UsedSurf Inc.

Trademark Trial and Appeal Board

Jun 30, 2017

No. 86659769 (T.T.A.B. Jun. 30, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 30, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re UsedSurf Inc.
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Serial No. 86659769
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Travis Wilson of The Law Office of Travis Wilson,
for UsedSurf Inc.
April A. Hesik, Trademark Examining Attorney, Law Office 124,
Lydia Belzer, Managing Attorney.
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Before Shaw, Goodman, and, Coggins
Administrative Trademark Judges.

Opinion by Shaw, Administrative Trademark Judge:
UsedSurf Inc. (“Applicant”) seeks registration on the Principal Register of the
mark USEDSURF (in standard characters) for the following services:
On-line retail store services featuring new, used and
custom surfboards, new and used surfboard accessories,
fins, leashes, board bags, wetsuits, traction pads, surf
racks, hats, cloths, and wax; retail store services featuring
new, used and custom surfboards, new and used surfboard
accessories, fins, leashes, board bags, wetsuits, traction
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pads, surf racks, hats, cloths, and wax, in International
Class 35.1
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 is merely descriptive of the identified services. When the refusal
under Section 2(e)(1) was made final, Applicant appealed. We affirm the refusal to
register.2
I. Mere Descriptiveness under Section 2(e)(1)
“A term is merely descriptive if it immediately conveys knowledge of a quality,
feature, function, or characteristic of the goods or services with which it is used.” In
re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed.
Cir. 2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828,
1831 (Fed. Cir. 2007)); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009-10 (Fed.
Cir. 1987). Whether a particular term 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 Dev. Corp.,
588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222,
1224 (TTAB 2002).

1 Application Serial No. 86659769 was filed on June 11, 2015 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce.
An Amendment to Allege Use was filed on October 5, 2015 and accepted.
2 Applicant submitted a Section 2(f) claim but later withdrew the claim. See Applicant’s
responses of October 6, 2015 and April 9, 2016. Inasmuch as the 2(f) claim has been
withdrawn, we do not address whether Applicant’s mark has acquired distinctiveness.
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II. Arguments and Evidence
The Examining Attorney argues that “[t]he mark is merely descriptive of
[A]pplicant’s online retail store and retail store services because it describes the
nature of the items featured in the stores, specifically, used goods for surfing.”3 In
support of her position that USEDSURF is merely descriptive of the applied-for
services, the Examining Attorney submitted evidence pertaining to the meaning of
the individual terms, as well as Applicant’s and third parties’ use of the terms. The
evidence falls into three categories: (1) dictionary definitions of USED and SURF; (2)
third-party registrations for similar or related services wherein the term SURF is
disclaimed; and (3) third-party websites purporting to show that surf equipment is
commonly sold used, and that the term SURF has a commonly understood meaning
as referring to surf shops or surfing equipment.
The dictionary definitions submitted by the Examining Attorney define “used” as
“[n]ot new; secondhand: a used car.”4 The term “surf” is defined, inter alia, as “[t]o
engage in surfing” and also as “[t]o ride on or along (a wave) on a surfboard.”5
The following third-party registrations are representative of the registrations
submitted by the Examining Attorney purporting to show that the term SURF may
be considered descriptive when used on goods and services similar to Applicant’s:6
• Registration No. 2150641 for the mark T & C SURF, with a disclaimer of
SURF, for “Retail stores featuring clothing, hats, shoes, surfing goods,

3 Examining Attorney’s Br., p. 4; 12 TTABVUE 4.
4 ahdictionary.com, Office action of September 24, 2015, TSDR p. 2.
5 Id. at 3.
6 Examining Attorney’s Office action of May 12, 2016, TSDR pp. 67-122.
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skateboards, bags, wallets, prerecorded videocassettes, key chains, jewelry,
decals and watches;”
• Registration No. 2448576 for the mark B.C. SURF & SPORT, with a
disclaimer of SURF & SPORT, for “Retail store services featuring sporting
goods and sporting goods used in water sports, competitive sports, and
recreational sports;”
• Registration No. 2634875 for the mark MAINLAND SKATE & SURF,
with a disclaimer of SKATE & SURF, for “Retail store services featuring
skates, surfboards, skateboards, snowboards and accessories, namely,
clothing, and replacement parts;”
• Registration No. 3660190 for the mark MAIN BEACH SURF + SPORT,
with a disclaimer of SURF + SPORT, for “Retail store services featuring
outdoor sporting goods, equipment, clothing, and accessories including
backpacks, watches, wallets, sunglasses, kyaks [sic], canoes, surfboards,
waterskis, skateboards and a wide variety of consumer goods of others;”
• Registration No. 3854313 for the mark RISE SURF, with a disclaimer of
SURF, for, inter alia, “Surfboards;”
• Registration No. 4396492 for the mark JUICE BOX SURF, with a
disclaimer of SURF, for “Retail store services, online retail store services,
and catalog ordering services, all of the foregoing featuring surfing
equipment, supplies and accessories;”
• Registration No. 4009255 for the mark LOST WINDS SURF, with a
disclaimer of SURF, for, inter alia, for “Retail store and on-line retail store
services featuring clothing;”
• Registration No. 4181757 for the mark NEWPORT SURF, with a
disclaimer of SURF, for “Surf shop retail store services featuring . . . sports
equipment, namely, surf boards, body boards, skim boards . . . wet suits,
surfboard leashes, fins, wax, grip pads, [and] surf board bags;”
• Registration No. 4874756 for the mark JERSEY DEVIL SURF, with a
disclaimer of SURF, for, inter alia, “Retail store services featuring . . . sports
equipment, namely, surf boards, body boards, surf board bags, skim boards,
skateboards, wet suits, surfboard leashes, fins, wax, grip pads, and body
board leashes;”
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• Registration No. 4525169 for the mark PILGRIM SURF + SUPPLY, with
a disclaimer of SURF + SUPPLY, for, inter alia, “Retail store services
featuring sportswear, sporting goods and accessories;”
• Registration No. 4740578 for the mark GULFWIND PADDLE & SURF,
with a disclaimer of PADDLE & SURF, for, inter alia, “Retail store services
featuring sportswear, sporting goods, sporting equipment and outdoor
recreation equipment;” and
• Registration No. 4763657 for the mark YANA SURF, with a disclaimer of
SURF, for “Surfboards” and “On-line retail store services featuring
surfboards, clothing, headgear, surfing accessories, and stickers.”
The following excerpts from internet web sites, which purport to show that surf
equipment is commonly sold used and that the term SURF is widely used in
association with retail sale of surfing equipment and clothing, are representative of
the excerpts submitted by the Examining Attorney:7
http://www.surfwater.org

