Southcorp Brands Pty Limited

Trademark Trial and Appeal Board

Dec 17, 2019

88310184 (T.T.A.B. Dec. 17, 2019)

This Opinion is Not a
Precedent of the TTAB

Hearing: November 20, 2019 Mailed: December 17, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Southcorp Brands Pty Limited
_____

Serial No. 88310184
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Gary D. Krugman of Sughrue Mion, PLLC,
for Southcorp Brands Pty Limited.
Tracy Fletcher, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
_____

Before Cataldo, Mermelstein and Hudis,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
Applicant, Southcorp Brands Pty Limited, seeks registration on the Principal
Register of the mark 19 CRIMES (in standard characters) for the following goods and
services, as amended:1

1 Application Serial No. 88310184 was filed on February 21, 2019, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), as to both classes of goods and services, based upon
Applicant’s allegation of a bona fide intention to use the mark in commerce.

Upon the Examining Attorney’s requirement, Applicant amended the identification of Class
9 goods and Class 41 services in its May 22, 2019 response to the Examining Attorney’s May
6, 2019 first Office Action.
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motion picture films featuring comedy, drama, action, adventure and
animation; prerecorded audio tapes, audio video cassettes, audio video
discs, and digital versatile discs featuring music, and motion picture
films featuring comedy, drama, action, adventure and animation

in International Class 9; and

production, distribution and rental of motion pictures films; production,
distribution, and rental of television and radio programs; production,
distribution, and rental of sound and visual recordings in the nature of
videos in the field of comedy, drama, action, adventure and animation;
production of live-action and animated entertainment television shows;
production of entertainment television and radio news programs;
provision of entertainment information via communication and
computer networks; providing entertainment information services via a
global communications network in the nature of websites featuring a
wide variety of general interest entertainment information relating to
motion picture films, television show programs, musical videos, related
film clips, photographs, and multimedia entertainment content;
presentation of live stage shows; presentation of live show
performances; theater productions; entertainer services, namely, live
appearances by a professional entertainer; entertainment services,
namely, displaying a series of motion picture films featuring comedy,
drama, action, adventure and animation via television broadcast

in International Class 41.
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that
Applicant’s mark 19 CRIMES merely describes the subject matter of the recited goods
and services. Applicant and the Examining Attorney filed briefs, and also presented
arguments at an oral hearing before this panel of the Board.
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I. Mere Descriptiveness
In the absence of acquired distinctiveness,2 Section 2(e)(1) of the Trademark Act
prohibits registration on the Principal Register of “a mark which, (1) when used on
or in connection with the goods of the applicant is merely descriptive . . . of them.” 15
U.S.C. § 1052(e)(1). A term is “merely descriptive” within the meaning of Section
2(e)(1) if it “immediately conveys knowledge of a quality, feature, function, or
characteristic of the goods or services with which it is used.” In re Chamber of
Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012)
(quoting In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)). “On
the other hand, if one must exercise mature thought or follow a multi-stage reasoning
process in order to determine what product or service characteristics the term
indicates, the term is suggestive rather than merely descriptive.” In re Tennis in the
Round, Inc., 199 USPQ 496, 498 (TTAB 1978); see also In re Gyulay, 820 F.2d 1216,
3 USPQ2d 1009, 1009 (Fed. Cir. 1987).
A term need only describe a single feature or attribute of the identified goods or
services to be descriptive. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57
USPQ2d 1807, 1812 (Fed. Cir. 2001). Whether a mark is merely descriptive cannot

2 Applicant has not made a claim of acquired distinctiveness. As noted, the filing basis for
this Application is intent-to-use pursuant to Trademark Act Section 1(b). A claim of acquired
distinctiveness under Trademark Act Section 2(f), 15 U.S.C. § 1052(f), is normally not filed
in a Section 1(b) application before the applicant files an allegation of use, because a claim of
acquired distinctiveness, by definition, requires prior use of the mark. TRADEMARK MANUAL
OF EXAMINING PROCEDURE (TMEP) § 1212.09(a). Accordingly, the question of whether
Applicant’s 19 CRIMES mark has acquired distinctiveness under Trademark Act Section 2(f)
is not before us.
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be determined in the abstract or on the basis of guesswork. Descriptiveness must be
evaluated “in relation to the particular goods [or services] for which registration is
sought, the context in which it is being used, and the possible significance that the
term would have to the average purchaser of the goods because of the manner of its
use or intended use.” Chamber of Commerce of the U.S., 102 USPQ2d at 1219 (quoting
In re Bayer AG, 82 USPQ2d at 1831). The question is not whether a purchaser could
guess the nature of the goods from the mark alone. Rather, we evaluate whether
someone who knows what the goods or services are will understand the mark to
convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices,
Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re Tower Tech Inc.,
64 USPQ2d 1314, 1316-17 (TTAB 2002).
A. Arguments, Evidentiary Objections and Evidence of Record
In her May 6, 2019 first Office Action,3 the Examining Attorney argues
In this case, both the individual components and the composite result
are descriptive of applicant’s goods and services and do not create a
unique, incongruous, or nondescriptive meaning in relation to the goods
and services. Specifically, the wording “19 CRIMES” immediately
informs consumers that the identified goods and services feature
nineteen crimes that were the basis for “punishment by transportation”
from England to Australia.

