Jinwoong, Inc.

Trademark Trial and Appeal Board

Dec 17, 1997

No. 74538475 (T.T.A.B. Dec. 17, 1997)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB DEC 17, 97
Paper No. 16
JER
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Jinwoong, Inc.
________
Serial No. 74/538,475
_______
Michael J. Hughes of The Intellectual Property Law Office of
Michael J. Hughes for applicant.
Anil V. George, Trademark Examining Attorney, Law Office 108
(David E. Shallant, Managing Attorney).
_______
Before Rice, Simms, and Hairston, Administrative Trademark
Judges.
Opinion by Rice, Administrative Trademark Judge:
An intent-to-use application has been filed by
Jinwoong, Inc. to register the mark CANVAS CLASSICS and
design, as shown below (in reduced size),
for luggage, tote bags, duffel bags, knapsacks, and casual
luggage components, namely, identification tags, straps for
luggage and collapsible, non-motorized luggage carts.1
The Examining Attorney has made final a requirement for
a disclaimer of the words CANVAS CLASSICS apart from the
mark as shown, pursuant to Sections 2(e)(1) and 6(a) of the
Act, 15 U.S.C. §§1052(e)(1) and 1056, on the ground that
these words, when applied to the goods of the applicant,
merely describe an ingredient, quality, characteristic,
function, feature, purpose or use of them. Applicant has
appealed.
In support of the refusal to register, the Examining
Attorney has made of record a substantial amount of
evidence, namely, excerpts from more than 30 different
stories from the NEXIS database; copies of 23 third-party
applications/registrations containing disclaimers of the
terms CLASSIC, CLASSICS, or CANVAS; copies of eight third-
party advertisements; and certain dictionary definitions.
The NEXIS story excerpts all include the term CLASSIC
or CLASSICS used within five or ten words of the term
LUGGAGE (or, in a few instances, the terms TOTE BAG or

1 Application Serial No. 74/538,475, filed June 16, 1994 under
Section 1(b) of the Trademark Act of 1946, 15 U.S.C. §1051(b).
An amendment to allege use, asserting first use and first use in
commerce on September 28, 1994, was filed by applicant, pursuant
to Section 1(c) of the Act, on February 5, 1996 and was approved
by the Examining Attorney. It is stated in the application that
KNAPSACK or DUFFEL). Some of the most pertinent excerpts
are quoted below (emphasis added):2
“The bag borrows features from classic duffel
and luggage designs. It’s a roomy carry-on
that will fit under an airplane seat.” -- The
San Diego Union-Tribune (June 25, 1995)
“… the new Florentia is one of the largest
luggage collections she has seen in years.
There are three sizes of classic luggage and
10 to 15 additional items that include garment
bags and two-suiters for men.” -- The Post and
Courier (December 9, 1994)
“Mrs. Moltedo supervises the teams of designers
who seasonally produce fresh takes on Bottega’s
classic handbags, shoes, belts, gloves and
luggage.” -- The Dallas Morning News (November
1, 1992)
“The lifestyle-oriented Marco Polo Collection,
ranging from day bags to luggage, is always
available in classic shapes in black, navy, red,
green or brown.” -- The San Francisco Chronicle
(August 6, 1990)
“The merchandise line includes a classic
structured luggage group updated with bright
primary colors …” -- Women’s Wear Daily (July
13, 1990)
“… square-foot store, located between Madison
Avenue and Park Avenue, will carry the entire
Ghurka collection, including its classic khaki

