Art Jewdaica LLC

Trademark Trial and Appeal BoardJul 28, 2011

No. 77588463 (T.T.A.B. Jul. 28, 2011)

Mailed: July 28, 2011 Bucher UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Art Jewdaica LLC ________ Serial No. 77588463 Serial No. 77588471 Serial No. 77588479 & Serial No. 77588481 _______ Gene S. Winter of St. Onge Steward Johnston & Reens LLC for Art Jewdaica LLC. Karen K. Bush, Trademark Examining Attorney, Law Office 105 (Thomas G. Howell, Managing Attorney). _______ Before Seeherman, Bucher and Lykos, Administrative Trademark Judges. Opinion by Bucher, Administrative Trademark Judge: Art Jewdaica LLC seeks registration on the Principal Register of the term JEWDAICA (in standard character format) for goods as follows: “sculptures of metal” in Int. Class 6;1 “jewelry; sculptures made of precious metal” in International Class 14;2 “art pictures; art prints; lithographic works of art; paintings and calligraphic works; posters” in International Class 16;3 1 Application Serial No. 77588463 was filed on October 8, 2008 based upon applicant’s allegation of a bona fide intention to use the mark in commerce. 2 Application Serial No. 77588471 was filed on October 8, 2008 based upon applicant’s allegation of a bona fide intention to use the mark in commerce. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial Nos. 77588463, 77588471, 77588479 & 77588481 - 2 - and seeks registration on the Supplemental Register for the same term, JEWDAICA, for the following services: “retail store and on-line retail store services featuring jewelry, sculptures and works of art” in International Class 35.4 In all four applications, applicant has asserted that no claim is made to the exclusive right to use the word “Judaica” apart from the mark as shown. Procedural History Initially, the Trademark Examining Attorney refused registration for all four applications on the ground that the term is merely descriptive under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1). When applicant amended the ‘481 service mark application to an application on the Supplemental Register, the Trademark Examining Attorney refused registration of that application pursuant to Section 23 of the Trademark Act on the basis that the term was generic for those recited services. In response to the final refusals of the Trademark Examining Attorney, applicant appealed all four refusals to this Board, at which time the appeals were 3 Application Serial No. 77588479 was filed on October 8, 2008 based upon applicant’s allegation of a bona fide intention to use the mark in commerce. 4 Application Serial No. 77588481 was filed on October 8, 2008 based upon claims of first use anywhere and first use in commerce at least as early as December 23, 2003. Serial Nos. 77588463, 77588471, 77588479 & 77588481 - 3 - consolidated. The applicant filed an identical brief in all four applications while the Trademark Examining Attorney filed an identical brief for the three Principal Register applications for goods and a slightly different brief in the ‘481 Supplemental Register application for the recited services. We affirm all four of the refusals to register. Issues on Appeal The issues on appeal are: (1) whether the term JEWDAICA is merely descriptive for applicant’s listed goods; and (2) whether such term is generic for the recited services. Arguments of Applicant and the Trademark Examining Attorney Applicant sets forth several arguments in favor of registration of its mark. In support of its position that the term JEWDAICA is neither merely descriptive of the identified goods nor generic for the recited services, applicant argues that the various dictionary definitions of the word “Judaica” are not clear enough to convey immediately information about the goods or to name the services. Moreover, applicant argues that its proposed mark constitutes a play on words (i.e., between the terms “jewelry” and “Judaic”). Applicant points out that it has disclaimed the word “Judaica,” clearly limiting Serial Nos. 77588463, 77588471, 77588479 & 77588481 - 4 - any proprietary rights to the specific spelling of “Jewdaica.” Finally, applicant reminds us that in the event that any doubt remains in making a determination under Section 2(e)(1) of the Act, such doubt must be resolved in favor of applicant. By contrast, in support of her position, the Trademark Examining Attorney argues that the term “Jewdaica” is the phonetic equivalent of the word “Judaica,” and that the term “Judaica” identifies “things pertaining to Jewish life and customs, especially when of a historical, literary, or artistic nature.” She argues that even though the various dictionary definitions for this word are not exactly the same, the overall meaning of the word “Judaica” is clear. Namely, she contends that the overall meaning of the term “Judaica” clearly refers to materials that pertain to the religion of Judaism or Jewish life, culture and customs. The Trademark Examining Attorney