VanillaGorilla, L.P.

Trademark Trial and Appeal Board

Jul 6, 2006

No. 76561135 (T.T.A.B. Jul. 6, 2006)

Mailed:
6 July 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Vanilla Gorilla, L.P.
________

Serial No. 76561135
_______

Anthony M. Keats of Keats McFarland & Wilson LLP for
Vanilla Gorilla, L.P.

Jennifer Chicoski, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

Before Grendel, Drost, and Kuhlke, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On November 20, 2003, applicant1 applied to register
the mark shown below in standard character form on the
Principal Register for “automobile parts, namely, car wheel
rims” in Class 12.2

1 The original applicant was identified as Jesse James. On June
5, 2006, the Office recorded an assignment of the application to
Vanilla Gorilla, L.P., a limited partnership composed of 2002
Jesse James Family Trust and Way Fast Whitey, Inc. Reel/Frame
No. 3321/0617.
2 Serial No. 76561135. The application is based on applicant’s
allegation of a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS CITABLE AS
PRECEDENT OF
THE TTAB
Ser. No. 76561135
2
3-O’S
The examining attorney refused registration under
Section 2(e)(1) of the Trademark Act on the ground that
applicant’s mark is merely descriptive of the identified
goods. 15 U.S.C. § 1052(e)(1).
The examining attorney argues (Brief at p. 3, footnote
omitted) that:
The mark “3-O’S” immediately conveys a specific,
descriptive meaning within the context of the field of
car wheel rims. The mark itself is comprised of the
numeral “3” combined with the plural literal notation
“O’S.” The letter “O,” apart from its significance as
the fifteenth letter of the modern English alphabet, is
also understood to indicate the number “0” or zero…

When the significance of the mark “3-O’S” is considered
within the context in which it will be used, namely on
“car wheel rims,” the average purchaser of such goods
in the market place would immediately understand the
mark’s reference to a specific characteristic of the
goods – their diameter size in inches.

In addition to attacking the examining attorney’s
evidence, applicant argues (Brief at 4) that:
Contrary to the Examining Attorney’s assertion in
Office Action No. 2 that “applicant’s use of the hyphen
between the numeral ‘3’ and the ‘O’ does not create a
significant distinction that results in a term with a
separate non-descriptive meaning apart from the numeric
designation ‘30s’ without the hyphen,” applicant
respectfully disagrees. Whereas the term “30s” can
mean any number between 30 and 39, the term “3-O’S”
carries the additional suggestive connotation of three
circles, or three “O"s, which can refer to dragsters or
funny cars with three wheels.

Ser. No. 76561135
3
When the examining attorney made her refusal final,
this appeal followed.
We must now decide whether the term “3-0’S” is merely
descriptive of car wheel rims.
A mark is merely descriptive if it immediately conveys
information concerning a quality or characteristic of
the product or service. The perception of the relevant
purchasing public sets the standard for determining
descriptiveness. Thus, a mark is merely descriptive if
the ultimate consumers immediately associate it with a
quality or characteristic of the product or service.
On the other hand, if a mark requires imagination,
thought, and perception to arrive at the qualities or
characteristics of the goods or services, then the mark
is suggestive.

