THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Mailed: June 6, 2012
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re MerchSource, LLC
________
Serial No. 77713799
Filed April 14, 2009
_______
Jennifer H. Hamilton, Connie P. Limperis, and Anna M.
Vradenburgh of The Eclipse Group LLP for MerchSource, LLC.
Colleen Kearney, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
_______
Before Bucher, Zervas, and Wolfson, Administrative
Trademark Judges.
Opinion by Wolfson, Administrative Trademark Judge:
MerchSource, LLC has filed an application for the
standard character mark THE BLACK SERIES for “Electric
massage appliances, namely, hand-held massagers, massage
mechanism for chairs, and foot spa massagers” in
International Class 10, on the basis of applicant’s bona
fide intent to use the mark in commerce. The Trademark
Examining Attorney refused registration of applicant’s mark
under the provisions of Section 2(e)(1) of the Trademark
Serial No. 77713799
2
Act, 15 U.S.C. § 1052(e)(1), on the ground that
“applicant’s massage devices feature the color BLACK and
therefore the term is descriptive of the goods.”1 When the
refusal was made final, applicant appealed. In the
alternative, applicant has requested that the mark THE
BLACK SERIES be allowed on the Supplemental Register “if on
appeal the Board determines that either the term BLACK
SERIES or THE BLACK SERIES is merely descriptive….”2 The
appeal has been fully briefed. We affirm.
Section 2(e)(1) of the Act, 15 U.S.C. § 1052(e)(1),
prohibits the registration of a mark which is merely
descriptive of the applicant’s goods. A term is deemed to
be merely descriptive of goods or services, within the
meaning of Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), if it forthwith conveys an immediate idea of
an ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). A term need not immediately convey an idea of each
and every specific feature of the applicant’s goods or
services in order to be considered to be merely
descriptive; rather, it is sufficient that the term
1 Examining Attorney’s Brief, (unnumbered) p. 4.
2 Applicant’s Appeal Brief, p. 21; see also Applicant’s Request
for Reconsideration, p. 10 (unnumbered).
Serial No. 77713799
3
describes one significant attribute, function or property
of the goods or services. In re H.U.D.D.L.E., 216 USPQ 358
(TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a term is merely descriptive is determined not in
the abstract, but in relation to the goods or services for
which registration is sought, the context in which it is
being used on or in connection with the goods or services,
and the possible significance that the term would have to
the average purchaser of the goods or services because of
the manner of its use; that a term may have other meanings
in different contexts is not controlling. In re Bright-
Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
To support the refusal, the Trademark Examining
Attorney submitted the following evidence:
1. Copies of dictionary definitions for the terms “black”
and “significant.”
black: 1. Being of the color black, producing or
reflecting comparatively little light and having
no predominant hue.3
significant: important or noticeable4
3 Houghton Mifflin at
http://education.yahoo.com/reference/dictionary/entry/black,
printed on June 30, 2009.
4 Cambridge Dictionaries Online at
http://dictionary.cambridge.org/dictionary/british/significant_1,
printed on May 23, 2011.
Serial No. 77713799
4
2. Copies of web pages from Amazon.com and from
applicant’s website showing advertisements for
applicant’s “The Black Series Heated Handheld
Massager” and “Black Series 1628894 Massager Back
Cushion,” as well as illustrations demonstrating both
products,5 purporting to show that applicant’s products
are of the color black.
3. Six third-party registrations in which the term
“series” has been disclaimed.
Applicant argues that because its goods are not all
black in color, the mark THE BLACK SERIES is not merely
descriptive:
As a preliminary matter, the goods are not
‘clearly black in color’ as the Office claims.
Although one product (a vibrating back cushion)
is shown in black in two of the images, the other
two images show a handheld massager that is a
combination of gray and light gray colors.6
Applicant further argues that because the word “black”
is used to designate high quality, it has a double entendre
and therefore the mark is suggestive only.
In the context of applicant’s goods, the term
BLACK is suggestive of the quality of the goods,
i.e., elegant design and premium quality.
Applicant selected this mark to create an image
of elegance and sophistication for its electric
massage appliances.
5 The massager back cushions are listed in the identification of
goods as “massage mechanism for chairs.”
