Sport Elle, Inc.

Trademark Trial and Appeal BoardJan 17, 2012

No. 85010558 (T.T.A.B. Jan. 17, 2012)

Mailed: January 17, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In Re Sport Elle, Inc. ________ Serial No. 85010558 _______ Philip H. Gottfried and Holly Pekowsky of Amster, Rothstein & Ebenstein LLP, for Sport Elle LLP. Elizabeth N. Kajubi, Trademark Examining Attorney, Law Office 107 (Leslie Bishop, Managing Attorney). _______ Before Kuhlke, Ritchie, and Kuczma, Administrative Trademark Judges. Opinion by Ritchie, Administrative Trademark Judge: Sport Elle, Inc. (“applicant”) filed an application to register on the Principal Register the mark SPORT COUTURE BY ONQUE,1 in standard character format, for goods identified as “clothing for use by women, namely blouses; halter tops; jackets; pants; shirts; slacks; sport shirts; sweaters; t- shirts; tops,” in International Class 25. 1 Serial No. 85010558, filed April 9, 2010, pursuant to Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b), alleging a bona fide intent to use in commerce. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 85010558 2 The Trademark Examining Attorney made final a requirement to disclaim the term “sport couture” under Section 6(a) of the Trademark Act, 15 U.S.C. §1056. Applicant filed a timely appeal. Both applicant and the examining attorney filed briefs. For the reasons discussed herein, the Board affirms the requirement of disclaimer. Disclaimer Requirement A term must be disclaimed apart from the mark as shown if it is deemed to be merely descriptive of the subject goods or services. Trademark Manual of Examining Procedure §1213.08(b) (8th ed. 2011) (TMEP); See in re Grass GmbH, 79 USPQ2d 1600, 1603 (TTAB 2006). A term is deemed to be merely descriptive 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. 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). 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 merely descriptive; it is enough that the term describes one significant attribute, function or property of the goods or services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). Serial No. 85010558 3 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. That a term may have other meanings in different contexts is not controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Moreover, it is settled that “[t]he question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey information about them.” In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002). See also In re Patent & Trademark Services Inc., 49 USPQ2d 1537 (TTAB 1998); In re Home Builders Association of Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re American Greetings Corporation, 226 USPQ 365 (TTAB 1985). On the other hand, if a mark requires imagination, thought, and perception to arrive at the qualities or characteristics of the goods or services, then the mark is suggestive. In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003). A composite term consisting of merely descriptive terms is registrable only if as a unitary mark it has a separate, non-descriptive meaning. In re Colonial Serial No. 85010558 4 Stores, Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (holding SUGAR & SPICE not merely descriptive of bakery products). There is a definition of record for “sport” as meaning “of, relating to, or suitable for sports, especially: styled in a manner suitable for casual or informal wear.”2 There is a definition of record for “couture” as meaning “high fashion clothing: high quality clothing made to order by a fashion designer.”3 Applicant’s identification of goods includes “clothing for use by women, namely blouses; halter tops; jackets; pants; shirts; slacks; sport shirts; sweaters; t- shirts; tops.” Applicant argues that the composite term “sport couture” is incongruous with regard to the goods for which applicant seeks registration in that “the word ‘sport’ refers to a very different type of clothing than the word ‘couture,’ and therefore, the pairing of these words in a single phrase creates a new and distinct commercial impression which is clearly not descriptive.” (appl’s brief at unnumbered 1). In particular, applicant points to the definitions submitted by the examining attorney, as cited above, to indicate that “[t]he words ‘sport’ and ‘couture’ have opposite meanings in the fashion world.” Id. at unnumbered 2. 2 Merriam-Webster Online (2010). 3 Encarta World English Dictionary (North American Edition 2009). Serial No. 85010558 5 The examining attorney, however, has submitted numerous instances of third-party uses of the term “sport couture” in a descriptive manner to mean high fashion casual wear. Samples of Internet evidence are as follows: Dirk Bikkembergs recognizes that football is more than just a sport; it is a way of life and a symbol of strength and dynamism. This led him to create his amazing sport couture collection. http://couture.zappos.com. Charlotte Russe: Feature: Must have trends: sport couture-30% off. www.charlotterusse.com. Cole Haan Women’s Air Bria Stitch Slip-On Stretch Fabric: sport couture: slip-on in soft stretch fabric with calfskin trim. www.bizrate.com. Look hot, Feel cool sport couture. www.ahmbay.info. NADIA FASSI SPORT COUTURE: Nadia Fassi has always designed her women’s collections for a look that is elegant, decidedly comfortable and outside traditional canons. Her target is the young woman who loves a refined image that is carefully crafted right down to the smallest detail. . . . Nadia Fassi selected Ingeo™ fiber to create a t-shirt that will be part of her upcoming summer collection, and will be worn by Cristina Chiabotto and Florence Art School’s Max Ballet dance troupe during their performance at the Festival. This same t-shirt will be worn by teachers at the Art School during all dance classes to be held over the course of the regular school year. www.natureworksllc.com. Cype is specialized in the design, development and marketing of stylish and technical sportswear, sport couture & fusion footwear (footwear, apparel and accessories). www.cypewear.com. Devoted Creations Sport Couture for Women Tanning Lotion $28.95. www.amazon.com/Devote-Creations- Couture-Tanning-Extreme. Serial No. 85010558 6 It is clear from these various third-party uses that the term “sport couture” is understood as a descriptive term to refer to high fashion casual wear, including clothing of the type identified in the application. Accordingly, we have no doubt that the relevant public will immediately understand the composite term “sport couture” as conveying information about a feature or function of applicant’s identified goods. See In re Abcor, 200 USPQ at 217-218. The requirement to disclaim the term “sport couture” is affirmed. Decision: We affirm the requirement for a disclaimer of the term “sport couture,” as well as the refusal to register in absence of a disclaimer. However, if applicant submits the required disclaimer to the Board within 30 days, then the decision will be set aside, and the application will proceed to publication.