Tomorrow Inter-national, Inc.

Trademark Trial and Appeal Board

Jun 18, 2002

No. 75897698 (T.T.A.B. Jun. 18, 2002)

6/18/02

Paper No. 10
RFC

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Tomorrow International, Inc.
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Serial No. 75/897,698
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John Christopher of Christopher & Weisberg, P.A. for
Tomorrow International, Inc.

Rudy R. Singleton, Trademark Examining Attorney, Law Office
109 (Ron Sussman, Managing Attorney).
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Before Cissel, Walters and Drost, Administrative Trademark
Judges.

Opinion by Cissel, Administrative Trademark Judge:
On January 18, 2000, applicant, a British Virgin
Islands company, filed the above-referenced application to
register the mark "THE TRACK & FIELD STORE" for "athletic
clothing," in Class 25. The basis for filing the
application was applicant's assertion that it possessed a
bona fide intention to use the mark in commerce in
connection with the identified goods.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 75/897,698
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The Examining Attorney refused registration under
Section 2(e)(1) of the Lanham Act, 15 U.S.C. Section
1052(e)(1), on the ground that the proposed mark merely
describes the goods specified in the application.
Submitted in support of the refusal to register was a
dictionary definition of the term "track and field" as
"athletic events performed on a running track and in the
field associated with it." The Examining Attorney took the
position that prospective purchasers of applicant’s
clothing marketed under the mark "THE TRACK & FIELD STORE"
would immediately understand that the goods were intended
to be used in connection with track and field events, and
that the word "store" would not function as a source
indicator, but rather would merely indicate “the nature of
applicant’s entity."
Several other informalities were also discussed in the
first Office Action. The Examining Attorney required
applicant to provide a more definite identification-of-
goods clause, a designation of a domestic representative,
and a signed declaration, in that the original application
submitted had not been properly executed.
In response, applicant amended the application to
identify the goods with which it intends to use the mark as
follows: "athletic clothing, namely, shorts, jerseys,
Ser No. 75/897,698
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jackets, swimsuits, t-shirts, tights, pants, vests, tanks,
hip-pockets, and tops," in Class 25. Applicant also
submitted the required signed declaration, including a
power of attorney designating said attorney to prosecute
the application and receive the certificate of
registration.
Applicant then presented arguments that the refusal to
register based on descriptiveness is not well taken. In
essence, applicant argued that the mark is suggestive,
rather than merely descriptive, of the goods listed in the
application, as amended, because the average consumer would
be "required to use a significant amount of imagination and
reasoning to arrive at the nature of the goods in
question..." and the goods specified in the application
have multiple uses. Some of the goods, such as swimsuits,
do not necessarily relate to track and field, but applicant
conceded that “the only significance of the proposed mark
as it relates to the goods is that the goods may be used in
connection with a sport identified by the proposed mark:
track and field.” Applicant contended that because the
goods could also be used in connection with other
activities in addition to track and field, the mark “is not
merely descriptive of the goods, but instead is incongruous
and arbitrary as applied to the goods.”
Ser No. 75/897,698
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The Examining Attorney accepted the substitute
declaration, but made final the refusal under Section
2(e)(1) of the Act and the requirement for a more definite
identification-of-goods clause.
Submitted in support of the refusal to register were
excerpts from articles retrieved from the Nexis automated
database of publications. The Examining Attorney argued
that this evidence shows "track and field" used to describe
athletic clothing used for track and field activities. For
example, the April 27, 2000 edition of the New York Post
referred to "a stretchy blue track-and-field v-neck T-shirt
and shorts." The June 4, 1999 edition of THE PRESS
ENTERPRISE (Riverside, California), stated that "[s]ome
high school track and field athletes choose the longer
shorts over the traditional, shorter models." The April
16, 1999 edition of the Pittsburgh Post-Gazette noted that
"[t]he usual track and field attire-- tank tops and running
shorts-- will be accompanied today at the Butler
Invitational by an assortment of sweatshirts, sweat pants
and probably a few ear muffs to fend off the unseasonable
wintry weather in the forecast.” The September 3, 1994
edition of the Los Angeles Times noted that the Olympic
committee of a small African country was unable to provide
its athlete "with anything other than a track and field
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singlet, shorts and a warm-up suit for the recent
Commonwealth Games."
Although the Examining Attorney stated that “the
requirement for a definite identification of goods is
continued and made FINAL,” he did not provide any
discussion of why the amended identification-of-goods
clause applicant had submitted did not satisfy this
requirement. The previously made requirement for an
appointment of a domestic representative was not even
mentioned.
Applicant timely filed a Notice of Appeal, followed by
its appeal brief.1 The Examining Attorney then filed his
brief on appeal, but applicant did not file a reply brief
or request an oral hearing before the Board. Applicant
did, however, file a substitute power of attorney and
appointment of domestic representative, thus satisfying the
requirement which had been made in the first office action,
but had not been brought up since then.
We note that the Examining Attorney did not mention

