Webid Consulting Ltd.

Trademark Trial and Appeal Board

Dec 10, 2009

No. 77397586 (T.T.A.B. Dec. 10, 2009)

Mailed:
10 December 2009
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Webid Consulting Ltd.
________

Serial No. 77397586
_______

James A. Wahl of Krass Monroe, P.A. for Webid Consulting
Ltd.

Brendan D. McCauley, Trademark Examining Attorney, Law
Office 114 (K. Margaret Le, Managing Attorney).
_______

Before Holtzman, Drost, and Ritchie, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On February 14, 2008, Webid Consulting Ltd.
(applicant) filed an intent-to-use application (Serial No.
77397586) to register the mark MANWEAR, in standard
character form, on the Principal Register for services
ultimately identified as: “online retail stores featuring
men’s clothing and accessories and small leather goods from
suppliers other than applicant” in Class 35.
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Ser. No. 77397586
2
The examining attorney has refused registration on the
ground that the term MANWEAR is merely descriptive of
applicant’s services. 15 U.S.C. §§ 1052(e)(1). The
examining attorney argues that the term MANWEAR “identifies
the featured goods of applicant’s online retail store
services, namely, men’s clothing or clothing for a man.”
Brief at 4.
After the examining attorney made the refusal final,
applicant appealed to this board and filed a request for
reconsideration.
The question is whether the term MANWEAR is merely
descriptive for the identified services.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 Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831
(Fed. Cir. 2007). See also In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009, 1009 (Fed. Cir. 1987); In re Quik-Print Copy
Shops, Inc., 616 F.2d 523, 205 USPQ 505, 507 (CCPA 1980).
Courts have long held that to be “merely descriptive,” a
term need only describe a single significant quality or

1 Inasmuch as the only refusal here is based on the mark being
merely descriptive, we do not have to address the arguments
concerning whether MANWEAR “indicates a genre of clothing for
males or related retail services.” Applicant’s Brief at 12. See
also Examining Attorney’s Brief at 10.
Ser. No. 77397586
3
property of the goods. Gyulay, 3 USPQ2d at 1009; Meehanite
Metal Corp. v. Int’l Nickel Co., 262 F.2d 806, 120 USPQ
293, 294 (CCPA 1959). “Descriptiveness of a mark is not
considered in the abstract. Rather, it is considered in
relation to the particular goods for which registration is
sought, the context in which it is being used, and the
possible significance that the term would have to the
average purchaser of the goods because of the manner of its
use or intended use.” Bayer, 82 USPQ2d at 1831. See also
In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218
(CCPA 1978). “The examining attorney has the burden to
establish that a mark is merely descriptive.” Bayer, 82
USPQ2d at 1831.
In this case, the examining attorney has submitted
numerous dictionary definitions. Below are examples of
relevant definitions:
Man - an adult male human, as distinguished from a
boy or a woman

Men - plural of man
Wear - clothing or other articles for wearing, esp.
when fashionable or appropriate for a particular
function (often used in combination); travel wear;
sportswear.

www.dictionary.com.

“Applicant does not dispute those meanings.” Brief at
8.
Ser. No. 77397586
4
We begin by taking judicial notice of the term “men’s
wear” as “apparel and accessories for men. Also,
menswear.” The Random House Dictionary of the English
Language (unabridged) (2d ed. 1987). University of Notre
Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594,
596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983).
The examining attorney has also submitted various
webpages for the term “manwear.” We have set out several
examples below (emphasis added).
Seride s.r.l. (limited liability company) produces
since 1975 linen prints for womanwear, manwear and
childwear, underwear and furnishing
www.seride.com

Kidswear, manwear, ladywear, jeans, denim jacket
[China]
www.go4worldbusiness.com

women clothing, textile, underware, night gowns,
pyjamnas etc. also manwear possible depending on size
of order
www.importers.com

Our company is specialised in producing all kinds of
woven and knitted interlining which is used in manwear
woman-garment blouse and so on
www.made-in-china.com

The right place for Ready-to-Wear, Knitwear, Fabric
and Textile Business, Jeans, Babywear, Kidswear,
Womanwear, Manwear, Underwear, Sock [Turkish]
www.merterfashion.com

Activity of the company: Production of tailored fine
quality manwear: suits, jackets, coats, night suits,
trousers.
Ser. No. 77397586
5
www.madeinvicenza.it

