Spina Technology Corporation

Trademark Trial and Appeal Board

Nov 15, 2013

No. 85456039 (T.T.A.B. Nov. 15, 2013)

Mailed: 11/15/2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Spina Technology Corporation
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Serial No. 85456039
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Mark B. Harrison of Venable LLP for Spina Technology
Corporation.

Dominic R. Fathy, Trademark Examining Attorney, Law Office 104
(Chris Doninger, Managing Attorney).
_______

Before Quinn, Gorowitz and Hightower,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
Spina Technology Corporation (“applicant”) filed, on
October 25, 2011, an intent-to-use application, under Section
1(b) of the Trademark Act, 15 U.S.C. § 1051(b), to register the
designation BLAZING SILKS (in standard characters) for “full
line of clothing; t-shirts, sweatshirts, hooded pullovers, tank
tops, footwear, socks, jackets, button down shirts, polo shirts,
dresses, skirts, jeans, shorts, sweatpants, neckties, aprons,
belts, gloves, jerseys, baseball caps and hats, and headwear” in
International Class 25.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
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The trademark examining attorney refused registration under
Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a), on the
ground that applicant’s designation consists of or includes
deceptive matter in relation to applicant’s goods.
When the refusal was made final, applicant filed a request
for reconsideration. When the request was denied, applicant
appealed. Both applicant and the examining attorney filed
briefs.
We affirm.
The examining attorney maintains that use of the term
“SILKS” in applicant’s proposed mark for clothing is deceptive
because, as “unequivocally” stated by applicant, the clothing is
not made of silk.1 More specifically, the examining attorney
contends that the applied-for mark, which includes the term
“SILK,” misdescribes the composition of the clothing; that
purchasers are likely to believe that the misdescription
actually describes the clothing; and that the misdescription is
likely to affect a significant portion of the relevant
consumers’ decision to purchase the clothing. In support of the
refusal, the examining attorney relied upon dictionary

1 The Board did not see any explicit statement by applicant that its
goods are not made of silk. Applicant did state, however, that “the
public, in viewing the applicant’s mark, will not be deceived into
believing that the goods contain silk.” (Response, Aug. 17, 2012).
This statement, coupled with applicant’s failure to contest the
examining attorney’s view, are sufficient for us to conclude that
applicant’s goods, in fact, are not made of silk.
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definitions of “silk” and “silks,” an excerpt from Wikipedia,
and excerpts retrieved from third-party websites.
Applicant argues “that the words SILK and SILKS do not have
the same meaning or commercial impression, and that the mark
BLAZING SILKS is therefore not deceptive.” (Brief, p. 1). In
this connection, applicant asserts that the term “silks” has
come to identify the brightly colored garments of a horse jockey
or harness driver. Although applicant concedes that horse
racing jerseys did at one time contain silk, the term “silks”
has taken on a meaning of its own separate and apart from an
indication of the fabric silk. Applicant sums up its position
as follows:
The applicant is using the term SILKS in its
mark BLAZING SILKS to evoke the image of a
horse race (and a play on the famous movie
BLAZING SADDLES), and it is in that way in
which the applicant’s mark would be
perceived. The public, in viewing
applicant’s mark, will not be deceived into
believing the goods contain silk; rather,
they will understand the meaning of SILKS,
and will associate applicant’s mark with
jockeys and horse racing, and not with the
fabric “silk.”
(Brief, p. 3).

In support of its argument, applicant submitted dictionary
definitions of “silks.”
The Court of Appeals for the Federal Circuit has
articulated the following test for whether a mark consists of or
comprises deceptive matter:
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(1) Is the term misdescriptive of the character, quality,
function, composition or use of the goods?

(2) If so, are prospective purchasers likely to believe
that the misdescription actually describes the goods?

(3) If so, is the misdescription likely to affect a
significant portion of the relevant consumers’ decision to
purchase?

