Retail Royalty Company

Trademark Trial and Appeal Board

Apr 25, 2011

No. 77852780 (T.T.A.B. Apr. 25, 2011)

Mailed:
April 25, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Retail Royalty Company
________

Serial No. 77852780
_______

Theodore R. Remaklus of WOOD HERRON & EVANS LLP, for Retail
Royalty Company.

Tara J. Pate, Trademark Examining Attorney, Law Office 112
(Angela Wilson, Managing Attorney).
_______

Before Holtzman, Wellington, and Lykos, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Retail Royalty Company has appealed the final refusal
of the Trademark Examining Attorney to register KIDCARD, in
standard characters, for:
Retail store services and e-commerce electronic retail
store services in the field of wearing apparel and
accessories, bags, backpacks, jewelry, sunglasses,
fragrances, cosmetics and personal care products;
Retail store services and e-commerce electronic retail
store services in the field of wearing apparel and
accessories, bags, backpacks, jewelry, sunglasses,
fragrances, cosmetics and personal care products
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77852780
2
featuring a consumer loyalty program in which points
are accumulated to be used for discounts on future
purchases

in International Class 35.1

Registration has been refused pursuant to Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on
the ground that applicant’s mark is merely descriptive of
its recited services.
On the same day it filed this appeal, applicant filed
a request for reconsideration wherein it, inter alia,
staked an alternative position, i.e., that “in the event
the [Board] determines that applicant’s position regarding
registration on the Principal Register is not well taken,
Applicant...authoriz[es] the Examining Attorney to amend
the present application to the Supplemental Register….”2
Applicant cited to TMEP Section 816.04, which provides that
the “applicant may argue the merits of the examining
attorney’s refusal of registration on the Principal
Register and, in the alternative, request registration on
the Supplemental Register.” In response to applicant’s
request for reconsideration, the examining attorney issued
an Office Action maintaining the finality of the

1 Application Serial No. 77852780, filed October 20, 2009, based
on an allegation of first use anywhere and in commerce on January
1, 2010, under Section 1(a) of the Trademark Act (intent-to-use).
2 Applicant also amended its recitation of services; the
examining attorney accepted the amended recitation.
Serial No. 77852780
3
descriptiveness refusal and attached materials in support
of the refusal, but she did not address applicant’s
alternative request or otherwise indicate whether an
amendment to the Supplemental Register would be acceptable.3
In particular, she states that “[n]o new issue has been
raised and no compelling evidence has been presented with
regard to the [descriptiveness refusal].” September 10,
2010 Office Action.
The appeal has been fully briefed.
As a preliminary matter, we note applicant has raised
an objection in its appeal brief to the evidence submitted
by the examining attorney with the September 10, 2010
Office Action denying the request for reconsideration.
Specifically, applicant argues that its request for
reconsideration was “submitted solely to place into the
record Applicant’s alternative authorization to amend the
present applicant to the Supplemental Register” and that
the examining attorney’s evidence was improperly beyond the
scope of the issues raised by way of the request for
reconsideration. Brief, p. 11.

3 The examining had previously informed applicant in the “final”
Office Action that an “amendment to the Supplemental Register
would normally be an appropriate response to [the
descriptiveness] refusal,” but noted that this was not possible
because, at the time, the application was not based on use.
Applicant shortly thereafter, and prior to filing its request for
reconsideration, filed an allegation of use which was accepted.
Serial No. 77852780
4
As a general rule, the record in an ex parte
proceeding should be complete prior to the filing of an
appeal. Trademark Rule 2.142(d); see also TBMP § 1207 (2d
ed. rev. 2004). When an applicant files a request for
reconsideration, as applicant did here, the examining
attorney may, in response thereto, submit “new evidence
directed to the issue(s) for which reconsideration was
sought.” TBMP § 1207.04.
In the request for reconsideration, applicant
acknowledges the final Office Action and states that it
“respectfully disagrees with the Examining Attorney’s
[descriptiveness] refusal.” As its title connotes, the
request for reconsideration is asking the examining
attorney to reconsider the refusal. Thus, while
applicant’s request also asserted an alternative argument,
it was proper for the examining attorney to once again
address the descriptivess refusal and submit additional
evidence in support thereof. Accordingly, the objection is
not well taken and the evidence submitted by the examining
attorney with her September 10, 2010 Office Action is
properly of record.4

