Phillips-Van Heusen Corp.

Trademark Trial and Appeal Board

Mar 28, 2002

No. 75664835 (T.T.A.B. Mar. 28, 2002)

3/28/02 Paper No. 19
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Phillips-Van Heusen Corp.
________

Serial No. 75/664,835
_______

Edward E. Vassallo and Erica Rayburn Halstead of
Fitzpatrick, Cella, Harper & Scinto for Phillips-Van
Heusen Corp.

Michael L. Engel, Trademark Examining Attorney, Law
Office 108 (David E. Shallant, Managing Attorney).
_______

Before Hohein, Chapman and Bottorff, Administrative
Trademark Judges.

Opinion by Hohein, Administrative Trademark Judge:

Phillips-Van Heusen Corp. has filed an
application to register the term "SUPER SILK" for
"clothing, namely[,] dress shirts and sport shirts made
of silk-like fabric."1

1 Ser. No. 75/664,835, filed on March 19, 1999, based upon an
allegation of a bona fide intention to use such term in
commerce.

THIS DISPOSITION
IS CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/664,835
2
Registration has been finally refused under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the ground that, when used on or in
connection with applicant's goods, the term "SUPER SILK"
is deceptively misdescriptive of them. Registration also
has been finally refused under Section 2(a) of the
Trademark Act, 15 U.S.C. §1052(a), on the basis that such
term comprises deceptive matter in that it falsely and
materially indicates that applicant's goods contain silk
when, in fact, they do not.
Applicant has appealed. Briefs have been
filed,2 but an oral hearing was not requested. We affirm
the refusals to register.

2 Applicant, in its brief, reiterates its alternative
contention, which it first raised in response to the initial
Office Action, that the term "SUPER SILK" has acquired
distinctiveness for its goods and hence is registrable pursuant
to the provisions of Section 2(f) of the Trademark Act, 15
U.S.C. §1052(f). In particular, applicant notes that at one
time it "owned a prior registration for the exact mark for the
exact goods, which was not based on a Section 2(f) showing of
distinctiveness." Applicant maintains, in this regard, that in
view of Trademark Rule 2.41(b), its ownership of Reg. No.
1,077,470, which issued on the Principal Register on November
15, 1977 in respect of the mark "SUPER SILK" (with the word
"SILK" disclaimed) for "dress shirts and sport shirts made of
silk-like fabric," should "be accepted as prima facie evidence
of distinctiveness." This is especially so, applicant insists,
in light of the fact that such mark "was in use for more than
five years, as evidenced by the accepted and acknowledged
Section[s] 8 and 15 [affidavit] filed in connection with ...
[the] prior registration[,] and, thus, had acquired
distinctiveness." However, as the Examining Attorney correctly
states in his brief, Trademark Rule 2.41(b) "applies only to
live registrations, not expired ones," and "the prior
Ser. No. 75/664,835
3
Applicant does not appear to disagree with the
Examining Attorney as to the proper standards for
determining whether a mark is deceptively misdescriptive
under Section 2(e)(1) and whether it is deceptive within
the meaning of Section 2(a). Specifically, as set forth

registration [has] expired ...." See TMEP §1212.04(d). Thus,
applicant's expired registration merely constitutes evidence
that the registration issued, see, e.g., Sunnen Products Co. v.
Sunex Int'l Inc., 1 USPQ2d 1744, 1747 (TTAB 1987), but any
benefits conferred by the registration, including the
evidentiary presumptions afforded by Section 7(b) of the
Trademark Act, 15 U.S.C. §1057(b), were lost when the
registration expired, see, e.g., Anderson, Clayton & Co. v.
Krier, 478 F.2d 1246, 178 USPQ 46, 47 (CCPA 1973). Moreover,
insofar as the affidavit previously filed by applicant under
Sections 8 and 15 of the Trademark Act, 15 U.S.C. §§1058 and
1065, is concerned, such affidavit cannot serve as evidence of
acquired distinctiveness for the term applicant presently seeks
to register inasmuch as Trademark Rule 2.41(b) requires that a
claim of acquired distinctiveness which is based upon
substantially exclusive and continuous use of a mark in commerce
be "for the five years before the date on which the claim of
distinctiveness is made," which in this case is the date of
applicant's response to the initial Office Action. TMEP
§1212.05. Furthermore, and in any event, a claim of acquired
distinctiveness is not available to permit registration of a
deceptive, as opposed to a deceptively misdescriptive, mark.
Section 2(f) of the Trademark Act and TMEP §1212.02(a).
Finally, as to the request in applicant's brief that, "even if
these refusals are maintained, ... its application be amended to
the Supplemental Register," it is pointed out that under
Trademark Rule 2.142(g), "[a]n application which has been
considered and decided on appeal will not be reopened" for such
purpose. In addition, as correctly noted by the Examining
Attorney in his brief, not only can applicant, in light of
Trademark Rule 2.47(c), presently "not go on the Supplemental
Register until it has alleged use of the mark in commerce by
filing an Amendment to Allege Use," but an amendment of the
application to the Supplemental Register would not contravene
the refusal under Section 2(a) of the statute that the term
"SUPER SILK" is deceptive. Section 23(a) of the Trademark Act
and TMEP §1203.02(a). Accordingly, amendment of the application
to the Supplemental Register is not permissible.

