Rhoda Richard

Trademark Trial and Appeal BoardJun 23, 2016

No. 86255498 (T.T.A.B. Jun. 23, 2016)

This Opinion is not a Precedent of the TTAB Mailed: June 23, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Rhoda _____ Serial No. 86255498 _____ Sharon Gobat of Bel-Air Intellectual Property, for Rhoda Richard. Fong Hsu, Trademark Examining Attorney, Law Office 115, Helen Bryan-Johnson, Managing Attorney. _____ Before Quinn, Bergsman and Pologeorgis, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Richard Rhoda (“Applicant”) seeks registration on the Principal Register of the mark BAITBEADS (in standard characters) for “fishing tackle; artificial fishing lures,” in International Class 28.1 1 Application Serial No. 86255498 was filed on April 17, 2014, based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as April 16, 2014. Through an Examiner’s Amendment dated November 3, 2015, Applicant amended his application to the Supplemental Register. However, he withdrew the amendment to the Supplemental Register requesting that his “timely filed brief can be considered by the Board as a plea to restore the application to seek registration on the Principal Register.” 8 TTABVUE 2. While the Trademark Examining Attorney noted the amendment to the Serial No. 86255498 - 2 - The Trademark Examining Attorney has refused registration of Applicant’s mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that Applicant’s mark BAITBEADS is merely descriptive of fishing tackle and artificial fishing lures because the mark describes beads used as lures. As best we understand Applicant’s argument, BAITBEADS is suggestive, not merely descriptive, because BAITBEADS is an incongruous term since fishing tackle and lures are not bait. When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We affirm the refusal to register. I. Procedural Issue Before proceeding to the merits of the refusal, we address a procedural matter. Although Applicant’s Reply Brief was due April 13, 2016, Applicant did not file his Reply Brief until April 14, 2016. In addition, Applicant attached evidence not previously made of record. Applicant filed a request for the Board to consider the late- filed reply brief on the ground that “the Declarations associated with the brief could not be completed until the day of the deadline.”2 Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d), mandates that the record in the application should be complete prior to the filing of an appeal. The record in the application should be complete prior to the filing of an appeal. The Trademark Trial and Appeal Supplemental Register, she did not note its withdrawal. Nevertheless, we find that Applicant withdrew the amendment to the Supplemental Register and that, through this appeal, Applicant seeks to reverse the refusal of registration on the Principal Register. 2 14 TTABVUE 2. Serial No. 86255498 - 3 - Board will ordinarily not consider additional evidence filed with the Board by the appellant or by the examiner after the appeal is filed. After an appeal is filed, if the appellant or the examiner desires to introduce additional evidence, the appellant or the examiner may request the Board to suspend the appeal and to remand the application for further examination. While Applicant’s request explains why he could not complete the evidentiary declaration by the due date of his Reply Brief, he did not explain why he was attempting to file the declaration after the evidentiary record was closed. Since the evidence attached to Applicant’s Reply Brief was not timely filed, it will be given no consideration. On the other hand, we will consider the arguments in the Reply Brief without considering any reference to the late-filed evidence. II. Applicable Law A term is merely descriptive of goods or services within the meaning of Section 2(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 Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). See also, In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). Whether a mark or a component of a mark is merely descriptive is determined in relation to the goods or 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 Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). A term need not immediately convey an idea of each and every specific feature of the goods or services in order to be considered Serial No. 86255498 - 4 - merely descriptive; it is enough if it describes one significant attribute, function or property of them. See In re Gyulay, 3 USPQ2d at 1010; In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). This requires consideration of the context in which the mark is used or intended to be used in connection with those goods or services, and the possible significance that the mark would have to the average purchaser of the goods or services in the marketplace. See In re Chamber of Commerce of the U.S., 102 USPQ2d at 1219; In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007); In re Abcor Dev. Corp., 200 USPQ at 218; In re Venture Lending Assocs., 226 USPQ 285 (TTAB 1985). The question is not whether someone presented only with the mark could guess the products or activities listed in the description of goods or services. Rather, the question is whether someone who knows what the products or services are will understand the mark to convey information about them. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002). See also In re Patent & Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). 