SJP, LLC

Trademark Trial and Appeal Board

Aug 31, 2007

No. 76620345 (T.T.A.B. Aug. 31, 2007)

05

Mailed: August 31, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re SJP, LLC
________

Serial No. 76620345
_______

Neil F. Markva for SJP, LLC.

Dominick Salemi, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Bucher, Drost and Zervas, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:
SJP, LLC has appealed from the final refusal of the
examining attorney to register the mark SILVERLEAF
PLANTATION (in standard character form) on the Principal
Register for services ultimately amended to “real estate
management services, namely, the operation of a planned
community” in Class 36; and “land development services,
namely, construction of a planned community development of
THIS OPINION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Serial No. 76620345
2
mixed use, gated and ungated residential, office, retail,
and industrial properties” in International Class 37.1
In his final Office action, the examining attorney has
refused to register applicant's mark in view of his
requirement pursuant to 15 U.S.C. §§ 1052(e)(1) and 1056(a)
that applicant disclaim the term PLANTATION.
Applicant filed an appeal brief and a reply to the
Examining Attorney's brief. We reverse the refusal to
register.
Before turning to the merits of this case, we address
several evidentiary matters.
First, on June 21, 2006, after applicant had filed a
notice of appeal and after the Board had instituted this
appeal, applicant filed an amendment to allege use. On
July 5, 2006, the Board suspended the appeal and “remanded
to the Trademark Examining Attorney for examination of the
amendment to allege use.” The Board’s order specified that
“[a]fter the Examining Attorney’s issuance of either an
acceptance and/or ultimate denial of the amendment, the

1 Application Serial No. 76620345 was filed on November 12, 2004,
based on applicant’s bona fide intention to use the mark in
commerce. In a statement of use approved by the examining
attorney on August 7, 2006, applicant asserts first use anywhere
and first use in commerce on September 30, 2004. On April 4,
2007, the examining attorney approved applicant's amendment
(filed July 27, 2006) amending the application to one for
concurrent use.

Serial No. 76620345
3
file should be returned to the Board, the appeal will be
resumed and the Board will take appropriate action.” In an
action dated August 8, 2006, the examining attorney stated:
Applicant’s amendment to allege use has been
approved; however, please see the following
below:
The trademark examining attorney has carefully
reviewed the request for reconsideration and is
not persuaded by applicant’s arguments. No new
issue has been raised and no new compelling
evidence has been presented with regard to the
point(s) at issue in the final action. TMEP
§715.03(a). Accordingly, applicant’s request for
reconsideration is denied and the requirement for
a disclaimer of PLANTATION is hereby continued.
37 C.F.R. §2.64(b); TMEP §715.04.
The application file will be returned to the
Trademark Trial and Appeal Board for resumption
of the appeal.
In the interests of completeness, a few
Lexis/Nexis Research database stories concerning
“plantation-style” homes and developments have
been included.
The examining attorney then provided ten Nexis excerpts
with his Office action. Because the Board had remanded the
application back to the examining attorney only for
consideration of the amendment to allege use,2 and not for
further examination, and applicant never filed a request

2 The examining attorney states that the additional evidence was
being provided “[i]n the interests [sic] of completeness”; he did
not indicate that he was providing the additional evidence in
connection with any issue raised by the specimen accompanying the
amendment to allege use.
Serial No. 76620345
4
for reconsideration,3 the examining attorney’s submission of
the ten Nexis excerpts was improper. Applicant, however,
discussed these Nexis excerpts in its briefs and even
submitted the full texts of a handful of the Nexis
excerpts. We find that applicant has waived any
evidentiary objection to the examining attorney’s Nexis
excerpts, including any objection applicant may have had
regarding the fact that three of the excerpts are from
foreign publications and one is from a wire service. See
TBMP § 1208.01 (2d ed. rev. 2004) and cases cited therein.
Cf. In re Bayer Aktiengesellshaft, 488 F.3d 960 (Fed. Cir.
2007) (“Information originating on foreign websites or in
foreign news publications that are accessible to the United
States public may be relevant to discern United States
consumer impression of a proposed mark.”)
The second evidentiary issue concerns applicant's
submission with its supplemental brief of the full text of
three excerpts submitted by the examining attorney. The
three articles are (i) “Mauritius: Paradise relocated [;]
This jewel in the Indian Ocean is opening up to second-home
buyers” by Graham Norwood from the March 15, 2006 edition

3 Applicant offered that the examining attorney considered
applicant's original brief filed June 26, 2006 as a request for
reconsideration.