Ser. No. 75/664,835
4
in, for example, In re Quady Winery Inc., 221 USPQ 1213,
1214 (TTAB 1984), a mark is deceptively misdescriptive if
the following two-part test is met: (1) Does the mark
misdescribe the goods or services? (2) Are consumers
likely to believe the misrepresentation? A mark
satisfying such criteria is additionally considered to be
deceptive if the misrepresentation would be a material
factor in the purchasing decision. Id. Thus, as set
forth in the leading case of In re Budge Manufacturing
Co. Inc., 857 F.2d 773, 8 USPQ2d 1259, 1260 (Fed. Cir.
1988), a mark must meet the following three-prong test to
be adjudged deceptive:
(1) Is the term misdescriptive
of the character, quality, function,
composition or use of the goods [or
services]?

(2) If so, are prospective
purchasers likely to believe that the
misdescription actually describes the
goods [or services]?

(3) If so, is the misdescription
likely to affect the decision to
purchase?

Provided that the United States Patent and Trademark
Office puts forth sufficient evidence to establish prima
facie that each of the above elements is met, a mark is
deceptive and thus is unregistrable under Section 2(a).
8 USPQ2d at 1261.
Ser. No. 75/664,835
5
Turning first to the refusal on the basis of
deceptive misdescriptiveness, applicant contends that, in
light of the following definitions of record from an
unspecified dictionary, "[t]he terms 'super' and 'silk'
each have several meanings":
"super," which is defined as an
adjective as "1 [by shortening] :
SUPERFICIAL ... 2 [short for
superfine] a (1) : of a superfine
grade or quality (2) : of great worth
, value, excellence, or superiority
... b : possessing the greatest size,
power, complexity, intensity, or
development : being very great ... c
(1) : exhibiting the characteristics
of its type to a great or excessive
degree ... : specif : manifesting
excessive loyalty ... (2) : carried,
developed, or made use of to an
excessive degree ... d : embracing in
its structure or authority complexes
of its own nature ...." and as a noun
as "1 ... a : SUPERNUMERARY; esp : a
supernumerary actor b : one in a
position of authority or superiority :
SUPERINTENDENT, SUPERVISOR 2 ... : a
removable upper story of a beehive
containing sections for the storage of
honey 3 ... : WATCH ... 4 ... a : a
superfine or superior grade or quality
: an extra large size b : an article
of merchandise of a superfine grade,
quality, or large size 5 [by
shortening] : SUPERPHOSPHATE 6 ... :
a thin loosely woven open-meshed
starched cotton fabric used esp. for
reinforcing books 7 [by shortening] :
SUPERMARKET"; and

