Shirts Illustrated, L.L.C.

Trademark Trial and Appeal Board

Jun 10, 2003

No. 75708751 (T.T.A.B. Jun. 10, 2003)

Mailed: 6/10/03
Paper No. 15
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UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Shirts Illustrated, L.L.C.
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Serial No. 75/708,751
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Alan S. Nemes and Sherry Gunn Hanlon of Blackwell Sanders
Peper Martin for Shirts Illustrated, L.L.C.
Ann E. Sappenfield, Trademark Examining Attorney, Law
Office 112 (Janice O'Lear, Managing Attorney).
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Before Seeherman, Quinn and Rogers, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Shirts Illustrated, L.L.C. has applied to register
TINY TEDDY TEES on the Principal Register for "clothing not
sold as wearing apparel, but for stuffed and plush toy
animals and toy figures, namely, miniature shirts,
miniature t-shirts, screen printed miniature t-shirts, and
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/708,751
2
custom printed miniature t-shirts.1 The application is
based on an asserted bona fide intention to use the mark in
commerce. After the Examining Attorney refused
registration pursuant to Section 2(e)(1) of the Trademark
Act, 15 U.S.C. 1052(e)(1), on the ground that the mark is
merely descriptive of the identified goods, applicant,
while maintaining that the mark is inherently distinctive,
asserted, in the alternative, that the mark had acquired
distinctiveness. The Examining Attorney refused to accept
this claim, and the refusal of registration was made final.
This appeal followed.
Applicant and the Examining Attorney filed appeal
briefs; an oral hearing was not requested.
A mark is merely descriptive if it immediately conveys
knowledge of the ingredients, qualities, or characteristics
of the goods or services with which it is used. In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). The
question of whether a particular term is merely descriptive
must be determined not in the abstract, but in relation to
the goods or services for which registration is sought, the
context in which the mark is used, and the significance
that the mark is likely to have to the average purchaser as
he encounters goods bearing the mark in the marketplace.
1 Application Serial No. 75/708,751, filed May 18, 1999.
Ser No. 75/708,751
3
See In re Abcor Development Corp., 588 F.2d 811, 200 USPQ
215 (CCPA 1978); In re Engineering Systems Corp., 2 USPQ2d
1075 (TTAB 1986).
In support of the Examining Attorney's position that
TINY TEDDY TEES is merely descriptive of a feature or
quality of applicant's goods, the Examining Attorney has
asked us to take judicial notice of dictionary listings for
the individual words in the mark, as follows:
Tiny--Extremely small; minute.
Teddy--A teddy bear.
Tee Shirt--Variant of T-shirt.2
The Examining Attorney has also pointed to the fact that
applicant owns a registration on the Supplemental Register
for TINY TEES3 and one for the same mark which was
registered on the Principal Register under Section 2(f),
with a disclaimer of TEES.4 The Examining Attorney asserts
that such registrations are an acknowledgement by applicant
2 The American Heritage Dictionary of the English Language, 3d
ed. © 1992. The Board may take judicial notice of dictionary
definitions. 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).
3 Registration No. 1,266,680.
4 Registration No. 2,554,581. This registration issued on April
2, 2002, after the appeal was filed. However, applicant advised
the Examining Attorney, during the prosecution of the
application, that the then-pending application had been published
for opposition, and that a registration was expected to issue
shortly. The registration had issued at the point that applicant
filed its appeal brief, and the registration was discussed in
that brief, and was also discussed by the Examining Attorney in
her brief. We therefore deem the registration to be of record.
Ser No. 75/708,751
4
of the descriptive nature of the words TINY TEES, and of
the generic nature of TEES.
Applicant does not really contend that the individual
elements of its mark are not descriptive. Rather,
applicant asserts that when these words are combined in the
mark TINY TEDDY TEES, they create an "eye-catching and
memorable" phrase which is "unfamiliar in ordinary
parlance." Brief, p. 6. Applicant apparently bases this
assertion on the mark's alliteration, rhyme and cadence,
due to the fact that each word begins with a "T" sound and
ends with an "EE" sound. Applicant relies on In re Kraft,
218 USPQ 571, 573 (TTAB 1983), which found that LIGHT N'
LIVELY "has an alliterative lilting cadence which
encourages persons encountering it to perceive it as a
whole."
Applicant's reliance on Kraft is misplaced. The
Board found that LIGHT N' LIVELY was a unitary mark that
consumers would not break down into its individual
components, as a result of which the individually
descriptive word LIGHT did not have to be disclaimed. The
present case, however, does not involve the question of
whether any of the individual words must be disclaimed, but
whether the mark as a whole is merely descriptive. We find
that it is. The words TINY TEDDY TEES do not lose their
Ser No. 75/708,751
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descriptive significance because of the alliteration of the
"T's" and the assonance of the "EE's". Consumers will
still immediately understand, upon seeing the mark in
connection with the goods, that the goods are tiny T-shirts
for teddy bears. Moreover, as the Examining Attorney has
stated, applicant has acknowledged the descriptive nature
of the phrase TINY TEES (which has a similar alliteration
and assonance) by registering it, in one instance, on the
Supplemental Register and, in the other, pursuant to the
provisions of Section 2(f). The addition of the word TEDDY
to TINY TEES, as TINY TEDDY TEES, does not change that
merely descriptive significance.
This brings us to applicant's alternative claim that
its mark is registrable under Section 2(f) of the Act.
Although applicant's application is based on an intention
to use the mark, and there is no indication that the mark
is yet in use, applicant relies upon the existence of its
two registrations for TINY TEES to show that TINY TEDDY
TEES has acquired distinctiveness.
Trademark Rule 2.41(b) provides, inter alia, that, "in
appropriate cases, ownership of one or more prior
registrations on the Principal Register or under the Act of
1905 of the same mark may be accepted as prima facie
evidence of distinctiveness." By the plain language of
Ser No. 75/708,751
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this rule, applicant's Supplemental Register registration
for TINY TEES is of no benefit to show acquired
distinctiveness.
In addition, neither registration is for "the same
mark," as required by Rule 2.41(b). Applicant asserts that
TINY TEDDY TEES and TINY TEES are "very closely related,"
brief, p. 7, and argues that under the holding of In re
Dial-A-Mattress Operating Corp., 240 F.3d 1347, 57 USPQ2d
1807 (Fed. Cir. 2001), that is sufficient to show acquired
distinctiveness.
In the Dial-A-Mattress case, the Court stated, at 57
USPQ2d 1812:
A proposed mark is the "same mark" as
previously-registered marks for the
purpose of Trademark Rule 2.41(b) if it
is the "legal equivalent" of such
marks. A mark is the legal equivalent
of another if it creates the same,
continuing commercial impression such
that the consumer would consider them
both the same mark.
We do not consider TINY TEDDY TEES to be the legal
equivalent of TINY TEES. TINY TEDDY TEES does not create
the same commercial impression; a consumer would not
consider it to be the same mark as TINY TEES. Although the
word TEDDY in the mark is descriptive, it still has some
commercial impact, being a third word which separates the
words TINY and TEES, as opposed to the marks in the
Ser No. 75/708,751
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Dial-A-Mattress case, in which the applied-for mark
1-888-M-A-T-R-E-S-S differed from the registered mark
(212) M-A-T-T-R-E-S only in the minor misspelling of
"mattress" and a substitution of one area code for another,
changes which would not make a difference to the overall
commercial impressions of the marks.
Decision: The refusal on the basis of Section 2(e)(1)
of the Act is affirmed; the rejection of the claim of
acquired distinctiveness is also affirmed.