Serial No. 76620345
5
of The Independent (London); (ii) “Going Places” by Paula
Crouch Thrasher from the January 25, 2004 edition of The
Atlanta Journal-Constitution; and (iii) “Water Parks make a
splash in planned communities” by Huma Khan from the April
25, 2002 edition of the Houston Business Journal. Pursuant
to In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ
818 (Fed. Cir. 1986) (applicant's submission with its brief
of two augmented portions of two excerpts of articles from
the Nexis database which the examining attorney submitted
with his final refusal appropriate for consideration), we
have considered the full text of these three articles.
The third evidentiary issue before us concerns the
remaining evidence first submitted by applicant with its
initial, supplemental and reply briefs. Applicant's
submissions with its briefs are late because all evidence
must be made of record prior to the filing of an appeal or
with a request for reconsideration prior to the end of the
period for appeal. Trademark Rule 2.142(d), 37 C.F.R.
2.142(d). Additionally, the examining attorney has
objected to this evidence. Therefore, except for the
definitions from print dictionaries submitted with
applicant's initial and reply briefs, of which we take
judicial notice, see University of Notre Dame du Lac v.
J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB
Serial No. 76620345
6
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983)
(the Board may take judicial notice of dictionary
definitions), we have not considered such remaining
evidence filed with applicant's briefs.
The fourth evidentiary issue concerns four lists of
registrations designated as “live” containing the term
PLANTATION submitted by applicant with its March 30, 2006
response to an Office action. The lists were created from
the Office’s TESS database. They are as follows:
1. 144 registrations containing the term
PLANTATION;

2. 29 registrations with PLANTATION disclaimed;

3. 7 registrations for International Class 37
services with PLANTATION disclaimed; and

4. 3 registrations for International Class 36
services with PLANTATION disclaimed.

To make a third-party registration of record, a copy of the
registration, either a copy of the paper USPTO record, or a
copy taken from the electronic records of the Office,
should be submitted. However, because the examining
attorney did not advise applicant that the listing of
registrations is insufficient to make the registrations of
record at a point when applicant could have corrected the
error, the examining attorney has stipulated the lists of
registrations into the record. See TBMP § 1208.02 (2d ed.
Serial No. 76620345
7
rev. 2004). The lists have very limited probative value
because the Board only considers what is contained within
the lists and they do not include the claimed goods and
services. Even the International Class 36 and 37 listings
have limited probative value because there are other
services in such International Classes than the services
listed in applicant's application and we cannot assume that
listed registrations are for identical services, even if
the marks for such registrations contain the term
PLANTATION.
We now turn to the merits of the examining attorney’s
refusal. 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. In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In
re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215
(CCPA 1978). Courts have long held that to be “merely
descriptive,” a term need only describe a single
significant quality or property of the goods or services.
In re Gyulay, 3 USPQ2d at 1009; Meehanite Metal Corp. v.
International Nickel Co., 262 F.2d 806, 120 USPQ 293 (CCPA
1959). It is settled that “[t]he question is not whether
Serial No. 76620345
8
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 - 1317 (TTAB
2002). See also In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990). As the Board has
explained:
… the question of whether a mark is
merely descriptive must be determined
not in the abstract, that is, not by
asking whether one can guess, from the
mark itself, considered in a vacuum,
what the goods or services are, but
rather in relation to the goods or
services for which registration is
sought, that is, by asking whether,
when the mark is seen on the goods or
services, it immediately conveys
information about their nature.