In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d
1778, 1780 (Fed. Cir. 2003) (citations and internal
quotation marks omitted). See also In re Nett Designs, 236
F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) and In re
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217
(CCPA 1978). It is clear that when we are analyzing a mark
to determine if it is merely descriptive, we must consider
the mark in the context of the identified goods or services
and not in the abstract. Abcor, 200 USPQ at 218.
We begin by looking at the context in which the mark
“3-O’S” is intended to be used. Weiss Noodle Co. v. Golden
Cracknel and Specialty Co., 290 F.2d 845, 129 USPQ 411, 414
(CCPA 1961) (“In deciding whether the mark registered is in
fact the name of the product, we look to the description of
Ser. No. 76561135
4
the products in the registration, not to the registrant's
market practices”). Applicant has identified its goods as
car wheel rims. The evidence shows that car wheel rims are
referred to by the number describing their diameter. An
article in the Detroit Free Press (August 3, 2003) provides
some basic information. It explains that “Rims” are:
“[a]nother name for wheels. Rims are not to be confused
with wheel covers or hub caps. Tires are mounted around
the rim.” The article defines “20s” as follows: “If
someone says they are riding on 20s, they are driving a
vehicle with 20-inch wheels. Many vehicles operate on a
standard of 15-inch wheels, but 20s are a very popular size
nationally.” Similarly, “24s” are defined as “24-inch
wheels. This is the size that’s popular everywhere this
summer.” The article quotes an interviewee as saying that:
“Rappers talk about their cars and rims on the radio and
you can see them in the videos. I think that is why they
have taken off.”
An article at www.sema.org describes the aftermarket
for rims as follows:
Wheels are getting absurdly large. There was a time
when 20s were huge; now 20s are almost commonplace.
The Dodge Ram pickup comes from the factory with 20s
on it, and now you’re seeing 26s at the SEMA Show. We
understand that GM is now voiding warranties in
vehicles that have 22s on them.

Ser. No. 76561135
5
The examining attorney also submitted evidence of use
of the term “30” and similar terms in relation to auto rims
or wheels. At www.cheap-wheels-n-rims.com, there is an
article entitled “Give your auto the right look with custom
car rims and aftermarket wheels.” The article reports that
the “hottest of today’s custom rims are getting bigger and
bigger. Aftermarket wheels range in sizes from 14 inches
right up to 30 inches! … The trend of aftermarket wheels is
getting bigger every single summer.” At
www.unverferth.com, “rims are available in 24-, 26-, 28-,
and 30-inch diameters.” See also
http://s87151159onlinehome.us/gallery/Cars/30inch (“blingin
30 inch rims”).
The examining attorney even retrieved a vignette from
an electronic bulletin board conversation concerning Acura
vehicles in December 2003.3 The conversation opened with
the subject:
30” rims!!
The writer displayed a photo of a car with large wheels and
reported: “Yesterday while ridin with a friend I saw two
cars roll by ridin on HUGE rims. We waved at the drivers

3 We emphasize that our decision does not rest on the use of the
term “30’s” or “30s” on this bulletin board. We do point to it
as an example of the natural progression of language that would
be used to refer to the size of rims as they become larger.
Ser. No. 76561135
6
and they told us, yep, 30’s. I had my phone on me so I
took a few pics, remember it’s a phone before it is a
camera, but this will give u an idea of what they look
like.” The first response to this message was: “I didn’t
know they had 30s out, are those custom?”
The examining attorney also submitted some additional
evidence to show that rims are often referred to by the
number that describes their diameter in plural form.
www.acuramdx.org (“with the never ending quest to go bigger
with 23’s, 24’s, and even 26’s and 28’s – the prices of
20’s are comparatively cheaper than ever”); www.wnba.com
(“I would get Stacy some twenty-fours (rims) for her new
car”) and www.dodgedakotas.com (“chrome twentys”).
Furthermore, the lyrics of several songs show the use of a
plural number to refer to the size of the wheels on the
vehicle. See, e.g., www.anysonglyrics.com (50 Cent, True
Loyalty, “Look at them twenty-fours diamonds spin”);
www.sing365.com (Insane Clown Posse, 24’ on a ’84, “24’s on
my 84 Regal. I’m riding down your block with 2 Desert
Eagles”); and www.thelyricarchive.com (Big Tymers, Still
Fly, “Cruisin through the parking lot on twenty fours
(Coming Through The Hood On’Em Twenty Fo’s) Cadillac
Escalade with the chromed out nose).
Ser. No. 76561135
7
The above evidence leads us to conclude that car wheel
rims are available in a variety of sizes and it is apparent
that the size of the rims has been getting larger. The
wheels are often referred to simply by the number that
describes the size of the rims, e.g., “20’s,” “22’s,” and
“twenty fours.” Rims have now increased in size to the
extent that rims with a diameter of 30 inches are now
available. The term “thirty” is “a cardinal number, 10
times 3.” The Random House Dictionary of the English
Language (unabridged) (2d ed. 1987).4 The same dictionary
identifies the plural of this word as “thirties.” The
terms “30,” “30’s,” “thirty,” and “thirties” all describe
car wheel rims that are 30 inches in diameter.
The next question then is whether applicant’s mark
“3-O’S” would similarly describe car wheel rims that are 30
inches in diameter. Inasmuch as the term “30’s” would
describe car wheel rims that are thirty inches in diameter,
the basic question in this case is whether the addition of
the hyphen converts this descriptive term into a non-
descriptive term. We begin by noting that slight
variations in spelling of marks from their traditional