"silk," which is defined as an
adjective as "1 : relating to or made
Ser. No. 75/664,835
6
of silk : SILKEN ... 2 : resembling
silk" and as a noun as "1 : a fine
continuous protein fiber produced by
various insect larvae usu. for
cocoons; esp : the lustrous tough
elastic hygroscopic fiber that is
produced by silkworms by secreting
from two glands viscous fluid in the
form of two filaments consisting
principally of fibroin cemented into a
single strand by sericin and
solidifying in air, that is capable of
being reeled in a single strand from
the cocoon, and that with or without
boiling off the sericin is used for
textiles 2 a : thread, yarn, or
fabric made from silk filaments ... b
: strands of silk thread of various
thicknesses and plain or braided used
as a suture material in surgery ... 3
a : a garment (as a dress) of silk :
silk apparel ... b (1) : a gown worn
by a King's or Queen's Counsel or
barrister of high rank appointed by
the lord chancellor (2) : a King's or
Queen's Counsel (3) : the rank or
persons entitled to such a gown ... c
silks pl : the colored cap and blouse
of a jockey or harness horse driver
made in the registered racing color of
the stable for which he is riding or
driving in a particular race 4 a : a
filament resembling silk but produced
by some other organism: as (1) : the
filament produced by various spiders
esp. in building their webs and used
for cloth and telescopic sights (2) :
the byssal thread of a mollusk ... b :
a thread of such material or of wire
(as used in a sieve of a sifter in
flour milling) 5 a : CORN SILK b :a
style of corn silk ... 6 : inclusions
of minute crystals that impart a silky
luster to a gem (as a ruby) 7 : SILK
SPONGE 8 : PARACHUTE ...."

Ser. No. 75/664,835
7
Applicant maintains, in light of the above, that (italics
in original):
Because SUPER and SILK each have
various meanings, the composite term
SUPER SILK has countless connotations.
Therefore, when viewed in its
entirety, the composite mark SUPER
SILK is not merely deceptively
misdescriptive of Applicant's goods
because it does not have only one
meaning, namely a misdescriptive
meaning.

Applicant also argues that because the term
"SUPER SILK brings to mind a fabric that is similar but
superior to silk, consumers will not purchase Applicant's
goods with the belief that they are made from silk."
Hence, applicant urges that such term is suggestive
rather than deceptively misdescriptive. In particular,
applicant points to the copy which it made of record of
the file history for its now expired registration of the
mark "SUPER SILK" (with the word "SILK" disclaimed) for
"dress shirts and sport shirts made of silk-like fabric,"
noting that such registration was allowed over an initial
refusal to register on the ground of deceptive
misdescriptiveness. Likewise, as shown by the copies of
the file histories thereof which it has also made of
record, applicant maintains that "the [United States]
Patent and Trademark Office has permitted registration of
Ser. No. 75/664,835
8
other marks containing the term 'silk' for goods which do
not contain silk." Those marks, which are registered on
the Principal Register, are: "SILK-AIRE" for "women's
clothing--namely, sweaters"; "SILK SAVER" (in stylized
form) for a "stretch lace bolero garment worn beneath
outer clothing to protect the outer garment from stains
and odors"; and "RAINSILK" for "clothing, namely, coats,
jackets, and raincoats."
Furthermore, based upon the copies which it has
made of record of third-party registrations on the
Principal Register of the marks "BODY SUEDE" (with the
word "SUEDE" disclaimed) for "panties and bras,"3 "HYDRA
SUEDE" (with the word "SUEDE" disclaimed) for
"activewear, namely[,] shirts, shorts, pants, tights,
sweatshirts, jackets and running tights," "FRENCH SUEDE
LUXE SHEER" (with the words "FRENCH" and "SUEDE"
disclaimed) for "hosiery" and "SATIN DOLL" for "hosiery
and panty hose,"4 applicant insists that:

3 Although applicant additionally has introduced a copy of a
third-party registration of the mark "COTTON SUEDE" for "bras,
panties, camisoles and crop tops, all made in whole, or
significant part[,] of cotton," such registration issued on the
Supplemental Register rather than the Principal Register and
thus evidences that registration of the subject mark was barred
by Section 2(e)(1) of the statute.

4 While applicant also submitted a copy of a third-party
application for the mark "SATIN DOLLS" for various items of
"cold weather apparel" and "vests and shirts made of fleece,"
Ser. No. 75/664,835
9
Similarly, the PTO has allowed
registration of marks containing other
fabrics where the goods do not contain
that fabric. For example, ... the
term "suede" has been registered for
clothing that does not contain suede,
i.e. bras, underwear, activewear and
hosiery. .... Also ..., the term
"satin" has been registered for
clothing that does not contain satin,
i.e. ... hosiery. .... This reflects
a common practice in the textile
industry whereby trademarks contain
terms that reference superior or
desirable qualities of the particular
product being sold whether or not the
items contain such qualities.
Accordingly, by allowing [such]
registrations ..., as well as those
... involving "silk," the PTO has
acknowledged that consumers do
exercise care in purchasing clothing
and do not regard a particular mark as
making a guarantee about the
clothing's contents. Thus, similar to
the "suede" and "satin" registrations,
consumers will not believe that
Applicant's goods contain silk; rather
they will believe that Applicant's
goods contain fabric that is silk-like
or superior to silk.

