SMS Holdings Corporation

Trademark Trial and Appeal Board

Mar 25, 2011

No. 77767276 (T.T.A.B. Mar. 25, 2011)

Mailed: March 25, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re SMS Holdings Corporation
___________

Serial No. 77767276
___________

Stephen J. Stark of Miller & Martin for SMS Holdings
Corporation.

Andrew Rhim, Trademark Examining Attorney, Law Office 101
(Ronald R. Sussman, Managing Attorney).
____________

Before Walters, Bucher and Ritchie, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

SMS Holdings Corporation has an application to register
on the Supplemental Register the standard character mark
SERVICEWEAR APPAREL for “bottoms; jackets; tops; underwear;
uniforms,” in International Class 25.
The application, filed on the Principal Register on
June 24, 2009, was based on an allegation of a bona fide
intention to use the mark in commerce. The examining
attorney refused registration, under Section 2(e)(1) of the
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 77767276
2
Trademark Act, 15 U.S.C. 1052(e)(1), on the ground that
applicant’s mark is merely descriptive in connection with
its goods.
On December 11, 2009, applicant filed an amendment to
allege use and specimen of use, alleging first use and use
in commerce as of December 10, 2009. Applicant also amended
its application to seek registration of the mark on the
Supplemental Register and added a disclaimer of APPAREL
apart from the mark as a whole.
The examining attorney accepted the amendment to allege
use and specimen, but refused registration on the
Supplemental Register, under Section 23(c) of the Trademark
Act, 15 U.S.C. 1091(c), on the ground that the wording
SERVICEWEAR APPAREL is generic in connection with
applicant’s identified goods. This refusal was made final
and applicant has filed this appeal. Both applicant and the
examining attorney have filed briefs.
The evidence consists of a dictionary definition,
excerpts from applicant’s and third-party websites, and
statements by applicant about its goods in response to
questions from the examining attorney.1 Applicant provided
the following information about its goods:

1 The examining attorney also submitted copies of Google Internet search
results, which by nature are of minimal probative value and are not
necessary to our decision herein.

Serial No. 77767276
3
"Examining attorney: Are applicant's goods
intended to be used by people/workers as part of
a uniform in the workplace?"
Applicant: In some applications, yes. The
applicant is selling goods with the mark to
government entities and others which may fall
outside the context of uniforms such as polo
shirts, coveralls and other clothing items. In
short, clothing as described in the goods
description is worn in the context of providing
service to customers and/or citizens.

Statements on applicant’s website include:
“Our broad range of brands and products allows you
to find the perfect garments for your uniform
program.”

“ServiceWear Apparel is the exclusive supplier
partner of uniforms and apparel to the US
Communities Government Purchasing Alliance.”

“Since 1923, Red Kap® has been the most trusted
brand in workwear.”
(Response, 2/24/2010.)
The examining attorney submitted the definition of
“apparel” as “n. 1. Clothing, especially outer garments;
attire” (www.yahoo.com). The examining attorney also
submitted excerpts from numerous third-party websites, of
which the following are samples:
How to Heat-Apply Graphics on Servicewear and
Uniforms
Whether you are buying a cappuccino or getting
your oil changed, chances are the person assisting
you is outfitted in custom workwear or servicewear
of some …
www.impressionsmag.com

Blade Uniform: Servicewear Products
Manufacturer of award winning uniforms and our
customers are getting some well-deserved
recognition. …
www.bladeuniform.com
Serial No. 77767276
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(links on webpage include: wovens, outerwear,
servicewear, knits, pants, headwear &
accessories…)

www.comofashion.com/workwear
Heading: Workwear … For Catering – Service –
Business
The first impression counts! A uniform and modern
appearance …
Servicewear and Workwear Catering to measure, from
professionals for professionals….
We know what is important in servicewear for the
catering trade. Let yourself be inspired and
choose the right servicewear with a diversity of
coordination possibilities for your company. …

www.lpmgstore.com
list of items for sale with picture:
Women’s long sleeve Servicewear Twill Shirt
Men’s Short Sleeve Servicewear Twill Shirt
Women’s Servicewear Knit Shirt

www.embroidery-web.com
item listing:
Ladies Long Sleeve Wrinkle/Soil Release
Servicewear Twill by Blue Generation

www.twitter.com
Looking for tips on getting started decorating
uniforms & servicewear? Check out my article in
Impressions Enewsletter.

www.americansportsapparel.com
Heading: Service Wear
From wrinkle-resistant executive oxfords to easy-
care, value-priced polos, we are your single-
source for high-quality service apparel.

www.shirtbasket.com
Fire, Police and Servicewear Apparel Custom
decorated to meet your specific needs.

