Yoonah Shoji

Trademark Trial and Appeal Board

Aug 7, 2013

No. 85360148 (T.T.A.B. Aug. 7, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
August 7, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Yoonah Shoji
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Serial No. 85360148
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Brian R. Gibbons for Yoonah Shoji.

Sean Crowley, Trademark Examining Attorney, Law Office 116 (Michael W. Baird,
Managing Attorney).
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Before Holtzman, Taylor, and Hightower, Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Applicant Yoonah Shoji has filed an application to register on the Principal
Register the term PAPER BAG, in standard characters, for goods ultimately
identified as “purses, handbags, backpacks, tote bags, messenger bags, duffel bags,
excluding any of the foregoing made of paper” in International Class 18.1
Registration has been refused on the ground that the matter sought to be
registered is deceptively misdescriptive of the identified goods pursuant to

1 Application Serial No. 85360148, filed June 30, 2011 based on an allegation of first use
and first use in commerce at least as early as February 10, 2011.
Serial No. 85360148
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Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1). Applicant timely appealed.
Both applicant and the examining attorney filed appeal briefs.
Analysis
The test for deceptive misdescriptiveness has two parts. First, we must
determine if the matter sought to be registered misdescribes the goods or services.
If so, then we must ask whether consumers are likely to believe the
misrepresentation. In re White Jasmine LLC, 106 USPQ2d 1385, 1394 (TTAB
2013); In re Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1048 (TTAB 2002); In re
Quady Winery Inc., 221 USPQ 1213, 1214 (TTAB 1984). The Board has applied the
reasonably prudent consumer test in assessing whether a mark is deceptively
misdescriptive under Section 2(e)(1). See R. J. Reynolds Tobacco Co. v. Brown &
Williamson Tobacco Corp., 226 USPQ 169, 179 (TTAB 1985) (“On this evidence, we
do not believe reasonably prudent purchasers are apt to be deceived.”).
In addition, “in order for a term to misdescribe goods or services, the term
must be merely descriptive, rather than suggestive, of a significant aspect of the
goods or services which the goods or services plausibly possess but in fact do not.”
In re Phillips-Van Heusen, 63 USPQ2d at 1051; see also In re Shniberg, 79 USPQ2d
1309, 1312 (TTAB 2006). The examining attorney bears the burden of showing that
a term is merely descriptive (and thus is potentially deceptively misdescriptive) of
the relevant goods. In re Merrill, Lynch, Pierce, Fenner & Smith Inc., 828 F.2d
1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987).
Applicant has applied to register PAPER BAG for “purses, handbags,
backpacks, tote bags, messenger bags, duffel bags, excluding any of the foregoing
Serial No. 85360148
3

made of paper.” As is evident from the goods identification, the term “bag,”
standing alone, is descriptive or generic in association with applicant’s goods.
It is the examining attorney’s position that “paper” misdescribes the
composition of applicant’s goods by indicating that they are made out of paper when
they are not, satisfying the first prong of the test for deceptive misdescriptiveness.
The examining attorney made of record evidence establishing that third parties
make a variety of bags out of paper, including purses, handbags, backpacks, tote
bags, and messenger bags.2 The evidence shows that these goods often are
described by the term “paper” followed by the generic name of the bag, e.g., “paper
purses,” “paper handbag,” “newspaper purse,” “paper backpack,” “paper tote,”
“recycled paper tote bags,” “paper pouches,” or “paper messenger bag.”3
Turning to the second prong of the test, the examining attorney contends that
consumers are likely to believe applicant’s misrepresentation regarding the
composition of its bags:
Consumers are likely to believe that applicant’s various
types of bags are made out of paper because paper is a
commonly used, eco-friendly material often used in the
manufacture of bags such as those identified by applicant.
The examining attorney also demonstrated that such bags
made of paper can be indistinguishable from bags
constructed of other materials.4
Applicant advances two main arguments. First, applicant contends that
consumers will perceive the matter it seeks to register as suggestive rather than

