RCG Inc.Download PDFTrademark Trial and Appeal BoardMar 31, 2011No. 77852698 (T.T.A.B. Mar. 31, 2011) Copy Citation Mailed: March 31, 2011 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re RCG Inc. ________ Serial No. 77852698 Filed: October 20, 2009 _______ Kevin Lynn Wildenstein, Southwest Intellectual Property Services, for RCG Inc. Marilyn Izzi, Trademark Examining Attorney, Law Office 112, Angela Bishop Wilson, Managing Attorney. _______ Before Quinn, Holtzman, and Mermelstein, Administrative Trademark Judges. Opinion by Mermelstein, Administrative Trademark Judge: Applicant seeks registration of HEAVENLY DESIGNS (in standard characters) for “cremation urns,” in International Class 20.1 Registration has been finally refused in light of the applicant’s failure to comply with the examining attorney’s requirement for a disclaimer of the term “DESIGNS,” pursuant to Trademark Act § 6(a), 15 U.S.C. § 1056(a), on the ground 1 Based upon the allegation of first use at least as early as August 8, 2009, and use in commerce at least as early as October 20, 2009. THIS DECISION IS NOT A PRECEDENT OF THE TTAB Serial No. 77852698 2 that the term is merely descriptive of a feature of the identified goods and services. Applicant appealed the disclaimer requirement. We affirm. I. Procedural Matters Attached to applicant’s brief on appeal were 41 pages of evidence which had not been submitted during examination. The evidence comprises one dictionary definition (of the word “design”) and a number of records from the USPTO TESS database. The examining attorney objected to consideration of applicant’s evidence in her brief. We sustain the examining attorney’s objection to the TESS evidence. “The record in the application should be complete prior to the filing of an appeal. The Trademark Trial and Appeal Board will ordinarily not consider additional evidence filed with the Board by the appellant or by the examiner after the appeal is filed.” Trademark Rue 2.142(d); see, e.g. In re Wacker Neuson SE, 97 USPQ2d 1408, 1409 (TTAB 2010); In re MC MC S.r.l., 88 USPQ2d 1378, 1379 n.3 (TTAB 2008). The TESS evidence has not been considered, and we give no consideration to the arguments in applicant’s brief relying on it (primarily § IV.B., pp. 9-10). Serial No. 77852698 3 On the other hand, we have considered applicant’s dictionary definition. We may take judicial notice of such material, 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 Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). Although the examining attorney objects and complains that applicant did not explicitly request judicial notice of this evidence, the lack of a specific request is not fatal because the Board may take judicial notice on its own, or upon request of the applicant or examining attorney. Nor does the lack of a request for judicial notice disadvantage the Office; such requests are fairly routine, and are usually granted. In any event, the examining attorney had an ample opportunity to respond to the dictionary definition in her brief. Following submission of the examining attorney’s brief on September 14, 2010, applicant filed a “request for reconsideration” of the examining attorney’s final Office action on October 7, 2010, and, on October 8, 2010, applicant filed a reply brief in this appeal. By order dated October 20, 2010, the Board construed applicant’s request for reconsideration as a request for remand, which Serial No. 77852698 4 was denied as untimely. We also determined that applicant’s reply brief was untimely, and would not be considered. Accordingly, in rendering this decision we have considered neither applicant’s request for reconsideration (and the accompanying evidence) nor applicant’s reply brief. II. Disclaimer – Descriptiveness A. Applicable Law “The Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable.” Trademark Act § 6(a). Merely descriptive or generic terms are unregistrable under Trademark Act § 2(e)(1), 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 a ground for refusal of registration. See In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Box Solutions Corp., 79 USPQ2d 1953, 1954 (TTAB 2006). A term is merely descriptive if it immediately conveys knowledge of a significant quality, characteristic, function, feature or purpose of the goods with which it is used. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Whether a particular term is merely descriptive is determined in relation to the products for Serial No. 77852698 5 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 Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other words, the issue is whether someone who knows what the products are will understand the mark to convey information about them. In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent & Trademark Serv. Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders Ass’n of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). “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, 497 (TTAB 1978); see also In re Shutts, 217 USPQ 363, 364-365 (TTAB 1983); In re Universal Water Sys., Inc., 209 USPQ 165, 166 (TTAB 1980). Even where individual terms are descriptive, combining them may evoke a new and unique commercial impression. If each component retains its merely descriptive significance in relation to the goods, without the combination of terms creating a unique or Serial No. 77852698 6 incongruous meaning, then the resulting combination is also merely descriptive. In re Tower Tech., 64 USPQ2d at 1317- 1318. B. Descriptiveness of “DESIGNS” Applicant’s goods are identified as “cremation urns.” The examining attorney maintains that the term “designs,” as used in applicant’s mark refers to “the way in which something is planned and made”; “the elegant design of the aircraft’s wings.” MSN ENCARTA DICTIONARY http://encarta.msn.com (Feb. 2, 2010). In other words, objects have a “style” or “design” to them that comes from planning to make them and executing that plan. Cremation urns are no exception. The use of the term “DESIGNS” in the present case refers to the fact that the goods have a through-out style to them rather than being strictly utilitarian. ... Alternatively, the