4 We hasten to add that even if we were to sustain the objection
and not to consider the evidence objected to, we would reach the
same result in this proceeding. In this regard, the examining
attorney’s evidence we reference in this decision was submitted
with her Office Actions that precede the request for
Serial No. 77852780
5
We turn now to the merits of the refusal to register
under Section 2(e)(1) of the Act. It is the Examining
Attorney’s position that the term KIDCARD describes
applicant’s recited services, namely, the “retail store
services...featuring a consumer loyalty program in which
points are accumulated to be used for discounts on future
purchases.” Specifically, she argues that “applicant’s
mark is merely the combination of descriptive terms” and
that, together, the mark is “descriptive of characteristics
and the intended use of the identified services” because
the loyalty program feature of applicant’s recited services
is “intended for children or young people” and “utilize
rectangular piece[s] of paper.” Brief, (unnumbered) p. 6.
In support of her position, the examining attorney has made
of record internet evidence regarding both third-party
loyalty programs, including those using "loyalty cards" and
those marketing products and services for children, and the
following dictionary definitions of the words “kid” and
“card”:5

reconsideration. Moreover, some of the materials submitted by
the examining attorney are printouts of dictionary definitions
and the Board may thus take judicial notice of these these
materials may be considered regardless of the timing of their
submission. University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
5 Evidence and dictionary definitions attached to Office Actions
dated February 1, 2010 and May 24, 2010. Definitions provided
Serial No. 77852780
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Kid: Informal. A child or young
person.

Card: A usually rectangular piece of
stiff paper, thin pasteboard, or
plastic for various uses, as to write
information or printed as a means of
identifying the holder.

Applicant, on the other hand, contends that KIDCARD is
not merely descriptive because the term “kid” is not
descriptive of “the intended users of the services or of
the services themselves” because “the intended users of
[applicant’s] customer loyalty program are parents, who
expected to take advantage of discounts provide by the
loyalty program in purchasing items for their children.”
Brief, p. 4, 5 (emphasis in original). Applicant also
argues that the composite mark is not descriptive and
“stands in contrast to those compound marks that do convey
immediate and distinct information about the products or
services with which they are used.” Id. at p. 9.
The evidence of record shows that customer loyalty
programs employ the use of customer loyalty cards. For
example:
Build Your Own Customer Loyalty Cards and
Build Your Business
Your Customer Loyalty Program is as Close as
Your Keyboard and Mouse

from several sources, including The American Heritage Dictionary
of English Language, Fourth Edition (2009).
Serial No. 77852780
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Custom Loyalty cards are a sure-fire way to
retain customers, see repeat business and
increase sales…
(www.123print.com)

Build Loyalty with Smart Cards and Watch
Your Business Grow...
(www.cardwerk.com)

The evidence also demonstrates that loyalty programs
are marketing devices that assist businesses target various
different demographics or types of consumers, including
those shopping for children’s goods or services. For
example:
GGP is one of a handful of mall management
firms using kids programming to drive family
traffic to malls...Simon Properties and The
Mills Corp. also began kids loyalty programs
last year.
(www.promomagazine.com)

A loyalty program that accumulates points on
behalf of the child for whom the merchandise
is purchased can also help you gain
customers and ensure repeat business...
(www.babyshopmagazine.com)

