RCG Inc.

Trademark Trial and Appeal Board

Mar 31, 2011

No. 77852698 (T.T.A.B. Mar. 31, 2011)

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
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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
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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
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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
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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
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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
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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.”