicant’s proposed amendments:5
September 24, 2018 office action: “Applicant’s identification also
requires clarification [of “how operations of a shopping center is a
promotional service, e.g., operation of an online shopping mall with links
to retail websites of others”6] as set forth in the sample amended
identification. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.”

April 15, 2018 office action: “The wording “promoting the goods and
services of others by means of operating retail shopping centers” is
indefinite and must be clarified to specify how operating a shopping

3 8 TTABVUE 5.
4 TEAS RF New Application, filed June 6, 2018.
5 8 TTABVUE 5.
6 September 24, 2018 First Office Action at 4.
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center is a type of promotional service. See 37 C.F.R. §2.32(a)(6); TMEP
§1402.01.”

November 10, 2019 final action: “The wording “promoting the goods and
services of others by means of operating retail shopping centers
featuring the goods and services of others” is indefinite and must be
clarified to specify how operating a shopping center is a type of
promotional service. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Merely
adding “featuring the goods and services of others” fails to specify how
operation of a shopping center is a type of promotional service.”

June 2, 2020 denial of [request for] reconsideration: “Applicant must
clarify the wording “promoting the goods and services of others by means
of operating retail shopping centers, namely, operating shopping
facilities providing access to the retail stores of others” in International
Class 35 because it is indefinite must be clarified. See 37 C.F.R.
§2.32(a)(6); TMEP §1402.01. Operating a shopping facility and
providing access to stores is not a type of promotional service. Applicant
must amend this wording to specify a type of promotional service.”

In its brief, Applicant argues:7
Operation of a retail shopping facility is a “real” activity. Indeed, “[i]t
has long been recognized that gathering various products together,
making a place available for purchasers to select goods, and providing
any other necessary means for consummating purchases constitutes the
performance of a service.” Operation of a retail shopping facility is also
an activity that is for the benefit of someone other than Applicant. As
noted above, both consumers and third-party retailers derive a direct
and substantial benefit by virtue of Applicant’s services, as Applicant
has afforded these parties a means for consumers to select goods and
services, and for third-party retailers to offer and display their
respective goods and services for sale to consumers.

Applicant’s activity (“promoting the goods and services of others by
means of operating retail shopping centers, namely, operating shopping
facilities providing access to the retail stores of others”) is indeed a
service. Applicant’s proposed wording is in no way inconsistent with the
Examining Attorney’s proposed (inaccurate) wording, that is “promoting
the goods and services of others by means of operating retail shopping
centers, namely, operating an on-line shopping mall with links to the
retail web sites of others.” From a logical perspective, there is no

7 6 TTABVUE 9-10.
Serial No. 87982158

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difference between operation of an in-person shopping facility versus an
“on-line shopping mall.” Both activities provide a venue for consumers
to access and purchase the goods of others, and for third-party retailers
to offer their respective wares.

In her brief, the Examining Attorney argues that the issue is not whether
operation of a retail shopping center is a real activity that constitutes a service.
Rather, the Examining Attorney explains:8
Applicant has not addressed the reason for the requirement, i.e., that it
is failed to properly clarify the indefinite wording. “Promoting” means
“to present (merchandise) for buyer acceptance through advertising,
publicity, or discounting,[”] “operating” means “of, relating to, or used
for operations” and “operation” means “performance of a practical work
or of something involving the practical application of principles or
processes,” and “access” means “permission, liberty, or ability to enter,
approach, or pass to and from a place or to approach or communicate
with a person or thing.”

The introductory portion of applicant’s proposed wording describe [sic]
the nature of the services as “promoting” which is the presentation of
goods by means such as advertising. Applicant proposes to clarify the
type of promotional services as “operating” and “access,” which are
performing practical work, and providing entry to a place, respectively.
Performing the work of operating a shopping center, and providing for
entry into a center are not activities that would reasonably be considered
types of promotional services.

In support of the refusal of registration, the Examining Attorney has introduced
into the record with her brief, the following dictionary definitions:
Promote – to contribute to the growth or prosperity of; to help bring
(something, such as an enterprise) into being : launch; to present

8 8 TTABVUE 5-6.
Serial No. 87982158

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(merchandise) for buyer acceptance through advertising, publicity or
discounting;9
Operating – of, relating to, or used for or in operations; arising out of or relating
to the current daily operations of a concern (as in transportation or
manufacturing) as distinct from its financial transactions and permanent
improvements; 10
Operation – performance of a practical work or of something involving the
practical application or principles or processes; an activity of a business or
organization;11 and
Access – freedom or ability to obtain or make use of something; to be able to
use, enter, or get near (something); the right or ability to approach, enter, or
use.12
The Examining Attorney also introduced into the record during prosecution five
third-party registrations in support of her requirement for a disclaimer of
OUTLETS.13 These include:
Reg. Nos. 3315244 and 4584887, both owned by the same entity, identifying,

