Sisson Group Inc.

Trademark Trial and Appeal Board

May 5, 1998

No. 74407685 (T.T.A.B. May. 5, 1998)

Paper No. 17
JQ
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re The Sisson Group Inc.
________
Serial No. 74/407,685
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Stephen L. Grant of Oldham, Oldham & Wilson for applicant.
Elissa Garber Kon, Trademark Examining Attorney, Law Office
106 (Mary Sparrow, Managing Attorney).
_______
Before Seeherman, Quinn and Hairston, Administrative
Trademark Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by The Sisson Group Inc.
to register the mark STREET HOCKEY for “clothing for men,
women and children, namely, shirts, crew shirts, turtleneck
shirts, mock turtleneck shirts, pants, shorts, jackets,
sweatshirts, sweatpants, sweaters, vests, t-shirts, tank
tops, socks, caps, ties, and footwear, namely athletic
shoes.”1

1 Application Serial No. 74/407,685, filed June 25, 1993,
alleging a bona fide intention to use the mark in commerce.
Ser No. 74/407,685
2
The Trademark Examining Attorney has refused
registration under Section 2(e)(1) of the Act on the ground
that applicant’s mark, if applied to applicant’s goods,
would be merely descriptive of them.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have submitted briefs.
Applicant acknowledges that there is a game called
“street hockey” and that street hockey has become very
popular in this country. However, applicant urges that the
refusal to register be reversed, contending that the mark is
not merely descriptive. Applicant states that there are no
specific clothing items identified with street hockey and
that the applied-for mark is, at worst, just suggestive of
the aura and ambiance of street hockey or the lifestyle of a
person who plays the game. Applicant also contends that the
final refusal is premature and speculative inasmuch as
applicant has not yet filed a statement of use with
specimens showing how the mark is actually used in commerce.
The Examining Attorney maintains that the final refusal
in this case is appropriate and that STREET HOCKEY is merely
descriptive of clothing and footwear suitable for wear while
one is playing street hockey. The Examining Attorney has
submitted several excerpts retrieved from the NEXIS database
which, according to the Examining Attorney, demonstrate the
Ser No. 74/407,685
3
descriptiveness of STREET HOCKEY with respect to footwear
and apparel.
We first turn to the procedural aspect of applicant’s
appeal, namely, applicant’s claim, raised for the first time
in its appeal brief, that the final refusal was premature
inasmuch as there is no evidence (that is, specimens
supporting an amendment to allege use or a statement of use)
of how the mark is actually used in commerce, thereby making
it difficult to assess the descriptiveness of the mark as
perceived by consumers in the marketplace.
As pointed out in detail by the Examining Attorney,
applicant’s position clearly is ill founded. Firstly,
Section 1105.04(e) of the Trademark Manual of Examining
Procedure (TMEP) provides that “[a]ny question as to whether
a final action is premature must be raised while the
application is still pending before the Examining Attorney.”
The question may not be advanced as a ground for appeal nor
made the basis of complaint before the Trademark Trial and
Appeal Board.2
Secondly, the case of In re American Psychological
Association, 39 USPQ2d 1467 (Comr Pats 1996) is directly on

2 The question of whether a final action is premature is
reviewable by petition to the Commissioner. If applicant had
wished to have this question reviewed, it could have filed a
petition and, in order to preserve its right to appeal, filed a
notice of appeal, with the appropriate fee, and requested that
Ser No. 74/407,685
4
point. As in that case, the identification of goods itself
in the application involved here provides enough information
about the goods to permit consideration of the issue of
descriptiveness.
We now turn to the merits of the refusal. It is well
settled that a term is considered to be merely descriptive
of goods, within the meaning of Section 2 (e)(1) of the
Trademark Act, if it immediately describes an ingredient,
quality, characteristic or feature thereof or if it directly
conveys information regarding the nature, function, purpose
or use of the goods. In re Abcor Development Corp., 588
F.2d 811, 200 USPQ 215, 217-18 (CCPA1978). It is not
necessary that a term describe all of the properties or
functions of the goods in order for it to be considered to
be merely descriptive thereof; rather, it is sufficient if
the term describes a significant attribute or idea about
them. Moreover, whether a term is merely descriptive is
determined not in the abstract but in relation to the goods
for which registration is sought. In re Bright-Crest, Ltd.,
204 USPQ 591, 593 (TTAB 1979). In this connection,
registration must be refused if the term is descriptive of
any of the goods for which registration is sought. In re
Quik-Print Copy Shop, Inc., 616 F.2d 523, 205 USPQ 505, 507

proceedings in the appeal be suspended pending a decision on the
petition.
Ser No. 74/407,685
5
(CCPA 1980); and In re Richardson Ink Co., 511 F.2d 559, 185
USPQ 46, 47 (CCPA 1980).
Applicant readily acknowledges that there is a game
called “street hockey” and that it has become very popular
in this country. The NEXIS evidence bears this out;
moreover, the evidence also includes references to street
hockey shoes and street hockey apparel. A few of the
references are as follows:
This year’s hot new category promises to
be the street-hockey shoe...
The Houston Chronicle, May 13, 1995
L.A. Gear hopes to reverse its fortunes
with the summertime introduction of its
first street hockey sneakers...
Advertising Age, April 17, 1995
The company also will introduce its
street hockey line of children’s shoes
and apparel this summer...
Los Angeles Times, April 15, 1995
Although it’s still in its infancy, many
industry veterans predict nothing but
success for street-hockey shoes in
seasons to come and say it could have
volume of $100 million to $200 million.
Footwear News, February 13, 1995
It plans street hockey jerseys and $95
NHL street hockey shoes...
USA Today, February 7, 1995
...industry observers expect the
American sporting goods giant to fully
glide into roller and street hockey
apparel in the near future.
Chicago Tribune, July 18, 1995
...has launched its own street hockey
shoe and related apparel...the line
boasts a signature Gretzky shoe and a
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full group of activewear, including t-
shirts, jerseys, sweatshirts and caps...
Children’s Business, March 1995
We agree with the Examining Attorney that the excerpts
show that the term “street hockey,” as applied to clothing
and footwear, immediately conveys information about a
feature, function or purpose of the goods, namely that they
are designed for or are suitable for wear during the playing
of the game of street hockey.3 The fact that applicant may
have intended to be the first entity to use the term STRRET
HOCKEY for clothing and footwear is not dispositive where,
as here, such term unequivocally conveys a merely
descriptive connotation. In re MBAssociates, 180 USPQ 338,
339 (TTAB 1973).
Decision: The refusal to register is affirmed.
E. J. Seeherman
T. J. Quinn
P. T. Hairston

3 During the prosecution of the application, applicant made
reference to six third-party registrations covering clothing
where the registered marks are the names of sports. A mere
listing of third-party registrations is insufficient to make them
of record. In re Classic Beverage Inc., 6 USPQ2d 1383, 1386
(TTAB 1988). In any event, even if copies of the registrations
were properly of record, the registrations would be of little
help in determining the registrability of the mark at issue in
this case. As often noted by the Board, each case must be
decided on its own set of facts.
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Administrative Trademark
Judges, Trademark Trial
and Appeal Board
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