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 non-descriptive commercial impression. If each component retains its merely descriptive significance in relation Serial No. 86255498 - 5 - to the goods or services, the combination results in a composite that is itself merely descriptive. In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (quoting Estate of P.D. Beckwith, Inc. v. Commissioner, 252 U.S. 538, 543 (1920)). See also In re Tower Tech, Inc., 64 USPQ2d at 1318 (SMARTTOWER merely descriptive of commercial and industrial cooling towers); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001) (AGENTBEANS merely descriptive of computer programs for use in developing and deploying application programs); In re Putman Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of news and information services in the food processing industry). However, a mark comprising a combination of merely descriptive components is registrable if the combination of terms creates a unitary mark with a non-descriptive meaning, or if the composite has an incongruous meaning as applied to the goods or services. See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR & SPICE for “bakery products”); In re Shutts, 217 USPQ 363 (TTAB 1983) (SNO-RAKE for “a snow removal hand tool having a handle with a snow-removing head at one end, the head being of solid uninterrupted construction without prongs”). Thus, we must consider the issue of descriptiveness by looking at the mark in its entirety. “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.” In re Tennis in the Round, Inc., 199 USPQ 496, 498 (TTAB 1978). See also, In re Shutts, 217 USPQ Serial No. 86255498 - 6 - at 364-65; In re Universal Water Systems, Inc., 209 USPQ 165, 166 (TTAB 1980). In this regard, “incongruity is one of the accepted guideposts in the evolved set of legal principles for discriminating the suggestive from the descriptive mark.” In re Shutts, 217 USPQ at 365. See also In re Tennis in the Round, Inc., 199 USPQ at 498 (the association of applicant’s mark TENNIS IN THE ROUND with the phrase “theater- in-the-round” creates an incongruity because applicant’s services do not involve a tennis court in the middle of an auditorium). Bait is defined, inter alia, as a verb meaning “to put a piece of food on (a hook) or in (a trap) in order to attract and catch fish or animals” and as a noun meaning “something (as food) used in luring especially to a hook or trap.”3 A bead is defined as “a small, usually round piece of glass, wood, stone, etc. that has a hole through its center and that is put on a string with other similar pieces and worn as jewelry or that is sewn onto clothing.”4 Fisherman use natural or live bait (e.g., worms, grubs, maggots, etc.) and artificial baits and lures. “[A]rtificial baits come in a bewildering array of styles, shapes, strategies, and colors, ranging from massive, shiny silver spoon-like devise trolled for big lake fish to wispy dry flies, tiny bundles of features and fur delicately cast to flighty trout.”5 3 Merriam-Webster Online Dictionary (merriam-webster.com) attached to the February 24, 2015 Office Action. 4 Id. 5 “Fishing: Natural Bait vs. Artificial Lures,” Discover Boating website (no url) attached to the August 24, 2015 Response (4 TTABVUE 28). Serial No. 86255498 - 7 - Fish beads are a lure that reflect light to attract fish.6 A photograph of fishing beads on hook is displayed below:7 Lures are referred to as artificial bait. For example, the MonsterFishingTackle.com website advertises the sale of Hot Spot Roller Bait Bead,8 and Dick’s Sporting Goods website (dickssportinggoods.com) advertises the sale of “Soft Plastic Baits.”9 The eHow website (ehow.com) has posted an article entitled “How to Fish With Artificial Bait” instructing the reader that “you manipulate the artificial bait with skill and finesse to fool the fish into thinking he’s about to chomp 6 Uncle Junes website (lightningbeads.com), Jann’s Netcraft website (jannsnetcraft.com), and Tackle the Surf website (tacklethesurf.com) attached to the July 31, 2014 Office Action, and Cabelas website (cabelas.com) attached to the February 24, 2015 Office Action. 7 Uncle Junes website (lightningbeads.com) attached to the July 31, 2014 Office Action. 8 July 31, 2014 Office Action. 9 6 TTABVUE 5-6. Serial No. 86255498 - 8 - into a meal.”10 See also “Artificial Baits,” as a line of products, posted on the Total Fishing website (total-fishing.com),11 and on the Carp Kit website (carpkit.com).12 We find, first, that the compression of the words BAIT BEADS into a single term, BAITBEADS, conveys the commercial impression of two words. In other words, consumers would recognize the mark as consisting of the separate elements BAIT and BEADS. See In re Carlson, 91 USPQ2d 1198, 1200 (TTAB 2009) (URBANHOUZING would be recognized as URBAN HOUSING); In re Cox Enterprises Inc., 82 USPQ2d 1040, 1043 (TTAB 2007) (“THEATL is simply a compressed version of the descriptive term THE ATL without a space between the two words. Without the space, THEATL is equivalent in sound, meaning and impression to THE ATL and is equally descriptive of applicant's goods”); In re Planalytics Inc., 70 USPQ2d 1453, 1455 (TTAB 2004) (GASBUYER merely descriptive of providing on-line risk management services in the field of pricing and purchasing decisions for natural gas; the absence of the space does not create a different meaning or perception of the term). The Planalytics decision, 70 USPQ2d at 1455-56, also cited the following cases in which, although a space was deleted between the words, the combined term remained descriptive: In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) (SCREENWIPE generic for a wipe for cleaning television and computer screens); In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978) (GASBADGE at least descriptive for gas monitoring 10 6 TTABVUE 7-8. 11 6 TTABVUE 10-18 and 5 TTABVUE 2-4 (the TTABVUE entries were posted out of order). 12 5 TTABVUE 5-7. Serial No. 86255498 - 9 - badges; three judges concurred in finding that term was the name of the goods); In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977) (BREADSPRED descriptive for jams and jellies that would be a spread for bread); In re Perkin-Elmer Corp., 174 USPQ 57 (TTAB 1972) (LASERGAGE merely descriptive for interferometers utilizing lasers). BAITBEADS is merely descriptive of fishing tackle and artificial fishing lures because the term directly imparts to the purchaser or prospective purchaser that the products are beads used as fishing lures or tackle. As demonstrated by the evidence in the record, “bait” is a broad term encompassing live/natural bait, as well as artificial bait, including lures such as fishing beads. There is nothing incongruous about the term BAITBEADS as fisherman will immediately understand that the products are artificial lures comprised of beads without the necessity of having to resort to any thought. Decision: The refusal to register Applicant’s mark BAITBEADS is affirmed.