Triad Design Service, Inc.

Trademark Trial and Appeal Board

Aug 5, 2008

No. 78884307 (T.T.A.B. Aug. 5, 2008)

Mailed:
August 5, 2008
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Triad Design Service, Inc.
________

Serial No. 78884307
_______

Andrew D. Manitsky of Gravel and Shea for Triad Design
Service, Inc.

Fred Mandir, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Quinn, Hohein and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Triad Design Service, Inc. seeks registration on the
Principal Register of the mark VARSITY (in standard character
format) for goods identified in the application as “magazines
featuring high school sports” in International Class 16.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this designation under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. § 1052(e)(1), based upon the ground

1 Application Serial No. 78884307 was filed on May 16, 2006
based upon applicant’s allegation of use in commerce since at
least as early as October 29, 2004.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78884307
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that the mark is merely descriptive when considered in
relation to applicant’s identified goods, i.e., that the
term “Varsity” immediately informs potential purchasers
about the content or subject matter of applicant’s
publications, namely, magazines featuring high school
varsity sports.
Applicant and the Trademark Examining Attorney have
fully briefed the issues involved in this appeal. We affirm
the refusal to register.
In arguing for registrability, applicant contends that
inasmuch as “[t]he term [Varsity] has many contemporary
applications …,” it cannot be considered "merely
descriptive”; that the United States Patent and Trademark
Office has acknowledged that the word “Varsity” is
suggestive, as shown by two third-party registrations
covering athletic shirts sold to high schools and for
scoreboards; that there is no evidence that applicant’s
magazines actually focus on “varsity” sports; and that the
word “Varsity” is similar to other terms found by the
Board not to be merely descriptive.
By contrast, the Trademark Examining Attorney
contends that applicant’s own identification of goods
implicitly includes magazines featuring varsity high
school sports because the expression “varsity sports” (a
Serial No. 78884307
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term that is not part of the identification of goods)
immediately conveys information about a first-string sports
team that represents a school; that another Internet website
demonstrates merely descriptive use of the term “varsity” as
applied to a magazine covering varsity high school sports;
and that the United States Patent and Trademark Office
clearly uses the term “varsity” within a service mark
recitation for sports educational services at the high
school level.
Is term merely descriptive?
A mark is merely descriptive, and therefore
unregistrable pursuant to the provisions of Section 2(e)(1)
of the Trademark Act, 15 U.S.C. § 1052(e)(1), if it
immediately conveys “knowledge of a quality, feature,
function, or characteristic of the goods or services.”
In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d
1828, 1831 (Fed. Cir. 2007) [ASPIRINA is merely descriptive of
analgesic product]. See also In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009, 1009 (Fed. Cir. 1987) [APPLE PIE merely
descriptive of potpourri mixture]; and In re Quik-Print Copy
Shops, Inc., 616 F.2d 523, 205 USPQ 505, 507 (CCPA 1980).
To be “merely descriptive,” a term need only describe a
single significant quality or property of the goods.
Serial No. 78884307
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Gyulay, 3 USPQ2d at 1009; In re MBNA America Bank N.A.,
340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003) [A
“mark is merely descriptive if the ultimate consumers
immediately associate it with a quality or characteristic of
the product or service”]. That is, when we analyze the
evidence of record, we must keep in mind that the test is
not whether prospective purchasers can guess what
applicant’s goods are after seeing applicant’s mark alone.
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
218 (CCPA 1978) [GASBADGE merely descriptive of a “gas
monitoring badge”; “Appellant’s abstract test is deficient –
not only in denying consideration of evidence of the
advertising materials directed to its goods, but in failing
to require consideration of its mark ‘when applied to the
goods’ as required by statute”]. Rather, the proper test in
determining whether a term is merely descriptive is to
consider the applied-for mark in relation to the goods or
services for which registration is sought, the context in
which the mark is used, and the significance that the mark
is likely to have on the average purchaser encountering the
goods or services in the marketplace. In re Omaha National
Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re
Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991); and In re
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986).
Serial No. 78884307
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Hence, the ultimate question before us is whether the term
VARSITY conveys information about a significant feature or
characteristic of applicant’s magazines with the immediacy
and particularity required by the Trademark Act.
On the other hand, a mark is suggestive, and therefore
registrable on the Principal Register without a showing of
acquired distinctiveness, if imagination, thought or
perception is required to reach a conclusion on the nature
of the goods or services. “Whether a given mark is
suggestive or merely descriptive depends on whether the mark
‘immediately conveys … knowledge of the ingredients,
qualities, or characteristics of the goods … with which it
is used,’ or whether ‘imagination, thought, or perception is
required to reach a conclusion on the nature of the goods.’”
(citation omitted) In re Gyulay, 3 USPQ2d at 1009; see also
In re Distribution Codes, Inc. 199 USPQ 508 (TTAB 1978) [CODE
& SYMBOL not merely descriptive of journals dealing with the
applied science of product identification].
Analysis
The Trademark Examining Attorney has placed into the
record a dictionary entry for the word “varsity”
demonstrating that it conveys information about any first-
string sports team that represents a local high school:
Serial No. 78884307
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Dictionary
var•si•ty
Pronunciation: (vär'si-tē), [key]
—n., pl. -ties,
—adj.
—n.
1. any first-string team, esp. in sports, that represents a school, college,
university, or the like: He is on the varsity in tennis and in debating.
2. Chiefly Brit. Informal.university.
—adj.
of or pertaining to a university or school team, activity, or competition: a
varsity debater.
Random House Unabridged Dictionary, Copyright © 1997, by Random House, Inc.,
on Infoplease.2

