General Welding and Fabricating, Inc.

Trademark Trial and Appeal Board

Aug 29, 2012

No. 85056363 (T.T.A.B. Aug. 29, 2012)

Mailed:
August 29, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re General Welding and Fabricating, Inc.
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Serial No. 85056363
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James C. Simmons of The Law Office of James C. Simmons for
General Welding and Fabricating, Inc.

Kelly Trusilo, Trademark Examining Attorney, Law Office 107
(J. Leslie Bishop, Managing Attorney).
_______

Before Seeherman, Holtzman and Mermelstein, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

General Welding and Fabricating, Inc. has appealed
from the final refusal of the trademark examining attorney
to register THE ORIGINAL MADE IN AMERICA STORE in standard
character form, with STORE disclaimed, as a trademark for
the following goods and services:
clothing, namely, t-shirts, socks, shorts, caps,
flip flips, long-sleeve and short-sleeve shirts,
pants, hoodies, and trousers (Class 25) and

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 85056363
2
retail store services featuring a variety of
goods, namely, clothing, coasters, furniture,
fire rings, grills, toys, games, camping and
sporting goods, food and beverages, flags,
greeting cards, and art work (Class 35).1

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 the applied-for mark is merely descriptive
of applicant’s goods and services.
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). Laudatory marks
that describe the alleged merit of the goods or services
are considered to be descriptive because they simply
describe the characteristics or quality of the goods or
services in a condensed form. In re Nett Designs Inc., 236
F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Dos
Padres Inc., 49 USPQ2d 1860, 1861 (TTAB 1998). Whether a
term is merely descriptive is determined not in the
abstract, but in relation to the goods or services for

1 Application Serial No. 85056363, filed June 7, 2010, based on
Section 1(b) of the Trademark Act (intent-to-use).
Ser. No. 85056363
3
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).
The examining attorney takes the position that the
elements of applicant’s mark--ORIGINAL, MADE IN AMERICA and
STORE--are merely descriptive of the goods and services,
and when combined as THE ORIGINAL MADE IN AMERICA STORE,
the mark as a whole retains its descriptive meaning. In
particular, the examining attorney contends that ORIGINAL
is a laudatory term, meaning “existing first, from the
beginning, or before other people or things,” and
“completely new and not compiled or derived from something
else.” MSN.com Encarta dictionary, submitted with
February 27, 2011 Office action. The examining attorney
asserts that ORIGINAL describes applicant’s goods and
services because “applicant is attempting to establish his
business as the first to employ 100 percent made in America
products” (brief, unnumbered p. 3); and that MADE IN
AMERICA is wording used in the retail and clothing industry
to describe goods that are made wholly or partly in the
Ser. No. 85056363
4
United States. The examining attorney also contends that,
“based on the applicant’s voluntary disclaimer of the term
‘store’ in the initial Response to Office Action, the
descriptiveness of this term is not presently at issue.”
Brief, unnumbered p. 2.
We will examine the support for each of these
assertions in turn.
First, with respect to the word STORE, it is not
entirely accurate that applicant voluntarily offered a
disclaimer of STORE. In point of fact, in its January 24,
2011 response applicant stated, “As required by the
Examiner, STORE is being disclaimed.” It appears that
there may have been some confusion on the part of applicant
about whether or not the examining attorney was requiring a
disclaimer; the examining attorney, in refusing
registration on the Principal Register, had suggested that
if applicant were able to file an amendment to allege use,
it could amend its application to the Supplemental
Register, in which case “applicant must disclaim ‘STORE’
because such wording appears to be generic in the context
of applicant’s goods and/or services.” July 23, 2010
Office action. We need not belabor this point, as we
certainly agree that STORE is descriptive of, if not
Ser. No. 85056363
5
generic for, retail store services, and a disclaimer of
STORE would apply to the entire application.
For the phrase MADE IN AMERICA, the examining attorney
has made of record Internet webpages that discuss
applicant’s store as selling only goods made in the United
States. Applicant’s website, www.gwfab.com, states, “The
Made in America Store features the highest quality 100%
America made products,” September 7, 2011 Office action,
p. 3, and an article about applicant’s store says
applicant’s store “will sell only goods that are 100
percent made in the United States….”
http://mylocallookup.com, Feb. 27, 2011 Office action,
p. 52. This same article lists “Clothing & Accessories” as
“Some of the Amazing ‘Made in America’ Products we carry.”
Another article about the Made In America Store, on the NPR
website, www.npr.org, quotes the owner as saying that “I
guarantee when you’re shopping … it’s 100 percent made-in-
America products.” Sept. 7, 2011 Office action, p. 4.
The examining attorney has also submitted evidence
showing that the phrase “Made in America” is used to
describe goods made in the United States and stores selling
such goods. The website USA Americans at Work,
www.americansworking.com, lists various “Made in America
Specialty Stores and Websites,” and the products are
Ser. No. 85056363
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described as being “Made in America.” For example, “Every
item offered at Luxe and Liberty is beautifully designed,
produced with premium-quality materials, and proudly made
in America”; “The Buy-American.com store offers ONLY
products that are manufactured in the USA. … The store
offers a one stop shopping experience for products made
exclusively in America.”
Applicant does not dispute that MADE IN AMERICA
describes its goods, and consequently a store that sells
such goods. Nor does it dispute that STORE is descriptive
for its retail store services. “In the present mark, STORE
is considered descriptive of the retail store services.”
Brief, p. 6. However, it is with the word ORIGINAL, and
the effect of this word on the overall meaning of the mark,
that applicant and the examining attorney are in
disagreement.
As noted, the examining attorney has made of record
several definitions of ORIGINAL, and in her brief she sets
forth these two: “existing first, from the beginning, or
before other people or things” and “completely new and not
copied or derived from something else.” The examining
attorney has also submitted a number of third-party
registrations in which the word ORIGINAL has been
disclaimed, or the marks have been registered on the
Ser. No. 85056363
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Supplemental Register or on the Principal Register under
the provisions of Section 2(f), thereby indicating that the
word ORIGINAL was considered to be merely descriptive. For
example, ORIGINAL for preparing fish and chips as part of
restaurant services (Reg. No. 1127121) was registered
pursuant to Section 2(f), as was THE ORIGINAL STORAGE AND
ORGANIZATION STORE for retail store services in the area of
household accessories, storage items and space organizers
(Reg. No. 2486687)2; THE ORIGINAL for sandwiches (Reg. No.
3204908); ORIGINAL RECIPE for fried chicken for consumption
on or off the premises (Reg. 1303969); ORIGINAL for fans
(Reg. 1609669); ORIGINAL for horse feed (Reg. No. 1718515);
ORIGINAL for gloves (Reg. No. 3675066); and ORIGINAL SERIES
for tables (Reg. No. 3013300). The examining attorney also
made of record Supplemental Register registrations for THE
ORIGINAL MILITARY TOY STORE, MILITARY TOY disclaimed, for
toys, namely military equipment and figures and games,
namely military action games (No. 3199854); AMERICAN
ORIGINAL for building products (No. 3545507); and ORIGINAL
AMERICAN VODKA, VODKA disclaimed, for vodka (No. 2849939).
Applicant, on the other hand, has submitted a number
of third-party registrations in which ORIGINAL has not been

