Gothic Dog, Inc.

Trademark Trial and Appeal Board

Jun 21, 2010

No. 77195065 (T.T.A.B. Jun. 21, 2010)

Mailed:
June 21, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Gothic Dog, Inc.
________

Serial No. 77195065
_______

Daniel C. DeCarlo and Josephine Brosas of Lewis Brisbois
Bisgaard & Smith LLP for Gothic Dog, Inc.

Marc J. Leipzig, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
_______

Before Quinn, Grendel and Zervas, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

Gothic Dog, Inc. has filed an application to register
GOTHIC DOG (in standard character form) on the Principal
Register for goods now identified as “pet jewelry” in
International Class 14.1 Applicant filed its application
under the intent to use provisions of the Trademark Act,

1 Application Serial No. 77195065, filed June 1, 2007. Lest
there be any doubt, we construe “pet jewelry” to mean jewelry to
be worn by pets and not jewelry for humans with designs in the
form of pets, such as dogs and cats.

THIS OPINION IS NOT
A PRECEDENT
OF THE T.T.A.B.
Ser No. 77195065
2
see 15 U.S.C. § 1051(b), and later filed an amendment to
allege use. The examining attorney initially did not
accept the amendment to allege use in view of the submitted
specimen of use; in his final Office action, however, the
examining attorney withdrew his requirement for a
substitute specimen. The Office’s electronic record for
the present application does not reflect that the examining
attorney accepted the amendment to allege use.
The examining attorney finally refused registration
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. §
1052(e)(1), on the ground that applicant's designation, as
applied to applicant's goods, is merely descriptive of such
goods. Additionally, the examining attorney finally
refused registration under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), on the ground that applicant's
designation so resembles two previously registered marks
that, as used on applicant’s identified goods, applicant's
mark is likely to cause confusion or mistake or to deceive.
The first registered mark is

(Registration No. 0355644, fourth renewal on February 25,
2008) for “finger rings”; and the second mark is GOTHIC in
Ser No. 77195065
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standard character form (Registration No. 2207852, first
renewal on October 18, 2002) for “jewelry.” While the
latter registration was registered pursuant to Section 2(f)
of the Trademark Act, the former registration was not. One
entity is the owner of record of both registrations.
Applicant has appealed the final refusal of its
application. In the paragraphs that follow, we first
consider the Section 2(e)(1) refusal and then consider the
Section 2(d) refusal. Both refusals to register are
affirmed.
Section 2(e)(1) – Mere Descriptiveness
“A mark is merely descriptive if it ‘consist[s] merely
of words descriptive of the qualities, ingredients or
characteristics of’ the goods or services related to the
mark.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 71
USPQ2d 1370 (Fed. Cir. 2004), quoting, Estate of P.D.
Beckwith, Inc. v. Commissioner, 252 U.S. 538 (1920). See
also In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d
1778 (Fed. Cir. 2003). The test for determining whether a
mark is merely descriptive is whether it immediately
conveys information concerning a quality, characteristic,
function, ingredient, attribute or feature of the product
or service in connection with which it is used, or intended
to be used. In re Engineering Systems Corp., 2 USPQ2d 1075
Ser No. 77195065
4
(TTAB 1986); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB
1979). It is not necessary, in order to find a mark merely
descriptive, that the mark describe each feature of the
goods or services, only that it describe a single,
significant quality, feature, etc. In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Venture Lending
Associates, 226 USPQ 285 (TTAB 1985). Further, it is well-
established that the determination of mere descriptiveness
must be made not in the abstract or on the basis of
guesswork, but in relation to the goods or services for
which registration is sought, the context in which the mark
is used, and the impact that it is likely to make on the
average purchaser of such goods or services. In re Abcor
Dev. Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
The examining attorney relies on the following to
support his contention that “gothic” is descriptive of a
type or style of jewelry, and that GOTHIC DOG merely
describes a feature of applicant’s goods, namely, that
“applicant provides gothic-styled jewelry for pets,
including dogs”:
1. definitions from The American Heritage Dictionary
of the English Language, 4th ed. (2000), for dog and
“Gothic” (“often gothic[;] Of or relating to a style of
Ser No. 77195065
5
fiction that emphasizes the grotesque, mysterious, and
desolate”);
2. applicant’s statement in its response to the first
Office action that “The Applicant provides a variety of
jewelry designed for pets and not necessarily ‘gothic’
jewelry, although some of the designs could be considered
as ‘gothic’ in style”; and
3. webpages submitted with the first and final Office
actions, including:
• Eyescream Gothic Jewelry is the home to
Original designs … such as … Gothic Vampire
Jewelry, Bat Headchains, … as well as our
signature wired & encrusted Gothic Bat designs.
Eyescream.com

