Tahjah A. Thomas

Trademark Trial and Appeal Board

Apr 12, 2021

88686625 (T.T.A.B. Apr. 12, 2021)

This Opinion is Not a
Precedent of the TTAB

Mailed: April 12, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
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In re Tahjah A. Thomas
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Serial No. 88686625
_____

Michael L. Binns of Parker Poe Adams & Bernstein LLP,
for Tahjah A. Thomas.

Ingrid C. Eulin, Trademark Examining Attorney, Law Office 111,
Chris Doninger, Managing Attorney.
_____
Before Cataldo, Greenbaum, and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:

I. Background
Tahjah A. Thomas (“Applicant”) seeks registration on the Principal Register of the
stylized word mark , with a disclaimer of
Serial No. 88686625
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GEMS, for “on-line wholesale and retail store services featuring precious, semi-
precious stones, and jewelry” in International Class 35.1 As initially presented in the
application, the mark was in standard characters. The application was approved for
publication and a notice of allowance issued on May 26, 2020, and Applicant filed a
statement of use the next day. However, the Examining Attorney reversed course on
May 28, 2020, withdrew the application from publication, and the notice of allowance
was cancelled. Applicant’s statement of use therefore was not considered.
The Examining Attorney refused registration of Applicant’s mark under Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), as merely descriptive of the
identified services. She asserted that the disclaimed word GEMS describes the stones
and jewelry featured in Applicant’s services,2 and “EXTRAORDINARI has
descriptive significance in that it is simply a misspelled version of the descriptive and
laudatory term ‘extraordinary.’”3 The Examining Attorney supplied two supporting
dictionary definitions of “extraordinary.”4 In response, Applicant amended the mark
to its current stylized form, and argued that Applicant’s middle name is “Ariana,”
shortened to “Ari,” and the mark has a “dual meaning[] made crystal clear by
amendment of the mark.”5

1 Application Serial No. 88686625 has a filing date of November 10, 2019, and was based on
Applicant’s assertion of a bona fide intent to use the mark in commerce under Trademark
Act Section 1(b), 15 U.S.C. § 1051(b).
2 The record includes two supporting dictionary definitions of “gem,” including “jewel; a
precious or sometimes semiprecious stone cut and polished for ornament” from Merriam-
Webster.com. February 13, 2020 Office Action at 2-11.
3 May 28, 2020 Office Action at 1.
4 Id. at 2-12.
5 July 27, 2020 Response to Office Action at 3.
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After the Examining Attorney made the refusal final, Applicant requested
reconsideration and appealed. The request for reconsideration included a declaration
from Applicant stating that “[s]ince childhood, [she has] gone by the name ‘Ari,’ which
is an abbreviation of [her] middle name ‘Ariana.’”6 She also submitted evidence from
the Nameberry and Wiktionary websites indicating that “Ari” is a first name.7
On reconsideration, the Examining Attorney maintained the descriptiveness
refusal. She attached screenshots from Applicant’s website showing that “[A]pplicant
is not referenced as Ari as suggested in the response, but Ariana,” and “[A]pplicant’s
website further confirms the laudatory, significance of the entire EXTRAORDINARI
element as the goods are touted as ‘bespoke pieces that will last for multiple
lifetimes.’”8
Also, the Examining Attorney asserted for the first time that EXTRAORDINARI
is a Romanian term that translates to “extraordinary” in English, as shown by
screenshots from the Reverso translation website.9 She referred to the doctrine of
foreign equivalents, but acknowledged that EXTRAORDINARI had not been treated
as a foreign word during prosecution of the application, in that no translation
requirement had issued. Without clearly taking a position on whether the doctrine of
foreign equivalents applies, the Examining Attorney concluded that “despite the lack
of a translation, the evidence further confirms the overall descriptive meaning of the

6 August 24, 2020 Request for Reconsideration at 4.
7 August 24, 2020 Request for Reconsideration at 5-12.
8 September 30, 2020 Denial of Reconsideration at 1-3.
9 September 30, 2020 Denial of Reconsideration at 1, 12, 15.
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term, phonetic equivalence, and its overall significance as conveying the laudatory
meaning ‘extraordinary.’”10
The appeal proceeded and has been briefed.
II. Descriptiveness
Section 2(e)(1) of the Trademark Act precludes registration of “a mark which,
(1) when used on or in connection with the goods [or services] of the applicant is
merely descriptive . . . of them.” 15 U.S.C. § 1052(e)(1). “A mark is merely descriptive
if it immediately conveys information concerning a feature, quality, or characteristic
of the goods or services for which registration is sought.” Real Foods Pty Ltd. v. Frito-
Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1373 (Fed. Cir. 2018) (quoting In
re N.C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017)). “The major
reasons for not protecting such [merely descriptive] marks are: (1) to prevent the
owner of a mark from inhibiting competition in the sale of particular goods [or
services]; and (2) to maintain freedom of the public to use the language involved, thus
avoiding the possibility of harassing infringement suits by the registrant against
others who use the mark when advertising or describing their own products [or
services].” In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1090 (Fed. Cir.
2005) (quoting In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA
1978)).
Descriptiveness must be assessed “in relation to the goods or [services] for which
registration is sought, the context in which it is being used, and the possible