2 See evidence attached to the October 26, 2011 Office action at 2-47.
3 Id.
4 Examiner’s brief at unnumbered p. 5.
Serial No. 85360148
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descriptive or misdescriptive, in part because the term “paper” has been commonly
used in the fashion industry, “both for clothing and handbags, even in situations
where the marks are not literally being used in connection with products made of
paper.”5 In support of this argument, applicant submitted printouts of 21
registrations for marks incorporating the term “paper.”6 However, because none
includes both elements of the mark PAPER BAG and most are for clothing in
Class 25 rather than bags in Class 18, these third-party registrations have very
limited probative value with respect to applicant’s goods.7 These third-party
registrations are not evidence that the marks therein have been used at all, let
alone used so extensively that consumers are familiar with them. We are not
persuaded by applicant’s argument that “consumers have grown accustomed to a
non-literal use of the word ‘paper’ in connection with brand names in the fashion
industry”8 and that “paper” therefore is suggestive throughout the fashion industry,
and for handbags in particular. Each case, furthermore, must be decided on its own
merits. See In re Nett Designs Inc., 236 F.3d 139, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001); In re Scholastic Testing Serv., Inc., 196 USPQ 517, 519 (TTAB 197).

5 Applicant’s Brief at 3.
6 Request for Reconsideration, November 26, 2012, at 4-86. Applicant also submitted three
registrations for goods in Class 25 from its own asserted family of PAPER-formative marks:
PAPER BOAT (Registration No. 4067541), PAPERBOY (Registration No. 2672106), and
PAPER HAT (Registration No. 4175871). Id. at 87-99.
7 Applicant submitted two registrations for goods in Class 18: Registration No. 4169739 for
and Registration No. 4070085 for . A few of the other
registrations submitted by applicant cover goods in Classes 9 and 23 and services in
Class 35.
8 Applicant’s Brief at 4.
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Second, applicant argues that consumers will not be deceived by the mark
PAPER BAG because they will not take the mark literally, and even if they do,
“that confusion would immediately be dispelled when [a consumer] encounters the
mark being used on or in connection with the goods.”9 This is because:
Handbags made of paper are readily apparent as such,
with a significantly distinct appearance from handbags
made of leather or other more conventional materials. It
is submitted that any consumer of reasonable intelligence
would be able to tell the difference between a normal
purse and a brown paper bag.10
This argument is not persuasive. The phrase applicant seeks to register is
PAPER BAG, not “brown paper bag.” The examining attorney’s evidence
demonstrates that, while some bags quite obviously are made from paper, the paper
content incorporated into other “normal” purses may not be readily distinguishable
from more common materials – including materials from which applicant may
choose to make its own purses. Images of a few such examples are displayed below:
11 12 13

9 Applicant’s Brief at 5.
10 Id. at 4.
11 See October 26, 2011 Office action at 6.
12 See id. at 37.
13 See id. at 41.
Serial No. 85360148
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The phrase applicant seeks to register is not removed from the deceptively
misdescriptive category if consumers are disabused of their misunderstanding only
after close inspection of the goods or determining what actual (non-paper) material
is used to make the goods, presumably by consulting a label or detailed content
description. See In re Berman Bros. Harlem Furniture Inc., 26 USPQ2d 1514, 1515-
16 (TTAB 1993) (quoting In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed.
Cir. 1988)); Tanners’ Council of America, Inc. v. Samsonite Corp., 204 USPQ 150,
154 (TTAB 1979).
In sum, we find that the examining attorney has established that the term
PAPER BAG misdescribes a significant aspect of applicant’s goods by representing
that they are made out of paper when, as stated in the identification, they are not.
Given the record evidence showing that third parties offer bags of the type
identified by applicant made at least in part from paper, and that such bags are not
readily distinguishable from those made from more common materials, reasonably
prudent consumers are likely to believe applicant’s misrepresentation.
Decision: The examining attorney’s refusal to register applicant’s mark as
deceptively misdescriptive under Section 2(e)(1) of the Trademark Act is affirmed.