Jones Investment Co. Inc.

Trademark Trial and Appeal Board

Jan 21, 2009

No. 77249189 (T.T.A.B. Jan. 21, 2009)

Mailed: 1/21/09

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Jones Investment Co. Inc.
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Serial No. 77249189
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Nancy Dodderidge for Jones Investment Co. Inc.

Kapil K. Bhanot, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).
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Before Quinn, Grendel and Drost, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

Jones Investment Co. Inc. filed, on August 7, 2007,
intent-to-use application Serial No. 77249189 to register
the mark GREEN INDIGO for “bottoms; [and] tops.”
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the ground that applicant’s mark, when
applied to applicant’s goods, is merely descriptive
thereof.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser. No. 77249189
2
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
The examining attorney maintains that applicant’s mark
“describes a specific characteristic of the goods, namely
that they may come in the colors GREEN or INDIGO.” (Brief,
p. 2). In support of the refusal, the examining attorney
submitted dictionary definitions of the terms “green” and
“indigo,” and excerpts of third-party websites showing that
green and indigo are common colors for clothing items.
Although the examining attorney acknowledges that the terms
have multiple meanings, “the primary use of the terms in
clothing are [sic] to describe colors.” (Brief, p. 4).
Lastly, the examining attorney asserts that the terms
“green” and “indigo” must remain free for use by
competitors in the clothing field so they can accurately
describe color options to consumers.
Applicant argues that the terms “green” and “indigo”
have meanings (even in the same context, namely clothing)
other than as color names and, when used in combination to
form applicant’s mark, are incongruous. Applicant “has
taken a seemingly incongruous combination of colors to
signal to consumers to look beyond their meanings as
primary colors alone.” (Response, March 5, 2008).
Applicant goes on to state that it does not intend to offer
Ser. No. 77249189
3
only green and indigo colored clothing, and that its mark
is suggestive of “a fresh, youthful and environmentally-
friendly” jeans wear line. With respect to the term
“green,” applicant points to the existence of
environmentally-aware clothing, as shown by its evidence of
a Google search report and corresponding excerpts of third-
party websites for “green clothing,” with the first ten
hits relating to such clothing. As for “indigo,” applicant
contends that this term “further plays upon the earthy-
vibe” conveyed by the mark as a whole. More specifically,
applicant asserts that its use of the term plays upon its
meaning as a dye made from plants to suggest an earth-
conscious vibe for its clothing. “By combining two
seemingly incongruous colors, GREEN INDIGO requires thought
and perception on behalf of consumers to comprehend the
earthy connotations of the mark and the youthful, hip and
fresh undertones of the jeans wear line.” (Brief, p. 6).
Applicant has supplied dictionary definitions of the words
comprising its mark.
The examining attorney bears the burden of showing
that a mark is merely descriptive of the relevant goods
and/or services. In re Merrill, Lynch, Pierce, Fenner, and
Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir.
1987). A mark is descriptive if it "forthwith conveys an
Ser. No. 77249189
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immediate idea of the ingredients, qualities or
characteristics of the goods [and/or services]."
Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4,
189 USPQ 759, 765 (2d Cir. 1976) (emphasis added). See In
re Abcor Development Corp., 616 F.2d 525, 200 USPQ 215
(CCPA 1978). Moreover, in order to be descriptive, the
mark must immediately convey information as to the
qualities, features or characteristics of the goods and/or
services with a "degree of particularity." Plus Products
v. Medical Modalities Associates, Inc., 211 USPQ 1199,
1204-1205 (TTAB 1981). See In re Diet Tabs, Inc., 231 USPQ
587, 588 (TTAB 1986); Holiday Inns, Inc. v. Monolith
Enterprises, 212 USPQ 949, 952 (TTAB 1981); In re TMS Corp.
of the Americas, 200 USPQ 57, 59 (TTAB 1978); and In re
Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972).
Of particular importance to the analysis in the
present case is the principle that when two or more merely
descriptive terms are combined, the determination of
whether the composite mark also has a merely descriptive
significance turns on the question of whether the
combination of terms evokes a new and unique commercial
impression. If each component retains its merely
descriptive significance in relation to the goods, the
combination results in a composite that is itself merely
Ser. No. 77249189
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descriptive. See, e.g., In re Tower Tech, Inc., 64 USPQ2d