10 September 30, 2020 Denial of Reconsideration at 1.
Serial No. 88686625
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significance that the term would have to the average purchaser of the goods [or
services] because of the manner of its use or intended use.” In re Bayer AG, 488 F.3d
960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (citing Abcor Dev., 200 USPQ at 218).
The descriptiveness analysis concentrates on the recitation of goods and services set
forth in the application. See In re Cordua Rests., Inc. 823 F.3d 594, 118 USPQ2d 1632,
1636 (Fed. Cir. 2016) (quoting Octocom Sys., Inc. v. Houston Comput. Servs., Inc., 918
F.2d 937, 16 USQP2d 1783, 1787 (Fed. Cir. 1990)). Evidence that a term is merely
descriptive to the relevant purchasing public “may be obtained from any competent
source, such as dictionaries, newspapers, or surveys.” Bayer AG, 82 USPQ2d at 1831;
In re Virtual Indep. Paralegals, 2019 USPQ2d 111512, *2 (TTAB 2019).
The Examining Attorney contends that “the applied-for mark is laudatory because
it merely combines a purposeful misspelling/novel spelling of the laudatory term
‘extraordinary’ and the generic/highly descriptive term ‘gems,’ and as paired here,
both terms retain their primarily laudatory and descriptive significance.”11 The
Examining Attorney notes that the term EXTRAORDINARI differs from the correct
spelling of “extraordinary” only by one letter, and the terms are phonetically
equivalent. As to Applicant’s argument that a dual meaning in the mark avoids
descriptiveness, the Examining Attorney responds that consumers would not
recognize the name reference because “Ari” is not a common name, because that
portion of the mark does not stand out as separate, and because Applicant’s use of

11 7 TTABVUE 6 (Examining Attorney’s Brief).
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the mark emphasizes only the laudatory sense of the mark, and not the name
reference.
Applicant does not dispute the descriptiveness of the words “gems”12 and
“extraordinary,” and acknowledges “that consumers would recognize
as the word ‘extraordinary.’”13 However, Applicant hastens to add that “they would
also recognize the name ‘Ari’ in Applicant’s applied-for mark.”14 Applicant
disputes the Examining Attorney’s contention that ARI does not stand out in the
mark, pointing out the capitalization of those letters within the stylized mark, as well
as their spelling of “a common given name.”15 Addressing the evidence from
Applicant’s own website, she insists that her declaration shows she uses the name
“Ari” and that the use of “Ariana” on her website would be recognizable to consumers
as the full name for the shortened form “Ari,” as a matter of “common sense.”16
Finally, Applicant deems the Examining Attorney’s doctrine of foreign equivalents
argument “irrelevant” given the special-form drawing that “deliberately and
conspicuously calls attention to ‘Ari,’ which is a recognized name and indeed

12 Applicant disclaimed GEMS in response to the Examining Attorney’s descriptiveness-
based disclaimer requirement.
13 5 TTABVUE 7 (Applicant’s Brief).
14 5 TTABVUE 7 (Applicant’s Brief) (emphasis in original).
15 5 TTABVUE 8 (Applicant’s Brief).
16 5 TTABVUE 9 (Applicant’s Brief). Applicant also points to an email exchange of record
between the Examining Attorney and Applicant’s attorney, showing that he uses “Mike”
informally in the email, while using “Michael” in his signature block, as evidence that a
person may use a full name in a more formal setting and a nickname or abbreviation in a less
formal context.
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Applicant’s name,” concluding that “[a] Romanian translation does not alter the
analysis.”17
Applicant relies on two precedents, as well as one non-precedential decision, in
support of its position that the alleged dual meaning of the mark compels a reversal
of the descriptiveness refusal. First, Applicant points to In re Grand Metropolitan
Foodservice Inc., 30 USPQ2d 1974 (TTAB 1994), concerning the mark for
“baked mini muffins.” The Board reversed genericness and descriptiveness refusals,
where the applicant had disclaimed the correctly-spelled term “muffins,” given that
the “mark does project a dual meaning or suggestiveness – that of muffins and that
of the ‘fun’ aspect of applicant’s food product.” Id. at 1975. The Board found that
consumers would not merely perceive the mark as a mere misspelling of the generic
word, and the “disclaimer makes clear that third parties will not be precluded by this
registration from using the generic term ‘muffins.’” Id. at 1976.
Second, Applicant cites In re Tea and Sympathy, Inc., 88 USPQ2d 1062 (TTAB
2008), a reversal of a descriptiveness refusal to register the standard-character mark
THE FARMACY for health- and pharmacy-related services focused on natural herbs
and organic products. The Board, citing Grand Metropolitan Foodservice, agreed with
the applicant that the mark was more than a mere misspelling of “the pharmacy,”
and was “inventive and just clever enough, being an obvious play on ‘the pharmacy’
and ‘farm,’ so that the meaning or commercial impression of applicant’s mark will be
more than simply ‘the pharmacy.’” Id. at 1063. In a footnote, the Board acknowledged

