Tahjah A. ThomasDownload PDFTrademark Trial and Appeal BoardApr 12, 202188686625 (T.T.A.B. Apr. 12, 2021) Copy Citation This Opinion is Not a Precedent of the TTAB Mailed: April 12, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Tahjah A. Thomas _____ 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 - 2 - 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. Serial No. 88686625 - 3 - 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. Serial No. 88686625 - 4 - 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 - 5 - 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). Serial No. 88686625 - 6 - 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. Serial No. 88686625 - 7 - 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). Serial No. 88686625 - 8 - 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). Serial No. 88686625 - 9 - 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). Serial No. 88686625 - 10 - 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. Serial No. 88686625 - 11 - 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, Serial No. 88686625 - 12 - 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. Serial No. 88686625 - 13 - 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). Copy with citationCopy as parenthetical citation