6 Applicant’s Brief, p. 10.
Serial No. 77713799
5
…
Accordingly, as seen from these advertisements,
consumers in the marketplace do not immediately
associate color with the term BLACK, but rather,
perceive the term BLACK in association with a
product or services as a metaphor for upscale
quality, prestige or elegance. In this context
the term BLACK in the mark THE BLACK SERIES is
suggestive of the qualities of luxury, elegance,
distinction and style.7
To show that consumers recognize the word “black” as
meaning high in quality, applicant submitted the following
evidence:
1. Copies of several dictionary definitions of the term
“black tie:”
black tie: semiformal clothing 8
black tie: 1. A black bow tie worn with a tuxedo.
2. Semiformal evening wear typically for men, usually
requiring a tuxedo.9
black tie: 1. (Clothing & Fashion) a black bow tie
worn with a dinner jacket 2. (modifier) denoting an
occasion when a dinner jacket should be worn Compare
white tie10
2. Copies of web pages from the websites www.mercedes-
amg.com, www.luxist.com, www.blackcard.com,
www.beautyrestblack.com, BLACK.CO.UK., and
http://gold.chipotle.com/wrapwhatyoulove, purporting to
7 Applicant’s Brief, pp. 10-11.
8 Id.
9 The American Heritage Dictionary of the English Language
(4th ed. 2009), at www.thefreedictionary.com.
10 Collins English Dictionary - Complete and Unabridged (2003), at
www.thefreedictionary.com.
Serial No. 77713799
6
show that the term “black” is understood to mean a level of
luxury and elegance.
3. Copies of web pages from www.amazon.com, purporting to
show that massagers come in all different colors, not just
black.11
4. Copies of six registrations for marks including the
word “black,” issued on the Principal Register without a
disclaimer to the term “black” for goods that are of the
color black.
5. Copies of the packaging used for the following goods
sold by applicant under the mark THE BLACK SERIES: the
handheld back massager, twelve-point foot massager, memory
foam slippers, compact fabric steamer, upright fabric
steamer, and table top air hockey game. The actual
products have been photographed next to the packaging for
all but the upright fabric steamer and the table top game,
and in all cases the packaging displays a picture of the
product on the box.
Applicant also submitted copies of other third-party
registrations for the first time in its appeal brief. The
Trademark Examining Attorney objected to this evidence as
11 At www.amazon.com, advertising the following products: The
Black Series Heated Handheld Massager, the Homedics PM-50 Hand
Held Mini Massager, the Wahl 4196-1001 Heat Therapy Heated
Therapeutic Massager, and the Wahl 4120-200 All-Body Massage
Powerful Therapeutic Massager.
Serial No. 77713799
7
being untimely. These registrations, and the arguments
relating thereto, have been given no consideration. See
Trademark Rule 2.142(d)(the record in the application
should be complete prior to the filing of an appeal); TBMP
§ 1208.02 (3d ed. 2011) and authorities cited in that
section.
Turning to the merits of this case, we first address
applicant’s argument that the mark THE BLACK SERIES is not
merely descriptive of a significant feature of the goods
but rather “is suggestive of the qualities of luxury,
elegance, distinction and style.”12 In support of this
argument, applicant has submitted copies of web pages from
www.mercedes-amg.com that advertise the “Mercedes SL 65 AMG
Black Series” under the tag line: The Elements of Black.
The website also advertises the “CLK 63 AMG Black Series”
automobile; the ad copy includes: the latest in our
exclusive Black Series of high performance concept cars.
Applicant has further submitted pages from the website
www.luxist.com/2011/01/23/infiniti-ex-black-premium-
edition/. This website defines itself as “a web site
dedicated to covering the best the world has to offer on a
variety of luxury and fine living topics.”13 On the
12 See infra, n. 5.
13 At www.luxist.com/about.
Serial No. 77713799
8
website, there is an advertisement for the “Infiniti EX
Black Premium Edition” automobile. The ad copy includes
the teaser “Is black the new gold? It may very well be if
credit cards (like the Visa Black card or Centurion by
American Express) are anything to go by.” One reader of
this page commented that he “love[s] my Black Amex.”14
As has been shown, the color “black” as it relates to
automobiles signifies elegance, and with credit cards a
hierarchical system of service levels and exclusivity.
