This Opinion is not a
Precedent of the TTAB
Mailed: March 23, 2017
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
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In re Wildlife Friendly Enterprise Network
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Serial No. 86694394
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Betsy P. Bengtson and Larry H. Tronco, Holland & Hart LLP,
for Wildlife Friendly Enterprise Network.
Elizabeth N. Kajubi, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
_____
Before Kuhlke, Hightower, and Heasley,
Administrative Trademark Judges.
Opinion by Hightower, Administrative Trademark Judge:
Applicant Wildlife Friendly Enterprise Network seeks registration of the
certification mark shown below:
Serial No. 86694394
2
for (as amended):
“honey; tea; field crops, namely, coffee, corn, potatoes;
handicrafts, namely, baskets, home and fashion
accessories, wooden carvings; mushrooms,” in Class A; and
“hotel services, hospitality services, tour operator services,
travel agency services, tourism services, transportation
services, park operations, hotels, lodges, recreational
parks,” in Class B.1
The application has the following certification statement (also as amended):
The certification mark, as used or intended to be used by
persons authorized by the certifier, certifies or is intended
to certify that the goods and services will be grown,
rendered, handled, delivered and processed in accordance
with ecological and conservation farming and sustainable
tourism guidelines and standards.
Applicant has disclaimed CERTIFIED, but the Examining Attorney has refused
registration pursuant to Section 6(a) of the Trademark Act, 15 U.S.C. § 1056(a), based
on Applicant’s failure to comply with an Office requirement to disclaim CERTIFIED
GORILLA FRIENDLY on the ground that the wording is merely descriptive of the
identified goods and services in relation to Applicant’s certification activities within
the meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1).
After the refusal was made final, Applicant appealed and requested
reconsideration, which was denied. The appeal then resumed.
We affirm the refusal to register.
1 Application Serial No. 86694394 was filed on July 15, 2015, based on Applicant’s allegation
of a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15
U.S.C. § 1051(b). The description of the mark states: “The mark consists of the words
‘CERTIFIED GORILLA FRIENDLY’ stacked upon each other in all caps. The word
‘CERTIFIED’ is written in a shaded box. The words appear above an image of an adult gorilla
and a baby gorilla inside a shaded box. The entire logo is outlined by a rough line forming a
rectangle.” Color is not claimed as a feature of the mark.
Serial No. 86694394
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A. Evidentiary Objections
The Examining Attorney objects that the new evidence attached to Applicant’s
appeal brief is untimely submitted and asks that we disregard it, citing Trademark
Rule 2.142(d), 37 C.F.R. § 2.142(d), among other authorities. The evidence consists of
what appears to be an entry for “gorilla” from Encyclopedia.com2 and an article from
Wikipedia.com titled “Gorilla,”3 portions of which also were submitted by Applicant
with its request for reconsideration.4 Applicant responds to the objection as follows:
The Examining Attorney claims Wikipedia entries
submitted by the Applicant in its Appeal Brief to
corroborate the incongruous meaning of GORILLA
FRIENDLY are untimely because the complete entries
were not submitted earlier. This is wrong. The Board can
consider evidence taken from Wikipedia so long as the non-
offering party has an opportunity to rebut that evidence by
submitting other evidence that may call into question the
accuracy of the particular Wikipedia information. In re IP
Carrier Consulting Grp., 84 U.S.P.Q.2d 1028, 1032–33
(T.T.A.B. 2007).5
Applicant misconstrues the nature of the Examining Attorney’s objection.
Trademark Rule 2.142(d) provides: “The record in the application should be complete
prior to the filing of an appeal. Evidence should not be filed with the Board after the
filing of a notice of appeal.” We sustain the Examining Attorney’s objection to the
extent that we have given no consideration to the portions of the Wikipedia.com
article submitted for the first time with Applicant’s appeal brief. See, e.g., In re Jimmy
2 9 TTABVUE 12, displaying the source The Columbia Encyclopedia (6th ed.) and the URL
http://www.encyclopedia.com/plants-and-animals/animals/vertebrate-zoology/gorilla.
3 9 TTABVUE 13-24.
