Rhoda Richard

Trademark Trial and Appeal Board

Jun 23, 2016

No. 86255498 (T.T.A.B. Jun. 23, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: June 23, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Rhoda
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Serial No. 86255498
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Sharon Gobat of Bel-Air Intellectual Property,
for Rhoda Richard.
Fong Hsu, Trademark Examining Attorney, Law Office 115,
Helen Bryan-Johnson, Managing Attorney.
_____

Before Quinn, Bergsman and Pologeorgis,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Richard Rhoda (“Applicant”) seeks registration on the Principal Register of the
mark BAITBEADS (in standard characters) for “fishing tackle; artificial fishing
lures,” in International Class 28.1

1 Application Serial No. 86255498 was filed on April 17, 2014, based upon Applicant’s claim
of first use anywhere and use in commerce since at least as early as April 16, 2014.

Through an Examiner’s Amendment dated November 3, 2015, Applicant amended his
application to the Supplemental Register. However, he withdrew the amendment to the
Supplemental Register requesting that his “timely filed brief can be considered by the Board
as a plea to restore the application to seek registration on the Principal Register.” 8
TTABVUE 2. While the Trademark Examining Attorney noted the amendment to the
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The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that
Applicant’s mark BAITBEADS is merely descriptive of fishing tackle and artificial
fishing lures because the mark describes beads used as lures. As best we understand
Applicant’s argument, BAITBEADS is suggestive, not merely descriptive, because
BAITBEADS is an incongruous term since fishing tackle and lures are not bait.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Procedural Issue
Before proceeding to the merits of the refusal, we address a procedural matter.
Although Applicant’s Reply Brief was due April 13, 2016, Applicant did not file
his Reply Brief until April 14, 2016. In addition, Applicant attached evidence not
previously made of record. Applicant filed a request for the Board to consider the late-
filed reply brief on the ground that “the Declarations associated with the brief could
not be completed until the day of the deadline.”2
Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d), mandates that the record in the
application should be complete prior to the filing of an appeal.
The record in the application should be complete prior to
the filing of an appeal. The Trademark Trial and Appeal

Supplemental Register, she did not note its withdrawal. Nevertheless, we find that Applicant
withdrew the amendment to the Supplemental Register and that, through this appeal,
Applicant seeks to reverse the refusal of registration on the Principal Register.

2 14 TTABVUE 2.
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Board will ordinarily not consider additional evidence filed
with the Board by the appellant or by the examiner after
the appeal is filed. After an appeal is filed, if the appellant
or the examiner desires to introduce additional evidence,
the appellant or the examiner may request the Board to
suspend the appeal and to remand the application for
further examination.
While Applicant’s request explains why he could not complete the evidentiary
declaration by the due date of his Reply Brief, he did not explain why he was
attempting to file the declaration after the evidentiary record was closed. Since the
evidence attached to Applicant’s Reply Brief was not timely filed, it will be given no
consideration. On the other hand, we will consider the arguments in the Reply Brief
without considering any reference to the late-filed evidence.
II. Applicable Law
A term is merely descriptive of goods or services within the meaning of Section
2(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
Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir.
2012). See also, In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
Whether a mark or a component of a mark is merely descriptive is determined in
relation to the goods or services for 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
Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle,
66 USPQ2d 1222, 1224 (TTAB 2002). A term need not immediately convey an idea of
each and every specific feature of the goods or services in order to be considered
Serial No. 86255498
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merely descriptive; it is enough if it describes one significant attribute, function or
property of them. See In re Gyulay, 3 USPQ2d at 1010; In re H.U.D.D.L.E., 216 USPQ
358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). This requires
consideration of the context in which the mark is used or intended to be used in
connection with those goods or services, and the possible significance that the mark
would have to the average purchaser of the goods or services in the marketplace. See
In re Chamber of Commerce of the U.S., 102 USPQ2d at 1219; In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007); In re Abcor
Dev. Corp., 200 USPQ at 218; In re Venture Lending Assocs., 226 USPQ 285 (TTAB
1985). The question is not whether someone presented only with the mark could guess
the products or activities listed in the description of goods or services. Rather, the
question is whether someone who knows what the products or services are will
understand the mark to convey information about them. DuoProSS Meditech Corp.
v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012)
(quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002). See also
In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re
Home Builders Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re
American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
When two or more merely descriptive terms are combined, the determination of
whether the composite mark also has a merely descriptive significance turns on the
question of whether the combination of terms evokes a non-descriptive commercial
impression. If each component retains its merely descriptive significance in relation
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to the goods or services, the combination results in a composite that is itself merely
descriptive. In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371
(Fed. Cir. 2004) (quoting Estate of P.D. Beckwith, Inc. v. Commissioner, 252 U.S. 538,
543 (1920)). See also In re Tower Tech, Inc., 64 USPQ2d at 1318 (SMARTTOWER
merely descriptive of commercial and industrial cooling towers); In re Sun
Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely descriptive
of computer programs for use in developing and deploying application programs); In
re Putman Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE
ONLINE merely descriptive of news and information services in the food processing
industry). However, a mark comprising a combination of merely descriptive
components is registrable if the combination of terms creates a unitary mark with a
non-descriptive meaning, or if the composite has an incongruous meaning as applied
to the goods or services. See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382
(CCPA 1968) (SUGAR & SPICE for “bakery products”); In re Shutts, 217 USPQ 363
(TTAB 1983) (SNO-RAKE for “a snow removal hand tool having a handle with a
snow-removing head at one end, the head being of solid uninterrupted construction
without prongs”). Thus, we must consider the issue of descriptiveness by looking at
the mark in its entirety.
“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, 498 (TTAB 1978). See also, In re Shutts, 217 USPQ
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at 364-65; In re Universal Water Systems, Inc., 209 USPQ 165, 166 (TTAB 1980). In
this regard, “incongruity is one of the accepted guideposts in the evolved set of legal
principles for discriminating the suggestive from the descriptive mark.” In re Shutts,
217 USPQ at 365. See also In re Tennis in the Round, Inc., 199 USPQ at 498 (the
association of applicant’s mark TENNIS IN THE ROUND with the phrase “theater-
in-the-round” creates an incongruity because applicant’s services do not involve a
tennis court in the middle of an auditorium).
Bait is defined, inter alia, as a verb meaning “to put a piece of food on (a hook) or
in (a trap) in order to attract and catch fish or animals” and as a noun meaning
“something (as food) used in luring especially to a hook or trap.”3
A bead is defined as “a small, usually round piece of glass, wood, stone, etc. that
has a hole through its center and that is put on a string with other similar pieces and
worn as jewelry or that is sewn onto clothing.”4
Fisherman use natural or live bait (e.g., worms, grubs, maggots, etc.) and artificial
baits and lures. “[A]rtificial baits come in a bewildering array of styles, shapes,
strategies, and colors, ranging from massive, shiny silver spoon-like devise trolled for
big lake fish to wispy dry flies, tiny bundles of features and fur delicately cast to
flighty trout.”5

