Scripps Networks, Inc.

Trademark Trial and Appeal Board

Apr 27, 2010

No. 77418854 (T.T.A.B. Apr. 27, 2010)

Mailed:
April 27, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Scripps Networks, Inc.
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Serial No. 77418854
_______

Brian J. Downey and Samantha M. Quimby of Frost Brown Todd
LLC for Scripps Networks, Inc.

Darryl M. Spruill, Trademark Examining Attorney, Law Office
112 (Angela Wilson, Managing Attorney).
_______

Before Seeherman, Holtzman and Zervas, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Scripps Networks, Inc. has appealed from the final
refusal of the trademark examining attorney to register
CLUB DANCE, in standard character format, as a mark for
restaurant and bar services. The application, Serial No.
77418854, was filed March 11, 2008, based on Section 1(b)
of the Trademark Act (intent-to-use). 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
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77418854
2
mark is merely descriptive of its applied-for services.
Specifically, it is the examining attorney’s position that
applicant’s mark consists of descriptive terms that, when
combined as CLUB DANCE, identify a feature, purpose or
nature of applicant’s services, namely, a club or venue
where patrons can dance.
Before reaching the substantive issue before us, there
is a procedural point that we must address. In its
response to the first Office action, applicant referred to
four third-party registrations, “included as Exhibit A.”
No registrations were submitted with applicant’s response,
and the examining attorney pointed this out in the next
Office action, also advising applicant that the submission
of only a list of registrations is not sufficient to make
the registrations of record. Applicant did not submit
copies of the registrations with the request for
reconsideration it subsequently filed. However, as noted
by applicant in its response, two of the registrations,
Nos. 3284535 and 3292116, had previously been made of
record by the examining attorney. Therefore, we have
considered these registrations, but have not considered
Registrations Nos. 3200789 and 3289302.
Section 2(e)(1) of the Trademark Act prohibits the
registration of a mark that is merely descriptive of the
Ser No. 77418854
3
identified goods or services. However, a term that is
suggestive is registrable. A term is deemed to be merely
descriptive of goods or services 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 is suggestive if imagination,
thought or perception is required to reach a conclusion on
the nature of the goods or services. In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
In support of the refusal the examining attorney has
made of record third-party registrations for marks
containing the word CLUB or the word DANCE in which that
word was disclaimed, or the mark was registered on the
Principal Register upon a showing of acquired
distinctiveness. These registrations include CLUB SEVILLA
for restaurant services, in which CLUB has been disclaimed;
SAILFISH CLUB for restaurant and bar services, in which
CLUB has been disclaimed; CLUB NO MINORS for restaurant and
bar services, in which CLUB has been disclaimed and the
mark as a whole registered pursuant to Section 2(f); and
GOLD DIGGERS (stylized) with the single words DRINK DANCE
DOWNTOWN appearing on separate circles for restaurant, bar
and cocktail lounge services, in which DRINK and DANCE have
Ser No. 77418854
4
been disclaimed.1 The examining attorney has also submitted
dictionary definitions of the word “dance,” and evidence of
businesses that offer restaurant services and dancing.
Applicant has explained that it will provide
traditional restaurant and bar services, and that “the
restaurant and bar services are inspired by the theme of
the television program CLUB DANCE for which applicant has
other applications (former registration 1,882,585 and
current ITU applications 78/436794 and 78/867945).”
Response filed December 23, 2008. Applicant has argued
that its customers will be familiar with applicant’s
television program and the mark will tie the restaurant in
with the television program. Brief, p. 3. However, such
an argument is not applicable to the present situation
because applicant has not applied to register its mark
pursuant to the provisions of Section 2(f) of the Act. See
In re Nielsen Business Media Inc., 93 USPQ2d 1545, 1547
(TTAB 2010) (an intent-to-use applicant that has used the
same mark on related goods or services may file a claim of
acquired distinctiveness under Section 2(f) if the
applicant can establish that, as a result of the

1 We have listed only those registrations which do not include
other services such as night club services or hotel services,
since a disclaimer for CLUB or DANCE in connection with such
registrations could reflect the descriptiveness of the term for
non-restaurant services.
Ser No. 77418854
5
applicant's use of the mark on other goods or services, the
mark has become distinctive of the goods or services in the
intent-to-use application, and that this previously created
distinctiveness will transfer to the goods and services in
the intent-to-use application when use in commerce begins).
Therefore, we cannot consider whether, because of any
consumer perception of CLUB DANCE as a source-identifier
for a television program, CLUB DANCE has acquired
distinctiveness as a trademark for restaurant and bar
services.2
As we have often said, there is but a thin line of
distinction between a suggestive and a merely descriptive
term, and it is often difficult to determine when a term
moves from the realm of suggestiveness into the sphere of
impermissible descriptiveness. See In re Recovery, Inc.,
196 USPQ 830 (TTAB 1977). Here, we find CLUB DANCE to fall
on the suggestiveness side of that line. First, we agree
with applicant that restaurants do not usually offer a
place to dance. Although nightclubs generally include bar
services, and often offer food as well, they are not the

2 We do not suggest that CLUB DANCE is distinctive or acts as a
source-identifier for a television program, or that any
distinctiveness that the mark may have for a television program
would transfer to restaurant and bar services. Webpages that
have been made of record indicate that applicant’s television
program was last broadcast in 1999.

Ser No. 77418854
6
same as restaurants. Therefore, the evidence that the
examining attorney has submitted of establishments that
provide dancing and food do not persuade us that “dance”
describes a characteristic of restaurant and bar services,
as opposed to nightclub services.3 Moreover, the mark
itself, CLUB DANCE, has an unusual syntax, since the
familiar term is “dance club.” These two points--the fact
that restaurants do not usually feature dancing and the
reversal of the order of the words in the mark from the
normal term--are sufficient to create a mental pause or
hiccup for those viewing the mark. As a result, we find
that CLUB DANCE is suggestive for restaurant and bar
services.
Finally, to the extent that there is any doubt on this
issue, such doubt must be resolved in favor of applicant.
In re Intelligent Medical Systems Inc., 5 USPQ2d 1674, 1676
(TTAB 1987) {“where reasonable men may differ, it is the

3 For example, Latin Palace Restaurant and Private Club, listed
in AOL cityguide for Baltimore, is described as a nightclub, as
is Chapter 8 Steak House & Dance Lounge, www.opentable.com and
Diva Lounge, http://divalounge.com (Lounge/Dance & Supper Club).
With respect to the other webpages, the listing for “Bull Run
Restaurant”, www.socialweb.net states that Bull Run is a place
for “wonderful concerts or entertainment events.” The webpages
regarding Food Dance Café, www. Greaterguide.com, on the other
hand, indicate this business is a restaurant, but there is
nothing to show that it has any dancing; rather, FOOD DANCE is
literally the name of the restaurant, and “dance” has a
suggestive meaning in connection with the food itself.

Ser No. 77418854
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Board's practice to resolve the doubt in applicant's favor
and publish the mark for opposition”).
Decision: The refusal of registration is reversed.