4 August 18, 2016 Request for Reconsideration at TSDR 5-6, 4 TTABVUE 8-9.
5 Reply Brief at 2, 12 TTABVUE 3.
Serial No. 86694394
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Moore LLC, 119 USPQ2d 1764, 1767 (TTAB 2016). The Board, however, may take
judicial notice of evidence from encyclopedias and other standard reference works,
including entries from online dictionaries and encyclopedias that exist in printed
format. In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1087 n.3 (TTAB 2016); TBMP
§ 1208.04 (Jan. 2017). We exercise our discretion to take judicial notice of the entry
from Encyclopedia.com attached to Applicant’s appeal brief.
The Examining Attorney also observes that Applicant references in its appeal
brief three other registrations it owns, but did not make the underlying registrations
of record. Applicant responds that these registrations were included in a list
submitted with its request for reconsideration, and argues that the Examining
Attorney waived objection by failing to raise this issue in her reconsideration letter.
Applicant did not refer to these registrations until its request for reconsideration,
which was denied, and the Examining Attorney was not required to advise Applicant
of the insufficiency because it was too late to cure. See In re Lorillard Licensing Co.,
99 USPQ2d 1312, 1314-15 n.3 (TTAB 2011); TBMP § 1207.03 (Jan. 2017). Even were
we to consider these references, the only information we could consider, “for whatever
limited probative value such evidence may have,” would be the marks and
registration numbers provided by Applicant.6 In re Houston, 101 USPQ2d 1534, 1536
(TTAB 2012), aff’d, 731 F.3d 1326, 108 USPQ2d 1226 (Fed. Cir. 2013) (quotation
omitted). The underlying registrations are not of record, and Applicant has not
established that they comprise the word “friendly” without disclaimer.
6 See 4 TTABVUE 25.
Serial No. 86694394
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B. Disclaimer Requirement
A requirement under Trademark Act Section 6 for a disclaimer of unregistrable
matter in a mark is appropriate when that matter is merely descriptive of the goods
or services at issue. See In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089
(Fed. Cir. 2005). Merely descriptive or generic terms are unregistrable under
Trademark Act Section 2(e)(1), and therefore are subject to a disclaimer requirement
if the mark is otherwise registrable. Failure to comply with a disclaimer requirement
is a ground for refusal of registration. See In re La. Fish Fry Prods., Ltd., 797 F.3d
1332, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015); In re RiseSmart Inc., 104 USPQ2d
1931, 1933 (TTAB 2012). Pursuant to Sections 4 and 45 of the Act, 15 U.S.C. §§ 1054
and 1127, certification marks are used to certify various characteristics of goods and
services of others and are subject to the provisions relating to the registration of
trademarks. The standards used to consider mere descriptiveness of and disclaimer
requirements for trademarks and service marks are applicable to certification marks.
In re Nat’l Ass’n of Legal Sec’ys (Int’l), 221 USPQ 50, 52 (TTAB 1983); TMEP
§ 1306.04 (Jan. 2017).
The Examining Attorney alleges that the literal portion of Applicant’s mark,
CERTIFIED GORILLA FRIENDLY, is merely descriptive of the identified goods and
services in connection with Applicant’s certification activities. A term is merely
descriptive within the meaning of Section 2(e)(1) if it immediately conveys knowledge
of an ingredient, quality, characteristic, function, feature, purpose, or use of the goods
or services with which it is used. See, e.g., In re Chamber of Commerce of the U.S.,
675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Gyulay, 820 F.2d 1216,
Serial No. 86694394
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3 USPQ2d 1009, 1009 (Fed. Cir. 1987). Whether a particular term is merely
descriptive must be determined not in the abstract, but in relation to the goods or
services for which registration is sought, the context in which the mark is used, and
the possible significance that the mark is likely to have to the average purchaser
encountering the goods or services in the marketplace. See In re Abcor Dev. Corp.,
588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); Couch/Braunsdorf Affinity, Inc. v.
12 Interactive, LLC, 110 USPQ2d 1458, 1473 (TTAB 2014); In re Remacle, 66 USPQ2d
1222, 1224 (TTAB 2002). In other words, the issue is whether someone who knows
what the goods or services are will understand the mark to convey information about
them. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1512 (TTAB 2016).