term “design” refers to a “decorative pattern; a pattern or shape, sometimes repeated, used for decoration. [citing MSN Encarta Dictionary]. Thus, if the goods of Applicant have an ornamental or decorative pattern, the term would be descriptive of that feature of the goods. Ex. Att. Br. at 2-3. On appeal,2 applicant disagrees, arguing that DESIGNS does not “directly give some reasonable accurate or 2 Applicant reproduces in the introductory portion of its brief its response to the first Office action, in which it argued that the examining attorney’s determination that DESIGNS is descriptive is the result of a “mental leap,” arrived at through a “four-step” reasoning process as follows: Serial No. 77852698 7 tolerably distinct knowledge of the characteristics, properties, qualities, features, or functions of use of the goods associated with the mark.” App. Br. a 7. Nonetheless, the examining attorney argues that in order to be held descriptive, it is not necessary that one be able to discern what the goods are simply from the mark; instead, we must “consider the term in the context of the goods and determine whether the term describes the goods, or a feature, characteristic, or purpose of the goods.” Ex. Att. Br. at 5 (citing In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Polo Int’l Inc., 51 USPQ2d 1061 (TTAB 1999)). We agree. Descriptiveness is not determined in a vacuum, but with reference to the identified goods. In re Fitch IBCA Inc., 64 USPQ2d 1058, 1060 (TTAB 2002). Although the word “designs” in the mark HEAVENLY DESIGNS • First reviewing the mark, • Reviewing the description of goods/services for the present mark, • Performing an Internet search request, and then • Viewing the search results. Applicant’s characterization of the examining attorney’s actions as evidencing non-descriptiveness is absurd. The first three steps listed above are required in order to establish descriptiveness; the first two because a mark must always be “reviewed” in the context of the goods or services for which registration is sought. The third step is also required, because the examining attorney must support any refusal with evidence. And while there is no statutory requirement that the examining attorney actually look at the evidence, failure to do so would Serial No. 77852698 8 provides little information about the goods without any understanding of what the goods are, with knowledge of the goods, the term – as it functions in the mark as a whole – clearly imparts to the prospective customer that the marked goods feature pleasing3 designs or are pleasantly designed. Applicant’s specimens of use bear out this understanding of the mark (and the meaning of “DESIGNS”): As can be seen, applicant promotes the design of its marks as a feature of the goods, and the goods are not simply utilitarian containers for ashes. not serve the interests of applicants, facilitate orderly examination, or further the purposes of the statute. Serial No. 77852698 9 Drawing on the dictionary definition attached to its brief, applicant states that “there are several definitions of the word ‘design,’” listing the four senses of the word displayed in the attached exhibit, and arguing that none of these definitions apply to its goods. App. Br. at 7-8. The problem with applicant’s reliance on its attached dictionary evidence is that it is incomplete. The exhibit indicates that there were “5 entries found” for the word “design,” including both verb and noun senses of the word: But applicant has only reproduced (or discussed) the verb entries. By contrast, the examining attorney’s dictionary evidence includes both verb and noun definitions for “design.” The examining attorney relies primarily on the noun definitions, most likely because that makes more sense in considering whether the mark is descriptive in relation to applicant’s goods. But because applicant does not provide the relevant noun definitions from the Merriam- Webster dictionary entry on which it relies, we cannot tell 3 We take judicial notice of the definition of “heavenly Serial No. 77852698 10 whether it actually contradicts or refutes the examining attorney’s evidence in any way. Finally, the examining attorney has made of record three registrations in which the word “design” was disclaimed. None of them is for cremation urns; the examining attorney states that she was unable to find any registrations for the same goods including the word “design.” Rather, the examining attorney has submitted registrations covering “garden urns,” “glass storage jars,” and “vases” (among other goods). Contrary to applicant’s argument, we do not believe that these registrations are irrelevant. “Third-party registrations can be used in the manner of a dictionary definition to illustrate how a term is perceived in the trade or industry.” Box Solutions., 79 USPQ2d at 1955; see also Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1797 (Fed. Cir. 1987). These registrations do show that the term “designs” has been held descriptive for arguably similar goods. However, while we view the third-party registrations as generally supportive of the examining attorney’s position, they are hardly dispositive, owing to the relatively small number of them, and the differences in the goods at issue. (adjective)” as “2 ... b: DELIGHTFUL.” MERRIAM-WEBSTER DICTIONARY, www.merriam-webster.com (March 30, 2011). Serial No. 77852698 11 III. Conclusion We have carefully considered all of the properly submitted evidence and argument in this matter. We conclude that the term DESIGNS is merely descriptive of a feature or characteristic of applicant’s goods. Decision: The refusal to register in the absence of a disclaimer of DESIGNS is affirmed. However, this decision will be set aside if, within thirty days of the mailing date of this order, applicant submits to the Board a proper disclaimer of “DESIGNS.”4 See Trademark Rule 2.142(g); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 1218 (4th ed. rev. 2004). 4 An appropriate disclaimer is worded as follows: “No claim is made to the exclusive right to use DESIGNS apart from the mark as shown.” Copy with citationCopy as parenthetical citation