Rebecca Brough

Trademark Trial and Appeal Board

Jul 7, 2008

No. 78680981re (T.T.A.B. Jul. 7, 2008)

Mailed: July 7, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Rebecca Brough
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Serial No. 78680981
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Request for Reconsideration
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Kenneth A. Linzer of Linzer & Associates, P.C. for Rebecca
Brough.

Robert Clark, Trademark Examining Attorney, Law Office 101
(Ronald R. Sussman, Managing Attorney).
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Before Zervas, Kuhlke and Taylor, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

On February 29, 2008 applicant filed a request for
reconsideration of the Board’s decision issued on January
30, 2008, wherein the Board affirmed the refusal to
register applicant’s mark under Sections
2(e)(1) and 2(a) of the Trademark Act on the ground that
applicant’s mark is deceptively misdescriptive and
deceptive. On April 9, 2008 the Board suspended
THIS DISPOSITION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78680981
2
consideration of the request pending decision by the
Commissioner on the concurrently filed petition to reopen.
On May 30, 2008, the Commissioner denied the petition. In
view thereof, we now take up for consideration applicant’s
request for reconsideration.
Applicant argues that the Board’s decision is
incorrect because 1) “the evidence does not support the
unreasonable and inconsistent conclusion that consumers
would believe that goods made of non-animal products are
made of animal products”; 2) “[a]pplicant has been making
substantial exclusive and continuous use of the ‘mink’ mark
... [and] is just two months shy of a five year claim of a
prima facie case of acquired distinctiveness...thus
overcoming a claim of deceptive misdescriptiveness” and 3)
“[t]here is no basis to infer that the misdescription is
likely to affect the decision to purchase based upon the
evidence.” Request for Reconsideration p. 2.
Turning to the first argument, applicant “does not
dispute the Board’s conclusion under the first part of the
test, that mink, an animal, misdescribes goods made of non-
animal products.” Request p. 3. However, applicant
contends that the Board “did not follow its own case law,
by failing to take into consideration the disclaimer ‘non-
animal products’ contained in the application when making
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3
their analysis of the goods” and thus the Board’s
“unreasonable conclusion that consumers would believe
Applicant’s non-animal products do contain animal products,
is inconsistent with their case law, and simply an
inconsistent conclusion.” Id.
We find no error on this point. The Board made its
analysis by considering applicant’s use of the mark on non-
animal products, that is the point of the refusal based on
deceptive misdescriptiveness.
Further, applicant’s argument that the Board
considered the examining attorney’s inferences that the
goods could include shoes, coats or hats with faux fur
“flies in the face of their criticism to applicant” of her
evidence of her use and publicity, is unavailing. The
Board must make its determination on the goods as
identified and cannot restrict the analysis to an
applicant’s particular use. Thus, applicant’s actual use
and marketing cannot be used to restrict our analysis when
the registration applicant seeks would, on its face,
include the scenario presented by the examining attorney,
i.e., use of faux fur. Inasmuch as the identification of
goods in the application does not exclude the possibility
of faux fur or limit the use of the mark to applicant’s
specific marketing, there is no error in the Board’s
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analysis or conclusions.1 The belief on a consumer’s part
that applicant’s non-animal goods contain mink is plausible
because mink is commonly used in such goods. In re
Phillips Van Heusen Corp., 63 USPQ2d 1047 (TTAB 2002). The
cases cited by applicant do not persuade us of a different
result. In the case In re Jacques Bernier, Inc., 894 F.2d
389, 13 USPQ2d 1725 (Fed. Cir. 1990), the refusal was
reversed because there was no evidence in the record to
support a goods/place association between Rodeo Drive and
perfume; however, we note that the mark in the same
application was found to be primarily geographically
deceptively misdescriptive based on a different record in a
subsequent inter partes proceeding. See Fred Hayman
Beverly Hills Inc. v. Jacques Bernier Inc., 38 USPQ2d 1691
(TTAB 1996). In the case In re One Minute Washer Co., 95
F.2d 517 (CCPA 1938), the court found that a consumer would
think that the mark ONE MINUTE suggests washing with

1 We further note that applicant states that the Board cited
Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205 (TTAB 2003) “for
the proposition that a determination must be based on all goods
listed in the application.” Request p. 3. In fact, this case
was cited because of its discussion of fraud in the procurement
of a registration due to non-use on some of the listed goods in
the application. Inasmuch as applicant’s entire discussion of
its use of the mark was only with footwear, it was not clear from
the record in this case that applicant was, in fact, using the
mark on each one of the goods listed in the identification of
goods at the time the application was filed and the case was
merely cited as informational only.

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celerity and as such it is neither descriptive nor
misdescriptive. The case In re George Washington Ate Here,
Inc., 167 USPQ 702 (TTAB 1970) cited by applicant is not
applicable here, inasmuch as it involved a refusal to
register GEORGE WASHINGTON ATE HERE on the ground that it
is merely a statement of fact rather than a service mark
and not on the ground of misdescriptiveness.
With regard to applicant’s second argument, the issue
of acquired distinctiveness is not before us inasmuch as
the application was never amended to seek registration
under Section 2(f) and it is past time for such an
amendment.
Finally, applicant argues that the evidence of record
does not establish that the misdescription is likely to
affect the decision to purchase. Applicant takes issue
with the examining attorney’s evidence because it consists
of excerpts from various websites stating that “the Board
accepted the evidence submitted by the Examining Attorney
as credible and persuasive, without explaining how the
statements from certain websites are reliable sources for
examining a trademark application.” Request p. 7.
Applicant, for the first time, now on request for
reconsideration, disputes the credibility of the examining
attorney’s evidence. Notably, much of applicant’s evidence
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consisted of excerpted web pages. Examining attorneys
routinely uses web pages retrieved from the Internet in
supporting their position and this is an acceptable
practice. See generally TMEP 710.01(b) (5th ed. 2007). It
is the applicant’s burden to challenge the evidence in a
timely manner, which applicant in this case did not do.
That being said, we continue to find the evidence of record
sufficient to support our determination that the presence
of mink in the goods is material to the purchasing
decision.
The purpose of reconsideration is to point out errors
made by the Board in reaching its decision. The bases for
the findings that the involved mark is deceptively
misdescriptive and deceptive are clearly articulated
therein and we do not find any error in reaching those
findings. Thus, we do not find any error in our
determination thereof. In view thereof, applicant’s
request for reconsideration of the Board’s decision is
denied, and the decision of January 30, 2008 stands.