As noted supra, Applicant’s mark is proposed to certify goods and services “grown,
rendered, handled, delivered and processed in accordance with ecological and
conservation farming and sustainable tourism guidelines and standards”; the goods
to be certified identified in the application are “honey; tea; field crops, namely, coffee,
corn, potatoes; handicrafts, namely, baskets, home and fashion accessories, wooden
carvings; mushrooms”; and the recited services are “hotel services, hospitality
services, tour operator services, travel agency services, tourism services,
transportation services, park operations, hotels, lodges, recreational parks.”
Among the evidence submitted by the Examining Attorney is:
• A definition of “gorilla” meaning: “a very large typically black-colored
anthropoid ape (Gorilla gorilla) of equatorial Africa that has a stocky
body with broad shoulders and long arms and is less erect and has
smaller ears than the chimpanzee.”7
7 November 1, 2015 Office action at TSDR 2 (from merriam-webster.com/dictionary/gorilla).
Serial No. 86694394
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• Definitions of “friendly” as: “serving a beneficial or helpful purpose” and
“COMPATIBLE, ACCOMMODATING —often used in combination
”8
• Pages from Applicant’s website describing the initiative to be offered
under its certification mark as aiming “to recognize and reward tourism
facilities and operators that do the right thing for gorillas and people
through voluntary eco-labelling.”9
• A reference to “gorilla-friendly development projects” in the “Gorilla”
factsheet on the Primate Info Net Library and Information Service,
National Primate Research Center, University of Wisconsin–Madison.10
• A similar or identical quote referencing “gorilla-friendly development
projects” in a blog titled “Why Gorillas are Critically Endangered, and
What[’]s Being Done to Protect Them.”11
• An October 2006 feature in the SGI Quarterly, “A Buddhist Forum for
Peace, Culture and Education,” discussing campaigns to manufacture
“‘gorilla-friendly’ products.”12
These dictionary definitions and uses demonstrate that consumers understand
the phrase “gorilla friendly” to convey information about a feature of the goods and
services certified by Applicant: that they are beneficial to, helpful to, compatible with,
or accommodating of gorillas. “Gorilla friendly” embodies a common construction with
readily recognized significance, as reflected in the examples in the second definition
of “friendly,” i.e., “environmentally friendly packaging” and “a kid-friendly
restaurant.” The phrase “gorilla friendly” is merely descriptive in this context and
therefore must be disclaimed.
8 Id. at TSDR 8 (from merriam-webster.com/dictionary/friendly).
9 February 18, 2016 Final Office Action at TSDR 60 (from wildlifefriendly.org/gorilla-friendly-
tourism/).
10 September 8, 2016 Reconsideration Letter at TSDR 117 (from pin.primate.wisc.edu/
factsheets/entry/gorilla/cons).
11 February 18, 2016 Final Office Action at TSDR 56 (cached pages from a post on nikela.org
dated December 8, 2015).
12 Id. at TSDR 63 (from sgiquarterly.org/feature2006Oct-6.html).
Serial No. 86694394
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Applicant makes four arguments that the wording is not descriptive:
1. GORILLA FRIENDLY does not have any meaning that is recognized or
well-understood by the public.
2. GORILLA FRIENDLY “is ambiguous when applied to Applicant’s goods
and services and could mean many different things to different
consumers.”
3. The terms GORILLA and FRIENDLY are incongruous and therefore not
merely descriptive.
4. Other FRIENDLY marks have been registered without disclaimer.13
Applicant’s arguments are unavailing. First, it is well-established that a term may
be merely descriptive even if Applicant is the first or only user of it. See In re Fat Boys
Water Sports, 118 USPQ2d at 1514; In re Nat’l Shooting Sports Found., Inc., 219
USPQ 1018, 1020 (TTAB 1983). A phrase need not be “widely understood”14 in order
to be merely descriptive.
With respect to Applicant’s second argument, based on the dictionary definitions
of record, we find that consumers would immediately understand GORILLA
FRIENDLY to convey that the goods and services subject to Applicant’s certification
mark are deemed to be beneficial to, compatible with, or accommodating of gorillas.