the lining and stippling shown in the drawing are features of the
mark and are not intended to indicate color.
2 A few of the story excerpts are from foreign publications,
which do not show the significance of the term CLASSIC, in
relation to goods of the type listed in applicant’s
identification, in the United States. A few of the other
excerpts come from newswire stories. Unless there is evidence
that these stories have been picked up and printed, they are not
evidence that the usage shown therein has had any impact on
public perception of the significance of the term CLASSIC in
relation to luggage products. Accordingly, we have not
considered the excerpts from foreign publications at all, and
have accorded little probative value to the newswire excerpts.
twill and leather bags and luggage …” --
Women’s Wear Daily (April 27, 1990)
“… took plenty of time to see America, but no
more luggage than today’s weekend traveler.
For him, the classic sport duffel, either a
vertical ‘north-south’ model that hangs
cylinderlike from the shoulder or an ‘east-
west’ version …” -- The New York Times (June 25
1989)
“Designer Jon Darmstadter takes classic
luggage styles and updates them with fashion-
forward fabrics.” -- Chicago Tribune (May 15,
1985)
“… classic hard-sided handmade luggage runs from
$535 to $775 …” -- The New York Times (December 5,
1982)
“With this classic Engligsh (sic) gardeners’ tote
bag, there’s no excuse for misplacing your tools.”
-- Forbes (March 14, 1994)
“The knapsacks, in combinations of suede, denim
and plaids in the dark fall colors, are classic-
looking …” -- The Times Union (August 25, 1994)
The third-party applications/registrations made of
record by the Examining Attorney include 19
applications/registrations of composite marks containing the
term CLASSIC or CLASSICS, all of which include a disclaimer
of the term apart from the mark as shown. Eleven of them
are for goods similar, at least in part, to applicant’s;
seven for related goods (e.g., handbags, wallets, etc.); and
one for unrelated goods (kits for making horse sheets and
horse blankets). There are also four
applications/registrations of composite marks containing the
term CANVAS, all of which include a disclaimer of that term.
Three of these are for goods similar, at least in part, to
applicant’s; one is for related goods (ladies’ handbags).
The eight third-party advertisements show use of
CLASSIC or CLASSICS either as part of descriptive text or as
part of trademarks in which the term appears to play a
descriptive role. Some of the advertisements are for goods
similar, at least in part, to applicant’s; the rest are for
related goods such as attachô cases, portfolios, and
handbags.3
Finally, the Examining Attorney relies upon two
definitions from the Man-Made Fiber and Textile Dictionary
(1981). The first definition is for the word CANVAS and
reads simply, “See DUCK.” The definition for DUCK reads as
follows:
A compact, firm, heavy, plain-weave fabric with a
weight of 6 to 50 ounces per square yard. Plied
yarn duck has plied yarns in both warp and filling.

3 For example, an ad in the August 1989 issue of Travelware
features briefcases identified by the mark RENASCENCE and,
thereunder, the phrase “NEW AGE” CLASSICS. An ad in the March
1995 issue of the same publication pictures plaid luggage
identified by the mark ANDIAMO and also includes, above the
picture, the words CLASSIC BLACK WATCH. An ad in the September
1993 issue of Accessories pictures handbags and what looks like a
briefcase and, above the picture, the wording “Insist on the
original ANDANTINI CLASSICS”. The same issue includes an ad by
Carpetbags of America picturing handbags and possibly a carpetbag
with text which includes the sentence, “THIS SEASON, THE EMPHASIS
IS ON CLASSIC STYLE EXPRESSED IN A BROAD RANGE OF DISTINCTIVE
FABRICS.” An ad in the April 1994 issue of Accessories pictures
handbags accompanied by text which reads in part, “Let us find
you the right Brahmin Handbags for your store from our best
selling classics and exciting NEW alternatives.” A Spiegel
catalog listing for a carpetbag includes the text, “This roomy
cotton tapestry bag combines the timeless appeal of the classic
equestrian theme with today’s functional demands.”
Flat duck has a warp of two single yarns woven
as one and a filling of either single or plied
yarn.
We also note that the adjective “classic” is defined in
The Random House Dictionary of the English Language (Second
Edition Unabridged, 1987) as, inter alia, “of the first or
highest quality, class, or rank”, “serving as a standard,
model, or guide”, “of enduring interest, quality, or style”,
and “traditional or typical”. The noun form of the word is
defined in the same dictionary as, inter alia, “a work that
is honored as definitive in its field”, “something
noteworthy of its kind and worth remembering”, and “an
article, as of clothing, unchanging in style”.
A mark is merely descriptive if, as used in connection
with the goods or services in question, it describes, i.e.,
immediately conveys information about, an ingredient,
quality, characteristic, feature, etc. thereof, or if it
directly conveys information regarding the nature, function,
purpose, or use of the goods or services. See In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978);
In re Eden Foods Inc., 24 USPQ2d 1757 (TTAB 1992); and In re
American Screen Process Equipment Co., 175 USPQ 561 (TTAB
1972). The question of whether a mark is merely descriptive
must be determined not in the abstract, that is, not by
asking whether one can guess from the mark itself,
considered in a vacuum, what the goods or services are, but
rather in relation to the goods or services for which
registration is sought, that is, by asking whether, when the
mark is seen on the goods or services, it immediately
conveys information about their nature. See In re Abcor,
supra.
In the present case, the specimens submitted with
applicant’s amendment to allege use show that its various
products are made of canvas. Thus, the term CANVAS
describes a characteristic or feature of applicant’s goods.
Moreover, the evidence made of record by the Examining
Attorney establishes that the term CLASSICS likewise has
descriptive significance with respect to goods of the type
specified in applicant’s application, in that it describes
their nature or a characteristic or feature of them. The
combination of the two terms as CANVAS CLASSICS does not
result in any different significance. Rather, the
combination simply conveys the merely descriptive meanings
of its parts. Under the circumstances, we fully agree with
the Examining Attorney’s conclusion that the words CANVAS
CLASSICS are merely descriptive of applicant’s goods and
thus must be disclaimed apart from the mark as shown.4