The Examining Attorney, on the other hand,
asserts that because applicant's goods are identified as
"dress shirts and sport shirts made of silk-like fabric"
rather than as being made from silk, and because
"applicant has at no point argued that its goods will
contain any silk," it is clear that use of the word

such has no probative value other than as evidence that the
application was filed.

Ser. No. 75/664,835
10
"SILK" in the term "SUPER SILK" misdescribes applicant's
goods. In addition, the Examining Attorney insists that
the word "SILK" in the term at issue plainly "would cause
consumers to believe applicant's shirts are made of silk"
when in fact they are not. According to the Examining
Attorney, "[t]his belief on [a] consumer's part is
entirely plausible, as shirts are commonly made of silk,"
and thus, "[b]ecause the misdescriptiveness of SILK to
the identified goods is indisputable, the key issue is
how consumers would interpret SUPER, the only other word
in the mark."
In support of his position, the Examining
Attorney has made of record the following definition from
The American Heritage Dictionary of the English Language
(3d ed. 1992):
"super," which as an (informal)
adjective is listed as meaning "1.
Very large, great, or extreme: 'yet
another super Skyscraper' .... 2.
Excellent; first rate: a super party"
and as a noun is set forth as
signifying "1. Informal. An article
or a product of superior size, quality
or grade. 2. Informal. a. A
superintendent in an apartment or
office building. b. A supernumerary.
3. Printing. A thin starched cotton
mesh used to reinforce the spines and
covers of books."

Ser. No. 75/664,835
11
In view thereof, the Examining Attorney argues that, as
stated in his brief:
The addition of SUPER to the
misdescriptive term SILK would not
reliably dissuade consumers from
believing the goods were made of silk.
Due to the order of the words in the
mark, and the meanings of SUPER as a
noun, it is extremely unlikely that
consumers would attach any of the noun
meanings to the term. Because SILK is
... a noun ..., consumers are most
likely to interpret SUPER in either of
its adjective meanings, namely,
"[v]ery large, great, or extreme" or
"excellent; first-rate." It is likely
that applicant would like consumers to
believe its goods are excellent,
first-rate, and great, and these are
the most likely meanings consumers
will take away upon viewing the mark.
It is less likely that applicant would
like consumers to believe the goods
are very large, and even if they did,
such an interpretation would not
negate the misdescriptiveness of the
mark.

Furthermore, as the Examining Attorney points
out in his brief, it is improper to consider the term
"SUPER SILK" in the abstract:
Applicant sets forth many more
definitions of SUPER, but does so with
disregard to the relationship of the
mark to the identified goods. The
fact that [as a noun] SUPER may mean
"superintendent of an apartment or
building" or "a removable upper story
of a beehive, containing sections for
the storage of honey" is not
controlling on the question of
descriptiveness [or
misdescriptiveness]. .... While
Ser. No. 75/664,835
12
there are multiple interpretations of
the mark that consumers might hold [in
the abstract, as applied to
applicant's goods], applicant has not
shown that any non-misdescriptive
interpretation is more likely to be
held by consumers than the most
straightforward interpretation, [which
is] that the goods are "excellent,"
"first-rate," and made of silk.

In addition, with respect to applicant's "alternative
hypothesis" that "the mark will be viewed ... [as
describing] the goods as 'other than' but 'superior to'
silk," the Examining Attorney argues that:
The applicant's hypothesized
interpretation of the mark is not
supported by any of the multiple
definitions of SUPER it placed in the
record, and is in fact directly
contradicted by one of its
definitions, "exhibiting the
characteristics of its type to a great
or excessive degree." ....

With respect to applicant's reliance on copies
of a few third-party registrations for marks which
contain the words "SILK," "SUEDE" or "SATIN," the
Examining Attorney, citing In re Shapely, Inc., 231 USPQ
72, 75 (TTAB 1986),5 argues that "even if the Office has

5 The Board, in holding in such case that a stylized form of the
mark "SILKEASE," as used in connection with goods specifically
identified as "women's blouses and ladies' dresses made of
polyester crepe de chine," constituted deceptive matter within
the meaning of Section 2(a), by necessary implication also found
such mark to be deceptively misdescriptive under Section
2(e)(1).

