Wai Kwong Wong

Trademark Trial and Appeal Board

Oct 20, 2005

No. 76395781 (T.T.A.B. Oct. 20, 2005)

10/19/05

THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE T.T.A.B.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

Trademark Trial and Appeal Board
_____________

In re Wai Kwong Wong
___________

Serial No. 76395781
____________

Maria V. Hardison of Tassan & Hardison.

Scott Oslick, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
_____________

Before Hanak, Quinn and Hairston, Administrative Trademark
Judges.

Opinion by Hanak, Administrative Trademark Judge:

Wai Kwong Wong (applicant) seeks to register in standard
character form DUCHESSE for “women’s clothing, namely,
dresses, pants, skirts, tops, jeans and shorts.” The intent-
to-use application was filed on April 9, 2002.
Citing Sections 2(e)(1) and 2(a) of the Trademark Act,
the Examining Attorney has refused registration on the basis
that applicant’s mark is both deceptively misdescriptive and
deceptive as applied to the goods for which applicant seeks
Ser. No. 76395781
2
registration. When the refusal to register was made final,
applicant appealed to this Board. Applicant and the
Examining Attorney filed briefs. Applicant did not request
an oral hearing.
To establish that a mark is deceptively misdescriptive
pursuant to Section 2(e)(1), a two-fold test must be met.
First, it must be shown that the mark misdescribes a
characteristic or quality of the relevant goods or services.
Second, it must also be shown that prospective purchasers are
likely to believe that the misdescription actually describes
the relevant goods or services.
In order for a mark to be held deceptive pursuant to
Section 2(a), not only must the foregoing two tests be
satisfied, but in addition, a third test must be satisfied,
namely, that the misdescription is likely to materially
affect the decision to purchase the relevant goods or
services. In re Budge Manufacturing Co. Inc., 857 F.2d 773,
8 USPQ2d 1259, 1261 (Fed. Cir. 1988); In re Berman Bros.
Harlem Furniture Inc., 26 USPQ2d 1514, 1515 (TTAB 1993).
We reverse the refusal to register because, at a
minimum, the Examining Attorney has failed to prove the
second part of the foregoing two and three part tests. In
other words, the Examining Attorney has failed to prove that
Ser. No. 76395781
3
prospective purchasers of women’s apparel are likely to
believe that the mark DUCHESSE actually describes women’s
clothing.
The record reveals that the word “duchesse” is an
obscure word with two distinct meanings. Applicant notes
that “duchesse” is the Middle English form of the word
“duchess” which is defined as “the wife or widow of a duke,”
or as “a woman who holds the rank of duke in her own right.”
Applicant cites the Merriam-Webster Online dictionary.
Applicant further points out that this online dictionary does
not have any other meaning for the word “duchesse.” This
Board has consulted its own dictionary which defines the word
“duchesse” as likewise being a Middle English form of the
word “duchess.” Webster’s New World Dictionary (2d ed.
1970). This second dictionary, like the Merriam Webster
OnLine dictionary, contains no other definition for the word
“duchesse.”
As applied to women’s clothing, the mark DUCHESSE,
meaning “duchess,” does not describe or misdescribe said
clothing. Rather, when viewed as but a variation of the word
“duchess,” the mark DUCHESSE is merely laudatory as applied
to women’s clothing suggesting that the clothing is fit for
nobility. In this sense, the mark DUCHESSE functions like
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4
the words “princess” or “queen” as applied to women’s
clothing.
The Examining Attorney has never contended that the mark
DUCHESSE, if understood to mean “duchess,” is deceptively
misdescriptive or deceptive as applied to women’s clothing.
Rather, it is the contention of the Examining Attorney that
the mark DUCHESSE has a second meaning which is not found in
dictionaries, and that this second meaning of the mark
DUCHESSE causes it to be deceptively misdescriptive and
deceptive as applied to women’s clothing. In this regard,
the Examining Attorney has made of record fewer than 25
articles and advertisements in which the word “duchesse” is
used to describe a type of satin or silk. For example, the
September 9, 2001 edition of the Pittsburgh Post-Gazette
contains a story which reads, in part, as follows: “Steve
Stolman’s clothes are known for fabulous fabrics … such as …
duchesse satin ballskirt ($350).” Another article appearing
in the March 18, 1995 edition of The New York Times makes
reference to “satin duchesse skirts.” The January 29, 1995
edition of The San Francisco Examiner contains the following
sentence: “She should probably go for a very clean shape,
very classical, in one fabric, like a duchesse satin.”
Ser. No. 76395781
5
The Examining Attorney’s evidence demonstrates that as
used to describe a type of fabric, the word “duchesse” is an
extremely obscure term. As previously noted, the Examining
Attorney made of record fewer than 25 articles and
advertisements using the word “duchesse” to describe a type
of fabric. Moreover, in all of the articles and
advertisements made of record by the Examining Attorney, the
word “duchesse” always appears in conjunction with the word
“satin” or, to a much lesser extent, the word “silk.” In not
one of the articles or advertisements made of record by the
Examining Attorney does the word “duchesse” stand alone.
Said word is always followed by, or in a very few cases,
preceded by the words “satin” or “silk.”
Applicant has conceded that his women’s clothing will
not contain “duchesse satin.” However, this does not mean
that applicant’s mark DUCHESSE is deceptively misdescriptive
or deceptive as applied to women’s clothing. Put quite
simply, the word “duchesse” is an extremely obscure term with
two distinct meanings. When viewed as an alternate spelling
of the word “duchess,” the mark DUCHESSE is not deceptively
misdescriptive or deceptive, and the Examining Attorney does
not contend otherwise. When used in this context, the mark
DUCHESSE is but a laudatory term as applied to women’s
Ser. No. 76395781
6
clothing, much like the words “princess” and “queen.” As
previously noted, the mark DUCHESSE suggests nobility.
Of course, the word “duchesse” has a second obscure
meaning, namely, to identify a particular type of satin.
However, even if we assume purely for the sake of argument
that in this context the word “duchesse” misdescribes women’s
clothing which does not contain duchesse satin, this does not
mean that the mark DUCHESSE is deceptively misdescriptive or
deceptive. Put quite simply, we find that, at a minimum, the
Examining Attorney has simply failed to prove the second part
of the test(s) for establishing that a mark is deceptively
misdescriptive or deceptive. To elaborate, the Examining
Attorney has failed to prove that prospective purchasers of
women’s clothing would understand the word “duchesse,”
standing alone, as indicating the fabric content of the
clothing. As previously noted, all of the Examining
Attorney’s evidence shows that when the word “duchesse” is
used to indicate a type of fabric, it is always used in
proximity to the words “satin” or “silk.” There is simply no
evidence in the record that the word “duchesse” is ever used
by itself to indicate the fabric content of women’s clothing.
Moreover, to the extent that a small number of
purchasers of women’s clothing may understand the word
Ser. No. 76395781
7
“duchesse,” they are just as likely to view it as an
alternate form of the word “duchess” as they are to view it
as indicating a type of satin or silk. As stated before, the
Examining Attorney has never contended that if the word
“duchesse” were understood to mean “duchess,” that the mark
DUCKESSE would be either deceptively misdescriptive or
deceptive as applied to women’s clothing.
Decision: The refusal to register is reversed.