Las Nuevas Fabricas, S.A. de C.V.Download PDFTrademark Trial and Appeal BoardMay 19, 2009No. 77193535 (T.T.A.B. May. 19, 2009) Copy Citation Mailed: May 19, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Las Nuevas Fábricas, S.A. de C.V. ________ Serial No. 77193535 _______ ´ John M. Murphy of Arochi, Marroquin & Lindner, S.C. for Las Nuevas Fábricas, S.A. de C.V. Sonya B. Stephens, Trademark Examining Attorney, Law Office 109 (Dan Vavonese, Managing Attorney). _______ Before Walters, Grendel and Zervas, Administrative Trademark Judges. Opinion by Grendel, Administrative Trademark Judge: Las Nuevas Fábricas, S.A. de C.V. (applicant) seeks registration on the Principal Register of the mark depicted below, for services recited in the application as “retail department stores” in Class 35.1 1 Serial No. 77193535, filed on May 30, 2007. The application is based on applicant’s asserted bona fide intent to use the mark in commerce, under Trademark Act Section 1(b), 15 U.S.C. §1051(b), and also on its ownership of Mexican Registration No. 852740, under Trademark Act Section 44(e), 15 U.S.C. §1126(e). THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser. No. 77193535 2 The application includes a statement indicating that the wording FÁBRICAS DE FRANCIA is Spanish for FACTORIES OF FRANCE.2 The Trademark Examining Attorney has issued a final refusal to register applicant’s mark on the ground that applicant has not complied with her requirement for a disclaimer of the words FÁBRICAS DE FRANCIA. The Trademark Examining Attorney contends that this wording must be disclaimed because it is merely descriptive of the “department store services” recited in applicant’s application. Applicant has appealed the final refusal. The appeal is fully briefed. After careful consideration of the evidence of record, we reverse the refusal to register to the extent that it is based on the requirement for a disclaimer of FÁBRICAS DE 2 The application also includes a statement that states, in pertinent part, that the design portion of the mark depicts a stylized, lower case “F.” Ser. No. 77193535 3 FRANCIA in its entirety. However, we find that applicant’s mark is not registrable without a disclaimer of DE FRANCIA apart from the mark as shown, and we affirm the refusal and disclaimer requirement to that extent. The Trademark Examining Attorney may require the applicant to disclaim an unregistrable component of a mark otherwise registrable. See Trademark Act Section 6(a), 15 U.S.C. §1056(a). Merely descriptive terms are unregistrable under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), and therefore are subject to disclaimer if the mark is otherwise registrable. See In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087 (Fed. Cir. 2005). Failure to comply with a disclaimer requirement is a ground for refusal of registration. See id.; In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975); In re Box Solutions Corp., 79 USPQ2d 1953 (TTAB 2006). Initially, we find that ordinary American purchasers, a significant portion of whom are likely to be familiar with both English and Spanish,3 would readily translate the Spanish wording FÁBRICAS DE FRANCIA into its English equivalent FACTORIES OF FRANCE. Under the doctrine of foreign equivalents, therefore, the issue in this case is 3 The record (MSN Encarta entry, attached to January 7, 2008 Office action) shows that there are at least 20 million Spanish Ser. No. 77193535 4 whether the English wording FACTORIES OF FRANCE is merely descriptive of applicant’s services. See Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Tokutake Industry Co., 87 USPQ2d 1697, 1699 (TTAB 2008); In re Peregrina Limited, 86 USPQ2d 1645 (TTAB 2008); In re Thomas, 79 USPQ2d 1021 (TTAB 2006). A term is deemed to be merely descriptive of goods or services, within the meaning of Trademark Act Section 2(e)(1), if it forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services. See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). “On the other hand, a mark is suggestive if, when the goods or services are encountered under the mark, a multistage reasoning process, or the utilization of imagination, thought or perception, is required in order to determine what attributes of the goods or services the mark indicates. In re On Technology Corp., 41 USPQ2d 1475, 1477 (TTAB 1996) (internal citations omitted). “As has often been stated, there is a thin line speakers in the United States. We find it likely that a significant number of these speak both Spanish and English. Ser. No. 77193535 5 of demarcation between a suggestive mark and a merely descriptive one, with the determination of which category a mark falls into frequently being a difficult matter involving a good measure of subjective judgment.” Id. The burden initially is on the Office to make a prima facie showing that the mark is merely descriptive. Where doubt exists as to whether the mark is merely descriptive, such doubt is to be resolved in applicant’s favor. In re Box Solutions Corp., 79 USPQ2d 1954, 1955 (TTAB 2006). The services identified in applicant’s application are “department store services.” The record shows that “department store” is defined as “[a] large retail store offering a variety of merchandise and services and organized in separate departments.” The American Heritage Dictionary of the English Language (4th ed. 2000). We also take judicial notice of the dictionary definitions attached to applicant’s reply brief, which show that “outlet” is defined as “a store that sells the goods of a particular manufacturer or wholesaler” (The American Heritage Dictionary of the English Language (4th ed. 2000)), and that “factory outlet” is defined as “a store that sells factory- Ser. No. 77193535 6 made goods directly to consumers for less than current retail prices” (Random House Dictionary (2009)).4 The record also shows that applicant’s department stores offer various goods bearing famous French brand names. At page 3 of its February 20, 2008 first request for reconsideration, applicant stated that “[l]ike other department stores, Fabricas de Francia sells merchandise from all over the world, including goods bearing well-known French brand names.” Exhibit 3 to the request for reconsideration includes newspaper advertisements showing that these brands include Lancome, Moulinex, Givenchy, Yves Saint Laurent, Dior, Guy Laroche, Nina Ricci, Chanel, and Guerlain. Based on the evidence of record, we find that the word FACTORIES is suggestive, not merely descriptive, of “department store services.” The term “factory” as generally used in the retail field is somewhat incongruous when it is applied to department store services, per se. A department store is not a factory outlet, as those terms are defined above. Both are retail establishments, but of very different types. A department store sells many different types of goods made by many different 4 The Board may take judicial notice of dictionary definitions. See University of Notre Dame du Lac v. J.C. Gourmet Food Imports Ser. No. 77193535 7 manufacturers, typically at full retail prices. A factory outlet, in contrast, sells the particular goods of a single manufacturer, at discounted prices. There is no evidence on this record that the word “factory” or “factories” is used, descriptively or otherwise, in connection with department store services. We find that the incongruity arising from the essential difference between a department store and a factory outlet is sufficient to cause or require purchasers to take an extra mental step to determine the significance, if there is any, of the word “factories” in connection with department store services. We also find that the word “factories,” per se, is not merely descriptive of “department store services” because there is an additional mental step that purchasers will take to connect the fact that goods sold in department stores generally can be said to come from factories. Again, there is no evidence on this record that the word “factory” or “factories” is used, descriptively or otherwise, in connection with department store services. For these reasons, we find that FACTORIES, and its foreign equivalent FÁBRICAS, is not merely descriptive of department stores and that it therefore need not be Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Ser. No. 77193535 8 disclaimed. To the extent that any doubt might exist as to whether the wording is merely descriptive, we resolve that doubt in applicant’s favor and in favor of allowing the mark to be published for opposition without the disclaimer. In re Box Solutions Corp., supra. However, we find that the words OF FRANCE, and their foreign equivalent DE FRANCIA, are merely descriptive of a feature of applicant’s department store services, i.e., that applicant’s department stores feature French brand- name goods. Applicant argues that its stores offer goods from other countries besides France, but this is not determinative. A term need not immediately convey an idea of each and every specific feature of the applicant’s goods or services in order to be considered merely descriptive; it is enough that the term describes one significant attribute, function or property of the goods or services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973). Here, we find that a significant feature of applicant’s department store services is that the stores offer goods from France which bear famous French brand names. The words OF FRANCE immediately inform customers that they can obtain French brand-name goods at applicant’s department stores. Ser. No. 77193535 9 Therefore, we find that the words OF FRANCE, or their foreign equivalent DE FRANCIA, merely describe applicant’s services, and that these words must be disclaimed. Decision: The requirement for a disclaimer of FÁBRICAS DE FRANCIA in its entirety is reversed. However, the disclaimer requirement is affirmed to the extent that applicant must disclaim the merely descriptive words DE FRANCIA apart from the mark as shown. Registration of the mark is refused in the absence of such disclaimer. If applicant submits the required disclaimer to the Board within thirty days from the date of this order, the refusal of registration will be set aside. The disclaimer should state: “No claim is made to the exclusive right to use DE FRANCIA apart from the mark as shown.” Copy with citationCopy as parenthetical citation