2 We note that this registration does not include a disclaimer
of STORE.
Ser. No. 85056363
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disclaimed, and the marks were registered on the Principal
Register as inherently distinctive. For example, ORIGINAL
was registered “straight” Principal Register for leather
boots (Reg. No. 95601), as was WWW.GEEK-GUY.COM THE
ORIGINAL GEEK TOY STORE for online retail store services
(Reg. No. 3141996, STORE disclaimed); AMERICAN ORIGINAL for
clam chowder (Reg. No. 714454); ANTONE’S ORIGINAL for
sandwiches (Reg. No. 920803); ORIGINAL and design for
towels (Reg. No. 1325936); THE ORIGINAL COOKIE CO. for
cookies for consumption on or off the premises and retail
bakery store services (Reg. No. 1374117, COOKIE CO.
disclaimed); ORIGINAL and star design for, inter alia,
watches, pins, pens and pencils (Reg. No. 1694244); THE
ORIGINAL and design for salt (Reg. No. 3042424); and
ORIGINAL and design for furniture (Reg. No. 3085683).
Although the USPTO attempts to achieve a uniform
standard for assessing registrabiltiy of marks, in this
case the various third-party registrations do not reflect a
consistent policy as to when ORIGINAL is considered merely
descriptive and when it is not. Therefore there is little
persuasive value in the registrations submitted by either
applicant or the examining attorney. See In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001).
Ser. No. 85056363
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We therefore look to the dictionary definitions and
precedent to determine whether, as the examining attorney
asserts, ORIGINAL has a laudatory descriptive meaning as it
is used in applicant’s mark. The examining attorney has
made of record the following definitions of “original,”
used as an adjective, from The American Heritage Dictionary
of the English Language, 4th ed. (2010)3:
1. Preceding all others in time; first.
2. a. Not derived from something else; fresh and
unusual: an original play, not an adaptation.
b. Showing a marked departure from previous
practice: new: a truly original approach.
3. Productive of new things or new ideas: an
original mind.
4. Being the source from which a copy,
reproduction, or translation is made.

