American Airlines, Inc.

Trademark Trial and Appeal Board

Aug 29, 2001

No. 75484640 (T.T.A.B. Aug. 29, 2001)

8/29/01

Paper No. 20
RFC

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re American Airlines, Inc.
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Serial No. 75/484,640
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Kay Lyn Schwartz of Gardere Wynne Sewell, LLP for American
Airlines, Inc.

Ellen Awrich, Trademark Examining Attorney, Law Office 113.
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Before Cissel, Seeherman and Wendel, Administrative
Trademark Judges.

Opinion by Cissel, Administrative Trademark Judge:
On May 13, 1998, applicant filed the above-referenced
application to register the mark “INVENTORY SUPPORT
INTERNATIONAL” on the Principal Register for what were
subsequently identified as “retail stores featuring new,
used and refurbished airplane parts,” in Class 35; and
“storage of airplane parts,” in Class 391. The basis for

1 Although the application, as filed, also included “wholesale
distributorship services featuring new, used and refurbished
airplane parts” in the recitation of services, the above-
referenced recitation is the way the services were recited in the
amendment to allege use. Even though the amendment to allege use
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/484,640
2
filing the application was applicant’s claim that it
possessed a bona fide intention to use the mark in commerce
in connection with the services identified in the
application.
The Examining Attorney finally refused registration
under Section 2(e)(1) of the Lanham Act on the ground that
the mark is merely descriptive of the services with which
applicant intends to use it. Applicant timely filed a
Notice of Appeal. Both applicant and the Examining
Attorney filed briefs on appeal, and applicant filed a
reply brief2, but applicant did not request an oral hearing
before the Board.

was subsequently withdrawn, both the applicant and the Examining
Attorney proceeded on the assumption that the application had
been amended to recite the services in this fashion.
Accordingly, we deem the recitation to have been amended to adopt
this language. Additionally, we note that we are treating the
recitation of services in Class 35 as if “retail stores” had been
amended to adopt the preferred wording “retail store services.”
“Stores” are not services, but we will not remand the application
to the Examining Attorney at this late stage of the process for
the correction of this minor problem. If, however, applicant
were ultimately to prevail on appeal from our decision, applicant
should file an amendment to use the term “store services.”
2 In its reply brief, applicant objects to the argument,
presented by the Examining Attorney for the first time in her
appeal brief, that applicant’s disclaimer of the term “INVENTORY
SUPPORT, INC.” in the prior registration claimed by applicant is
evidence of the descriptiveness of the term “INVENTORY SUPPORT”
in connection with the services set forth in that registration as
well as this application. Applicant argues that raising this
argument for the first time in the appeal brief left applicant
without the opportunity to address it. Obviously, applicant did
have the opportunity to respond to this argument, and did so, in
its reply brief. Rather than respond on the merits, however, its
Ser No. 75/484,640
3
In support of her refusal to register, the Examining
Attorney made of record dictionary definitions3 of the word
“inventory” as “a detailed, itemized list, report, or
record of things in one’s possession, especially a periodic
survey of all the goods and materials in stock…”; of the
word “support” as “to provide for or maintain, by supplying
with money or necessities…”; and of the word
“international” as “extending across or transcending
national boundaries: international fame.” She took the
position that applicant’s mark is merely descriptive of the
services specified in the application because those
services encompass providing inventory support
internationally, i.e., making available a stock of goods
and materials in the form of airplane parts, for customers
in different countries.

