Walletshots, LLC

Trademark Trial and Appeal Board

Mar 27, 2008

No. 78641291 (T.T.A.B. Mar. 27, 2008)

Mailed: March 27, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Walletshots, LLC
________

Serial No. 78641291
_______

Deborah S. Shepherd of Knobbe, Martens, Olson & Bear for
applicant.

Robert J. Struck, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Seeherman, Mermelstein, and Bergsman, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

Walletshots, LLC seeks registration on the Principal
Register of the mark WALLETSHOTS1 (standard characters) for
“durable photographic prints in the form of cards and
durable photographic prints in the form of cards containing
magnets,” in International Class 16 (as amended).
Registration has been finally refused on the ground that
the mark as used on the identified goods is merely
descriptive. Trademark Act § 2(e)(1); 15 U.S.C.

1 Serial No. 78641291, filed June 1, 2005, alleging a bona fide
intention to use the mark in commerce.
THIS DECISION IS NOT
A PRECEDENT OF THE TTAB
Serial No. 78641291

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§ 1052(e)(1). Applicant and the examining attorney have
filed briefs. We affirm.
I. Applicable Law
A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
function, feature or purpose of the goods with which it is
used. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Cir. 1987). Whether a particular term is merely
descriptive is determined in relation to the products for
which registration is sought and the context in which the
term is 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). In other words, the issue is whether someone
who knows what the products are will understand the mark to
convey information about them. In re Tower Tech, Inc., 64
USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent &
Trademark Serv. Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In
re Home Builders Ass’n of Greenville, 18 USPQ2d 1313, 1317
(TTAB 1990); In re Am. Greetings Corp., 226 USPQ 365, 366
(TTAB 1985).
“On the other hand, if one must exercise mature
thought or follow a multi-stage reasoning process in order
to determine what product or service characteristics the
Serial No. 78641291

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term indicates, the term is suggestive rather than merely
descriptive.” In re Tennis in the Round, Inc., 199 USPQ
496, 497 (TTAB 1978); see also In re Shutts, 217 USPQ 363,
364-365 (TTAB 1983); In re Universal Water Sys., Inc., 209
USPQ 165, 166 (TTAB 1980). Even where individual terms are
descriptive, combining them may evoke a new and unique
commercial impression. If each component retains its
merely descriptive significance in relation to the goods,
without the combination of terms creating a unique or
incongruous meaning, then the resulting combination is also
merely descriptive. In re Tower Tech., 64 USPQ2d at 1317-
1318.
II. Record on Appeal
The examining attorney submitted the following
evidence:
• Web pages indicating use of the term “wallet shots”:

1. Reader comment:

“Are you getting paid well enough for your
talents? I just don’t think you are because of
your $15 wallet shots. Correct me if I am
wrong.”

Marilyn Jenett, Ryze Business Networking, www.-
ryze.com (Aug. 7, 2006).

2. Her Voice, Cover Story, Brittany Wylie, From Moo-
Claw to the Fur Ball

“She lists Abbey’s tricks and her talent for
sensing Hoch’s moods, and flips through wallet
Serial No. 78641291

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shots of Abbey at professional sittings like
she’s showing off her fifth child.”

www.hervoicenebraska.com/stories/090104/cov_-
mooclawgal01.shtml (Aug. 7, 2006).

3. Advertisement for Andrea Hazel Photography,
Charleston, SC:

“100 – color wallet shots of bride and groom to
include in your thank-you notes (one pose)....”

URL not provided.

• Definition of “shot”:

12. a. A photographic view or exposure: got a good
shot of that last model.
b. A developed photographic image.

AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (4th ed.
2000)(online version).

• Copies of pages from applicant’s website.
http://walletshots.ecommerce-checkout.com (Feb. 6,
2007).

Applicant submitted the following evidence in support
of registration:
• Yahoo search results (first 30 out of approximately
133 “hits”) from a search for the phrase “wallet-
sized photographs.”

• Pages from applicant’s web site generally discussing
the identified goods.

• Dictionary Definitions:

o wal·let ... 1: a bag for carrying miscellaneous
articles while traveling

2 a: a folding pocketbook with compartments for
personal papers and usually unfolded paper
money ... b: a container that resembles a money
Serial No. 78641291

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wallet: as (1): a usually flexible folding case
fitted for carrying specific items (as tools or
fishing flies) (2): FOLDER

o shot ... 1a: an action of shooting b: a
directed propelling of a missile... c: a stroke
or throw in an attempt to score points in a
game ...
2 a: something propelled by shooting ... b: a
metal sphere of iron or brass that is heaved in
the shot put
3 a: the distance that a missile is or can be
thrown b: RANGE, REACH
4: a charge to be paid ...
5: one that shoots ...
6 a: ATTEMPT, TRY b: GUESS, CONJECTURE c:
CHANCE d: a single appearance as an entertainer
7: an effective remark
8a: a single photographic exposure; especially:
SNAPSHOT b: a single sequence of a motion
picture or television program shot by one
camera without interruption
9: a charge of explosives
10 a: a small measure or serving ...
11 shot plural: SPRINKLES, JIMMIES ...