3 At .pdf 3.
Page references herein to the application record refer to the .pdf version of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs refer to
the Board’s TTABVUE docket system.
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In support of this contention, the Examining Attorney introduced into the record the
following dictionary definitions of the terms comprising the mark:4
19 – the cardinal number equal to 18 + 1; and

crime – an act committed in violation of law where the consequence of
conviction by a court is punishment, especially where the punishment is a
serious one such as imprisonment.

The Examining Attorney further introduced screenshots from Applicant’s webpage,
excerpted below.5

4 At .pdf 11-14. Definitions retrieved from ahdictionary.com, from the source The American
Heritage Dictionary of the English Language, Fifth Edition 2019.
5 At .pdf 6-10.
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In her May 24, 2019 final Office Action,6 the Examining Attorney argues
The wording “19 CRIMES” describes the subject matter of the identified
entertainment goods and services. In this case, the wording “19
CRIMES” immediately informs consumers that the identified goods and
services concern nineteen crimes that were the basis for “punishment by
transportation” from England to Australia. The wording refers to the
British prisoners who were sent to Australia (instead of the gallows) in

6 At .pdf 3.
Serial No. 88310184
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the 18th century, each of whom was supposed to have violated one of the
infamous ‘19 crimes’ of the time. Notably, applicant’s website includes
the tab “The 19 Crimes” at the top of the page detailing the nineteen
crimes that “turned criminals into colonists” which are the subject of
applicant’s goods and services. The examining attorney relies on the
above-referenced dictionary definitions and the web pages from
applicant’s website previously made of record together with the web
pages attached thereto.7

In support of this contention, the Examining Attorney relied upon screenshots from
a third-party website8 discussing wines produced by Applicant under its 19 CRIMES
mark featuring interactive labels on their bottles, accessed by means of a cellular
phone. Applicant objected to this evidence in its brief9 on the basis that:
While the Examining Attorney indicates in the May 24, 2019 Office
Action that these website excerpts are from Applicant’s website, they
are not. The web pages on their face, have the website address as
www.themanual.com with a 2019 copyright notice indicating ownership
by Designtechnica Corporation. Applicant does not know the origin of
this website and the Examining Attorney does not specifically discuss it,
except to generally indicate that she relies on these excerpts. This
“evidence” should be excluded as improperly made of record and for
misleading the Board by falsely asserting that these excerpts are from
Applicant’s website.

Applicant does not further elaborate on its contention that it “does not know the
origin of this website”10 despite the Examining Attorney’s inclusion with the
screenshots of the website address as well as the date upon which the website was
accessed, see, e.g., In re I-Coat Co., 126 USPQ2d 1730, 1733 (TTAB 2018); see also
Trademark Board Manual of Procedure (TBMP) § 1208.03 (June 2019), thus

7 These are web pages from the third-party website discussed below.
8 At .pdf 5-9.
9 6 TTABVUE 7 n.3.
10 6 TTABVUE 7 n.3.
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complying with the requirements for introducing such evidence into the record. See
In re Mueller Sports Medicine, Inc., 126 USPQ2d 1584, 1587 (TTAB 2018); see also
TMEP § 710.01(b) (October 2018) and authorities cited therein. In addition, the
Examining Attorney specifically refers to Applicant’s webpages “previously made of
record”11 with her May 6, 2019 Office Action and neither claims or implies that the
third-party website evidence introduced with her May 24, 2019 Office Action consists
of pages from Applicant’s own website. Accordingly, we disagree with Applicant’s
contention that the Examining Attorney misled the Board by falsely making such an
assertion. With regard to Applicant’s statement that “the Examining Attorney does
not specifically discuss [the evidence], except to generally indicate that she relies
upon these excerpts”,12 we find it reasonable to infer that the Examining Attorney
relied upon the third-party website evidence in support of the sole issue presented in
her May 24, 2018 final Office Action and presently on appeal, namely, the refusal of
registration on the ground of mere descriptiveness under Trademark Act Section
2(e)(1). In view thereof, we find the third-party website evidence to be admissible as
indicative of the perceptions of the author and the content received by the viewer and
properly of record. See, e.g., In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1087 n.4 (TTAB
2016). Nonetheless, inasmuch as this evidence does not directly discuss the goods and
services at issue herein, it is entitled to little probative weight in our determination.

