Robert Brownlee

Trademark Trial and Appeal Board

Apr 21, 2003

No. 76027847 (T.T.A.B. Apr. 21, 2003)

Mailed: April 21, 2003
Paper No. 10
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Robert Brownlee
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Serial No. 76/027,847
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George J. Netter, Esq. for Robert Brownlee.
Tricia McDermott Thompkins, Trademark Examining Attorney,
Law Office 114 (K. Margaret Le, Managing Attorney).
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Before Chapman, Bucher and Bottorff, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
On April 17, 2000, Robert Brownlee (an individual)
filed an application to register the mark CLAY DOG DESIGNS
on the Principal Register for goods amended to read
“decorative art objects, sculptures and figurines made of
ceramics” in International Class 21. The application is
based on applicant’s assertion of a bona fide intention to
use the mark in commerce. Applicant, upon requirement of
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76/027847
2
the Examining Attorney, disclaimed the word “designs.”
The Examining Attorney refused registration on the
ground that applicant’s mark, CLAY DOG DESIGNS, is merely
descriptive of applicant’s goods under Section 2(e)(1) of
the Trademark Act, 15 U.S.C. §1052(e)(1).
When the refusal was made final, applicant appealed to
this Board. Both applicant and the Examining Attorney have
filed briefs; an oral hearing was not requested.
The Examining Attorney contends that the words,
“clay,” “dog,” and “designs” are common English words, with
readily understood meanings; that applicant’s
identification of goods specifies that the decorative art
objects, sculptures and figurines are made of ceramics,
which are defined as being made from fired clay; that
applicant will make clay decorative art objects in at least
the shape of dogs, and even if he makes such art objects in
designs other than dogs, it is enough that the mark
describes one significant attribute; that “applicant’s
ceramic goods are made of clay and are in the shape of
dogs” (brief, unnumbered p. 4), and thus the phrase CLAY
DOG DESIGNS merely describes an ingredient and feature of
applicant’s goods; and that these combined descriptive
words do not create a unique or incongruous mark with a
separate non-descriptive meaning.
Ser. No. 76/027847
3
In support of the descriptiveness refusal, the
Examining Attorney has made of record the following
definitions (as well as others) from The American Heritage
Dictionary of the English Language (Third Edition 1992)1:
(1) “clay n. 1. a fine-grained, firm
earthy material that is plastic
when wet and hardens when heated,
consisting primarily of hydrated
silicates of aluminum, and is
widely used in making bricks,
tiles and pottery...,”
(2) “dog n. 1. a domesticated
carnivorous mammal...,”
(3) “design v. 5. to create of execute
in an artistic or highly skilled
manner...”; and
(4) “ceramic n. 1. any of various
hard, brittle, heat-resistant and
corrosion-resistant materials made
by shaping and then firing a
nonmetallic mineral, such as clay,
at a high temperature. 2a. an
object, such as earthenware,
porcelain, or tile, made of
ceramic. b. ceramics (used with a
sing. verb). The art or technique
of making objects of ceramic,
especially from fired clay.”
Applicant’s arguments throughout the prosecution of
this application consist solely of the following: that his
1 The Examining Attorney submitted additional dictionary
definitions with her brief on appeal, and she requested that the
Board take judicial notice thereof. Her request is granted. See
The 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). See also, TBMP §712.01.
Ser. No. 76/027847
4
line of art objects to be sold under this mark will include
a wide range of art objects, including, but not limited to,
those in the shape of dogs; that applicant does not
specialize in making dog figurines or “clay dogs” as the
Examining Attorney suggests; and that the relation of
“clay” to “ceramic” is fanciful or suggestive, but is not
descriptive, and “CLAY DOG DESIGNS” is also fanciful or at
least suggestive, but is not descriptive of the goods.
The test for determining whether a mark is merely
descriptive is whether the term or phrase immediately
conveys information concerning a significant quality,
characteristic, function, ingredient, attribute or feature
of the product or service in connection with which it is
