Stanley Brothers LLC

Trademark Trial and Appeal Board

Jun 15, 2017

No. 86549555 (T.T.A.B. Jun. 15, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: June 15, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Stanley Brothers LLC1
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Serial No. 86549555
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David D. Postolski of Gearhart Law, LLC,
for Stanley Brothers LLC.
Daniel Stringer, Trademark Examining Attorney, Law Office 103,
Michael Hamilton, Managing Attorney.
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Before Kuhlke, Ritchie and Goodman,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Stanley Brothers LLC (“Applicant”) seeks registration on the Principal Register
of the mark HEMPIRE in standard characters for “Athletic apparel, namely, shirts,
pants, jackets, footwear, hats and caps, athletic uniforms; Athletic shirts; Baseball

1 The Board notes that the involved application was assigned from Hempsky, LLC to Stanley
Brothers LLC. The assignment was recorded with the Assignment Recordation Branch on
April 13, 2017. The Board also notes Applicant’s appearance of counsel filed April 26, 2017.
The record has been updated to reflect the assignment and the appearance of counsel.
Updating our records is not a determination of validity of the assignment. TMEP § 503.01(c)
(April 2017).
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caps and hats; Body shirts; Graphic T-shirts; Hats; Pajamas,” in International Class
25.2
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a), on the ground that
Applicant’s mark, is deceptive.
When the refusal was made final, Applicant appealed and briefs were filed. We
affirm the refusal to register.
In accordance with Section 2(a) of the Trademark Act, registration must be
refused if a term is deceptive of a feature or an ingredient of the identified goods. In
re Budge, 857 F.2d 773, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988). The test for
deceptiveness is whether all three of the following criteria are met:
(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 the purchasing decision of a
significant portion of relevant consumers?
Id.; see also In re Spirits Int’l, N.V., 563 F.3d 1347, 90 USPQ2d 1489, 1495 (Fed. Cir.
2009) (holding that the test for materiality incorporates a requirement that a
“significant portion of the relevant consumers be deceived.”). Section 2(a) prohibits

2 Application Serial No. 86549555 was filed on March 1, 2015, under Section 1(a) of the
Trademark Act,15 U.S.C. § 1051(a), but later amended to seek registration under Section
1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona
fide intention to use the mark in commerce.
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registration of a mark which “consists of or comprises … deceptive … matter.” 15
U.S.C. § 1052(a). Thus, a portion of a mark may render the mark in its entirety
deceptive. In re E5 LLC, 103 USPQ2d 1578 (TTAB 2012) (finding mark containing
chemical symbol for copper deceptive for dietary supplements regardless of presence
of other term in mark); Am. Speech-Language-Hearing Ass’n v. Nat’l Hearing Aid
Society, 224 USPQ 798, 808 (TTAB 1984) (NATIONAL HEARING AID SOCIETY
CERTIFIED HEARING AID AUDIOLOGIST is deceptive based on CERTIFIED
HEARING AID AUDIOLOGIST portion of the mark). See also In re Intex Plastics
Corp., 215 USPQ 1045, 1048 (TTAB 1982) (TEXHYDE deceptive for synthetic fabric);
Tanners’ Council of Am., Inc. v. Samsonite Corp., 204 USPQ 150, 154 (TTAB 1979)
(SOFTHIDE deceptive for imitation leather material).
The Examining Attorney argues as to the first two criteria that:
[A]pplicant’s mark includes the wording “HEMP”,
indicating that the goods contain or are made with hemp.
However, applicant affirmatively stated in the November
25, 2015 response that “the clothing items are not made
from hemp”. Thus, applicant’s goods do not in fact have or
exhibit this feature or characteristic.
Consumers would be likely to believe this misdescription
in the mark, because the evidence of record shows that it is
common in applicant’s industry for such goods to include
hemp and consumers have come to expect such ingredient
or component.
6 TTABVUE 5 (citation omitted).
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In support of these two criteria the Examining Attorney submitted screen
captures from third-party websites referencing different clothing items as being made
from hemp. A few examples are reproduced below:3

3 December 15, 2015 Office Action at 2 (store.hempest.com), 9 (www.prana.com), 14-16
(nomadshempwear.com), 18-19 (www.vitalhemp.com), 22 (www.rawganique.com); June 13,
2016 Office Action at 26 (sympatico), 28 (hemp traders), 30 (ONNO), 32, (Dash Hemp), 33
(Hempy’s), 34 (Hemptopia).
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As to the third criteria, “the misdescription [is] likely to affect the purchasing
decision of a significant portion of relevant consumers,” the Examining Attorney
submitted screen prints from a variety of third-party websites (online clothing stores,
blogs, newspapers, etc.) touting the benefits of hemp. The text from a representative
sample are set forth below:4
Leafly noting that hemp production is more efficient than
cotton, hemp crops use less water than cotton crops and
hemp does not wear out as quickly as cotton;
Hemp Couture noting that hemp is superior to traditional
fabrics, such as cotton, because it is, inter alia, softer,
stronger and more durable;
Organic Clothing Blogs.com noting that hemp is one of the
strongest and most durable natural fibers, has superior
insulation properties, is environmentally friendly, and is

