Messe Frankfurt Exhibition GmbH

Trademark Trial and Appeal BoardOct 29, 2012

No. 85145146 (T.T.A.B. Oct. 29, 2012)

Mailed: October 29, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board ________ In re Messe Frankfurt Exhibition GmbH ________ Serial No. 85145146 Filed October 5, 2010 _______ Russell D. Culbertson, The Culbertson Group PC, for applicant. David E. Tooley, Jr., Law Office 112, Angela Wilson, Managing Attorney. _______ Before Cataldo, Mermelstein, and Lykos, Administrative Trademark Judges. Opinion by Mermelstein, Administrative Trademark Judge: Messe Frankfurt Exhibition GmbH seeks registration of the following mark, in stylized form: for Advertising; advertising services, namely, presentation of business companies and their goods and services, also via the Internet; advertising services, namely, sales promotion for others; arranging contacts between commercial partners in trade and industry, also via the Internet; rental of advertising space and advertising material, THIS DECISION IS NOT A PRECEDENT OF THE TTAB Serial No. 85145146 2 in International Class 35.1 Applicant appeals from the final refusal of registration on the ground that the mark is merely descriptive of the identified goods.2 Trademark Act § 2(e)(1); 15 U.S.C. § 1052(e)(1). We affirm. I. Applicable Law A term is merely descriptive if it immediately conveys knowledge of a significant quality, characteristic, function, feature or purpose of the services with which it is used. See, e.g., In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009-10 (Fed. Cir. 1987). Whether a particular term is merely descriptive is determined in relation to the services for which registration is sought and the context in which the term is used, not in the abstract or on the basis of guesswork. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In 1 Based on the allegation of a bona fide intent to use the mark in commerce. 2 Registration had also been finally refused on the ground that applicant’s response to the examining attorney’s request for information pursuant to Trademark Rule 2.61, was inadequate. In his brief, the examining attorney withdrew the final requirement, concluding “that [the] requirement has been satisfied.” Ex. Att. Br. at 2 (unnumbered). We accordingly consider this issue moot. Serial No. 85145146 3 other words, the issue is whether someone who knows what the services are will understand the mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Medical Devices, Ltd., —— F.3d —— , 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002); In re Patent & Trademark Servs. Inc., 49 USPQ2d 1537, 1539 (TTAB 1998). “On the other hand, if one must exercise mature thought or follow a multi-stage reasoning process in order to determine what product or service characteristics the term indicates, the term is suggestive rather than merely descriptive.” E.g., In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003); In re Shutts, 217 USPQ 363, 364-65 (TTAB 1983).3 II. Discussion In determining whether applicant’s mark is descriptive of its identified services, we begin by considering the mark and the services. Applicant’s mark is APPARELSOURCING. In its application, applicant described its mark as “consist[ing] of the word ‘apparel’ in red lettering and the word ‘sourcing’ in gray lettering with no 3 Applicant argues that the examining attorney applied an incorrect legal standard. App. Br. at 7-8. We see no such error. Serial No. 85145146 4 space in between the two words.” Further, while applicant has applied to register the mark in stylized form, the stylization does not itself add to or detract from the impression of the mark as comprising the words “apparel sourcing,” except to emphasize the individual constituent words. Thus, although the space is elided in the mark, we have no doubt that the relevant purchasers would perceive applicant’s mark as comprising the term “apparel sourcing.” The services identified in the application are various broadly-described advertising and promotional activities for others: Advertising; advertising services, namely, pre- sentation of business companies and their goods and services, also via the Internet; advertising services, namely, sales promotion for others; arranging contacts between commercial partners in trade and industry, also via the Internet; rental of advertising space and advertising material. Applicant indicates that it intends to use the mark in connection with a trade show which represents a “sourcing marketplace” at which buyers, that is, those seeking apparel manufacturers, may locate manufacturers from which the buyers may obtain or source apparel products. ... [Applicant’s] claimed advertising and related services are all offered or intended to be offered to exhibitors at the “International Apparel Sourcing Show.” The claimed services are all related to business advertising or promotion and are offered and performed in connection with this trade show. The purpose of the services is to promote the apparel manufacturers exhibiting at the trade show. Serial No. 85145146 5 “[A]pparel sourcing” describes an activity that is facilitated by a trade show which collects apparel manufacturers in one place to provide a “marketplace” for apparel buyers. Contrary to the conclusion in the Final Action ..., the purpose of Appellant’s advertising and related services is not the promotion of “apparel sourcing companies,” but rather the promotion of apparel manufacturers. Again, “apparel sourcing” is what the trade show attendees (buyers) do, not what the exhibiting manufacturers do. App. Br. at 7. While the information about applicant’s actual activities is helpful, we do not read applicant’s recitation of services so narrowly. In particular, the relevant services for purposes of determining registrability are not the services which applicant asserts that it is actually providing or intends to provide. Instead, the services we are primarily concerned with are those set out in the application. The fact that applicant provides or intends to provide only a narrower subset of those services is not relevant in determining descriptiveness for purposes of registrability. See Octocom Sys. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application Serial No. 85145146 6 regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which sales of the goods are directed.”) Applicant seeks registration of its mark for use in connection with an array of advertising and promotional services which are not tied to a trade show or even limited to any particular trade or industry. If applicant is successful, those broadly-described services will define the scope of applicant’s registration. Thus, we must determine whether applicant’s mark is descriptive of any of the recited services, not just those narrower services in connection with which applicant actually uses or intends to use its mark. The question then is whether APPARELSOURCING (which is equivalent to “apparel sourcing”) is descriptive of applicant’s recited advertising and promotional services. As noted above, the gravamen of applicant’s argument is that “the purpose of Appellant’s advertising and related services is not the promotion of ‘apparel sourcing companies,’ but rather the promotion of apparel manufacturers. Again, ‘apparel sourcing’ is what the trade show attendees (buyers) do, not what the exhibiting manufacturers do.” Serial No. 85145146 7 The problem with applicant’s argument is that the identified services are not limited to “the promotion of apparel manufacturers.” Rather, applicant’s services include activities such as “sales promotion” for purchasers or sellers in the apparel supply chain; “arranging contacts between commercial partners in trade and industry,” namely, between purchasers and sellers in the field of apparel; and “rental of advertising space and advertising material” to buyers and sellers in the apparel industry, creating a “‘marketplace’ for apparel buyers.” Applicant does not dispute that “apparel” means “clothing” or “attire,” AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (2007), and that “sourcing” refers to the “obtain[ing of] parts or materials from another business, country, or locale for manufacture,” Id.4 The examining attorney’s evidence supports these definitions and their applicability to the apparel industry. For example, the evidence includes a web page in which a service provider advertises his services as: The global marketplace for sourcing apparel, home and industrial textiles Join the marketplace and start manufacturing today 4 Both definitions were accessed at http://xreferplus.com/entry/ hmdictenglang/source and .../apparel (July 21, 2011), and were attached to the Final Office Action of the same date. Serial No. 85145146 8 http://www.mfg.com/textiles/en (July 21, 2011). Likewise, an article discussed the effects of recent global economic shifts on the apparel manufacturing industry: [I]n U.S. dollars, an item sourced from Indonesia cost 18.7% less in January 2009 than it did in July 2008. If retailers take advantage of more favorable exchange rates, they will accelerate current trends towards increased sourcing of apparel from Southeast Asia and help relieve tight margins throughout the supply chain. Supply Chain Insights, The Economy & Apparel Sourcing Trends (February 2009) (this article included a chart titled Sourcing Shifts in Key Categories, tracking change in imports of “bottoms” and “knit shirts”). Another article titled Apparel Sourcing and the Factors Impacting the Rising Costs discussed (again) the effect of global economics on the supply chain for the apparel industry. GLG Research, (Jan. 24, 2011).5 In light of this evidence, and consistent with applicant’s description of its activities in connection with its trade show, see supra at 4, we find that “apparel sourcing” is a readily-understood term in the apparel industry, referring to the activity of “buyers ... 5 http://www.glgroup.com/News/-Apparel-Sourcing-and-the-Factors- Impacting-the-Rising-Costs-52325.html (accessed July 21, 2011). Serial No. 85145146 9 obtain[ing]... apparel products,” id., from another business, country, or locale, see definition of “sourcing,” supra. Because applicant’s identified services include those particularly designed for and rendered to those in the apparel sourcing market (such as “sales promotion” for those in the apparel supply chain, “arranging contacts between commercial partners in trade and industry” for those in the apparel supply chain, and “rental of advertising space and advertising material” to those in the apparel supply chain), the mark would immediately and without conjecture inform purchasers of a significant feature, function, or characteristic of those services.6 III. Conclusion We have carefully considered all of the evidence and argument of record, including any which we have not specifically addressed. We conclude that applicant’s mark, 6 We would find applicant’s mark merely descriptive even if we considered applicant’s services more narrowly as those rendered at its trade show and specifically to apparel manufacturers, rather than to the buyers who engage in apparel sourcing. Although buyers may do the “sourcing” in the sense that they are the purchasers in a transaction with a manufacturer, the manufacturer obviously benefits from the establishment of a marketplace for its goods. As applicant describes them, its services are specifically designed and intended to create and facilitate such a marketplace. It makes no difference who applicant works for, i.e., who is paying for applicant’s services; both the buyers and sellers will immediately understand from applicant’s mark that the services are for the purpose of “apparel sourcing.” Serial No. 85145146 10 APPARELSOURCING is merely descriptive of its identified services. Trademark Act § 2(e)(1). Decision: The refusal to register is AFFIRMED and registration to applicant is refused.