used or is intended to be used. See In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978);
In re Eden Foods Inc. 24 USPQ2d 1757 (TTAB 1992); and In re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). Further, it
is well-established that the determination of mere
descriptiveness must be made not in the abstract or on the
basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the term or phrase is being used or is intended to be
used on or in connection with those goods or services, and
the impact that it is likely to make on the average
Ser. No. 76/027847
5
purchaser of such goods or services. See In re
Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995); and In
re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991).
Consequently, “[w]hether consumers could guess what the
product [or service] is from consideration of the mark
alone is not the test.” In re American Greetings Corp.,
226 USPQ 365, 366 (TTAB 1985). Rather, the question is
whether someone who knows what the goods or services are
will understand the term or phrase to convey information
about them. See In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990).
The dictionary listings for these three particularly
familiar English words establish their everyday commonly
understood meanings in the English language. They also
establish that clay is the usual mineral used to make
ceramic objects. It is clear that purchasers would
immediately understand that applicant’s ceramic goods are
art objects made of clay, and are made in the shape of
dogs. The fact that applicant intends to and may make
objects that are not in the shape of dogs does not detract
from the fact that the term “dog” describes art objects
which are made in the shape of dogs. Applicant’s
identification of goods is not limited in any way as to
what the objects will be, and thus, ceramic figurines and
Ser. No. 76/027847
6
sculptures made in the shape of dogs are certainly
encompassed therein. Moreover, applicant has made clear
that he intends to make art objects in the shape of dogs.2
Inasmuch as this application is based on applicant’s
asserted bona fide intention to use the mark in commerce,
we do not have the benefit of a specimen of actual use.
Nonetheless, when we consider the phrase CLAY DOG
DESIGNS as a whole, and in the context of applicant’s goods
(“decorative art objects, sculptures and figurines made of
ceramics”), we find that the phrase immediately informs
consumers that applicant’s goods are objects made of clay
and presumably appear in the shape of dogs.3 That is, the
purchasing public would immediately understand the main
ingredient/feature of applicant’s goods.
Although not argued by applicant, we agree with the
Examining Attorney that the combination of these words does
not create an incongruous or unique mark. Rather,
applicant’s mark, CLAY DOG DESIGNS, when used in connection
with applicant’s identified goods, immediately describes,
2 Specifically, applicant stated “[he] does not intend to confine
[his] designs to those of dogs, although [he] will not exclude
dog designs from [his] line if considered otherwise desirable.”
(April 5, 2001 response to first Office action, p. 2).
3 If applicant’s goods will not be made in the shape of dogs,
then perhaps the Examining Attorney might have considered holding
the mark deceptively misdescriptive under Section 2(e)(1), 15
U.S.C. §1052(e)(1).
Ser. No. 76/027847
7
without need of conjecture or speculation, the main
ingredient/feature of applicant’s goods, as explained
above. Nothing requires the exercise of imagination or
mental processing or gathering of further information in
order for purchasers of and prospective customers for
applicant’s goods to readily perceive the merely
descriptive significance of the phrase CLAY DOG DESIGNS as
it pertains to applicant’s goods. See In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Omaha
National Corporation, 819 F.2d 1117, 2 USPQ2d 1859 (Fed.
Cir. 1987); In re Intelligent Instrumentation Inc., 40
USPQ2d 1792 (TTAB 1996); and In re Time Solutions, Inc., 33
USPQ2d 1156 (TTAB 1994).
Inasmuch as the phrase clearly projects a merely
descriptive connotation, we believe that competitors have a
competitive need to use this phrase. See In re Tekdyne
Inc., 33 USPQ2d 1949, 1953 (TTAB 1994); and 2 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition,
§11:18 (4th ed. 2001).
Decision: The refusal to register on the ground that
the mark is merely descriptive under Section 2(e)(1) is
affirmed.