Ser. No. 75/664,835
13
'perhaps improvidently' issued registrations in the past
to 'marks containing the term SILK for goods not made of
silk,' the Board would not be bound by those actions if
it believes that registration in the case before it would
be contrary to the statute." In addition, the Examining
Attorney contends that the third-party registrations "are
of no guidance in this case because none of the
identifications of goods state[s] that the goods are not
made of suede or satin, as the case may be." Thus,
according to the Examining Attorney, "applicant is
reading in limitations on the material composition of the
goods in these registrations which are simply not there."
As a starting point for analysis, we observe
that in order for a term to misdescribe goods or
services, the term must be merely descriptive, rather
than suggestive, of a significant aspect of the goods or
services which the goods or services plausibly possess
but in fact do not.6 With respect to marks which contain

6 It is well settled, in this respect, 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 immediately describes an ingredient, quality,
characteristic or feature thereof or if it directly conveys
information regarding the nature, function, purpose or use of
the goods or services. See 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
Ser. No. 75/664,835
14
the word "super," there have been a number of cases
holding such marks to be either merely descriptive or
suggestive, including: Quaker State Oil Refining Corp.
v. Quaker Oil Corp., 453 F.2d 1296, 172 USPQ 361, 363
(CCPA 1972) ["SUPER BLEND" held merely descriptive of
"motor oils" as designating "an allegedly superior blend
of oils"]; In re Consolidated Cigar Co., 35 USPQ2d 1290,
1293-94 (TTAB 1995) ["SUPER BUY" found laudatory and
hence merely descriptive of "cigars, pipe tobacco,

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 the manner of its use. See
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Consequently, "[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).