11 Examining Attorney’s May 24, 2019 final Office Action at .pdf 3.
12 6 TTABVUE 7 n.3.
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The Federal Circuit, our primary reviewing court, has sanctioned the use of
internet evidence in ex parte registration proceedings. See, e.g., In re Bayer AG, 488
F.3d 960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007) (“[i]nternet evidence is generally
admissible and may be considered for purposes of evaluating a trademark”) (citations
omitted). The Federal Circuit has also noted that, in ex parte proceedings,
“administrative agencies like the PTO are not bound by the rules of evidence that
govern judicial proceedings.” In re Epstein, 32 F.3d 1559, 1565 (Fed. Cir. 1994). In
addition, USPTO examining attorneys have a limited ability to collect evidence. In re
Budge Mfg., Inc., 857 F.2d 773, 8 USPQ2d 1259, 1260-1261 (Fed. Cir. 1988); see also
In re Pacer Technology, 338 F.3d 1348, 67 USPQ2d 1629, 1632 (Fed. Cir. 2003)
(Federal Circuit was “mindful of the reality that the PTO is agency of limited
resources”); In re Loew’s Theatres, Inc., 769 F.2d 764, 226 USPQ 865, 868 (Fed. Cir.
1985) (the examining attorney “does not have means” to undertake the research, such
as a marketing survey, necessary to prove that the public would actually make the
goods/place association asserted).
We reiterate the Board’s well-established practice of taking a more permissive
approach to the admissibility and probative value of evidence in an ex parte
proceeding than we would in an inter partes proceeding. In re Canine Caviar Pet
Foods, Inc., 126 USPQ2d 1590, 1597 (TTAB 2018); In re Sela Products LLC, 107
USPQ2d 1580, 1584 (TTAB 2013) (“…the Board does not, in ex parte appeals, strictly
apply the Federal Rules of Evidence, as it does in inter partes proceedings.”). In ex
parte proceedings, the Board observes the spirit of the rules of evidence rather than
Serial No. 88310184
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exalting their technical requirements. See In re Hudson News Co., 39 USPQ2d 1915,
1920 n.10, 1924 n.18 (TTAB 1996), aff’d without opinion (Fed. Cir. 1997) (Board
allowed NEXIS evidence to show psychological effect of color blue, despite hearsay
nature, recognizing the difficulty for examining attorney to establish such fact
without relying on NEXIS evidence; Board also accepted sufficiency of evidence
showing features of applicant’s trade dress were common, recognizing that USPTO’s
limited resources constrain an examining attorney’s ability to acquire photographs of
interiors of retail establishments); In re Broadway Chicken Inc., 38 USPQ2d 1559,
1565 (TTAB 1996); In re Murphy Door Bed Co., 223 USPQ 1030, 1032 n.9 (TTAB
1984). See also In re Berman Brothers Harlem Furniture Inc., 26 USPQ2d 1514, 1515
(TTAB 1993); TBMP § 1208.
In her brief,13 the Examining Attorney argues:
The evidence of record makes clear that nineteen particular crimes are
the subject of applicant’s goods and services. In particular, the wording
19 CRIMES immediately informs consumers that the identified
entertainment film and television goods and services concern nineteen
historical crimes that were the basis for “punishment by transportation”
from England to Australia. The wording refers to British prisoners who
supposedly violated one of the infamous nineteen crimes of the time and
were sent to Australia instead of the gallows.14

13 Examining Attorney’s brief, 8 TTABVUE 5 (internal citations omitted).
14 The dissent argues that the Examining Attorney “abandoned” her position that the 19
CRIMES mark merely describes the nineteen crimes forming the basis for a sentence of
transportation to Australia, and that Applicant did not have a full and fair opportunity to
respond to this argument in its brief. However, as noted above the Examining Attorney raised
and maintained this argument in her first and final Office Actions and appeal brief, and
added in her final Office Action and brief the argument that the mark also merely describes
the prisoners themselves who were convicted of these crimes. We thus disagree with the
dissent’s position that Applicant was not on notice of the Examining Attorney’s basis for
maintaining the refusal of registration or afforded an opportunity to respond thereto. We
further note that Applicant neither advanced this argument nor requested remand to address
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In its brief,15 Applicant argues:
In the present case, Applicant submits that the mark “19 CRIMES”
clearly falls on the suggestive side of the descriptive/suggestive line, as
applied to the goods/services identified in the application, inasmuch as
it does not immediately or directly describe any feature, characteristic
or quality of any of Applicant’s goods or services. As is shown in
Applicant’s website, the term “19 CRIMES” refers to a time in late 18th
and 19th century England where if an individual was convicted of one
or more of 19 enumerated crimes, that individual would be sentenced to
live in exile in Australia, rather than put to death. These convicted
individuals became pioneers in what was then a frontier penal colony,
developing the new country of Australia. The mark “19 CRIMES”
references those crimes as part of that late 18th and 19th century
practice of banishing those convicted individuals to live in Australia.
The mark is a classic example of a mark which clearly requires thought,
imagination and a multi-stage reasoning process in order to arrive at a
conclusion with respect to the characteristics or features of any of the
goods/services set forth in the application. That the subject matter of one
or more of Applicant’s intended television programs, films, etc. may be
related to this time of history in England and Australia does not make
the mark “merely descriptive” of any of the goods or services. In point of
fact the subject matter of the intended products and services is not the
19 crimes that would result in someone shipped from England to
Australia. Rather, the subject matter of the intended products and
services are the individuals who were exiled to Australia, which
individuals had their own unique stories and which individuals became
colonists and pioneers in the development of the new country of
Australia. Applicant’s website excerpts of record herein support this
argument as these excerpts refer to certain of these individuals exiled to
Australia, each of whom had a unique story to tell.