The Merriam-Webster On-line Dictionary was cited as
the source for both dictionary definitions submitted by
applicant in its response to the first Office action.
Although applicant did not supply copies of the definitions
in question, the examining attorney did not object to them,
and in fact relies on them. We accordingly treat them as
part of the record.
Applicant included an image of its product in its
brief. This material was not submitted prior to appeal,
and will not be considered. Trademark Rule 2.142(d).
Serial No. 78641291

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III. Descriptiveness under Trademark Act § 2(e)(1)
The examining attorney’s position is simple:
The term WALLET is defined as “a folding
pocketbook with compartments for personal papers
and usually unfolded paper money.” The term
WALLET is commonly used to describe a size of
photographs intended to be stored in a person’s
wallet or pocketbook. The term SHOT is commonly
defined as “A photographic view or exposure” or
“A developed photographic image.”

Here it is logical to conclude that the
applicant is using the combination of terms to
inform potential customers that it is selling
developed photographic images that are intended
to be stored in a person’s wallet. Indeed, the
applicant’s advertising states, “Slides right
into your wallet....”

Ex. Att. Br at 3-4.
In response, applicant argues that
[c]learly, applicant’s goods are not “used to
display and/or hold wallet-sized photographs”[2]
which have a clearly recognized size and shape of
approximately 2x3 inches and are printed on
photographic paper.

As mentioned above, the standard wallet-
sized photograph is approximately 2 inches by 3
inches. Applicant’s goods are neither wallet-
sized nor are they printed on photographic paper.

2 Applicant focuses here on an argument made by the examining
attorney earlier in prosecution, prior to applicant’s adoption of
its current identification of goods. At the time, the
identification included “pouches for holding photographic cards.”
The examining attorney argued that “applicant’s goods are used to
display and/or hold wallet-sized photographs, or ‘wallet shots.’”
Final Office Action at 3. That line of argument appears to have
been abandoned after applicant adopted the current identification
and provided pages from its website. See Office Action, Feb. 26,
2007 (accepting amendment but continuing § 2(d) refusal)(“refusal
is maintained because the goods are in fact, wallet shots as
stated in the mark”).
Serial No. 78641291

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Rather, Applicant’s goods are credit-card sized
photographic cards, which are much larger than
wallet-sized photographs. Moreover, Applicant’s
photographic cards have a thickness similar to
that of a credit card. Applicant’s goods can
also be larger to be used as a luggage tag. In
short, Applicant’s goods are photographic cards
which are thick and hard, not wallet-sized
photographs printed on very thin photographic
paper. Applicant’s goods are clearly not wallet-
sized photographs. As such, the mark WALLETSHOTS
cannot be considered merely descriptive of
Applicant’s goods.

Appl. Br. at 2-3.
The evidence submitted by the examining attorney (and
by the applicant) demonstrates that a “wallet” is, among
other things, a small purse commonly carried to hold money,
cards, and other papers and that the word “shot” can be
used to refer to a photographic print. While both words
have a number of other meanings, it is well-settled law
that the meaning or connotation of a trademark must be
judged with reference to the identified goods, and not in a
vacuum. In this context, “wallet” and “shot” have meanings
of particular significance to these goods, and it is
therefore those meanings which are relevant to our
analysis.3

3 Applicant’s rhetorical questions on the meaning of the mark
(“[W]hat exactly are WALLETSHOTS? ... Are they actual pictures of
a wallet? Is it a new type of game? Is it related to a jigger
or a shot of alcohol? Does it relate to the use of a gun? Is it
a compact pocketbook?” Response to Office action June 23, 2006)
are irrelevant because they assume the point of view of one with
no idea of what the goods are. As noted above, the question is
Serial No. 78641291