The only issue in this case is whether SERVICEWEAR
APPAREL is a generic term in connection with “bottoms;
jackets; tops; underwear; uniforms.” “The critical issue in
genericness cases is whether members of the relevant public
Serial No. 77767276
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primarily use or understand the term sought to be protected
to refer to the genus of goods or services in question.”
H. Marvin Ginn Corp. v. Int’l Association of Fire Chiefs,
Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986).
Determining whether a mark is generic therefore
involves a two-step inquiry: First, what is the genus
of goods or services at issue? Second, is the term
sought to be registered or retained on the register
understood by the relevant public primarily to refer to
that genus of goods or services?

Id. See also In re Steelbuilding.com, 415 F.3d 1293,
75 USPQ2d 1420, 1421 (Fed. Cir. 2005); and In re Dial-A-
Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807
(Fed. Cir. 2001).
The examining attorney has the burden of establishing
by clear evidence that a mark is generic and thus
unregistrable. “Evidence of the public's understanding of
the term may be obtained from any competent source, such as
purchaser testimony, consumer surveys, listings in
dictionaries, trade journals, newspapers, and other
publications.” In re Merrill Lynch, Fenner and Smith Inc.,
828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987). See
also In re American Fertility Society, 188 F.3d 1341, 51
USPQ2d 1832 (Fed. Cir. 1999); and Magic Wand Inc. v. RDB
Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991). “Doubt
on the issue of genericness is resolved in favor of the
Serial No. 77767276
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applicant.” In re DNI Holdings Ltd., 77 USPQ2d 1435, 1437
(TTAB 2005).
Finally, the evidentiary burden is different depending
on the type of mark an applicant seeks to register. The
Board describes this difference in In re William B. Coleman
Co., 93 USPQ2d 2019, 2021. as follows:
Where marks are compound terms, the examining
attorney may establish that the term is generic by
producing evidence that each of the constituent
words is generic, and that the separate words
retain their generic significance when joined to
form a compound that has “a meaning identical to
the meaning common usage would ascribe to those
words as a compound.” In re Gould Paper Corp., 834
F.2d 1017, 5 USPQ2d, 1110, 1111-1112 (Fed. Cir.
1987) (SCREENWIPE held generic as applied to
premoistened antistatic cloths for cleaning
computer and television screens). See also TMEP
§1209.01(c)(i). Where marks are more in the nature
of a phrase, the United States Patent and
Trademark Office (“USPTO”) must provide evidence
of the meaning of the composite mark as a whole.
In re American Fertility Society, 188 F.3d 1341,
51 USPQ2d 1832,1837 (Fed. Cir. 1999) (SOCIETY FOR
REPRODUCTIVE MEDICINE not generic for association
services in the field of reproductive medicine
because where the mark is a phrase evidence that
each separate term is generic is not sufficient).
See also In re Dial-A-Mattress Operating Corp.,
240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed. Cir.
2001) (1-888-M-A-T-R-E-S-S not generic for
telephone shop-at-home retail services in the
field of mattresses because it “bears closer
conceptual resemblance to a phrase than a compound
word” and there is no evidence of record that the
mark as a whole is generic); and In re Active
Ankle Systems Inc., 83 USPQ2d 1532 (TTAB 2007)
(DORSAL NIGHT SPLINT found generic for orthopedic
splints for the foot and ankle based on record
that included third-party use of the entire
phrase).