7 Office actions of September 24, 2015, TSDR pp. 6-8 and May 12, 2016, TSDR pp. 34-44.
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https://www.surferslist

http://freedomsurfshop.com

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http://thaliasurf.com

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http://saltsurf.com

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http://risesurf.com

Taken as a whole, we find the Examining Attorney’s evidence establishes that the
term USEDSURF merely describes the nature of the items featured in Applicant’s
store, specifically, used surfing equipment. In particular, we note that the term SURF
is widely used by retailers without further modifiers such as “shop” or “store.” That
is, surf equipment retailers often use the term SURF alone in place of “surf shop” or
“surf store.” Thus, the registration or use of marks such as T & C SURF, RISE SURF,
JUICE BOX SURF, NEWPORT SURF, YANA SURF, FREEDOM SURF, and
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THALIA SURF all suggest that consumers are accustomed to seeing the term SURF
used in connection with surf shops and products.
Applicant argues that “the descriptiveness of the term USEDSURF, in its entirety,
has not been established sufficient to uphold the Section 2(e) objection.”8 We disagree.
When two or more merely descriptive terms are combined, the determination of
whether the combined mark also has a merely descriptive significance turns on
whether the combination of terms evokes a non-descriptive commercial impression.
If each component retains its merely descriptive significance in relation to the
services, the combination results in a composite that is itself merely descriptive. See
In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372 (Fed. Cir. 2004)
(quoting Estate of P.D. Beckwith, Inc. v. Comm’r., 252 U.S. 538, 543 (1920)); In re
Tower Tech Inc., 64 USPQ2d 1314, 1318 (TTAB 2002)) (SMARTTOWER merely
descriptive of commercial and industrial cooling towers); In re Putman Publ’g. Co., 39
USPQ2d 2021 (TTAB 1996) (FOOD & BEVERAGE ONLINE merely descriptive of
news and information services in the food processing industry).
Here, the evidence of record amply shows that USED and SURF have commonly
understood descriptive meanings. When viewed in connection with Applicant’s retail
store services, each component of Applicant’s USEDSURF mark retains its merely
descriptive significance, and the mark in its entirety means and directly engenders
the commercial impression of an establishment selling used surf equipment.

8 Applicant’s Br., p. 4, 4 TTABVUE 8.
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Moreover, there is nothing in the record to support a finding that the individual
terms, once combined, lose their descriptive meaning and gain a new, nondescriptive
connotation. On the contrary, the evidence supports the likely connotation of the
mark by demonstrating that consumers are regularly faced with a variety of retailers
using the term SURF in connection with their retail stores.
Applicant further argues that
The term “USED” is subject to many interpretations, e.g.,
does the Applicant deal with used by the owner, used by
someone else, or collectibles, and vintage goods? If its [sic]
in the context of collectibles, and vintage goods, does the
Applicant restore “used” goods? Or instead of restoration,
does the Applicant sell for memorabilia? This is where
consumers perform the “mental exercise and mature
thought” to determine the accurate relevance of the mark
with the Applicant’s services.9
This argument too is unavailing. Descriptiveness must be determined in relation
to the services for which registration is sought. The fact that a term may have
different meanings in a different context is not controlling. See In re RiseSmart Inc.,
104 USPQ2d 1931, 1933 (TTAB 2012); In re Chopper Indus., 222 USPQ 258, 259
(TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979); In re
Champion Int’l Corp., 183 USPQ 318, 320 (TTAB 1974). If, as here, a term has a
primary significance that is descriptive in relation to the recited services, then the
term is merely descriptive.

9 Id. at 7, 4 TTABVUE 11.
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III. Conclusion
For the reasons discussed, we conclude that when used on or in connection with
Applicant’s identified services, the proposed mark USEDSURF merely describes that
Applicant offers used surfing equipment for sale.
Decision: The refusal to register Applicant’s mark USEDSURF under Section
2(e)(1) of the Trademark Act is affirmed.