Vape International Partners

Trademark Trial and Appeal Board

May 23, 2017

No. 86772769 (T.T.A.B. May. 23, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: May 23, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
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In re Vape International Partners
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Serial No. 86772769
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Paulo A. de Almeida, Gregory Kenyota and Alex D. Patel of Patel & Almeida PC for
Vape International Partners.

Jeffrey J. Look, Trademark Examining Attorney, Law Office 108, Andrew
Lawrence, Managing Attorney.
_____

Before Quinn, Wolfson and Masiello, Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:

Vape International Partners (“Applicant”) seeks registration on the Principal
Register of the mark VAPECON (in standard characters) for
Arranging and conducting trade show exhibitions and
conventions in the field of vaping, vape culture, electronic
cigarettes, and smoker’s articles and accessories; Providing
educational information, namely, consumer and product
information, related to vaping, vape culture, electronic
cigarettes, and smoker’s articles and accessories
Serial No. 86772769

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in International Class 35.1
The Trademark Examining Attorney refused registration under Section 2(e)(1) of
the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that Applicant’s proposed
mark, when used in association with Applicant’s services, is merely descriptive
thereof. After the Examining Attorney made the refusal final, Applicant timely filed
this appeal, which is fully briefed, on August 18, 2016. Applicant also filed a request
for remand on October 10, 2016, seeking amendment in the alternative to the
Supplemental Register. The Board granted Applicant’s request and remanded the
application for consideration of the amendment in the alternative to seek registration
on the Supplemental Register. On November 9, 2016, the Examining Attorney
accepted the amendment in the alternative to the Supplemental Register, and
jurisdiction was restored to the Board for consideration of Applicant’s appeal from
the refusal of registration on the Principal Register. We affirm the refusal to register
on the Principal Register.
Arguments
Applicant argues that its proposed mark is only suggestive, and not merely
descriptive. More specifically, Applicant contends that the term VAPECON “is a
unitary mark with a bizarre or incongruous meaning, and further, the USPTO
normally allows registration of similar CON marks on the Principal Register….”2 The

1 Application Serial No. 86772769 was filed September 29, 2015 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging first use and first use in commerce on October
29, 2014.
2 11 TTABVUE 3.
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Examining Attorney, on the other hand, maintains that the proposed mark is merely
descriptive of Applicant’s convention services in the field of vaping and vape culture.
He argues that “the evidence … includes dictionary definitions showing that the term
‘Vape’ means or refers to electronic cigarette devices as a noun and the use or
inhalation of vapor from such devices when used as a verb and that the word ‘con’ has
come to mean a shortened form of ‘convention.’”3 He further argues that “both the
individual components and the composite result are descriptive of applicant’s services
and do not create a unique, incongruous, or nondescriptive meaning in relation to the
services.”4 In support of the refusal, the Examining Attorney introduced dictionary
definitions, excerpts of third-party websites and registrations of marks containing the
term “con” as a suffix. Applicant also submitted TSDR printouts of third-party
registrations of marks containing the term “con” as a suffix, purporting to show that
the Office has established a policy of registering “con” suffix marks as being
suggestive for convention services.5
Analysis
A term is 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. In re
Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir.

3 Examining Attorney’s brief, 13 TTABVUE 6.
4 Id. p. 8.
5 April 6, 2016 Response to Office Action, pp. 11-29 Exhibit B.
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2012). See also In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831
(Fed. Cir. 2007); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
Whether a mark is merely descriptive is determined in relation to the goods or
services for which registration is sought and the context in which the term is used or
intended to be used, not in the abstract or on the basis of guesswork. In re Abcor Dev.
Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d
1222, 1224 (TTAB 2002). A term need not immediately convey an idea of each and
every specific feature of the goods or services in order to be considered merely
descriptive; it is enough if it describes one significant attribute, function or property
of them. See In re Gyulay, 3 USPQ2d at 1010; In re H.U.D.D.L.E., 216 USPQ 358
(TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). The analysis requires
consideration of the possible significance that the mark would have to the average
purchaser of the goods or services in the relevant marketplace. In re Chamber of
Commerce, 102 USPQ2d at 1219; Bayer, 82 USPQ2d at 1831; Abcor, 200 USPQ at
218. The question is not whether someone presented only with the mark could guess
the goods or services listed in the identification. Rather, the question is whether
someone who knows what the goods or services are will understand the mark to
convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices,
Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012), quoting In re Tower
Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002).
When two or more merely descriptive terms are combined, the determination of
whether the composite mark also has a merely descriptive significance turns on the
Serial No. 86772769