17 5 TTABVUE 10 (Applicant’s Brief).
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the lack of disclaimer as a distinction from Grand Metropolitan Foodservice, but
deemed a disclaimer unnecessary because of the dual meaning, pointedly stating that
“applicant’s registration will not preclude third parties in the trade from using the
generic designation ‘the pharmacy.’” Id. n. 4.
Third, Applicant relies on In re Choice Traders LLC, Serial Nos. 87770413 and
87950215 (TTAB March 31, 2020), a non-precedential decision18 reversing
descriptiveness refusals of the marks ARTIZEN in standard characters and
ARTIZEN in a stylized font for “essential oils.” Relying on both Grand Metropolitan
Foodservice and Tea and Sympathy, the Board held that the marks would not be
perceived as mere misspellings of “artisan,” a descriptive term for essential oils, but
rather “an obvious play on ‘artisan’ and ‘zen,’” so as to “suggest the zenlike calm and
relaxation one can attain from its redolent essential oils.” Id. at slip op. p.11. The
Board emphasized that the scope of rights from the resulting registrations would be
“extremely narrow,” in that “the registrations cannot serve to preclude others from
using “artisan” or “artisanal” on or in connection with the same or similar goods.” Id.
at slip op. p.12.
The Examining Attorney contends that these cases are distinguishable because
the second meaning of the marks in those cases was “a common and easily recognized

18 The Board permits, but does not encourage, the citation of non-precedential final decisions.
A decision that is not designated as precedential is not binding on the Board, but may be
cited for whatever persuasive value it might have. See In re Fiat Grp. Mktg. & Corp.
Commc'ns S.p.A., 109 USPQ2d 1593, 1596 n.6 (TTAB 2014) (non-precedential decisions are
not binding on the Board, but may be cited to and considered for whatever persuasive value
they may hold).
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term that presented a clear and present secondary meaning.”19 She further noted that
in Grand Metropolitan Foodservice, the applicant’s promotional materials
emphasized the dual meaning, whereas in this case, she insists that Applicant’s
website does not do so.
“The multiple interpretations that mark an expression a ‘double entendre’ must
be associations that the public would make fairly readily, and must be readily
apparent from the mark itself.” In re Calphalon Corp., 122 USPQ2d 1153, 1162
(TTAB 2017) (citations omitted). We find Applicant’s suggested double entendre too
tenuous to be readily perceived and understood by relevant purchasers who
encounter the mark in connection with the services.
In each of the double entendre cases relied on by Applicant, both meanings of the
mark were recognizable adjectives or common nouns related to the nature of the
goods or services. In Grand Metropolitan Foodservice, “fun” is an ordinary adjective,
was not a phonetic equivalent of “muffins,” the “fun” portion of the mark was
introduced with a capital letter, and the applicant emphasized in its promotion of the
goods the fun aspect of its mini-muffins. 30 USPQ2d at 1974-75. Similarly, in Tea
and Sympathy, Inc., “farm” is a common noun, and the applicant’s specimens and
advertisements showed promotion of its connection to “Small, Organic Family
Farms,” helping consumers readily recognize the “farm-fresh characteristics” of the
goods featured in the applicant’s services. 88 USPQ2d at 1062-63. In Choice Traders,
“zen” is a common noun and adjective that the Board found would be “obvious” to