However, a mark is suggestive if, when the goods or
services are encountered under the mark, a multistage reasoning
process, or the utilization of imagination, thought or
perception, is required in order to determine what attributes of
the goods or services the mark indicates. See, e.g., In re
Abcor Development Corp., supra at 218, and In re Mayer-Beaton
Corp., 223 USPQ 1347, 1349 (TTAB 1984). As has often been
stated, there is a thin line of demarcation between a suggestive
mark and a merely descriptive one, with the determination of
which category a mark falls into frequently being a difficult
matter involving a good measure of subjective judgment. See,
e.g., In re Atavio, 25 USPQ2d 1361 (TTAB 1992) and In re TMS
Corp. of the Americas, 200 USPQ 57, 58 (TTAB 1978). The
distinction, furthermore, is often made on an intuitive basis
rather than as a result of precisely logical analysis
susceptible of articulation. See In re George Weston Ltd., 228
USPQ 57, 58 (TTAB 1985).
Ser. No. 75/664,835
15
chewing tobacco and snuff" inasmuch as term "ascribes a
quality of superior value to the goods," in that they
"are an exceptionally high value for their price," and is
"an expression of pre-eminence, analogous to a grade
designation"]; In re Carter-Wallace, Inc., 222 USPQ 729,
730 (TTAB 1984) ["SUPER GEL" held merely descriptive of a
"lathering gel for shaving" because term "would be
perceived as nothing more than the name of the goods
modified by a laudatory adjective indicating the superior
quality of applicant's shaving gel"]; In re Samuel Moore
& Co., 195 USPQ 237, 241 (TTAB 1977) ["SUPERHOSE!" found
merely descriptive of "hydraulic hose made of synthetic
resinous materials" inasmuch as term "would be understood
as the name of the goods modified by a laudatory
adjective which would be taken to mean that applicant's
hose is of superior quality or strength"]; In re Ralston
Purina Co., 191 USPQ 237, 238 (TTAB 1976) ["SUPER" in
"RALSTON SUPER SLUSH" ("SLUSH" disclaimed) held
suggestive of a "concentrate used to make a slush type
soft drink" because word "is used as mere puffery ... to
connote a vague desirable characteristic or quality"]; In
re Allen Electric & Equipment Co., 175 USPQ 176, 177
["SUPER COLLINEAR" found neither descriptive nor
misdescriptive of "base station communication antennas"
Ser. No. 75/664,835
16
inasmuch as "an antenna is either collinear or it is not"
and thus "one antenna is not more collinear than another
nor would it be[,] comparatively, most collinear of three
or more such arrays"]; and In re Occidental Petroleum
Corp., 167 USPQ 128 (TTAB 1970) ["SUPER IRON" held
suggestive of "soil supplements" because "it takes some
roundabout reasoning to make a determination ... that the
product contains a larger amount of iron than most soil
supplements or that this iron ... ingredient ... is
superior in quality to iron found in other soil
supplements"].
A general proposition which may be distilled
from the foregoing cases is that if the word "super" is
combined with a word which names the goods or services,
or a principal component, grade or size thereof, then the
composite term is considered merely descriptive of the
goods or services, but if such is not strictly true, then
the composite mark is regarded as suggestive of the
products or services. Here, joining the laudatory word
"super" with the generic fabric name "silk" to form the
term "SUPER SILK" results in a composite which plainly
has a meaning identical to the meaning which ordinary
usage would ascribe to such words in combination. See,
e.g., In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d
Ser. No. 75/664,835
17
1110, 1111-12 (Fed. Cir. 1987); and In re Consolidated
Cigar Co., supra at 1294.
Consequently, when considered in its entirety,
the term "SUPER SILK" would in a laudatory fashion
immediately describe, without conjecture or speculation,
a significant quality, characteristic or feature of any
articles of clothing, including dress shirts and sport
shirts, made of silk fabric. Purchasers and potential
customers for such goods would plainly understand, as
asserted by the Examining Attorney, that because shirts,
like other items of apparel, are commonly made of silk,
the term "SUPER SILK" designates goods made of an
excellent, first-rate, or superior grade of silk fabric
and not, as suggested by applicant, those produced from
"a fabric that is similar but superior to silk" (emphasis
added). See, e.g., R. Neumann & Co. v. Overseas
Shipments, Inc., 326 F.2d 786, 140 USPQ 276, 279 (CCPA
1964) ["We are unable to subscribe to the reasoning ...
that 'DURA-HYDE' would at most merely suggest that
appellee's nonleather goods of leatherlike appearance
'are as durable as leather' (emphasis supplied). The
interjection of as between 'durable' and 'hide' supplies
a distorted connotation"].
Ser. No. 75/664,835
18
However, because applicant's goods are
identified as "clothing, namely[,] dress shirts and sport
shirts made of silk-like fabric," it is clear that the
term "SUPER SILK," which signifies an excellent, first-
rate, or superior grade of silk fabric, misdescribes
applicant's goods inasmuch as they are not made from silk
fabric. See In re Shapely, Inc., supra at 73 ["There is
no question that the presence of the noun 'silk' as a
prefix renders the mark SILKEASE misdescriptive of
appellant's blouses and dresses which contain no silk
fibers"]. Moreover, none of the variety of alternative
meanings which applicant asserts for the term "SUPER
SILK" in the abstract has any applicability to
applicant's goods. The first prong of the test for a
deceptively misdescriptive term is therefore met,
especially inasmuch as the record, as noted below,
confirms that silk fabrics have several significant
properties which are available in various grades or
degrees, such that those with superior, excellent or
first-rate quality would be viewed as super silk fabrics.
With respect to the second prong of the standard
for what constitutes a deceptively misdescriptive term,
the record clearly establishes that purchasers and
prospective consumers for applicant's goods would be
Ser. No. 75/664,835
19
likely to believe the misrepresentation readily conveyed
by the term "SUPER SILK." The Examining Attorney, in
this regard, has introduced an article by the
International Silk Association (U.S.A.), entitled "What
is Silk ...," which in addition to detailing the history
of silk fibers, the care of silk fabrics and the types of
silk weaves (grouped under the categories of "ROUGH-
TEXTURED SILKS," "'RAW' SILKS," "STIFF SILKS," "SOFT
SILKS," "CRISP SILKS," "GLOSSY SILKS," "SHEER SILKS" and
"VELVETS"), states in pertinent part that:
Qualities of Silk Silks may be
woven on any type of loom made, into
fabrics of any degree of crispness or
softness, thickness or transparency.
But all of these fabrics have in
common the unique qualities that have
made silk the most cherished of
materials for 4,000 years. In the
first place, they have the beauty that
only this most beautiful of fibers can
impart, whether they are woven to
display all the natural gloss of the
silk, or to glow with a soft, diffused
lustre. They take dyes with a purity
and clarity that makes possible a
limitless range of color, from the
softest, subtlest neutrals to the most
brilliant deep tones. They print
superbly; printed silks have clarity
and depth to delight an artist. And
silks have practical qualities which
are unique.