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question of whether the combination of terms evokes a non-descriptive commercial
impression. If each component retains its merely descriptive significance in relation
to the goods or services, the combination results in a composite that is itself merely
descriptive. In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371
(Fed. Cir. 2004). See also In re Petroglyph Games, Inc., 91 USPQ2d 1332 (TTAB 2009)
(BATTLECAM merely descriptive of computer game software); In re Carlson, 91
USPQ2d 1198 (TTAB 2009) (URBANHOUZING merely descriptive of real estate
brokerage, real estate consultation and real estate listing services); In re Tower Tech,
Inc., 64 USPQ2d at 1318 (SMARTTOWER merely descriptive of commercial and
industrial cooling towers); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB
2001) (AGENTBEANS merely descriptive of computer programs for use in developing
and deploying application programs). On the other hand, a mark comprising a
combination of merely descriptive components is registrable if the combination of
terms creates a unitary mark with a non-descriptive meaning, or if the composite has
an incongruous meaning as applied to the goods or services. See In re Colonial Stores
Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR & SPICE for “bakery
products”); In re Shutts, 217 USPQ 363 (TTAB 1983) (SNO-RAKE for “a snow removal
hand tool having a handle with a snow-removing head at one end, the head being of
solid uninterrupted construction without prongs”). “If one must exercise mature
thought or follow a multi-stage reasoning process in order to determine what
characteristics the term identifies, the term is suggestive rather than merely
descriptive.” In re Tennis in the Round, Inc., 199 USPQ 496, 497 (TTAB 1978). See
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also In re Shutts, 217 USPQ at 364-365; In re Universal Water Systems, Inc., 209
USPQ 165, 166 (TTAB 1980).
In determining the overall meaning of the composite mark VAPECON, we first
consider whether its separate terms have any meanings, and if so, whether they are
merely descriptive of Applicant’s services. DuoProSS Meditech Corp. v. Inviro Med.
Devices, Ltd., 103 USPQ2d at 1758 (“To determine whether a composite mark such
as the SNAP SIMPLY SAFER mark is merely descriptive, the Board was required to
examine the meaning of each component individually, and then determine whether
the mark as a whole is merely descriptive.”) In doing so, we note that the word “vape”
is defined by the Oxford Dictionary as a verb meaning “[to] [i]nhale and exhale the
vapour produced by an electronic cigarette or similar device,” and as a noun meaning
“[a]n electronic [c]igarette or similar device.”6 The word “con” has several definitions;
the pertinent definition here is as an abbreviation for “convention, especially one for
science fiction enthusiasts.”7 The Examining Attorney introduced excerpts of several

6 At http://www.oxforddictionaries.com/definition/english/vape?g=VAPE, Office Action dated
May 6, 2106, p. 29. We also take judicial notice of the definition of “vape” at
https://www.merriam-webster.com/dictionary/vape, accessed May 17, 2017: “to inhale vapor
through the mouth from a usually battery-operated electronic device (such as an electronic
cigarette) that heats up and vaporizes a liquid or solid.” The Board may take judicial notice
of dictionary definitions, including definitions or entries from references that are the
electronic equivalent of a print reference work. See University of Notre Dame du Lac v. J. C.
Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983); In re Petroglyph Games, Inc., 91 USPQ2d at 1334 n.1.
7 At http://www.oxforddictionaries.com/definition/english/con, Office Action dated May 6,
2106, p. 35. As noted above, we determine whether a term is merely descriptive as it relates
to the goods or services for which it has been applied, and not in a vacuum. Accordingly, while
Applicant is correct that the word “con” has other meanings in other contexts, in the context
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third-party websites showing that others use “con” as a suffix in the context of
convention services. See, for example, web pages from the Comic-Con International
website, advertising a comic book convention in San Diego,8 the CannaCon website,
featuring a convention for the “cannabis industry,”9 and Mechacon.com, inviting
readers to a convention in New Orleans focusing on “anime,” the art of Japanese
animation.10 These usages support our determination that in the context of
Applicant’s services, the term “con” means “convention.” They also show that,
contrary to Applicant’s position, “con” as an abbreviation for convention has not been
limited to science-fiction conventions.
When the terms “vape” and “con” are combined, “the mark as a whole, i.e., the
combination of the individual parts,” does not convey “any distinctive source-
identifying impression contrary to the descriptiveness of the individual parts.” In re
Oppedahl & Larson, 71 USPQ2d at 1372. To the contrary, from “the perspective of a
prospective purchaser or user” of Applicant’s services, “because … the combination of
the terms does not result in a composite that alters the meaning of [any] of the
elements … refusal on the ground of descriptiveness is appropriate.” In re Petroglyph