In this context, we note that applicant’s specimen of
record accompanying this application shows that applicant’s
magazine is promoting or “celebrating the best in high
school sports”:

2 Also available on Infoplease at
http://dictionary.infoplease.com/varsity

Serial No. 78884307
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As to the actual use of the term “varsity” by others,
the Trademark Examining Attorney included for the record a
third-party’s usage of the term “varsity sports” in
connection with a magazine covering varsity high school
sports in central-Indiana in much the same way that
applicant covers varsity high school sports in Vermont and
New Hampshire:
3
The Trademark Examining Attorney also points out that
the word “varsity” is used by the United States Patent and
Trademark Office, for example, in a service mark recitation
for sports education:

3 http://www.younameitsports.com/subscriptions.html
Serial No. 78884307
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for “educational services,
namely providing courses of
instruction and seminars in
the field of sports, namely,
varsity sports played at the
high school level and
instructional materials
provided therewith; and
sports camps” in
International Class 41.

Applicant attempts to counter this showing by arguing
that the word “Varsity” has a variety of meanings. For
example, applicant cites to a Wikipedia entry having
fourteen uses of the word “varsity”:
The word “Varsity” is descended from the word
“university” (which in the 19th Century was commonly
shortened to “versity”). The term has many
contemporary applications:

• Varsity team, the principal athletic teams
representing a university or school
• Varsity match, a sports fixture played between
traditional rival Universities, particularly
Oxford and Cambridge.
• Varsity (Cambridge), one of Cambridge University's
two main student newspapers.
• Varsity (Cape Town), the student newspaper of the
University of Cape Town
• Vickers Varsity, a post-WW military trainer
aircraft based on the Vickers Viking
• The Varsity, a famous drive-in restaurant in
Atlanta, Georgia that has been in operation
since 1928 and is now a major tourist
attraction.
• Varsity Line, the railway line that formerly
connected Oxford and Cambridge.
• The Varsity (bar), the chain of bars across the
United Kingdom with 23 outlets.
• Varsity Scouts (Boy Scouts of America), a program
of the Boy Scouts of America for older boys.
• Operation Varsity, an airborne operation in World
War II.
Serial No. 78884307
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• Varsity Stick, famous floorball stick produced by
Salming, Sweden
Varsity may also refer to one of the following places:
• Varsity, Calgary, a neighbourhood in Calgary,
Alberta, Canada
• Varsity Lakes, Queensland, a suburb of the Gold
Coast, Queensland, Australia
• Varsity View, Saskatoon, a neighbourhood in
Saskatoon, Saskatchewan, Canada4
Applicant then included additional information about
one of these listed usages, namely, a Wikipedia entry for
a branch of The Boy Scouts of America:
Varsity Scouting (Boy Scouts of America)
Varsity Scouting is part of the Boy
Scouting program of the BSA. It is an
alternative available to boys ages fourteen
through seventeen that takes the basic Boy
Scouting program and adds high adventure,
sporting, and other elements that are more
appealing to older youth to accomplish the
aims of character development, citizenship
training, and personal fitness … . 5

In connection with these many applications of the word
“varisty,” applicant cites to a quotation from Prof.
McCarthy’s treatise as support for its position of
registrability:

4 http://en.wikipedia.org/wiki/Varsity

5 http://en.wikipedia.org/wiki/Varsity_Scouting
%28Boy_Scouts_of_America%29

Serial No. 78884307
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A mark that connotes two meanings — one
possibly descriptive, and the other
suggestive of some other association — can
be called suggestive, as the mark is not
‘merely’ descriptive.” 6