also asserts, in addition to “Jewdaica” being the phonetic equivalent of “Judaica,” that potential customers will view it as the same word with the same meaning, i.e., as an acceptable, alternate spelling of the term, “Judaica” – analogous to frequent, alternative spellings of “Hanukkah,” “Hanukka,” “Chanukah” “Chanukkah,” etc. As for applicant’s double entendre argument, the Trademark Examining Attorney points out that, while initially Serial Nos. 77588463, 77588471, 77588479 & 77588481 - 5 - applicant suggested that its coined term played on the words “Jew” and “Judaica,” applicant now contends it plays on “jewelry” and “Judaic.” The Trademark Examining Attorney argues that for a tribunal to find the presence of a double entendre, both (or all) meanings should be readily apparent to consumers. However, she contends that if applicant itself is unsure of the nature of its alleged double entendre, then the average consumer is unlikely readily to recognize the play on words. As to applicant’s proffered disclaimer of the word “Judaica,” the Trademark Examining Attorney correctly contends that under Section 6 of the Act,5 such a disclaimer cannot make registrable a standard character term that is in its entirety merely descriptive or generic. Mere Descriptiveness A mark is merely descriptive, and therefore unregistrable pursuant to the provisions of Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), if it immediately conveys “knowledge of a quality, feature, function, or characteristic of the goods or services.” In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) [ASPIRINA 5 § 6 (15 U.S.C. § 1056). Disclaimers (a) The Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable … Serial Nos. 77588463, 77588471, 77588479 & 77588481 - 6 - is merely descriptive of analgesic product]. See also In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003) [MONTANA SERIES and PHILADELPHIA CARD are merely descriptive of applicant’s “affinity” credit card services; a “mark is merely descriptive if the ultimate consumers immediately associate it with a quality or characteristic of the product or service”]; In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) [THE ULTIMATE BIKE RACK is merely descriptive of bicycle racks]; and In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987) [APPLE PIE is merely descriptive of a potpourri mixture]. Descriptiveness of a mark is not considered in the abstract, but in relation to the particular goods or services for which registration is sought. That is, when we analyze the evidence of record, we must keep in mind that the test is not whether prospective purchasers can guess what applicant’s goods [or services] are after seeing only applicant’s mark. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978). Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey information about them. In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002); and In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998). Serial Nos. 77588463, 77588471, 77588479 & 77588481 - 7 - In addition to considering the applied-for mark in relation to the goods or services for which registration is sought, we must also consider the context in which the mark is used and the significance that the mark is likely to have on the average purchaser encountering the goods or services in the marketplace. In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991); and In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986). Hence, the ultimate question before us is whether the term JEWDAICA conveys information about a significant purpose, function or use of applicant’s goods with the immediacy and particularity required by the Trademark Act. The Trademark Examining Attorney has submitted the following dictionary definitions of the word “Judaica”: Ju·da·i·ca [ joo-dey-i-kuh] plural noun things pertaining to Jewish life and customs, especially when of a historical, literary, or artistic nature, as books or ritual objects. Origin: 1920–25; < Latin, noun use of neuter plural of jūdaicus Judaic 6 Ju·da·i·ca noun historical and literary materials related to Judiasm 7 6 judaica. Dictionary.com. Dictionary.com Unabridged. Random House, Inc. http://dictionary.reference.com/browse/judaica (accessed by the Examining Attorney on January 8, 2009). 