J.W. Pepper & Son, Inc.

Trademark Trial and Appeal Board

Sep 26, 2014

No. 85707925 (T.T.A.B. Sep. 26, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 26, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re J.W. Pepper & Son, Inc.
_____

Serial No. 85707925
_____

Timothy D. Pecsenye and Matthew A. Homyk of Blank Rome LLP,
for J.W. Pepper & Son, Inc.
Heather D. Thompson, Trademark Examining Attorney, Law Office 109,
Dan Vavonese, Managing Attorney.
_____

Before Taylor, Mermelstein and Wellington,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
J.W. Pepper & Son, Inc. (“Applicant”) seeks registration on the Principal
Register of the mark MY SCORE (in standard characters) for
on-line retail store services featuring printed or digital
sheet music in International Class 35.1
The Trademark Examining Attorney has issued a final requirement that
applicant disclaim the exclusive right to use the term “SCORE” pursuant to Section

1 Application Serial No. 85707925 was filed on August 20, 2012, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
Serial No. 85707925
- 2 -

6 of the Trademark Act, 15 U.S.C. § 1056, because it merely describes a feature of
Applicant’s online music stores.
Applicant appealed the final requirement and requested reconsideration. After
the Examining Attorney denied the request for reconsideration, the appeal was
resumed. Applicant and the Examining Attorney filed briefs, and Applicant filed a
reply brief. We affirm the refusal to register for applicant’s failure to disclaim the
word “SCORE.”
An examining attorney may require an applicant to disclaim an unregistrable
component of a mark otherwise registrable. Section 6 of the Trademark Act, 15
U.S.C. § 1056. Merely descriptive or generic terms are unregistrable under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), and therefore are subject to
disclaimer if the mark is otherwise registrable. Failure to comply with a disclaimer
requirement is a ground for refusal of registration. See In re Omaha National
Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Box Solutions Corp., 79
USPQ2d 1953 (TTAB 2006).
The Examining Attorney maintains that the word SCORE merely describes a
feature of Applicant’s identified services, particularly that Applicant’s online retail
stores offer musical scores for sale or download. As support for her position, the
Examining Attorney has made of record the following:
1. Definition of “Score”2
6 a: the copy of a musical composition in written or
printed notation

2 http://www.meriam-webster.com/dictionary/score.
Serial No. 85707925
- 3 -

2. Internet materials showing that “the relevant consumers
would immediately understand the term ‘SCORE’ to describe the
offerings of online stores featuring sheet music.”3 The following
excerpts are illustrative.
We're your online sheet music source for music books,
music sheets, songbooks, music scores, choral sheet music
and more! Sheet Music Plus
(www.sheetmusicplus.com)

Our mail order form is designed to accommodate full score
purchases only. If you wish to purchase individual parts,
please call in your order. Free Flight Music
(http://www.freeflightmusic.com/buy-sheet-music-
online.php).

Sheet Music Archive offers a meticulously organized
collection including the works of hundreds and tens of
thousands pieces of classical sheet music. Download and
print scores for piano sheet music plus arrangements;
Printable sheet music scores for piano, orchestra, choir
and many classical instruments. Sheet Music Archive
(http://www.sheetmusicarchive.net/index.cfm).

Scores the New MP3s? Sheet music sales online for
artists. Article in Create Digital Music
(http://createdigitalmusic.com/2009/05/scores-the-new-
mp3s-sheet-music-salesonline-for-artists/).

PlaybillStore.com carries more than 70 Broadway musical
piano/vocal scores from the Hal Leonard and Alfred
Publishing catalogs. Vocal scores contain the complete
vocal score of the show - including reprises and choral
parts - in the original keys as performed by the original
casts on Broadway. Playbill Store
(http://www.google.com/#q=purchase+music+scores+onlin
e&ei=dlrkUYxE8P54AOClYDAAQ&start=20&sa=N&bav
=on.2,or.&fp=f9a20f279162cec5&biw=1274&bih=752).

3 Exhibits to the final Office Action issued July 15, 2013.
Serial No. 85707925
- 4 -

3. Excerpts from Applicant’s website showing descriptive use of the word
“SCORE”:
This is the officially licensed, collectible sheet music book
from the motion picture, featuring solo piano
arrangements of nine standout selections from Alexandre
Desplat's acclaimed score, along with several pages of
color imagery from the final film of the Harry Potter
series.
(http://www.jwpepper.com/Harry-Potter-and-the-Deathly-
Hallows%2C-Part-2/10291155.item)

Award-winning film composer Hans Zimmer brings two
groundbreaking scores with his soundtracks to Warner
Bros. Entertainment's Sherlock Holmes and Sherlock
Holmes: A Game of Shadows. With this sheet music
collection, pianists and aspiring film composers can
explore the music in depth with solo piano reductions of
three standout selections from each soundtrack.
(http://www.jwpepper.com/Sherlock-
Holmes/10317939.item)

Dreaming of Bag End is a standout theme from Howard
Shore's majestic score to "The Hobbit: An Unexpected
Journey." This officially licensed sheet music provides
pianists with a beautiful solo rendition that's perfect for
recital or performance.
(http://www.jwpepper.com/Dreaming-of-Bag-
End/10348718.item)

4. Printouts of third-party registrations of marks which include the
word SCORE, in which the word has been disclaimed (alone or in
combination with other matter). The registrations include:4