In re Spirits Int’l, N.V., 563 F.3d 1347, 90 USPQ2d 1489, 1493
(Fed. Cir. 2009); In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d
1259, 1260 (Fed. Cir. 1988), aff’g 8 USPQ2d 1790 (TTAB 1987).
Section 2(a) of the Trademark Act is an absolute bar to the
registration of deceptive matter on either the Principal
Register or the Supplemental Register. A deceptive mark may be
comprised of a deceptive term embedded in a composite mark that
includes additional non-deceptive wording, or a term that
alludes to a deceptive quality, characteristic, function,
composition, or use. See In re White Jasmine LLC, 106 USPQ2d
1385 (TTAB 2013); Am. Speech-Language-Hearing Ass’n v. Nat’l
Hearing Aid Society, 224 USPQ 798 (TTAB 1984). Of particular
significance in the present appeal, deceptive marks may include
marks that falsely describe the content of a product. In re
White Jasmine LLC, 106 USPQ2d at 1394 (holding the term WHITE in
the proposed mark WHITE JASMINE deceptive for tea that did not
include white tea, where the evidence established that consumers
perceive that white tea has desirable health benefits); In re
Phillips-Van Heusen Corp., 63 USPQ2d 1047 (TTAB 2002) (holding
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SUPER SILK deceptive for clothing, namely dress shirts and sport
shirts made of silk-like fabric); In re Organik Technologies,
Inc., 41 USPQ2d 1690 (TTAB 1997) (holding ORGANIK deceptive for
clothing and textiles made from cotton that is neither from an
organically grown plant nor free of chemical processing or
treatment); In re Shapely, Inc., 231 USPQ 72 (TTAB 1986)
(holding SILKEASE deceptive as applied to clothing not made of
silk); In re Intex Plastics Corp., 215 USPQ 1045 (TTAB 1982)
(holding TEXHYDE deceptive for synthetic fabric). However,
marks containing a term identifying a material, ingredient, or
feature should not be refused registration under § 2(a) if the
mark in its entirety would not be perceived as indicating that
the goods contained that material or ingredient. See A. F.
Gallun & Sons Corp. v. Aristocrat Leather Prods., Inc., 135 USPQ
459, 460 (TTAB 1962) (COPY CALF was found not deceptive for
wallets and billfolds of synthetic and plastic material made to
simulate leather, because it was an obvious play on the
expression “copy cat” and suggested to purchasers that the goods
were imitations of items made of calf skin). Further, the
Office has offered the following guidance in TMEP § 1203.02(a)
(2013):
[F]ormatives and other grammatical
variations of a term may not necessarily be
deceptive in relation to the relevant goods.
For example, “silky” is defined, inter alia,
as “resembling silk.” See The American
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Heritage® Dictionary of the English
Language: Fourth Ed. 2000. Thus, a mark
containing the term SILKY would not be
considered deceptive (but might be
unregistrable under §2(e)(1)). Dictionary
definitions of such terms should be
carefully reviewed to determine the
significance the term would have to
prospective purchasers. For example,
although the term GOLD would be considered
deceptive for jewelry not made of gold, the
term GOLDEN would not be deceptive.

We now turn to consider each prong of the test to determine
whether or not the applied-for mark BLAZING SILKS is deceptive
when used in connection with clothing.
1. Is the term “Silks” in the mark BLAZING SILKS
misdescriptive of the character, quality, function,
composition or use of applicant’s clothing?

Applicant focuses its argument on this prong, arguing that
“the term SILKS is not the same as the term SILK” and that “[the
term ‘silks’] has its own separate dictionary definition … as
being the brightly colored garments worn by a jockey or harness
racing driver.” (Brief, p. 2).
As the starting point of our analysis, we note that “for a
term to misdescribe goods, the term must be merely descriptive
of a significant aspect of the goods which the goods could
plausibly possess but in fact do not.” In re White Jasmine LLC,
106 USPQ2d at 1392, citing In re Philips-Van Heusen Corp., 63
USPQ2d 1047, 1051 (TTAB 2002). As indicated earlier,
applicant’s goods, in fact, are not made of silk.
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The term “silk” is defined as “thin smooth cloth made from
the fibers produced by an insect called a silkworm.”
(macmillandictionary.com). The Wikipedia entry relied upon by
the examining attorney includes the following information about
silk:
a natural protein fiber, some forms of which
can be woven into textiles. … The
shimmering appearance of silk is due to the
triangular prism-like structure of the silk
fiber, which allows silk cloth to refract
incoming light at different angles thus
producing different colors. … Silk’s
absorbency makes it comfortable to wear in
warm weather and while active. Its low
conductivity keeps warm air close to the
skin during cold weather. It is often used
for clothing such as shirts, ties, blouses,
formal dresses, high fashion clothes,
lingerie, pajamas, robes, dress suits, sun
dresses and kimonos.

The entry chronicles a long history of the use of silk for
clothing, dating back to 3500 BC.
To state the obvious, the term “silk” immediately
describes, without conjecture or speculation, a significant
feature of clothing. That is, purchasers will clearly
understand that because clothing may be made of silk, the term
“silk” in a mark designates that the clothing is silk clothing
or at least includes silk.
In making this finding, we have considered the distinction
between the terms “silk” and “silks.” With respect to
applicant’s main argument that this distinction is critical to
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the analysis, the term “silks” is defined as “the bright colored
shirt worn by a jockey (someone who rides a horse in a race).”
(macmillandictionary.com). A similar definition, submitted by
applicant, appears in The American Heritage Dictionary of the
English Language (3d ed. 1992), also indicating that “silks” are
“emblematic of the stable.” The examining attorney introduced
excerpts of third-party websites that relate to the meaning of
“silks” in horse racing: “In the 1700s silk fabric came all the
way from the orient to Europe in beautiful, vibrant colors to be
sewn into the racing silks of the day.” (classicsilksusa.com);
“As racing has changed, so too have colors. Called silks
because the early variations were, in fact, silk, today most are
actually nylon or [L]ycra.” (belmontstakes.com); “The shirts
the riders wore were really made from silk. Today the jockeys’
garments are made of super-light synthetic material which allows
for an optimum performance.” (horseracingjockeys.com).
The meaning of the term “silks” does not detract from the
deception conveyed by the term when used for clothing. As shown
by the excerpts of the third-party websites, the term “silks”
originated from the fact that horse jockeys’ jerseys actually
were made of silk. We agree with the examining attorney’s
statement that “even if the term SILKS can refer to jerseys worn
by jockeys, it further reinforces the importance of silk because
of the fact that the jerseys were famously composed in
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significant part of silk fiber material.” (Brief, p. 6). In
any event, we can only speculate as to how many consumers will
even be aware of the meaning of the term “silks” as used in
horse racing; likewise, although applicant claims that its
proposed mark is “a play on the famous movie BLAZING SADDLES,”
there is no evidence to show either that the movie is famous or
that consumers would even think of the movie when encountering
applicant’s proposed mark. The meaning of “silks” in the
context of horse racing is simply overwhelmed by the commonly
used and understood meaning of “silk” when the term “SILKS”
appears in the proposed mark BLAZING SILKS as used in connection
with clothing that is routinely made of silk, including neckties
and dresses as listed in the application.
Further, the presence of the term “blazing” in the proposed
mark does not diminish the deceptiveness of the mark as a whole.
The term “blazing,” when used as an adjective, means “burning
brightly; of tremendous intensity or fervor.” Random House
Dictionary (2013).2 Thus, the mark as a whole would connote
clothing made of silk in “blazing” or bright colors or patterns.
Although applicant’s clothing does not contain silk,
consumers will expect that, upon encountering applicant’s
proposed mark on clothing, the goods will consist in significant