However, in this section, Prof. McCarthy is not
referring to a situation where the involved term has
different connotations depending upon the context. Rather,
the focus is on instances where sometimes a readily
understood, alternative meaning would be considered to have
a “double entendre.” If so, the mark will not be refused
registration as merely descriptive if one of its meanings is
not merely descriptive in relation to the goods or services.
See The Institut National des Appellations D'Origine v.
Vintners International Co. Inc., 958 F.2d 1574, 22 USPQ2d
1190 (Fed. Cir. 1992) [CHABLIS WITH A TWIST may well project a
double meaning, e.g., the unusual approach of adding a
citrus flavoring to wine]; In re Colonial Stores Inc., 394
F.2d 549, 157 USPQ 382 (CCPA 1968) [the term SUGAR & SPICE
held not to be merely descriptive of bakery products]7 and In

6 See 2 J.T. MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, § 11:19
(2007).

7 In this oft-cited decision of the predecessor to our
principal reviewing court, the Court found this matter clearly
functioned as a trademark because “sugar and spice” is a well-
known phrase taken from a nursery rhyme. The composite mark is
inherently distinctive as applied to bakery products – even ones
containing these two ingredients – precisely because this
combination from the nursery rhyme is familiar to anyone seeing or
hearing this mark.
Serial No. 78884307
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re National Tea Co., 144 USPQ 286 (TTAB 1965) [NO BONES ABOUT
IT for fresh pre-cooked ham]. In each of these cases, the
secondary interpretations that make each expression a double
entendre consist of an association that members of the
public would make quite readily, and the new combination
creates another meaning that renders the combination
registrable as a mark. Applicant has proffered no
explanation for such an interpretation herein, and we find
the instant mark is not analogous to marks such as CHABLIS
WITH A TWIST, SUGAR & SPICE or NO BONES ABOUT IT.
Finally, applicant points to two different third-party
registrations for marks having “Varsity” in them:
VARSITY for “athletic shirts, athletic
shorts, athletic tops, body suits,
dresses, hats, jackets, jerseys,
jumpers, leotards, pants, skirts,
sweaters, sweat pants, sweat
shirts, T-shirts, unitards, and
warm-up suits sold to colleges,
high schools and school-affiliated
teams, clubs, groups and
individuals by direct sales
through sales representatives or
employees of applicant, through
mail order catalog services or
through campus book stores or
other retail outlets located at
colleges and high schools;
uniforms for cheerleaders, drill
teams, pom pon squads, pep squads,
Serial No. 78884307
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mascots, bands and booster clubs”
in International Class 25;8
for “on-line retail outlet, mail
order catalogue and
distributorships featuring
scoreboards, timers, marquees,
digital displays, and electronic
message displays” in International
Class 35.9

Applicant argues that the United States Patent
and Trademark Office has apparently already decided
that the word “Varsity” is suggestive rather than
merely descriptive, citing to third-party
registrations covering athletic shirts and
scoreboards. Of course, the fact that third parties
registered marks containing the word “Varsity” for
other unrelated products is not persuasive of a
different result herein. Suffice it to say that these
registrations are of little help in determining the
registrability of the mark at issue in this case. As
has often been noted by the Board, each case must be
decided on its own set of facts. None of these marks
involved publications, and thus the facts in those
records (to which we are not privy) would obviously be

8 Registration No. 2526564 issued on the Principal Register on
January 8, 2002; Section 8 affidavit (six-year) accepted and
Section 15 affidavit acknowledged.

Serial No. 78884307
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different. Moreover, even if the situations of these
third-party registrations appeared to be analogous to
the facts of the current case, the Board is not bound
by actions taken by Trademark Examining Attorneys. In
re National Novice Hockey League, Inc., 222 USPQ 638,
641 (TTAB 1984) and In re Scholastic Testing Service,
Inc., 196 USPQ 517, 519 (TTAB 1977). While uniform
treatment under the Trademark Act is highly desirable,
our task here is to determine, based upon the record
before us, whether applicant’s asserted mark is
registrable.
Nonetheless, applicant argues that in the interest of
consistency, its involved mark should be considered to be
suggestive, and thus registrable on the Principal Register.
Our primary reviewing court, however, has rejected this
argument:
Needless to say, this court encourages the
PTO to achieve a uniform standard for
assessing registrability of marks.
Nonetheless, the Board (and this court in its
limited review) must assess each mark on the
record of public perception submitted with
the application. Accordingly, this court
finds little persuasive value in the
registrations that Nett Designs submitted to
the examiner or in the list of registered
marks Nett Designs attempted to submit to the
Board.