There is also a website for the Premier Palace Hotel
advertising, under a drop down menu titled “Loyalty
Programs,” a KIDS CLUB service (www.premier-palace.com).
These examples also show that loyalty programs involving
children’s products or services are ultimately directed to
the parents or families as the consumers or purchasers.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1) of the
Serial No. 77852780
8
Trademark Act, 15 U.S.C. § 1052(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 Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 217-18 (CCPA 1978). A term need not
immediately convey an idea of each and every specific
feature of the applicant’s goods or services in order to be
considered to be merely descriptive; rather, it is
sufficient that the term describes one significant
attribute, function or property of the goods or services.
In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re
MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a term is
merely descriptive is determined not in the abstract, but
in relation to the goods or services for which registration
is sought, the context in which it is being used on or in
connection with the goods or services, and the possible
significance that the term would have to the average
purchaser of the goods or services because of the manner of
its use; that a term may have other meanings in different
contexts is not controlling. In re Bright-Crest, Ltd., 204
USPQ 591, 593 (TTAB 1979). Moreover, if the mark is
descriptive of any of the goods or services for which
registration is sought, it is proper to refuse registration
Serial No. 77852780
9
as to the entire class.6 In re Analog Devices Inc., 6
USPQ2d 1808 (TTAB 1988), aff’d without pub. op., 871 F.2d
1097, 10 USPQ2d 1879 (Fed. Cir. 1989).
With the above principles in mind and based on the
evidence of record, we find that KIDCARD is merely
descriptive of applicant’s retail store services “featuring
a customer loyalty program.” The evidence shows that
consumers are accustomed to using cards in conjunction with
customer loyalty programs involving various services and
goods, including those involving goods and services for
children. The term “kid” is defined as “a child or young
person.” Thus, when the term KID is combined with CARD,
and is being viewed in connection with retail store
services featuring a customer loyalty program, it
immediately and directly informs consumers of a major
feature of the services, namely, that there is a card used
in conjunction with the retail store services based on
purchases for or by the children.

6 It is noted that the examining attorney focused her refusal on
the second part of applicant’s recited services, i.e.,
specifically those following a semi-colon and “featuring a
customer loyalty program.” Moreover, at one point in the
prosecution of the application, the examining attorney informed
applicant that should no response to an Office Action be filed,
only those services would be abandoned. However, since there was
no clear and explicit statement by the examining attorney that
the refusal pertained only to certain services, we find that the
refusal applies to the entire class. See TMEP § 718.02(a).

Serial No. 77852780
10
Applicant acknowledges that its services are directed
to parents, as the prospective customers of “clothing and
accessories...for children 10 and young”; applicant
clarifies “...it is clear that it is the parent and not the
child who will be using applicant’s retail services, it is
the parent and not the child who will be provided a KIDCARD
as part of the loyalty program...” Response (filed April
28, 2010) to Office Action. Applicant believes that
because the parents, and not children or kids, will be the
users of applicant’s KIDCARD customer loyalty program, the
“significance of [the mark], and specifically what it
describes about the services, is vague enough to render the
mark at best suggestive as a multi-link chain or multi-
stage reasoning processes is required to associate the
[mark] with the recited services.” Reply Brief, p. 2. We
agree with applicant to the extent that the relevant
consumers of its retail store services featuring a customer
loyalty program will more likely be adults and to the
extent that the goods are for children under the age of
ten, parents or other adults will most likely be the
consumers thereof. However, applicant’s recitation of
services does not limit the goods being sold as only for
those of a certain age. Furthermore, as previously stated,
mere descriptiveness is not a question of whether consumers
Serial No. 77852780
11
can identify the services or goods based solely on the
mark; rather, our analysis involves considering the
relevant consumer who is presented with the mark in
connection with the services and then we determine what
possible significance the mark will have to the average
purchaser of the goods or services because of the manner of
mark’s use. Here, parents who encounter the mark KIDCARD
in the context of applicant’s retail store services with a
customer loyalty program will immediately understand the
mark as referencing a feature of those services, namely, a
customer loyalty card based on purchases of the goods
either for or by the children.
Finally, we note applicant’s reliance on the principle
that when there is doubt on the issue of whether a mark is
merely descriptive, that doubt should be resolved in favor
of the applicant. However, in the present case we have no
doubt whatsoever that applicant’s mark is merely
descriptive of a key feature of the services recited in its
application.
Having found that applicant’s mark is merely
descriptive, we now address applicant’s alternative request
to amend the application to seek registration on the
Supplemental Register. Because the examining attorney has
not raised any objection in this regard or offered any
Serial No. 77852780
12
reason why applicant should not be permitted to do so, we
find that she has effectively conceded that the mark is
registrable on the Supplemental Register and any refusal
thereto has been waived. Accordingly, applicant’s
alternative request is granted and the application is
hereby amended to the Supplemental register.
Decision: The refusal to register on the Principal
Register is affirmed. However, applicant’s mark will be
registered on the Supplemental Register in due course.