Applicant thus argues that the subject matter of its identified goods and services
under the 19 CRIMES mark is not the 19 enumerated crimes themselves, but the

any substantive or procedural issue in this proceeding. See, e.g., In re Adlon Brand GmbH &
Co., 120 USPQ2d 1717, 1725 (TTAB 2016); See also TBMP § 1209.04.
15 Applicant’s brief, 6 TTABVUE 8-9.
Serial No. 88310184
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stories of those “incorrigible rogues” who were sentenced to colonize Australia upon
being convicted of those crimes. Applicant states in its reply brief:16
As is clear from Applicant’s web pages which are of record herein, the
subject matter of the intended products and services covered by
Applicant’s application is not the 19 crimes that would result in someone
convicted of one or more of those crimes being deported from England to
Australia. Rather, it is a number of the individuals who were exiled to
Australia which is the focus of and the subject matter of the intended
products and services. Reviewing the website evidence of record shows
that Applicant focuses on various individuals exiled to Australia,
specifically, John Boyle O’Reilly, Michael Harrington, James Wilson,
Cornelius Dwyer-Kane and James Kieley. Each of these individuals, and
others like them, became pioneers in what was then a frontier penal
colony – Australia, and helped forge a new country and new lives. Each
of these individuals had their own story, leading to their conviction,
their exile to Australia, and their lives in Australia afterwards.

B. Discussion
Based upon the evidence of record, we make the following findings of fact:
• as defined, 19 CRIMES directly describes nineteen acts committed in
violation of law resulting upon conviction in a serious penalty such as
imprisonment;
• in 18th and 19th Century Britain, criminal jurisprudence enumerated
nineteen crimes that carried a punishment of “transportation” by ship for
forced colonization of a penal colony located in present-day Australia;
• Applicant produces wines, including Australian wines inspired by the
enumerated nineteen crimes and the convicts turned colonists who were
sentenced to colonize Australia upon conviction;

16 Applicant’s reply brief, 9 TTABVUE 3-4.
Serial No. 88310184
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• Applicant’s 19crimes.com website features several tabs. “The 19 Crimes”
tab enumerates the 19 antique crimes that “turned criminals into
colonists”17 and notes that Applicant’s “wine celebrates the rules they broke
and the culture they built.18 “The Gang” tab discusses the lives and feats of
several individual convicts transported as colonists to Australia.
Applicant offers motion pictures, audio and video tapes, cassettes and discs as well
as production, distribution and rental thereof and related entertainment services
under its 19 CRIMES mark. Because Applicant’s goods and services are broadly
identified as to subject matter in the field of entertainment, we find that the relevant
purchasing public for these goods and services includes anyone interested in
entertainment in the fields of comedy, drama, action, adventure or animation. In
other words, Applicant’s goods and services appear to be intended for the general
public. We therefore consider the impression the 19 CRIMES mark will have upon
the general public encountering the mark in connection with the identified goods and
services. The question is not whether someone presented only with the mark could
guess what the goods are, but “whether someone who knows what the goods and
services are will understand the mark to convey information about them.” DuoProSS
Meditech Corp. v. Inviro Med. Devices, Ltd., 103 USPQ2d at 1757 (quoting In re Tower
Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).

17 May 6, 2019 Office Action at .pdf 9-10.
18 Id.
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Applicant’s goods include motion picture films, prerecorded audio and video tapes,
cassettes and discs featuring comedy, drama, action, adventure and animation. These
goods are broadly identified as to their subject matter and encompass motion picture
films, tapes, cassettes and discs on the subject of the nineteen crimes in 18th and 19th
Century Britain forming the basis for a sentence of transportation to Australia. These
crimes and the imposition of sentencing thereunder are encompassed within the
subjects of dramas, action/adventure stories, and possibly dark comedies. 19 CRIMES
thus merely describes the subject matter of Applicant’s goods in Class 9.
Applicant’s services include production, distribution and rental of motion picture
films, television and radio programs, videos, websites and live performances in the
fields of comedy, drama, action, adventure and animation. These services are also
broadly identified as to their subject matter and, similar to Applicant’s goods,
encompass various production, distribution and rental of programs and providing
entertainment services on the subject of the nineteen crimes resulting in a sentence
of transportation to Australia. 19 CRIMES thus is merely descriptive of the subject
matter of Applicant’s dramas, action/adventure stories and potentially comedies in
Class 41.
Applicant argues that the subject matter of its goods and services is not the
nineteen crimes themselves, but rather the convicts who were exiled to Australia
thereunder and their stories of adversity. We note, however, that Applicant’s goods
and services are not so limited, and Applicant’s own website includes a tab labeled
“the 19 Crimes” enumerating the crimes that predicated the sentence of
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transportation to Australia upon the convicts who would become unwilling colonists
there. While Applicant may intend for its goods and services to focus on the convicts
and their stories as opposed to the crimes, as discussed above, Applicant’s broadly
identified goods and services may include the subject of the nineteen crimes and the
ramification of conviction thereof. As has often been stated, our mere descriptiveness
determination must be based on the significance of the term in connection with
Applicant’s goods and services, not in the abstract. See, e.g., Chamber of Commerce of
the U.S., 102 USPQ2d at 1219; cf. Stone Lion Capital Partners, LP v. Lion Capital
LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1163 (Fed. Cir. 2014) (“Parties that choose to
recite services in their trademark application that exceed their actual services will be
held to the broader scope of the application.”).
Applicant further argues that when the 19 CRIMES mark is considered not in
relation to the crimes themselves but to the individuals transported to Australia upon
conviction thereof, the mark is suggestive “inasmuch as it does not immediately or
directly describe any feature, characteristic or quality of any of Applicant’s goods or
services.”19 We disagree that consumers encountering the 19 CRIMES mark must use
imagination, thought or perception to perceive the nature of Applicant’s identified
entertainment products and services on the subject of individuals convicted of the
nineteen crimes resulting in a sentence of transportation to Australia. However, as
discussed above, because we find Applicant’s mark to merely describe the nineteen

