Michael L. Moore

Trademark Trial and Appeal BoardNov 20, 2009

No. 77340291 (T.T.A.B. Nov. 20, 2009)

Mailed: November 20, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Michael L. Moore ________ Serial No. 77340291 _______ Patricia A. Hughel of Alerding Castor LLP for Michael L. Moore Michelle E. Dubois, Trademark Examining Attorney, Law Office 107 (J. Leslie Bishop, Managing Attorney) _______ Before Seeherman, Bucher and Grendel, Administrative Trademark Judges. Opinion by Seeherman, Administrative Trademark Judge: Michael L. Moore has applied to register the mark NAPS ONLY in standard character format for services identified as “providing temporary accommodations for rest and relaxation.”1 The examining attorney has required that 1 Application Serial No. 77340291, filed November 29, 2007, pursuant to Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b) (intent-to-use). THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser No. 77340291 2 applicant disclaim the word NAPS, and when she made this requirement final applicant filed the instant appeal. As a preliminary matter, we note that applicant listed in his request for reconsideration particulars of allegedly analogous third-party registrations, but did not submit copies of the registrations. Applicant repeated this information in his appeal brief. In her appeal brief the examining attorney objected that a mere listing of registrations is not sufficient to make them of record. The examining attorney’s objection is sustained. See In re Fiesta Palms LLC, 85 USPQ2d 1360, 1366 (TTAB 2007). We should point out that an examining attorney will be deemed to have waived any objection a listing of third-party registrations if the applicant could have cured the objection if it had been timely raised; however, in the present case, because applicant first listed the information about the third-party registrations in his request for reconsideration, applicant could not have cured the insufficiency even if the examining attorney had objected in her denial of the request for reconsideration.2 2 Even if the registrations had been properly made of record, they would have no effect on our decision herein. It is well established that even if some prior registrations have some characteristics similar to the applicant’s, the USPTO’s allowance of such prior registrations does not bind the Board. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). Ser No. 77340291 3 Section 6(a) of the Trademark Act, 15 U.S.C. § 1056(a), provides that the Director may require an applicant to disclaim an unregistrable component of a mark that is otherwise registrable. It is the examining attorney’s position that NAPS is unregistrable because it is merely descriptive of applicant’s services under Section 2(e)(1) of the Act, i.e., NAPS immediately informs consumers that the temporary accommodations applicant provides are for the purpose of taking naps. In support of her position the examining attorney has submitted articles taken from the NEXIS database and excerpts from various Internet websites that show “nap center” is a term used for places in which services such as applicant’s identified services are offered: One of the most interesting business opportunities is in the creation of nap centers, where people can take naps during the day. “The Columbia Daily Tribute (MO),” October 13, 2007 …Mr. Anderson pointed to nap centers like the two that MetroNaps and Yelo operate in Manhattan, charging $12 to $14 for 20 minutes of shut eye….” “The New York Times,” July 12, 2007 Changi Airport was praised for its shops and amenities ranging from nap centers to terminals with free Internet access. “Airports,” October 10, 2006 Ser No. 77340291 4 While the company’s goal is “to be the premier provider of professional nap centers in the United States,….” “T & D Magazine,” June 2006 The lights are out in MinneNapolis, a store at the Mall of America that sold naps for 70 cents a minute. The nap center, which charged $14 for 20 minutes in a private, themed room, brought in fewer than 1,600 customers….” “The Florida Times-Union,” May 28, 2006 The local power-napping industry suffered a blow this week when MinneNapolis, a pay-for-sleep business at the Mall of America, woke everybody up and shut down. The owner said business was slow. He plans to open a nap center in the Uptown area of M- town. “Saint Paul Pioneer Press,” May 19, 2006 …“that gave us the idea to offer a nap service.” In Japan, big companies have long been offering snooze salons to sleep- deprived employees. The trend caught on here more recently with MetroNaps, which has two Manhattan locations offering high-tech sleep pods. Cloud 9 is the first nap center in the Grand Central area. “Crain’s New York Business,” May 1, 2006 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 Ser No. 77340291 5 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 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). As noted, a place that provides temporary accommodations for rest and relaxation is often referred to as a “nap center.” The word NAPS in applicant’s mark NAPS ONLY immediately describes a purpose of applicant’s services, namely providing accommodations for rest, which would include the taking of naps. Ser No. 77340291 6 Applicant has argued that the examples of use of “nap centers” “are not intended to be trademark use and are not referencing a brand.” Brief, p. 1. The point of this argument is not clear. No one is suggesting that “nap centers” is a trademark. On the contrary, it appears to be a generic term for a commercial place one may go to in order to take a nap. Applicant also argues that when ONLY is substituted for CENTER it provides a different commercial impression. Again, no one is suggesting that NAPS ONLY is the equivalent of NAP CENTER. On the contrary, the examining attorney has not even asserted that NAPS ONLY as a whole is merely descriptive, let alone generic. For this reason, applicant’s arguments that the word ONLY causes NAPS ONLY to be suggestive or “mysterious,” or that the mark in its entirety has a double meaning of “no long term stays” and “no intimate moments,” are irrelevant. There is no need to consider whether the mark as a whole has a suggestive meaning, or whether it has both a non-descriptive meaning and a merely descriptive meaning, because the examining attorney has not claimed that NAPS ONLY is merely descriptive. The examining attorney is asserting only that the word NAPS, as used in the mark NAPS ONLY, retains its meaning of describing a characteristic or purpose of applicant’s Ser No. 77340291 7 services. Applicant, although claiming that his mark is unitary, has not provided any basis for us to find that it is. The mark is not analogous to, for example, BLACK MAGIC, in which the meaning of BLACK as a color is lost because BLACK MAGIC as a whole has a distinct meaning of its own. See TBMP §1213.05. The same cannot be said of NAPS ONLY; the meaning of NAPS as “to sleep briefly especially during the day”3 remains the meaning of this word as used in the mark NAPS ONLY. Applicant also argues that when consumers see the mark NAPS ONLY they “will not immediately assume that they may receive accommodations that may provide cold beverages, possibly coffee options, possibly massage, possibly a CD player for playing music, possibly books or other accommodations of this type.” Brief, unnumbered p. 4. However, as stated above, a term need not immediately convey an idea of each and every specific feature of the applicant’s services in order to be considered to be merely descriptive; rather, it is sufficient that the term describes one significant attribute, function or property of the goods or services. Here, a significant feature of 3 Merriam-Webster Online, www.merriam-webster.com, submitted by applicant on Sept. 12, 2008. Ser No. 77340291 8 the applicant’s services is that he provides a place in which consumers can take naps. Applicant has also argued that applicant does not provide naps per se, only accommodations. However, because those accommodations are specifically for the purpose of rest, which includes sleep, the word NAPS describes a significant feature or purpose of the services. Decision: The requirement for a disclaimer of NAPS is affirmed, and consequently the refusal of registration in the absence of such a disclaimer is also affirmed. However, if applicant submits the required disclaimer within thirty days, the decision will be set aside and the application will be approved for publication.