These connotations are underscored by the fact that the
goods and services are expensive to procure, in contrast to
applicant’s massagers, which sell at far lower price
points.15
Finally, applicant submitted a copy of a page from the
website www.beautyrestblack.com, wherein Simmons Bedding
Company advertises the mark BEAUTYREST BLACK for a mattress
touted as The World’s Finest Beautyrest™. The
advertisement reads: “Simmons® Beautyrest Black®
Collection. This Sort of Pedigree Can’t be Bought. It
14 Nothing in the web page indicates whether the Black Amex card
is of the color black. Applicant has also submitted a copy of a
page from the website www.blackcard.com/ that advertises the VISA
Black Card as “The World’s Most Prestigious and Versatile Credit
Card.” In this case, the Visa card is black in color, and
therefore, the reference to “black” may refer to color only and
not carry a connotation of elegance or luxury. Accordingly, this
reference is of little to no probative value.
15 Applicant’s back cushion is shown as selling for $26.23 on
amazon.com. Office action, November 17, 2010.
Serial No. 77713799
9
Must be Earned.” There is a press release included on the
website, dated February 9, 2009, and headlined “Beautyrest
Black® continues to define the luxury category with new
innovations.”16 Again, mattresses are generally more
expensive than handheld or foot massagers or back cushion
massagers, and any exclusivity in this field does not carry
over to applicant’s goods.
Reviewing the evidence of third-party use of the term
“black” in these contexts, we are not persuaded that
consumers have come to recognize the word “black” as
denoting an overall premium quality of merchandise. The
use of the word “black” in these fields is of such limited
scope that it would be overstating the impact of the
concept of “black” as an indicator of premium quality.
Even were the evidence sufficient to show that the use of
“black” in the automobile and credit card field, and with
16 Applicant also included copies of pages from the website
BLACK.CO.UK. This website appears to be directed to visitors
from the U.K., and there is no evidence that anyone from the
United States has visited this website. Accordingly, we have
accorded this reference no probative value.
Applicant further submitted a copy of several pages from
http://gold.chipotle.com/wrapwhatyoulove/ that explains a
promotion Chipotle Mexican Grill restaurant ran in April 2011, in
which contestants competed for the best artistic rendition of
something “wrapped in gold foil.” During the promotional period,
according to a display placard, the public could purchase gold
gift cards. The display placard’s tag line is Gold is the New
Black, but it is speculation to say that this shows “black” means
luxury or premium quality, and not just that Chipotle’s gift
cards used to be black and are now gold. Thus, this evidence is
also of little or no probative value.
Serial No. 77713799
10
respect to a mattress, carries such connotations, these
fields are entirely unrelated to massage devices.
We next turn to applicant’s argument that because its
goods are not all black, the mark is not merely descriptive
of the color of the goods. Reviewing the copies of the
packaging, we agree that only the massager back cushion
appears to be entirely in black;17 the handheld massagers
appear to be shades of light and dark gray, and the foot
massager appears to be silver and gray.18 It is, however,
well settled that where a mark is merely descriptive of one
or more items identified in the description of goods but
may be suggestive or even arbitrary as applied to other
items, registration is properly refused if the mark sought
to be registered is descriptive of any of the goods. In re
Canron, Inc., 219 USPQ 820, 821 (TTAB 1983); Electro-
Coatings, Inc. Precision National Corporation, 204 USPQ
410, 420 (TTAB 1979); In re Brain Research Foundation, 171
USPQ 825, 826 (TTAB 1971). Cf. In re Right-On Co., Ltd. 87
USPQ2d 1152, 1155 (TTAB 2008) (registration refused for all
clothing items on grounds that blue-and-gold stitching
17 The specimen submitted with the application shows a remote
control device for the back massager that is black. See also the
exhibit to the initial Office action of April 23, 2010, which
illustrates the massager back cushion.
18 See Exhibits to Applicant’s October 25, 2010 Response.
Serial No. 77713799
11
design mark was merely ornamental and failed to function as
a mark for jeans).
Applicant further argues that “although color may be
an attribute of a good, it is not necessarily a
‘significant’ feature of that good.”19 In support of its
argument, applicant has submitted six third-party
registrations for marks that include the word “black” for
products that are black in color. Applicant has also
submitted a dictionary definition of the word
“significant.”