19 6 TTABVUE 8.
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crimes themselves under the broadly stated subject matter of Applicant’s goods and
services, we need not make such a finding.20
Further, it is settled that a term is merely descriptive if it describes a single
feature or characteristic of the identified goods or services. Dial-A-Mattress, 57
USPQ2d at 1812. In this case, 19 CRIMES is merely descriptive of the subject matter
of Applicant’s broadly worded audio and video products and services, which is a
sufficient basis to find Applicant’s proposed mark merely descriptive. See, e.g., In re
Putman Publ’g Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE
merely descriptive of news and information services in the food processing industry).
Applicant acknowledges that “The mark ‘19 CRIMES’ references those crimes as
part of that late 18th and 19th century practice of banishing those convicted
individuals to live in Australia.”21 It is “settled that so long as any one of the
meanings of a term is descriptive, the term may be considered to be merely
descriptive.” In re Chopper Ind., 222 USPQ 258, 259 (TTAB 1984); see also, In re IP
Carrier Consulting Group, 84 USPQ2d 1028, 1034 (TTAB 2007); In re Bright-Crest,
Ltd., 204 USPQ 591, 593 (TTAB 1979). Here, the proposed mark is 19 CRIMES,
conviction of which resulted in involuntary transportation to a penal colony in
Australia.

20 The dissent posits that our determination that Applicant’s 19 CRIMES mark merely
describes its broadly worded goods and services is “grounded upon subjective abstractions
and guesswork”. We disagree, and note our finding is based upon evidence of record from
Applicant’s own website and recitation of goods and services. We note in addition that the
dissent relies in support of its arguments upon third-party registrations that are not in the
record.
21 Applicant’s brief, 6 TTABVUE 8.
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II. Conclusion
The evidence submitted by the Examining Attorney establishes that the proposed
mark 19 CRIMES is a merely descriptive term related to the subject matter of
Applicant’s identified goods and services. When 19 CRIMES is used in connection
with Applicant’s identified informational and entertainment products and services,
it immediately tells consumers about a feature of those goods and services, namely,
that the information and entertainment provided relates to the 19 crimes of 18th and
19th Century Britain that led to involuntary colonization of Australia.
Decision: The refusal to register Applicant’s mark 19 CRIMES is affirmed.
Hudis, Administrative Trademark Judge, dissenting:
Because I believe the majority misapplies the law of mere descriptiveness to the
facts of this appeal, considered evidence that should have been found inadmissible,
and supported its decision on a theory not advanced by the Examining Attorney
during briefing, I respectfully dissent.
I. Legal Principles of Mere Descriptiveness
Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1), prohibits registration on
the Principal Register of a mark which, when used on or in connection with the goods
of the applicant is merely descriptive of them. See also Trademark Act Section 3, 15
U.S.C. § 1053, applying the same rules for registration of service marks (for services)
as they are applied to trademarks (for goods). “A term is merely descriptive if it
immediately conveys knowledge of a quality, feature, function, or characteristic of
Serial No. 88310184
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the goods or services with which it is used.” In re Bayer AG, 488 F.3d 960, 82 USPQ2d
1828, 1831 (Fed. Cir. 2007) (citing In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009
(Fed. Cir.1987)) (emphasis added). “On the other hand, ‘if a mark requires
imagination, thought, and perception to arrive at the qualities or characteristics of
the goods [or services], then the mark is suggestive.’” In re MBNA Am. Bank, N.A.,
340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003) (quoting In re Nett Designs,
236 F.3d 1339, 57 U.S.P.Q.2d 1564, 1566 (Fed. Cir. 2001).
“The categories are in actuality ‘central tones in a spectrum ... and are frequently
difficult to apply.’” In re Gyulay, 3 USPQ2d at 1010 (quoting Soweco, Inc. v. Shell Oil,
Co., 617 F.2d 1178, 207 USPQ 278, 282 (5th Cir.1980), cert. denied, 450 U.S. 981
(1981)). “As has often been stated, there is a thin line of demarcation between a
suggestive mark and a merely descriptive one, with the determination of which
category a mark falls into frequently being a difficult matter involving a good
measure of subjective judgment.” Anheuser-Busch, Inc. v. Holt, 92 USPQ2d 1101,
1105 (TTAB 2009).
Our “determination that a mark is merely descriptive is a factual finding” which
must be supported “by substantial evidence.”22 In re Stereotaxis, Inc., 429 F.3d 1039,
77 USPQ2d 1087, 1089 (Fed. Cir. 2005). Whether a mark is merely descriptive or not

22 The “substantial evidence standard” asks “whether a reasonable person might find that
the evidentiary record supports the agency’s conclusion[,]” and “involves examination of the
record as a whole, taking into account evidence that both justifies and detracts from an
agency's decision.” On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 56 USPQ2d
1471, 1475 (Fed. Cir. 2000).

