Great Beach Vacations, Inc.

Trademark Trial and Appeal Board

Mar 16, 2001

No. 75540442 (T.T.A.B. Mar. 16, 2001)

03/16/01
Paper No. 10
HWR
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Great Beach Vacations, Inc.
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Serial No. 75/540,442
_______
B. Craig Killough of Barnwell Whaley Patterson & Helms LLC
for Great Beach Vacations, Inc.
Shanna Winters, Trademark Examining Attorney, Law Office
102 (Thomas Shaw, Managing Attorney).
_______
Before Seeherman, Wendel and Bottorff, Administrative
Trademark Judges.
Opinion by Wendel, Administrative Trademark Judge:
Great Beach Vacations, Inc. has filed an application
to register the mark GREAT BEACH VACATIONS and design, as
depicted below, for “real estate listing services, real
estate leasing services, real estate management services.”1
1 Serial No. 75/540,442, filed August 21, 1998, claiming first
use dates of November 12, 1997.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/540,442
2
Registration has been finally refused under Section
6(a) of the Trademark Act on the basis of applicant’s
failure to comply with the requirement that a disclaimer be
entered of the entire word phrase GREAT BEACH VACATIONS
apart from the mark as a whole. Applicant has submitted a
disclaimer of the words BEACH VACATIONS.
Applicant and the Examining Attorney have filed
briefs, but an oral hearing was not requested.
The Examining Attorney maintains that the wording
GREAT BEACH VACATIONS as a whole is merely descriptive of a
feature or characteristic of applicant’s services and thus
must be disclaimed in its entirety. She points out that by
applicant’s disclaimer of “beach vacations” applicant does
not dispute the descriptiveness of this wording. Although
applicant contends that the term “great” is distinctive as
used in the mark, the Examining Attorney argues that
“great” is being used in a laudatory sense and is
equivalent to other descriptive terms under Section
2(e)(1). In support of this position, she has made of
record dictionary definitions of the word “great”; Nexis
articles referring both to “great vacations” and “great
beaches”; and copies of third-party registrations in which
the word “great” has been disclaimed. She argues that this
evidence shows that the terms “great,” “beach” and
Ser No. 75/540,442
3
“vacation”, when used together in connection with the
identified services, refer to a quality and type of place
or property, namely a great beach property for vacation
rentals. In addition she points to applicant’s own
specimens wherein applicant describes its services as
having mastered the “art of providing great beach
vacations.”
Applicant insists that the word portion of its mark,
GREAT BEACH VACATIONS, is not merely descriptive of the
services provided by applicant; that it is not a travel
agency or a resort providing vacation services. Applicant
argues that the Examining Attorney has improperly dissected
its mark in order to show descriptiveness, rather than
considering the phrase as a whole. Applicant notes that
while there are references in the evidence of record to
“great vacations” or “great beaches,” there are no
references to the three words together or any references to
show that the three words are used to describe real estate
agency services. Applicant points to third-party
registrations in which no disclaimer of the term “great”
was required.2
2 In her brief, the Examining Attorney objects to applicant’s
reliance upon three third-party registrations without providing
copies thereof. This objection is not well taken. Applicant
first referred to these registrations in its response of
September 22, 1999. The Examining Attorney failed to object to
Ser No. 75/540,442
4
A term or phrase is merely descriptive within the
meaning of Section 2(e)(1) if it immediately conveys
information about a characteristic or feature of the goods
or services with which it is being used. See In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
Whether or not a particular term or phrase is merely
descriptive is determined not in the abstract, but rather
in relation to the goods or services for which registration
is sought, the context in which the designation is being
used, and the significance the designation is likely to
have to the average purchaser as he or she encounters the
goods or services bearing the designation, because of the
manner in which it is used. See In re Bright-Crest, Ltd.,
204 USPQ 591 (TTAB 1979).
By its disclaimer thereof, applicant has admitted that
the wording GREAT VACATIONS, as used in its mark, is merely
descriptive and has acknowledged that it does not have an
exclusive right to these words. See Quaker State Oil
Refining Corp. v. Quaker Oil Corp., 453 F.2d 1296, 172 USPQ
361 (CCPA 1972); In re Tennessee Walking Horse Breeders’
and Exhibitors’ Assn., 223 USPQ 188 (TTAB 1984).
the manner of introduction of the third-party registrations in
her next action and thus in effect waived any right to later
object to the registrations on the basis of this procedural
defect, which could have been cured if timely raised.
Ser No. 75/540,442
5
Applicant’s arguments that it is not a travel agency or a
resort are to no avail; applicant has admitted that the
words BEACH VACATIONS are descriptive of its particular
type of real estate services.
The only issue is whether the presence of the term
GREAT imparts other than descriptive significance to
applicant’s mark as a whole. If used merely in a laudatory
sense touting the allegedly superior quality of applicant’s
services, the term GREAT falls within the category of being
descriptive as well. See In re Boston Beer Co. L.P., 47
USPQ2d 1914 (TTAB 1998), aff’d, 198 F.3d 1370, 53 USPQ2d
1056 (Fed. Cir. 1999); In re Consolidated Cigar Co., 35
USPQ2d 1290 (TTAB 1995). The Examining Attorney has made
of record a dictionary definition for the term “great” as
“superior in quality or character”.3 She has also shown
extensive use of the term “great” to describe “vacations,”
in some instances vacations at a beach, as well as to
describe a “beach” or “beaches.” Thus, we are without any
doubt that purchasers would view the term “great” as used
in GREAT BEACH VACATIONS as a laudatory term touting the
superior quality of applicant’s real estate services which
admittedly involve beach vacations. The term would be
3 The American Heritage Dictionary of the English Language (3rd
ed. 1992).
Ser No. 75/540,442
6
viewed as part of the phrase GREAT BEACH VACATIONS, and the
phrase as a whole is merely descriptive of applicant’s
services.
If, in fact, there were any doubt as to this reaction
by purchasers, we need only look to applicant’s own
specimens. Evidence of the context in which an applicant
is using its mark in brochures or other advertising
materials is clearly probative of the reaction of
prospective purchasers to the mark. See In re
Pharmaceutical Innovations, Inc., 217 USPQ 365 (TTAB 1983).
Here applicant’s specimens show descriptive use of the
entire phrase “great beach vacations” in touting their real
estate services, which focus on “vacation rentals” on
islands near Charleston. No more evidence is needed to
show that the phrase as a whole is merely descriptive of
applicant’s services.
While applicant has pointed to third-party
registrations in which the term “great” has not been
disclaimed and the Examining Attorney has noted
registrations to the contrary, each case must be decided on
its own merits. Here the evidence is fully sufficient to
demonstrate the descriptiveness of the term GREAT, as used
in applicant’s mark.
Ser No. 75/540,442
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Accordingly, the refusal to register on the basis that
a disclaimer of the entire phrase GREAT BEACH VACATIONS
must be submitted is affirmed. Pursuant to Trademark Rule
2.142(g), this decision will be set aside and applicant’s
mark will be published for opposition if applicant, no
later than thirty days from the mailing date hereof,
submits a disclaimer of the words GREAT BEACH VACATIONS
apart from the mark as a whole.
Decision: The requirement for a disclaimer is
affirmed.
Ser No. 75/540,442
8