Ed Labowicz

Trademark Trial and Appeal BoardApr 10, 2012

No. 79080056 (T.T.A.B. Apr. 10, 2012)

Mailed: April 10, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Ed Labowicz ________ Serial No. 79080056 _______ Edward Labowicz, pro se. Fred Carl III, Trademark Examining Attorney, Law Office 108 (Andrew Lawrence, Managing Attorney). _______ Before Seeherman, Ritchie and Kuczma, Administrative Trademark Judges. Opinion by Seeherman, Administrative Trademark Judge: Edward Labowicz, a citizen of Poland, has appealed from the final refusal of the trademark examining attorney to register BELUGA and design, as shown below, for “fishing tackle.”1 1 Application Serial No. 79080056 filed March 25, 2010 pursuant to Section 66(a) of the Trademark Act, based on an application filed with the International Bureau on October 15, 2009. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser No. 79080056 2 The application includes the following information: “Beluga” word is made up of black letters with a wide gold rim, where the gold rim from the exterior is outlined with a thin black line. Above the word “beluga” is a drawing depicting the head and torso piece of fish in white, gold, brown and black colours. The color(s) white, gold, brown and black is/are claimed as a feature of the mark. Registration has been refused pursuant to Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that applicant’s mark is merely descriptive of his identified goods. We must first make some clarifications regarding the record. Applicant initially filed two copies of his appeal brief, the first on December 15, 2010 and a second on January 10, 2011. The argument section in both of these copies is the same. However, the brief filed on January 10, 2011 includes as an attachment a printout from The Trade Marks and Designs Registration Office of the European Union showing that applicant owns a Community Trademark Registration for BELUGA for fishing tackle. This Ser No. 79080056 3 printout was not included with the December 15, 2010 brief, while the December 15 copy has an attachment showing payment of the appeal fee and the January 10 copy does not. Both copies include Office actions and applicant’s response. We point out that it is not necessary to include Office actions and responses because they are already part of the application file. When the application was transmitted to the examining attorney for preparation of his appeal brief he requested remand in order to submit evidence in response to a newly asserted “statement of fact” that was made by applicant in his brief. The Board granted this request, and after the examining attorney issued an action making the new evidence of record, applicant was given the opportunity to file a supplemental appeal brief. Applicant filed two copies of his supplemental appeal brief, on June 8 and June 24, 2011. Again, the argument section in both copies is identical, although the June 8, 2011 submission includes attachments consisting of Wikipedia listings for “Beluga,” “Beluga whale” and “Beluga (sturgeon).” The examining attorney, in his brief, has asserted that “both of applicant’s appeal briefs of January 10, 2011 and June 8, 2011 include new evidence not previously of record,” and has objected thereto. Brief, unnumbered p. 2. Ser No. 79080056 4 We point out such a blanket statement is not particularly helpful, as the Board must then determine which attachments are actually the subject of the examining attorney’s objection. As noted, most of the attachments to applicant’s briefs consist of Office actions and responses, and these documents are of record. So is the Wikipedia article that was attached to applicant’s June 8, 2011 reply brief, as the examining attorney had submitted it as an attachment to an Office action. Thus, the only material that was not previously made of record are the applicant’s Community trademark registration information and the Wikipedia entries for “Beluga” and “Beluga whale.”2 We agree that this material is untimely, see Trademark Rule 2.142(d), and it has not been considered. We point out, however, that whether or not this material was considered would have no effect on our decision herein. A decision by another jurisdiction about the registrability of a trademark in that jurisdiction is irrelevant to our determination, since we must follow the law in the United States. As for the Wikipedia listings, as acknowledged by the examining attorney, “other materials in the record 2 The appeal fee payment information submitted with the January 10, 2011 brief was in response to the Board’s December 21, 2010 order stating that the appeal could not be entertained because it was not accompanied by the statutory fee. Ser No. 79080056 5 admit to the existence of a cetacean known as a ‘beluga whale,’” brief, unnumbered p. 6, and we may take judicial notice that “beluga” is defined as “1. The white whale. 2. A sturgeon, huso huso, of the Black and Caspian seas, whose roe is used for caviar. Also called ‘beluga sturgeon.’”3 A term is deemed to be merely descriptive of goods or services, within the meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). A term need not immediately convey an idea of each and every specific feature of the applicant’s goods or services in order to be considered to be merely descriptive; rather, it is sufficient that the term describes one significant attribute, function or property of the goods or services. In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a term is merely descriptive is determined not in the abstract, but 3 The American Heritage Dictionary of the English Language 1970. The Board may take judicial notice of dictionary definitions. University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Ser No. 79080056 6 in relation to the goods or services for which registration is sought, the context in which it is being used on or in connection with the goods or services, and the possible significance that the term would have to the average purchaser of the goods or services because of the manner of its use; that a term may have other meanings in different contexts is not controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). It is the examining attorney’s position that applicant’s mark BELUGA for “fishing tackle” describes a purpose for the identified goods, namely, that the fishing tackle can be used to catch beluga. In support of the refusal, the examining attorney has submitted evidence that “beluga” identifies a type of fish, e.g.: Beluga (sturgeon) The beluga or European sturgeon (huso huso) is a species of anadromous fish in the sturgeon family (Acipenseridae) of order Acipenseriformes. It is found primarily in the Caspian and Black Sea basins, and occasionally in the Adriatic Sea. Heavily fished for the female’s valuable roe— known as beluga caviar—the beluga is a huge (some documented specimens attain nearly 6 meters (19 feet), slow-growing and late-maturing fish that can live for 118 years. The species’ numbers have been greatly reduced by overfishing and poaching, prompting many governments to enact restrictions on its trade. … www.wikipedia.com We agree that consumers viewing the mark in connection with fishing tackle would immediately understand that the Ser No. 79080056 7 tackle is used to fish for beluga, and therefore the mark directly describes a purpose of the goods. Applicant argues that “the average buyer will not think that it is possible to go fishing for BELUGA, a large sea fish as he imagines it to be, with an ordinary, commonly available fishing tackle.” Supplemental brief, p. 2. To the extent that applicant is referring to the fact that the term “beluga” is also used in connection with a “beluga whale,” it would be clear to consumers that the word “beluga” in applicant’s mark refers to the sturgeon fish, as the picture of the fish is part of the mark.4 To the extent that applicant is arguing that, because beluga are large sea fish, and that therefore fishing tackle is not used to fish for them, the examining attorney has shown that this is not correct. See evidence attached to April 25, 2011 Office action, showing accounts of sports fishing for beluga using rods and reels,5 as well as other articles which refer to using fishing tackle in fishing for similarly large sea fish such as marlin. 4 The examining attorney has made of record several pictures of the beluga fish that clearly are the same as the design represented in the mark. 5 www.jjphoto.dk/jj_fishing/articles/kazakhstan_sturgeon_uk.htm, also published in The Steelheader Salmon & Trout News, www.steelheadermag.com. Ser No. 79080056 8 Applicant also appears to argue that potential buyers will not assume that the fishing tackle will be designed solely for catching beluga. However, it does not matter if the fishing tackle can be used to catch other fish; if the mark describes one type of fish that may be caught with the tackle, then the mark is descriptive of a purpose of the tackle. We have considered all of applicant’s arguments, including those not specifically discussed in this opinion, but are not persuaded thereby. In view of the evidence submitted by the examining attorney, we find that BELUGA will be understood as immediately and directly describing a purpose of the identified “fishing tackle,” and that the mark is merely descriptive of the goods. Decision: The refusal of registration is affirmed.