of vaping convention services, the word will readily be perceived by smokers and would-be
smokers of e-cigarettes as referring to conventions in the field of vaping and vape culture.
8 At http://www.comic-con.org/about, Office Action dated February 22, 2016, p. 33.
9 At http://cannacon.org./, Office Action dated February 22, 2016, p. 39.
10 At http://wvffl.mechacon.com/news/about-us/, Office Action dated February 22, 2016, p. 43.
“Anime” is defined as “a style of animation originating in Japan.” At https://www.merriam-
webster.com/dictionary/anime?utm_campaign=sd&utm_medium=serp&utm_source=jsonld,
accessed May 17, 2016.

Serial No. 86772769

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Games, 91 USPQ2d at 1341. There is nothing incongruous about the proposed mark;
rather, the mark as a whole immediately describes a characteristic or feature of the
services, namely, that Applicant sponsors conventions for the vaping industry and for
people who vape or are interested in vaping culture. Applicant’s proposed mark,
VAPECON, is merely a short-hand way of saying “vape convention,” where the term
“vape” appears as an adjective describing the type of convention, just as it appears as
a descriptive adjective in the phrase “vape culture” that appears in the recitation of
services.11 There is nothing incongruous about using the term in this manner.
Moreover, the fact that the term is unitary in the sense that it is a compound word
made up of two terms derived from the English language does not per se establish
that the compound word is inherently distinctive. And even if Applicant is the first to
use “vape” and “con” together as a compound term, that does not make the term
registrable without a showing of acquired distinctiveness. “[T]he statute does not
exempt from the prohibition against registration of merely descriptive terms those
that are not in common or widespread use, simply because of relative infrequency of
use.” In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1282 n.14 (TTAB 2016); In re
Bailey Meter Co., 102 F.2d 843, 41 USPQ 275, 276 (CCPA 1939) (“The fact that
appellant may have been the first and only one to adopt and use the mark sought to
be registered does not prove that the mark is not descriptive ....”). Prospective

11 See, e.g., excerpt from Applicant’s website, attached to the Office Action dated February
22, 2016, p. 2, which promotes Applicant’s “VAPECON 2016” as the “Ultimate Vape
Convention Experience.”
Serial No. 86772769

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consumers, upon encountering the mark VAPECON, will immediately understand it
to refer to convention services in the field of vaping, vape culture, electronic
cigarettes, and smoker’s articles and accessories. See, e.g., In re Putman Publishing
Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE merely
descriptive of news and information services in the food processing industry); In re
Associated Theatre Clubs Co., 9 USPQ2d 1660, 1663 (TTAB 1988) (GROUP SALES
BOX OFFICE is nothing more than a combination of the two common descriptive
terms most applicable to Applicant’s services which in combination achieve no
different status but remain a common descriptive compound expression).
Applicant argues that the Office has treated the term “con” as suggestive. In
support, Applicant submitted nine third-party registrations of marks that have been
registered on the Principal Register without a disclaimer of “con” or a showing of
acquired distinctiveness, for trade shows or convention services.12 On the other hand,
the Examining Attorney submitted over fifteen different third-party registrations for