4 We take judicial notice of this definition. University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594,
596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
Ser. No. 76561135
8
spelling does not change the meaning of the term if the
underlying term is itself descriptive. The Supreme Court
has held that:
The word, therefore is descriptive, not indicative of
the origin or ownership of the goods; and being of
that quality, we cannot admit that it loses such
quality and becomes arbitrary by being misspelled.
Bad orthography has not yet become so rare or so
easily detected as to make a word the arbitrary sign
of something else than its conventional meaning….

Standard Paint Co. v. Trinidad Asphalt Mfg. Co., 220 U.S.
446, 455 (1911). See also Armstrong Paint & Varnish Works
v. Nu-Enamel Corp., 305 U.S. 315 (1938) (NU-ENAMEL; NU held
equivalent of “new”); In re Quik-Print Copy Shops, 616 F.2d
523, 205 USPQ 505, 507 n.9 (CCPA 1980) (QUIK-PRINT held
descriptive; “There is no legally significant difference
here between ‘quik’ and ‘quick’”); Fleetwood Co. v. Mende,
298 F.2d 797, 132 USPQ 458, 460 (CCPA 1962) (“TINTZ [is] a
phonetic spelling of ‘tints’”); King-Kup Candies, Inc. v.
King Candy Co., 288 F.2d 944, 129 USPQ 272, 273 (CCPA 1961)
(“It is clear, therefore, that the syllable ‘Kup,’ which is
the full equivalent of the word ‘cup,’ is descriptive);
Andrew J. McFarland, Inc. v. Montgomery Ward & Co., 164
F.2d 603, 76 USPQ 97, 99 (CCPA 1947)(KWIXTART merely
descriptive for electric storage batteries); In re Organik
Technologies Inc., 41 USPQ2d 1690, 1694 (TTAB 1997)
(ORGANIK “is the phonetic equivalent of the term
Ser. No. 76561135
9
‘organic’"); and Hi-Shear Corp. v. National Automotive
Parts Association, 152 USPQ 341, 343 (TTAB 1966) (HI-TORQUE
“is the phonetic equivalent of the words ‘HIGH TORQUE’”).
Even if there was no evidence that such terms as NU, QUIK,
KWIK, KUP, or ORGANIK were used, it would not mean that
they were not descriptive.
Second, the addition of punctuation marks to a
descriptive term would not ordinarily change the term into
a non-descriptive one. In re Samuel Moore & Co., 195 USPQ
237, 240 (TTAB 1977) (“Applicant has not cited nor have we
found any case where it was held that a common punctuation
mark, such as an exclamation point, was sufficient to
elevate an otherwise merely descriptive term to the status
of a registrable trademark. We do not do so in this
case”). See also In re S.D. Fabrics, Inc., 223 USPQ 54, 55
(TTAB 1984) (“Aside therefrom, we are not persuaded that
the design features of applicant's mark, namely, the
filling in of portions of some of the letters in the mark
and the separation of the two words of the mark with a
conventional punctuation mark, are so distinctive as to
create a commercial impression separate and apart from the
unregistrable components”).
Third, the addition of hyphens to marks, as in this
case, has not been successful in changing the descriptive
Ser. No. 76561135
10
nature of the term. In re Wyandotte Chemicals Corp., 156
USPQ 100, 100 (TTAB 1967) (“It is equally true that a
descriptive term is not made arbitrary by hyphenating or
misspelling it”). See also Weiss Noodle Co., 129 USPQ at
413 (Term “HA-LUSH-KA” held to be the generic equivalent of
the Hungarian word "haluska"); American Druggist Syndicate
v. United States Industrial Alcohol Co., 2 F.2d 942, 943
(D.C. Cir. 1924) (“‘Al-Kol’ is merely a phonetic or
misspelling of the word ‘alcohol,’ and is descriptive of
the goods”).
In this case, applicant’s mark, 3-O’S, consists of the
number 3, a hyphen, the letter “O,” an apostrophe, and the
letter “S.” We note that the “O” can be considered to be
the letter “O” or the representation of the number “zero.”5
The letter “O” is defined as: “The 15th letter of the
English alphabet” and “A zero.” The American Heritage
Dictionary Student Dictionary (1988).6 Therefore, the term,
“3-O’S,” when it is used on car wheels, would likely be
pronounced as “three ohs” and signify the number 30s.
While in the abstract, the term may have several meanings,7