1 Included in applicant’s brief was a list of trademarks which
applicant contends are registered in twenty-five third-party
registrations. The Examining Attorney properly objected to our
consideration of this late-filed evidence because Trademark Rule
2.142(d) sets forth the procedure an applicant must follow in
order to be allowed to submit evidence after the Notice of Appeal
is filed, but applicant did not follow this procedure.
Accordingly, the Board has not considered this evidence.
Ser No. 75/897,698
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in his brief the requirement for amendment to the
identification-of-goods clause in the application. We have
no idea why the second Office Action specifically continued
and made final this requirement, but we interpret the lack
of mention of this issue in the Examining Attorney’s brief
as an acknowledgment that the amended language submitted by
applicant satisfied the requirement made in the first
Office Action.
The sole issue before us in this appeal is thus
whether or not “THE TRACK & FIELD STORE” is barred from
registration by Section 2(e)(1) of the Lanham Act because
it is merely descriptive of “athletic clothing, namely,
shorts, jerseys, jackets, swimsuits, t-shirts, tights,
pants, vests, tanks, hip-pockets, and tops.”
The test for determining whether a word is merely
descriptive is well settled. A mark is merely descriptive
under Section 2(e)(1) of the Act if it immediately and
forthwith conveys information concerning a significant
quality, characteristic, feature, function, purpose or use
of the goods. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009
(Fed. Cir. 1987); In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215 (CCPA 1978). It is not necessary that a
term describe all of the properties or functions of the
goods in order for it to be considered to be merely
Ser No. 75/897,698
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descriptive of them; rather, is sufficient if the term
describes any significant attribute or characteristic of
them. Moreover, whether a term is merely descriptive is
determined not in the abstract, but in relation to the
goods for which registration is sought, the context in
which is being used (or is intended to be used) in
connection with the goods and the possible significance
that the term would have to the average purchaser of the
goods because of the manner of its use. See: In re Bright-
Crest, Ltd., 204 USPQ 591 (TTAB 1979). A mark is
suggestive, rather than merely descriptive, if, when the
goods are encountered under the mark, a multi-stage
reasoning process, or the use of imagination, thought or
perception is required in order to determine what
attributes of the goods the mark indicates. In re Mayer-
Beaton Corp., 223 USPQ 1347 (TTAB 1984).
When the facts presented by the instant application
are considered in view of these legal principles, we find
that “THE TRACK & FIELD STORE” is merely descriptive of the
clothing products specified in the amended application.
The materials submitted by the Examining Attorney in
support of the refusal to register establish that the
proposed mark is a combination of merely descriptive terms
Ser No. 75/897,698
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that together describe features or attributes of the goods
in connection with which applicant intends to use it.
The dictionary definition of “track and field” and the
excerpted articles show that the term “track and field” is
used to describe athletic clothing products worn during
track and field competitions. As noted above, applicant
concedes that some of the specific items of apparel listed
in the application can be worn when competing in track and
field events. “TRACK & FIELD” is thus descriptive of these
goods because it identifies the purpose or intended use of
them. That all of the listed goods are not necessarily
used for this purpose and that many of them are suitable
for other uses in addition to track and field competition
is not determinative of the registrability of this term for
these goods. It is sufficient if the proposed mark is
descriptive of a purpose or intended use of any of them.
Moreover, one does not have to be able to speculate or
guess correctly what the goods are by considering the mark
by itself. As noted above, the question is whether, when
the mark is considered in connection with the goods, the
mark conveys information about their characteristics,
purposes or the uses to which they may be put.
Applicant does not contend that the word “THE” adds
source-identifying significance to this combination of
Ser No. 75/897,698
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terms, but applicant provides an elaborate argument that
the word “STORE” is an arbitrary term which serves as a
source identifier and somehow makes the combination of
these descriptive words suggestive in connection with the
specified products.
We cannot adopt applicant’s conclusion. The Examining
Attorney provided with his brief a dictionary definition of
the term “store” as “a place where merchandise is offered
for sale; a shop.” The Board may take judicial notice of
this definition. Given that “STORE” has this meaning, we
agree with the Examining Attorney that prospective
purchasers of clothing who encounter the term as part of
the mark applicant seeks to register would understand it to
indicate the physical place from which applicant’s goods
emanate. They would understand the combined term “THE TRACK
& FIELD STORE,” if it were used as a mark on the clothing
items specified in the amended application, to be an
indication that the goods are provided by a store offering
track and field products.
Contrary to applicant’s argument, they would not
consider the term “STORE” as an arbitrary source indicator.
In In re Martin’s Famous Pastry Shoppe, Inc., 221 USPQ 364
(TTAB 1984); aff’d on other grounds, 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984), the Board, in affirming the
Ser No. 75/897,698
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Examining Attorney’s requirement for a disclaimer of
“PASTRY SHOPPE,” found (at p. 367) that the term “conveys a
clear and immediate impression of the character of
applicant’s baked goods as products likely to emanate from
a pastry shop.” In the case at hand, the term “STORE”
functions in a similar sense, i.e., it immediately and
forthwith indicates that the products on which it is used
emanate from a store. Applicant’s attempt to distinguish
the Martin’s Pastry Shoppe case is not well taken.
Applicant misconstrues the Board’s discussion regarding
source distinction as relating to the issue of
descriptiveness, when in fact it was presented in the
context of determining whether confusion was likely. The
Board found the word “SHOPPE” to be merely descriptive of
the goods.
In summary, the mark applicant seeks to register is
unregistrable under Section 2(e)(1) the Lanham Act because
if it were used in connection with the apparel items listed
in the application, it would immediately convey significant
information about them, namely, that they are track and
field clothing which comes from a store.
DECISION: The refusal to register is affirmed.