The TJX Companies, Inc.v.Denise Marie Barr

Trademark Trial and Appeal Board

Apr 30, 2010

No. 91185498 (T.T.A.B. Apr. 30, 2010)

Mailed:
April 30, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
___________

Opposition No. 91185498
____________

The TJX Companies, Inc.

v.

Denise Marie Barr
____________

Larry C. Jones and Jason M. Sneed of Alston & Bird LLP for
The TJX Companies, Inc.

Denise M. Barr (pro se).
______

Before Holtzman, Zervas and Ritchie, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

On October 11, 2007, Denise Marie Barr (“applicant”)
filed an application (Serial No. 77301887) for registration
on the Principal Register of the following mark for “travel
bags; multi-purpose purses; purses.”1

1 Applicant has entered the following description of the mark
into the record: “The mark consists of Capital ‘I’ with lower
THIS OPINION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Opposition No. 91185498
2

Applicant claims a bona fide intent to use the mark in
commerce under the provisions of Section 1(b) of the
Trademark Act, 15 U.S.C. §1051(b), and has disclaimed the
word BAG.
Opposer, The TJX Companies, Inc., filed a notice of
opposition to the registration of applicant's mark. In the
notice of opposition, opposer pleaded, inter alia, that long
prior to applicant’s filing date, “Opposer, its
predecessors, subsidiaries, related companies and licensees
… have been in the retail store business offering for sale a
wide array of goods”; that registration of applicant's mark
“without a disclaimer of each of the terms therein, would
interfere with Opposer's right to the lawful descriptive use
of the terms ‘it’ and ‘bag’ to refer to Opposer's goods,
particularly Opposer's bags and purses that are currently
trendy, fashionable and/or in style”; that applicant’s mark,
when used in connection with her goods, “immediately conveys
to consumers and potential consumers that Applicant's goods

case ‘t’ on first line, and ‘BAG’ in all caps on second line.
The ‘I’ and ‘BAG’ are in black and the ‘t’ is in gray.”
Opposition No. 91185498
3
are bags or purses that are trendy, fashionable and/or
currently in style”; and that “Applicant’s application for
registration should be refused on the basis that the
stylized mark made the subject of this application consists
of or comprises a merely descriptive term which has not
become distinctive of Applicant's goods without a disclaimer
thereof and a minimal stylization that does not elevate the
IT BAG (Stylized) mark as a whole to being distinctive.”
Applicant has denied the salient allegations of the
notice of opposition, but has admitted that opposer has
“been in the retail store business offering for sale a wide
array of goods since long before” the filing date of
applicant's application. The Board has received a brief
only from opposer.
The Record
In addition to the pleadings, the file of the opposed
application is part of the record without any action by the
parties. Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b).
Opposer introduced the testimonial deposition of Theresa
Conduah, an associate attorney with opposer's law firm, with
exhibits consisting of material taken from the Internet.
Applicant in turn introduced evidence pursuant to her
personal affidavit, which was the subject of a motion to
strike filed by opposer. The Board, in its order dated
September 23, 2009, construed applicant's affidavit in part
Opposition No. 91185498
4
as a notice of reliance and denied opposer's motion to the
extent that applicant submitted documents that were official
records of the United States Patent and Trademark Office.
(Opposer’s motion to strike was otherwise granted.) Thus,
pursuant to the Board’s order, Exhibits 2, 3, 5, 8 and 9 to
applicant's affidavit are part of the trial record.
Standing/Priority
To establish standing, a petitioner must have a real
interest in the proceeding. Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023 (Fed. Cir. 1999). Generally, where a
claim of mere descriptiveness is asserted, it is sufficient
for the plaintiff to establish that it is a competitor.
Plyboo America, Inc. v. Smith & Fong Co., 51 USPQ2d 1633
(TTAB 1999); and No Nonsense Fashions, Inc. v. Consolidated
Foods Corp., 226 USPQ 502 (TTAB 1985). In addition,
standing may be found when the plaintiff has been advised
that it will be refused registration when applicant's
application matures into a registration. See TBMP
§ 309.03(b) (2d ed. rev. 2004) and cases cited therein.
Applicant has admitted that opposer has “been in the
retail store business offering for sale a wide array of
goods since long before” the filing date of applicant's
application. In addition, Exhibit 2 to applicant's
affidavit is a TESS printout of opposer's application for
THE NEW IT BAG (stylized), which was filed on November 7,
Opposition No. 91185498
5
2007 (application Serial No. 77323233), and exhibit 3 to
applicant's affidavit is a Notice of Suspension issued in
opposer's application in view of applicant's application.2
The Notice of Suspension states that applicant's application
“if and when it registers, may be cited against this
application in a refusal to register under Section 2(d) of
the Trademark Act ….” In view of the above, petitioner has
established its standing.
Mere Descriptiveness
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. See, e.g., In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987); and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
Whether a term is merely descriptive is determined not in
the abstract, but in relation to the goods or services for
which registration is sought, the context in which it is
being used on or in connection with those goods or services,

