Karlv.J. Fluck, III

Trademark Trial and Appeal Board

Dec 19, 2000

No. 75481602 (T.T.A.B. Dec. 19, 2000)

12/19/00
Paper No. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Karl V. J. Fluck, III
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Serial No. 75/481,602
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Harris A. Wolin and Charles A. Wilkinson, Esq. for Karl V.
J. Fluck, III.
Michael L. Engel, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
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Before Simms, Seeherman and Hohein, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Karl V. J. Fluck, III has appealed from the final
refusal of the Trademark Examining Attorney to register
CANDY BOW as a trademark for “decorative ribbon in the form
of a bow having small gift-type items, in the nature of
candy and other edibles, attached.”1 Registration has been
refused pursuant to 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 his identified goods.
1 Application Serial No. 75.486,602, filed May 8, 1998.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/481,602
2
Applicant and the Examining Attorney have filed
briefs; an oral hearing was not requested.
We affirm the refusal of registration.
Although applicant’s application is based on an intent
to use, applicant has described his goods as a novelty item
which is
a highly decorative, ornate bow having
a pair a downwardly extending trailing
ribbons with edibles adhesively
attached thereto. It is intended that
the CANDY BOW product will be delivered
as a gift, whereby the candy items
would be removed and consumed by the
recipient while the bow would be used
to decorate an area chosen by such
recipient.
Response filed June 17, 1999, p. 3.
A mark is merely descriptive, and therefore prohibited
from registration by Section 2(e)(1) of the Trademark Act,
if it immediately conveys information concerning a quality,
characteristic, function, ingredient, attribute or feature
of a product or service. The question of descriptiveness
is not decided in a vacuum but in relation to the goods on
which, or the services in connection with which, it is
used. In re Venture Lending Associates, 226 USPQ 285, 286
(TTAB 1985).
There is no question that applicant’s identified goods
are a bow, and that a principal feature of the bow is that
Ser. No. 75/481,602
3
candy is attached to it. Thus, the word CANDY per se
describes a feature of the goods, and the word BOW is a
generic term for the goods. Applicant himself recognizes
the descriptive qualities of the words by his proffer of
disclaimers for the individual words.2
It is applicant’s position that despite the
descriptive connotations of the individual elements, the
combined term CANDY BOW is suggestive of applicant’s goods
because the purchaser must exercise some degree of
imagination or thought. It appears that part of
applicant’s argument is that the mark is not descriptive
because purchasers will assume from the mark that the
product is candy that has been formed or shaped into a bow.
However, as stated above, the determination of whether or
not a mark is merely descriptive is not made in the
abstract, and the question is not whether consumers can
guess, from the mark alone, what the product is. Clearly,
upon seeing the mark CANDY BOW in connection with the
goods, a bow with candy attached, they will immediately
2 It should be noted that an entire mark may not be disclaimed.
See TMEP § 1213.07. Although the Examining Attorney indicated in
the file that the offered disclaimers should not be printed, he
never advised applicant that the disclaimers were unacceptable,
and indeed his references to the disclaimers in a subsequent
Office action and his brief led applicant to believe that the
disclaimers had been made of record.
Ser. No. 75/481,602
4
understand from the mark exactly what the characteristics
of the goods are.
Applicant also notes that consumers are familiar with
other candy products, such as candy canes and candy corn,
which are candy in the form of such objects. As a result,
applicant argues that consumers would assume that CANDY BOW
would refer to candy in the shape of a bow, and that the
use of this term for a bow with candy attached creates an
unconventional meaning for the words.
We need not decide whether CANDY BOW would be a
generic term for candy in the shape of a bow, in the way
that “candy cane” is a generic term for candy having a cane
shape. The question before us is whether, as applied to a
bow having candy attached, the mark CANDY BOW would
immediately convey to consumers information about the
characteristics of such a product. We have no doubt that
purchasers would immediately understand, upon seeing the
mark CANDY BOW used in connection with the identified
goods, that it is a bow having candy on it. Accordingly,
we find that the mark is merely descriptive of “decorative
ribbon in the form of a bow having small gift-type items,
in the nature of candy and other edibles, attached.”
Decision: The refusal of registration is affirmed.