Marilyn Jean Edwards and Elizabeth Ann Glazner

Trademark Trial and Appeal Board

Jan 26, 1999

No. 74556186 (T.T.A.B. Jan. 26, 1999)

Paper No. 13
HANAK/md
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JAN. 26, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Marilyn Jean Edwards and Elizabeth Ann Glazner (joint
applicants)
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Serial No. 74/556,186
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William J. Brucker of Stetina, Brunda, Garred & Brucker for
Marilyn Jean Edwards and Elizabeth Ann Glazner (joint
applicants.
Susan J. Kastriner, Trademark Examining Attorney, Law
Office 107 (Thomas Lamone, Managing Attorney)
_______
Before Hanak, Chapman and Wendel, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
On August 2, 1994 Marilyn Jean Edwards and Elizabeth
Ann Glazner filed an intent-to-use application seeking to
register WAHINE MAGAZINE in typed capital letters for
“magazines for women in the field of water athletics,
namely surfing, and including health and beauty
information.” For ease of reference, these joint
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applicants will be referred to as simply “applicant.” The
applicant disclaimed the exclusive right to use MAGAZINE
apart from the mark in its entirety.
In the first Office action, the Examining Attorney
refused registration pursuant to Section 2(e)(1) of the
Lanham Trademark Act “because the mark merely identifies
the primary audience for the publication.” The Examining
Attorney stated that “the term ‘wahine’ is defined … as ‘a
woman surfer.’” It should be noted that in this first
Office action and at no time thereafter did the Examining
Attorney object to applicant’s original identification of
goods.
In response, applicant submitted the declaration of
its counsel (William J. Brucker) who stated that he
conducted a NEXIS search of the word “wahine.” Continuing,
Mr. Brucker stated that when stories relating “to the
Rainbow Wahine Women’s Basketball Team of the University of
Hawaii or the Annual Women’s Basketball Tournament known as
the Rainbow Wahine Classic” were excluded, there were 128
stories remaining. Mr. Brucker went on to note in his
response that of the 128 stories, only one arguably
referred to a womAn surfer.”
In addition, applicant sought to amend its
identification of goods to read as follows: “Athletics,
Ser No. 74/556,186
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health and beauty magazines for women in the field of water
athletics, primarily, surfing, bodyboarding, swimming,
diving, bodysurfing, sailing, windsurfing, skimboarding,
outrigger canoes, kayaking, river rafting, beach vollyeball
and related beach culture.”
In the second Office action, the Examining Attorney
continued her mere descriptiveness refusal and in addition
stated that the proposed amended identification of goods
was not acceptable in that it included subject matter that
was not “within the scope of the identification that was
set forth in the application at the time of filing.”
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request a
hearing.
At the outset, we note that the word “wahine” receives
varied treatment by different dictionaries. Some
dictionaries do not have any listing for this term. See,
for example, The American College Dictionary (Random House,
1970) and The American Century Dictionary (Oxford
University Press, 1995). Other dictionaries have one
meaning for the word “wahine.” In Webster’s New World
Dictionary (2d ed. 1970) that meaning is as follows:
“[Maori & Haw.] a Polynesian woman. esp. of Hawaii.” In
Ser No. 74/556,186
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Webster’s New World College Dictionary (1997) the meaning
is essentially the same, namely: “[Haw or Maori, woman:
for Proto-Polynesian form see vahine] A Polynesian woman,
esp. of Hawaii.” See also Hawaiian Dictionary (1986).
Finally, the Examining Attorney has made of record
photocopies of the pertinent pages from three dictionaries
which contain two definitions for the word “wahine.” In
The American Heritage Dictionary, said word is defined as
follows: “1. A Polynesian woman. 2. A female surfer.
[Hawaiian and Maori].” In Webster’s II New Riverside
University Dictionary, the word “wahine” is defined as
follows: “[Hawaiian and Maori] 1. Polynesian woman. 2. A
woman surfer.” In Random House Unabridged Dictionary, the
word “wahine” is defined as: “1. (in Hawaii and Polynesia)
a girl or young woman. 2. Slang. A woman surfer.”
It is the contention of the Examining Attorney that it
is this second definition of the word “wahine” contained in
three dictionaries which causes applicant’s mark WAHINE
MAGAZINE to be merely descriptive in that it “clearly
identifies the subject matter of the applicant’s
publication,” namely, “a female surfer” or a “woman
surfer.” The Examining Attorney does not contend that the
first definition of the “wahine” contained in the three
dictionaries which she referenced (i.e. Polynesian woman or
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young woman) would cause applicant’s mark to be descriptive
of its publication. (Examining Attorney’s brief page 9).
We find that “woman surfer” is an obscure meaning of
the word “wahine.” The majority of dictionaries either do
not contain any listing for the word “wahine,” or if they
do contain a listing, said word is defined simply as “a
Polynesian woman.” The meaning of the word “wahine” which
the Examining Attorney contends causes applicant’s mark
WAHINE MAGAZINE to be merely descriptive (i.e. woman
surfer) is a secondary definition which is found in only
three dictionaries of record. More importantly, in
reviewing the over 125 NEXIS stories made of record, we
find that, at most, only one of these stories arguably
utilizes the word “wahine” to mean “woman surfer.” All of
the other NEXIS articles made of record use the term
“wahine” to refer to women or Polynesian women, or they use
it in manners which are totally unrelated to applicant’s
goods, such as a surname (i.e. the former governor of
Hawaii, John Wahine) or the name of a ship.
If a word has a meaning which is descriptive of
applicant’s goods or services, but that meaning is obscure,
then said word is not merely descriptive of applicant’s
goods or services. Norwich Pharmacal v. Chas. Pfizer, 165
USPQ 644, 646 (TTAB 1970); In re October Co., Inc., 177
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USPQ 276 (TTAB 1973). See also 1 J. McCarthy, McCarthy on
Trademarks and Unfair Competition Section 11:33 at page 11-
57 (4th ed. 1998).
Because the “woman surfer” meaning of the word
“wahine” is obscure, we find that applicant’s mark WAHINE
MAGAZINE is not merely descriptive of “magazines for women
in the field of water athletics, namely surfing, and
including health and beauty information.” Moreover, to the
extent there is doubt on the issue of mere descriptiveness,
said doubt is resolved in applicant’s favor. In re Gourmet
Bakers, 173 USPQ 565 (TTAB 1972). Accordingly, the refusal
to register on the basis of mere descriptiveness is
reversed.
However, we find that the Examining Attorney is
correct in her contention that applicant’s proposed amended
identification of goods is clearly broader than its
original identification of goods which was just recited in
the preceding paragraph. Accordingly, applicant’s proposed
amended identification of goods is unacceptable. In re
Swen Sonic Corp., 21 USPQ2d 1794 (TTAB 1991).
However, because the Examining Attorney never objected
to applicant’s original identification of goods, and
because the Examining Attorney never accepted applicant’s
proposed amended identification of goods, the application
Ser No. 74/556,186
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currently stands with the identification of goods reading
as originally proposed, namely, “magazines for women in the
field of water athletics, namely surfing, and including
health and beauty information.”
Decision: The refusal to register on the basis that
applicant’s mark is merely descriptive of applicant’s goods
as originally identified is reversed. Applicant’s mark
WAHINE MAGAZINE will be passed to publication with the
identification of goods reading as originally set forth,
namely, “magazines for women in the field of water
athletics, namely surfing, and including health and beauty
information.”
E. W. Hanak
B. A. Chapman
H. R. Wendel
Administrative Trademark
Judges, Trademark Trial and
Appeal Board
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