• Welcome to Ladyhawk’s Treasures! Your number
one international New Age shop offering Wicca
supplies, occult and witchcraft supplies, pagan
jewelry, Wiccan jewelry … gothic jewelry, and
Celtic jewelry.
Ladyhawkstreasures.com

• From here you can peruse our entire collection
of gothic jewelry, including necklaces, pendants,
bracelets and rings. We have all manner of
gothic-themed jewelry, such as crosses, skulls,
coffins, demons and bats.2
Dragonweave.com

• GothicAsylum is a big collection of goth
clothes, gothic jewelry, … makeup, boots ….
Gothicasylum.com, accessed

• Hollywood Gothique Store

2 This website also has links to “Gothic Pendants and Charms,”
“Gothic Bracelets and Slave Bracelets,” “Gothic Rings” and
“Gothic Earrings
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Gothic Jewelry
Check out this selection of Halloween-themed
jewelry and accessories … or find Gothic jewelry
in the subcategories on the right
Amazon.com/hollywoodgoth

• Professionally Hand Crafted Victorian Gothic
Style Jewelry & Costume Accessories
artofadornment.ca

• GothicPLUS features all things gothic &
renaissance inspired including fashions, shoes, &
boots, gothic jewelry, home décor and more!
Gothicplus.com

• Gothic necklaces and pendants designs are no
less than 925 sterling silver. (showing “gothic
cross” and “Gothic bat cross” and “Flaming skull”
necklace.)
Giveagemstone.com

• What girl wouldn’t love receiving a pair of
coffin earrings absolutely to die for available
in her birthstone …? Looking for something a
little different, our inspiring collection of
Gothic jewelry De La Dead is affordably priced
and adds a touch of exotic Gothic charms with a
twist.
Bluelips.com

The record also includes the following evidence submitted
by applicant:
1. An online article submitted by applicant with its
response to the first Office action from “Trendhunter
Magazine” (accessed at trendhunter.com) which emphasizes
the “gothic” aspect of applicant’s goods:
Goth Dog Collar – Give Your Anti-Social Pup Some
Status

Finally, canine luxury with some bite! Forget
the other cutsie collars, this one is made for
Ser No. 77195065
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the goth dog. Rage against the man! It’s
embellished with a few diamonds and sapphires
with sterling silver or 14 K gold, which makes
sure the owners isn’t [sic] deemed a sell out.

“Gothic Dog is the new line of luxury diamond
jewelry line designed exclusively for your
darling four-legged friends. Whatever you can
ask for … be it a dog collar or necklaces, they
are made to cope up [sic] with your status and
style,” Luxury Launches explained.

Goth can be beautiful and cutting edge, dude.

2. applicant’s home webpage which depicts a dog and
jewelry, and includes the phrase “A Girl’s Best Friend for
Man’s Best Friend,” with Man’s Best Friend” being a
reference to a dog:

3. one of applicant’s webpages which offers the
following goods for sale:
Ser No. 77195065
8

We find that the record demonstrates that GOTHIC DOG
is merely descriptive of “pet jewelry.” The evidence
establishes that, today, there is a style of jewelry
identified as “gothic,”3 and it has not escaped our
attention that some websites promoting gothic jewelry offer
the same skull-and-crossbones and cross designs depicted on
applicant's website. See, e.g., webpage from yahoo.com
offering “Gothic Style Silver Skull Pendant,” “Lladro
Gothic Cross Gold Pendant” and “Gothic Cross Navel
Jewelry,” submitted with final Office action. DOG in
applicant’s designation identifies, of course, those
animals which are to wear applicant’s pet jewelry, and
applicant promotes its goods as intended for dogs. GOTHIC

