Rotolo

Trademark Trial and Appeal Board

Feb 17, 2009

No. 77008616 (T.T.A.B. Feb. 17, 2009)

Mailed: February 17, 2009
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Rotolo
________

Serial No. 77008616
_______

Catherine Ferguson of Malin Haley & DiMaggio, P.A. for John
Rotolo.

Giancarlo Castro, Trademark Examining Attorney, Law Office
110 (Chris A. F. Pedersen, Managing Attorney).
_______

Before Hairston, Walsh and Ritchie, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

John Rotolo seeks to register the mark STRIP HOP (in
standard character form) for “adult entertainment services,
namely, live performances by exotic dancers, night clubs
and cabarets featuring alcoholic drinks and food” in
International Class 41.1

1 Serial No. 77008616, filed September 27, 2006, based on
applicant’s allegation of a bona fide intention to use the mark
in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77008616
2
The trademark examining attorney has refused
registration under 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 the identified services.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs.
The examining attorney maintains that the term “strip
hop” is commonly used to refer to a genre or type of music
and dance style; and that applicant’s identified adult
entertainment services encompass “strip hop” music and
dance. Thus, it is the examining attorney’s position that
STRIP HOP is merely descriptive of applicant’s identified
services. In support of his position, the examining
attorney has submitted excerpts of articles from the Nexis
database and third-party websites containing references to
the term “strip hop.”2
Applicant, on the other hand, contends that its mark
is “a play on words in the classic sense of a coined or

2 Applicant has objected to two of the excerpts on the ground
that they are from foreign (Canadian) publications. We have not
given any consideration to these two excerpts since we cannot
determine to what extent customers in the United States have been
exposed to them.
Ser No. 77008616
3
suggestive trademark” (Brief, p. 3); that imagination,
thought or perception is required to reach a conclusion as
to the nature of applicant’s services; that the examining
attorney has not met his burden of showing that the term
“strip hop” is commonly used to refer to a style of dance;
and that competitors would not need to use STRIP HOP to
describe their adult entertainment services.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act 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. See, e.g., In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and
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 merely
descriptive; it is enough that the term describes one
significant attribute, function or property of the goods
or services. See 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
Ser No. 77008616
4
for which registration is sought, the context in which it
is being used on or in connection with those 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).
It is settled that “the question is not whether someone
presented with only the mark could guess what the goods or
services are. Rather, the question is whether someone who
knows what the goods or services are will understand the
mark to convey information about them.” In re Tower Tech
Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).
The examining attorney has submitted the following
excerpts of articles from the Nexis database and third-
party websites which show that the term “strip hop” is
used descriptively to refer to a type of music and style
of dance:
HEADING: No more Mr. Ice Guy; At a time when rap
is all booty and bling – call it strip hop – Ice
Cube is mad as hell and isn’t going to take it
any more.
BODY: But the current chart-topping rapper TI –
who grew up in Atlanta, center of the strip-hop
universe – says he just has to look at his own
life to keep from falling into that trap.
(Newsweek, June 19, 2006);
Ser No. 77008616
5
HEADLINE: Strip-hop or strip-not?
BODY: Then, e-mail ritaredeye@tribune.com to let
us know if you think its “strip-hop” or “strip-
not”. Please include your full name and
neighborhood. Twista featuring Pit Bull.
(Chicago Tribune, RedEye Edition, December 25,
2005);

HEADLINE: Rise of strip-hop; Strip club-related
rap becoming popular tracks
BODY: The popularity of strip club-related rap,
dubbed “strip-hop” by RedEye, doesn’t surprise
Vibe magazine’s music editor Erik Parker, who
lists “Laffy Taffy” as just …
…
But McDowell and Green reject the categorization
of “Laffy Taffy,” and other similar songs, as
strip hop.
…
Chicago MC’s are getting wind of the trend and
reaching out for Collipark’s strip-hop tracks.
(Chicago Tribune, RedEye Edition, December 26,
2005);

HEADLINE: ‘Booty shake’ beginnings
… first time that MC’s combined X-rated lyrics
with infectious bass-heavy beats to get the club
bumping. The beginnings of strip-hop can be
traced back nearly two decades to 2 LiveCrew.
(Chicago Tribune, RedEye Edition, December 26, 2005);
HEADLINE: Xzibit, W.C., Nivea and Blue Cantrell
also on the bill
BODY: Mystic completes the bill in support of
her solo debut, “Cuts for Luck and Scars for
Freedom.” No mere strip-hop diva la Lil’ Kim,
this singer-songwriter spins tough, lyric-driven
tales of modern-day womanhood.
(Arizona Daily Star, March 14, 2003);