3 Merriam-Webster Online Dictionary (merriam-webster.com) attached to the February 24,
2015 Office Action.
4 Id.
5 “Fishing: Natural Bait vs. Artificial Lures,” Discover Boating website (no url) attached to
the August 24, 2015 Response (4 TTABVUE 28).
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Fish beads are a lure that reflect light to attract fish.6 A photograph of fishing
beads on hook is displayed below:7

Lures are referred to as artificial bait. For example, the
MonsterFishingTackle.com website advertises the sale of Hot Spot Roller Bait Bead,8
and Dick’s Sporting Goods website (dickssportinggoods.com) advertises the sale of
“Soft Plastic Baits.”9 The eHow website (ehow.com) has posted an article entitled
“How to Fish With Artificial Bait” instructing the reader that “you manipulate the
artificial bait with skill and finesse to fool the fish into thinking he’s about to chomp

6 Uncle Junes website (lightningbeads.com), Jann’s Netcraft website (jannsnetcraft.com), and
Tackle the Surf website (tacklethesurf.com) attached to the July 31, 2014 Office Action, and
Cabelas website (cabelas.com) attached to the February 24, 2015 Office Action.
7 Uncle Junes website (lightningbeads.com) attached to the July 31, 2014 Office Action.
8 July 31, 2014 Office Action.
9 6 TTABVUE 5-6.
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into a meal.”10 See also “Artificial Baits,” as a line of products, posted on the Total
Fishing website (total-fishing.com),11 and on the Carp Kit website (carpkit.com).12
We find, first, that the compression of the words BAIT BEADS into a single term,
BAITBEADS, conveys the commercial impression of two words. In other words,
consumers would recognize the mark as consisting of the separate elements BAIT
and BEADS. See In re Carlson, 91 USPQ2d 1198, 1200 (TTAB 2009)
(URBANHOUZING would be recognized as URBAN HOUSING); In re Cox
Enterprises Inc., 82 USPQ2d 1040, 1043 (TTAB 2007) (“THEATL is simply a
compressed version of the descriptive term THE ATL without a space between the
two words. Without the space, THEATL is equivalent in sound, meaning and
impression to THE ATL and is equally descriptive of applicant's goods”); In re
Planalytics Inc., 70 USPQ2d 1453, 1455 (TTAB 2004) (GASBUYER merely
descriptive of providing on-line risk management services in the field of pricing and
purchasing decisions for natural gas; the absence of the space does not create a
different meaning or perception of the term). The Planalytics decision, 70 USPQ2d at
1455-56, also cited the following cases in which, although a space was deleted
between the words, the combined term remained descriptive:
In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110
(Fed. Cir. 1987) (SCREENWIPE generic for a wipe for
cleaning television and computer screens); In re Abcor Dev.
Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978)
(GASBADGE at least descriptive for gas monitoring

10 6 TTABVUE 7-8.
11 6 TTABVUE 10-18 and 5 TTABVUE 2-4 (the TTABVUE entries were posted out of order).
12 5 TTABVUE 5-7.
Serial No. 86255498
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badges; three judges concurred in finding that term was
the name of the goods); In re Orleans Wines, Ltd., 196
USPQ 516 (TTAB 1977) (BREADSPRED descriptive for
jams and jellies that would be a spread for bread); In re
Perkin-Elmer Corp., 174 USPQ 57 (TTAB 1972)
(LASERGAGE merely descriptive for interferometers
utilizing lasers).
BAITBEADS is merely descriptive of fishing tackle and artificial fishing lures
because the term directly imparts to the purchaser or prospective purchaser that the
products are beads used as fishing lures or tackle. As demonstrated by the evidence
in the record, “bait” is a broad term encompassing live/natural bait, as well as
artificial bait, including lures such as fishing beads. There is nothing incongruous
about the term BAITBEADS as fisherman will immediately understand that the
products are artificial lures comprised of beads without the necessity of having to
resort to any thought.
Decision: The refusal to register Applicant’s mark BAITBEADS is affirmed.