4 The Examining Attorney also made of record a printout of Supplemental Register
Registration No. 4181045 for the mark SCOREMANAGER for “Computer software for
composing, performing, publishing, arranging and printing music.”
Serial No. 85

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- 5 -
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Serial No. 85707925
- 6 -

“A term is merely descriptive if it immediately conveys knowledge of a quality,
feature, function, or characteristic of the goods or services with which it is used.” In
re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed.
Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828,
1831 (Fed. Cir. 2007)). Whether a particular term is merely descriptive is
determined in relation to the goods for which registration is sought and the context
in which the term is used, not in the abstract or on the basis of guesswork.
Chamber of Commerce, 102 USPQ2d at 1219.
The evidence submitted by the Examining Attorney convinces us that the term
SCORE, when used in connection with Applicant’s on-line retail store services
featuring printed or digital sheet music, merely describes a feature of the services,
namely, that Applicant offers printed and digital sheet music of musical scores.
Indeed, our findings are confirmed not only by Applicant’s own descriptive use of
“score” as noted above, but also by the explanation of its “MY SCORE” services as
shown in the excerpt from Applicant’s website reproduced below. The excerpt
makes clear that with Applicant’s “MY SCORE registration,” a purchaser or
potential purchaser will receive professionally printed music and/or secure delivery
of digital files, and that they are or will be given a choice of how the compositions or
“scores” are formatted. As a result, consumers and prospective consumers of
Applicant’s services would immediately perceive, without any mental leaps, the
descriptive significance of the term SCORE in the applied-for mark in relation to
the sheet music featured in Applicant’s on-line retail services.
Serial No. 85

***
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- 7 -
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Serial No. 85707925
- 8 -

musical notes. Applicant’s attempt to distinguish “sheet music” from a “score” is of
no moment. The issue in this case is not whether “SCORE” is generic of Applicant’s
services. Rather, the issue before us is whether the term is merely descriptive of
the services; that is, does it describe a feature or characteristic of the identified
services. As explained above, it does.
We also do not find the combined term “MY SCORE” unitary such that a
disclaimer would not be required. We recognize that “my” has possessive
significance with respect to the term “score.” However, the combination of the two
words does not create a combined inseparable term. We also are not persuaded by
Applicant’s argument that prior determinations of the Trademark Office with
regard to its Registration No. 4471837, formerly application Serial No. 85708700,5
for the standard character mark MY SCORE YOUR MUSIC. OUR NETWORK. and
Application Serial No. 85573368 for the design mark , both for
“on-line retail store services featuring printed or digital sheet music,” support a
finding that the term SCORE within the context of Applicant’s mark is suggestive,
rather than descriptive. First, we are not bound by the decisions of examining
attorneys to approve other applications for publication. The Board must make its
own findings of fact, and that duty may not be delegated by adopting the
conclusions reached by an examining attorney. In re Sunmarks, Inc., 32 USPQ2d
1470, 1472 (TTAB 1994); In re BankAmerica Corp., 231 USPQ 873, 876 (TTAB

5 This application has since matured into Registration No. 4471837.
Serial No. 85707925
- 9 -

1986). Second, to the extent the approval of applicant’s other applications for
publication is relevant at all, we note that the marks in those instances are slogans
and, as such, will be treated differently from the similarly-constructed, two-word
mark involved in this case.
Applicant also cites to In re Four Seasons Hotel, Ltd., 987 F.2d 1565, 26 USPQ2d
1071 (Fed. Cir. 1993), arguing that “the Patent and Trademark Office should have a
strong preference for allowing for full registration of a mark,” and extrapolating
that the “rule is to protect the owner of trademarks by allowing them to register
their marks, not to make them disclaim matter.” That decision is easily
distinguishable. First, the Court in that case was reviewing the Board’s decision to
affirm a refusal under Section 2(d) for likelihood of confusion. The primary focus in
that case was on a consent agreement which the Court found was given inadequate
consideration in favor of the Board’s reliance on its own views. Herein, the issue is
whether the term SCORE is descriptive and the focus is on whether there is a need
for competitors to use the term in the market place. Four Seasons has very little
similarity with the case at hand, and certainly doesn’t support the notion that the
USPTO cannot or should not require the disclaimer of unregistrable components of
marks.
Finally, we note Applicant’s reliance on the principle that when there is doubt on
the issue of whether a mark is merely descriptive, that doubt should be resolved in
favor of the applicant. In the present case, however, the record leaves us no doubt
to be resolved.
Serial No. 85707925
- 10 -

After careful consideration of all of the evidence and arguments presented,
including evidence and arguments not specifically discussed herein, we conclude
that when applied to Applicant’s services, the term SCORE, immediately describes
a feature of the identified services, namely that the printed and digital sheet music
featured in Applicant’s on-line retail stores includes musical scores.
Decision: The refusal to register based on the requirement for a disclaimer of
the word SCORE is affirmed. However, if Applicant submits the required
disclaimer of SCORE to the Board within thirty days of the mailing date of this
decision, the decision will be set aside as to the affirmance of the disclaimer
requirement.6 See Trademark Rule 2.142(g), 37 C.F.R. § 2.142(g).

6 The standard printing format for the required disclaimer text is as follows: “No claim is
made to the exclusive right to use SCORE apart from the mark as shown.” TMEP
§ 1213.08(a)(i) (8th ed. 2011).