Las Nuevas Fabricas, S.A. de C.V.

Trademark Trial and Appeal Board

May 19, 2009

No. 77193535 (T.T.A.B. May. 19, 2009)

Mailed:
May 19, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________

In re Las Nuevas Fábricas, S.A. de C.V.
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Serial No. 77193535
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´
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.”