7 judaica. Dictionary.com. Dictionary.com Unabridged. Princeton Univ. http://dictionary.reference.com/browse/judaica (accessed by the Examining Attorney on January 8, 2009). Serial Nos. 77588463, 77588471, 77588479 & 77588481 - 8 - Ju·dai·ca (-i kә) noun 1. books, papers, objects, data, etc. having to do with Jews or Judaism 2. a collection of such materials Origin: ModL < L Judaicus, Judaic 8 Ju·dai·ca Jewish culture or artifacts: the Jewish religion, customs and culture, or artifacts and historical and literary materials that relate to them. 9 Furthermore, the Trademark Examining Attorney has submitted evidence from commercial and informational Internet websites indicating the range of items included in the category of “Judaica.” Certainly, in an ex parte proceeding, materials obtained from the Internet are acceptable as evidence of potential exposure to a term by the relevant public. See In re Fitch IBCA, Inc., 64 USPQ2d 1058 (TTAB 2002). The following examples are illustrative of these websites: Thank you for visiting Art at the Center - Judaica Gallery. Here you can find that elegant or perhaps funky piece, maybe a modestly-priced gift, or a museum-quality collector's piece, or just something that pleases you. There is Judaica for everyone over a wide price range: Jewish arts and crafts, ritual items, Israeli and Yiddish posters, gifts, jewelry, and more. 10 8 judaica. yourDictionary.com. Webster’s New World College Dictionary http://www.yourdictionary.com/judaica (accessed by the Trademark Examining Attorney January 2011). 9 judaica. World English Dictionary www.dictionary.msn.com/ (accessed by the Trademark Examining Attorney January 2011). 10 http://www.artatthecenter.com/ Serial Nos. 77588463, 77588471, 77588479 & 77588481 - 9 - Applicant cites to additional language from this same website: “Judaica – Describes the ceremonial or ritual objects/clothing that Jews use to perform religious commandments or traditions (Mitzvot). Much more than a tool, Judaica is an extension of one’s personal search for connection, spirituality, and a visible identifier of a Jewish home. Judaica is available in a great range of materials, craftsmanship; for young and old alike; fun and serious; moderately priced and exclusive - all reflect the diversity of the Jewish people.” 11 11 http://www.judaism.com/ The website language on the right box above as quoted by applicant is not treated as would be a dictionary definition from a reference work. However, we find that it complements nicely the various dictionary entries and other website information offered by the Trademark Examining Attorney in helping understand the breadth of the materials included in “Judaica.” Serial Nos. 77588463, 77588471, 77588479 & 77588481 - 10 - Judaica-Art is a provider of fine art oil paintings at discount prices. We make the most beautiful hand painted oil painting reproductions on canvas. Museum quality masterpieces that can be turned into oil paintings reproductions from only $159. Real hand painted work. Now you can have works of real art on your walls for a fraction of the price. If you have a painting you want us to reproduce, we can paint any picture!! Click here to see our Gallery. 12 We find that the evidence reproduced herein supports a finding that, as applied to applicant’s goods, the term “Judaica” would immediately describe, without conjecture or speculation, a significant characteristic or feature of such goods. As noted above, applicant’s goods are identified as sculptures, jewelry, paintings, posters and other works of art, which would include such items that pertain to Jewish culture and religion. We conclude from these websites that these types of products are called “Judaica,” and that online merchants selling these types of products are known as Judaica websites. We are not persuaded by applicant’s argument that the word “Judaica” is suggestive, at worst, because the dictionary definitions made of record by the Trademark Examining Attorney leave one with a nebulous connotation that “cannot immediately 12 http://www.judaica-art.com/ Serial Nos. 77588463, 77588471, 77588479 & 77588481 - 11 - describes or conveys information as to the ingredients, qualities or characteristics of the goods and services with a degree of particularity.” Applicant’s brief at 6. The above dictionary entries support a finding that the word “Judaica” conveys information about materials pertaining to Jewish life and customs including historical or literary materials, items of an artistic nature, or books and ritual objects related to Judaism. In addition, the Internet websites establish that Judaica includes, inter alia, artwork and crafts, historical replicas and items of religious ritual, jewelry, Israeli and Yiddish posters, etc. As such, the evidence of dictionary definitions and pages drawn from Internet sites support a finding that prospective users of applicant’s goods would be accustomed to encountering the word “Judaica” used to describe the types of goods that applicant intends to market under the term JEWDAICA. Hence, we find that the word “Judaica” would be highly descriptive of applicant’s goods. Applicant next argues that the position of the Trademark Examining Attorney fails inasmuch as applicant spells the term as JEWDAICA with the initial letters “Jew-” rather than leading with the traditional letters “Ju-.” As a result, applicant contends that its proposed mark, JEWDAICA, “is Serial Nos. 77588463, 77588471, 77588479 & 77588481 - 12 - materially different from the word ‘Judaica’.”13 Rather, applicant claims that it is a “specific and imaginative and distinct”14 term, and that as