A mark need not immediately convey an idea of each and every specific feature of the
services in order to be considered merely descriptive; it is enough if it describes one
significant attribute, function or property of the services. See In re Gyulay, 3 USPQ2d
at 1010; In re Fat Boys Water Sports, 118 USPQ2d at 1512. “‘The question is not
13 Appeal Brief at 2, 9 TTABVUE 3.
14 Id. at 3, 9 TTABVUE 4.
Serial No. 86694394
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whether someone presented with only the mark could guess what the goods or
services are. Rather, the question is whether someone who knows what the goods and
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, 1316-17
(TTAB 2002)).
We also are not persuaded by Applicant’s third argument. Considered in the
context of the mark as a whole and the identified goods and services, the wording
GORILLA FRIENDLY presents no incongruity. Regardless whether gorillas at times
behave aggressively toward one another15 and are “not generally portrayed in media
as warm and loveable animals,”16 there is no incongruity in certifying that certain
goods and services are provided “in accordance with ecological and conservation
farming and sustainable tourism guidelines and standards” – that is, that they are
beneficial, accommodating, or “friendly” to gorillas. The physical capabilities and
social habits of gorillas are not relevant. The combination of the descriptive terms
“gorilla” and “friendly” evokes no new and unique commercial impression; rather,
each component merely retains its descriptive significance in relation to Applicant’s
certification activities, forming a composite that is merely descriptive as a whole. See,
e.g., In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir.
2004); In re Positec Grp. Ltd, 108 USPQ2d 1161, 1162-63 (TTAB 2013).
15 See August 18, 2016 Request for Reconsideration at TSDR 6, 4 TTABVUE 9 (excerpt from
Wikipedia.org article).
16 Appeal Brief at 6, 9 TTABVUE 7.
Serial No. 86694394
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Finally, we address Applicant’s argument that other marks comprising
FRIENDLY have been registered without disclaimer of that term. Third-party
registrations featuring the same or similar goods or services are probative evidence
on the issue of descriptiveness where the relevant term is disclaimed, registered
under Trademark Act Section 2(f), 15 U.S.C. § 1052(f), based on a showing of acquired
distinctiveness, or registered on the Supplemental Register. Sweats Fashions Inc. v.
Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1797 (Fed. Cir. 1987); In re Box
Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006); In re Finisar Corp., 78 USPQ2d
1618, 1621 (TTAB 2006), aff’d per curiam, 223 Fed. Appx. 984 (Fed. Cir. 2007).
The Examining Attorney submitted printouts of 42 existing third-party
registrations incorporating the word FRIENDLY that either disclaim that word, are
registered on the Supplemental Register, or issued with a claim of acquired
distinctiveness pursuant to Trademark Act Section 2(f).17 Perhaps most relevant
among these are the following certification mark registrations (with goods, services,
and certification statements paraphrased), all registered on the Principal Register
except the second mark listed:
1. (Registration No. 3092532), with a claim of acquired
distinctiveness as to BIRD FRIENDLY, certification mark for coffee
produced from plantations with a diversity of shade trees conforming to
cultivation, production, processing and marketing standards.
17 February 18, 2016 Final Office Action at TSDR 13-52; September 8, 2016 Reconsideration
Letter, at TSDR 2-107.
Serial No. 86694394
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2. CAT FRIENDLY PRACTICE (Registration No. 4255567), registered on the
Supplemental Register in standard characters and with PRACTICE
disclaimed, certification mark for veterinary services meeting operational
standards for feline care.
3. (Registration No. 4291456), with CAT FRIENDLY PRACTICE
disclaimed, certification mark for veterinary services meeting operational
standards for feline care.
4. (Registration No. 4461457), with CAT FRIENDLY
PRACTICE disclaimed, certification mark for veterinary services meeting
operational standards for feline care.
5. (Registration No. 2516238), with ELDER FRIENDLY
disclaimed, certification mark for compliance with standards for
commercial establishments serving the age 50+ consumer market.