9 8 TTABVUE 8-17.
10 8 TTABVUE 18-25.
11 8 TTABVUE 26-27; 9 TTABVUE 2-18.
12 9 TTABVUE 9-18.
13 April 15, 2019 Second Office Action at 7-21.
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inter alia, “promoting the goods and services of others by means of operating
retail shopping malls;” and
Reg. No. 5241781, identifying, inter alia, “promoting the goods and services of
others by means of operating retail shopping centers.”
In reply, Applicant argues:14
the Examining Attorney focuses on the terms “operating,” and “access,”
making an arbitrary distinction between “promotional” and “practical”
services.

Applicant is aware of no legal support for such a distinction. Indeed, the
Examining Attorney’s prior suggested amended wording (“promoting
the goods and services of other by means of operating retail shopping
centers, namely, operating an online shopping mall with links to
the retail websites of others”) controverts this newly made
distinction. (emphasis added). The Examining Attorney’s own wording
makes use of the term “operating,” and Applicant respectfully submits
that use of “operating” in this clearly analogous context should not lead
to a different result.

We agree with the Examining Attorney that the question of whether operation of
a retail shopping center constitutes a service is not at issue herein, and further does
not appear to be in dispute. Turning to the question of whether operation of a retail
shopping center constitutes a promotional service, the Examining Attorney relies
upon a semantic argument supported almost exclusively by a series of dictionary
definitions. The Examining Attorney argues that operating a retail shopping center
does not constitute “activities that would reasonably be considered types of
promotional services.”15 However, aside from her interpretation of the wording of

14 10 TTABVUE 4.
15 8 TTABVUE 6.
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Applicant’s proposed identification of services, the Examining Attorney fails to
provide a basis for this contention.
The Examining Attorney’s own proffered definition of “promoting” would include
contributing to the growth or prosperity of the retail stores within the shopping
center, or helping bring the retail stores into being. Operating the shopping facilities
within which the stores exist and providing access to them certainly could contribute
to the growth or prosperity of the stores, and even could help launch the retail stores.
Thus, we find such “promoting” activities fall reasonably within the scope of operating
a retail shopping center.
In addition, the Examining Attorney fails to adequately explain why her
suggested amendment to the wording in question, “promoting the goods and services
of other by means of operating retail shopping centers, namely, operating an on-line
shopping mall with links to the retail web sites of other”16 would acceptably identify
a promotional service while Applicant’s proposed “promoting the goods and services
of others by means of operating retail shopping centers, namely, operating shopping
facilities providing access to the retail stores of others” does not. Both activities
involve promotional services rendered by operating shopping centers and providing
access to the retail stores of others, the distinction primarily being a virtual versus
“brick and mortar” mall. Without further explanation, this distinction does not
support the Examining Attorney’s contentions. We note, in that regard, that the
Examining Attorney’s requirement appears to be grounded in her belief that

16 November 10, 2019 Final Office Action at 4.
Serial No. 87982158

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operation of a physical shopping mall cannot constitute a promotional service.
However, as noted above the Examining Attorney has not adequately explained or
supported her rationale therefor.
Further, the above-noted third-party registrations, identifying promotional
services provided by means of operating shopping malls or centers, suggest that other
Examining Attorneys have considered this type of identification acceptable. We agree
that each case must be must be decided on its own facts and the fact the same
identification was previously accepted, even by the same examining attorney in a
related case, does not compel the USPTO to accept an identification of goods that is
indefinite. See In re Omega SA, 83 USPQ2d at 1544. Nonetheless, they at least are
consistent with our finding in this case that the language is sufficiently definite . We
further note that the services identified in these third-party registrations arevery
similar to Applicant’s original recitation thereof, namely, “promoting the goods and
services of others by means of operating retail shopping centers.”17 It is settled that
the identification of goods or services in an application must be specific, definite,
clear, accurate, and concise. See In re Petroglyph Games Inc., 91 USPQ2d 1332, 1335
(TTAB 2009). We find that in this particular case, Applicant’s identification of
services satisfies this requirement.
Decision: For the foregoing reasons, the requirement for a more definite
identification of Class 35 services is reversed.

17 TEAS RF New Application, filed June 6, 2018.