3 We are not troubled by the fact that the dictionary definitions
of record do not specifically refer to a “gothic” style of
jewelry. The dictionary definition quoted earlier in this
opinion broadly defines “gothic” as “of or relating to a style of
fiction that emphasizes the grotesque, mysterious, and
desolate”,” and the macabre subject matter of applicant’s skull-
and-crossbones designs fits within this definition.
Ser No. 77195065
9
DOG is simply a combination of two merely descriptive
terms, indicating the style of pet jewelry and the animal
for which the jewelry is intended, i.e., dogs, which are a
subset of “pets.”
In concluding that applicant's mark is merely
descriptive, we have considered applicant's argument that
GOTHIC DOG does not immediately describe – without
conjecture or speculation – a significant feature or
characteristic of applicant’s goods. Applicant reasons
that “Applicant does not provide jewelry in the form or
shape of a ‘gothic dog,” and “no ‘gothic dog’ or gothic-
styled dog’ is featured on any of Applicant’s jewelry.”4
Additionally, applicant points out that there are several
definitions of “gothic,” none of which relates to “pet
jewelry”; and that there is nothing in the definition of
“dog” which suggests any relationship to “pet jewelry.”
Applicant adds that “by invoking ‘gothic-styled jewelry for
dogs’ into Applicant's identification of goods, the
Examining Attorney has improperly made the argument for
descriptiveness more plausible.”5
We disagree that the mark does not identify a
significant feature of applicant’s identified goods, or

4 Brief at 4.
5 Id.
Ser No. 77195065
10
that conjecture or speculation is needed to arrive at the
meaning of the mark advocated by the examining attorney.
As evidenced by the webpages of record which prominently
identify different styles of jewelry, the style of jewelry
is a significant feature of the goods. Additionally, the
fact that particular goods of applicant’s are intended for
dogs is significant; consumers generally shop for goods
specific to the type of pet. A consumer of pet jewelry
for, e.g., cats, would not ordinarily consider pet jewelry
intended for dogs, and there is nothing in applicant’s
webpages of record indicating that applicant’s crosses and
skull-and-crossbones designs are intended to be worn by a
variety of animals including cats, rabbits, gerbils, fish
or other pets.
Applicant’s argument premising mere descriptiveness on
whether its jewelry takes the form or shape of a “gothic
dog” or whether a “‘gothic dog’ or gothic-styled dog’ is
featured on any of Applicant’s jewelry,” and complaint that
“by invoking ‘gothic-styled jewelry for dogs’ into
Applicant's identification of goods, the Examining Attorney
has improperly made the argument for descriptiveness more
plausible” are not persuasive. Rather than define the term
as some sort of dog, consumers would likely consider
applicant’s designation as a combination of terms
Ser No. 77195065
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identifying the style of jewelry and the animal for which
the jewelry is intended, and applicant’s identified goods
encompass gothic-styled jewelry for dogs. Additionally, to
the extent that applicant contends that a dictionary
definition for “gothic” or “dog” must refer to pet jewelry
in order for the designation to be merely descriptive,6
applicant simply is wrong. A dictionary definition need
not refer to the goods directly in order for a mark to be
merely descriptive or those goods.
We also have considered – but are not persuaded by -
applicant’s argument that GOTHIC DOG is a combination mark;
that the “ultimate issue is the overall commercial
impression that the composite mark as a whole creates on
the average reasonably prudent buyer”; and that GOTHIC DOG
creates a commercial impression separate and apart from its
components, namely, it “suggests a ‘gothic’ dog (i.e.,
describing the dog, and not the jewelry, as being
“gothic”), rather than ‘gothic jewelry.’” (emphasis in
original.) Brief at 7.
It is true that a term which is created by combining
two or more unregistrable words may achieve registration

6 See p. 5 of applicant’s brief; “Nothing in this dictionary
definition (or even in the definition provided by the Examining
Attorney) suggests that it relates to ‘pet jewelry’”; and
“nothing in this definition [of dog] suggests any relationship to
jewelry.”
Ser No. 77195065
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if, in combination, a new and different commercial
impression is achieved and/or the term so created imparts a
bizarre or incongruous meaning as used in connection with
the goods or services. See In re Oppedahl & Larson LLP,
supra; In re National Shooting Sports Foundation, 219 USPQ
1018 (TTAB 1983). However, this is not the case here. No
new and different commercial impression is achieved by the
combination of GOTHIC and DOG.7 GOTHIC DOG is merely the
sum of two merely descriptive components and is equally
merely descriptive in connection with applicant's
identified goods. The exercise of imagination or thought
is not required for prospective consumers of applicant's
goods to perceive readily the merely descriptive
significance of GOTHIC DOG as it pertains to applicant's
goods. The term GOTHIC DOG immediately describes, without
conjecture or speculation, a feature or characteristic of
applicant's goods, namely, that applicant's goods include
jewelry for dogs that are of a gothic design.
Finally, applicant states that to the extent that
there is any uncertainty or doubt as to whether the mark is
merely descriptive or suggestive, it must be resolved in