1314 (TTAB 2002) [SMARTTOWER merely descriptive of
commercial and industrial cooling towers]; In re Sun
Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) [AGENTBEANS
merely descriptive of computer programs for use in
development and deployment of application programs]; In re
Putnam Publishing Co., 39 USPQ2d 2021 (TTAB 1996) [FOOD &
BEVERAGE ONLINE merely descriptive of news information
services for the food processing industry]; and In re
Copytele Inc., 31 USPQ2d 1540 (TTAB 1994) [SCREEN FAX PHONE
merely descriptive of facsimile terminals employing
electrophoretic displays].
The term “green” obviously is a color name. The term
also has other meanings, in particular “environmentally
sound or beneficial; young; full of life and vigor; fresh.”
The term “indigo” is defined in pertinent part as “any of
various shrubs or herbs of the genus Indigofera in the pea
family, having odd-pinnate leaves and usually red or purple
flowers in axillary racemes; a blue dye obtained from these
plants or produced synthetically.” (www.dictionary.com).
Given the dictionary definitions of record, the
individual words comprising applicant’s mark have commonly
understood meanings that are merely descriptive for
clothing. We do not believe, however, that the specific
Ser. No. 77249189
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combination of the words GREEN INDIGO results in a
designation which, when considered in its entirety, is
merely descriptive of applicant’s goods. That is to say,
applicant’s mark, as intended to be used in connection with
clothing, does not convey an immediate idea about the goods
with any degree of particularity. Whether the term “green”
is perceived as the name of a color, a term designating an
environmentally-friendly product or a term projecting a
fresh or youthful image, its combination with the term
“indigo” does not result in a merely descriptive
designation. The mark GREEN INDIGO requires imagination,
thought and perception to reach any conclusion as to the
nature of the goods. A consumer must engage in mature
thought or follow a multi-stage reasoning process to
determine any specific attributes of applicant’s product:
first, a consumer must connect the term “green” to a color,
an environmental message or youth, and then must connect
“indigo” to either a plant or a dye, let alone color.
After making these respective connections, the consumer is
then forced to make some sense out of the various meanings
conveyed by the incongruous combination of the two terms.
This need to resort to imagination renders the mark only
suggestive. In sum, the significance of the incongruous
combination GREEN INDIGO as a whole, when considered in the
Ser. No. 77249189
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context of the goods, is somewhat vague and unclear, and we
find that the mark is suggestive of environmentally-
friendly clothing that uses natural dye extracted from
indigo plants.
The prohibition against registration of merely
descriptive designations is intended to prevent one party
from precluding all others from fair use of descriptive
terminology in connection with goods and/or services that
are described thereby. We acknowledge that the record
includes a single third-party use of “Green Indigo” in
connection with pajamas (“Green Indigo Paisley Jacquard
Silk Pajama”). A closer examination of this evidence,
however, shows that it is hardly probative of the examining
attorney’s position. Contrary to the examining attorney’s
contention, this use is not “green indigo” as a color name;
rather, the use of “Green” in this context is a reference
to the name of the clothing manufacturer, namely “Mary
Green.” Accordingly, nothing in the record suggests that
others in the clothing field have used or would need to use
the two-word combination GREEN INDIGO to describe their
goods. We agree with applicant’s assessment that
applicant’s mark, if registered, would not “preclude others
from using the terms ‘green’ or ‘indigo’ in a descriptive
manner to describe a color in which a clothing item might
Ser. No. 77249189
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be offered.” (Reply Brief, p. 2). That the record is
devoid of any evidence of descriptive use of “green indigo”
in the clothing industry is indicative that applicant’s
mark is only suggestive. See Firestone Tire & Rubber Co.
v. Goodyear Tire & Rubber Co., 186 USPQ 557 (TTAB 1975),
aff’d, 189 USPQ 348 (CCPA 1976).
The Board has noted on a number of prior occasions
that there is a thin line of demarcation between a
suggestive and a merely descriptive designation. To the
extent that any of the examining attorney’s arguments and
evidence raise doubts about the merely descriptive
character of applicant’s mark, such doubts are to be
resolved in applicant’s favor and the mark should be
published, thus allowing a third party to file an
opposition and develop a more comprehensive record. See
e.g., In re Atavio, 25 USPQ2d 1361 (TTAB 1992); In re
Morton-Norwich Products, Inc., 209 USPQ 791 (TTAB 1981);
and In re Gourmet Bakers, Inc., supra.
Decision: The refusal to register is reversed.