19 7 TTABVUE 12 (Examining Attorney’s Brief).
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consumers in the context of essential oils whose uses include aromatherapy to induce
a “relaxed state of mind,” a definition of “zen” cited in the record. slip op. pp.7, 10-11.
By contrast, the ARI portion of Applicant’s mark in this case is not an adjective or
common noun, but an abbreviation of a proper name. Unlike in the cases cited by
Applicant, on its face, the term ARI is not a word readily associated with the
wholesale and retail services featuring gems and jewelry. Also unlike in the two
precedents relied on by Applicant, the record includes no promotional materials that
point to or emphasize ARI in connection with the services. While Applicant’s website
identifies Applicant as “Ariana Thomas” the “entrepreneur and founder of
ExtraordinARI Gems based in Atlanta, GA,” she is referred to throughout as “Ariana”
and not as “Ari,” and no particular connection is drawn between her and the mark.20
Instead, she is introduced under the heading “Meet the Team” along with Americo
Izzo, the “Master Craftsman” jeweler.21 We do not agree with Applicant that the
reference to Applicant on the website as “Ariana” emphasizes ARI as a name within
the mark. The contrasting appearance of the ARI portion of the term in Applicant’s
mark in all capital letters, while the rest of the mark has only the first letter of the
terms capitalized, is not in the traditional presentation of a name, which typically
has only the first letter capitalized and the rest in lower case. Thus, while the last
three letters of stand out somewhat because they are all capitalized,
they do not sufficiently stand out in the manner of a name to create a double entendre.

20 September 30, 2020 Denial of Reconsideration at 3.
21 September 30, 2020 Denial of Reconsideration at 3.
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As a result, we find that consumers would not readily recognize a double entendre in
Applicant’s mark.
Parallels also exist between this case and In re Wells Fargo & Co., 231 USPQ 95
(TTAB 1986), in which the Board rejected a double entendre argument as to
EXPRESSERVICE for banking services based on the connection between the
applicant’s predecessor and the “Pony Express” in the Old West. The Board found
that “consumers associate ‘Express Service’ with this Old West imagery only when
the term is used in association with the Wells Fargo name or with one of its allied
marks (e.g., the stagecoach design),” and that “the effect of these other indicia [that
were not part of the mark] on consumer perceptions cannot be considered in our
determination.” Id. at 100. Thus, Applicant in this case cannot rely on the premise
that the general consumer necessarily would encounter her mark in connection with
other extraneous identifying information about her that is not part of the mark, so as
to inform the consumer of the nickname she uses. Nor can Applicant rely on the
questionable factual premise that a general consumer already would know and
recognize her nickname without such extraneous identifying information. We discern
no readily recognizable double entendre in Applicant’s mark.
Rather, we find that consumers would perceive as
including a misspelling and phonetic equivalent of the laudatory descriptive word
“extraordinary” along with the highly descriptive word “gems.” A novel spelling of a
descriptive word does not overcome a mere descriptiveness refusal if purchasers
would perceive the different spelling as the equivalent of the descriptive term. See,
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e.g., Nupla Corp. v. IXL Manufacturing Co., 114 F.3d 191, 42 USPQ2d 1711, 1716
(Fed. Cir. 1997) (CUSH-N-GRIP “which is merely a misspelling of CUSHION-GRIP,
is also generic as a matter of law”); King-Kup Candies, Inc. v. King Candy Co., 288
F.2d 944, 129 USPQ 272, 273 (CCPA 1961) (“the syllable ‘Kup,’ which is the full
equivalent of the word ‘cup,’ is descriptive”); In re Hercules Fasteners, Inc., 203 F.2d
753, 97 USPQ 355, 358 (CCPA 1953) (finding “Fastie” merely a phonetic spelling of
“fast tie” is descriptive); Andrew J. McPartand, Inc. v. Montgomery Ward & Co., 164
F.2d 603, 76 USPQ 97, 99 (CCPA 1947) (KWIXTART merely descriptive as “a
phonetic spelling of the term ‘quick start’” for electric storage batteries); Calphalon,
122 USPQ2d at 1164 (finding SHARPIN phonetically identical to “sharpen,”
describing knife-sharpening goods); Nazon v. Ghiorse, 119 USPQ2d 1178, 1185
(TTAB 2016) (“one cannot obtain rights in a mark merely by a slight misspelling of a
recognized descriptive term”); see generally 2 MCCARTHY ON TRADEMARKS AND
UNFAIR COMPETITION § 11:31 (5th ed. March 2021 update) (“A slight misspelling
of a word will not usually turn a descriptive word into a non-descriptive one…. If the
misspelling is a recognizable phonetic equivalent of the original descriptive term,
then the misspelled term is still ‘descriptive.’”).
Based on these findings, we consider it unnecessary to address the Examining
Attorney’s argument based on the Doctrine of Foreign Equivalents, and do not apply
the doctrine in this case.
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Considering the mark in its entirety, it immediately conveys information
concerning a feature, quality, or characteristic of the services – that the wholesale
and retail store services feature exceptional gems.
Decision: We affirm the refusal to register the proposed mark on the ground that
it is merely descriptive of Applicant’s services under Trademark Act Section 2(e)(1).