12 These marks are attached to Applicant’s April 6, 2016 Response to Office Action at pp. 11-
29 Exhibit B. They are: ROLLERCON, Reg. No. 3989937 for roller derby conventions;
GEEKGIRLCON, Reg. No. 4209562 for conventions to promote female involvement in the
fields of science; COOKIECON, Reg. No. 4371914 for cookie decorating conventions;
MOBILECON, Reg. No. 4485921 for trade shows in the field of telecommunications
technology; CAMMING CON and design, Reg. No. 4600861 for conventions in the field of
online live streaming of adult-oriented subject matter (CON disclaimed); BEAUTYCON, Reg.
No. 4688453 for conducting contests and pageants; SALT LAKE GAMING CON and design,
Reg. No. 4858430 for conventions in the fields of, inter alia, video games (SALT LAKE
GAMING CON disclaimed); STYLECON, Reg. No. 4863 174 for conventions in the field of
beauty; FITCON, Reg. No. 4914619 for educational conferences. Note: the above statements
of services are representative of the services for which each mark has been registered and
are not complete recitations of the services as registered.
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conducting trade shows, exhibitions, conferences, and conventions wherein the term
“con” has been disclaimed or where the mark has been registered on the
Supplemental Register or with a claim of acquired distinctiveness.13
We find these registrations do not compel a finding that Applicant’s mark is
suggestive. Two of the nine registrations submitted by Applicant (Reg. No. 4600861
and Reg. No. 4858430) and several of those submitted by the Examining Attorney
have disclaimers of “con”; disclaimers are typically entered in recognition of the
descriptive nature of the disclaimed term. In addition, many of the marks that
Applicant argues show that “con” is suggestive are combinations of “con” plus a term
that is not itself merely descriptive of the services for which the marks have been
registered; marks that include suggestive terms in combination with descriptive
terms are not overall merely descriptive. It is well-established that the Board must
decide each application on its own merits. In re Nett Designs, 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001). “Even if the PTO had previously allowed a mark
similar to [the applicant’s] marks to be registered, that would not give [applicant] an
equal protection right to have its mark registered unless the agency acted pursuant

13 Notably, three of these registrations were registered on the Supplemental Register and
also include a disclaimer to the term “con,” namely, Reg. No. 4792266 for the mark AUDIO
CON for “Organizing, promoting and conducting exhibitions, trade shows and events for
business purposes,” attached to May 6, 2016 Office Action, p. 24; Reg. No. 4155959 for the
mark SNEAKER CON for “Organizing and conducting exhibitions and trade fairs featuring
sneakers for business and promotional purposes,” Id. p. 4; and Reg. No. 4770725 for the mark
GAMEHOLE CON for “Providing a live forum for companies to showcase, display,
demonstrate and promote new and innovative ideas, products and services in the
convention/meeting management arena,” attached to September 13, 2016 Denial of Request
for Reconsideration, p. 12.
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to some impermissible or arbitrary standard.” In re Boulevard Ent. Inc., 334 F3d
1336, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003) (citing In re Int’l Flavors & Fragrances,
183 F.3d 1361, 51 USPQ2d 1513, 1518 (Fed. Cir. 1999). “The fact that, whether
because of administrative error or otherwise, some marks have been registered even
though they may be in violation of the governing statutory standard does not mean
that the agency must forgo applying that standard in all other cases.” Id. The third-
party registration evidence submitted by Applicant and the Examining Attorney,
when taken as a whole, does not convince us that “con” is suggestive in the context of
Applicant’s services.
Thus, we find that not only are the individual terms “vape” and “con” merely
descriptive of the services of arranging and conducting conventions focused on vape
culture and vaping activities, but that the compound term VAPECON likewise
immediately brings to mind Applicant’s services of “arranging and conducting trade
show exhibitions and conventions in the field of vaping, vape culture, electronic
cigarettes, and smoker’s articles and accessories.”14 Accordingly, the mark is not
registrable on the Principal Register.

14 While the refusal is directed to all of the services, the Examining Attorney and Applicant
have focused their arguments on Applicant’s exhibition and convention services. Therefore,
we have made our determination on the basis of Applicant’s exhibition and convention
services and it is unnecessary for us to find the proposed mark merely descriptive with
respect to Applicant’s educational information services. In re Right-On Co. Ltd., 87 USPQ2d
1152, 1155 (TTAB 2008) (citing In re Analog Devices, Inc., 6 USPQ2d 1808, 1810 (TTAB
1988), aff’d, 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989)) (“it is a well settled legal
principle that where a mark may be merely descriptive of one or more items of goods in an
application but may be suggestive or even arbitrary as applied to other items, registration is
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Decision: The refusal to register under Trademark Act Section 2(e)(1) is affirmed
and the application will issue on the Supplemental Register in due course.

properly refused if the subject matter for registration is descriptive of any of the goods for
which registration is sought.”).