2 Although opposer did not plead the potential refusal of its
application as a basis for its standing, applicant stated at
paragraph 4 of her affidavit that opposer's application “proves
that the sole reason for opposing my trademark application … was
to disqualify my application …. The Opposer's application was
suspended by the USPTO pending the disposition of my
application.” Also, it was she, and not opposer, who introduced
evidence of the potential refusal. We consider the pleadings to
have been amended to assert the potential refusal of opposer's
Opposition No. 91185498
6
and the possible significance that the term would have to
the average purchaser of the goods or services because of
the manner of its use. That a term may have other meanings
in different contexts is not controlling. In re Bright-
Crest, Ltd., 204 USPQ 591 (TTAB 1979). Moreover, it is
settled that “[t]he question is not whether someone
presented with only the mark could guess what the goods or
services are. Rather, the question is whether someone who
knows what the goods or services are will understand the
mark to convey information about them.” In re Tower Tech
Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002). See also In re
Patent & Trademark Services Inc., 49 USPQ2d 1537 (TTAB
1998); In re Home Builders Association of Greenville, 18
USPQ2d 1313 (TTAB 1990); and In re American Greetings
Corporation, 226 USPQ 365 (TTAB 1985).
Opposer has introduced the following evidence in
support of its assertion that applicant's mark is merely
descriptive of “purses having appeal because of their
stylish, trendy or fashionable nature.” Brief at 4.
“An ‘It-Bag’ is a designer handbag that is deemed
the ‘must-have’ item of the moment as a result of
a combination of celebrity usage, clever marketing
techniques, superior quality and their ability to
represent the mood of the season. They are
generally produced in limited edition quantities.”
about.com

application as a basis for opposer's standing. See Fed. R. Civ.
P. 15(b); and TBMP § 314 (2d ed. rev. 2004).
Opposition No. 91185498
7
It Bag
“‘It Bag’ is a colloquial term from the fashion
industry used in the 1990s and 2000s to describe a
brand or type of high-priced designer handbag by
makers such as Hermes or Fendi that becomes a
popular best-seller. *** The term was coined in
the 1990s with the explosive growth of the handbag
market in fashion. Designers vied to produce one
bag that would sell hundreds of thousands of units
by becoming the bag ‘of the moment’ – a single
handbag style that would spread like wildfire in
popularity through the intertwined worlds of
fashion and celebrity, aided by clever of just
plain lucky marketing. Another way to define them
is to say what other bags are not: ‘They are most
definitely not it bags in the sense that they
become isn’t bags the next season.’” (Italics in
original.)
wikipedia.com entry for “It Bag”

“For serious shoppers seeking the ultimate status
symbol, nothing compares with the white alligator
and diamond Chanel bags, which costs a disarming
$260,150. *** ‘The very wealth, the people for
whom these bags were always intended, will
continue to buy their ‘it’ bags.’ Atkins says.
‘For these women, no price is too high.’”
forbes.com - The New ‘It’ Bags; February 29, 2008

The next it bag
“Every season produces a new ‘it bag.’ And some
seasons produce way too many it bags to count.
Other it bags linger for seasons, staying as
popular as when they first premiered.”
madberries.com

“‘The bag has become the iconic ‘it’ bag, the
symbol of ultimate luxury, because of its
inaccessibility to the general public. People
really want what they can’t have,’ said Tonello,
an American who lives in Barcelona.”
reuters.com - Birkin buyer says cracked code for
Hermes ‘it’ bag; April 14, 2008