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Applicant’s argument that its mark is not descriptive
because it does not refer to “wallet-sized photographs” is
misplaced. Applicant contends that a “wallet-sized
photograph” has a specific meaning in the field of
photography, namely that they are photographs with “a
clearly recognized size and shape of approximately 2 x 3
inches and are printed on photographic paper.”
To begin with, applicant’s mark is WALLETSHOTS, not
“wallet-sized,” and the question at hand is whether
applicant’s mark has a descriptive meaning with respect to
the identified goods, and not with respect to any other
goods such as the kind of photographs which are
traditionally made to be carried in wallets. As applicant
notes, its goods are a new product, unlike traditional
wallet photographs in many respects. Thus, applicant’s
argument that photographers often use terms like “wallet-
sized photographs” to refer to these traditional products,4
and that there is a strict industry-standard format for

not what a mark might mean to someone in isolation, but what the
mark may mean in connection with the goods.
4 Applicant apparently relies on its Yahoo search engine results
list for this proposition. Such lists are of very little
probative value. They do not necessarily reflect the way a term
is used on the webpage itself, nor do they show use of a
particular term in meaningful context. In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828 (Fed. Cir.
2007); In re Fitch IBCA Inc., 64 USPQ2d 1058, 1060 (TTAB 2002).
Serial No. 78641291

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such photographs,5 are beside the point. To the extent that
the examining attorney has used “wallet sized” or similar
terms to describe applicant’s goods, we understand that
reference to mean nothing more than that applicant’s goods
are of a size which will easily be fit into a wallet.
The evidence from applicant’s website is instructive.
As can be seen from applicant’s advertising, applicant’s
goods are described as cards approximately the shape and
thickness of a credit card onto which photographs are
printed or affixed. The result is a durable picture which
not only can, but is intended to fit inside of a wallet.
The relevance of the word
“wallet” to applicant’s goods
could hardly be clearer, given
a picture on the web page of
an open wallet in which a
number of cards have been
placed, including what appears
to be a card-sized photograph
of two attractive children.
It is in light of this

5 Applicant argues that its goods are “much larger” than a
standard wallet-sized photograph, which applicant argues is 2” x
3”. In fact, applicant’s web site indicates that its goods are
not that much larger: 2⅛” x 3⅜.”
Serial No. 78641291

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understanding of the
nature of the goods that
we must consider whether
the mark is descriptive.
While “wallet”
clearly has other meanings in different contexts, we agree
with the examining attorney that the term wallet would be
readily understood to refer to a “pocketbook with
compartments for personal papers and usually unfolded paper
money,” as defined in the record. Most adults – including
applicant’s potential purchasers – are undoubtedly familiar
with such an item, and likely carry one on a daily basis.
Likewise, “shot” is a common term for a photograph or a
photographic print. It takes no leap of imagination or
multi-stage reasoning to conclude, as the examining
attorney argues, that “the applicant is using the
combination of terms to inform potential customers that it
is selling developed photographic images that are intended
to be stored in a wallet.”
Applicant points out that “walletshots” is not in the
dictionary, and that the examining attorney has provided
only two examples (there were actually three) of use of the
term “wallet shots” by the public, arguing that “[t]his is
not sufficient evidence to show that consumers in general
Serial No. 78641291

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would recognize this term to mean a wallet-sized
photograph.” We agree that this evidence might be
insufficient if the examining attorney were required to
show that the term “wallet shot” or “walletshot” is
currently understood and in wide use by the relevant
public. But there is no such requirement. While evidence
of widespread use of a descriptive term provides strong
support for a refusal, the mere fact that there are few –
or no – other users of a term does not require reversal if
the evidence shows that the mark will be understood as
descriptive of the goods. In re Nat’l Shooting Sports
Found. Inc., 219 USPQ 1018, 1020 (TTAB 1983).
Likewise, the fact that a compound word mark is not
found in the dictionary does not mean that it is not
descriptive, In re Orleans Wines, Ltd., 196 USPQ 516, 517
(TTAB 1977), or even generic, In re Gould Paper Corp., 834
F.2d 1017, 5 USPQ2d 1110, 1112 (Fed. Cir. 1987) (compound
word may be found generic based on dictionary definitions
of its elements).
Here, the examining attorney contends that the
combination of “wallet” and “shots” is no less descriptive
than its descriptive constituents, and we agree. The
combined term WALLETSHOTS would readily be perceived by
consumers as merely the words “wallet” and “shots” run
Serial No. 78641291

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together. This mark immediately tells consumers that the
goods are shots or photographs of a size that can be put in
a wallet. The fact that the mark does not also convey
information about other characteristics of the goods —
e.g., that the photographs are on plastic — is of no
moment. A mark need not describe every characteristic of a
product in order to be found merely descriptive.
V. Conclusion
After careful consideration of the evidence and
argument of record, we conclude that applicant’s mark,
WALLETSHOTS, is merely descriptive of a feature, function,
or characteristic of “durable photographic prints in the
form of cards and durable photographic prints in the form
of cards containing magnets.” Registration is accordingly
barred under Trademark Act § 2(e)(1).
Decision: The refusal to register is accordingly
affirmed.