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is “determined from the viewpoint of the relevant purchasing public,” In re Bed &
Breakfast Registry, 791 F.2d 157, 229 USPQ 818, 819 (Fed. Cir. 1986), and “[t]he
Board resolves doubts as to the mere descriptiveness of a proposed mark in favor of
the applicant.” In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1513 (TTAB
2016).
Whether a mark is merely descriptive is determined in relation to the goods for
which registration is sought and the context in which the mark is used, not in the
abstract or on the basis of guesswork. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ
215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other
words, we evaluate whether someone who knows what the goods or services are will
understand the mark to convey information about them. DuoProSS Meditech Corp.
v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012).
A mark need not immediately convey an idea of each and every specific feature of the
goods in order to be considered merely descriptive; it is enough if it describes one
significant attribute, function or property of the goods. See In re Gyulay, 3 USPQ2d
at 1010; In re H.U.D.D.L.E., 216 USPQ 358, 359 (TTAB 1982); In re MBAssociates,
180 USPQ 338, 339 (TTAB 1973).
II. Review of the Factual Record, and the Majority’s Findings of Fact
As noted by the majority, the Examining Attorney’s mere descriptiveness refusal
to register Applicant’s mark was supported by a very thin evidentiary record,
consisting of the following:
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• Dictionary definitions of the terms comprising the mark:23
o 18 + 1 = “19”; and
o “Crime” – an act committed in violation of law where the consequence of
conviction by a court is punishment, especially where the punishment is
a serious one such as imprisonment.
• Screenshots from Applicant’s website at 19crimes.com, shown above in the
majority’s opinion.24
• Screenshots from a third-party website at themanual.com, not shown above in
the majority’s opinion, posting an article entitled “Food & Drink: Learn about
the 19 Crimes that Inspired a Wine Label (and a new AR App).”25
Beginning with the third-party website at themanual.com, as the majority notes,
Applicant objected to the inclusion of this evidence in the record on appeal.26 While
the Examining Attorney included the required URL and capture date for this website
evidence, see In re I-Coat Co., 126 USPQ2d 1730, 1733 (TTAB 2018), the general
purpose for this requirement is so that “an applicant can verify the information
presented in the case.” Id.
In fact, Applicant could not verify this information, and stated in its brief that it
did not know the origin of the site. Moreover, the themanual.com evidence should
have been afforded no probative value, and to the extent the majority found the
evidence admissible it should have been “only to show what [was posted on the site]
…, not the truth of what [was posted] … . Safer, Inc. v. OMS Invs., Inc., 94 USPQ2d
1031, 1040 (TTAB 2010). Finally, as noted by the majority, the discussion on the
themanual.com site has nothing to do with the goods and services identified in the 19

23 May 6, 2019 Office Action at .pdf 11-14.
24 Id. at .pdf 6-10.
25 May 24, 2019 Office Action at .pdf 5-9.
26 Applicant’s Brief, 6 TTABVUE 7 n.3.
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CRIMES application at issue, and therefore is irrelevant. Fed. R. Evid. 401, 402.
In my view, the themanual.com hearsay evidence should not have been considered
for a factual history of the so-called “19 Crimes” associated with 19th century England
and Australia, and should have been given no weight nor relied upon by the majority
for factual findings. Fed. R. Evid. 801, 802. In this connection, the majority’s reliance
on In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1087 n.4 (TTAB 2016) for the
admissibility of the themanual.com site is inappropriate. The third-party evidence
at issue in In re Mr. Recipe was the ENCYCLOPEDIA BRITANNICA, a reference having
much greater guarantees of trustworthiness than a relatively unknown opinion blog.
In large part, moreover, the majority justifies ignoring the rules of evidence by
citing a line of cases tracing their origins to before and shortly after the advent of the
Internet, when Trademark Examining Attorneys had much less access to publicly
available information. Taking a more permissive approach to the admissibility and
probative value of evidence in an ex parte proceeding should not justify ignoring the
rules of evidence altogether.
This leaves us with the few pages from Applicant’s 19crimes.com website that
were made of record by the Examining Attorney. What those pages show are (1) a list
of the 19 crimes that could result in someone being shipped from England to
Australia, and (2) brief descriptions of certain individuals who were exiled to
Australia, and who became colonists and pioneers in the development of Australia as
new country.27

27 See Applicant’s brief, 6 TTABVUE 8-9.
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Turning now to the findings of fact stated by the majority:
• “As defined, 19 CRIMES directly describes nineteen acts committed in
violation of law resulting upon conviction in a serious penalty such as
imprisonment.”
This finding is not supported by the admissible record.
• “In 18th and 19th Century Britain, criminal jurisprudence enumerated
nineteen crimes that carried a punishment of “transportation” by ship for
forced colonization of a penal colony located in present-day Australia.”
This finding is not supported by the admissible record.
• “Applicant produces wines, including Australian wines inspired by the
enumerated nineteen crimes and the convicts turned colonists who were
sentenced to colonize Australia upon conviction thereof.”
This finding, taken from a statement in Applicant’s brief, is irrelevant to the goods
and services identified in the 19 CRIMES application at issue.
• “Applicant’s 19crimes.com website features several tabs. “The 19 Crimes”
tab enumerates the 19 antique crimes that “turned criminals into colonists”
and notes that Applicant’s “wine celebrates the rules they broke and the
culture they built. “The Gang” tab discusses the lives and feats of several
individual convicts transported as colonists to Australia.”
Besides the contents of the 19 CRIMES application and the definitions of “19” and
“Crimes,” this is the only other admissible evidence of record.
III. Consideration of Applicant’s 19 CRIMES Mark in the Context of the
Goods and Services Identified in the Application
For ease of discussion, a shortened description of “Applicant’s Class 9 Goods” may
be stated as video and/or audio works recorded on various types of media featuring
comedy, drama, action, adventure, animation and music; and a shortened description
of “Applicant’s Class 41 Services” may be stated as production, distribution and rental