a result, “a particular impression is created [in the eyes of the prospective consumer] of the proposed brand which does not allow him to immediately refer to the word Judaica.”15 The real question, then, is whether the term JEWDAICA will be viewed as merely a variation of the word “Judaica,” or whether it will be viewed as a coined term that takes some degree of thought to understand. We find that substituting the initial letters “Jew-[daica]” for the traditional letters “Ju-[daica]” does not transform this merely descriptive word into a coined term that requires thought to decipher; rather, the relevant consumers of these goods will immediately recognize JEWDAICA as the equivalent of the word “Judaica,” that the meaning of the term will be readily understood, and hence, that JEWDAICA directly conveys information about a significant characteristic or purpose of the identified goods. For example, in the case of In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831-32 (Fed. Cir. 2007), the Court affirmed the Board’s decision that 13 Applicant’s brief at 9. 14 Id. 15 Id. Serial Nos. 77588463, 77588471, 77588479 & 77588481 - 13 - ASPIRINA is merely descriptive for analgesic goods, quoting the Board’s statement that “[t]he mere addition of the letter ‘A’ at the end of the generic term ‘aspirin’ is simply insufficient to transform ASPIRINA into an inherently distinctive mark for analgesics.” The Court also stated that: Adding an “a” to aspirin results in virtually no distinction with respect to the visual impressions of the terms. Importantly, both terms will be used in association with the same analgesic goods in this country. There are, however, some differences in sound. ASPIRINA contains four syllables and aspirin contains two or three syllables (depending on how it is pronounced). ASPIRINA also contains different syllables and the emphasis is on the third syllable for ASPIRINA, whereas the emphasis is on the first syllable for aspirin. When the mark ASPIRINA is considered as a whole, the significant similarities in appearance and meaning of ASPIRINA and aspirin demonstrate that the Board's finding that ASPIRINA is merely descriptive of analgesic goods is supported by substantial evidence. [footnote omitted] See also, Fleetwood Co. v. Mende, 298 F.2d 797, 132 USPQ 458, 460 (CCPA 1962) [“TINTZ [is] a phonetic spelling of ‘tints’”]. A slight misspelling does not convert an otherwise descriptive term into a suggestive one. In re Quik-Print Copy Shops, 616 F.2d 523, 205 USPQ 505, 507 n.9 (CCPA 1980) [QUIK-PRINT held descriptive; “There is no legally significant difference here between ‘quik’ and ‘quick’”]. In this case, substituting the letters “Jew-” for the leading letters “Ju-” of “Judaica” creates even less of a difference, inasmuch as “Judaica” and JEWDAICA are aurally identical. There is little difference in their appearance. Serial Nos. 77588463, 77588471, 77588479 & 77588481 - 14 - Further, the meaning of JEWDAICA remains the same as that of Judaica, in that many words relating to the Jewish religion use “Ju” instead of “Jew”, e.g., Judaism, Judaic, Judaize. Hence, we disagree with applicant’s argument that its applied-for term JEWDAICA is not merely descriptive or generic because of the difference between it and “Judaica,”, and find that this slight difference in spelling is not significant. JEWDAICA is merely a misspelling of the word “Judaica” that will be recognized immediately. In fact, applicant’s decision to spell the first syllable as “Jew” simply reinforces the overall connotation of the adopted term. Another argument made by applicant is that its adopted term constitutes a play on words or double entendre (i.e., between the terms “jewelry” and “Judaica”). However, we are not persuaded that this alleged double meaning will be readily apparent to consumers. While the “Jew-” syllable will be understood as a reference to the descriptive word “Jew,” there is no basis for us to conclude that the average consumer will detect any suggestion of “jewelry” within applicant’s chosen term. As noted above, even applicant did not recognize such a suggestion when it initially argued against the refusal of registration. Serial Nos. 77588463, 77588471, 77588479 & 77588481 - 15 - Accordingly, we find that applicant’s mark, as applied to the goods in International Classes 6, 14 and 16 is merely descriptive as contemplated by Section 2(e)(1) of the Act. Genericness A term is generic, and therefore prohibited from registration on the Supplemental Register, if it refers to the class, genus or category of goods and/or services on or in connection with which it is used. See In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001), citing H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986). The test for determining whether a term is generic is its primary significance to the relevant public. See Section 14(3) of the Act. See also In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991); and