As used in applicant’s mark, THE ORIGINAL MADE IN
AMERICA STORE, the meaning conveyed by ORIGINAL is that
this is the first store to sell made-in-America goods, in
other words, ORIGINAL has the first listed dictionary
definition of “first in time.” We find that, as applied to
applicant’s retail store services, this term is laudatory.
In General Foods Corp. v. Ralston Purina Co., 220 USPQ 990,
933 (TTAB 1984), in finding that ORIGINAL BLEND was merely
descriptive of cat food, the Board stated that ORIGINAL is

3 Reported at the website YourDictionary.com, and submitted with
Feb. 27, 2011 Office action. The adjective meanings of ORIGINAL
are appropriate because, as used in the mark THE ORIGINAL MADE IN
AMERICA STORE, ORIGINAL is clearly an adjective rather than a
noun.
Ser. No. 85056363
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“generally used to indicate that a product or a particular
variety or style of a product is the first-of-its kind,”
and that “[t]here is no doubt that one reason for its
widespread use is that, in the English language, at least,
ORIGINAL has the character of ‘puffery’… ” and that “if a
manufacturer wishes to say to purchasers in a plain and
simple way that the product, variety or type is the first-
of-its kind, there are not very many words other than
ORIGINAL from which to choose.” In In re Ervin, 1 USPQ2d
1665, 1666 (TTAB 1986), the Board found that ORIGINAL for a
scorer for playing euchre was merely descriptive, stating
that the first-in-time meaning of the word was laudatory:
We believe that the ‘first-of-its-kind’
connotation found in the Ralston Purina case is
equally applicable to applicant’s game scorer
mark and that such meaning would be readily and
immediately imparted to persons confronted with
the mark on applicant’s goods. Because this
term, in the context of such product usage,
serves to convey a claimed attribute,
characteristic or quality of applicant’s product
without the need for deliberation, imagination or
forethought, its laudatory character meets the
classic test for differentiation of descriptive
from suggestive or arbitrary terminology.

When the mark THE ORIGINAL MADE IN AMERICA STORE is
viewed in its entirety, we find that it is merely
descriptive of applicant’s retail store services. It
directly, and without the need for thought or imagination,
Ser. No. 85056363
11
conveys to consumers that applicant’s store is the first to
sell only made-in-America items.
Applicant argues that its mark is not descriptive
because it has an incongruous meaning in that one cannot
understand from the mark what it is that is original:
Is it the store design that is original?
Is it the merchandise sold in the store that is
original?
Is it a store that sells only merchandise that is
made in America that is original?
In a line of similar stores bearing the mark, is
a particular one to which the customer goes the
original one?

Brief, p. 6. We are not persuaded by this argument.
Because of the common construction of phrases in the
English language, the word ORIGINAL is used as an adjective
to describe the word STORE, such that THE ORIGINAL MADE IN
AMERICA STORE describes a store that is the first-in-time
to sell made in America goods. Consumers would understand
that this is the meaning of the mark, and the mark does not
have an incongruity or require any deliberation to
understand its meaning.
Accordingly, we affirm the refusal to register the
mark for the services in Class 35.
However, we reach a different conclusion for the mark
in connection with the goods in Class 25. As we previously
stated, the word ORIGINAL as used in the mark THE ORIGINAL
Ser. No. 85056363
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MADE IN AMERICA STORE modifies the word STORE, rather than
the clothing sold in the store. Because of this, ORIGINAL
is not laudatory of the clothing, but only of the store.
As a result, the mark in its entirety is not merely
descriptive of applicant’s clothing items.
However, because the examining attorney has shown that
the phrase MADE IN AMERICA is merely descriptive of
applicant’s goods, and indeed is a phrase used by
competitors to describe their own goods, the Class 25
application cannot be passed to publication until applicant
submits a disclaimer of exclusive rights to this phrase.
Since applicant has already submitted a disclaimer of
STORE, the disclaimer should read, “No claim is made to the
exclusive right to use ‘MADE IN AMERICA’ and ‘STORE’ apart
from the mark as shown.”
Decision: The refusal of registration with respect to
the application in Class 35 is affirmed. The refusal of
registration with respect the application in Class 25 is
affirmed absent a further disclaimer of MADE IN AMERICA.
If applicant submits the required disclaimer within thirty
days, this decision as to the Class 25 application will be
set aside and the application approved for publication in
this class.