Jaci-O
Miami’s queen of strip-hop is heating things up with
her new single “Sugarwalls” and a BET Female Hip Hop
nomination.
Jaci-O’s debut album “Poe Little Rich Girl” in stores
now!
(www.screensavers.com); and
Ser No. 77008616
6

Strip Hop - Vol. 1 (2002)
A review of Strip Hop – Vol. 1
Synoposis: Like hip hop? Like to watch some hot booty
shaking? Then STRIP HOP VOLUME I is just what you’ve
been looking for. Some of the west coast’s hottest
rappers do their thing, while some of the hottest
women shed their clothing for your pleasure.
MPAA Rating: Unrated
Runtime: 70 minutes
Genre: Adult Audience, Non-Explicit, Erotic, Adult,
Strippers
(www.rottentomatoes.com)

Phillip Steir uses a simple off-kilter guitar flourish
to transform “The Ballad of Resurrection Joe” into an
eerie, unsettling bit of strip-hop, while Chris
Vrenna’s rave-y “Return of the Phantom Stranger” makes
one wonder what Zombie’s originals might have become
in the hands of say Underworld.
(www.yaleherald.com)

HEADLINE: Strip Hop – Sexual Moves in Music Videos
Have Spawned Very Grown-Up Styles Even Kids Have
Mastered
(Atlanta Journal-Constitution, June 9, 2005);

Strip-Hop: Music videos make stripper moves all the
craze
As popular dance evolved faster than the number of
beats in a Lil Jon song, it’s sometimes hard to keep
track of what exactly those young bodies are doing in
front of the MTV cameras.
(http://blaqboard.com)

Join us on Thursday evenings for non-stop sexy dance
classes!
…
Try our 2 new classes. Sweat appeal & Strip Hop!
Don’t forget to bring your sneakers.
(http://studiorio.netfirms.com)

Ser No. 77008616
7
Dancers have the best bods!
Get yours with our Booty-licious Dance/Fitness Series
(18+)
Strip Hop
Wednesdays @ 8 PM
Sept 12 – Oct 17
(www.defsol.ca/bootylicious.html)

Strip-Hop Dancing
A group for people to showcase and watch other peoples
strip-hop dancing moves!
(youtube.com/group/striphop)

Based on the above evidence, we find that in the
context of applicant’s adult entertainment services, STRIP
HOP is merely descriptive in that such services will
feature “strip hop” music and dancing. The evidence
submitted by the examining attorney establishes that the
term “strip hop” is used to refer to a type of music and
style of dance. Moreover, it is not uncommon for a term to
describe a type of music and the associated style of dance,
e.g. “disco” and “salsa.” We have no doubt that
prospective customers for applicant’s services would
understand STRIP HOP to describe the music and dance to be
featured at applicant’s night clubs and cabarets.
In reaching our conclusion, we recognize that only one
of the Nexis and Internet excerpts appears to use the term
“strip hop” in connection with adult entertainment services
(HEADLINE: Rise of strip-hop; Strip club-related rap
becoming popular tracks). However, this does not change
Ser No. 77008616
8
our view of the probative value of this evidence. The
descriptive significance of the term “strip hop” as used in
these excerpts is equally applicable to adult entertainment
services. This is especially the case since several of the
excerpts reference the risqué nature of “strip hop,” e.g.,
“X-rated lyrics,” “sexual moves,” “stripper moves,” “hot
booty shaking,” and “Booty-licious dance.” Furthermore,
because the refusal is based on the ground of
descriptiveness, we do not require the same type of record
as would be required if the refusal of registration were
based on a conclusion that STRIP HOP was generic.
Finally, as to applicant’s contention that competitors
do not need to use the term STRIP HOP to describe their
adult entertainment services, that an applicant may be the
first and sole user of a merely descriptive term does not
justify registration if the only significance conveyed by
the term is merely descriptive. See In re National
Shooting Sports Foundation, Inc., 219 USPQ 1018 (TTAB
1983).
In view of the foregoing, we find that STRIP HOP is
merely descriptive of applicant’s identified services.
Decision: The refusal to register under Section
2(e)(1) is affirmed.