Paul Markowitz

Trademark Trial and Appeal Board

Apr 24, 2002

No. 75793263 (T.T.A.B. Apr. 24, 2002)

4/24/02 Paper No. 11
EWH

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Paul Markowitz
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Serial No. 75/793,263
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Donald C. Simpson for Paul Markowitz.

Hannah Fisher, Trademark Examining Attorney, Law Office 107
(Thomas Lamone, Managing Attorney).
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Before Cissel, Hanak and Hohein, Administrative Trademark
Judges.

Opinion by Hanak, Administrative Trademark Judge:

Paul Markowitz (applicant) seeks to register TACKLE-
RACK in typed drawing form for “fishing tackle boxes.” The
intent-to-use application was filed on September 13, 1999.
Citing Section 2(e)(1) of the Trademark Act, the
Examining Attorney has refused registration on the basis
that applicant’s mark is merely descriptive of his goods.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant filed a request for an
oral hearing, and subsequently withdrew such request.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/793,263
2
As has been stated repeatedly, “a term is merely
descriptive if it forthwith conveys an immediate idea of
the ingredients, qualities or characteristics of the
goods.” In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 218 (CCPA 1978) (emphasis added); Abercrombie &
Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 189 USPQ 759,
765 (2nd Cir. 1976). Moreover, the immediate idea must be
conveyed forthwith with a “degree of particularity.” In re
TMS Corp. of the Americas, 200 USPQ 57, 59 (TTAB 1978); In
re Entenmann’s Inc., 15 USPQ2d 1750, 1751 (TTAB 1990),
aff’d 90-1495 (Fed. Cir. February 13, 1991).
At page 2 of her 3 page brief, the Examining Attorney
argues that applicant’s mark TACKLE-RACK is merely
descriptive of fishing tackle boxes because “the average
purchaser is likely to understand that a tackle rack is
something which holds fishing equipment, the use for which
applicant’s boxes are designed.” There is a basic flaw in
the reasoning of the Examining Attorney. The mere
descriptiveness of a term is not judged in the abstract,
but rather is judged in connection with the goods for which
registration is sought. Abcor Development, 200 USPQ at
218. Thus, the mere descriptiveness of applicant’s mark
TACKLE-RACK is not judged in the abstract, but rather is
judged in connection with “fishing tackle boxes.”
Ser. No. 75/793,263
3
Obviously, fishing tackle boxes are boxes which hold
fishing equipment. Indeed, the Examining Attorney attached
to her brief a photocopy of a page from the Random House
Compact Unabridged Dictionary showing that one definition
of the word “tackle” is “equipment … especially for
fishing: fishing tackle.”
In short, consumers seeing applicant’s mark TACKLE-
RACK would be already aware that this mark is used in
connection with fishing tackle boxes. The Examining
Attorney has simply failed to identify any quality or
characteristic of fishing tackle boxes which applicant’s
mark TACKLE-RACK specifies with the required “degree of
particularity.”
To be clear, the Examining Attorney attached a second
excerpt from the Random House Compact Unabridged Dictionary
to her brief where the word “rack” is defined as “a
framework of bars, wires, or pegs on which articles are
arranged or deposited: a clothes rack; a luggage rack.” At
page 2 of her brief, the Examining Attorney then speculates
that “apparently, applicant’s boxes contain or are composed
of such a framework on which fish hooks, lures and other
small items can be placed for the sake of organization.”
However, the Examining Attorney presented absolutely no
evidence showing that any fishing tackle box has bars,
Ser. No. 75/793,263
4
wires or pegs, items that would only cause fishing hooks,
lures and the like to become tangled. Moreover, while this
is an intent-to-use application, the Examining Attorney
never requested that applicant provide product literature
(if he had any) in an effort to show that applicant’s
fishing tackle boxes had a “framework of bars, wires or
pegs.”
The burden of proving that a mark is merely
descriptive of the goods for which registration is sought
rests with the Examining Attorney. In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987). In this case, the
Examining Attorney has simply failed to meet this
evidentiary burden. To the contrary, the very dictionary
definition of the word “rack” relied upon by the Examining
Attorney undercuts her contention that the mark TACKLE-RACK
is merely descriptive of fishing tackle boxes.
We recognize that there is a very fine distinction
between marks which are merely descriptive and marks which
are simply suggestive. However, to the extent that there
are doubts on whether a mark is merely descriptive or
instead is simply suggestive, said doubts are resolved in
favor of the applicant. In re Gourmet Bakers, Inc., 173
USPQ 565 (TTAB 1972).
Decision: The refusal to register is reversed.
Ser. No. 75/793,263
5
Hohein, Administrative Trademark Judge, dissenting:

I would affirm the refusal to register inasmuch as the
term “TACKLE-RACK” merely describes a function or use of
applicant's “fishing tackle boxes.” It is well settled
that a term is considered 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 information concerning any significant ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. See, e.g., In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987) and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). It is not necessary that a term describe all of the
properties or functions of the goods or services in order
for it to be considered to be merely descriptive thereof;
rather, it is sufficient if the term describes a
significant attribute or idea about them. Moreover,
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 those goods or services
and the possible significance that the term would have to
the average purchaser of the goods or services because of
Ser. No. 75/793,263
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the manner of its use. See In re Bright-Crest, Ltd., 204
USPQ 591, 593 (TTAB 1979). Thus, “[w]hether consumers
could guess what the product [or service] is from
consideration of the mark alone is not the test.” In re
American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Applying the law to the facts at hand, I fail to
discern the “basic flaw in the reasoning of the Examining
Attorney,” as does the majority. Instead, I concur with
the Examining Attorney that, based upon the relevant
dictionary definitions of the words “tackle” and “rack”
which are of record, “combining the descriptive terms
‘tackle’ and ‘rack’ fails to produce any incongruity or
inventive meaning” for the term “TACKLE-RACK,” as applied
to applicant’s goods, and that “[t]he average purchaser is
likely to understand that a tackle rack is something which
holds fishing equipment, the use for which applicant’s
[fishing tackle] boxes are designed.” (Brief at 2.)
The majority, in particular, faults the Examining
Attorney for failing “to identify any quality or
characteristic of fishing tackle boxes which applicant’s
mark TACKLE-RACK specifies with the required ‘degree of
particularity,’” pointing out that “the Examining Attorney
presented absolutely no evidence showing that any fishing
tackle box has bars, wires or pegs, items that would only
Ser. No. 75/793,263
7
cause fishing hooks, lures and the like to become tangled.”
To the majority, the Examining Attorney has failed to meet
her burden of proving that applicant’s goods are literally
a tackle rack because “the very dictionary definition of
the word ‘rack’ relied upon by the Examining Attorney
undercuts her contention that the mark TACKLE-RACK is
merely descriptive of fishing tackle boxes.” I
respectfully disagree.
I see no reason on this record why fishing tackle
boxes could not contain a framework of, for example, a
series of short pegs from which fishing tackle, such as
hooks and lures, could be hung for the sake of organization
and storage. Such a tackle rack would certainly be a
significant and desirable feature of a fishing tackle box
and is clearly described, with particularity, by the term
“TACKLE-RACK.” No evidence other than the ordinary
dictionary meanings of the words comprising such term is or
should be necessary. Nonetheless, even assuming that for
the reason expressed by the majority, such a tackle rack
would be impractical due to tangling problems, it is still
plausible to envision a fishing tackle box which functions
as if it were a tackle rack, in which case the term
“TACKLE-RACK” would still be merely descriptive of
applicant’s goods. For instance, instead of a framework of
Ser. No. 75/793,263
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bars, wires or pegs on which fishing tackle is arranged or
deposited, a fishing tackle box featuring a series of
beveled notches around the perimeter or in individual
compartments would conveniently arrange and store fishing
lures and hooks in a tangle-free manner. Such a fishing
tackle box would thus function as a tackle rack in the
sense of providing a framework on which fishing tackle is
arranged or deposited while stored and/or transported.
Accordingly, even if applicant’s goods are not
literally a “tackle rack” within the meaning of the
dictionary definitions of record or other definitions of
the word “rack” which may properly be judicially noticed,1
it is still the case that the term “TACKLE-RACK” conveys
forthwith, without mental gymnastics or the gathering of

1 In this regard, Webster’s Third New International Dictionary
(1976) at 1870 defines “rack” in pertinent part as “5 a
framework, stand, or grating on or in which articles are placed
(as for keeping or for display) :
as : ... b : a series of bins or compartments into which items
may be sorted c : any compartmented container for
holding type cases, galleys, forms, leads, or furniture ....”
Similarly, The American Heritage Dictionary of the English
Language (4th ed. 2000) at 1441 lists such term in relevant part
as connoting “1a. A framework or stand in or on which to hold,
hang, or display various articles: a trophy rack; a rack for
baseball hats ..., a drying rack for laundry.” It is settled
that the Board may properly take judicial notice of dictionary
definitions. See, e.g., Hancock v. American Steel & Wire Co. of
New Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953);
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372,
217 USPQ 505 (Fed. Cir. 1983); and Marcal Paper Mills, Inc. v.
American Can Co., 212 USPQ 852, 860 (TTAB 1981) at n. 7.

Ser. No. 75/793,263
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further information, a significant purpose or function of
applicant’s fishing tackle boxes. I therefore respectfully
dissent.