response was to claim that it had not had the opportunity to
respond.
The argument to which applicant objects did not raise a new
issue after the institution of the appeal. Instead, the argument
made by the Examining Attorney in her brief was directed to the
issue of whether the mark is descriptive of the services set
forth in the application, which had been an issue since the first
Office Action, wherein registration was refused under Section
2(e)(1). Whereas it would not have been proper to raise a new
issue in the Examining Attorney’s brief, it was not improper to
make an additional argument there in support of the refusal to
register which applicant had appealed. Applicant’s objection is
accordingly overruled.
3 From The American Heritage Dictionary of the English language,
third edition, 1992, Houghton Mifflin Company, electronic
version.
Ser No. 75/484,640
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In support of the refusal, she also attached a
representative sampling of 20 of the 725 excerpts from
published articles she had retrieved from the Nexis
database of publications. The excerpts show that the term
“inventory support,” is a recognized business term. For
example, one excerpt states that “…distributors can also
provide important inventory support…”; another notes that a
“…company provides broad-based inventory support to a range
of customers…”
The Examining Attorney takes the position that the
word “INTERNATIONAL” is merely descriptive of the
international scope of applicant’s inventory support
services, such that the composite mark “INVENTORY SUPPORT
INTERNATIONAL,” considered in its entirety, would
immediately inform prospective customers, in this case
airlines and other business entities which need airplane
parts for the maintenance and repair of airplanes, that
applicant’s store services featuring its inventory of
airplane parts and applicant’s services of storing
inventories of airplane parts owned by others are both
international in scope.
The test for determining whether a mark is
unregistrable under Section 2(e)(1) of the Lanham Act is
well settled. A mark may be refused registration under
Ser No. 75/484,640
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this section if it immediately and forthwith conveys
information about a significant characteristic, feature,
function, purpose or use of the goods or services
identified in the application. In re Gyulay, 820 F.2d
1216, 4 USPQ2d 1009 (Fed. Cir. 1987); In re MetPath Inc.,
223 USPQ 88 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ
591 (TTAB 1979). This determination must be not be made in
the abstract, but rather only in consideration of the goods
or services set forth in the application. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
Thus, the test is not whether one could surmise from
consideration of the mark by itself what the goods or
services are or what their significant characteristics are.
In re American Greetings Corp., 226 USPQ 365, 366 (TTAB
1985).
Based on careful consideration of the record and
arguments before us in this appeal, as well as the relevant
legal precedent on this issue, we hold that the refusal to
register is well taken. The evidence of record, namely the
definitions of all three of the component words which make
up applicant’s mark and the excerpts from published
articles which use the term “inventory support,” establish
that “INVENTORY SUPPORT” is an accurate description of what
applicant provides for its customers, and that the addition
Ser No. 75/484,640
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of the word “INTERNATIONAL” is understood simply as an
indication that the scope of applicant’s services extends
to different countries.
While the particular excerpts from published articles
quoted above do not appear to be related to retail store
services in the usual sense of that term, it must be
remembered that applicant’s customers will presumably be
airlines and other business which own and maintain their
own aircraft, as well as businesses which maintain and
repair aircraft for others. Accordingly, the term “retail
stores” used in the recitation of services in the
application must be accorded a narrower, more specialized
meaning than would ordinarily be attributed to the term in
the context of ordinary consumer products such as clothing
and housewares, for example. In the context of this
application, we interpret “retail stores” featuring
airplane parts as referring to applicant’s making available
for inspection and purchase its inventory of new, used and
refurbished airplane parts. When the excerpted articles
showing use in the press of the term “inventory support”
are considered in this context, the descriptive nature of
“inventory support” in connection with applicant’s services
of providing airplane parts and storage for airplane parts
is clear.
Ser No. 75/484,640
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None of the arguments applicant makes to the contrary

is persuasive. Applicant repeatedly contends that the

refusal is improper because “…the consumer cannot

immediately surmise what services are provided by

Applicant.” Applicant argues that:

“the mark does not readily convey its meaning to the
average purchaser. The Mark INVENTORY SUPPORT
INTERNATIONAL brings to mind different ideas of what
kind of inventory may be supported and in what way it
is supported. One would also ask what kind of
international support is being given. Therefore, a
multistage reasoning process is required when
determining what services are offered by Applicant.”
(Brief, p. 3).

This line of argument evidences a misunderstanding of
the legal test for mere descriptiveness, as described
above. As we noted there, the issue is not whether one
could guess what the services are from considering the mark
by itself, but rather whether the mark conveys to one who
is familiar with the services rendered under the mark
information concerning the nature of the services or their
characteristics or features.
Because of the plain meanings of the word
“INTERNATIONAL” in combination with the term “INVENTORY
SUPPORT,” the relevant consumers would understand that
“INVENTORY SUPPORT INTERNATIONAL,” in connection with the
identified services, indicates that applicant has an
international operation in which it makes its inventory
Ser No. 75/484,640
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available for retail purchase and that applicant provides
storage for airplane parts inventories. This conclusion
does not require any mental gymnastics or complex
reasoning.
DECISION: The refusal to register under Section
2(e)(1) of the Act is affirmed.

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