Serial No. 77767276
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The examining attorney contends that SERVICEWEAR is the
name of “a type or class of clothing used by workers in the
service industry or clothing as part of a uniform used in
the workplace” (Office Action, 3/18/2010); that APPAREL is
defined as clothing; that, citing Gould, the individual
generic terms retain their generic significance in
combination; and, thus, that SERVICEWEAR APPAREL is merely
the name for apparel in the nature of servicewear.
Applicant contends that the examining attorney has
evaluated only the individual components of its mark; and,
citing American Fertility, that he has failed to provide
evidence that the composite mark has a generic significance.
Considering the identification of goods in the context
of the first part of the Marvin Ginn test for genericness,
there is no question that the genus or class of goods
involved herein is clothing. This genus encompasses the
identified goods, “bottoms, jackets, tops, underwear, and
uniforms,” as well as “servicewear,” which, as we discuss
infra, is a type of clothing. While the identification of
goods is not limited to servicewear, applicant’s statements
and website show that it sells bottoms, jackets, tops,
underwear, and uniforms that are in the nature of
servicewear. However, we do not limit the genus for our
analysis to the servicewear sub-class of clothing because
the identification of goods is broadly written and
Serial No. 77767276
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encompasses all sub-classes of clothing that would include
the specified items. Nonetheless, we focus our analysis on
the sub-group of bottoms, jackets, tops, underwear, and
uniforms known as “servicewear,” noting that registration is
properly refused if the subject matter for registration is
generic of any one of the goods for which registration is
sought. In re Analog Devices, Inc., 6 USPQ2d 1808, 1810
(TTAB 1988), aff'd, 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir.
1989) (unpublished).
We turn now to the second part of the Marvin Ginn test,
i.e., does the relevant public understand the phrase
SERVICEWEAR APPAREL to refer primarily to this genus of
goods. The relevant public for the identified clothing is
the general public, encompassing all levels of purchasing
care and sophistication.
Looking at the components of the mark, SERVICEWEAR
APPAREL, the dictionary definition evidence establishes that
“apparel” is a synonym for “clothing.” As such, “apparel”
is obviously also the name of the genus of goods herein and,
therefore, it has no source-identifying significance.
Applicant admits that “servicewear” is merely
descriptive of “clothing worn in the conduction (sic) of
performing services” (brief, p. 2), but argues that use of
the term by others is not widespread and, thus, it is not a
generic term. We disagree. The examining attorney has
Serial No. 77767276
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established the clear and consistent use by numerous third-
parties of the term “servicewear” as a category of clothing
worn by persons in the service industry. As applicant
itself explains, “servicewear” is a common term for a class
of clothing worn by those in the service industry. The
record shows that “servicewear” includes uniforms as well as
items like matching polo shirts, pants and/or jackets worn
by the service persons in a particular organization or
company. We find the evidence demonstrates sufficient
widespread use to conclude that “servicewear” will be
understood by the relevant public as a generic term, i.e.,
as the name of this sub-class of clothing.
Applicant argues that the combination of “servicewear”
and “apparel,” which each connote clothing, is a phrase; and
that this phrase has a commercial impression greater than
the individual terms.2 We disagree. We find that the
addition of “apparel,” a synonym for the genus herein, to
“servicewear” is of no significance. The record clearly
establishes that SERVICEWEAR APPAREL will be perceived by
the relevant public as generic under either the Gould or
American Fertility standard. As in Electric Candle, 93
USPQ2d at 2025, “even if the proposed mark as a whole is not

2 Applicant refers by analogy to the phrase CLOTHES CLOTHES as an
example of a combination of generic terms that applicant concludes is
not generic as a whole. We are not persuaded by applicant’s example and
will not comment on it, as we must consider the specific wording and
facts involved in this case.

Serial No. 77767276
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the literal name of the goods, it is nonetheless incapable
and, therefore, unregistrable on the Supplemental Register.”
Applying the Gould standard, the addition of the
generic class name, “apparel,” to the generic term,
“servicewear,” creates a compound; and these terms retain
their generic significance when joined to form a compound
that has “a meaning identical to the meaning common usage
would ascribe to those words as a compound.” Gould, 5
USPQ2d at 1111-12. While, in Gould, the mark consisted of
the two generic terms merged into a single compound word,
SCREENWIPE, and in this case the two generic terms remain
separate words, SERVICEWEAR APPAREL, as the court stated in
Gould, 5 USPQ2d at 1112, “[w]hether compounded as … two
words or … one word -- either is ordinary grammatical
construction. Nothing is left for speculation or conjecture
….”
Even applying the American Fertility standard, the
record herein supports the finding that SERVICEWEAR APPAREL
is generic. As the Board stated in Electric Candle, 93
USPQ2d at 2025, “… we do not believe that American Fertility
can be read such that an applicant could take a clearly
generic term and add to it a non-source identifying word
such as ‘company’ and thereby create a trademark. This is
true even in the absence of proof by the examining attorney
that others have used “electric candle company.” “Apparel”
Serial No. 77767276
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is not a corporate name as in Electric Candle (“company”),
nor a domain name as in Dial-A-Mattress (“.com”), but
“apparel” is equally devoid of source-identifying
significance in connection with items of clothing. Merely
adding the class name cannot transform a generic term into a
phrase that is capable of being a trademark.
We conclude, under the two-part Marvin Ginn analysis,
that SERVICEWEAR APPAREL is a generic term in connection
with “bottoms; jackets; tops; underwear; uniforms.”
Decision: The refusal under Section 23(c) of the Act
is affirmed.