2 The Board may take judicial notice of dictionary definitions. In re
Thomas White Int’l Ltd., 106 USPQ2d 1158, 1160 n.1 (TTAB 2013).
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part of silk. The mark BLAZING SILKS as a whole misdescribes
clothing that is not made of silk, as is the case for
applicant’s clothing. The first prong of the test is satisfied.
2. Are prospective purchasers likely to believe that the
misdescription actually describes the clothing?

Given the commonly understood meaning of “silk” in the
context of clothing, and the attractiveness and desirability of
clothing made from silk (see discussion, infra), it is very
likely that customers of applicant’s clothing would believe that
the clothing is made of silk when, in fact, it is not.
We find, therefore, that this prong of the test is
satisfied.
3. Is the misdescription likely to affect a significant
portion of the relevant consumers’ decision to purchase?

To establish a prima facie case of deceptiveness, the
examining attorney must provide sufficient evidence that the
misdescriptive quality or characteristic would be a material
factor in the purchasing decision of a significant portion of
the relevant consumers. To do so, the examining attorney must
provide evidence that the misdescriptive quality or
characteristic would make the product or service more appealing
or desirable to prospective purchasers. In re White Jasmine
LLC, 106 USPQ2d at 1392 (citing In re Juleigh Jeans Sportswear
Inc., 24 USPQ2d 1694, 1698-99 (TTAB 1992)). “A product or
service is usually more desirable because of objective standards
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or criteria that provide an objective inducement to purchase the
goods and/or services beyond that of mere personal preference.”
TMEP § 1203.02(d). As stated in TMEP § 1203.02(d)(i):
The evidence must support a finding that
goods or services that contain or feature
the misdescriptive term are superior in
quality to similar goods and/or services
that do not. For example, silk can be shown
to be a more luxurious and expensive
material because of the difficulty in making
silk, its unique feel, and its
breathability. (emphasis added).

To show the appeal and desirability of silk as a fabric for
clothing, the examining attorney submitted excerpts of third-
party websites revealing the following information about silk:
Benefits of Silk. Besides its luxurious
softness and lustrous beauty, there are
various other benefits of silk that other
fabrics, whether natural or man-made, simply
cannot match. These advantages of silk have
rightly earned silk its reputation as the
queen of fabrics. If Why Silk is still a
question in your mind, the following
benefits of silk should remove any doubts.
It is not just a question of comparison with
other fabrics, some of these benefits and
advantages place silk in a league of its
own.

Among the listed benefits are its hypoallergenic properties,
warmth in winter and coolness in summer, high absorbency while
letting the skin breathe, sensitivity to skin problems, odor
resistance, strength (comparable to steel yarn in tensile
strength), wrinkle resistance, quickness in drying, ease to work
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with, and ability to mix well with other fabrics.
(texeresilk.com; demurelookcom; mvstylenaturals.com).
These benefits are in the nature of objective standards
that provide an inducement to purchase silk clothing beyond that
of mere personal preference. Consumers are more likely to
purchase clothing made of silk fiber than other fibers because
of silk’s desirable and superior qualities. The evidence shows
that silk has several positive attributes so that the presence
of “silks” in applicant’s proposed mark BLAZING SILKS is likely
to affect a significant portion of the relevant consumers’
decision to purchase. Here, applicant’s clothing is not made of
silk, so the mark will deceive purchasers in making a decision
to purchase applicant’s clothing.
We find that the third prong of the test is satisfied.
Accordingly, based on the evidence of record, we conclude
that the designation BLAZING SILKS, when used in connection with
clothing not made of silk, is deceptive under Section 2(a).
Decision: The refusal to register is affirmed.