Given the various degrees or grades which the properties
of silk fabrics may have, it is indeed plausible, if not
Ser. No. 75/664,835
20
unavoidable, that customers and potential buyers of
applicant's dress shirts and sports shirts made of silk-
like fabric would believe that such goods, when marketed
under the term "SUPER SILK," are made of an excellent,
first-rate, or superior grade of genuine silk when, in
fact, that is not the case. Accordingly, because both
elements of the test for a deceptively misdescriptive
term have been satisfied, registration of the term "SUPER
SILK" is barred by Section 2(e)(1) of the statute. See,
e.g., R. Neumann & Co. v. Overseas Shipments, Inc., supra
at 280-81; and In re Shapely, supra at 74-75.
Applicant's contentions to the contrary, based
upon its former registration for such term and certain
third-party registrations for marks containing the word
"silk" or other fabric names, are not persuasive of a
different result. Each case must, of course, be decided
on its own merits, including the evidentiary record
presented, and while uniform treatment under the
Trademark Act is desirable, the Board is not bound by
prior determinations of Examining Attorneys with respect
to registrability. See, e.g., In re Shapely, supra at
75. Moreover, the third-party registrations of marks
composed of the terms "SILK," "SUEDE" or "SATIN" are not
evidence that marks which contain a fabric name have been
Ser. No. 75/664,835
21
permitted registration where the goods do not contain
that fabric. Rather, such registrations are implicitly
limited, as the subject marks at a minimum would
otherwise be considered deceptively misdescriptive, to
goods which are made from the material named in the mark.
This brings us to consideration of the refusal
under Section 2(a). Having found the term "SUPER SILK,"
for the reasons stated above, to be deceptively
misdescriptive of applicant's "dress shirts and sport
shirts made of silk-like fabric," the determinative issue
for the purpose of whether such term is also
unregistrable as deceptive is whether the misdescription
is likely to affect the decision to purchase the goods.
Applicant, in its brief, appears to essentially concede
the materiality thereof, inasmuch as it notes that a silk
shirt constitutes "a 'premium' garment":
[T]he Examining Attorney ... has
stated that "silk shirts are generally
higher priced than non-silk shirts,"
"consumers are willing to pay a
premium for silk shirts," and "whether
or not applicant's shirts contain silk
is a material factor to consumers."
This being said, it follows that
consumers will exercise a high degree
of care when purchasing silk shirts.
A consumer who is taking care to
purchase a "premium" garment will
touch the fabric to feel its texture
and try on the item to ensure a proper
look, feel and fit before spending a
"higher price." ....
Ser. No. 75/664,835
22

Although applicant concludes the above-quoted paragraph
by asserting that "consumers will not purchase
Applicant's shirts with the belief that they contain
silk," applicant does not take issue with the Examining
Attorney's contention that the presence or absence of
silk in articles of apparel, including dress shirts and
sport shirts, is a material consideration in a consumer's
decision to purchaser such items. In particular,
applicant further acknowledges in its brief the
desirability, and hence materiality, of whether clothing
is made of silk by stating that, "[m]ost importantly,
consumers who are looking to purchase a high priced silk
garment will check the fiber content of an item to be
sure they are getting what they desire."
The Examining Attorney, in his brief, insists
that the term "SUPER SILK" is deceptive because, when
used in connection with dress shirts and sport shirts
made of silk-like fabric, the misrepresentation conveyed
by such term "would materially affect the decision to
purchase the goods." Specifically, the Examining
Attorney states that:
The excerpts from WHAT IS SILK ...
give ample testimony to the ancient
pedigree and desirable qualities of
silk. That silk shirts are generally
higher priced than non-silk shirts
Ser. No. 75/664,835
23
shows that consumers regard shirts
made of silk as more desirable.