7 Even if a consumer would consider a “gothic dog” as identifying
a dog wearing the gothic skull-and-crossbones jewelry, akin to a
teenager wearing all black “goth clothing” (a “goth girl”),
GOTHIC DOG would be merely descriptive of a result achieved in
wearing applicant’s goods.
Ser No. 77195065
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favor of the applicant. We do not have any doubts
regarding our conclusion on the issue of mere
descriptiveness.
Section 2(d) – likelihood of confusion
Our determination of the examining attorney's refusal
to register the mark under Section 2(d) of the Trademark
Act is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976). See also, In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
We first address one preliminary point. Both of the
cited registrations are for the mark GOTHIC, with one mark
in stylized form. As we stated in our discussion regarding
the examining attorney’s Section 2(e)(1) refusal, GOTHIC
DOG has a descriptive connotation for pet jewelry.
However, because we must accord the cited registration the
Ser No. 77195065
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presumptions of Section 7(b) of the Trademark Act, for
purposes of our likelihood of confusion analysis, we
consider the cited marks to be a highly suggestive, rather
than a merely descriptive term. While the registrations
are entitled to a very limited scope of protection due to
the highly suggestive nature of the marks, they are still
entitled to some protection.
Turning now to the du Pont factor regarding the
similarities of the marks, we must compare the marks in
their entireties as to appearance, sound, connotation and
commercial impression to determine the similarity or
dissimilarity between them. Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test, under
this du Pont factor, is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression that confusion
as to the source of the services offered under the
respective marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks.
See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975).
Ser No. 77195065
15
Applicant’s mark differs from the cited marks only by
the addition of the term DOG.8 Applicant and the examining
attorney differ on the weight to be given to this element
of applicant’s mark, with applicant advocating that DOG
should be accorded more weight than GOTHIC. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985) (“… in articulating reasons for reaching a conclusion
on the issue of confusion, there is nothing improper in
stating that, for rational reasons, more or less weight has
been given to a particular feature of a mark, provided the
ultimate conclusion rests on consideration of the marks in
their entireties. Indeed, this type of analysis appears to
be unavoidable.”). In our consideration of the mark as a
whole, we accord less weight to DOG than to GOTHIC.
Applicant’s webpage prominently features an image of a dog;
the webpage speaks only of dogs as animals which would wear
applicant’s goods; and applicant prominently promotes its
goods as “A Girl’s Best Friend for Man’s Best Friend.” (as
previously noted, “Man’s best friend” is clearly a
reference to a dog.) DOG in applicant’s designation

8 The stylization of registrant's GOTHIC mark is minor, and
applicant’s designation is in standard character form, which if
registered would give applicant rights to display its mark in all
reasonable manners of display, including in the same arrangement
of letters and lettering style as set forth in the registered
stylized mark. See Proquest Information and Learning Co. v.
Island, 83 USPQ2d 1351 (TTAB 2007).
Ser No. 77195065
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functions to identify the animal that is to wear
applicant’s pet jewelry and at best is a highly descriptive
term. GOTHIC, on the other hand, is the first word in
applicant’s designation; the initial term in a mark is more
likely to be impressed on purchasers and remembered.
Presto Products, Inc. v. Nice-Pak Products Inc., 9 USPQ2d
1895 (TTAB 1988). GOTHIC is also the more impressionable
term in the designation and more likely to be remembered by
purchasers of applicant’s goods. As between GOTHIC and
DOG, DOG functions far less as a source indicator than
GOTHIC. Thus, GOTHIC is the dominant term in applicant’s
designation, and it is identical to the cited registered
marks.
Because the dominant term in applicant’s designation
is identical to the cited registered marks, and because
GOTHIC is the first term in applicant’s designation, we
find GOTHIC and GOTHIC DOG to be similar in appearance and
sound. As for the meaning of the marks, because DOG is at
best a highly descriptive term in the context of pet
jewelry, the addition of DOG to GOTHIC does not
significantly or sufficiently change the meaning of
applicant's designation from registrant’s marks. GOTHIC
DOG is also similar in commercial impression to GOTHIC in
view of the highly descriptive nature of DOG. Thus, we
Ser No. 77195065
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find the marks to be similar and resolve the du Pont factor
regarding the marks against applicant.
Next, we consider the du Pont factor regarding the
similarities of the goods. It is well settled that to
support a finding of likelihood of confusion, it is
sufficient that the goods be related in some manner or that
the circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons
in situations that would give rise, because of the marks
used thereon, to a mistaken belief that they originate from
or are in some way associated with the same producer or
that there is an association between the producers of the
goods or services. See In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991); In re International Telephone & Telegraph
Corp., 197 USPQ 910 (TTAB 1978).9
The cited registration for the standard character mark
recites “jewelry,” the cited registration for the stylized
mark recites “finger rings,” and applicant’s goods are “pet
jewelry.” The examining attorney has submitted webpages
which show pet jewelry offered for sale on the same