H. Marvin Ginn Corp., 228 USPQ at 530. The Trademark Examining Attorney has the burden of establishing by clear evidence that a term is generic and thus unregistrable. See In re Merrill Lynch, Pierce, Fenner and Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987). Serial Nos. 77588463, 77588471, 77588479 & 77588481 - 16 - Evidence of the relevant public’s understanding of a term may be obtained from any competent source, including testimony, surveys, dictionaries, trade journals, newspapers, and other publications. See In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985). The determination of whether a term is generic involves a two-part inquiry: First, what is the category or class of the services at issue? Second, is the term sought to be registered understood by the relevant public primarily to refer to that category of services? See H. Marvin Ginn Corp., 228 USPQ at 530. With respect to the first part of the inquiry, we find, in this case, that the genus of services in the ‘481 service mark application is appropriately identified by applicant’s recitation of “retail store services featuring jewelry, sculptures and works of art.” The second part of the inquiry is whether the term sought to be registered would be understood by the relevant public primarily to refer to that category of services. As to an identification of the relevant public, given the nature of the goods sold through these recited services, it is reasonable to assume that Jews would make up a significant percentage of applicant’s consumers. Serial Nos. 77588463, 77588471, 77588479 & 77588481 - 17 - The dictionary definitions and websites made a part of this record amply demonstrate that “Judaica” would be understood to refer to a very specific sub-category of these services, namely, retail store services featuring jewelry, sculptures and works of art pertaining to Jewish life and customs. In other words, “Judaica” is a generic term for the recited services. However, we must still determine whether applicant’s alternative spelling changes the result under Section 23 of the Act. We find that our earlier discussion about applicant’s having adopted a slightly misspelled version of the word “Judaica” applies here as well, namely, the fact applicant is using the word JEWDAICA does not result in its being understood as anything other than the generic term. See, e.g., In re Stanbel, Inc., 16 USPQ2d 1469 (TTAB 1990), aff'd without pub. op., 20 USPQ2d 1319 (Fed. Cir. 1991) [where the record established that the term “ice pack” was a generic designation for a “nontoxic reusable ice substitute for use in food and beverage coolers,” applicant’s asserted mark ICE PAK was held generic and, therefore, unregistrable]. The misspelling here still results in a term that is the phonetic equivalent of the generic term and appears nearly the same. In view of the phonetic and connotative equivalence and visual similarity, as discussed previously, we have no doubt Serial Nos. 77588463, 77588471, 77588479 & 77588481 - 18 - but that the two terms would be viewed as being equivalents. In other words, applicant’s use of the term JEWDAICA would be understood by relevant purchasers as primarily naming the type of retail operation, namely, retail store services featuring jewelry, sculptures and works of art having a relevance to Jewish culture and religion. In short, “retail store services featuring jewelry, sculptures and works of art” is the name of a category or class of services marketing items that pertain to Judaism, Jewish life and customs. In this case, because the term JEWDAICA directly names the most important or central aspect or purpose of applicant’s services, namely, that they are focused on items of Jewish culture and religion, this term is generic and should be freely available for use by competitors. See In re Sun Oil Co., 426 F.2d 401, 165 USPQ 718 (CCPA 1970) [CUSTOMBLENDED for gasoline held generic because category of gasoline was blended personally for the motorist]; In re Helena Rubinstein, Inc., 410 F.2d 438, 161 USPQ 606 (CCPA 1969) [PASTEURIZED for face cream held generic]; In re Central Sprinkler Company, 49 USPQ2d 1194 (TTAB 1998) [ATTIC for automatic sprinklers for fire protection of attics held generic]; and In re Reckitt & Colman, North America Inc., 18 USPQ2d 1389 (TTAB 1991) [PERMA PRESS for soil and stain removers held generic]. Serial Nos. 77588463, 77588471, 77588479 & 77588481 - 19 - Therefore, we conclude that the Trademark Examining Attorney has met the burden of establishing that JEWDAICA is incapable of identifying and distinguishing the source of the recited services. Decision: The refusals of the three applications for goods in International Classes 6, 14 and 16 under Section 2(e)(1) of the Lanham Act on the ground that the proposed mark is merely descriptive are hereby affirmed, and the refusal under Section 23 of the Act on the ground that the mark is generic for the recited services is likewise affirmed.