Manwear, Ladies fashion, Baby clothing [China}
cindy_garment.ecw.com

Pants, jackets, sleepingcloth, babywear, manwear,
womenwear [China]
ttnet.net

In addition, the examining attorney’s evidence also
includes two web pages that refer to “manwear” in
discussions about men’s clothing. See www.momcentral.com
(“[Simpson] who now walks the red carpets behind his
daughter, wearing slick, metrosexual manwear”) and
www.gabsmash.blogspot.com (McGraw’s “jeans look like
metrosexual manwear not country singer gear”).
We can consider information on foreign websites.
Bayer, 82 USPQ2d at 1835 (“Information originating on foreign
websites or in foreign news publications that are accessible to
the United States public may be relevant to discern United States
consumer impression of a proposed mark”). See also In re
Remacle, 66 USPQ2d 1222, 1224 n.5 (TTAB 2002) (“[I]t is
reasonable to consider a relevant article from an Internet
web site, in English, about medical research in another
country, Great Britain in this case, because that research
is likely to be of interest worldwide regardless of its
Ser. No. 77397586
6
country of origin”).2 However, in this case most of the
webpages appear to be foreign websites from those in the
clothing industry who are poorly translating another
language into English. We give these websites less weight
than websites that clearly describe their products in
English. However, the websites are interesting because
they show that when the term “manwear” appears in the
context of websites about clothing (even those with
grammatical and other idiosyncrasies), there is nothing
incongruous about the use of the term MANWEAR. Readers
immediately would understand that the subject of the
webpages includes clothing for a man or menswear. As we
indicated, we must consider the mark “in the context in
which it is being used.” Bayer, 82 USPQ2d at 1831. In the
context of clothing and clothing-related services, there is
nothing left to the imagination that the term MANWEAR is
referring to clothing for a man. Regarding the two other
uses of “manwear” in conjunction with a style of clothing;
again, we give this little weight except to show that when

2 As a result, applicant’s reliance on In re Men’s Int’l
Professional Tennis Council, 1 USPQ2d 1917 (TTAB 1986) is
misplaced. See In re Cell Therapeutics Inc., 67 USPQ2d 1795,
1797 (TTAB 2003) (“Taking a broader view, we note that the
Professional Tennis Council and [In re] Appetito Provisions [Co.,
3 USPQ2d 1553 (TTAB 1987)] cases were decided well over fifteen
years ago. This Board would be blind if it did not recognize
that during the past fifteen years, there has been a dramatic
change in the way Americans receive their news”).
Ser. No. 77397586
7
purchasers would see the term MANWEAR used in association
with clothing-related services, they would understand
immediately that the services are directed to clothing for
men.
For a combined term to be descriptive, we must
consider the mark in its entirety and not just its
individual parts. In re IP Carrier Consulting Group, 84
USPQ2d 1028, 1030 (TTAB 2007) (“Finally, in determining
whether a mark is merely descriptive, we must consider the
mark in its entirety”). Therefore, the question here is
whether the combination of the terms “man” and “wear” is
merely descriptive.
Applicant has substituted the term “man” for the term
“mens” and combined it with the word “wear” and argues that
“[s]ubstituting man for mens effects a fundamental change
in the appearance, sound and meaning of the resulting
term.” Reply Brief at 2. By “substituting MAN for MEN’S
and thus intentionally diverting from use of menswear, the
commonly understood term for men’s clothing, the Applicant
has created an obvious incongruity in the mind of the
prospective purchaser.” Brief at 9. However, the only
difference between the terms MANWEAR and MENSWEAR is that
applicant uses the singular of MAN while the generic term
uses the plural possessive. Inasmuch as “man” has the same
Ser. No. 77397586
8
meaning as the word “mens” except that it is a singular,
non-possessive from of the word, it is difficult to see how
this change results in an incongruity or a double entendre.
In re Acuson, 225 USPQ 790, 792 (TTAB 1985) (“We see no
significance in the fact that the term ‘COMPUTED’ is used
instead of ‘COMPUTER’ or ‘COMPUTERIZED.’ The fact is that
the mathematical calculations performed in order to render
the images produced by applicant’s machines are the results
of computations made by the computer circuitry built into
the goods. In the ordinary sense of the word the
calculations are ‘computed’… [T]he registration of
‘COMPUTED SONOGRAPHY’ for ultrasonic imaging instruments is
barred by Section 2(e)(1) of the Act”). While purchasers
may understand that applicant is not using the generic term
MENSWEAR, they would understand that the term MANWEAR
describes clothes for a man or men.
We add that terms that are not spelled correctly may
nonetheless still be merely descriptive or even generic.
See, 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”); Weiss Noodle Co. v. Golden
Cracknel and Specialty Co., 290 F.2d 845, 129 USPQ 411
(CCPA 1961) (HA-LUSH-KA held to be the generic equivalent
Ser. No. 77397586
9
of the Hungarian word “haluska”); In re Carlson, 91 USPQ2d
1198, 1203 (TTAB 2009) (“We conclude that applicant’s
applied-for mark, URBANHOUZING in standard character form,
will be immediately and directly perceived by consumers as
the equivalent of the admittedly descriptive term URBAN
HOUSING, rather than as including the separate word ZING.
The mark, thus, does not convey a double entendre that
would prevent it from being merely descriptive of
applicant’s services”). See also Standard Paint Co. v.
Trinidad Asphalt Mfg. Co., 220 U.S. 446, 458 (1911) (“Bad
orthography has not yet become so rare or so easily
detected as to make a word the arbitrary sign of something
else than its conventional meaning, as different, to bring
the example to the present, as the character of an article
is from its origin or ownership”).
When we view the term MANWEAR in relation to
applicant’s services, we conclude that there is nothing
incongruous about the term. Applicant’s term immediately
informs prospective purchasers of a feature or
characteristic of the services, i.e., that its stores
feature men’s clothing.3 See In re Kronholm, 230 USPQ 136,