Applicant, as noted previously, has basically
admitted the Examining Attorney's assertions that silk
shirts, relative to like articles of clothing made from
other fabrics, are "high priced," "premium" garments.
Moreover, in addition to the desirable qualities of silk
as indicated in the earlier mentioned excerpt from the
"What is Silk ..." article by the International Silk
Association (U.S.A.), such article further evidences the
advantageous properties of silk fabrics as materials from
which to make items of apparel:
Silk is the strongest of all
natural fibers. A filament of silk is
stronger than a like filament of
steel. Silk is supremely lasting.
The beautiful fabrics remaining to us
from ancient days attest to silk's
almost uncanny resistance to aging.
Silk is elastic. It will stretch 20%
and more beyond its own length,
without breaking, and return to its
original length. This elasticity
gives silk fabrics their resistance to
crushing and ripping. And silk has a
live, friendly feel. Its insulating
properties give it a cool feel in
Summer, a warm feel in Winter. Its
absorbency prevents its ever feeling
clammy or damp.

Someone said long ago: "We are
all Adam's children, but silk makes
the difference." Today, we say
simply: "There's nothing like silk."

Ser. No. 75/664,835
24
Given that silk possesses such desirable attributes, it
is plain that a term which indicates that shirts or other
garments are made of silk is likely to affect the
decision to purchase the goods. The term "SUPER SILK,"
which deceptively misdescribes applicant's dress shirts
and sports shirts made of silk-like fabric as believably
being made of an excellent, first-rate, or superior grade
of real silk, accordingly is also deceptive within the
meaning of Section 2(a) of the statute. See, e.g., R.
Neumann & Co. v. Overseas Shipments, Inc., supra; In re
Shapely, supra at 75; and Tanners' Council of America,
Inc. v. Samsonite Corp., 204 USPQ 150, 154 (TTAB 1979)
["SOFTHIDE" for "imitation leather material" held
deceptive].
Applicant appears to maintain, however, that any
deception imparted by the term "SUPER SILK" to its goods
will be precluded by the fact that such goods, when sold,
are required by federal law to carry labels setting forth
the fiber content of the fabric from which the goods are
made. According to applicant's brief:
The Federal Trade Commission ("FTC")
requires that all textile and wool
products contain a label listing the
fiber content of the fabric. See The
Textile Fiber Products Identification
Act, 15 U.S.C. §70, et seq. Applicant
has been an eminent international
manufacturer of various clothing
Ser. No. 75/664,835
25
products and accessories for over 100
years and has regularly complied with
FTC guidelines. Because consumers
exercising ordinary care will read
Applicant's labels and tags, and such
labels/tags will specify that the
shirts do not contain silk, there is
no way consumers will believe the
shirts are made of silk. Further,
Applicant contends that its mark SUPER
SILK appears on the same label as the
fabric content.

As support for its contention, applicant relies upon
declarations which it made of record from its president
and a merchandise manager of another apparel firm. Each
declarant, among other things, states that consumers
"exercise care in purchasing clothing products" and that,
as part of such care, "consumers read the fiber content
of a clothing item before purchasing the particular
item."
Applicant presses the above contention despite
citing, in its brief, In re Budge Manufacturing Co. Inc.,
supra at 1261, which specifically refuted such an
argument by stating, as to advertising and labeling which
indicate the actual fabric content of a product, that
(citation omitted; emphasis in original):
Misdescriptiveness of a term may be
negated by its meaning in the context
of the whole mark inasmuch as the
combination is seen together and makes
a unitary impression. The same is not
true with respect to explanatory
statements in advertising or on labels
Ser. No. 75/664,835
26
which purchasers may or may not note
and which may or may not always be
provided. The statutory provision
bars registration of a mark comprising
deceptive matter. Congress has said
that the advantages of registration
may not be extended to a mark which
deceives the public. Thus, the mark
standing alone must pass muster, for
that is what the applicant seeks to
register, not extraneous explanatory
statements.

That applicant's dress shirts and sports shirts made of
silk-like fabric will disclose, when marketed under the
term "SUPER SILK," the fact that the fabric from which
such goods are manufactured is not genuine silk is
accordingly irrelevant and immaterial. See, e.g., R.
Neumann & Co. v. Overseas Shipments, Inc., supra at 279;
In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1699
(TTAB 1992); and In re Shapely, supra at 74-75.
Decision: The refusals under Sections 2(e)(1)
and 2(a) are affirmed.