Serial No. 88310184
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of live and recorded entertainment featuring comedy, drama, action, adventure and
animation.
At its core, the underpinnings of the majority’s conclusion that Applicant’s 19
CRIMES mark is merely descriptive of Applicant’s identified goods and services are
the following:
• Applicant’s Class 9 Goods “are broadly identified as to their subject matter
and encompass motion picture films, tapes, cassettes and discs on the
subject of the nineteen crimes in 18th and 19th Century Britain forming the
basis for a sentence of transportation to Australia. These crimes and the
imposition of sentencing thereunder are encompassed within dramas,
action/adventure stories, and possibly dark comedies. 19 CRIMES thus
merely describes the subject matter of Applicant’s goods in Class 9.
(Emphasis added).
• Applicant’s Class 41 Services “include production, distribution and rental
of motion picture films, television and radio programs, videos, websites and
live performances in the fields of comedy, drama, action, adventure and
animation. These services are also broadly identified as to their subject
matter and, similar to Applicant’s goods, encompass various production,
distribution and rental of programs and providing entertainment services
on the subject of the nineteen crimes resulting in a sentence of
transportation to Australia. 19 CRIMES thus is merely descriptive of the
subject matter of Applicant’s dramas, action/adventure stories and
potentially comedies in Class 41. (Emphasis added).
As the emphasis added above illustrates, the majority’s opinion that Applicant’s 19
CRIMES mark is merely descriptive of the identified goods and services in Classes 9
and 41 is grounded upon subjective abstractions and guesswork (that is, what
Applicant’s goods and services could “encompass”), contrary to the proscriptions of In
re Abcor Dev. Corp., 200 USPQ at 218 and In re Remacle, 66 USPQ2d at 1224.
By the logic of the majority, any application for a mark on the subject of recorded
media, and related entertainment services, in the fields of comedy, drama, action,
adventure and animation, if their topics conceivably could cover the subject of the
Serial No. 88310184
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mark, would be unregistrable absent a showing of acquired distinctiveness. This
cannot be Office registration policy as shown by the following marks registered on
the Principal Register without a showing of secondary meaning: CSI: CRIME SCENE
INVESTIGATION (Reg. No. 2775596), LAW & ORDER (Reg. No. 2588624), MIAMI
VICE (Reg. No. 1409888), NYPD BLUE (Reg. No. 1836383), and CRIMINAL MINDS
(Reg. No. 3162620).
Moreover, the majority opinion concedes that Applicant’s identified goods and
services are intended for the general public. The viewpoint of the relevant purchasing
public is a mandatory consideration as required by the Federal Circuit Court of
Appeals in In re Bed & Breakfast Registry, 229 USPQ at 819. Whether a term is
entitled to trademark status turns on how the mark is understood by the relevant
purchasing public. Magic Wand, Inc. v. RDB, Inc., 940 F.2d 638, 19 USPQ2d 1551,
1553 (Fed. Cir. 1991). That is, whether people who know what the goods and services
are (recorded and live entertainment) will understand the mark to convey
information about them. DuoProSS Meditech, 103 USPQ2d at 1757.
Taking all of the admissible evidence at face value, only a very small sliver of the
relevant purchasing public “might” have some idea (if any) of the content of
Applicant’s Class 9 and 41 Goods and Services based on the 19 CRIMES mark –
university educated individuals with a major or concentration in 19th Century British
history. The vast majority of the relevant purchasing public, which the majority
concedes are general consumers of recorded and live entertainment, will have no
Serial No. 88310184
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notion that 19 CRIMES immediately and directly describes the content of Applicant’s
Class 9 and 41 Goods and Services.
As argued by Applicant and the Examining Attorney in their briefs, based only in
part upon the content of Applicant’s 19crimes.com website, the intended content of
Applicant’s Class 9 Goods and Class 41 Services concerns the individuals who were
exiled to Australia, each of whom had their own unique stories in becoming colonists
and pioneers in the development of the new country of Australia. The intended
content of Applicant’s Class 9 Goods and Class 41 Services is not about the so-called
19 crimes per se. However, the majority posits (speculates) that Applicant’s Class 9
Goods and Class 41 Services are so broadly worded in the Application that this could
be about the 19 crimes themselves based solely upon a bureaucratic reading of
Applicant’s identified goods and services.
The majority opinion’s reliance on Stone Lion Capital Partners, LP v. Lion Capital
LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1163 (Fed. Cir. 2014) for the proposition that
“parties that choose to recite services in their trademark application that exceed their
actual services will be held to the broader scope of the application” is inapposite. The
Federal Circuit made that statement in the context of its analysis of the
sophistication of the parties’ potential customers in an opposition proceeding (based
on likelihood of confusion), not as part of an analysis regarding whether either party’s
mark was, or was not, merely descriptive.
So what is the average consumer of Applicant’s Class 9 Goods and Class 41
Services, members of the general public, likely to believe upon encountering
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Applicant’s 19 CRIMES mark? Will Applicant’s recorded and live programming be
about modern day or historical criminal behavior or laws? Will Applicant’s
programming be about modern-day or historical figures convicted of a certain list of
19 CRIMES? According to the admissible evidentiary record, the 19 CRIMES mark
simply does not immediately and directly tell us. Rather, the average consumer will
have to engage in an exercise of imagination, thought, and perception to arrive at a
notion as to the content of Applicant’s applied-for Class 9 Goods or Class 41 Services.
In my view, this vaults the 19 CRIMES mark over the merely descriptive bar and
onto the suggestive platform of registrability. I thus believe that the majority’s
opinion affirming the Examining Attorney’s denial of registration based on mere
descriptiveness is not supported by substantial evidence.
IV. The Majority’s Opinion that Applicant’s 19 CRIMES Mark is Merely
Descriptive is based upon a Theory Not Maintained by the Examining
Attorney.
Finally, as noted above by the majority, in the May 6, 2019 first Office Action28
the Examining Attorney argues:
In this case, both the individual components and the composite result
are descriptive of applicant’s goods and services and do not create a
unique, incongruous, or nondescriptive meaning in relation to the goods
and services [identified in the Application].