6. (Registration No. 4330158), with in relevant part a 2(f) claim
as to CERTIFIED ASTHMA & ALLERGY FRIENDLY, certification mark
for goods that have been tested regarding allergen and irritant particle
removal and reduction.
7. (Registration No. 3431647), with ASTHMA FRIENDLY
disclaimed, certification mark for toys, pillows, and bedding and accessories
that meet prescribed standards.
Serial No. 86694394
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8. (Registration No. 3850680), with all wording disclaimed,
certification mark for foods and beverages.
9. CAFB CERTIFIED AGE-FRIENDLY BUSINESS (Registration
No. 4092708), in standard characters and with CERTIFIED AGE-
FRIENDLY BUSINESS disclaimed, certification mark for consultation and
assistance to senior citizens regarding financial, medical and social issues
that specifically affect senior citizens.
10. (Registration No. 4562216), with APPROVED FOOD PRODUCT
and FODMAP FRIENDLY disclaimed, certification mark for various foods,
beverages, and dietary supplements.
11. (Registration No. 4214412), with MEETS INTERNATIONAL
WATER QUALITY COUNCIL STANDARDS and CERTIFIED
WATERSHED FRIENDLY disclaimed, certification mark for real property,
goods, and services meeting standards for watershed quality optimization
and helping reduce water pollution runoff.
Applicant, in turn, submitted copies of eight third-party registrations from which
the term FRIENDLY was not disclaimed, including one certification mark: BABY-
FRIENDLY (Registration No. 4566897), registered on the Principal Register without
disclaimer for “Maternal breastfeeding support and education,” with the following
certification statement:
The certification mark, as used by entities authorized by
the certifier, certifies that the hospital, maternity center or
health care facility complies with standards implementing
the Baby-Friendly Hospital Initiative by, among other
requirements, not accepting free or low cost breast milk
Serial No. 86694394
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substitutes and by implementing the Ten Steps to
Successful Breastfeeding program to provide an optimal
environment for breastfeeding mothers.18
Although it appears that “-friendly” formative marks often have been treated as
merely descriptive by the Office, the third-party registrations do not determine the
outcome here. A decision to allow another application is not controlling. See, e.g., In
re Omega SA, 494 F.3d 1362, 83 USPQ2d 1541, 1544 (Fed. Cir. 2007). Rather, the
Board must assess each mark on its own facts and record. In re Nett Designs Inc., 236
F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations
had some characteristics similar to [Applicant’s] application, the PTO’s allowance of
such prior registrations does not bind the Board or this court.”); see also In re Rodale
Inc., 80 USPQ2d 1696, 1700 (TTAB 2006) (“Although consistency in examination is a
goal of the Office, the decisions of previous Trademark Examining Attorneys are not
binding on us, and we must decide each case based on the evidence presented in the
record before us.”). The evidence in this case establishes that the phrase “gorilla
friendly” is merely descriptive in association with Applicant’s certification activities
for the identified goods and services, and therefore must be disclaimed.
C. Conclusion
We have carefully considered all arguments and evidence of record, including any
not specifically discussed. We conclude that GORILLA FRIENDLY is merely
descriptive of the identified goods and services in relation to Applicant’s certification
activities and must be disclaimed pursuant to Trademark Act Section 6(a).
18 August 18, 2016 Request for Reconsideration at TSDR 7-19, 4 TTABVUE 10-22.
Serial No. 86694394
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Decision: The refusal to register Applicant’s mark in the absence of a disclaimer
of CERTIFIED GORILLA FRIENDLY under Section 2(e)(1) is affirmed.
However, this decision will be set aside if, within thirty days of the mailing date
of this order, Applicant submits to the Board the required disclaimer of CERTIFIED
GORILLA FRIENDLY. See In re Country Music Ass’n Inc., 100 USPQ2d 1824, 1835
(TTAB 2011); Trademark Rule 2.142(g), 37 C.F.R. § 2.142(g); TBMP § 1218 (Jan.
2017). The disclaimer should be worded as follows: “No claim is made to the exclusive
right to use ‘CERTIFIED GORILLA FRIENDLY’ apart from the mark as shown.”
TMEP § 1213.08(a)(i) (Jan. 2017).