Is This It for the It Bag?
“Status handbags, you see, are a lot like housing.
After the rise of the $1,000 purse, fashion’s
equivalent of the $1 million studio, there
Opposition No. 91185498
8
inevitably comes talk of a backlash. Are we now
living in a handbag bubble?”
nytmes.com; November 1, 2007

Why “It” Bags Are Out
“Irene Weisburd used to buy 20 handbags a year,
dutifully getting on waiting lists for the
season’s designated ‘it’ bag and filling her ‘bag
wardrobe’ with Fendi Baguettes, A Louis Vuitton
Murakami bag and Prada nylon backpacks.
* * *
For the past 10 years or so, fashion houses have
churned out expensive bags with distinctive shapes
and logos in the hopes that they’d catch on as
that season’s sensation.
* * *
The ‘it’ bag isn’t important any more,’ says
Stephanie Solomon, women’s fashion director at
Bloomingdales. ‘It’s all about looking different
from your neighbor.’”
online.swj.com; January 26, 2008

The latest It bag
“The latest It bag to get a handle on the market
is the revamped Roberta Di Camerino Bigne bag …,
part of the Venetian fashion empire started in the
‘40s by Guiliana Coen and favored by the likes of
Grace Kelly, Elizabeth Taylor and Elsa Maxwell.
time.com; December 2, 2008

THE IT BAG
If I invest in one handbag for the season, what
should it be?
Elle.com;

The evidence in the record, including the evidence set forth
above, some of which appears in articles in national
publications such as The New York Times, establishes that
the term “It Bag” is used to describe a handbag which is
trendy, fashionable or stylish in nature. We therefore
conclude that IT BAG is merely descriptive of a feature or
characteristic of certain purses, i.e., those that are
trendy, fashionable or stylish in nature. At a minimum,
Opposition No. 91185498
9
therefore, a disclaimer of “it bag” in applicant's stylized
mark, not just “bag,” is needed before applicant's mark can
be registered.
We turn then to the question raised in opposer's
pleading, but not in its brief, of whether IT BAG in
stylized form is registrable on the Principal Register with
a disclaimer of IT BAG.
When "words which are merely descriptive, and hence
unregistrable, are presented in a distinctive design, the
design may render the mark as a whole registrable, provided
that the words are disclaimed, under Section 6." In re
Clutter Control, Inc., 231 USPQ 588, 589 (TTAB 1986). See
also In re Miller Brewing Co., 226 USPQ 666 (TTAB 1985)
(LITE (stylized) for beer registrable on the Principal
Register with a disclaimer of the word). Since applicant is
seeking registration on the Principal Register, not the
Supplemental Register, without relying on Section 2(f) of
the Trademark Act, we must determine if the stylization of
the mark is inherently distinctive; that is, the
“stylization of the words or the accompanying design
features of the asserted mark [must] create an impression on
purchasers separate and apart from the impression made by
the words themselves." In re American Academy of Facial
Plastic and Reconstructive Surgery, 64 USPQ2d 1748, 1753
(TTAB 2002). See also In re Behre Indus., 203 USPQ 1030,
Opposition No. 91185498
10
1032 (TTAB 1979) ("[T]he distinctive display of descriptive
or otherwise unregistrable components of a mark cannot
bestow registrability upon the mark as a whole unless the
features are of such a nature that they undoubtedly would
serve to distinguish the mark in its entirety in the
applicable field or it can be shown through competent
evidence that the unitary mark as a whole displayed in the
asserted distinctive manner does in fact create a
distinctive commercial impression separate and apart from
and above the descriptive significance of its components").
The following stylized marks were held not to be
inherently distinctive and thus unregistrable on the
Principal Register; (a) In re Guilford Mills Inc., 33 USPQ2d
1042 (TTAB 1994);

(b) In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2014
(TTAB 1988) ("In the absence of any evidence to convince us
otherwise and since we quite agree with the Examining
Attorney that there is nothing unusual or even different in
the formation of the letters which would cause this
presentation of the word, LITE, to stand out from any other
such presentation");

Opposition No. 91185498
11

(c) In re Grande Cheese Co., 2 USPQ2d 1447, 1449 (TTAB 1986)
("We conclude, then, that the designations sought to be
registered do not comprise inherently distinctive lettering
styles and/or background displays such that they would
create separate commercial impressions apart from the
generic significance of the disclaimed words");

