World of Denim, Inc.

Trademark Trial and Appeal Board

May 19, 1999

No. 75152222 (T.T.A.B. May. 19, 1999)

Paper No. 9
DEB
THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB MAY 19, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re World of Denim, Inc.
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Serial No. 75/152,222
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William M. Hobby, III of Hobby & Beusse for World of Denim,
Inc.
Andrew Roppel, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______
Before Cissel, Chapman and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
World of Denim, Inc. filed an application for
registration of the mark “DENIM PLACE” for “retail clothing
store services.”1 Applicant disclaimed the word “DENIM”
apart from the mark as shown.

1 Serial No. 75/152,222, in International Class 35, filed
April 19, 1996, based upon an allegation of a bona fide intention
to use the mark in commerce.
Ser No. 75/152,222
2
The Trademark Examining Attorney issued a final
refusal to register based upon Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052(e)(1), on the ground that if
applicant's proposed mark “DENIM PLACE” were used on these
retail clothing store services, it would be merely
descriptive of applicant’s services.
Applicant has appealed the final refusal to register.
Briefs have been filed, but applicant did not request an
oral hearing. We affirm the refusal to register.
A mark is unregistrable under Section 2(e)(1) of the
Trademark Act as merely descriptive of the services with
which it is used if it immediately and forthwith conveys
information about the characteristics, features or
functions of those services. See 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 (CCPA 1978).
Accordingly, the Trademark Examining Attorney contends that
inasmuch as some items of clothing sold in applicant’s
store will be made of denim, this word would be descriptive
of retail clothing store services. Since the word “place”
is defined in Webster’s II New Riverside University
Dictionary, inter alia, as “…a business establishment…,”
the Trademark Examining Attorney contends that this word

Ser No. 75/152,222
3
too is descriptive of applicant’s services. He takes the
position that the combination of these two descriptive
words creates nothing new or incongruous. To the contrary,
the Trademark Examining Attorney contends that as applied
to the services recited in the application, joining these
two words actually further enhances the descriptive meaning
of each word considered alone. Finally, the Trademark
Examining Attorney points to numerous third-party federal
registrations where the term “place” is disclaimed because
it is descriptive of retail business establishments.
Applicant argues that it “… will sell a wide variety
of clothing, and not just clothing made of denim material…”
Applicant concedes that the word “place” is “ … sometimes
used to refer to a business … but PLACE is not used in this
context in the present mark.” Applicant also argues
without further elaboration that the “… combination of the
words DENIM and PLACE juxtaposes the words to form a unique
commercial impression which is not merely descriptive of a
clothing store.” Accordingly, applicant argues that “DENIM
PLACE” is suggestive, not descriptive, of these services.
While at times it may be difficult to distinguish
between descriptiveness and suggestiveness, such is not the
case here. The primary criterion in making this
determination is whether consumers, upon seeing this mark
Ser No. 75/152,222
4
on these services, will immediately understand without any
need for imagination, thought, or perception, the nature
and character of applicant’s proposed service. See In re
Omaha National, 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir.
1987) [composite mark “FirsTier and design” (as phonetic
equivalent of “first tier”) is merely descriptive of
banking services since consumers includes bank's corporate
customers], and In re Harvestall Industries, Incorporated,
185 USPQ 187 (TTAB 1974) [“GRAINLAMP” held merely
descriptive of electrical lamps used in storage bins for
drying grain]. Using this criterion, applicant’s mark is
merely descriptive, not suggestive. No mental leap is
required of prospective consumers for them to conclude that
a clothing store trading under the service mark “DENIM
PLACE” is probably a place of business selling clothing
items made of denim.
We also note from the third-party registrations
submitted by the Trademark Examining Attorney that the U.S.
Patent and Trademark Office has consistently held a generic
(or even merely descriptive) term plus the word “place” to
be descriptive of retail store services involving goods
accurately described by the preceding generic or
descriptive term.
Ser No. 75/152,222
5
It is not disputed that applicant intends to sell some
clothing made of denim material. As noted above,
applicant, in its original application papers, voluntarily
disclaimed the word “denim” apart from the mark as shown.
The fact that items of clothing made of materials other
than denim may well also be sold in applicant's store is
not legally significant. The mark need not describe all of
applicant's services to be merely descriptive and
unregistrable under Section 2(e)(1) of the Trademark Act.
Registration is correctly refused if a mark is merely
descriptive of any of the goods or services for which
registration is sought. See In re American Society of
Clinical Pathologists, 442 F.2d 1404, 169 USPQ 800 (CCPA
1971) [the designation “REGISTRY OF MEDICAL TECHNOLOGISTS”
held merely descriptive of applicant’s recited services,
inter alia, of establishing a roster of medical
technologists], and In re Quik-Print Copy Shop, Inc., 616
F.2d 523, 205 USPQ 505 (CCPA 1980) [“QUIK-PRINT” held
merely descriptive of “same day" printing services (and
related publishing services)]. Therefore, the dispositive
question herein is whether the mark “DENIM PLACE” is merely
descriptive of any of the services with which applicant
intends to use the mark.
Ser No. 75/152,222
6
In answering this question, we hold that applicant’s
prospective purchasers will likely apply the ordinary
meanings to the words “denim” and “place,” and that the
mark will thus readily describe for them applicant's
services.
Decision: We affirm the refusal of the Trademark
Examining Attorney under Section 2(e)(1).
R. F. Cissel
B. A. Chapman
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial and
Appeal Board