28 At .pdf 3.
Page references herein to the application record refer to the .pdf version of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs refer to
the Board’s TTABVUE docket system.
Serial No. 88310184
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Continuing, in the May 24, 2019 final Office Action,29 the Examining Attorney
argues:
The wording “19 CRIMES” describes the subject matter of the identified
entertainment goods and services. In this case, the wording “19
CRIMES” immediately informs consumers that the identified goods and
services concern nineteen crimes that were the basis for “punishment by
transportation” from England to Australia. The wording refers to the
British prisoners who were sent to Australia (instead of the gallows) in
the 18th century, each of whom was supposed to have violated one of the
infamous ‘19 crimes’ of the time. Notably, applicant’s website includes
the tab “The 19 Crimes” at the top of the page detailing the nineteen
crimes that “turned criminals into colonists” which are the subject of
applicant’s goods and services.
Then, the Examining Attorney in her brief30 argues that:
The evidence of record makes clear that nineteen particular crimes are
the subject of applicant’s goods and services. In particular, the wording
19 CRIMES immediately informs consumers that the identified
entertainment film and television goods and services concern nineteen
historical crimes that were the basis for “punishment by transportation”
from England to Australia. (See webpages from applicant’s website,
www.19crimes.com, attached to the Office Action dated May 6, 2019.)
Thus, after issuing the First Office Action, it appears the Examining Attorney
abandoned the theory (now relied upon by the majority) that Applicant’s 19 CRIMES
mark is merely descriptive, generally, of Applicant’s Class 9 Goods and Class 41
Services as recited in the Application. Rather, the theory relied upon by the
Examining Attorney in the Final Office Action and her brief on appeal is that
Applicant’s 19 CRIMES mark is merely descriptive of Applicant’s goods and services
as amplified by Applicant in its 19crimes.com website. I thus believe it unfair for the

29 At .pdf 3.
30 Examining Attorney’s brief, 8 TTABVUE 5.
Serial No. 88310184
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majority to affirm the Examining Attorney’s mere descriptiveness refusal based upon
a theory to which Applicant did not have a full and fair opportunity to respond in its
reply brief.
The majority’s reliance on In re Adlon Brand GmbH & Co., 120 USPQ2d 1717,
1725 (TTAB 2016) and TBMP § 1209.04 is misplaced. In re Adlon Brand involved the
applicant’s grievance that the examining attorney, in her office action in response to
the applicant's request for reconsideration, presented a new issue based on
significantly different evidence. The Board said that if the applicant believed the
office action was procedurally erroneous, or if the applicant desired more time to
address the examining attorney’s new evidence, the applicant's recourse was to file
with the Board, after the filing of the appeal but before briefing, a request for remand
with a showing of good cause. Similarly TBMP § 1209.04 discusses generally an
Applicant’s request for remand under circumstances not present on this appeal. Here,
by contrast, the majority affirms the refusal to register based upon a theory not
maintained in the Examining Attorney’s brief on appeal and to which Applicant did
not have an opportunity to respond. This is manifestly unfair.
V. Conclusion
At best, based upon the admissible evidence of record, it is a close case as to
whether Applicant’s 19 CRIMES mark is merely descriptive or suggestive of
Applicant’s Class 9 Goods and Class 41 Services. In such close cases, the proper
outcome is to find the mark suggestive and publish the Application for potential
opposition. In re Entenmann’s Inc., 15 USPQ2d 1750, 1751 n.2 (TTAB 1990) (“[I]n ex
parte cases involving a refusal to register on the basis of mere descriptiveness, it is
Serial No. 88310184
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the practice of this Board to resolve doubts in favor of the applicant and pass the
mark to publication.”). I therefore dissent.