VRBIA, Inc.

Trademark Trial and Appeal Board

Dec 3, 2004

No. 78263738 (T.T.A.B. Dec. 3, 2004)

Mailed: 12/3/2004
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re VRBIA, Inc.
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Serial No. 78263738
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David Bogart Dort of Dort Close IP Law Group for applicant.
John T. Lincoski, Jr., Trademark Examining Attorney, Law
Office 113 (Odette Bonnet, Managing Attorney).
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Before Quinn, Hairston and Bottorff, Administrative
Trademark Judges.
Opinion by Quinn, Administrative Trademark Judge:
VRBIA, Inc. filed an application to register the mark
NOT MADE IN FRANCE for “clothing: T-shirts, hats,
armbands, headbands, socks, jackets [and] scarves.”1
The trademark examining attorney refused registration
on the ground that applicant’s mark, if used in connection
with applicant’s goods, would be merely descriptive of them
under Section 2(e)(1) of the Trademark Act.2
1 Application Serial No. 78263738, filed June 18, 2003, alleging
a bona fide intention to use the mark in commerce.
2 In making the refusal, the examining attorney also put
applicant on notice that, if a statement of use were ever filed,
applicant might face an ornamentation or informational slogan
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78263738
2
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.3 An oral
hearing was not requested.
Applicant argues that the applied-for mark is not
merely descriptive of the goods, but rather is “irrelevant
to the associated goods, which are intended to be clothing
with good-natured humorous statements or icons (such as the
French flag in a universal “NO” symbol), regarding the
current condition of Franco-American relations.” (Brief,
p. 1). Applicant contends that, although it is possible
that the goods could be manufactured in France, the mark
does not immediately indicate any information about the
goods such as quality, function, feature or purpose.
Applicant further states that its mark is a “satirical
application of the country of origin label included on most
goods,” and that “the public would need to use imagination
refusal. Slogans that are considered to be merely informational
in nature are not registrable. See In re Remington Products
Inc., 3 USPQ2d 1714 (TTAB 1987) [PROUDLY MADE IN USA for electric
shavers held incapable of functioning as a mark].
3 Applicant, in its brief, notes that the only issue on appeal is
mere descriptiveness, and that the issues of geographical
descriptiveness or geographical misdescriptiveness were not
raised by the examining attorney. Indeed, the only issue before
us in this appeal is mere descriptiveness under Section 2(e)(1).
See TMEP §1210.02(c)(3d ed. rev. 2 2003)[when a geographic term
appears in a mark, the distinction of whether the mark should be
considered geographic or descriptive “can be a particularly
difficult one”]. See In re Boston Beer Co. L.P., 198 F.3d 1370,
53 USPQ2d 1056 (Fed. Cir. 1999).
Ser No. 78263738
3
to reach the conclusion that NOT MADE IN FRANCE is a
satirical use of the ubiquitous country of origin label
included in most goods.” According to applicant, “the
entire point of the obtaining protection for the mark NOT
MADE IN FRANCE is that the mark will attract goodwill
because it will be recognized as a humorous satire on the
country of origin label.” (Brief, p. 3).
In issuing the refusal, the examining attorney points
to applicant’s statement that “[a]lthough the Applicant
concedes that France is not likely to be the country of
origin for this clothing line, there is no reason that it
will not be.” The examining attorney thus concludes that
since applicant’s clothing likely will not originate in
France, the mark NOT MADE IN FRANCE is merely descriptive
of the clothing. That is, the mark describes clothing
manufactured or otherwise originating in nations other than
France. To the extent that the mark conveys a humorous
statement relating to the current decline in Franco-
American relations over the war in Iraq, the examining
attorney contends that this meaning is not discernable
without reference to other slogans or features on the
clothing, but which are not part of the mark. Assuming
that the mark will properly be used as a trademark on
clothing, the purchasing public, according to the examining
Ser No. 78263738
4
attorney, will not readily associate the mark with this
commentary on Franco-American relations. In support of the
refusal, the examining attorney submitted excerpts
retrieved from an electronic database showing uses of the
phrase “not made in France” in connection with products
originating anywhere other than France, as well as a page
from a third-party’s Internet web site.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act 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,
217-18 (CCPA 1978). A term need not immediately convey an
idea of each and every specific feature of the applicant’s
goods or services in order to be considered merely
descriptive; it is enough that the term describes one
significant attribute, function or property of the goods or
services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); and In re MBAssociates, 180 USPQ 338 (TTAB 1973).
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. That a term may have other
Ser No. 78263738
5
meanings in different contexts is not controlling. In re
Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
The record includes many excerpts showing uses of the
phrase “not made in France” to describe products having
their origins from somewhere other than France. The
examples submitted by the examining attorney show
descriptive uses of the phrase “not made in France” in
connection with a variety of products, including food,
wine, and artwork. Also of record is an excerpt from an
Internet web site offering for sale a t-shirt bearing a
message in support of the United States’ military efforts
in the Middle East. The advertisement indicates as
follows: “NOT made in France. Naturally!”
Based on the record before us, we find that the mark
sought to be registered is merely descriptive. As
applicant readily concedes, its clothing items likely will
not originate in France; thus, the phrase “not made in
France,” on its face, immediately describes this fact. The
mark immediately informs, without speculation or
conjecture, prospective customers that applicant’s goods
are not made in France.
Applicant’s principal argument is, of course, that the
average consumer will not perceive the mark as descriptive,
but rather that the consumer will view the mark as a
Ser No. 78263738
6
satirical or humorous play on the country of origin labels
applied to clothing. The argument essentially is that the
mark has a double entendre by virtue of the current state
of affairs in Franco-American relations.
Applicant’s main argument is not persuasive. As
pointed out by the examining attorney, the question of mere
descriptiveness is determined on the basis of the mark
itself, and not on the basis of intended usage with other
ornamental slogans, designs or icons. The proposed mark
fails, on its face, to produce the additional meaning
suggested by applicant. The effect of other indicia (that
might appear on the clothing) on consumer perceptions
cannot be considered in our determination of mere
descriptiveness. See In re Wells Fargo & Co., 231 USPQ 95
(TTAB 1986). In the absence of these other indicia, such
as the humorous sayings regarding Franco-American relations
to which applicant refers, we find it unlikely that the
average consumer will make the association suggested by
applicant. TMEP §1213.05(c) (3d ed. rev. 2 2003).
Decision: The refusal to register is affirmed.