(d) In re Couriaire Express Int'l, Inc., 222 USPQ 365, 366
(TTAB 1984) ("the slightly slanted letters and
capitalization of the letters 'C' and 'A' in applicant's
mark [shown below] are insufficient to render applicant's
mark as distinctive in style");

and (e) United States Lines, Inc. v. American President
Lines, Ltd., 219 USPQ 1224, 1227 (TTAB 1982) ("The displays
of applicant's marks [one shown below] in the instant cases
are even less distinctive, we believe, than was the
Opposition No. 91185498
12
applicant's mark in Project Five. We conclude that the
terms sought to be registered do not create distinctive
commercial impressions separate and apart from the
descriptive significance of their components. Applicant's
admittedly descriptive marks are not entitled to
registration on the Principal Register with disclaimers").

Other marks have been held to be registrable on the
Principal Register when generic or merely descriptive words
are combined with a distinctive stylization. See (a) Miller
Brewing Co., 226 USPQ 666 (TTAB 1985)(“The configuration
(i.e., the style of lettering, or manner of display) of the
disclaimed word is not merely descriptive as applied to
applicant’s goods, neither Section 2(e) nor Section 2(f) is
applicable”);

(b) In re Jackson Hole Ski Corp., 190 USPQ 175, 176 (TTAB
1976) (Applicant argued, and the board agreed, that a mark
consisting of a geographical designation and "the letters
'JH' displayed in a distinctive and prominent fashion so as
to create a commercial impression in and of themselves …
Opposition No. 91185498
13
[and] the letters 'JH' are twice the size of the other
letters; that unlike any of the other letters, they are
partly joined together, creating the visual impression of a
monogram; and that they are set down from the rest of the
letters, which positioning has the effect of highlighting
the 'JH couplet"' was distinctive);

(c) In re Grand Metropolitan Foodservice, 30 USPQ2d 1974,
1976 (TTAB 1994) ("In view of the nature of applicant's
inventive and somewhat stylized mark, being an obvious play
on the word 'muffin' and the word 'fun,' we believe that the
meaning or commercial impression of applicant's mark will be
more than that simply of the word 'muffins.' Therefore,
applicant's mark is not merely descriptive");

and (d) In re Clutter Control, Inc., 231 USPQ 588, 589 (TTAB
1986) (“In our opinion, the tube-like rendition of the
letter ‘C’ in the words ‘construct’ and ‘closet’ make a
striking commercial impression, separate and apart from the
word portion of applicant’s mark”).

Opposition No. 91185498
14
C.f. In re The Wella Corp., 565 F.2d 143, 196 USPQ 7 (CCPA
1977)(mark registrable on the Supplemental Register, with
“Balsam” disclaimed);

and In re Venturi, Inc., 197 USPQ 714 (TTAB 1977)(mark shown
below with the word “pipe” and the representation of the
pipe disclaimed had acquired distinctiveness).

In the case before us, the substantially vertical,
overlapping upper case “I” and lower case “T” of
approximately equal size and of different shading in “IT,”
with the base of the “I” complimenting the base of the “T,”
creates an impression on purchasers separate and apart from
the impression made by the words themselves. Moreover, in
our view, applicant's mark is far more distinctive than any
of the marks cited above which were refused registration,
and is more in the nature of those marks which are
registered on the Principal Register. We therefore find
that the mark sought to be registered herein is not, when
applied to the goods of the applicant, merely descriptive of
them.
Opposition No. 91185498
15
However, in view of our finding that the wording IT BAG
is merely descriptive of applicant's goods, the mark as a
whole is not registrable absent a disclaimer of IT BAG.
Decision: The opposition is sustained and registration
to applicant is refused. Nevertheless, in accordance with
Trademark Rule 2.133(b), this decision will be set aside and
applicant's mark will be forwarded for registration if
applicant, no later than thirty days from the mailing date
hereof, submits an appropriate disclaimer of the words “IT
BAG.”3

3 A proper disclaimer would read: "No claim is made to the
exclusive right to use IT BAG apart from the mark as shown." See
TMEP § 1213.08 (2d ed. rev. 2004).