9 Under this standard, applicant's argument at p. 16 of its brief
that “pet jewelry” and “finger rings” are non-competitive is
unhelpful to applicant. Neither is applicant’s reliance on In re
British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984). The Board in
that case found no likelihood of confusion because of the
different connotations of the marks in connection with the
different goods.
Ser No. 77195065
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webpages as jewelry, i.e., jewelry for humans. These
webpages establish that pet jewelry and jewelry are
marketed in such a manner that they would be likely to be
encountered by the same persons in situations that would
give rise, because of the marks used thereon, to a mistaken
belief that they originate from or are in some way
associated with the same producer or there is an
association between the producers of the goods.
Additionally, the examining attorney has submitted third-
party registrations which list pet jewelry and other kinds
of jewelry, including finger rings, under one mark.
“Third-party registrations which cover a number of
differing goods and/or services, and which are based on use
in commerce, although not evidence that the marks shown
therein are in use on a commercial scale or that the public
is familiar with them, may nevertheless have some probative
value to the extent that they may serve to suggest that
such goods or services are of a type which may emanate from
a single source.”10 In re Mucky Duck Mustard Co., 6 USPQ2d

10 At p. 17 of its brief, applicant states that “it has been held
that ‘in the absence of any evidence showing the extent of use of
any of such marks or whether any of them are now in use, they
[provide no basis for] saying that the marks so registered have
had, or may have, any effect at all on the public mind so as to
have a bearing on likelihood of confusion,’” citing Smith Bros.
Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462 (CCPA
1973). (Emphasis in original.) The registrations are not being
submitted by the examining attorney to show whether the marks
Ser No. 77195065
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1467, 1470 n.6 (TTAB 1988), aff'd, 864 F.2d 149 (Fed. Cir.
1988). See also In re Albert Trostel & Sons Co., 29 USPQ2d
1783 (TTAB 1993). In view of this evidence, the examining
attorney has established that “pet jewelry” on one hand,
and “jewelry” and “finger rings” on the other hand, are
related.
Conditions of Sale
Applicant has also made arguments regarding the high
pricing of registrant’s and applicant's goods and maintains
that purchases of such goods would not be made on impulse
but rather on careful consideration. Because there are no
restrictions or limitations in the descriptions of goods,
we must consider all potential consumers of applicant's and
registrant's goods in all potential price ranges. In other
words, we must consider the goods to include inexpensive
products that may be purchased by nondiscerning customers.
See In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB
1986) (average ordinary wine consumer must be considered in
determining source confusion). And, when products are
inexpensive and subject to impulse buying, the risk of
consumer confusion increases because purchasers are held to

which are the subject of the third-party registrations had any
effect on the public mind. Rather, the examining attorney
offered the registrations to show that the goods are of a type
that may emanate from a single source.

Ser No. 77195065
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a lesser standard of purchasing care. See Recot, Inc. v.
M.C. Becton, 214 F.3d 1332, 54 USPQ2d 1894 (Fed. Cir.
2000). Under such circumstances, the addition of the
highly descriptive term DOG to GOTHIC certainly does not
serve to mitigate any likelihood of confusion.
Here, applicant’s designation incorporates the
entirety of registrant's marks and is distinguished only by
the addition of the highly descriptive word DOG in
applicant’s mark. Applicant thus has added a highly
descriptive term to the term GOTHIC, and uses the
combination on related goods. Even according the cited
registrations the limited protection to which they are
entitled, such protection still extends to prevent the
registration of GOTHIC DOG. Simply put, the additional
descriptive term DOG does not suffice to distinguish the
marks on these related goods.
In view of the foregoing, we conclude that consumers
familiar with registrant’s jewelry and finger rings offered
under the mark GOTHIC would be likely to believe, upon
encountering applicant's designation GOTHIC DOG for “pet
jewelry,” and particularly, as applicant’s website
promotes, jewelry for dogs, that they originate with the
same entity.
Ser No. 77195065
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Decision: The refusal of registration under Section
2(d) of the Act is affirmed. The refusal of registration
under Section 2(e)(1) of the Act also is affirmed.