Warnaco, Inc.

Trademark Trial and Appeal Board

Dec 22, 1997

No. 74699563 (T.T.A.B. Dec. 22, 1997)

Paper No. 14
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB
12/22/97 RFC
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Warnaco, Inc.
________
Serial No. 74/699,563
_______
Nancy M. Dodderidge of Amster, Rothstein & Ebenstein for
Warnaco, Inc.
Leslie Bishop, Trademark Examining Attorney, Law Office 109
(Deborah Cohn, Managing Attorney).
_______
Before Cissel, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On July 7, 1995, applicant filed an application to
register the mark “SATIN EMBROIDERIES” on the Principal
Register for “women’s intimate apparel, namely, bras,
panties, bustiers, briefs, slips, corsettes and camisoles,”
in Class 25. The application was based on applicant’s
assertion that it possessed a bona fide intention to use the
mark in commerce on the specified goods.
The Examining Attorney refused registration under
Section 2(e)(1) of the Act on the ground that the mark, if
Ser. No. 699563
2
applied to the goods set forth in the application, would be
merely descriptive of them. In support of the refusal, the
Examining Attorney submitted a copy of a page from the 1994
edition of the Webster’s II New Riverside Dictionary, which
shows that satin is “a smooth fabric, as of silk, nylon, or
rayon, with a glossy face and a dull back.” The term “satin
stitch” is defined in the same dictionary as “[a]n
embroidery stitch done in close parallel lines to produce a
satinlike finish.”
On the basis of the meanings of the two words in the
mark sought to be registered, the Examining Attorney
concluded that the proposed mark would immediately convey to
prospective purchasers of applicant’s goods that the
clothing items bearing the mark either would be made of
satin and decorated with embroidery, or that the
embroideries on the goods would have a satin finish, such as
that produced by satin stitch embroidery. The Examining
Attorney found that in either event, the term sought to be
registered is unregistrable under Section 2(e)(1) of the Act
because it immediately conveys information about the nature,
characteristics or features of the goods to which it will be
applied.
Applicant argued that registration was not barred by
the statute, but submitted no evidence in support of its
contentions. The Examining Attorney was not persuaded by
Ser. No. 699563
3
applicant’s arguments, and the refusal to register was made
final in the second office action. Applicant requested
reconsideration, again without making any evidence of record
in connection with its arguments. Again the Examining
Attorney remained convinced that the refusal was proper, and
applicant filed a notice of appeal to this board.
Applicant filed its appeal brief. In the brief,
applicant listed several third-party registrations it
contended supported a finding that applicant’s mark is only
suggestive as applied to the goods set forth in the
application, but copies of these registrations were not
submitted with the brief. The Examining Attorney filed her
brief responsive to applicant’s brief, including an
objection to the untimely submission by applicant of the
list of third-party registrations in applicant’s brief.
Attached to the Examining Attorney’s brief was a photocopy
of another page from the same dictionary she had previously
copied. This time the entry for “embroidery” was shown.
One listed meaning is “ornamentation of fabric with
needlework.”
Next, applicant petitioned for suspension of the appeal
and restoration of jurisdiction to the Examining Attorney
for consideration of additional evidence, namely copies of
printouts from a commercial data base showing the third-
party registrations applicant had listed in its brief. This
Ser. No. 699563
4
submission was followed a week later by actual copies of the
registrations at issue.
Because the registrations were not timely submitted,
the Board denied applicant’s request to make the copies of
record in this application as well as applicant’s request
for suspension of action on the appeal and remand to the
Examining Attorney for consideration of them. The Board
pointed out that under Trademark Rule 2.142(d), the record
in an application is closed with the filing of the notice of
appeal. Accordingly, we have not considered the evidence
applicant sought to make of record. Moreover, even if we
had, our decision in this case would not have been different
from the one we have reached without considering the
evidence in question. The issue here is not whether other
marks which include the term “SATIN” combined with different
terms, none of which is “EMBROIDERIES,” are merely
descriptive of the various clothing items listed in the
third-party registrations untimely submitted by applicant.
Rather, the issue before us in this appeal is whether the
mark “SATIN EMBROIDERIES” is merely descriptive of the goods
specified in the instant application.
Based on careful consideration of the record in this
application and the relevant legal principles and
precedents, we hold that the mark applicant seeks to
Ser. No. 699563
5
register is merely descriptive of the goods set forth in the
application.
A mark is merely descriptive under Section 2(e)(1) of
the Act if it immediately conveys information about an
ingredient, quality, characteristic, or feature of the goods
with which it is, or will be, in the case of an application
based on the intent to use the proposed mark, used. In re
MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright-Crest,
Ltd., 204 USPQ 591 (TTAB 1979). The question is not whether
one could determine what the goods are from consideration of
the mark in the abstract. Rather, we must determine whether
the mark conveys descriptive information in relation to the
identified goods in the context in which the mark is, or
will be, used in connection with the goods, and the possible
significance which the mark would have, in that context, to
the typical purchaser of the goods in the marketplace where
such goods are normally sold. In re Omaha National Corp.,
819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987). Further,
that a term may have other connotations that are not
descriptive of features or characteristics of the goods in
question does not overcome the fact that one meaning
attributable to the term is merely descriptive in connection
with the goods. In re Bright-Crest, supra; In re Hycon Mfg.
Co., 169 USPQ (TTAB 1971).
Ser. No. 699563
6
We disagree with applicant’s conclusion that
prospective purchasers of these items of women’s apparel
would not understand the mark to describe characteristics of
applicant’s products. Purchasers probably would not be able
to draw accurate conclusions about the nature of applicant’s
goods from consideration of the mark by itself, but when
these people consider the mark in connection with the goods
set forth in the application, we agree with the Examining
Attorney that they would immediately understand, without
resorting to imagination or mental gymnastics, either that
applicant’s garments are made of satin and decorated with
embroidery, or that the embroidery on the goods has a satin
finish, such as the finish produced by satin stitch
embroidery. This is a reasonable conclusion based on the
ordinary meanings of the two words, as shown by the
dictionary evidence submitted by the Examining Attorney, and
applicant has not made of record anything that leads us to a
different conclusion.
Ser. No. 699563
7
Accordingly, the refusal to register under Section
2(e)(1) of the Act is affirmed.
R. F. Cissel
G. D. Hohein
P. T. Hairston
Administrative Trademark Judges
Trademark Trial & Appeal Board
A.
Ser. No. 699563
8