In re Patent & Trademark Services Inc., 49 USPQ2d 1537
(TTAB 1998).
The examining attorney has included the following
dictionary definition of “plantation” from The American
Heritage Dictionary of the English Language 4th ed. (2000)
with his initial disclaimer requirement:
1. An area under cultivation.
2. A group of cultivated trees or plants.
3. A large estate or farm on which crops are raised,
often by resident workers.
Serial No. 76620345
9

4. A newly established settlement; a colony.
He also has submitted the following excerpts of articles
from the Nexis database:4
The Independent (London), March 15, 2006
… hotel within the complex will provide
restaurants, other sports facilities and shops,
in what the builder promises will be a
“plantation-style development” on the island’s
eastern coast. … properties in the “plantation-
style” development will be sold through Erna Low
….

The Atlanta Journal-Constitution, January 25,
2004
Nestled among lush mangroves with more than half
of the plantation-style development[,] a
dedicated wildlife preserve and estuary, the 600-
unit resort with 18 swimming pools offers sailing
and fishing, beachside ….

Port Douglas and Mossman Gazette (Australia),
November 7, 2002
… plunge pools, and a pool bar along with a
gymnasium, café and shops. “It’s Queensland-
inspired, mixed with a plantation-style
development,” Mr. Berensten said.

Houston Business Journal, April 26, 2002
… complex, which includes the water park, sand
volleyball court, eight-court tennis complex,
children’s playground, a southern plantation-
style community center and an outdoor
amphitheater.

4 One of the examining attorney’s excerpts is from a U.S.
newswire service and another is from a foreign newswire service.
These articles – excerpts of which are not set forth in this
decision - are given minimal consideration because we do not know
to what extent, if any, the underlying articles have been
distributed to the purchasing public in the United States. See
TBMP 1208.01 (2d ed. rev. 2004) and cases cited therein.
Serial No. 76620345
10
Washingtonian, May 1993
Hilton Head is commonly thought of as a single
entity, but the island is, in fact, a collection
of plantation-style communities, such as Sea
Pines, Palmetto Dunes, and Port Royal.

The Jackson Sun, June 5, 2005
… since built[,] the Jackson Area Chamber of
Commerce building, the Jackson Family Practice
and Central Distributors and currently is
finishing a plantation-styled home on McClellan
Road.

Plain Dealer, April 1, 2001
The couple moved into their cedar-sided Colonial
in 1997. “Our builder, Calvin Smith, was
fascinated with the Civil War era and the
Southern plantation-styled homes,” said Irish-
Snyder.

The Commercial Appeal (Memphis), September 12,
1996
On Wednesday, family members gathered nearby at
the Snowden Hose in Horseshoe Lake, the family’s
plantation-styled home that had been converted
into a bed and breakfast.

In first making his disclaimer requirement in his
March 15, 2006 Office action, the examining attorney found
PLANTATION to be merely descriptive because “it informs the
public of the type of property [applicant] is operating.”
In his August 8, 2006 Office action, the examining attorney
added evidence concerning “plantation-style homes and
developments” without explaining how PLANTATION is merely
descriptive of the services in light of this evidence.
Subsequently, in his brief, the examining attorney stated
that PLANTATION should be disclaimed because the “[u]se of
Serial No. 76620345
11
‘plantation’ to identify [applicant’s] services, merely
serves to inform the potential purchasing public that the
applicant's planned communities, whether managed or the
subject of its development services, involve ‘plantation-
styled’ buildings.” Brief at unnumbered p. 1. At p. 4 of
his brief, he states that “the term, when applied to
objects such as buildings are designed to evoke something
of a fairly large character fashioned in a tropical style.”
Brief at unnumbered p. 4.
We find that the examining attorney has not made a
prima facie case that PLANTATION is a merely descriptive
term in the context of applicant's services under any of
the bases he has asserted during the prosecution of the
application.
To the extent that the examining attorney maintains
that PLANTATION is merely descriptive of a “type of
property,” we disagree. With respect to the first two
definitions of “plantation” noted above, i.e., “an area
under cultivation” and “a group of cultivated trees or
plants,” the examining attorney has not established that
planned communities contain “a group of cultivated trees or
plants,” or “area[s] under cultivation.” The same holds
true of the “type of property” referenced in the third
definition of “plantation,” namely, a “large estate[s] or
Serial No. 76620345
12
farm[s] on which crops are raised, often by resident
workers”; there is no evidence that planned communities
contain or comprise such large estates or farms on which
crops are raised. Further, if the examining attorney
intended to base his disclaimer requirement on the
assertion that applicant's services are provided in
connection with land which was once part of a plantation,
we are not persuaded. There simply is no evidence that the
purchasing public would view the term PLANTATION in
applicant's mark as informing purchasers of a previous use
of the land that now contains the planned community.
Similarly, under the fourth definition of “plantation”
set forth above, i.e., a “newly established settlement; a
colony,” we are not persuaded that the term is merely
descriptive of a “type of property.” The American Heritage
Dictionary of the English Language (4th ed. 2000) defines
“settlement” in relevant part as “a small community.”5
Under this definition, the connotation of the term
“plantation” would be “a newly developed small community,”