4 It should be noted that the Examining Attorney has not taken
the position that the design portion of applicant’s mark is
lacking in distinctiveness. Rather, the Examining Attorney
maintains (quite correctly, in our opinion) that the mark
includes not only the distinctive design of the man, dog, house,
etc., but also the words CANVAS CLASSICS, and that because these
words are merely descriptive as applied to applicant’s goods, the
Applicant argues, inter alia, that it owns a
registration on the Supplemental Register of the designation
CANVAS CLASSICS for the same goods as those specified in the
present application; that in light of applicant’s
established right to the word mark, a blanket disclaimer is
out of the question; that applicant should not be forced to
vitiate its already established rights in order to obtain
protection for its distinctive logo form of the mark; and
that applicant instead should be allowed to submit a
qualified disclaimer in the following form:
Applicant is the owner of U.S. Trademark
Registration No. 1,971,971 for the mark CANVAS
CLASSICS (typed drawing), issued 30 April 1996
on the Supplemental Register, for the same goods
as the present matter. Applicant relies on such
registration for any claim of right to the words
“CANVAS CLASSICS” for the goods stated herein,
and accordingly disclaims any rights to such
words as a part of the present matter, apart
from the mark as shown.
It is clear that applicant misunderstands the nature of
a registration upon the Supplemental Register. Section 7(b)
of the Act, 15 U.S.C. §1057, provides that a certificate of
registration upon the Principal Register shall be prima
facie evidence of the validity of the registered mark and of
the registration of the mark, of the registrant’s ownership
of the mark, and of the registrant’s exclusive right to use
the registered mark in commerce on or in connection with the

mark as a whole is not registrable on the Principal Register
without a disclaimer of the words.
goods or services specified in the certificate, subject to
any conditions or limitations stated in the certificate.
The same is not true of a certificate of registration upon
the Supplemental Register. To the contrary, Section 26 of
the Act, 15 U.S.C. §1094, specifically provides that
registrations upon the Supplemental Register shall not
receive the advantages of §7(b). Indeed, while a
registration upon the Supplemental Register is not evidence
that registrant has any existing rights in the registered
mark, it does constitute, in cases such as this, evidence of
applicant’s concession that at least at the time of
registrant’s first use of the registered term, the term was
merely descriptive as applied to the goods or services
specified in the registration. See, for example, In re
Medical Disposables Co., 25 USPQ2d 1801 (TTAB 1992); Perma
Ceram Enterprises Inc. v. Preco Industries Ltd., 23 USPQ2d
1134 (TTAB 1992); In re Federated Department Stores Inc., 3
USPQ2d 1541 (TTAB 1987); In re France Croissant, Ltd., 1
USPQ2d 1238 (TTAB 1986); and In re Hester Industries, Inc.,
230 USPQ 797 (TTAB 1986).
For the foregoing reasons, the requirement for a
disclaimer, in the form specified by the Examining Attorney,
of the designation CANVAS CLASSICS is affirmed. Applicant
is allowed until 30 days from the mailing date of this
decision in which to submit the required disclaimer. If
applicant submits the disclaimer during the time allowed,
the decision will be set aside.
J. E. Rice
R. L. Simms
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial
and Appeal Board