3 In re Petroglyph Games Inc., 91 USPQ2d 1332, 1337 (TTAB 2009)
(“More importantly, just as a term need not describe all aspects
of a product for it properly to be refused as descriptive, a term
need not describe every type or variation of a product listed in
an identification for the term to be merely descriptive”); In re
Ser. No. 77397586
10
137 (TTAB 1986) (“It is clear that applicant’s cable
television network services will have, as their subject
matter and intended audience, colleges and universities in
this country. The term sought to be registered [COLLEGE
CABLE NETWORK] comprises a combination of descriptive words
which lose no descriptive significance in the expression,
one which aptly describes a significant feature or
characteristic of applicant’s services”).
Therefore, we cannot agree with applicant that “the
term MAN does not have a single recognized meaning.” Brief
at 12. While the terms man and wear are words with
numerous meanings when they are combined and used in
association with clothing-related services, their combined
meaning is clear.
Similarly, that applicant can take the dictionary
definitions of the individual words in the term and
come up with a meaning that makes no sense in
connection with the services recited in the
application does not mandate a different conclusion on
the issue of mere descriptiveness. As stated above,
the determination of descriptiveness is made in the
context of the identified services, and the meaning of
“ETHNIC ACCENTS” in connection with applicant's
services is clearly that of home furnishings or
decorations relating to various ethnicities.

In re Ethnic Home Lifestyles Corp., 70 USPQ2d 1156, 1159

Planalytics Inc., 70 USPQ2d 1453, 1456 (TTAB 2004) (“While
applicant's mark does not describe every feature or
characteristic of its services, there is no requirement that a
mark must do this before it can be found to be merely descriptive
of the services”).
Ser. No. 77397586
11
(TTAB 2003). See also In re Polo Int'l Inc., 51 USPQ2d
1061, 1063 (TTAB 1999) (“If applicant produced goods
related to the medical field, or specifically related to
physicians, then the term ‘DOC’ would be readily understood
by the public as referring to ‘doctor.’ However, here
applicant’s goods are computer software for document
management, and ‘DOC’ will be readily understood as
referring to documents”). Here, the term MANWEAR refers to
clothing for a man or men.
Finally, applicant argues that its mark “is not
commonly used or understood to relate in any way to [its]
services.” Reply Brief at 5. As we discussed, we have
found that the meaning of the term MANWEAR in the context
of clothing-related services would be clear. We add that
even if applicant is the only user of the term, that fact
does not mean that its mark is suggestive rather than
merely descriptive. In re Sun Microsystems, Inc., 59
USPQ2d 1084, 1087 (TTAB 2001) (“The fact that AGENTBEANS
does not appear in a dictionary is not determinative.
Likewise, the fact that applicant may be the first and/or
only entity using the phrase AGENTBEANS is not dispositive
where, as here, the term unequivocally projects a merely
descriptive connotation”) (citation omitted); Acuson, 225
USPQ at 792 (“A descriptive term used first or even only by
Ser. No. 77397586
12
an applicant is not registrable as long as the relevant
purchasing public perceives of the term as describing the
good”); and In re Gould, 173 USPQ 243, 245 (TTAB 1972)
(“The fact that applicant may be the first and possibly the
only one to utilize this notation in connection with its
services cannot alone alter the basic descriptive
significance of the term and bestow trademark rights
therein”).
Therefore, when we consider the record in this case,
we find that when prospective purchasers encounter the term
MANWEAR used in association with online retail stores
featuring men’s clothing and accessories and small leather
goods from suppliers other than applicant, they will
immediately understand that it describes a feature of
applicant’s services, i.e., that the services include
providing clothes for a man. Therefore, applicant’s mark
is merely descriptive of its services.
Decision: The refusal to register applicant’s mark
MANWEAR under § 2(e)(1) of the Trademark Act is affirmed.