5 The definition of “settlement” submitted by applicant with its
brief is from WordNet 2.1 Vocabulary Helper. This definition was
not made of record prior to the filing of the notice of appeal
and the Board does not take judicial notice of online
dictionaries. See TBMP § 1208.04 (2d ed. rev. 2004). Thus, we
give no further consideration to this definition from WordNet 2.1
Vocabulary Helper. Rather, we take judicial notice of the
definition of “settlement” from The American Heritage Dictionary
of the English Language.
Serial No. 76620345
13
but in the context of a colony. Applicant's services
certainly do not entail the creation or management of
colonies. Also, the Nexis excerpts submitted by the
examining attorney do not support this connotation.
Rather, the excerpts in which the phrase “plantation style
development” appears suggest large scale developments for
many people, with “restaurants, other sports facilities and
shops,” The Independent; 600 units with 18 swimming pools,
The Atlanta-Journal Constitution; and plunge pools, pool
bar, gymnasium, café and shops, Port Douglas and Mossman
Gazette.
In view of the foregoing, we find that there is no
specific meaning of PLANTATION as used in connection with
“a type of property.”
To the extent that the examining attorney maintains
that PLANTATION is merely descriptive of a style of
building, housing or architecture that will exist in
planned communities which applicant develops or manages, we
disagree. There is nothing in the juxtaposition of
PLANTATION next to SILVERLEAF that would indicate to the
purchasers of applicant's services that PLANTATION is a
reference to a housing style that exists in the planned
communities. If such purchasers would even come to the
realization that the term in applicant's mark is a
Serial No. 76620345
14
reference to a housing style, this would only be after much
thought and consideration and would not be immediate.
Also, the insignificant amount of evidence in the record,
i.e., just two Nexis excerpts referring to “plantation
style[d] home[s]” from the Plain Dealer and The Commercial
Appeal, and the one excerpt referring to a “southern
plantation-style community center” from Houston Business
Journal, does not establish prima facie that there is a
style of building or home known as “plantation-style”
buildings or homes.
Applicant has correctly pointed out that the examining
attorney’s Nexis excerpts all show use of “plantation-
style” rather than just “plantation”; that the public’s
understanding of “plantation-style” is unknown and
uncertain; and that there is no dictionary definition of
“plantation-style.” We add too that “style” is necessary
in addition to “plantation,” and possibly even the word
“homes,” to provide the meaning ascribed to by the
examining attorney, and that without the term “style” and
even “homes” in the mark, the purchasing public will not
perceive the meaning advocated by the examining attorney.
As another argument in support of his disclaimer
requirement, the examining attorney stated that “the term,
when applied to objects such as buildings are designed to
Serial No. 76620345
15
evoke something of a fairly large character fashioned in a
tropical style.” Brief at unnumbered p. 4. Applicant is
not seeking registration of its mark in connection with
buildings, and there is no evidence that purchasers would
consider the term PLANTATION in applicant's mark as
referring to buildings. Also, even if the impression of
PLANTATION in applicant's mark evokes “something of a
fairly large character fashioned in a tropical style,” this
“something” is simply too intangible to make an immediate
association with applicant's services.
In view of the foregoing, we find that the examining
attorney has not established that “plantation” merely
describes a significant characteristic, feature or function
of applicant's applied-for services and therefore has not
established that the term is merely descriptive of such
services. See In re MBAssociates, 180 USPQ at 339.
Decision: The requirement for a disclaimer of
"PLANTATION" is reversed.