4 December 15, 2015 Office Action at 31-36 (www.leafly.com); 37-39 (hemp couture); 48-68
(organicclothingblogs.com); and at 72-73 (earth diva blog).
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more suitable to people with chemical sensitivities than
cotton; and
Earth Divas’ Blog noting the many environmental benefits
of hemp and that, when used in fabrics, it blocks 50% more
UV rays than regular cotton.
We find that the word HEMP will be perceived by consumers in the proposed mark
HEMPIRE. As shown by the evidence consumers are exposed to variations on the
word HEMP when offered clothing items containing hemp. See, e.g., HEMPY,
HEMPTOPIA. While we recognize the play on the word empire, the addition of the
suffix “IRE” does not remove or obfuscate the meaning of the word HEMP in the term
HEMPIRE. But see A. F. Gallun & Sons Corp. v. Aristocrat Leather Prods., Inc., 135
USPQ 459, 460 (TTAB 1962) (COPY CALF suggests goods are made of imitation
leather). Here, the allusion to empire simply serves to aggrandize the size of the
company selling hemp-related products. In addition, it is clear from this record that
clothing is routinely made out of hemp and consumers are aware of that fact. In view
thereof, the first two criteria are met; the term HEMPIRE is misdescriptive of the
character, quality, function, composition or use of the goods and prospective
purchasers are likely to believe that the misdescription actually describes the goods.
Turning to the last criteria, we find that the misdescription is likely to affect a
significant portion of potential consumers. Clothing is specifically marketed based on
the fabric from which it is made, and the examples in the record heavily rely on the
fact that the goods are made from hemp as an important aspect for the purchasing
decision. Hemp also has practical inherent characteristics that make it more
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desirable for clothing. For example, it is produced more efficiently, does not wear out
as quickly, is flame retardant and has very good heat capacity.
Applicant presents three lines of argument in support of registration. First,
Applicant argues that the Examining Attorney “has not established whether the
inclusion of hemp is more than simply a relevant factor in purchasing decisions, i.e.,
a ‘material factor.’ Rather, the Examining Attorney merely cites a few web sites in
support of his conclusion that the misdescription is ‘likely’ to affect a significant
portion of the relevant consumers’ decision to purchase applicant’s goods. This
evidence does not meet the standard.” 4 TTABVUE 9.
To the contrary, the evidence of record sufficiently establishes the significant
characteristics hemp brings to clothing, e.g., durability, superior insulation, lower
chemical residue, environmental friendliness, and that these characteristics are
material to the consumer.
Applicant’s second argument is that because “it intends to sell its clothing
products in conjunction with [its] alcohol products [the subject of another application]
… purchaser’s of Applicant’s clothing products will look to other goods sold by
Applicant when making purchasing decisions [and] [t]hese goods contain hemp.” 4
TTABVUE 9.
While that may be the case with regard to Applicant’s actual marketing plans, the
identification of goods in the application is not so restricted and in any event, even
when sold with the hemp alcohol, use of the term hemp to identify the source of the
clothing item continues to misdescribe a significant characteristic of the clothing. In
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fact, the hemp in the alcohol may underscore the misdescription in regards to the
clothing. Applicant’s use of hemp in its beverages, which may not be a common use of
hemp, would lead a consumer to believe hemp is in clothing items as it is commonly
used in clothing.
Applicant’s third argument, presented in its reply brief, is that:
[T]he mark … HEMPIRE, wherein HEMP is not a
dominant portion of the mark or wherein HEMP is mot [sic]
separated from … IRE as COPY CALF is are [sic] fanciful
words or at best suggestive and thereby registrable.
8 TTABVUE 2-3.
As discussed above, the word hemp is clearly identifiable in the proposed mark
HEMPIRE and consumers are accustomed to seeing the word hemp combined with
other lettering while maintaining the meaning and commercial impression of the
word hemp. See Intex Plastics Corp., 215 USPQ at 1048; Tanners’ Council of Am., Inc.
v. Samsonite Corp., 204 USPQ at 154.
The cases presented by Applicant do not persuade us of a different result. In A. F.
Gallun & Sons Corp. v. Aristocrat Leather Prods., Inc., 135 USPQ at 460, the Board
found that the mark COPY CALF “is obviously a play on the familiar expression ‘copy
cat’; and, as applied to applicant’s goods, rather than misdescribe such goods it would
immediately suggest to purchasers that they are imitations or copies of wallets and
billfolds made of calf skin.” We have no such alternative meaning that implies the
opposite of the word in issue. In In re Woolrich Woolen Mills Inc., 13 USPQ2d 1235,
1238 (TTAB 1989) the Board found the term WOOLRICH not deceptive based, in
part, on the applicant’s evidence of use (for over 25 years) and of recognition by
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consumers and the trade, showing the significance of WOOLRICH as that of a
trademark, rather than indicating a significant ingredient or feature of the goods.
Here, the application is based on intent to use and, although Applicant argues its
intent is to use the mark as a secondary source in connection with its beverage goods,
the identification is not so limited and there is no direct evidence of consumer
perception. In In re Fortune Star Prods. Corp., 217 USPQ 277 (TTAB 1982) the
Board found NIPPON for various electronic goods was not deceptive inasmuch as the
goods were, in fact, manufactured in Japan. In In re Sweden Freezer Mfg. Co., 159
USPQ 246, 249 (TTAB 1968) the Board found that SWEDEN is not deceptive for
artificial kidney units because the record does not support the assumption that
Sweden is known in the United States as a source of artificial kidney units.
Finally, Applicant references two third-party registrations that were not made of
record and we have not considered them. Trademark Rule 2.142(d); In re Posthuma,
45 USPQ2d 2011, 2012 n.2 (TTAB 1998) (third-party registration attached to appeal
brief not considered). In any event, we are not bound by decisions made in issuing
other registrations; each case must stand on its own merits. See In re Nett Designs
Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001).
In view of the above, we find that HEMPIRE is deceptive of a feature or an
ingredient of the identified goods within the meaning of Section 2(a) of the Trademark
Act.
Decision: The refusal to register Applicant’s mark under Section 2(a) of the
Trademark Act is affirmed.