9 Registration No. 2739163 issued on the Principal Register on
July 15, 2003 with a disclaimer of the word “Scoreboards.”
Serial No. 78884307
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In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001). See also In re Rodale Inc., 80 USPQ2d
1696, 1700 (TTAB 2006) [“Although consistency in examination
is a goal of the Office, the decisions of previous Trademark
Examining Attorneys are not binding on us, and we must
decide each case based on the evidence presented in the
record before us”]; In re Finisair Corp., 78 USPQ2d 1618,
1621 (TTAB 2006) [“While uniform treatment is a goal, our
task is to determine based on the record before us, whether
applicant's mark is merely descriptive”]; and In re Hunter
Fan Co., 78 USPQ2d 1474, 1476 (TTAB 2006) [“A mark that is
merely descriptive should not be registered on the Principal
Register simply because other such marks appear on the
register”]. Cf. In re Wilson, 57 USPQ2d 1863 (TTAB 2001)
[administrative law doctrine of “reasoned decisionmaking”
does not require consistent treatment of applications to
register marks; each application for registration must be
considered on its own record and merits].
As noted above, mere descriptiveness of a mark is not
considered in a vacuum. Thus, the question before us is
what significance, if any, does the designation “Varsity”
convey when used as the title of a magazine devoted to
promoting or celebrating the best in high school sports?
Serial No. 78884307
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In making a determination of whether or not a title of
a publication meets the standards of registrability as a
trademark under Section 2(e)(1), the same rules should apply
that are used to make such determinations about trademarks
for other products. Hence, in the event that the title of a
magazine immediately reveals the contents or subject matter
of the magazine, no doubt can possibly exist as to the mere
descriptiveness thereof:
The notation CREDIT CARD MARKETING falls within
this category of titles. Since “marketing”
and “merchandising” are synonymous terms that
are frequently used interchangeably, CREDIT
CARD MARKETING, as applied to “a periodical
pamphlet devoted to subjects of interest to
those engaged in the credit card
merchandising field,” leaves nothing for
speculation or surmise, and insofar as this
record shows, performs no function other than
to describe the subject matter to which the
pamphlet is directed. As such, it is merely
descriptive of the goods and unregistrable on
the Principal Register.

In re The Gracious Lady Service, Inc., 175 USPQ 380, 381-82
(TTAB 1972). See also Scholastic Inc. v. Macmillan Inc.,
650 F.Supp. 866, 2 USPQ2d 1191, 1194 (S.D.N.Y. 1987)
[CLASSROOM is merely descriptive of a magazine concerned with
school instruction];10 In re Waverly Inc., 27 USPQ2d 1620,

10 Contra a case cited by applicant, C.L.A.S.S. Promotions,
Inc. v. D.S. Magazines, Inc., 753 F.2d 14, 225 USPQ 275 (2d Cir.
1985), in which the word CLASS was found to be suggestive of a
bi-monthly, pocket-sized magazine directed to readers interested
in African-American and West Indian culture.
Serial No. 78884307
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1621-22 (TTAB 1993) [MEDICINE is merely descriptive as
applied to a periodical medical journal]; Hunter Publishing
Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996, 1997-98
(TTAB 1986) [SYSTEMS USER merely descriptive of applicant's
magazine targeting users of computer systems inasmuch as it
names some, if not all, of its readers or subscribers]; and
In re Hunter Publishing Company, 204 USPQ 957, 963 (TTAB
1979) [applicant’s JOBBER AND WAREHOUSE EXECUTIVE publication is
directed to jobber and warehouse managers or executives in
the automotive aftermarket].
We consequently agree with the Trademark Examining
Attorney that the term VARSITY immediately informs potential
purchasers about the content or subject matter of
applicant’s publications, namely, magazines featuring high
school varsity sports. Our conclusion as to the mark’s
descriptive connotation is confirmed and reinforced by
applicant’s own tag line -- “Celebrating the best in high
school sports.” Moreover, the images on applicant’s
specimen of record show athletes in top physical form
wearing uniforms and team jerseys having letters and logos.
These are not images associated with persons involved in
high school intramural sports. Hence, this specimen belies
applicant’s suggestion that applicant’s magazines might well
not focus on “varsity” sports. Applicant’s reply brief,
Serial No. 78884307
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point number four. See In re San Diego National League
Baseball Club, Inc., 224 USPQ 1067, 1069 (TTAB 1983)
[evidence in the record demonstrates that SAN DIEGO PADRE REPORT
is merely descriptive of bimonthly news magazine of
applicant’s sports team].
By contrast, we do not find the instant case to be at
all analogous to the PLAYBOY case cited by applicant –
inasmuch as PLAYBOY is a demonstrably strong and distinctive
mark for magazines entitled to a high degree of protection
given the wide recognition it enjoys in the marketplace.
Playboy Enterprises, Inc. v. Chuckleberry Publishing,
Inc., 687 F.2d 563, 215 USPQ 662 (2d Cir. 1982).
Decision: We find the arguments of the Trademark
Examining Attorney to be persuasive, and hence, the refusal
to register this mark on the Principal Register based upon
Section 2(e)(1) of the Lanham Act is hereby affirmed.