5 Indeed, some purchasers may find it difficult to distinguish
between the letter “O” and the number “0.”
6 We take judicial notice of this definition also.
7 We find applicant’s argument (Brief at 4) that, when purchasers
are looking at car wheel rims, they would somehow be reminded of
“three circles, or three ‘O’s,’ which can refer to dragsters or
funny cars with three wheels” particularly unpersuasive.
Ser. No. 76561135
11
when one is a prospective purchaser of car wheel rims, the
term “3-O’S” would immediately describe a characteristic or
feature of the goods, i.e., that they are 30 inches in
diameter.
Applicant argues that its term is “an abbreviation,
contraction, foreshortening or whimsical alternative
spelling for tire rims equal to or greater than thirty
inches in diameter.” Brief at 3. If a misspelling
“involves more than simply a misspelling of a descriptive
or generic word,” it may not be merely descriptive. In re
Grand Metropolitan Foodservices Inc., 30 USPQ2d 1974, 1975
(TTAB 1994) (Applicant’s “MufFuns” (stylized) mark has a
different commercial impression than the generic term
“muffin”). However, we see nothing whimsical about the
term “3-O’S.” The term is simply another way of saying
“thirty inch rims.” It is not so much an abbreviation as
it is what Judge Rich referred to as follows:
[T]he users of language have a universal habit of
shortening full names -- from haste or laziness or
just economy of words. Examples are: automobile to
auto, telephone to phone, necktie to tie, gasoline
service station to gas station. I regard it as
inevitable that a gas monitoring badge will be called
a gas badge…

Abcor, 200 USPQ at 219 (Rich, J. concurring).

Regarding applicant’s allegations (Brief at 6) that
the “evidence of record is clearly insufficient,” we simply
Ser. No. 76561135
12
disagree. The term “30” obviously is exactly descriptive
of wheel rims having a thirty-inch diameter. There is no
difference between using the Arabic numeral “30” or the
word “thirty.” Both mean exactly the same thing, the
number 30. Applicant’s identification of goods includes
wheels of thirty-inch diameter.8 The evidence demonstrates
that wheels are frequently referred to by the plural number
of their size. We have no doubt that if prospective
purchasers of car rims were to encounter the term “3-O’S”
on thirty-inch car rims, they would immediately understand
that the term is merely descriptive of these goods.
Decision: The examining attorney’s refusal to
register applicant’s mark on the ground that it is merely
descriptive of the identified goods is affirmed.

8 There is no argument by applicant in this case that the term
“thirty” would not describe its wheels. If that were the case,
there would then be a question of whether the mark was
deceptively misdescriptive of the goods.