We first examine the six registrations submitted by
applicant to show that color is not a significant feature
of the goods. These six registrations are:
Reg. No. 2857989 for the mark BLACK DIAMOND for
“plastic combs for the professional hairdressing
industry”;20
Reg. No. 3755442 for the mark BLACK TIE for
“decorative display items, namely, vases,
stemware and bowls; decorative display items of
crystal, namely, vases, stemware, bowls and
figurines; glassware, namely, beverageware, bowls
and stemware; glassware of crystal, namely,
beverageware, bowls and stemware; figures,
figurines, sculptures, statues, statuettes,
kitchen containers and drinking glasses, all of
crystal”;21
Reg. No. 3610879 BLACK GRANITE for “camping
cookware, namely, pots, pans, kettles, plates,
19 Request for Reconsideration, p. 5 (unnumbered).
20 Registered June 29, 2004; Section 8 accepted.
21 Registered March 2, 2010.
Serial No. 77713799
12
mugs, serving sets, namely, servingware for
serving food, coffee pots, mess kits, namely,
mess tins”;22
Reg. No. 3695503 BLACK WIDOW for “golf cleat
brushes”;23
Reg. No. 2968269 BLACK LETTER LINES for
“beverageware”;24 and
Reg. No. 3023344 for the mark BLACK MAGIC for
“automobile cleaners, waxes and polishes, namely
car washes, namely detergents for automobiles,
automobile waxes, automobile waxes in liquid and
paste forms, tire cleaners, automobile interior
polishes and cleaners for leather upholstery and
automobile polishes for engines; accessory
products for cleaning, treating, waxing and
polishing vehicles namely, sponges, buckets,
wheel brushes, and cleaning and polishing
cloths.”25
None of the registrations include a disclaimer to the
word “black,” but the specimens of use (photocopies of
which have been included with the registrations) for these
marks show that the goods are black in color. However,
these marks each have a unique, nondescriptive meaning as a
whole. Although the Trademark Examining Attorney failed to
attach any dictionary entries to his June 7, 2011, denial
of applicant’s request for reconsideration, we can take
judicial notice of dictionary definitions, and do so based
on our own research. See University of Notre Dame du Lac
22 Registered April 28, 2009.
23 Registered October 13, 2009.
24 Registered July 12, 2005; Section 8 accepted and section 15
acknowledged.
25 Registered December 6, 2005; Section 8 and 15 received.
Serial No. 77713799
13
v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
In this connection, we first note the dictionary
definitions of “black tie” above, and take notice of the
following definitions of “black diamond,” “black widow,”
“black letter,” “black magic,” and “black granite”:
black diamond: dense black hematite26
black widow: a venomous New World spider27
black letter: a heavy angular condensed typeface used
especially by the earliest European printers and based
on handwriting used chiefly in the 13th to 15th
centuries; also : this style of handwriting28
black magic: a type of magic in which people
communicate with evil spirits and use evil powers29
black granite: a diabase, diorite, gabbro, or other
rock that is dark gray to black when polished, and
which is used as a commercial ‘granite.’30
We agree with the Trademark Examining Attorney that
these terms are arbitrary in relation to the goods, despite
the fact that the goods involved may be black. 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
26 From Merriam-Webster.com.
27 Id.
28 Id.
29 From MacMillan Dictionary at www.macmillandictionary.com.
30 Lapidus, Dictionary of Geology and Geophysics 1987.
Serial No. 77713799
14
commercial impression. If the combination creates a
suggestive term, the fact that one or both of the
components of the mark may be merely descriptive does not
make the mark as a whole merely descriptive. See, e.g., In
re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA
1968)(when combined and used on bakery goods SUGAR & SPICE
is not merely descriptive); In re Shutts, 217 USPQ 363
(TTAB 1983)(SNO-RAKE is not merely descriptive of a snow
removal hand tool); and TMEP Section 1209.03(d)(8th ed.
2011).
Each set of two words has a meaning as a compound
phrase wherein the word “black” has taken on a significance
that transcends its meaning as a designator of color. The
pair of words forms a unitary term that identifies a
specific object. Even “black diamond” and “black granite”
refer to specific types of diamond or granite that have
unusual properties. A “black widow” spider is a type of
arachnid; “black magic” signifies witchcraft.31 Thus, these
registrations are not analogous to the case at hand. In
the mark THE BLACK SERIES, the word “black” retains its
primary meaning of “the color black.”
31 See TMEP 1213.05 “Unitary” Marks (8th ed. 2010)(citing “black
magic” as an unitary term with a distinct meaning of its own as a
whole.
Serial No. 77713799
15
We next consider the dictionary definition of the word
“significant” that applicant has submitted. Applicant
argues that the color black is not a significant feature of
the goods. The definition is:
significant: 1. having meaning; especially :
suggestive
2a : having or
likely to have influence or effect : important ; also : of a
noticeably or measurable large amount b:
probably caused by something other than mere chance
32
We note that one of the meanings of “significant” is
“having meaning” and another is “important.” The fact that
applicant’s back massager is all black is likely to have
meaning to consumers, as the fact that black is a neutral
color that matches any other color is important, and may
influence the purchasing decision of customers looking to
purchase compatible color combinations.33 Cf. Brunswick
Corp. v. British Seagull Ltd., 35 F.3d 1527, 32 USPQ2d 1120
(Fed. Cir.1994)(use of color black on outboard motors
considered functional in part because black is compatible
with a wide variety of other colors).
We next turn our attention to the word “series” in the
mark. Applicant claims that “series” is not descriptive,
32 Merriam-Webster (2011), www.merriam-webster.com/dictionary/.
33 The evidence shows that the back massager is not a stand-alone
item, but attaches to a chair for support.
Serial No. 77713799
16
relying on a printout from the website www.bmwusa.com that
refers to cars sold by BMW North America as a “BMW 5
Series,” and the following dictionary definition:
series: 1a: a number of things or events of the
same class coming one after another in spatial or
temporal succession b: a set of
regularly presented television programs each of
which is complete in itself … 3b: a group of
postage stamps in different denominations … 6: a
group of chemical compounds related in
composition and structure34
Applicant contends that the above shows that the term
“series” is commonly understood to mean a group of things
coming in spatial or temporal succession one after another,
and not merely a grouping of items, such as the three
massage devices identified in its application. However,
the word “series” also refers to a group, as shown by
definition numbers 3b and 6. Moreover, the Trademark
Examining Attorney has submitted the following
registrations that tend to show that the Office requires a
disclaimer to the word “series” in connection with massage
therapy services and related goods:
Reg. No. 3776618 for the mark SOULSTICE SEMINAR SERIES
for “training manuals for peri-operative massage therapy,”
“seminar series” disclaimed;35
34 Id.
35 Registered April 20, 2010.
Serial No. 77713799
17
Reg. No. 3556369 for the mark FETISH FANTASY SERIES
for a variety of goods, including “massage apparatus,”
“fetish” and “series” disclaimed;36
Four registrations owned by the same company for the
marks EARTH SERIES (Reg. No. 3965168), METAL SERIES (Reg.
No. 3965169), WOOD SERIES (Reg. No. 3965170), and FIRE
SERIES (Reg. No. 3965171)37 for, inter alia, “education
services, namely, providing workshops in the fields of
yoga, fitness, health, and massage therapy,” “series”
disclaimed.
This evidence supports the Trademark Examining
Attorney’s position that the word “series” in the mark is
merely descriptive of applicant’s electric massage
appliances. Moreover, the word “series” retains its merely
descriptive significance in relation to the goods when
combined with the remainder of the mark THE BLACK SERIES,
and the composite is itself merely descriptive. See, e.g.,
In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB
2002)(SMARTTOWER merely descriptive of commercial and
industrial cooling towers); and In re Sun Microsystems
Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely
36 Registered January 6, 2009.
37 All four marks were registered May 24, 2011.
Serial No. 77713799
18
descriptive of computer programs for use in development and
deployment of application programs).
For the foregoing reasons, the mark THE BLACK SERIES
is merely descriptive of a group of massagers that are
black in color. Inasmuch as applicant’s identification of
goods implicitly includes goods that are all black in
color, and the composite mark does not create a unique,
nondescriptive meaning, the mark THE BLACK SERIES is merely
descriptive under Section 2(e)(1) of the Trademark Act.
Decision: The refusal to register the mark THE BLACK
SERIES under Section 2(e)(1) is affirmed.
In view of applicant’s amendment of this application
to the Supplemental Register, contingent upon our decision
that the mark is merely descriptive, applicant’s amendment
to the Supplemental Register is approved and the mark will
register on the Supplemental Register in due course.
